The Brazilian PTO (BRPTO) published on December 29, 2020 the new Guidelines for the Examination of Patent Applications Covering Software Implemented Inventions. Its greatest merit lies in the fact that no change in the understanding of the concepts underlaying software implemented inventions was introduced. The BRPTO essentially ratifies its long-standing position regarding this subject and provides a clearer and more organized version of the former Guidelines.
The main key takeaways are:
- Mathematical methods can be considered inventions if applied to the solution of a problem and providing a technical effect. However, the simple implementation of a mathematical method by software is still not patent eligible. Business methods are not eligible either, even if implemented in a computer;
- When assessing inventive step, it is important to determine whether the technical effect derives from the invention itself and not from the computer in which the invention is implemented;
- Process and product claims are accepted. Examples of product claims are systems and devices. Software claims or software product claims are not acceptable. The latter should be drafted as CRM (computer readable medium) claims; and
- The use of the “means plus function” language is acceptable for product claims if it is not possible to define the product in its structural elements and/or the means are clear for one skilled in the art.