Patent Protection For Computer Related Programs
Resolution No. 318/2012, issued in Buenos Aires on 07/12/2012, contains guidelines for the examination of applications directed to computer programs. These guidelines come to formalize the practice currently applied by the Patent Office.
The following are the most relevant points to be taken into account:
1 – Exclusions from patentability
Section 6 of the Patent Law establishes that the following are not considered inventions:[…]
c) Schemes, rules or methods of doing business, performing purely mental acts or playing games, as well as computer programs.
The reason for the exclusion from patentability of computer programs, along with other subject matters such as literary or artistic works, discoveries or scientific theories, or schemes, rules and methods for doing business, is that they’re related to intellectual, mental and/or theoretical activities.
Any claim seeking protection for any of the subject matters or activities listed in the exclusions set out in Section 6 should be rejected regardless of the devices or methods used to carry them out.
2 – Technical nature and technical effect achieved by the invention
The technical nature of an invention is a consequence of its technical features. Excluded matter is considered non-technical and is not to be taken into account when assessing novelty and inventive step. If the core of the invention is not of a technical nature, the invention is not considered patentable.
It is said that an invention is of a technical nature when it is intended to solve a technical problem in the industry.
If a claim only includes non-technical features it must be rejected.
3 – Applications related to computer programs.
The description of an invention should allow to understand the technical problem posed, through a reference to the prior art known to the inventor, and a detailed description of the invention, highlighting the advantages thereof with respect to said state of the art (Section 12 of the Regulatory Decree of the Patent Law) and the claims must define the subject matter to be protected specifying the technical features of the invention that comprise the solution provided (see C, III, 2).
In the case of applications related to computer programs it is necessary to define the technical effect produced by implementation of the invention. When the technical effect actually takes place, even if it is a known effect, the invention will be patentable provided it meets all other requirements such as novelty, inventive step and industrial application as established in Section 4 of the Patent Law.
An invention may be found to be of a technical nature based on the technical effects obtained through execution, by the computer hardware of the commands contained in the computer program, if such effects solve a technical problem.
In short, we may distinguish the following situations:
- A computer program, claimed on its own, or as a recording on a data carrier is not patentable, regardless of its content, because it was not intended as a technical work.
- The same applies when a computer program is executed by a known computer.
- However, if the claimed subject matter makes a technical contribution to the prior art, patentability should not be denied simply because a computer program is involved in its implementation.
- Any inventions related to computer programs providing a technical solution to a specific problem in the state of art may be considered patentable.