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By Gustavo José Ferreira Barbosa

Examination Guidelines for Computer-Implemented Inventions are now in force

A fter a very long wait, the Brazilian Patent Office finally published the Examination Guidelines for computer-implemented inventions, which went into effect on 6 December 2016, date on which they were published in the Brazilian Official Gazette. The guidelines underwent a process of public consultation and the final version introduced no relevant divergence from the draft document that had been distributed. A translation of the guidelines is enclosed.
 
The Guidelines are divided into 5 main chapters regulating, in sequence:
 
– what is (not) an invention;
– the classes of computer-implemented inventions;
– the treatment to be given to algorithms, on-board software and text processors;
– the patentability criteria; and
– the structure of an application claiming a computer-implemented invention.
 
The document recognizes the possibility of having a computer program protected both through Law 9279/96 — the Industrial Property Law (IPL), by a patent claiming the method it consubstantiates, and as a computer program per se through Law 9609/98, which instituted copyright-like protection to computer program code.
 
Law 9279/96, in its Article 10, defines classes of creations that are not considered to be inventions. Therefore, in principle, nothing that fits one of the fields listed in this article would be patentable.
 
The set of non-patentable creations specifically commented about in the guidelines comprises mathematical methods; business, accounting, financial, education, publicity, lottery, and supervision or auditing methods; diagnostic or therapeutic methods applied directly to a body; and the presentation of information.
 
It is to be noted, however, that exceptions to each of these categories are also foreseen, meaning that the bar is not absolute and can be circumvented in some situations. All exceptions are related to the requirement that the invention is inserted in a technical field, solves a technical problem and imparts a technical effect.
 
The guidelines summarize the exceptions by defining three different classes of methods that are patentable for using physical or abstract variables to create a physical effect or a product, regardless of the product being physical or virtual.
 
But, maybe, the most relevant point to note is that the guidelines accept as patentable a claim defining digital media characterized by having recorded thereon instructions to execute a method that is considered to be patentable. For several years, we have been advising our clients that this kind of wording was admitted in the draft guidelines, and seeing the confirmation of this advice in the final document is quite rewarding.
 
As always, we are at your entire disposal for more detailed comments.
 
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