The Brazilian PTO published in the Official Gazette No. 2608, of December 29, 2020, new Guidelines for Examining Patent Applications Involving Computer-Implemented Inventions. These guidelines, which were under public consultation in August 2020, replace Resolution No. 158/2016 previously in force.
The publication of the new guidelines takes place in a scenario in which technologies are increasingly integrated and using intelligent systems to achieve better results. It has been a while since it became notorious that such regulation needed to be updated in view of technologies increasingly present in everyday life, such as Internet of Things (IoT) and Artificial Intelligence (AI).
Thus, the main modification of the Guidelines for Examining Patent Applications Involving Computer-Implemented Inventions (IIC) in relation to former Resolution No. 158/2016 is the explicit mention that during the analysis of a computer-implemented process, the fact that it is executed in an IoT environment is irrelevant. Therefore, patent applications that disclose inventions implemented in this environment will be examined like any other computer-implemented invention.
Similarly, the new guidelines also establish that AI techniques, covering machine learning and deep learning tools, among others, when applied in the solution of technical problems can be considered as an invention. However, due to the increasing importance of this topic, Brazilian PTO should remedy in the near future the absence of additional guidelines regarding the suitability of these inventions to the current intellectual property system, such as ownership of inventions made by machines, as well as the assessment of inventive step and sufficiency of disclosure, among others.
Furthermore, it is important to point out that the BPTO’s rules regarding the drafting of claims for inventions implemented by computer are the same as those found in Resolution No. 158/2016, as well as the need to define the claims related to methods and processes through the steps necessary to carry them out. In cases where it is necessary to define product claims in terms of “means plus functions”, it is mandatory that they are supported by the Specification for these claims to be accepted. When there is no support and the means are specific for implementing that functionality, it will be mandatory that such specification of the means used be claimed. According to the Brazilian PTO, “the expression "means for storing data" is not accepted when the Specification defines that for the proposed invention to achieve the desired results there is a need to use a “DRAM memory” and there is no support in the Specification for the invention to function adequately with any type of memory”. In addition, the use of terms such as “computer program”, “software”, “application (apps)” should be avoided.
Finally, we emphasize that the new guidelines are part of a series of actions taken by the Brazilian PTO over the past years aimed at improving industrial property protection policies in Brazil. Among these actions, we highlight the plan to combat the patent backlog, which is in its final phase of implementation, and Brazil's accession to the Madrid Protocol. It is expected that these changes will make Brazil an important destination for companies seeking consumer markets with a mature policy of intellectual property protection, thus generating an environment favorable to the growth of companies and maturation of the competitive environment in the country, which would bring great benefits to Brazilian citizens.