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Examples of Patentable Subject-Matter Analysis

From: Canadian Intellectual Property Office

Computer-implemented Example 1:

The description describes a new way of analysing data from seismic measurements to identify preferred drilling sites for oil.  It relies on a complicated algorithm X to perform the analysis.  The description also described the conventional ways in which the seismic measurements were physically performed as well as the conventional computerized drilling systems that would use the analyzed data.

Claims:

  1. A computer-implemented method of analysing data from seismic measurements comprising:
    • Performing seismic measurements;
    • Receiving the data from the seismic measurements;
    • Processing the data on a computer using algorithm X; and
    • Displaying the results of the analysis.
  2. A system for analysing data from seismic measurements comprising:
    • Sensors to measure seismic measurements;
    • A module configured to receive the data from the sensors;
    • A processor configured to apply the algorithm X to the data received from the sensors; and
    • A display configured to present the results of the step c.
  3. A computer-implemented method of analysing data from seismic measurements comprising:
    • Receiving the data from the seismic measurements;
    • Processing the data on a computer using algorithm X; and
    • Displaying the results of the analysis of step b.
  4. A computer readable memory having recorded thereon statements and instructions for execution by a computer to carry out the method of claim 3.
  5. A computer-implemented method of drilling for oil comprising:
    • Receiving the data from the seismic measurements;
    • Processing the data on a computer using algorithm X; and
    • Drilling for oil based on the results of the processing.
  6. A computer readable memory having recorded thereon statements and instructions for execution by a computerised drilling system to carry out the method of claim 5.

Purposive construction:

For claims 1, 3 and 5 there is no use of language indicating that any of the steps in each claim are optional, a preferred embodiment or one of a list of alternatives.  Therefore, all the steps identified in each of these claims are considered to be essential.  Similarly for claim 2 there is no use of language indicating that any of the elements are optional, a preferred embodiment or one of a list of alternatives.  Therefore all the elements are considered to be essential.  In claims 4 and 6, the language of the claim indicates that all elements are essential.  In this case that would include the computer readable memory and the instructions for carrying out the method of claim 3 or 5.

Assessment of patentable subject-matter

For claim 1: In this claim the seismic measurements of step a produce the data processed by the computer. As is evident from the claim itself and confirmed by reference to the rest of the specification (considered in light of the relevant common general knowledge, or CGK), essential element step a cooperates in combination with the computer processing steps (b-d) to produce better results by use of the algorithm X. As step a includes measurements that rely upon discernible physical effects to produce their data, step a provides the discernible physical effect or change that renders the subject-matter of the claim patentable subject-matter.

For claim 2: In this claim, the sensors which are used to perform seismic measurements do not correspond to a generic input of data to a computer. As is evident from the claim itself and confirmed by reference to the rest of the specification (considered in light of the relevant CGK), the sensors cooperate in combination with the computer because the measurements from the sensors are used by the computer in the analysis. As the sensors have a physical existence and cooperate with the computer to achieve better results by the use of algorithm X, this element is sufficient to render the subject-matter of the claim patentable subject-matter.

For claim 3:  As is evident from the claim itself and confirmed by reference to the rest of the specification (considered in light of the relevant CGK), data input and output steps a and c represent generic input/output steps of a computer-implemented process. In such a case, all of the essential elements correspond only to the processing of data using algorithm X to obtain better results by means of a generic computer. It is therefore necessary to ascertain whether the computer forms part of the actual invention. There is no evidence that the problem that is solved by using algorithm X is a computer problem; there is no indication that the use of algorithm X reduces the resources used in the computer processing for example. Therefore, the computer and input/output/processing steps do not form a single actual invention. As the disclosure is focused on the algorithm and its benefits, the actual invention is considered to be the algorithm or the analysis and resulting data, which has no physical existence and does not effect a physical effect or change. Thus, the actual invention is prohibited under subsection 27(8) of the Patent Act and is not patentable subject-matter.Footnote 1

For claim 4: This claim refers to claim 3 where the actual invention was found to be directed to an abstract algorithm. It is evident from the claims and the rest of the specification that the claimed computer-readable memory is a generic means of inputting instructions to a computer and, therefore, is considered to be part of the generic computer system of claim 3. Therefore, the result for this claim would be the same as that of claim 3.

For claim 5: In this claim, step c uses the results of the processing of received seismic data to effect the physical step of drilling for oil. As is evident from the claim itself and confirmed by reference to the rest of the specification (considered in light of the relevant CGK), essential element step c depends on and cooperates in combination with the computer processing step b to produce better results from a well drilling operation. As step c includes steps that produce discernible physical effects, step c provides the discernible physical effect or change that renders the subject-matter of the claim patentable subject-matter.

For claim 6: This claim refers to claim 5 where the method was found to be patentable subject-matter. Although the claimed computer-readable memory is a generic means of inputting instructions to a computer and therefore is considered to be part of the generic computer system, the discernible physical effect associated with the instructions, namely the drilling of a well, was found to be patentable in claim 5. As the system incorporating the computer-readable memory is capable of carrying out the drilling of a well, this physical effect is sufficient to render the subject-matter of claim 6 patentable subject-matter.

Computer-implemented Example 2:

The description describes a new algorithm Y for compressing video data which produces a coded signal with the same signal to noise ratio and level of compression (required Mb/s to transmit) as existing methods but using fewer processing steps.

Claim:

  1. A computer-implemented method of digitally coding a video signal comprising:
    • Receiving digital video data;
    • Encoding, using a digital signal processor, the digital video data using algorithm Y; and
    • Providing the encoded video data.

Purposive construction:

There is no use of language indicating that any of the steps in the claim are optional, a preferred embodiment or one of a list of alternatives.  Therefore, all the steps identified in the claim are considered to be essential elements.

Assessment of patentable subject-matter

In this claim, as evident from the claim itself and confirmed by reference to the rest of the specification (considered in light of the relevant CGK) data input and output steps a and c represent generic input/output steps of a computer-implemented process. In such a case, all of the essential elements correspond only to the processing of data using algorithm Y to encode a video signal by means of a generic computer. It is therefore necessary to ascertain whether the computer forms part of the actual invention. It is apparent that the use of algorithm Y encodes a video signal using less processing power (fewer instructions) than known methods, while providing an encoded signal of the same quality and degree of compression. Thus, the algorithm Y, in combination with the computer, solves a computer problem. Therefore, the computer forms part of the actual invention and provides the physicality to render the subject-matter of the claim patentable subject-matter.

Diagnostic Method Example:

The specification describes a method of diagnosing whether a patient is at risk for developing cancer. It is disclosed that a relative increase in X as compared to a non-cancerous reference sample correlates to increased cancer risk.

Claims:

  1. A method of diagnosing whether a human subject is at risk for developing cancer, comprising:
    • measuring the level of X in a biological sample from the subject; and
    • comparing said level to the level of a non-cancerous reference sample, wherein an increase in the level of X relative to said reference indicates the subject is at risk for cancer.
  2. A method of diagnosing whether a human subject is at risk for developing cancer, comprising:
    • receiving a report summarizing the level of X in a sample from the subject; and
    • comparing said level to the level of a non-cancerous reference sample, wherein an increase in the level of X relative to said reference indicates the subject is at risk for cancer.

Purposive construction:

In claims 1 and 2, there is no use of language indicating that any of the steps in each claim are optional, a preferred embodiment or one of a list of alternatives.  Therefore, all the steps identified in each of these claims are considered to be essential.

Assessment of patentable subject-matter:

For claim 1: an element of the claim is a correlation between cancer risk and the level of X. This element, when considered alone, is disembodied. The claim, however, further includes elements for measuring the level of X in step a) and comparing the level of X to a reference in step b). It is apparent that in order to arrive at a diagnosis of cancer risk, the measuring element, comparing element and correlation element must cooperate together. Thus, the actual invention of claim 1 consists of a combination of all of these elements. Recognizing that step a) is directed to physically measuring the level of X in the sample, this satisfies the physicality requirement and makes the subject-matter of the claim patentable subject-matter. 

For claim 2: as in claim 1, an element of the claim is a correlation between cancer risk and the level of X. Unlike claim 1, data about the level of X is not provided by an element that physically measures the level. Instead, data about the level of X is provided by an element involving receiving a report summarizing the subject's level of X in step a). In order to arrive at the diagnosis in this claim, the receiving element, comparing element and correlation element cooperate together to form a single actual invention. In order to be found patentable, the actual invention must have physical existence or manifest a discernible physical effect or change. As none of the elements in the actual invention provide this physicality, the subject-matter of the claim is not patentable subject-matter.

Medical Use Example:

The specification describes the new use of compound X to treat peptic ulcers. The description also discloses a titration regime for determining the appropriate dosage of X for an individual patient. In this case, the titration regime is used to minimize side-effects and ensure patient tolerability to X. This requires monitoring by a physician to know when adjustments to the dosage are needed for each patient.

Claims:

  1. Use of compound X to treat peptic ulcers.
  2. The use of claim 1, wherein X is for administration at a first dosage of 6 to 8 mg/day for a period of about 2 to 10 weeks, and a final dosage of 16 to 24 mg/day.

Purposive construction:

In claims 1 and 2, there is no use of language indicating that any of the elements in each claim are optional, a preferred embodiment or one of a list of alternatives.  Therefore, all the elements identified in each of these claims are considered to be essential.

Assessment of patentable subject-matter:

For claim 1: All of the elements of the claim form an actual invention that satisfies the physicality requirement since it is evident that the use of compound X manifests a discernible effect or change in the physical state of peptic ulcers. As none of the elements of the actual invention encompass a method of medical treatment or otherwise restrict, prevent, interfere with, or require the exercise of the professional skill and judgment of a medical professional, the subject-matter defined by the claim is patentable subject-matter.

For claim 2: As in claim 1, all of the elements of the claim form an actual invention that satisfies the physicality requirement given that the use of compound X manifests a discernible effect or change in the physical state of peptic ulcers. Dependent claim 2 differs from claim 1 in that claim 2 includes an element that limits the use of X to a first dosage period covering a range of dosages, and a final dosage range. This amounts to a titration regime since the medical professional is expected to monitor individual patients and make adjustments to the dosage and/or dosage period. The subject-matter defined by the claim is not patentable subject-matter because this element restricts, prevents, interferes with, or requires the exercise of the professional skill and judgment of a medical professional.

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