Can I release my product without patenting it and if so do I need special terms in my license to users?

Question

The http://creativecommons.org/ offers licenses. Can I use this one for my products?

My product is a subscription app that stores a data in the cloud.

I can't decide whether to release it publicly. Another company may clone my app and copy its functionality.

I'm also planning to install my app on each of my trusted customers. I'm concerned that another company may copy my app using a sync tool and then find out that it's not patented or doesn't have special licenses.

What steps should I make to protect my products temporarily?

Answer 1

Good Question Gabmon. You asked about quick protection for your app prior to release.

My answer here focuses on legal questions. Successful protection of software often relies on both legal rights and practical steps. I lock the door of my house even though the law says I don't need to and someone trespassing could be jailed. In the same way, you may be able to use some sort of DRM / Compiling / Etc. to block folks from cloning your system. Of course, that approach only goes so far and will not deter motivated parties.

Copyright: This forum is focused on patent law, but you should be aware that software code is also protected by copyright. Copyright protection is simple because it is created as soon as you save the file on your hard drive. You may want to include a copyright notice, such as "Copyright Gabmon 2013." The notice is not actually required but will remind some folks not to copy. If your code is valuable, then you'll probably want to register your copyright with the US Copyright Office. A good source of knowledge on registering a copyright for software is available here. http://www.copyright.gov/circs/circ61.pdf.

Copyright is somewhat narrower than patent law because it does not protect your functional idea but rather only the written expression of the software code. However, this seems to addresses the concerns that you have of someone who may "clone my app." Copyright would not protect you against someone who figures out how your app works and then completely rewrites the code without copying any of the code. (Note - there are some caveats here, but this is roughly the law).

Despite the prevalence of creative-commons licenses, the default rule for copyrighted works continues to be that the rights-holder does not want his work copied.

Patent: On the patent side, you only have protection once you have filed a patent application and that application has been examined and issued as a patent. You may have a non-obvious idea that is patentable and current best practices in the industry are to file for patent protection prior to any public release. It is possible for you to file your patent application within one year of the public release. However that approach lends itself to a variety of problems, including evidentiary (he-said she-said) problems. If you wait more than one-year then you entirely lose the ability to obtain patent protection.

Contract: If you are doing a release to only a small group of individuals, it would be possible to get them to sign (click-through) a contract where they promise not to clone your work or to share it with anyone else.

Temporary Protection: (1) You have copyright protection in the software, and you might want to go ahead and register that copyright; (2) If you think you can get a patent, you may want to file prior to public release.

Answer 2

Here's something for you to consider: 35 U.S.C. 102.

Under 102(a), you cannot obtain a patent if the claimed invention was "patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date."

There are several exceptions to this rule, however. One of them is 102(b)(1), which provides a 1-year time period to file after disclosure.

Public disclosure can help establish ownership of the invention, but you must be careful in doing so or you risk losing the ability to obtain a patent.

Patent/IP law is complicated. This is not legal advice. Take this information with a grain of salt, as it is not complete and may not be applicable, and consult a patent attorney before you do anything.

EDIT: This previous post also has responses that you might find useful.

Answer 3

To clarify, there is not usually any reason to wait until you actually get a patent (might take 3 years). But it may be important to wait until you have applied for a patent, assuming something about your product is new and non- obvious. The part of the law quoted in another answer is wording that has only been in effect for about a month. You might keep that in might as you continue to research this topic. Books and most articles the web are explaining the "old" system.

Answer 4

A provisional patent is a good choice before releasing the app to public. Under the new AIA, a micro-entity gets 75% off of regular USPTO official fees, including fees for filing, search, examination, issue and maintenance, etc. So, the official fees are minimal. However, attorney's fee for a provisional application ranges widely.

Answer 5

I recently investigate this issue for our product. Two good summaries I found on this new law are at wikipedia and Thomas Law

The “America Invents Act“ has a new provisions that changes the US from a “First to Invent” country to a “First to File.” for patent applications filed on or after March 16, 2013.

My understanding (I am not a lawyer) is the filing buys you a year to get formal patents (design or utility) prepared and filed. In my are of the country, a provisional patent would cost me around $5800, about half of which is credited back if we follow through with design or utility patents, although filing a utility and design patent are cheaper (at the firm I queried) if you jump right in feet first.

I don't know the consequence of abandoning a patent application (i.e. if you start cheap and find you can't follow through with the right materials), but first-to-file seems to me to make the protection of one's ideas easier to manage, since you don't bear the burden of proving when you first came up with the idea.

At least it allows one to file for the patent just before releasing the product on the market to lock in one's claim, while allowing a person a year to do the harder part of documenting the details for the actual patent. Of course, if you document your source code and application design while developing the product, you should have what you need for the patent process at the time of release. If not, you might want to buy that year to prevent a delayed launch.