The examples set out here represent the Canadian Intellectual Property's (CIPO) interpretation of the Patent Act, Patent Rules and jurisprudence as of the date the associated practice notice comes into effect. The analysis of these examples is a guide only and should not be considered legally binding. If you find any difference between this guide and the applicable legislation, you must follow the legislation.
Computer-implemented example 1
The description discloses a new way of analysing data from seismic measurements to identify preferred drilling sites for oil. It relies on a mathematical algorithm X to perform the analysis. The description also discloses the conventional ways in which seismic measurements are physically performed and analysed as well as conventional drilling systems that operate on the analysed data.
Claims
- 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 of step c in the form of recommended drilling site locations.
- A system for analysing data from seismic measurements comprising:
- sensors to make seismic measurements;
- a module configured to receive the data from the sensors;
- a processor configured to apply algorithm X to the data received by the module; and
- a display configured to present the results of step c in the form of recommended drilling site locations.
- A processor for analysing data from seismic measurements wherein the processor is configured to:
- receive seismic measurement data;
- analyse the received data using algorithm X; and
- cause a display to provide the results of the analysis of step b in the form of recommended drilling site locations.
- A computer-implemented method of drilling for oil comprising:
- receiving data from seismic measurements;
- processing the data on a computer using algorithm X to determine recommended drilling site locations; and
- drilling for oil at the recommended drilling site locations.
Purposive construction
For these claims, the person skilled in the art would comprise an engineer or physicist familiar with seismic measurements used in geophysical prospecting, an engineer or technician familiar with techniques for drilling for oil, and a computer programmer.
The description notes conventional computer systems well-known in the art for processing seismic measurement data, and does not describe any special hardware or software configuration for performing algorithm X, or any issues in implementing the algorithm on a computer. Based on the limited description of programming, the reduction of algorithm X to practise in a computer implementation by a skilled programmer is considered common general knowledge (CGK). Likewise, based on the limited description, the seismic measurement techniques and apparatus and physical drilling techniques and apparatus are also considered CGK. The expression "receiving data" is construed from the specification as encompassing looking up data from a database or receiving a file through a telecommunications data link.
The specification is directed to determining where to drill for oil more optimally. No issues with programming the algorithm X into a computer are noted. No improvements to the operation of a computer to determine drilling sites through the operation of algorithm X are noted. Having given consideration to the disclosure, the skilled person would understand that the nature of the invention in claims 1-2 involves obtaining seismic data and operating on the data using algorithm X to make better determination of drilling sites. The nature of the invention in claim 3 involves operating on seismic data using algorithm X to make better determination of drilling sites. The nature of the invention in claim 4 additionally involves drilling for oil.
There is no use of language indicating that any 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 essential according to the intent of the inventor as expressed in the claims.
Assessment of patentable subject-matter
Claims 1 and 2 as construed include the essential element of performing seismic measurements or use of seismic sensors. While well-known in the field of geophysics, seismic measurements and sensors are not part of a conventional computer system. Seismic measurement steps or seismic sensors are physical or provide a discernible effect or change that renders the subject-matter of these claims patentable subject-matter according to section 2 of the Patent Act and not prohibited by subsection 27(8).
For claim 3, seismic data is a claimed essential element but not any physical step or means to obtain the data. Receiving data was construed as encompassing reading data from a database or receiving a file over a telecommunications link, both well-known aspects of a conventional processor. The output of the processor is displayed information of intellectual significance only, as the claim does not recite any action performed using the information. The subject-matter of the construed claim includes no physical essential elements other than the processor and its conventional peripherals. It is therefore appropriate to ask the Schlumberger question.
The algorithm improves the drilling site identification, but does not cause any discernible effect or change in the external world. The execution of the algorithm on the data does not effect any discernible effect or change internally to the processor (such as an improvement in processor functioning or performance). The claim cannot be distinguished from Schlumberger where an algorithm was merely programmed into a well-known computer as a bare practical application. As in Schlumberger, nothing other than an algorithm has been discovered, and nothing physical results from processing the algorithm. The subject-matter does not meet the physicality requirement and is therefore not directed to patentable subject-matter according to section 2 of the Patent Act and is prohibited by subsection 27(8).
Claim 4 includes a step of drilling for oil. Drilling meets the physicality requirement and renders the subject-matter of the claim patentable subject-matter according to section 2 of the Patent Act and not prohibited by subsection 27(8).
Computer-implemented example 2
The description discloses choosing an investment portfolio involving a mix of asset classes to meet certain return and risk criteria. The specification describes algorithm A, a complicated set of mathematical calculations. The inventors have also noted that transform B, not well-known in this field, is a mathematical method that simplifies the calculations of algorithm A and requires fewer arithmetic operations than a "brute force" execution of algorithm A.
Claims
- A method whereby a computer is used to:
- generate return scenarios for each asset class of a plurality of asset classes based upon future scenarios of one or more economic factors;
- create a mapping from each financial product of an available set of financial products onto one or more asset classes of the plurality of asset classes by determining exposures of the available financial products to each asset class of the plurality of asset classes;
- simulate return scenarios for one or more portfolios of combinations of the financial products based upon the mappings; and
- determine an optimal feasible portfolio comprising one or more of the available financial products based upon the simulated return scenarios by maximizing an expected value of wealth at a future time with a defined risk tolerance by applying algorithm A to the simulated return scenarios and economic factors.
- The method of claim 1 further including applying transform B in the application of algorithm A to the simulated return scenarios and economic factors.
Purposive construction
For these claims, the person skilled in the art would include someone skilled in investment finance, someone skilled in mathematical modelling of investment markets and someone with expertise in computer programming of mathematical models.
The description notes conventional computer systems well-known in the art for performing the mathematical calculations. The computer and how to program the simulation and algorithm A and transform B can be taken as CGK, given the lack of detail in the description of the programming aspects.
The specification appears to be directed to how to determine a better investment portfolio balancing risk and return. Input economic factors and simulated returns are evaluated to determine a portfolio by applying algorithm A. A secondary issue is how to simplify the complicated calculations of algorithm A. Transform B improves the operation of the computer in applying algorithm A by reducing the number of arithmetic operations.
The nature of the invention in claim 1 involves applying algorithm A to simulated returns based on economic factors to better determine an investment portfolio meeting certain requirements. The nature of the invention in claim 2 additionally involves how to apply algorithm A efficiently on a computer.
There is no use of claim language indicating any of the elements to be optional, a preferred embodiment or one of a list of alternatives. Nor is there any indication in the specification that would lead to a determination of any claimed elements being non-essential. Therefore, all the elements identified in claims 1 and 2 are considered essential according to the intent of the inventor as expressed in the claims.
Assessment of patentable subject-matter
The subject-matter of both construed claims is data and algorithms implemented on a computer. The only physical element in both claims is the computer. It is therefore appropriate to ask the Schlumberger question for each of the two claims.
Regarding claim 1, certain data is processed on a computer by performing certain calculations, and output information is provided. This is not distinguished from Schlumberger. As in Schlumberger, nothing other than the abstract algorithm has been discovered. Thus the subject-matter does not meet the physicality requirement and is not directed to patentable subject-matter according to section 2 of the Patent Act, and is prohibited by subsection 27(8).
Regarding claim 2, use of transform B in conjunction with algorithm A improves the functioning of the computer in a discernible manner (fewer arithmetic operation) for the task of computing algorithm A. This distinguishes from Schlumberger in that the secondary issue (improving efficiency of execution of algorithm A in a computer environment) is being addressed. What has been discovered includes an aspect of how to better implement algorithm A in a computer environment. The invention relates to the computer's efficient operation and provides more than a bare practical application of an otherwise abstract algorithm and transform. The presence of the improved computer with its improved operation meets the physicality requirement and renders the subject-matter of the claim patentable subject-matter according to section 2 of the Patent Act and not prohibited by subsection 27(8).
Computer-implemented example 3
The description discloses a method and system for determining a crop irrigation schedule based on recent and historical weather data and past yield data for the location. The invention involves machine-learning. A neural network-based prediction algorithm V is trained with historical weather, irrigation and crop yield data from database X, input of recent weather data Y, and outputs recommended irrigation parameters such as water flow and watering schedule based on target criteria of water consumption and crop yield to be optimized. The specification discloses in extensive detail the particulars of the layered neural network structure of prediction algorithm V and how the neural network is trained using database X. The specification teaches improved crop yields and reduced water consumption when compared with those resulting from using traditionally-determined irrigation schedules.
Claim
- A system for determining an irrigation schedule for a crop planted at a location, the system comprising data input means, a database X, data output means, and a processor implementing steps of:
- inputting to the processor, historical weather and crop yield from database X for the location;
- training neural network prediction algorithm V implemented on the processor to optimize irrigation parameters according to target criteria using database X inputs;
- inputting recent weather data Y to the trained neural network prediction algorithm V; and
- outputting a recommended irrigation schedule to optimize crop yield and water consumption for the location.
- The system of claim 1 further comprising irrigation means for irrigating the crop according to the recommended irrigation schedule.
Purposive construction
For these claims, the person skilled in the art would include someone or a team with expertise in machine learning, computer programming of neural networks and irrigation of crops.
The description discloses conventional irrigation means, which are considered CGK. The description further discloses a conventional neural network structure, training and operation. The processor and how to program the disclosed neural network structure can be taken as CGK.
The specification appears to be directed to how to better determine an irrigation schedule based on weather conditions using historical results as a guide. A machine learning algorithm creates the schedule. It is not evident that any aspect of the neural network prediction algorithm V addresses any issue related to machine learning or computing. No issues in implementing the machine learning algorithm on a computer are disclosed.
In claim 1, the nature of the invention involves applying data and an algorithm to the problem of when and how much to irrigate crops. In claim 2, the nature of the invention additionally involves irrigating crops.
There is no use of claim language indicating any of the elements to be optional, a preferred embodiment or one of a list of alternatives. Nor is there any indication in the specification that would lead to a determination of any claimed elements being non-essential. Therefore, all the elements identified in claims 1 and 2 are considered essential according to the intent of the inventor as expressed in the claims.
Assessment of patentable subject-matter
In claim 1, the only physical essential element of the subject-matter of the construed claim is the computer. It is therefore appropriate to ask the Schlumberger question. It was not evident in purposive construction that any aspect of the neural network prediction algorithm V addresses any issue related to the computer implementation. This does not distinguish from Schlumberger. As in Schlumberger, nothing other than the algorithm has been discovered. The input is data and the output is irrigation "advice" and has no physicality in and of itself. What has been discovered is an abstract method which does not meet the physicality requirement and is therefore not directed to patentable subject-matter according to section 2 of the Patent Act, and is prohibited by subsection 27(8).
In claim 2, there is an additional physical essential element of irrigation means, which is not part of a conventional computer system. This meets the physicality requirement and renders the subject-matter of the construed claim patentable subject-matter according to section 2 of the Patent Act and not prohibited by subsection 27(8).
Diagnostic method example
According to the description, the application provides methods for diagnosing whether a human subject is at risk for developing cancer.
One aspect of the disclosed invention is a method that comprises measuring the expression levels of markers A, B and C in a biological sample from the subject (e.g., by a laboratory technique such as reverse transcription quantitative PCR) and calculating a risk score based on the levels of the markers using equation X.
In a further aspect, the method is computer-implemented and comprises receiving, at a processor, expression levels of markers A, B and C and, at the processor, calculating a risk score based on the levels of these markers using equation X. Said method may be practised using a suitably configured computer device, including a generic device such as a desktop computer, laptop, or tablet that comprises a central processing unit, storage unit and various input/output units.
A risk score above value Y predicts that the human subject is at risk for developing cancer.
Claims
- A method of diagnosing whether a human subject is at risk for developing cancer, comprising:
- measuring the expression levels of markers A, B and C in a biological sample from the subject; and
- calculating a risk score based on the levels of A, B and C using equation X, wherein a risk score above Y indicates the subject is at risk for cancer.
- A computer-implemented method for diagnosing whether a human subject is at risk for developing cancer, comprising:
- receiving, at a processor, expression levels of markers A, B and C in a biological sample from the subject;
- at the processor, calculating a risk score based on the levels of A, B and C using equation X, wherein a risk score above Y indicates the subject is at risk for cancer.
Purposive construction
The person skilled in the art is characterized as a team of people skilled in the fields of oncology and molecular biology and would be experienced in methods commonly used in the art for detecting and analyzing genetic markers in biological samples. The skilled person is also familiar with general-purpose computer hardware and programming techniques.
Having given consideration to the disclosure, the skilled person would understand that the nature of the invention lies in the discovery that cancer risk correlates to a calculated risk score derived from the expression levels of three markers (A, B and C) in a biological sample from a subject. With respect to claim 1, the skilled person would confirm from the description that the expression "measuring the expression levels of markers A, B and C in a biological sample from the subject" means that the expression levels of A, B and C are acquired by performing measurements on a biological sample from the subject. In claim 2, the skilled person would interpret the expression "receiving, at a processor, expression levels of markers A, B and C in a biological sample from the subject " to mean that data about the expression levels of markers A, B and C is received by a generic computer processor – any measuring steps that provided this data are outside the scope of the claim. Further, it is apparent that the data is merely processed by the computer in a conventional manner and there is no evidence that the processing results in any improvement to the functioning of the computer.
There is no use of language in the claims indicating that any of the steps in the claimed methods are optional, a preferred embodiment or one of a list of alternatives. Therefore, all of the steps are considered to be essential according to the intent of the inventor as expressed in the claims.
Assessment of patentable subject-matter
Claim 1
As purposively construed, the subject-matter defined by claim 1 is a method of diagnosing whether a human subject is at risk for developing cancer. An essential element of the construed claim is a step for measuring the expression levels of markers A, B and C in a biological sample from the subject. The skilled person would understand that this step is physical and is part of a method having a practical application. While the remaining elements of the construed claim are disembodied as they encompass calculating a risk score that correlates to cancer risk, the prohibition under subsection 27(8) of the Patent Act does not apply since the claim as a whole has physicality and is not merely a scientific principle or abstract theorem.
Therefore, the subject-matter defined by the claim is directed to patentable subject-matter according to section 2 of the Patent Act and is not prohibited by subsection 27(8) of the Patent Act.
Claim 2
As purposively construed, the subject-matter defined by claim 2 is a computer-implemented method for diagnosing whether a human subject is at risk for developing cancer. In contrast to claim 1, the only part of construed claim 2 that reflects any physicality is the recitation of a (computer) processor to receive data about the expression levels of markers A, B and C and calculate a risk score based on this data. It is therefore appropriate to ask the Schlumberger question.
In this case, the skilled person would understand that the computer merely receives data and makes calculations following an equation and this is done in a well-known manner without imparting anything more, such as an improvement to the functioning of the computer. The situation cannot be distinguished from Schlumberger where an algorithm was merely programmed into a well-known computer as a bare practical application. Therefore, similar to the case of Schlumberger, what has been discovered is that useful information (i.e., cancer risk) can be extracted from measurement data (i.e., expression levels of markers A, B and C) by making calculations based on an equation.
While the use of the computer may give the method a practical application, the physicality requirement implicit in section 2 of the Patent Act cannot be satisfied without "something more" in the construed claim. Therefore, the subject-matter defined by the claim is not directed to patentable subject-matter according to section 2 of the Patent Act and is prohibited by subsection 27(8) of the Patent Act.
Medical use example 1
Compound X is routinely prescribed by physicians for the ongoing treatment of psoriasis. The patent application, however, relates to the discovery that X is effective for preventing asthma attacks in patients in need thereof. Working embodiments in the description showed that asthma patients received a daily dose of X selected from 120-360 mg over a 12-week treatment period. The treatment was well tolerated by the patients and they generally experienced at least some reduction in the number of attacks as compared to the pre-treatment period.
Claims
- Use of compound X to prevent asthma attacks.
- The use of claim 1, wherein X is for use at a daily dose of between 120 and 360 mg.
Purposive construction
The purposive construction of a claim is carried out in light of the whole of the specification and takes into account what the person skilled in the art, in view of their CGK, would understand the claim to mean and which elements of the claim are essential.
Having given consideration to the disclosure, the skilled person would understand that the nature of the invention lies in the discovery that compound X, which is a known pharmaceutical compound, is useful for preventing asthma attacks (claim 1). The nature of the invention in claim 2 additionally involves use of X at a daily dose of between 120 and 360 mg. The skilled person would confirm from the description that the expression "X is for use at a daily dose of between 120 and 360 mg" in claim 2 means that compound X is for use over a range of dosages, from 120 to 360 mg/day.
There is no use of language in the claims indicating any of the elements to be optional, a preferred embodiment or one of a list of alternatives. Nor is there any indication in the specification that would lead to a determination of any claimed elements being non-essential. Therefore, all the elements identified in each of these claims are considered to be essential according to the intent of the inventor as expressed in the claims.
Assessment of patentable subject-matter
Claim 1
The subject-matter defined by claim 1, as purposively construed, is the use of compound X to prevent asthma attacks. The skilled person would understand that no element of this claim would require the exercise of skill and judgment of a medical professional and the construed claim does not encompass a method of medical treatment. Therefore, the subject-matter defined by the claim falls within the definition of "invention" as contemplated in section 2 of the Patent Act.
Claim 2
Based on the purposive construction, the subject-matter defined by dependent claim 2 is limited to the use of X over a range of dosages. The fact that the matter recites a range of dosages of X, rather than a fixed dosage, is not determinative of whether the claim relates to a method of medical treatment. The examiner must still consider whether skill and judgment of a medical professional is required to use the invention.
According to the description, the use of dosages falling within the claimed range of 120-360 mg/day was well tolerated and effective for preventing asthma. As there is no evidence that professional skill and judgment would be required on the part of a physician to put the claimed invention into use, the subject-matter defined by the claim is patentable subject-matter and complies with section 2 of the Patent Act.
Medical use example 2
Compound X is a commonly used drug for treating epilepsy. According to the description, the inventors discovered that patients following a new dosage regimen comprising a starting dosage of 25 mg/day of X followed by an up-titration to a maximum of 100-200 mg/day had decreased seizure activity. The patients also showed fewer adverse effects and required a lower final dosage as compared to patients that received a higher starting dose over the same treatment period. Working embodiments showed that each patient had to be continuously monitored for both therapeutic efficacy of X and toxicity. Based on the results of the monitoring, the physician decided when it was appropriate to initiate the up-titration and what final dosage amount was appropriate for that patient.
Claim
- Use of compound X from a first dosage of 25 mg/day to a final dosage of 100 mg/day to 200 mg/day for treating epilepsy in a patient, wherein said first dosage is for use for a period from 1 to 12 weeks.
Purposive construction
The purposive construction of a claim is carried out in light of the whole of the specification and takes into account what the person skilled in the art, in view of their CGK, would understand the claim to mean and which elements of the claim are essential.
Having given consideration to the disclosure, the person skilled in the art would understand that the nature of the invention lies in the discovery of a dosage regimen for compound X that is useful for treating epilepsy. Further, unlike existing regimens involving compound X, the daily dosage of X is increased over time (i.e., titrated) from a first dosage of 25 mg/day to a final dosage of 100-200 mg/day. It would also be evident to the skilled person that the treatment's effectiveness, while avoiding toxicity, demands that a medical professional continuously monitor individual patients and make adjustments to the dosages and/or schedule.
There is no use of claim language indicating any of the elements to be optional, a preferred embodiment or one of a list of alternatives. Nor is there any indication in the specification that would lead to a determination of any claimed elements being non-essential. Therefore, all the elements identified in the claim are considered to be essential according to the intent of the inventor as expressed in the claims.
Assessment of patentable subject-matter
Based on the purposive construction of the claim, the subject-matter defined by the claim encompasses the use of compound X for treating epilepsy in a patient according to a dosage regimen covering a variable dosage and schedule.
In this case, the skilled person would understand that the dosage regimen involves titration and the medical professional is required to continuously monitor individual patients and make adjustments to the dosages and/or dosage period within the scope of the claim. It would be clear to the skilled person that the medical professional must apply their skill and judgment when progressing from the initial dosage to the final dosage. Consequently, the subject-matter defined by the claim is not patentable subject-matter. Claim 1 encompasses a method of medical treatment that lacks compliance with section 2 of the Patent Act.