by Saulo Murari Calazans
December 01, 2004
Article 10 of the Industrial Property Law deals with what is not considered to be an invention or a utility model.
The schemes, plans, principles or commercial, accounting, financial, educative, publicity, drawings and inspection methods are listed in paragraph III of the aforementioned article. Thus, the business methods, which in fact are commercial methods, equally cannot be granted the right of exclusivity.
The main argument in favor of this legal prohibition resides in the thesis that such creations do not have an industrial application, one of the basic requirements for patentability under Brazilian law. On the other hand, electronic commerce via the Internet, which is the basis of the so-called new economy, has been awakening the interest of a number of industry sectors. According to data from the Camara-E.net and E-Consulting Corp., in the month of August 2004 the online retail index VOL® – totaled R$ 665.7 million in Brazil.
As a result of the strong appeal of this new mode of commercial practice throughout the world, more and more patent applications referring to commercial activities have been filed, particularly those involving electronic commerce over the Internet.
As an example, in a search through the Brazilian Patent and Trademark Office-BPTO’s electronic patents database, nearly 480 patent applications were published under the G06F 17/60 international classification. This class refers to methods of digital computation or data processing, particularly adapted for specific functions — administrative, commercial, managerial, supervisory or for forecasting.
Among the processes encountered in the classification mentioned above and which examinations have been concluded, eleven applications had favorable decisions regarding their patentability. Another seven were rejected, of which only one did not receive the required privilege, specifically based on the prohibitions contained in article 10. The great majority of the applications are now awaiting examination.
Despite the fact that the numbers cited above reflect only one classification, it can be seen that the lack of industrial application was not the main obstacle to the issuing of a patent and that a reasonable proportion of the applications was granted.
According to the patentability criteria for inventions related to business methods disseminated by the Brazilian Office, one determinant factor for the allowance of the applications for such inventions is the existence of an effective new technical effect, which must be clearly separated from results that are merely economic, such as achieving higher profits and/or productivity.
In order to obtain the grant, it furthermore is necessary to demonstrate that the required method is capable of surviving without the financial/commercial/accounting element present in the application. For example, a method of cryptography applied to bank accounts could be protected whereas a method for online purchases could not obtain a similar privilege.
Thus, the most appropriate way to obtain protection for inventions related to business methods in Brazil consists of the clear identification in the patent application of the new technical effect achieved, that is, the technical results obtained by the method or system.