Social Media, Apps, and Patent Eligibility

By Jason R. Wachter

As new social media concepts and associated mobile apps continue to be developed at a rapid pace, inventors, investors and/or companies that own the rights to such social media technology should consider filing for patent protection.

For a product, the underlying technology and/or business method to be patent eligible, it must be useful, new and not obvious. Should a patent be granted, the patent owner will be afforded the right to exclude others from making, using and selling the patented invention for a term of twenty years from the earliest filing date of the patent application.

Prior to disclosing, marketing, attempting to license, selling, seeking funding or launching a social media concept and/or associated mobile app, patent protection should be considered. In many foreign jurisdictions if the invention is disclosed prior to filing for patent protection, the product and/or business method will be precluded from patent protection. That is, a patent must be filed prior to the product being publically disclosed, marketed, on sale or even entering discussions with a potential customer. Even though the United States offers a one year grace period for the filing of a patent application after public disclosure, publication, on sale or the like, a patent application should be filed the United States before such disclosure, publication, on sale or the like. This is because the United States, like the rest of the world, operates on a first-to-file system. As such, regardless of actual date of invention, the first person to file for patent protection will be granted priority for the right to obtain a patent.

Depending on the stage of development and funding, there are three options to file for patent protection: (1) a provisional patent application; (2) a United States non-provisional patent application; and (3) a patent cooperation treaty (PCT) patent application.

A provisional patent application is the most cost effective means to get a patent application on file in the United States. That said, a provisional patent application cannot convey any patent rights. A provisional patent application simply acts as a place holder that provides the applicant one year from the date of filing to decide if they want to seek patent protection in the United States or abroad. A United States non-provisional patent application is reviewed by an examiner at the United States patent office and can issue into a U.S. patent that affords the applicant rights to preclude others from making, using or selling the patented invention. A PCT patent application is an international patent application that establishes a filing date for the product and/or business method. Essentially, like a provisional patent application, a PCT patent application acts as a placeholder. The difference is that a PCT patent application acts as an international placeholder. The filing of a PCT application must eventually be followed up by the filing of a patent application directly in the countries and/or regions an applicant wishes to protect their product and/or business method.

Even if a concept is not fully developed (e.g., prototype stage, beta version of an app), but a pitch is planned, for example, to seek funding, to license the concept, to sell the concept or simply to disclose the idea publically to build interest in the product, filing for at least a provisional patent application should be considered. In addition to getting the concept on file at the United States Patent and Trademark Office and potentially preserving the right to protect the concept abroad, a patent application can be a valuable asset when seeking funding and/or entering into a licensing agreement.

The types of social media concepts that are patent eligible is a grey area in view of various court decisions. The U.S. Supreme Court outlined in Alice Corp. v. CLS Bank, a two part test to determine what subject matter is patent eligible: The test first inquires as to whether the claimed subject matter is directed to an abstract idea (e.g., an algorithm, a method of computation, or other general principle). If the answer is yes, it must then be determined if the claimed subject matter add “significant more” to embody a patentable idea.  Simply applying or implementing an abstract idea or tying the abstract idea to a computer is not enough to make the abstract idea patent eligible. There must be an improvement (e.g., improvement in categorization, efficiency, etc.) to what is known. Many software patents have not passed the Alice test and as a result have been deemed patent ineligible. However, recently, in Enfish, LLC v. Microsoft Corp., the Federal Circuit stated that the first step to assess patent eligible subject matter outlined in Alice should be whether the claimed invention provides an “improvement in computer capabilities” as opposed to computers being used as just a tool.

Thus, in general, patents can be obtained for physical products, computer hardware, software and business methods. However, because of the ever changing landscape of patent eligibility for patents that can be related to social media concepts and associated apps, should patent protection for a social media concept that may be configured to be used via a mobile app be sought, it is important to disclose as much detail as possible in a patent application what is deemed novel, an improvement or what is different from another, similar known concept and/or what makes the concept different from a generic algorithm, computer program or business method.