Inventive step and computer implemented inventions
The most common rejections of such inventions issued by the Mexican Institute of the Industrial Property (MIIP) make reference to a lack of a technical problem disclosed in the specification of the invention, if the invention falls into the prohibitions of Article 19 of the Industrial Property Law (IPL), combined with the lack of an inventive step.
We will focus on the lack of inventive step as a reason for an application being rejected, because of its importance. Additionally to whether the patent application lacks disclosure of the technical problem, or whether or not the invention is considered an invention according to Article 19 of the IPL, it is essential to clearly understand whether or not the automation of a known method complies with the universal patentability criterion of having an inventive step.
“There is a tendency to reject the inventive step of these computer-implemented inventions because of an erroneous assertion that though the method is carried out by a computer system, the elements and features involved in such a system are well known in the state of the art and therefore that the computerised implementation lacks inventive step.”
It is important to point out that automated methods are computer-implemented methods. Although we may be talking about a method that is already known, it is essential to consider that it was previously carried out by different means, generally electromechanical, that differed greatly from computer implementation. This is a fact that could lead to disagreement about the obviousness of the invention. There is a tendency to reject the inventive step of these computer-implemented inventions because of an erroneous assertion that though the method is carried out by a computer system, the elements and features involved in such a system are well known in the state of the art and therefore that the computerised implementation lacks inventive step.
But this is where the questions arise:
- Does the automation of a known method really involve an inventive step?
- Would it not be obvious for a person skilled in the art to merely carry out such implementation of a well-known method on a computer?
In Mexico, the examination does not focus on the aim of the implementation. The real reason why the automation was developed is not considered at any time. Instead, the fundamental part of the analysis focuses on determining the ‘technical elements’ required to fully implement the method, which correspond to the different elements of the computer system.
Notwithstanding that, in order to determine the inventiveness of an invention, it is essential to consider all the elements and features involved. So knowledge of different technical fields matters for computer-implemented inventions.
On the above basis, it is possible to establish and eventually argue that a computer-implemented invention should not only be analysed on the basis of the computer system that executes the method, but an analysis should also take into account the different elements directly involved in the invention to determine the inventive step.
We believe that although computer-implemented inventions are based upon a well-known method, in the first instance, they should not be considered obvious before all the elements and features involved in their development—such as the pertaining field of the automation in combination with the computerised implementation, which in turn contribute to sustain the non-obviousness of an invention of this kind—have been considered.
Taking into account the way the computer carries out each step of the method in order to achieve the goal for which it was designed is crucial.
Claudia Gabriela Campos Chavelas is a patent attorney at Becerril, Coca & Becerril, S.C. She can be contacted at: ccampos@bcb.com.mx
