by Maria Moura Malburg
April 24, 2017
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In an increasingly digital world, where most of the new technologies involve software, it is essential that computer-implemented technologies are allowed to benefit from patent protection in order to guarantee continuous technological development and the return of investments made in this area.
Following this trend, the Brazilian Patent and Trademark Office (PTO) issued, on December 2016, its Examination Guidelines for Patent Applications Involving Computer Implemented Inventions (Resolution No. 158/2016). These guidelines determine the necessary requirements for computer-implemented inventions to be patent eligible, in light of article 10, item V, of the Brazilian IP Statute, which expressly prohibits patent protection for computer programs per se.
In summary, the new Guidelines apply to Brazilian patent applications roughly the same principles used by the European Patent Office (EPO) to grant patents for computer-implemented inventions.
The Guidelines confirm that a computer-implemented invention can be eligible for patent protection, as long as it (i) involves some product or process capable of solving a technical problem; (ii) produces a technical effect that is not a mere consequence of the software implementation, or of the way the computer program is written; and (iii) meets the essential requirements of novelty, inventive step and industrial application provided in article 8 of the IP Act.
The BPTO’s Resolution also teaches a practical step to verify if a computer-implemented process can be considered an invention: one should evaluate if this process uses physical or abstract variables to generate a physical product or effect, or a new virtual product. If either of these requirements is met, then the process may benefit from patent protection.
The same Resolution also presents some practical examples of computer-implemented technologies and their effects, which could be considered as patent eligible. These examples are intended to guide the examiners and users of the patent system to identify when a computer-implemented technology is considered as an invention under the IP Act, and to assess whether it meets the legal requirements, especially non-obviousness.
The Resolution also prohibits the use of expressions such as "software" and "computer program", as well as excerpts from source codes, in the claim to avoid a direct and literal violation of article 10, item V, of the IP Act. According to these Guidelines, the claims for computer-implemented inventions should always seek protection for:
(A) a product, such as a system, apparatus or equipment, when involving hardware or physical devices operated or implemented by software; and
(B) a process or method, when it involves a sequence of logical steps (such as algorithms) or a sequence of physical steps implemented by software.
Although it remains to be seen how the Guidelines will be applied in practice, the consolidation of the rules in a single document constitutes an important measure, which is likely to improve the quality of the examination conducted by the BPTO and accelerate the granting of this sort of patents.
Finally, it is worth noting that the patent protection acknowledged by Resolution 158/2016 does not replace the copyright protection granted to the source code and to the original and non-functional interfaces of the computer program. These different and complementary types of protection, when combined, build a stronger and more efficient shield over the technology, thereby enabling the innovator to enforce exclusive rights against possible infringers.
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