(App)ropriate  Protection


Mobile phone applications have become increasingly popular, and given the reliance that people place on their smart phones – for good reason. As a result, savvy entrepreneurs are increasingly looking towards ways of protecting their new smart phone applications in order to secure their place in the market.

A smart phone application is essentially application software which is developed to run off a handheld device. Traditionally, software has found protection by way of copyright. In South Africa, copyright protection arises automatically and protects the source code, the screen layout as well as any characters or animation forming part of the software. While this form of protection can be used to ensure that someone does not copy the exact same application in terms of how it looks, it does not prevent someone from independently producing a version of the application. Given these shortfalls, it is often desirable to protect the underlying principle involved in the operation of the application. In this respect, it is worthwhile considering patent protection.

The issue of patenting software and mobile applications is a contentious one in South Africa.  South African patent law is governed by the South African Patent Act and, in terms of the Act, a program for a computer, as such, is specifically excluded from patentability. However, foreign jurisdictions whose legislation is largely similar to ours in terms of patentability requirements can be looked to for guidelines in this regard. The current trend in the UK is to grant software patent applications, with the proviso that the program must produce a technical result which goes beyond the normal effect that a computer program has, when run on a computer. Similarly, in Europe, computer implemented inventions have been allowed. The European Patent Office has held that if a computer program has a technical character, then it is not excluded from patentability. Patents for software have been granted in many fields where the software provides some kind of a technical contribution including in medical devices, industrial processes, communication/media technology such as voice recognition, and video compression.

Guided by these principles, mobile applications are not necessarily excluded from patentability. In particular, the method involved in the implementation of the application and how it interacts with various hardware components is not excluded, provided the application produces some kind of a technical result. Otherwise put, the underlying method may be inventive, and the use of software to implement the method, will not preclude valid patent protection.

In South Africa, the Patent Office does not examine a patent application on the merits. So, provided your application complies with the necessary formalities, the patent will be granted. However, grant does not necessarily mean that the patent is valid. The validity will only be determined when a third party challenges the validity, which will ultimately be decided by the court. To date, the South African courts have not yet made a ruling on this issue. Therefore, whether a particular mobile phone application is patentable is largely determined on a case by case basis. It is however, always advisable to file a provisional patent application at least as a preliminary form of protection in order to ensure that you do not miss your chance to do so at a later stage.

Furthermore, filing a provisional patent in South Africa may be a cost effective solution to obtaining patent protection in foreign jurisdictions where patents directed towards software and mobile applications are allowed e.g. the US, UK and EU. Comparatively, filing a provisional patent in South Africa is cheaper than one filed in a foreign jurisdiction. It also provides you with a 12 month period in order to assess the market so that when the time comes to file in foreign jurisdictions you would have had time to do your research and can file only where it will be commercially viable.

There are several other forms of protection to consider either in conjunction with, or as an alternative to patents. Trade mark protection can be a valuable tool in terms of marketing your product. The name, logo or slogan of your brand associated with the mobile application can be protected. Contractual agreements are also of value in terms of software or mobile phone applications. In particular, confidentiality agreements and licence agreements should be considered.

There are various forms of protection available to someone who has developed software or a mobile phone application. It is advisable to consider all forms of protection and to choose the ones which make commercial sense for your particular product.

Hillary Brennan – Practitioner

Monty Rademeyer – Partner