Articles 10 and 18 of Brazilian IP Law

Wrote by Mr. José Roberto Cunha, CNV IP

Subjects that are not considered to be inventions, however there are controversies

The well-known Articles 10 and 18 of Brazilian IP Law prevent the allowance of patent applications in many areas. However, it is necessary to make an accurate analysis about this matter.

First of all, I would like to highlight that according to Brazilian Patent practices the expression “Method” per se may be used in the patent description having the same meaning as the term “Process”.

Basically, if a “Method” (Art. 10 and 18 of Brazilian IP Law) is claimed, it should solve a technical problem and it should “survive” without the prohibition of the item of Art. 10 to which the method is applied on. This topic will be further detailed.

Article 10 of Brazilian IP Law has nine (09) prohibitions. Please pay attention to the item VII, whose analysis criteria have changed considerably in the last years:

I) Discoveries

It is very fair not granting privilege of something found in nature, since there was no intellectual effort by the person who made the discovery, but only a physical effort.

However, if someone discovers, for example, a plant in the Amazon rainforest and, for some reason, he/she comes to the conclusion that it is good for curing headaches, the composition of this active ingredient is patentable (since there was an intellectual effort).

II) Scientific theories

The Laws of nature are a good example of it.  They just exist, simple as that. They are generally verified by scientists and scholars in applied researches.

However, if someone uses a law or a principle of physics, for instance the Bernoulli’s principle, which states that the speed of a fluid increases with the reduction of pressure, and he/she applies this principle in a chimney (for example) adding a technical differential or improvement in its operation in relation to the state of the art, this chimney is eligible to be patentable.

III) Mathematical methods

An equation is not patentable, although there is a mental effort to solve it, the result solves exclusively a mathematical problem and not a technical problem.

A practical example of the use of equations is the creation of the atomic bomb in the 40s of the last century, which (conjecturing) would not be patented in Brazil, since it infringes the Art. 18, which will be commented hereafter.

IV) Purely abstract concepts

In summary, those concepts are ideas like flying saucer, a perfect machine that works without any kind of loss, the replicator of the Star Trek, among others.

Everything I mentioned above is not patentable because they cannot be reproduced by a person skilled in the art.

However, if an inventor describes a way to implement those ideas that convinces the examiner then it may be patentable.

If we remember that the cell phone was just an idea not long time ago, it is possible to understand that technologies are advancing.

V) Schemes, plans, principles or methods of a commercial, accounting, financial, educational, publishing, lottery or fiscal nature

That is a good opportunity to better explain if the “method” solves a technical problem and whether it “survives” without the element of the item of Art. 10 to which the method is applied on.

According to Brazilian PTO criteria, some examples of “methods” are not patentable:

(i) market analysis, auctions, consortia, incentive programs, methods of item III of Art. 10 involving points of sale; wire transfers – through a bank network or ATM, which includes among its functional steps the exchange rate and service fees calculations; banking methods, tax processing, insurance, property analysis, financial analysis; audit methods, investment planning, retirement plans, medical insurance, online shopping methods; online method of selling airline tickets over the internet, among others.

However, for instance, if a method related to the finance field solves a technical problem and “survives” without the monetary element of the item of Art. 10, it is possible to be patentable.

A classic example is a method of encryption used in bank accounts, but which can be used for other purposes as well, thus that is a method that “survives” without the monetary element.

VI) Literary, architectural, artistic and scientific works or any aesthetic creation;

The same reasoning above described should be applied to this item, that is, if the “Method” solves the technical problem.

For example, an aesthetic creation that is unique (e.g. a painting) should be protected by Copyright, however, if the aesthetic creation is a print/stamp, it can be used as an industrial manufacturing type, therefore, protected by Industrial Design. Likewise, if the aesthetic creation has technical characteristics, it may be patentable (e.g. tire tread pattern design).

VII) Computer programs per se   

Source code, in other words, the computer program per se is not patentable, but under Brazilian Laws it is protected by a Copyright registration before Brazilian PTO.

Brazilian PTO analyses related to the popularly called “Software Patents” has considerably changed. Currently, those are described as “Patent Applications Involving Inventions Implemented by Computer Programs”, which makes more sense than their popular name.

Some time ago, the rule was: “software patent” would only receive the allowance if the software was used on any hardware and, in addition, if it met the patentability requirements.

According to the new guidelines concerning “Patent Applications Involving Inventions Implemented by Computer Program” (product or process may be claimed), it is irrelevant if the process is used on a personal computer, microcontrollers, etc. It is noticed that the former hardware (a product) has changed very much.

In all areas of technology, it is still important to solve a problem in the state of the art and achieve a new technical effect that is not related to the way as the program was written.

In the area of Process claims, there are three possibilities:

a) Process that uses physical quantities to generate a product or physical effect:

Example: a patent application whose software uses data from sensors (considered physical quantities because they measure, for example, acceleration, speed, etc.) to infer (act) on an ABS brake.

b) Process that uses physical quantities to generate a virtual product:

That is a little more complex, however imagine physical quantities such as the amplitude of an electrical signal to obtain a virtual product such as an image treatment of cameras with low resolution.

c) Process that uses abstract quantities to generate a virtual product:

Processes included in this area manipulate abstract quantities, those created in the process environment without representing physical quantities, to transform a virtual product into another virtual product stored on a device.

Examples: data compression, encryption, database management, data communication protocols.

Even embedded software is eligible to be patentable.

Please, note the huge range of options for filing Patent Applications Involving Inventions Implemented by Computer Program.

VIII) The presentation of information

The creation characterized only by its informative content is not patentable, as, for example, colors indicating dumbbell weights. Likewise, graphical interfaces (used in computers) also present only informational characteristics. There is no technical effect in both examples above mentioned. However, if a method allows this interface, in some way, to interact in a Word [.doc] document, it may be a process claim that uses abstract quantities to generate a virtual product.

IX) Rules of games

In this category the rule is clear, it is NOT considered to be invention or utility model.

Generally, protection is given to the construction of the game, never to its rule. A classic example is the hinged chessboard that has reduced its volume and it storages the pieces inside.

X) Operating or surgical techniques and therapeutic or diagnostic methods, for use on the human or animal body

In this important prohibition, it should be noted that the methods for embryo implantation and for artificial insemination “in vivo” are considered operating methods. Otherwise, a device to perform those methods is possible to be patentable.

Diagnostic method

A diagnostic method for use on human or animal body infringes the above mentioned prohibition when it meets the following requirements: (i) it performs a direct application to the human or animal body, for example, in the determination of allergic conditions by diagnostic test used in the body, the presence or the participation of the patient for its interpretation is required; and (ii) it allows the conclusion of the patient’s clinical status or it indicates several probable clinical status, just based on the processing, analysis or interpretation of data, information and/or test results associated with the patient.

In this category, methods that deal with in vitro tests (in which samples are removed from the human and animal body) are patentable, such as a blood test method.

XI) Natural living beings, in whole or in part, and biological material, including the genome or germ plasm of any natural living being, when found in nature or isolated therefrom, and natural biological processes.

Article 18 has three (03) items:

1. which is contrary to morals, good customs and public security, order and health.

The evaluation of what is immoral, what puts in risk the security or what affects the good customs is very subjective. According to the Brazilian regulations, the mere possibility of misuse of an invention is not enough to refuse the patent protection.

In other words, a method for opening safes could be dangerous if it is misused by a thief, however it would be great for a locksmith.

2. Substances, matter, mixtures, elements or products of any kind, as well as the modification of their physical-chemical properties and the respective processes of obtaining or modifying them, when they result from the transformation of the atomic nucleus

That category prohibits the patenting of nuclear fission or fusion methods per se, as well as the derived products. The remaining, such as reactor control methods and other equipment used in uranium enrichment, are patentable.

3. Living beings, in whole or in part, except transgenic micro-organisms meeting the three patentability requirements – novelty, inventive activity and industrial application – provided for in article 8 and which are not mere discoveries

General Remark: It is important to highlight that by mentioning here that a particular object or process can be patentable, obviously patentability requirements must be considered.