Maximising patent protection of software-implemented inventions
Claim drafting based on the current Brazilian Patent and Trademark Office (INPI) practice might not be the best way to maximise patent protection. The mindset when drafting a claim should be on how they will be examined in the future, taking into consideration that INPI changes its practice and policies from time to time.
Software product claims consisting of the encoding and decoding instructions are a good example of product claims to be enforced against infringers. However, these claims are not often pursued in Brazil in view of potential issues concerning patentable subject matter.
Patentable subject matter
The Brazilian Patent Statute (Law No. 9.279/1996) sets out specific subject matter that will not be considered patent-eligible. The prohibition on patenting software “per se” is established in article 10, V, of the statute. The question of whether software can be patented is answered with the interpretation of the expression “per se”. The rationale behind this expression is to delineate what can be protected by copyright and what can be patented—while attaining an inventive concept.
The definition of software is provided by the Statute on Protection of Intellectual Property of Software (Law No. 9.609/1998) as a set of instructions in any language that is applied to an apparatus for determined purposes. Software “per se” is a source code or an object code of a computer program, devoid of any technical characteristics. It is then subject to copyright protection.
On the other hand, a computer program performing functions enabled by the source or object code can be patented if it achieves a technical effect. The patent statute does not establish a high standard for granting patents covering software-implemented inventions. However, the statute is strict concerning abstract concepts, such as business methods.
Abstract concepts or principles relating to “purely mental acts” are included in the restrictions on patentable subject matter in the patent statute (article 10, II). The fact that they are implemented by software will not change their nature, according to INPI’s interpretation.
Once the barriers to non-patentable subject matter provided in article 10 of the patent statute are overcome, applicants might face a more positive picture regarding the extent of protection accepted by INPI.
