You have probably already heard that computer programs/software as such are not patentable in Brazil. This is true, since Article 10 (V) of the Brazilian IP Law states that computer programs per se are not considered inventions. However, this assertion merely means that patents cannot protect the source code of software in Brazil. On the other hand, it is important to keep in mind that computer implemented inventions (CII) – also known as software-implemented inventions – are patentable in Brazil. This article seeks to present the main topics in the current Examination Guidelines on CII, which were published by the Brazilian PTO in December 2020, after a public consultation was held to update the former guidelines from 2016.
First, the new guidelines did not change any criteria for analyzing the patentability of a computer-implemented invention. Since the CII may be claimed as “processes” (“methods”) and/or “products”, a method being implemented by a computer does not disqualify its industrial application. Therefore, the same rules must be applied to analyze the industrial application requirement of any patents of invention. The same applies for novelty.
According to the new guidelines, a computer implemented invention directed to a process or a product, which was previously implemented by a specific hardware, is not considered as inventive, when it consists merely of equivalent embodiments. Additionally, the simple automatization of a known manual process is not considered as inventive.
For purpose of inventive activity, the technical effects intrinsic to the CII must be considered. The guidelines clarify that indirect technical effects – such as processing velocity and accuracy of results – are related to the computer system and not to the invention. Therefore, the technical effects reached by the invention itself and the technical effects due to the computer system must be clearly distinguished when examining the inventive activity requirement.
Claim categories falling within the provisions of the Article 10 of the Brazilian IP Law (computer programs, mathematical, commercial or financial methods, surgical techniques, therapeutic or diagnostic methods, presentation of information, among others) are not accepted. Additionally, the claims must not contain portions of source codes included therein, nor cite terms like “software”, “computer program”, “computer program product”, “algorithm”, “source code”, “code”, and “instructions code”.
The guidelines state that “process” claims must be drafted as a sequence of steps, describing the technical features. Said steps must not be initiated with “means for”, because this expression can be understood as “device for”, leading to a lack of clarity.
Moreover, “product” claims must be drafted in terms of the physical components (e.g., devices, memory, etc.) or in terms of “means plus function”. If a “system” claim cannot be defined based on its equipment or devices, for example, it can be claimed based on a “means plus function” construction. However, said construction must be avoided when it changes a definition or creates a lack of clarity, as well as when it broadens the scope of protection as disclosed.
Other types of “product” claims are “support” claims, that is, claims related to “recording media”, “memory”, “non-transitory computer readable medium”, “signal”, “wave”, “carrier”, “bitstream”, among others. Although “support” claims are very common in patent applications related to CII, the Brazilian examiners did not have a unified understanding about them for many years. It was usual to face different decisions on similar matters. Specifically, the examiners used to have distinct interpretations on the patentability of the term “instructions”.
In this respect, it was clarified that “support” claims containing a set of instructions to carry out a method claimed in a previous claim are accepted, provided that this method is considered an invention. The guidelines have differentiated the meanings of “set of instructions” and “expression of a set of instructions”: while a “set of instructions” defines a method, the “expression of a set of instructions” is a particular manner to express said method, in other words, it is the “source code” or, as cited in the Brazilian IP Law, the “computer program per se”.
Therefore, the construction “A memory characterized by comprising instructions for carrying out a method according to claim 1”, must be interpreted as “A memory characterized by comprising a method…” and not as “A memory characterized by comprising computer program for…”
The main goal of this text was to summarize the most recent Brazilian Examination Guidelines on CII. As can be seen, obtaining patent protection for a computer-implemented invention in Brazil is totally possible. Further, we demonstrated the possibilities for claiming a CII, and what is accepted and rejected by the Brazilian PTO in this regard.