Guidelines referred to software related inventions

The “Guidelines for Patenting” of the Argentine Patent and Trademark Office (“INPI”) explain in detail their interpretation of Argentine Patent Law No 24,481, as amended by Law No 24,572 (restated text Decree No 260/96) for prosecution of patent applications, and their position in view of certain aspects that have created some conflicts with the applicants. The prosecution of patent applications of inventions related to software is one these conflicting aspects.

1. Background

Inventions related to software, commonly known as “Computer implemented inventions” (CII) were not excluded from the Patent Law No 111, which was abrogated by the end of 1995. However, in order to define their position in respect to these inventions, the INPI issued on December 11, 1975, Resolution No 15/75 in which they briefly explained the way these cases would be considered, stating that:

1.- In a patent application in which the object of the invention is a computer, a data processor or a logic circuit, or a combination of means in which at least one is a computer, a data processor or a logic circuit, the object must be defined describing the relationship among its parts, only accepting the functional interaction of the means as complementary information, and only if this interaction is univocal.

2.- In applications according to the item 1, the definition of the novelty of the main object will not be accepted if it comprises a computer program, being understood that a computer program is formed by a set of instructions for controlling the operating sequence of the computer, data processor or logic circuit of the mentioned combination of means, and wherein at least one of these means is comprised by a computer, a data processor or logic circuit.

3.- In patent applications defining a process as the main object of the invention, including those inventions that comprise one or more control steps implemented by a computer, a data processor or logic circuit, in which the term “control” is understood as a way to induce a variation in a parameter or in an operating condition as a function of the same parameter or of another one, or as a function of the operative condition, the process will not be excluded from patentability only if the novelty feature is not exclusively based on the processing of the parameter or of the operative condition of the mentioned computer. The terms established in items 1 and 2 are also valid for the arrangement that carries out the process.

In this way the INPI established that, although Patent Law No 111 did not mention inventions related to software (CII), these would be patentable only if the functional features of the process were new or if the hardware had new structural elements, and only if these were clearly described, but in any case, excluding the features of the program. It was also explicitly established that programs claimed as such were also excluded.

The well-known “IBM vs. La Nación” case of 1984, in which the Supreme Court ruled that a patent for a program should be granted if the program was claimed in combination with some hardware device, did not substantially change the situation because the INPI kept their restrictive attitude even after the new Patent Law was passed on November 1995.

2. The situation since November 1995 and until 1999

When the new Patent Law No 24,481 was passed, the INPI faced a new restriction to patentability of CII inventions, because the new law explicitly states in Section 6(c) that computer programs may not be considered inventions.

In view of this limitation the INPI kept on granting a few patents to arrangements and methods related to software, applying the well-known criteria based on evaluating industrial applicability, novelty and inventive merit (equivalent to article 52(1) of the EPC). However, nearly no patents were granted to CII inventions after the end of 1996, a fact which should call one’s attention.

3. The situation since 1999 to our days

In 1997 the Technical Board of Appeal (BoA) of the European Patent Office (EPO) established through cases T0935/97 and T1173/97 (both in the name of IBM Corp.) more flexible criteria when analyzing patentability of CII inventions. The BoA decided that CII and their associated programs showing “technical character” should not be excluded from patentability, based on articles 52(2) and 52(3), if the running of the program involved a “technical contribution” and, under that criteria, it made no difference if the program was claimed by itself or as a record on a carrier.

Several years later, on December 10, 2003 the INPI published the document called “Guidelines for Patenting”. The explanation of the wording “technical character” and “technical contribution” contained in this document seems to have been translated nearly word by word from the equivalent EPO guidelines, being these definitions out of the scope of this article. However, the most important fact to point out is that, although the INPI usually closely follows the EPO guidelines, at this point they seem to have drawn away from these. In part C (Chapter IV) the document reads:

“A computer program claimed as such, or claimed as being stored on a carrier, will not be patentable, whatever its contents may be. This is also precludes patentability of computer programs even if they are loaded in a known computer”.

This paragraph clearly establishes an important difference with respect to the criteria adopted by the EPO, being the criteria of the INPI much more restrictive than the one of the latter. This difference should not surprise the reader, taking in account that the bar to patentability of computer programs established in article 6(c) of the current Patent Law No 24,481 makes no reference to the fact that these are claimed “as such”, while the Guidelines of the EPO make a particular reference in this sense in their article 52(3),

Further, the INPI guidelines state that a claimed object (that is an apparatus, an arrangement, or a method) should not be at first excluded from patenting if it shows “technical contribution” to the prior art, even if a computer program is involved in its embodiment, e.g.:

* machines controlled by computer programs;

* manufacture proceedings controlled by computer programs;

* control procedures;

* operating system programs controlling the inner functions of a known computer.

The INPI guidelines document describes further details of the matter related to patenting CII inventions in Annex VII of Part C, reading:

1.- A claim defining any of the matters excluded by Section 6 of the Law No 24,481 should be rejected, disregarding the means used for obtaining the final product or for carrying out the method involved.

2.- A claim including a non-technical feature should be rejected. In this way, if a claim defines an ornamental feature, a purely economical or financial one, or any feature related to artistic activities, it should be rejected.

3.- Processing of physical data should be considered technical matter except for data related to commercial activities or for the processing of text (translations, spelling correctors, etc.) claimed as such.

4.- The automation of a commercial activity may be considered technical matter if it enhances confidentiality (e.g. avoiding that the information is accessed by more than one program).

5.- The technical means for carrying out a non-technical method do not turn the method into a technical matter.

4. Conclusions

The document published by the INPI titled “Guidelines for Patenting” attempts to clearly establish patentability criteria for inventions in general and particularly for inventions of the type CII, following, in general, the criteria of the EPO but being more restrictive and excluding the computer programs defined as such. However, the everyday reality shows that these patent applications fall within the group of overall delayed cases of this Patent Office, resulting in a scarcity of granted patents for CII inventions since 1996, and therefore, it is not possible to confirm, at first, what the actual reaction of the local examiners might be once these applications arrive to a substantive examination.