Legislative Implementation of Flexibilities - Portugal
| Title: | Article 52 (1) d) of the Industrial Property Code, Decree-Law No. 36 of 05/03/2003 as last amended by Law No. 16 of 01/04/2008 |
| Field of IP: | Patents |
| Type of flexibility: | Patentability or exclusion from patentability, of software-related inventions |
| Summary table: |  |
Provisions of Law
Article 52. Limitations on Object
1 The following are exceptions to the previous article:
d) Schemes, rules or methods for intellectual acts, playing a game or doing business and computer programs, as such, with no contributions;
COMPUTER IMPLEMENTED INVENTIONS (CII) – from the Portuguese Institute of Industrial Property website: http://www.marcasepatentes.pt/index.php?section=340 -
Conditions which need to be checked for a CII
In order for a CII not to be excluded from patentability, according to Art. º52 of the IPC (Industrial Property Code), it has to be a technical solution to a technical problem and has to involve technical considerations or represent a technical contribution in a technological domain.
The cases which are excluded from patentability, according to Art. º52 of the IPC, are those that do not present any technical contribution, as such; a mathematical method, as such, a method of negotiation, as such etc, or which does not present any technical contribution. In addition, there are computer programs, as such, without any technical contribution.
What is the meaning of "as such" in for example, "mathematical method as such"?
The expression ‘as such' limits the object in question to its stated elements, that is, to its essential characteristics, those which do not posses a technical nature. In the case of a mathematical method, the aforementioned limitation consists of a mere description, for example, of the steps to an algorithm of calculation.
What is an invention with a "technical" character?
An invention that shows technical character is an invention in any field of technology. By this we mean that for technology, knowledge is the use of tools in all the practical services (trade services, craft services), as such with the capacity for adaptation or modification to the environment.
A technical problem is, therefore, a problem that appears in one or more technological areas, as a technical solution to the relevant problem a solution framed by the relevant areas. The technical considerations are the arguments, in the midst of the technical areas in question tending to show the relevance of the invention which presents a technical solution to a technical problem. In this context, we use the expression technical contribution to qualify an invention that presents a technical solution to a technical problem that goes beyond the general knowledge for the technical area in question.
Examples of technical characteristics in a CII are the processor, permanent physical support for data and programs (hard disc, CD), volatile memory (RAM), BUS and motherboard.
What is considered "non-technical"?
A few of the many examples of non-technical areas are: discoveries, scientific theories, mathematical methods, methods of negotiation, methods relating to a game, linguistic methods, computer presentations and aesthetic creations, as long as they are considered or exhibited as such.
Can technical and non-technical characteristics coexist in an invention?
Yes, though non-technical characteristics limit the protective environment afforded an invention, as with claimed. Beyond this, only the explicit technical characteristics in the claimed inventions are taken into account in order to verify the applications for patentability (novelty, inventive activity and industrial application).
Domains where CIIs appear
Typically, the CIIs appear in the following domains:
a) mathematical methods;
b) methods of negotiation;
c) games;
d) presentations/information management;
e) word processing;
f) linguistic methods;
g) management of human resources;
h) administrative efficiency;
i) accounting and financial methods;
j) machine control;
k) control of computing operations.
How can we distinguish a patentable CII from a non-patentable one?
For each of the domains listed above, the following examples merit illustration:
a) mathematical methods
non-patentable
a simplified algorithm to calculate the division isn't, as such, patentable, as it is a mathematical method as such, that does not present any technical contribution and is limited to being a purely abstract or intellectual activity;
patentable
A calculator constructed so that it can be used in accordance with the method referred to above, could be patentable, if there is a technical solution (e.g. the machine itself) to a technical problem (e.g. a reduced mental load on the user) and it involves technical considerations regarding hardware and software. i.e. the aforementioned mathematical method becomes eligible for patentability, merely as an integral part of an invention with technical character (e.g. the calculator);
b) methods of negotiation
non-patentable
a method to gain clients by offering discounts is not patentable because it is a method of negotiation and, as such, does not present any technical contribution and is limited to being an intellectual activity in the domain of economic activities;
patentable
a computer that has a client database with an installed application that will recognise a previous client and apply a discount on a specific purchase could be patentable, if it has been claimed as a technical solution (e.g. a computer) to a technical problem (e.g. the automatic reply of the current updated database), therefore what will eventually confer patentability on a method of negotiation is the technical contribution that might be in your implementation (hardware, software) and may ultimately be independent of the framework that provided the motivation;
c) games
non-patentable
a program that consists of a virtual roulette table and includes a representation of the table that revolves and throws the roulette ball and has the novelty of including an option to make a type of bet of a different value to that in the usual game of roulette, is not patentable because the method of playing is non-technical and the new option of betting is only a rule of the game;
patentable
a game implemented in a hardware system, where it claims the means of playing (processor, RAM, BUS), but is never the game itself;
d) presentations/information management
non-patentable
a process or method of presenting information about free spaces in a car park, which only involves conventional hardware and software is not patentable, because it does not present any technical contribution and is limited to being the information within or a presentation of information as such;
patentable
a process for exhibiting information (e.g. a monitor) relating to a specific event, which occurs on a particular programmable device (e.g. a memory full alert), could be patentable, if there is a technical solution to a technical problem relating to the internal functioning of the same appliance.
e) word processing
non-patentable
a routine that, when executed, formats part or all of the text of a document with a determined font and font size is not patentable, as it is not a technical solution and only produces a graphic or aesthetic effect;
patentable
a word processing program that presents advantages in terms of better interaction with the user and the functions presented could be patentable, if it clearly contributes to reducing the mental strain on the user;
f) linguistic methods
non-patentable
a program for translating a text from one language to another using new linguistic knowledge, but involving only technical computing aspects of general knowledge in the field of automatic translation, is not patentable, as although it involves technical considerations in terms of function, it does not present any technical contribution and is limited to being an exercise in the domain of linguistics, which is a non-technical domain;
patentable
an intercom in an office with keys and monitors at the terminal on the door and on the interior terminals and which allows people with oral and/or aural disabilities to communicate with others, who are not, by instantly converting the keyed-in words into both audible sounds very similar to the human voice and simultaneously in legible text on the monitor, could be patentable as it is a technical solution (e.g. the intercom equipment) to a technical problem (e.g. an instant and efficient transmission of identification data that can be presented in different forms) and involves technical considerations in terms of hardware and software;
g) management of human resources
non-patentable
a method to control the entry and exit of workers from an organisation that limits itself to manually inserting data in an application in use, is not patentable as it does not present any technical contribution and is limited to implementing management rules and mathematical formulas through existing methods;
patentable
a method to control the entry and exit of workers from an organisation that relies on an automatic gathering of data for entries and exits by reading and processing information activated by clock-in cards, could be patentable as it is a technical solution (e.g. the management of the inserted data) to a technical problem (e.g. the inclusion of a card-reading terminal at clock-in) and involves new technical questions, relating equally, to both hardware and software;
h) administrative efficiency
non-patentable
a method that automatically opens a new window on the monitor with a specific set of instructions at a given phase of any administrative process and furthermore does not imply that the considerations of the administrative point of view, and a simple programming exercise for a computing expert, do not provide any technical contribution, and therefore is not patentable;
patentable
a program or routine that permits the opening of a word processor that presents a specific set of instructions, included in an application in use, for the execution of a certain administrative process, can be patentable in the measure that it is a technical solution (e.g. a coordination action of the aforementioned program or routine about the application of the information in question – that which is used to make the administrative process and the word processor) to a technical problem (e.g. the reduced mental load for the user in command of a computing tool that permits the integrated update of a database) and that involves non-immediate technical considerations for an expert on the articulation between elements of software of a different nature;
i) accounting or financial methods
non-patentable
the use of a current calculation sheet with the aim of controlling the accounts of a specific organisation is not patentable as it is nothing more than a permitted use for the aforementioned calculation sheet that only implements certain mathematical formulas that translate an accounting method followed by the aforementioned organisation, with no technical contribution;
patentable
a system that contains one or more servers linked to the internet and capable of receiving fiscal data of any registered user, storing and processing all the data inserted by the users within a specific date can be patentable, if the technical solution presented (e.g. the type of server and the type of communication with the terminals of the users) resolves a technical problem (e.g. the dependency of the computer processing of all the fiscal information in the means and the form of the introduction of data), and this technical solution is over and above what is generally acknowledged in computer networks by an expert;
j) machine control
non-patentable
a program applied to an industrial robot that illuminates a red light when the robot moves an articulated arm to the left and a green light when it moves to the right is not admissible for being patented, given that it does not present any technical contribution to resolve a technical problem and it is merely an exercise in programming;
patentable
a program that regulates the function of a flight control system for a specific model of aircraft can be patentable as it constitutes a technical solution to the technical problem of aerodynamic instability; in addition to this, it involves the interaction between all the software and the mechanical surfaces of the aircraft, which implicates the inclusion of technical considerations in the process of development of the same software;
k) control of computing operations
non-patentable
a configurable operation that when installed in a computer, allows for example, the colour of the monitor to be changed depending on which application is being used at that moment, does not solve any technical problem but simply presents an aesthetic effect;
patentable
a process or a method of coordinating and controlling programs and data files that involves various interlinked processors independent of the nature of the data and the operation of programs about them can be patentable, if it technically resolves a technical problem, which is a basic function of a group of processors in a network.
Can a computer program be patented?
A computer program can be claimed and patented, as long as it is not claimed as such and it presents technical character.
By this we mean that a computer program is as such the mere presentation of a programming code, in a specific programming language. However, the written form of a claim can include the presentation of a computer program written in natural language or algorithm, which is essential to the functioning of the invention in question.
Once again, the technical character is fundamental. By this we mean that a computer program has technical character if, when the computer is running, it produces or could produce an additional technical effect that goes beyond the mere physical effects (e.g. electrical currents in the computer) inherent in its execution. Additional technical effects are, for example, the control of a machine or an industrial process, as well as the management of the resources of a computing system or the regulation of the transfer rate of data in a communication network.
A computer program could be part of a claim sent to an entity (e.g. a machine where the program is essential to its functioning) or an activity (e.g. a process, where the program is essential to its development) or even the same program, since it meets the aforementioned requirements;
Here are two examples of computer programs:
a) non-patentable
an executable program that only produces the expression of an idea, for example a mathematical theory;
b) patentable
a program to coordinate two memories, one small but fast and the other large but slow, so that if a process needs more space for addressing than the fast memory, it can be executed with the same speed as if the processed data were loaded entirely in the fast memory; in virtually increasing the used memory, the effect of the program is the necessary additional technical effect.