Four years after the publication of the first Examination Guidelines for computer-implemented inventions, the Brazilian Patent Office published a new revised version of the Guidelines, which will enter into force on January 1st, 2021 (a translation of the guidelines can be accessed here
The guidelines maintain the previous understanding of the BPTO, which recognizes the possibility of having a computer program protected both by a patent, through Law 9279/96 — the Industrial Property Law (LPI) —, claiming the method and/or the system that consubstantiates it, 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. 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, in the case when such techniques are implemented by a computer.
The guidelines, however, foresee exceptions to each of these prohibitions, 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, wherein said technical effect does not concern solely the way the computer program is written.
As in the previous guidelines, claim categories that fall directly into the restrictions of Art. 10 of the LPI are not accepted, examples of such categories being: software, computer program, computer program product, algorithm, application, code, etc. However, claims in the carrier category, like computer readable media characterized by having recorded thereon instructions to execute a method that is considered to be patentable, are still acceptable in Brazil. Also, a new addition to the guidelines is that carrier claims for transitory storage medium, like carrier waves and electromagnetic signals, are also accepted in Brazil.
Another new and welcome addition to the guidelines regards to protection of datasets, very relevant to AI related inventions. Although the guidelines establish that data structures per se are not considered an invention, they set forth that a creation that uses or generates data structures may be considered an invention.
However, we are still waiting to see specific guidelines for inventions related to Artificial Intelligence, Blockchain and the Internet of Things, which are not discussed in detail in these new Guidelines.
Although still lacking such explicit guidance, we expect the understanding of the BPTO regarding these matters to be similar to the one for computer-implemented inventions.
Therefore, we have confidence in that technologies created in this 4th Industrial Revolution should be patentable in Brazil provided that they solve a technical problem and provide a technical contribution in view of the state of the art.
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