August 2014 Issue 96

IP protection in software and apps

B2B Editor1 August 2014

IP protection in software and apps

Intellectual Property (IP) may or may not be considered strategically important at the outset of developing new software or the latest smartphone application. However when it comes time to commercialise your products, get a 3 rd party to make amendments to code or graphics, or you need to register or confirm a clear chain of title to your IP, issues may arise. Accordingly, consideration of IP protection in software and apps is of utmost importance right from the initial concept and development phase.

Types of IP which may be relevant in your software and/or app include copyright, patents and trade marks. Other related non-proprietary rights such as trade secrets and confidential information may also be relevant.

Copyright will generally subsist in your source code, graphics, video files, certain compilations and text. The owner of this copyright has various exclusive rights under the Copyright Act 1968 (Cth). This include a right to prevent unauthorized use and reproduction.

Software and app developers can run into problems where they subcontract development without a written agreement, or is there is jointly developed IP. To limit this risk, it is important to agree and document up front who will own any IP which is developed (and associated confidential information). Unless there is a written agreement to the contrary, generally the developer or designer will own any IP they create (unless an employee, in which case the employer will generally own the IP).

Software and apps may potentially have patentable subject matter (ie to protect the idea or concept). A threshold issue to overcome (as with all patents) is whether the idea or concept is “novel” (ie new). It is often only a specific part of the software or app which may attract patent protection, rather than eg the app as a whole.

Last, but not least, don’t forget to consider the importance and value of your branding, through a registered trade mark. It has been reported that the single most valuable asset of Google is their trade mark.

As can be seen, to properly protect software or an App, consideration needs to be given to copyright, patents and trade marks. Furthermore, consideration needs to be given to contracts which clarify and confirm ownership of IP. Such contracts may include developer agreements, licence agreements, co-owner agreements or shareholder agreements.

ARETE Group are specialists in the protection and commercialization of intellectual property. We can assist by drafting a wide range of suitable agreements, registering your IP or enforcing your IP.

ARETE Group also has special packages such as our fixed fee IP audit and strategy, which is often utilized by those in the ICT industry.

Our lawyers not only have IP expertise, but have experience working with technology related issues.

Call us on 02 6162 1639, email us at Shaun.Creighton@aretegroup. visit our website for more details.