The last Resolution published by the INPI about this subject date from November 28, 2016 (Resolution INPI/PR Nº 158) and, since then, we have witnessed several advances in computer-implemented inventions and the increase in the number of patent applications on this subject matter, which has been a challenge both for the Patent Offices that examine and grant the patents and for the applicants of this category of application.
On this topic, the perceptions of the Patent Offices regarding its patentability are diverse, especially regarding the limits in the scope of protection.
Thus, seeking to expose the understanding of its technical staff, INPI presents in these Guidelines detailed information so that inventors would know what to expect from the examination of this matter in Brazil.
In general, the recently published rules indicate that the protection of inventions implemented by computer programs must be done in the form of a Patent Invention (not as an Utility Model), since it is based on a process. It must also meet the legal requirements for patentability (novelty, inventive step and industrial application).
Additionally, it is considered as an algorithm a sequence of logical steps to be followed to solve a certain problem. According to this definition, an algorithm consists of a method or process and, therefore, must be claimed as such. In contrast, a computer program that determines the behavior of a dedicated device was considered as embedded software. Thus, the functionality associated with the behavior of that device may be patentable in the form of a process and the device dedicated to said functionality may be patentable in the form of a product.
As for the cases not considered as an invention according to Article 10 of the Industrial Property Law - Law No. 9,279/96, but which may involve creations implemented in a computer, two relevant understandings brought by the Guidelines are highlighted:
- Mathematical Methods - creations involving mathematical concepts can be considered inventions when applied to solve technical problems and manipulate information associated with physical quantities or abstract data, with real or virtual results. Artificial intelligence (AI) techniques, including machine learning and deep learning tools, among others, when applied to solve technical problems can be considered an invention.
- Computer program (Software) - the computer program itself is understood as the expression of an organized set of instructions in natural or coded language, referring to the literal elements of creation, such as the source code. The computer program itself is not considered an invention. Therefore, the source code of the program that brings the benefit of greater speed, smaller size (either from the source code or the space occupied in memory), modularity, among others, is not considered an invention, even if these are technical effects. However, a creation with an industrial application and implemented on a computer can be considered an invention if it solves a technical problem and achieves technical effects that do not concern only the way this computer program is written.
In these two situations it can be understood that the INPI has aligned itself with the prevailing understanding in several Patent Offices such as, for example, the European Patent Office (EPO), and "officializes" the practice so far adopted by the applicants and inventors for the patent protection of these particular matters.
With the published Examination Guidelines, it is now expected that the analysis of patent applications of this nature will be agile and transparent.