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Mobile Apps – an answer to the software patentability question?

Have you ever played Pokemon Go? It’s an exciting game – you see Pokemon characters superimposed on your mobile phone’s view of the world around you! The characters look as if they really exist in the world.

A real-world game with virtual characters brilliantly integrates the various smartphone capabilities. The game is very successful, but is it a patentable invention?

Pokemon Go is an application for a smartphone (a software program which runs on the operating system of the smartphone) and therefore, its patentability question has two parts to it:

Is the invention new and not obvious?

Does the invention have patentable subject matter?

This article will not consider whether Pokemon Go is a new invention, since answering that question requires a detailed knowledge of the game and of other games that existed before Pokemon Go came out.

Instead, we will focus only on whether the software program Pokemon Go has patentable subject matter. In other words, assuming it is new and not obvious, is it in a field which can be patented?

Can you patent software?

Every high-tech patent attorney must constantly answer this question. What do we mean when we talk about software patents? Clients mean patenting their software products, whether it be a search engine, a computer game, a video compressor, an algorithm or a website. The patent offices around the world, on the other hand, view software as that which gets downloaded or which is written onto a disk. This code, to the patent offices, is data and data is not patentable. Thus, if you ask them, they will say that software "per se" (i.e. the data) is not patentable.

But this definition is incomplete. Images, documents, and other media are just data or, if you will, “content”. Software, on the other hand, is data in the form of a set of instructions to a general-purpose computer. It is data only when it is not being executed.

When the software is executed, it converts the general-purpose computer into a specific machine and it is this specific machine that clients want to patent.

Can a software product be patented?

It depends on the language in the claims of the patent application. It also depends on where the patent application is filed, since each country looks at claims to software patents differently.

When I first started writing patent applications, software wasn’t patentable at all. However, processing a real-world signal, like an audio signal, was patentable, since such processing originally happened in hardware. Transferring the processing to software was patentable as well, if the claim recited the processing. Any software that processed signals from “external” sources, had no problem with patentable subject matter.

This is still the case in the software world. A claim to the processing of external signals, such as those from external sensors, will, in general, be considered patentable subject matter.

Given this, we can consider the patentability of smartphone applications or mobile “apps”.

The smartphone itself has, in addition to its telephone and computer, a light bulb, a speaker, a microphone, a GPS, an accelerometer, an infra-red sensor, a camera, etc. Most of these devices are sensors, and sensors provide information about the world external to the smartphone. The sensor data is not usually immediately usable; it requires processing of the data which they provide. Often, the processing is particular to the purpose of the software product, which makes the processing part of the inventiveness of the product. Even if the processing is standard, the use of the processed signal is often unique and part of the inventiveness of the product. As a result, a claim to a software product which combines the activity of some of the sensing elements of a standard smartphone is more likely to be considered patentable subject matter.

Given this definition, how does Pokemon Go fair? Pokemon Go uses the sensors of the smartphone. It receives GPS data from the GPS sensor and video from the camera. It processes the GPS data to determine location information and then uses the location information to find the character registered to the current location of the phone. It implants the video of the character onto the video coming from the camera. The game processes the signals coming from the various sensors of the smartphone with computer-based calculations. Thus, it is possible to write a patent claim which will meet the criteria of the various patent offices with respect to software patents.

Not every mobile application will pass the test of software patentability but any application which uses the various devices and sensors built into a smartphone in some interesting way should contain patentable subject matter. An application which doesn’t take advantage of the devices, such as a store app which only shows the products on sale and handles the payments or a game which only shows its prepared video, have a much higher risk of being considered non-patentable subject matter.

Amazon’s mobile app is a store app, but it has an image search feature, something that solves a significant problem that people have when they don’t know what a product is or how Amazon characterized it in their database. With the image search function, a user uses the phone camera to take a picture of some product and provides the image as the definition of the product to be searched. This function then must analyze the image and compare it to images of Amazon’s products. The image search function utilizes the special capabilities of the smartphone to provide a new feature to Amazon’s store app. Such a feature would appear to fulfil the criteria for patentable subject matter in software, and would appear to be strongly inventive as well.

Thus, smartphones, with their extra devices and sensors, would appear to provide a nice solution to the problem of the patentability of software.

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