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Maybe you have thought of a fantastic idea for a new mobile app, or perhaps you are already in the process of developing it. Now is a crucial time to think about the intellectual property (IP) you are building in your app and how to protect it. Due to the international nature of the internet, it is likely your app will be available to download or purchase across the world. Before you launch your app, it is key to understand your rights and put in place certain mechanisms to ensure you are protecting your valuable IP as much as possible in international markets.

Can I Apply for a Patent?

In certain circumstances, it may be possible to protect the computer software within your app through a patent application. A patent protects an innovative and novel invention, giving its owner an exclusive right to exploit that product in exchange for its disclosure to the public. Analysing whether your app software is sufficiently unique is complicated and technical. Further, software will not be patentable if it: 

  • is only performing a computerised version of a manual method; and 
  • does not solve a technical problem. 

If you decide to proceed to apply for a patent, it is usually best practice to apply for an Australian Provisional Patent Application first. Doing so allows you to secure your priority date while you continue to refine your app until it is ready for launch. This lasts for 12 months, and enables you to use the term ‘patent pending’ when disclosing your concept. Using this phrase can be valuable and strategic in itself, in terms of:

  • attracting investors; and
  • deterring competitors. 

To extend your patent protection overseas, you should then file an International Phase PCT Application, which works in a similar way to your Australian Provisional Patent Application to act as a placeholder. Following this, applications would then need to be lodged in each country in which you require protection (known as National Phase Entry). 

The patent process can be costly and complicated without a specialist to guide you. It is strongly advised to speak to a patent attorney to: 

  • determine whether your app may be eligible for international patent protection; and 
  • help you navigate the process. 

Domestic and International Trade Marks

Trade marks protect aspects of your app that distinguish it in the market, such as your app name, logo or slogan. A registered trade mark gives you exclusive use of that mark in connection with the types of goods and services you offer.

For example, you could have exclusive rights to your app name in relation to software applications, if you apply within this class. 

Like patents, trade marks have protection on a country-by-country basis.

For example, say you want to make sure your new app name has protection in at least Australia, USA, Canada, EU, UK and New Zealand. Your best option is to apply via a Madrid Protocol Application. Doing so will be simpler and cheaper than applying directly to each country.

In order to apply through the Madrid Protocol, you need to have already registered a trade mark in your ‘country of origin’. In other words, you will need to have a:

  • trade mark registered in Australia; or 
  • pending application on foot. 

It is therefore a good idea to get your Australian application underway as soon as possible. 

One of the benefits of using the Madrid Protocol application is that you do not have to include every country at this stage, if you are unsure how far your client base may reach. You have the option to subsequently designate further member countries later on, in a more streamlined and cost effective manner. 

Not all countries are parties to the Madrid Protocol. For example, Hong Kong is not yet a party to the protocol, although it is set to be implemented within the next few years. Until then, you can apply directly to Hong Kong and all other non-member countries. 

Copyright

Copyright is an automatic intellectual property right in Australia that attaches to the expression of creative and original material works. This can include computer programs and apps. Software code within apps can obtain protection as original literary works, as these works do not need to have a literary quality to qualify. You must be able to demonstrate that you have: 

  • used your skill and labour to create the code; and 
  • not copied someone else’s work. 

Australia has copyright relations with many countries across the world. This means that copyright in your app in Australia will be mostly universally acknowledged. However, some countries require you to register for copyright to allow you to defend your copyright if someone were to infringe it. In Australia, there is no need to apply for copyright. It exists as soon as your app takes physical or electronic expression. 

Other Key Considerations When Protecting Your IP

Applying for registered IP protection with a patent or trade mark is not the only IP consideration to make when launching an app. You should also consider:

  • who will own the IP in your app (for example, will you establish a company structure to hold your IP as an asset?);
  • whether you are engaging with a software developer or an app designer (if so, do you have a comprehensive agreement in place to ensure you or your company will own the IP in the final product?); and 
  • whether you have had confidential discussions with third parties about your app idea or development (it is strongly recommended to have these conversations under the terms of a Non-Disclosure Agreement, until you have a patent or trade mark application underway). 

Key Takeaways 

Developing a new app can be time-consuming and expensive. Before you launch your app, you should make sure you are protecting the valuable IP you have created. Your app will likely have an international reach, so it is a good idea to put the wheels in motion to extend your IP protection from Australia to overseas. Navigating this pathway can be tricky, so we recommend speaking to an intellectual property lawyer for guidance. If you need help with protecting your app’s IP in international markets, contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.

Frequently Asked Questions

Can I patent my app?

It may be possible to protect the computer software within your app with a patent. However, this will only apply in certain circumstances. It is best to speak to an experienced patent attorney to determine whether your app is eligible for patent protection.

Do I need an international trade mark for my app?

Due to the global nature of the internet, you should consider international protection for your trade mark from the outset. You can consider where your target markets are and plan your IP protection accordingly.

Is my app protected by copyright?

In Australia, copyright automatically applies to literary works. This includes computer programs and apps. However, some other countries require you to register for copyright protection.

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