Maximizing patent protection of software implemented inventions
November 10, 2017

André Venturini and Roberto Rodrigues How to maximize protection of software-implemented inventions in Brazil is a concern of technology companies. Applicants should seek patent protection that allows enforcement of product claims against free riders without having to upset hardware costumers or to deal with contributory infringement and inducement. Claim drafting based on the current Brazilian Patent and Trademark Office (INPI) practice might not be the best way to maximize patent protection. The mindset when drafting a claim should be on how they will be examined in the future, taking into consideration that INPI changes its practice and policies from time to time. Software product claims consisting of the encoding and decoding instructions are a good example of product claims to be enforced against infringers. However, these claims are not often pursued in Brazil in view of potential issues concerning patentable subject matter. Patentable subject matter The Brazilian Patent Statute (Law No. 9.279/1996) sets out specific subject matter that will not be considered patent-eligible. The prohibition on patenting software “per se” is established in article 10, V, of the statute. The question of whether software can be patented is answered with the interpretation of the expression “per se”. The rationale behind this expression is to delineate what can be protected by copyright and what can be patented—while attaining an inventive concept. The definition of software is provided by the Statute on Protection of Intellectual Property of Software (Law No. 9.609/1998) as a set of instructions in any language that is applied to an apparatus for determined purposes. Software “per se” is a source code or an object code of a computer program, devoid of any technical characteristics. It is then subject to copyright protection. On the other hand, a computer program performing functions enabled by the source or object code can be patented if it achieves a technical effect. The patent statute does not establish a high standard for granting patents covering software-implemented inventions. However, the statute is strict concerning abstract concepts, such as business methods. Abstract concepts or principles relating to “purely mental acts” are included in the restrictions on patentable subject matter in the patent statute (article 10, II). The fact that they are implemented by software will not change their nature, according to INPI’s interpretation. Once the barriers to non-patentable subject matter provided in article 10 of the patent statute are overcome, applicants might face a more positive picture regarding the extent of protection accepted by INPI. [blockquote]"An additional category not covered in the draft guidelines, which might be allowed by INPI in the coming years, is software product claims."[/blockquote] Maximizing software patent protection The categories often claimed are method and system/apparatus-related. Method claims mainly reflect the method that is actually implemented by the software (ie, what the software does). System/apparatus claims will mirror the method claims (ie, what the software transforms). In relation to system/apparatus claims, it is advisable in Brazil to use functional claim language (“means plus function”). There is no particular limitation on functional claims with basis on the embodiments provided in the specification. Functional language will be accepted in Brazil if it does not place the claimed matter in conflict with prior art and if the element referred to in the claim is still clear to an expert in the art. In 2012, when INPI placed the draft guidelines for software examination under public consultation, it recognized the possibility of allowing broader claim language for software-implemented inventions. According to the draft guidelines (pending publication), computer readable medium (CRM) claims are allowed. Considering a new encoding technique, INPI’s draft guidelines allow up to seven categories/independent claims (method of encoding, method of decoding, encoding apparatus, decoding apparatus, system comprising both apparatuses, CRM comprising the encoding instructions, and CRM comprising the decoding instructions). An additional category not covered in the draft guidelines, which might be allowed by INPI in the coming years, is software product claims. An example of such a product claim would be: “Computer program comprising instructions that, when executed by a processor, cause an apparatus to perform method of claim x.” This forecast is based on the fact that INPI’s practice concerning examination of software is becoming more similar to the European Patent Office’s (EPO) examination. It is possible that the EPO’s decisions in cases T 0935/97 and T 1173/97 can influence INPI to accept software product claims. Therefore, applicants should add this category of claim in their Brazilian applications in order to maximize patent protection and the chances of obtaining preliminary injunctions against infringers.

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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/contributed-article/jurisdiction-report-brazil

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