1 October 2011Jurisdiction reportsClaudia Gabriela Campos Chavelas

Technical versus non-technical features in computer-implemented inventions

Patent application filings for computer-implemented inventions have increased considerably in Mexico.

This has forced the Mexican Institute of Industrial Property (MIIP) to reconsider its strategies for assessing the patentability of such inventions and to try to get its patentability criteria to resemble, as much as possible, the criteria developed and used by foreign patent offices.

Several controversial issues surrounding how these new technologies should be assessed have been raised in Mexico. Although MIIP bases its decisions primarily on the criteria established by the European Patent Office, there are differences of opinion.

The main controversy surrounds the subject of patent applications relating to inventions that involve computer-implemented methods, particularly when the main task performed by the method is handling specific information or data.

A topic that causes conflict in particular is what can be considered to be a ‘technical feature’ and a ‘non-technical feature’ within computerimplemented inventions.

According to MIIP’s current practice, the term ‘technical’ in computer-implemented inventions means anything related to the tangible elements of the computer system that carries out the method. For example, the hardware elements that make up the computer system, including the processor, memory and ports, are technical features. The term non-technical refers to any information or data that is processed by the computer to make it carry out the method and obtain a specific result.

Unfortunately, Mexico’s Industrial Property Law (IPL), beyond the provisions of Article 19(3) and (4), which defines things that are not considered as inventions, does not say what can be considered to be a technical feature or a non-technical feature. This is the reason why the evaluation of computer-implemented inventions has become a challenging issue for both authorities and applicants.

"IT IS THE INTERACTION BETWEEN TECHNICAL FEATURES AND NON-TECHNICAL FEATURES THAT ALLOWS THE INVENTION TO BE PATENTABLE, BECAUSE THESE CHARACTERISTICS, AS A WHOLE, ALLOW A TECHNICAL PROBLEM TO BE SOLVED."

The problem with computer-implemented inventions arises in the substantive examination. MIIP tends to separate the matter contained in the claims from the patent application, and so it separates the matter into what it considers to represent technical features and non-technical features.

In most cases, this leads MIIP examiners to determine that the invention lacks inventive step since the examiners consider that the only indication of a difference with the state of the art are the non-technical features, that is to say, the information to be processed by the computer system.

As ‘technical’ and ‘non-technical’ are not defined in the IPL, the basis for determining whether the information to be processed can be considered a non-technical feature is also missing.

Since information is being processed through the computer system so that it can perform a specific task, it is appropriate to consider that the computer system and information, representing both technical characteristics necessary for the invention to solve a specific problem, should be considered as a whole instead of being disassociated.

It is the interaction between technical features and non-technical features that allows the invention to be patentable, because these characteristics, as a whole, allow a technical problem to be solved.

There are patent agents in Mexico who have told MIIP that the matter claimed in patent applications should not be divided this way, because the true spirit of the invention, which precisely refers to the invention as being processed (implemented) through a computer system, is diluted.

The interaction between elements of the computer and the information it processes is vital in achieving the objective of the invention. It is believed that separating the features of the invention and classifying them as technical and non-technical is not appropriate.

Computer-implemented inventions that satisfy the universal requirements of patentability should be granted and the evaluation of such inventions should be carried out carefully and on a case-by-case basis.

It is important to remark that regardless of the practice adopted by MIIP and the controversy surrounding what is presently considered to be a technical and a non-technical feature, IP practitioners are working with the authorities to try to establish well-defined criteria and clear guidelines for the evaluation of computer-implemented inventions. This is so that the adequate protection of these new technologies can be achieved in Mexico.

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