Client Alert

New Examination Guidelines for Computer-Implemented Inventions (CII)
(per BRPTO's gazette of December 29, 2020).

As mentioned in our client alert of December 29, 2020, the BRPTO published Ordinance #411/2020, which establishes the new version of the Examination Guidelines for Computer-Implemented Inventions (CII). This ordinance is in force as of January 1, 2021, and revokes the previous guidelines provided by Rule #158/2016.

The main difference between the new CII Guidelines (Ordinance #411/2020) and the former ones (Rule #158/2016) lies in their structure and organization. Compared to the previous set, the new guidelines are easier to read, the topics are better defined, and more examples are provided.

The following definitions are a central feature of the new guidelines:

i. when examining a patent application related to computer-implemented inventions, it is irrelevant whether the process is running on a general use computer (personal computer) or on a specific use computer (PIC, FPGA, etc.) or whether the computer is on a local network, remote network, or cloud. It is also irrelevant whether the process is performed in an Internet of Things (IoT) environment;

ii. Artificial Intelligence (AI) techniques, which include machine learning and deep learning tools, among others, can be considered inventions when applied to the solution of technical problems;

iii. the terms "set of instructions" and "the expression of a set of instructions" are not considered synonymous. A "set of instructions" defines a method, which is considered to be an invention, while "the expression of a set of instructions" (i.e., the source code of a computer program) defines a particular way in which that method manifests itself, and it is not considered to be an invention;

iv. claim categories such as software, computer program, computer program product, and algorithm are not patentable;

v. a computer-readable memory characterized by containing a set of instructions that when executed, perform the method with steps A, B and C is an acceptable claim, as long as the specification supports it;

vi. an independent claim can refer to one or more claims when such a structure does not cause a lack of clarity in the claimed object. For example, a device characterized by comprising means to execute the method defined by any one of claims 1 to 10 or a system to detect a signal characterized by comprising means for implementing the method defined by claim 1;

vii. claim categories such as recording media, memory, signal, wave, carrier, readable non-transitory medium by computer, among others, are accepted as a product claim.

Ordinance #411/2020 is available at the BRPTO's website, and its original version (in Portuguese) can be downloaded here.

For the English version of the new guidelines or more information on this matter, please contact us at patents@lickslegal.com.  We will be glad to assist you.

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