Date: July 24 - 2018
Software has become the backbone of our very lives as we continue to increase digitalization of information and automating processes. No wonder software has been the focus of important research, investment and economic development, immediately generating questions over the legal protection of software and investments made in its development.
The Colombian government has established programs to increase productivity and competitiveness of certain sectors of industry. For example, since 2009, the Productive Transformation Program1 of the Ministry of Commerce, Industry and Tourism has been operating, covering 12 industry sectors, including the so-called “4.0 Industries”, which encompass, among others, the software and information technology sectors. Keeping in mind that the protection of intellectual property is linked to greater productivity and competitiveness2, it is important to take into account and develop policies to protect intellectual property rights of such software and information technology sectors.
Accordingly, the legal protection of inventions that have a strong software component has been changing in Colombia in the past almost 10 years. This change has not come about through statute changes, but through changes in the legal practice, following government policies to support increased productivity and competitiveness for this sector. As such, Colombia has gone from a country where patent protection of software based inventions was almost nonexistent before 2012 to allowing patents of such technologies on a regular basis commencing 2012. Let's see what happened.
Accordingly, the legal protection of inventions that have a strong software component has been changing in Colombia in the past almost 10 years. This change has not come about through statute changes, but through changes in the legal practice, following government policies to support increased productivity and competitiveness for this sector. As such, Colombia has gone from a country where patent protection of software based inventions was almost nonexistent before 2012 to allowing patents of such technologies on a regular basis commencing 2012. Let's see what happened.
Article 14 of Decision 486 of the Andean Community (our IP Law) establishes that patents of invention are granted to products or procedures, in all technological fields, as long as they are novel, nonobvious and have industrial applicability. On the other hand, Article 15 of Decision 486 clearly states that, among others, “(...) computer programs or software, as such;(…)” (underline added) are not considered inventions and hence not susceptible of being patented. The expression "as such" implies that software itself, that is, source code (lines of text in programming language) or the object code (lines of text in programming language) or the object code (computer binary language), is not patentable. Now, this would imply that software inventions implemented through a computer, through a computer would not be excluded from patenting per se, and would in principle be patentable if they comply with the aforementioned patentability requirements. However, in practice this has not always been the case.
Although there have been different guidelines for the examination of invention patents in Colombia, they are not and have not been mandatory for the Colombian Patent Office (CPO), allowing the CPO to depart from applying these guides at times. The Manual for the Examination of Invention Patents at the Industrial Property Offices of the Countries of the Andean Community3 of 2004 indicated the following in terms of software:
“A computer or software program may be considered as the instructions a machine needs to achieve a result.
They cannot be considered inventions as such because they do not have a technical nature; computer programs acquire that technical character only when they are part of an industrial process.”
Despite not saying much, the Manual did not close the door to patenting software inventions implemented through a computer, since in principle such inventions would not be software “as such” if they acquire technical character or nature when the software is incorporated in a practical application through a computer. However, the CPO generally proceeded to deny patents to software inventions implemented through a computer, independent of the claim wording. Now, it was not difficult for the CPO to sustain their rejections by assimilating the claims to another type of unpatentable subject matter with ease, given the subject matter in question. In many cases, the CPO assimilated the claimed mater to uses, in cases where the invention involved interaction with the user, and uses are not patentable in Colombia (they do not comply with the provisions of Article 14 of Decision 486 because they are not considered products or procedures). In other cases, the CPO assimilated the claimed matter to mathematical methods or algorithms, which are not considered inventions according to article 15, literal a, of Decision 486. In even other cases, the CPO considered the claimed matter as a functional characterization, which was not accepted arguing that this form of characterization is too broad or characterizes the result to be achieved and not the method to achieve them. Given that in software, short of providing source code, the description of the steps is normally functional, again, it was easy for the CPO to reject these patents.
In 2012, there was a policy change at the CPO, culminating with the drafting of the Guide for Examination of Invention and Utility Model Patent Applications4, which for the first time included very detailed guidelines for the examination of what it called “Computer Implemented Inventions” (CII). The CPO began to adhere strictly to this Guide allowing in principle to patent inventions that combine hardware and software.
The 2012 Guide establishes the criteria for admitting a CII patent application to examination, criteria that I summarize as follows:
- The CII must meet the following 2 criteria:
1. The invention must be directed to a product or procedure; and
2. The claimed subject matter cannot be directed exclusively to a patentability exception.
- In developing these 2 criteria, the following should be taken into account:
1. For product inventions:
a. The claims’ preamble must be directed to a physical, tangible object; and
b. If the body of a claim includes any non-patentable element (in this case the software), it must be directed to a specific practical application.
2. For procedure inventions:
a. The procedure must be linked to a specific product, for example a product, device, etc.; or
If a CII is admitted to examination, the Examiner must then proceed to analyze whether the CII meets the novelty, nonobviousness and industrial application requirements, as is required for any invention in any other technology sector.
Since 2012, it is with these criteria to determine admissibility for patentability examination that CII have been analyzed by the CPO, which has in turn allowed granting of several covering CII5 in Colombia. The current Guide for Examination of Invention and Utility Model Patent Applications6, issued in January 2014, did not modify the criteria already established to analyze the admission to patentability of CII, which continue to be applied by the CPO to date.
In sum, as it pertains to CII in Colombia, we went from a restrictive application of patent rules before 2012, which implied the virtual impossibility of obtaining a patent covering CII, to the current possibility of obtaining patent rights over CII. This advancement, very positive from my perspective, not only allows harmonizing Colombian patent practice with that seen in other countries at present, such as the European countries, China and even the United States, but it allows effective protection to developments and investments made by the local software and information technology industries, which the Colombian government itself has been supporting through the Productive Transformation Program of the Ministry of Commerce, Industry and Tourism.
1 See www.ptp.com.co
2 See CONPES 3533 document at https://colaboracion.dnp.gov.co/CDT/Conpes/Económicos/3533.pdf
3 http://www.comunidadandina.org/StaticFiles/201166165925libro_patentes.pdf
4 Superintendencia de Industria y Comercio – Delegatura para Propiedad Industrial – Dirección de Nuevas Creaciones. GUÍA PARA EXAMEN DE SOLICITUDES DE PATENTE DE INVENCIÓN Y MODELO DE UTILIDAD. May, 2012 (http://api.sic.gov.co/Documentos/Guia_Examen_Patentes.pdf)
5 Some examples of patents granted by the CPO to CII are the following: Certificate Nos.: 3559, 6284, 5760, 6287 y 31810.
6 Superintendencia de Industria y Comercio – Delegatura para Propiedad Industrial – Dirección de Nuevas Creaciones. GUÍA PARA EXAMEN DE SOLICITUDES DE PATENTE DE INVENCIÓN Y MODELO DE UTILIDAD. January, 2014 https://issuu.com/quioscosic/docs/documento_guia_de_examen_de_patente