Draft guideline for software examination under Consideration
November 10, 2017

Otto Licks and Carlos Aboim The Brazilian Patent Office (INPI) has started a series of public consultations on patent examination procedures. The first draft guideline is on software implemented inventions, and it will be open for comments from the public until May 14, 2012. INPI says that the goal of the consultation is to harmonise and publicise the examination procedures. The draft guideline consolidates the current practice of the agency regarding software-implemented inventions. Nevertheless, it is important to invite the companies that are investing in R&D to contribute to the INPI’s consultation, since it is apparent that political parties in Brazil are seizing this opportunity to present a misleading view of the patentability criteria of computer-implemented inventions. The Brazilian Patent Law excludes computer programs per se from patentability. The literal elements of the software, such as the source code, are protected by copyright in Brazil. Nevertheless, the statute does not exclude software-implemented inventions from patentability, and Art. 27 of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement determines that patents must be available for all technical fields. Therefore, the INPI has been granting patents (despite the absence of a guideline such as the one now subject to public consultation), provided that they fulfil the legal requirements of novelty, inventive activity, and industrial application. The guideline proposed by INPI follows EPO (G3/08) of the European Patent Office, highlighting the importance of identifying the technical problem being solved, as well as the proposed solution and the effects attained thereby. The invention must have a technical character and solve a technical problem,demonstrating an inventive technical contribution to the prior art. The draft guideline lists, as examples of technical effect, (i) optimization (of speed of execution, of hardware resources, of memory use, of access to databases); and (ii) file management, data transmission, and optimization of user interface. The guideline highlights that when related merely to appearance, aspects of a computer program interface are not considered as inventions, although their functional aspects, such as the functionality of a new human machine interface (HMI) may be deemed to constitute inventions. The invention must also have a predetermined technical effect going beyond the normal physical interactions between the program (software) and the computer (hardware) on which it runs, regardless of whether this technical effect is internal or external to the processing unit. Examples cited by the draft guideline are inventions that (i) shorten memory access times; (ii) provide better control over a robot element; or (iii) provide better reception or coding of a radio signal, meeting the technical effect criteria even when taking place inside the computer. The guideline states that in these cases there is a direct causal relation between the invention and such effects. The draft guideline also points out that creations involving mathematical methods may constitute inventions if they are intrinsically linked to a practical application aimed at solving a technical problem. Following the same rationale, it states that an invention that implements an algorithm, despite the exclusion from patentability as such, is patentable when run by a specific hardware item, consisting of basic instructions or logical steps to be followed in order to produce a technical effect solving a specific problem. The guideline establishes that the title of the patent application must be concise, clear and accurate, identifying the purpose of the application and listing the categories of claims requested. Expressions or words such as software, computer program, business method, money, treatment, method, etc, are not accepted, as they are listed in the Brazilian Patent Law as excluded from patentability. The description of the invention must be clear to a person having ordinary skill, and small excerpts of the source code may be presented, should this be deemed useful for understanding the invention. The draft guideline goes further and states that it is “of vital importance” that the relevant state of the art is described, and that the technical problems are “precisely and clearly” demonstrated. The application must present drawings to ensure a better understanding of the invention, such as the overall structure, basic blocks and segments in terms of its functions, meaning flow charts for the method being implemented, as well as some of the main screens, should the invention involve the user interface. According to the draft, the invention may be claimed as a product (system, device or device associated to the process) or a process (method). The claims cannot contain snippets of the source code. Product claims must be described in terms of their physical elements (new devices, memories, etc) or in terms of the methods they employ and their functions. These functions may characterise the product as a set of stages performed in sequence. However, claims must always refer to the physical elements that comprise the product, and not merely their effects. Process claims must be written as a sequence of stages, describing the functions attained, for example: “A method for automatic gear change control, characterised by the stages of measuring motor speed, generating a skid indication sign, comparing motor speed and input speed, in order to control the gear change action.” These claims must be worded as a method or as a process, as both refer to a set of stages for attaining a technical outcome.

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This article was originally published in “WIPR”, World Intellectual Property Review. For further information, please access the following website: http://www.worldipreview.com/article/draft-guideline-for-software-examination-under-consideration

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