Technical contribution: analysis of three recent opinions from the Brazilian PTO's second instance

Technical contribution: analysis of three recent opinions from the Brazilian PTO's second instance

The Brazilian Patent and Trademark Office's appeal body (CGREC/COREP) issued technical opinions upholding three refusals. Two concern subject matter excluded from the concept of invention: Mastercard's payment-transaction filtering system (Article 10, III, commercial and financial methods) and Deere's energy-consumption display for agricultural machinery (Article 10, VI, presentation of information). The third, Deere's machine-troubleshooting workflow, cleared the eligibility hurdle and was found obvious under the problem–solution approach. Read together, the three opinions show how the identification of the claimed technical contribution drives both eligibility and inventive step, and why the legal basis of the refusal matters as much as the applicant's account of what its technology achieves.

Article 10 of the Patent Law lists subject matter that is not considered an invention (eligibility criteria), including commercial and financial methods (item III), computer programs as such (item V) and presentations of information (item VI). Article 13 asks whether the invention follows evidently or obviously from the prior art for a person skilled in the art.

The examination guidelines give these provisions practical form. Block I, republished by Ordinance INPI/DIRPA No. 16/2024, addresses the content of the application and claim drafting. Block II, adopted by Resolution No. 169/2016, addresses patentability. Its starting point is technical character (the application must establish a technical problem, solution and effect), and it places statutory exclusions ahead of the substantive requirements. Paragraphs 1.21 and 1.22 treat creations characterized only by their informational content, including the informational aspects of graphical user interfaces, as presentations of information. For inventive step, Block II prescribes a three-stage sequence: closest prior art, distinguishing features and objective technical problem, and the skilled person's assessment of obviousness.

Appeals run under Ordinance INPI No. 10/2024, which introduced a two-stage procedure. A preliminary appeal opinion is notified to the appellant, who may respond before a final technical report supports the decision. Section 6.4 regulates amendments: they must be connected to the objection and are confined to convergent restrictions drawn from specified sources. An appeal is therefore an opportunity to demonstrate error and, within those limits, cure an objection; it is not an occasion to reconstruct the application.

The three decisions discussed are opinions issued during appellate stage. All three are opinions supporting maintenance of the refusal and allow us to see was what could become an office-wide approach (on a persuasive way / not binding).

Mastercard opinion: when does transaction processing become technical?

BR 11 2016 008479-9, entitled "Method and system for card link filtering", was refused under Article 10(III). Patent applicant argued that its claims defined a specific mechanism for processing, filtering, routing and transmitting transaction data within a distributed payment infrastructure: processing rules generated from offer-linking notifications, associated with payment-card and merchant identifiers, applied to authorization requests received from a payment network, with filtered transaction data selectively transmitted to external servers. It stressed automated interoperability between payment networks and offer providers, and pointed out that the claimed operation required networks, databases and processing devices and could not be performed mentally or administratively. Dependent claims 7 and 17, which sanitise transaction details to remove personal or private information before transmission, were said to supply an additional technical basis.

The examiner was not persuaded. The method claims, in his view, listed commercial and financial requirements to be executed without revealing any technical step explaining how the data within the "transaction processing rules" were operated upon. The system claims recited servers, databases, processors, identifiers and communication links performing their ordinary functions, without identifying which technical characteristics of those components were said to add anything to the art, or even how they were operationally interconnected. The "transaction processing rules" themselves were held to make sense only in a commercial or financial setting, which is precisely what Article 10, III excludes.

Two passages deserve particular attention. First, the opinion states in terms that patents do not protect operational advantages or effects, technical or otherwise, nor solutions to problems as such: letters patent protect technical characteristics of products and technical steps of processes. Applicant’s reliance on "verifiable technical effects" in the payment infrastructure was therefore treated as evidence of a position grounded outside the patent system rather than as an answer to the objection. Second, the privacy argument failed not because information security cannot be technical, but because claims 7 and 17 as drafted added only the act of sanitising and the presence of a processing device. The reasoning is directed at the specificity of the claimed implementation; it does not hold that every privacy-preserving payment process is excluded.

The argument about mental performance failed for a different reason. Neither instance had suggested that the application merely automated a routine administrative procedure, so showing that the method required electronic infrastructure did not answer the objection actually made. Therefore, practical dependence on technology does not, by itself, identify the technical contribution the examiner considers absent.

Deere I: machine data on a display is still a display

BR 10 2016 018628-5 concerned an agricultural machine and a method for controlling it, directed to displaying energy consumption across the machine's subsystems. The specification described energy detectors on each subsystem, signal conditioning, a consumption-analysis component and a visualisation generator, with examples including colour coding, pie charts, percentages and selectable entries giving component-level detail. The refused independent claim recited a plurality of subsystems, energy detectors generating consumption signals, and a presentation system receiving those signals and generating a visualisation; its characterising portion then specified a machine display area and a separate consumption display area, with visual indicia correlating the represented subsystems to their energy metrics. This was a claim embedded in machinery and measurement, not an isolated attempt to protect a diagram.

The appeal opinion nevertheless maintained the Article 10, VI objection, relying expressly on Block I paragraphs 3.04, 3.27 and 3.28 and on Block II paragraphs 1.21 and 1.22. In its view, the matter following "characterized by" referred to presentation of information only. Applicant's amended main request added a user-actuable input for selecting a subsystem, a new dependent claim displayed component-level consumption for the selected subsystem, and an auxiliary request incorporated former claim 4 into claim 1. Applicant argued that this interaction enabled operator intervention in the machine on the basis of the displayed information and involved decisions about what, when and how information is shown. The opinion found neither the arguments nor the new claim sets sufficient, for the same reasons given for the refused set.

The distinction is relevant. Information about a technical system can assist an operator without the claimed arrangement defining any further technical operation. Selecting a subsystem to obtain more detailed consumption data may improve understanding while remaining, in the reviewer's analysis, an informational function. An applicant seeking a different result must explain the functional relationship between the interface and the operation of the machine, rather than relying on the technical nature of the underlying data.

The most debatable aspect of the opinion is its focus on the characterizing portion. Block I paragraph 3.28, one of the very provisions the opinion cites, describes the protection sought in terms of the combination of the characterizing features with the preamble. That gives applicants a basis for questioning an analysis that effectively discards the detectors and the signal-handling relationships because of their position in the claim. The real question is whether the claimed combination has technical significance beyond the informational arrangement. The opinion identifies the display contribution clearly but explains less fully why the interaction as a whole remains within the exclusion.

None of this suggests that moving words across "characterized by" cures ineligibility. The defensible drafting response is substantive: define the interaction on which technical character depends and explain why it changes the operation of the claimed system. The opinion illustrates the risk of leaving that connection to be inferred from the machine's general purpose.

Deere II: technical, useful – and obvious

BR 10 2016 027868-6 concerned a mobile agricultural machine and a method for controlling it. Sensors detect an operating problem, a user-interaction system retrieves a problem-specific process flow, and instructions guide the operator through corrective actions, divided into those performed inside the cab and those performed outside it. If in-cab actions do not resolve the problem, a transfer system generates an indicator of the current position and path in the flow, which a second device uses to resume the procedure at the corresponding point. Unlike the other two cases, the refusal was under lack of inventive step over D1 (US 2015/0199360).

The examiner expressly recognized a technical problem and effect: diagnosing and correcting faults under time pressure, reducing repeated steps and unnecessary movement between cab and exterior, and maintaining the machine's operating performance. Technical usefulness was not in doubt; the question was whether the solution involved an inventive step.

The opinion then set out the three stages of the problem–solution approach and applied them to D1. It rejected the characterization of D1 as essentially concerned with scoring operator performance. On the examiner’s reading, D1's recommendation engine also detected triggered symptoms, diagnosed conditions and generated actionable recommendations from expert-system rules, with diagnostic trouble codes and a rule addressing recurrent feeder plugging cited as examples. An applicant therefore cannot safely distinguish a reference by its title, its principal commercial purpose or a selected claim; the appeal must confront the passages actually relied upon and explain what remains different at the level of operation.

The claim chart separated disclosed from undisclosed features. It expressly marked the retrieval of a problem-specific process flow and its sequential execution as absent from D1's literal disclosure. The reasoning did not end there: structured retrieval and sequential presentation were treated as a predictable development of D1's existing chain of sensing, diagnosis, rule selection and recommendation, with no new or unexpected technical effect. For the independent claims adding the transfer system, the examiner again acknowledged that D1 did not literally disclose it, but relied on D1's provision for components located in the cab or on a portable device with wired or wireless communication. Continuing the instructions on a portable device when the operator leaves the cab was considered technically foreseeable.

Few points should be considered. First, the opinion describes the application's broad technical problem before the comparison but does not articulate the narrower objective technical problem after identifying the differences with equal precision. Second, the opinion leans on the absence of a new or unexpected technical effect. Predictability can support obviousness, but lack of surprise is not a substitute for explaining why the skilled person would reach the claimed solution. The stronger part of the opinion is its attempt to identify a route through D1's expert-system rules and available computing devices.

Third, transferring a display is not the same as transferring diagnostic state. Applicant’s claims refer to an indicator of the current position and path in the process flow, output as a user-perceptible code and used by a second device to resume at the corresponding point.

Finally, the level of abstraction matters. Describing the contribution as organizing information sequentially makes the modification look straightforward; describing it as a conditional diagnostic process whose position and path survive transfer between devices presents a different question. Neither description should be chosen because it favors an outcome. The proper level follows from the actual limitations of each claim. The opinion's candour about which features are missing from D1 makes this issue visible and gives applicants a concrete basis for testing the reasoning.

Conclusion

Taken together, these opinions distinguish situations that are easily conflated in patent examination. A commercial process may remain excluded despite electronic implementation. A machine-related display may remain informational despite using measured data. A diagnostic arrangement may have technical character and still be obvious. The shared emphasis on technical contribution should not obscure the different legal work done by eligibility and inventive step.

They also show that technical effects need a causal explanation anchored in the claims. In the first case, security and interoperability benefits did not persuade without corresponding implementation detail, and the examiner went so far as to say that effects as such are not what patents protect. The display case was assessed by what the interface actually claimed to do. In the troubleshooting case, reduced repetition and movement were acknowledged but attributed to predictable workflow organization. In each case the applicant's task is to explain which limitations generate the effect and why that relationship answers the particular objection.

For inventive step, the problem–solution approach is a disciplined structure for examination and for criticism alike. Block II calls for consideration of the claim as a whole, an objective problem that does not contain pointers to the solution, and an assessment of motivation, while making clear that an express documentary suggestion is not always required. Applied here, that structure directs attention to the conditional sequence, the preservation of diagnostic state and the reason for adding those operations to D1. Arguments that merely list missing words are unlikely to resolve those questions.

Amendments are a separate matter. In the troubleshooting appeal the revised claims were admitted under section 6.4, but repositioning "characterized by" and clarifying claim dependencies changed nothing substantively. In the display appeal the main and auxiliary requests failed on the same reasoning as the refused set.

The result does not mean that a computer-implemented invention needs new hardware; the relevant response identifies the particular technical operations performed with familiar components. The display related result does not mean that every human-mediated technical process requires automatic machine control; the question is whether the claimed interaction has a defined technical role and whether the opinion assessed that role accurately.