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Modification of Software's Patentability Criteria When Associated with a Hardware

On December of 2003, the Patent Office issued the “Examination Directives Ruling the Examination and Granting of Argentine Patent Applications”, by means of its Resolution INPI-P-243.

 

The Annex VII of these Directives specifically indicated the exclusion of patentability for all software or computer programs, along with other Intellectual Property matters such as literary, scientific theories and mathematical works, including commercial and/or financial methods. This is because these matters do not fulfill the “patentable inventions” definition, being the results of a mental activity of a pure theoretical nature without a proper direct industrial application.

 

In effect, up to today, Art. 6 of Patent Act nº 24.481 (TO) excluded computer programs (software) as patentability object since it has been argued that said works are not providing a technical solution of an industrially applied nature.

 

This new Resolution P-318 issued on December 7th, 2012 by the Patent Office (INPI), redresses this lack of patentability recognition, under the following considerations, thus modifying the previous negative criteria, and accepting the patentability of applied software.

 

Said Resolution P-318 states that, as a general rule any invention providing a technical solution to a given problem, if novel, is a patentable matter.

 

When in a patent application it is found that a series of programmed instructions (software) are intrinsically linked with a determined hardware and this two components are interrelated in such a way that the invention can be only understood and executed as a whole, that is, said software cannot be separated from said hardware, and at the same this software is capable of modifying the working of said hardware, then it is attained the necessary “technical effect” stage, and as a consequence, said software thus linked to its applied hardware, if novel, is patentable.

 

Therefore, a software or a set of programmed instructions, per se, is not patentable. Instead, any software capable of modifying the working of a hardware, is subject of a patent if it is claimed as a whole with said hardware, provided, of course, said results are found to have sufficient novelty.

 

B&S. Newsletter 03 / 2013