Chapter 16
Computer-implemented inventions

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16.01

Scope of this chapter



16.02

16.01.01 Complementary forms of Intellectual Property

Correct and full description of the invention

16.03

Utility, subject matter and obviousness for computer-implemented inventions

16.04

16.03.01 Utility

16.03.02 Subject matter

16.03.02a Professional skills and other methods without essentially economic

results

16.03.03 Obviousness

Claim categories


16.04.01 Art and process claims (method of operation)

16.04.02 Machine claims (programmed computer)

16.04.03 Manufacture claims (computer program)

16.05

16.04.03a Computer program on a record carrier

16.04.03b Computer program on a signal medium

16.04.03c Data structures

Examples


16.05.01 Examples involving mathematical formulae

16.05.02 Examples of non-reproducible subject matter

16.05.03 Examples of subject matter not fitting within a category recognized

as statutory

16.05.04 Subdividing land

16.05.05 Non-patentable media claims

Appendix 16.1 References

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Computer-implemented inventions

Chapter 16
Computer-implemented inventions

16.01 Scope of this chapter

This chapter relates to inventions which utilize the processing function of a computer.

These inventions are implemented, at least in part, by means of a computer program

or computer hardware. A computer-implemented invention is examined in a manner which

S

equivalent to inventions in other fields of technology and the same principles apply.

16.01.01 Complementary forms of Intellectual Property

Intellectual property addresses the dual nature of computer programs by providing complementary protection through copyright and patents. While copyright protects the literary form of a computer program, patents protect the active functionality of the computer program.

16.02 Correct and full description of the invention

The specification must describe the invention in normal language as in other technical fields and not solely as source code. Computer program listings alone do not fully describe the invention, but may be useful in illustrating specific embodiments. The invention must be described in terms of a) hardware; b) the computer program with its

functional modules; and c) data or a combination thereon sufficient detail of the terms for one skilled in the art to make and work the invention.

Hardware

Are the important elements of the computer system, e.g. processors primary and


secondary memories, buses, interfaces, displays, peripherals describe Has the interrelationship between the computer elements and network been described to provide the desired functionality of the invention?


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Computer-implemented inventions

Computer program

Questions to be asked include

Is the functional representation of the computer program described? What are the computer program functional modules that are called into play, interfaces, the steps to be

performed, the sequences, the timing, the location of the modules in the system, the process

ms, the intemal and external logical files, and the number and kind of interactive

inquiries. Do segments of the program in particular components function separately

from the remainder of the computer program?

Data

Questions to be asked include

What is the source and the form of input data? What is the form of the output data? How is the data structured and stored in the memory? What is the flow of the processing? How do the software modules interact with and transform the data? These questions usually should be answered by the description.

Hardware and functional interrelationships between computing processes and data are correlated with claim limitations to ensure that the claimed features are fully disclosed and integrated with the elements of the invention in accordance with subsection 27(3) of the Patent Act. The interaction of the three entities determines the configuration of the computing system and the manner in which the desired effect of the method is obtained.

It is not only important that these elements, features, and processing steps be described, but that they be described as being integrated into an inventive combination ' ,

In the absence of a full and correct description of the invention by means of hardware,

software and data structure, the application may be considered as describing a mere scheme, i.e. a mere principle for which no patent may issue.

16.03 Utility, subject matter and obviousness for computer­implemented inventions

Sections 16.03.01 to 16.03.03 expand on concepts introduced in chapter 12 of MOPOP.

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16.03.01 Utility

The outcome of the claimed method or system must be achievable from the teachings in the description without subjective judgement or interpretation by a person having skill in the art. Subject matter that is not reproducible by a person skilled in the art is not patentable because it is not useful. A claim will thus not be patentable if it contains steps or other subject matter that involve an interpretative or judgmental aspect or are

dependent upon the intelligence and reasoning of the human mind for reliable and consistent results 2 (see examples in MOPOP 16.05.02).

(,3)

In Lawson, the reproducibility of the method of dividing land was not an issue. The method was considered to relate to professional skills rather than a manual art' even though it may possible be considered to produce an essentially economic result in relation to trade, commerce, or industry.

16.03.02 Subject matter P

The claimed subject matter must fall in one of the recognized categories of art, process, machine, manufacture or composition of matter (MOPOP 12.02.01)

Software expressed as lines of code or listings is considered to be a literary work under the Copyright Act. Software in the form of a data model or an algorithm is a automatically excluded from patentability under subsection 27(8) of the Patent Act, in the same manner as a mathematical formula 4, and is considered equivalent to a m re scientific principle or abstract theorem. However, computer-related subject matter s not excluded from patentability if the traditional criteria for patentability are satisfied. Software that has been integrated with traditionally patentable subject matter may be patentable.

For a method to be considered an "art" under section 2 of the Patent Act, the method must be:



a)

an act or series of acts performed by some physical agent upon some physical object and producing in such object some change either of character or of

condition" 5; and

it must produce an essentially economic result relating to trade, industry or

commerce g.

2'

b)

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c) it must be a "useful" art as distinct from a "fine art" even though it may possibly be considered to produce an essentially economic result

000124



A method consisting only of making certain calculations according to certain formula is,

even if it results in useful information, excluded from patentability under subsection 27(8) of the Patent Act. Also, it does not include an act or series of acts performed by

some physical agent upon some physical object and producing in such object some change either of character or of condition. Furthermore, it does not produce an essentially economic result relating to trade, industry or commerce'.


In practice, even when claims relate to categories not recognized as statutory subject matter, a search of the closest prior art document is performed, if possible.


16.03.02a Professional skills and other methods without essentially economic results


The Supreme Court has confirmed that Lawson 8 was rejected because the subject matter related to professional skills 9. In Lawson, the method of subdividing land into lots defined by specific lot lines was considered to be a professional skill rather than a manual art producing an essentially economic result. The Court did not once imply or suggest that reproducibility was an issue in the decision.


Professionals are called upon to exercise their skills and knowledge in the best manner as called for by a situation. The continuous adaptation of professional skills and knowledge to novel situations is expected of professionals and does not result in a patentable method. A patentable method must not only be new but must also contribute to the cumulative wisdom on the subject matter under consideration 10


A professional skill or method is not a manual or productive art because of jurisprudence holding that it may not produce an essentially economic result in relation to trade, commerce, or industry. Therefore, a professional skill or method does not constitute "art" under section 2".

'

The term "professional skill" is a label applied by the courts to certain non-statutory (yet reproducible) methods, and is considered to have a broad meaning. It has included methods of:


a) medical treatment or surgery (the skill of a doctor or surgeon);

b) cross-examination or advocacy (the skill of a barrister);

c) describing and laying out parcels of land in a plan of subdivision of a

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Computer-implemented inventions

,




a) a method of operation for an inventive machine;

b) a method of use for an inventive manufacture/composition of matter;

c) a method of operating/using a known machine/manufacture/composition

of matter for an inventive non-analogous use; and

d) a method of diagnosing a physical disease or physical medical condition

in a human being.

greater tract of land (the skill of a solicitor, conveyancer, planning consultant, or surveyor);

d) allocating investment funds in an optimized manner (the skill of a financial advisor); and

e) laying out houses in a row of houses (the skill of an architect). .

It can sometimes be difficult to distinguish professional skills, methods of providing

services, and other methods that produce an essentially economic result in relation to trade, commerce, or industry (within the meaning given those words by the y v, a Courts12) from methods that do produce such results. The Office considers each of the

following methods to produce an essentially economic result in relation to trade, industry

If the method is not any of the above, then one must determine if the method produces an essentially economic result in relation to trade, etc. by asking whether it is closer to:


a) a service (or a transaction/exchange between multiple entities) for which someone (e.g. a professional) would be hired to perform (or which the method's executor would perform for themselves); such methods dc-net

produce an essentially economic result in relation to trade, etc., \4

or

b) a method for producing/building/constructing a vendible product, or of a"0 altering something to make a vendible product that is functionally (as ''',¼


opposed to, e.g. intellectually or aesthetically) different from any vendible product that it may have been originally; such methods do produce an essentially economic result in relation to trade, etc.


In this context, the term "vendible product" is broad enough to encompass land, structures, parts of structures, chemicals, etc.

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16.03.03 Obviousness

The same principles as for all other subject matter will apply, but in addition, it should be noted that many methods, schemes, algorithms, etc. can easily be automated or implemented with a computer or software, without employing inventive ingenuity. The presence of a programmed general purpose computer or a program for such computer does not lend patentability to, nor subtract patentability from, an apparatus or process.

Where a claim consists of subject ma at in its tot statutory subject matter but

includes wit n its scope subject matter its would be non-statutory subject

matter ( mathematical formula, a computer program, a professional skill, etc.), the requirements of section 28.3 of the Patent Act will not be satisfied if the only part of the claimed subject matter that is unobvious lies in an aspect of the non-statutory subject matter. In other words, the unobvious part of the invention cannot be found only in an aspect of the subject matter of a claim that constitutes non-statutory subject matter.

Subject matter that by itself is non-statutory subject matter, if combined with statutory

subject matter in an integrated manner, may become an integral and inseparable part of a combination that in its totality constitutes patentable subject matter. In such a case, the invention can be found in the combination. There must be some cooperation or interaction that produces some common or unitary result, advantage, or use.

It is known that executing a computer program reconfigures a computer in a particular way through the program's instructions and commands; is reconfiguration is equivalent to differently wired circuits in the hardware 13. There is an inventive combination when this reconfiguration; a) results in a new non-analogous use for a

known machine (e.g. a general-purpose computer or b) provides a unobvious machine

improvement. A new use has resulted if executing th algorithm in the disclosed A

combination provides unexpected functional (as opposed to intellect aesthetic)

results (e.g. general purpose computers are expected to, other things, perform calculations, solve equations, and output or store results, programmable slot machines are expected to, among other things, perform calculations, output certain results, and dispense winnings in accordance with certain probabilities). A machine improvement has been provided if executing the algorithm in the disclosed combination provides

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functional advantages over the prior art that are peculiar to the disclosed integrated combination. There is no inventive combination when, for example, a system is merely providing, in a known manner, a representation of the results of one or more of the calculations performed during the execution of the algorithm, this is a result having intellectual or aesthetic connotations rather than a functional result.


A computer-readable medium containing only subject matter of an abstract or intellectual character, music or textual information, is not an inventive combination. However, a computer-readable medium containing a program or data structure is an inventive combination if that medium, when used in a computer, causes that computer to fulfill a new and non-analogous use.

16.04 Claim categories

Three categories of claims are possible for computer-implemented inventions in accordance with section 2 of the Patent Act

K

..

1.

Art and process (method) claims;


2.

Machine (apparatus and system) claims; and


3.

Manufacture (products or computer media, including signals, embodying code or

v


data structures) claims.


Claims in this category define the series of operations which takes place in the computer when the computer program is run. The claim must describe the appropriate steps as carried out by, or on, the inventive combination of hardware and/or software. The following method claim defines a way of encrypting data for storage on a card.


Example


Claim 1D A method of enrolling nature information of an authorized user onto an identification card comprising t steps of:

a) collecting samples of a first signal at a rate of at least "n" times a frequency component of said first signal which is to be preserved, where n is an integer greater than four;

16.04.01

Art and process claims (method of operation)

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Computer-implemented inventions

b) digitally filtering said samples representing said first signal to remove high frequencies; and

) storing said filtered samples on said card.



16.04.02 Machine claims (programmed computer)


A computer which has been configured with a novel computer program is considered to be a different machine from the same computer when programmed in another way. The actions performed in the computer are directed by the computer program. The functional steps in the method claim have been replaced by functional components e.g. "means for" expressions to define the structural elements of the computer.


Example


[Claim 2] An apparatus for compressing signature information signals of an authorized user onto an identification card comprising:

a) means for collecting samples of a first signal at a rate of at n times a frequency component of said first signal which is to be preserved, where n is an integer greater than four;

b) a filter for digitally filtering said samples representing said first signal to remove high frequencies; and

C) means for storing ti e filtered samples on said card.

said

16.04.03 Manufacture claims (computer program)


The third category of claims defines a computer readable memory storing statements and instructions for execution by a data processing system to direct the system to function in a particular manner. This program storage device claim is variously referred to as a computer readable medium claim, software claim, record carrier claim, article of manufacture or computer product. The computer product is understood to be a product which is adapted to cooperate with a data processing system rather than being a product which is produced by the data processing system.


1 Computer program on a record carrier


Claims comprising computer programs must be directed to the medium embodying the DRAFT FOR CONSULTATION - October 8, 2004 Page 9


Computer-implemented inventions

program in a mate al or physical form in order to distinguish the program from an abstract theorem as an article of manufacture. The medium helps to define the boundaries of the invention by the claim. The medium carrying the program code imparts to the code the attribute of a product or manufacture under section 2 of the Patent Act. The claim must recite the material or physical medium in a positive manner, storing or embodying the computer readable code of the computer program for execution in the computer.


Example


[Claim 3] A computer readable memory having recorded thereon statements and instructions for execution by a computer to carry out the method of claim 1.


Claim 3 is an independent claim, but to avoid repetition of the process, claim 3 refers to claim 1. Claim 3 is not a product by process claim as defined in section 11.08.01 of MOPOP because it is not a product which has been created by the process for enrolling signature information.


An alternative form of the product claim defines a computer readable medium for use in configuring the computer, where the stored statements and instructions are recited in a code-means-plus-function format as illustrated below.


Example


[Claim 4] A computer program product, comprising:

a memory having computer readable code embodied therein, for execution by a CPU, for compressing signature information signals of an authorized user onto an identification card, said code comprising:

a) sampling code means for collecting samples of a first signal at a rate of at least "n" times a frequency component of said first signal which is to be preserved, where n is an integer greater than four;

b) digital filtering code means for digitally filtering said samples representing said first signal to remove high frequencies; and

c) storing code means for storing the filtered samples on said card.


However, a computer medium claim may not carry information which is not encodable and storable in a memory or carrier as s n in the following example:

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Claim 5J A computer program for compressing signature information signals of an authorized user onto an identification card comprising:

a) sampling code means for collecting samples of a first signal at a rate of at least "n" times a frequency component of said first signal which is to be preserved, where n is an integer greater than four;

b) digitally filtering code means for digitally filtering said samples representing said first signal to remove high frequencies;

c) storing code means for storing the filtered samples on said card.



The above claim is not a manufacture, since no storage medium has been defined having . Furthermore, the claim does not specify or imply that the computer program is computer-readable. Examiners will object to this claim for non-compliance with section 2, and for being informal under section 27(4) of the Patent Act.


16.04.03b Computer program on a signal medium


The computer medium may exist in a transitory state of a propagated signal. The carrier of the computer program is a transmissible carrier in the following acceptable example.


Example

Claim CJ A carrier wave embodying a computer data signal representing sequences of statements and instructions which, when executed by a processor cause the processor to enrol signature information of an authorized user onto an identification card, the statements and instructions comprising the steps of: a) collecting samples of a first signal at a rate of at least "n" times a

frequency component of said first signal which is to be preserved, where n is an

integer greater than four;

b) digitally filtering said samples representing said first signal to remove high frequencies; a M a

C) • •


storing the remaining of the filtered samples on said card.

-. -

..

..­




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Computer-implemented inventions

16.04.03c Data structures


Data structures represent the physical implementation of a data model for organizing and representing information which is used by a computer program. The data structure imposes a physical organization on the data according to attributes of the data as opposed to the content of the data. In the following example the data, which is stored in the table, is functional data because it contains pointers to other data within the data structure.


Example


Claim 73 A memory for storing data for access by an application program being executed on a data processing system, comprising:


a data structure stored in said memory, said data structure including information resident in a database used by said application program and including:

a) compressed video data stored in said memory having a plurality of frames including a plurality of reference frames, said compressed video data representing video footage in compressed form; and



b) a table stored in said memory associating an identifier for each portion of the video footage to be accessed with a pointer corresponding to the closest

reference frame to a first frame of the portion of video footage to be accessed such that said table may subsequently be displayed to allow a user to select one of the identifiers stored in said table using an input device and thereby access and view the portion of t video footage corresponding to the selected identifier.

40

16.05 Examples

The following examples of claim illustrate the principles discussed in this chapter. 16.05.01 Examples involving mathematical formulae The following two examples show unacceptable claims that involve algorithms or

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N

Computer-implemented inventions


equations.

t •­

[Claim 8] A method for calculating value f, comprising the step of:

a) calculating f=ma

Formulae, equations , and algorithms (which are merely methods or rules for performing calculations in accordance with formulae, equations, mathematical models, etc.), are all

, excluded by subsection 27(8) of the Patent Act. In addition, the method of claim 8 is

not an act or series o acts performed by some physical agent upon some physical d

a... object and producing in such object some change either of character or of condition,

...

-f» = and it does not produce an essentially economic result in relation to trade, industry or

commerce.

- r

[Claim 9] A computer-implemented method for determining the force f provided by a


a) inputting variable "m", where m is the mass of the moving brick measured in --kilograms;

b) inputting variable"a" where a is the acceleration of the moving brick measured in meters per second per second;

c) automatically calculating f=m"a, where "f" is the force provided by the moving brick in newtons; and

d) displaying variable f."

0

Although at first sight, the method of claim 9 does not appear to be excluded by

- subsection 27(8) of the Patent Act, and is a series of acts performed by some physical agent, etc., it is still non-statutory for not producing an essentially economic result in relation to trade, etc. Furthermore, it is an obvious physical embodiment of a non­

"" patentable by arbitrarily narrowing the field of use of the equation, or by adding input

steps and post solution steps to the algorithm, as has been done in claim 9.

t

[Claim 10] A computer-implemented method for evaluating f-a+' more quickly and

r

efficiently at the expense of a given amount of accuracy, comprising the steps of: a) receiving as input, variable/and desired base "a"

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o

z)


Computer-implemented inventions

b) automatically calculating a first scaled value using "y", "a"

g y, a, and a predetermined

base;

C) automatically generating an approximation value using the first scaled value and a stored predetermined set of values;

d) automatically determining a first exponential value having the predetermined base;

e) automatically generating an adjusted error value using the first scaled value and said approximation value;

f) automatically determining a correction value using said adjusted error value;

g) automatically determining a substantially accurate value for f, using the first

exponential value and correction value; and

h) outputting the substantiaIly accurate value fort

."


The description and drawings show that the disclosed algorithm allows a computer to evaluate the exponential equation more quickly and efficiently at the expense of a given amount of accuracy, yet the algorithm itself does not provide analogous advantages outside of the disclosed computer. For example, in other environments for solving equations (e.g. pencil and paper), following the algorithm actually takes longer, requires more work, and results in a less accurate solution than accepted methods in those environments. While the equation and the algorithm for solving it remain non-statutory, the appropriately programmed computer (or inventive combination), the method as followed by the computer (the method of operation of the inventive machine), and the software for making the computer execute the algorithm could all be claimed.14


Claim 11] A process for stripping photoresist "x" from a wafer, comprising the following step

a) carry out the usual steps involved in submersing a wafer in an organic solvent to remove photoresist "x" from the wafer, wherein acidity "a" of the organic solvent, temperature T of the organic solvent, and duration "t" of the wafer's submersion in the organic solvent are controlled such that equation Z holds t


The description and drawings show that during the stripping of a certain photoresist from a wafer, optimal results occur when an equation relating the acidity of the organic solvent used, the temperature of the solvent, and the duration of the immersion holds true. A claimed (new, inventive, and useful) photoresist stripping process in which the acidity of the solvent is given and the temperature and the duration of the immersion are controlled in accordance with the equation would be patentable.


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Computer-implemented inventions

The following example shows an adaptation of a known method for use by electronic means which is not considered to be directed to patentable subject matter.



[Claim 12j, A computer-implemented method for analysing stereo-chemical features of large molecules, comprising the following steps:

a) using an appropriately programmed computer to create a 3-D visual representation of a molecule;,

b) automatically correlating the representation of the molecule to a predetermined set of known molecules.

Chemists analyse the stereo-chemical features of large molecules, analysing their structures from drawings, choosing precursors and predicting utility. Chemists carry out a known method for drawing the molecule, visualizing its 3-D embodiment and correlating its structure to other molecules and possible precursors. The mere substitution of the calculating power of a computer for the mental calculation steps of chemists would not transform the method into an inventive method. Furthermore, the mental steps used by the chemists in their analysis would remain non-statutory.

16.05.02 Examples of non-reproducible subject matter

C) Al

a) In Schlumberger, the data output parameters were presented in graphical form representative of at least one formation characteristic. The discovery that useful information could be extracted from the measurements presented in graphical form was not considered to be an invention. The Office considers the extraction to have depended on subjective judgement an patent interpretation.

b) A method for indicating that certain associated information of a displayed item is accessible. The method consists of first displaying the item on a computer screen and then displaying a symbol adjacent to the item. The nature of the associated information of the displayed item is indicated by the relative location of the symbol to the displayed item. Since the symbol and its location requires subjective interpretative or judgmental considerations by the viewer, this method is not an invention.

1 6.05.03 Examples of subject matter not fitting within a category recognized

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Computer-implemented inventions

as statutory


a) The practice of configuring a build` g lot belongs to the skill of a surveyor or planner rather than to an art or manufacture within the meaning of those words of section 2 of the Patent Act 5 The preparation of a plan of subdivisions is clearly not a method of operation or use for an inventive machine or substance, nor does it produce a vendible product. Even if the land were marked and staked in accordance with the plan, the land is not functionally different from what it was originally; its condition is unchanged. Therefore, the preparation of the plan did not produce an essentially economic result in relation to trade, commerce, or industry, and it did not constitute "art" under section 2 of the Patent Act. See also the example in MOPOP 16.05.04.


b) A computerized online dating service having a database store, subscriber information for searching. The database is inputted with personal characteristics and preference criteria of subscribers. It is part of the skill of a professional matchmaker to know that likes attract and to select the input parameters. Database records are searched in order to match the characteristics and criteria of the subscribers. If no matches are obtained} the database is searched automatically using relaxed criteria until at least one match is returned (It is also within the skill of a professional matchmaker to know that opposites attract). The description of the system for implementing the matchmaking scheme refers to commonplace technology and does not disclose any specific combination of hardware, software and data structures. The scheme of matching subscribers falls within the skill of a professional matchmaker, and does not constitute a method of operating an inventive machine nor produce a vendible product. Therefore, the scheme does not produce an essentially economic result in relation to trade, commerce, or industry, and is not an "art" under section 2 of the Patent Act. Claiming the method as involving conventional or unspecified computer equipment does not change this, because it is still not a method of operating an inventive machine. By analogy, if the computer programmed to carry out the method was claimed, it would be considered an obvious mechanical embodiment in conventional computing equipment of a non-statutory method.


The example of the online dating service contrasts with the laser eye surgery case 15. In that case it was held that an inventive apparatus for eye surgery was



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taught, and that the claims involving the apparatus did not pose a limitation upon the surgeon's skills. Since it was an inventive apparatus meant to assist the surgeon in the operation on the human eye, the method of operation (of the apparatus) could have been claimed. In the dating service example, the assistance provided by the online dating service system does not extend beyond the advantages that are to be expected from the mere automation of the matchmaking scheme by using conventional equipment; the scheme has not been (and probably cannot be) properly integrated with the rest of the system to form an inventive combination (see also MOPOP 16.03.03). No invention is taught in the computer implementation of the scheme, only professional skills.


c) A further example involving professional skills relates to the implementation

of a practical financial strategy or scheme by means of a conventional computer system. The Commissioner held that a computer-based system for operating a financial account was nothing more than a computer which was programmed to carry out a set of calculations 4.

16.05.04 Subdividing land


The subject matter of the following claim is directed to economizing the area of building lots by creating lots having a wide frontage and by contouring side lot lines while stilt permitting a large building site on the building lot.


Claim 13j A data processing system for subdividing a parcel of land into building lots having building sites comprising:


a) data storage means arranged to hold the dimensions of the parcel of land having at least one front line along the length of one side of the parcel of land and a rear line along the opposite side of the parcel of land and a minimum building lot area and a minimum access frontage and a building site area;


processing means arranged to:


b) allocate lots on said parcel of land by calculating lot lines such that each lot has a major frontage on one side and a minor frontage on the other side, whereby major and minor frontages alternately coincide with the frontage line and the rear line;

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and by calculating side lot lines comprising:

C) means for generating a first arc from a circle intersecting the major frontage of the lot and centered on a point on the medial axis of the lot, and a second arc from a circle intersecting the minor frontage of the lot and centered on a point on the medial axis of an adjacent lot, said arcs having a point of conjunction, wherein each side lot line is generally S-shaped and the lot has the general shape of a champagne glass having building sites on said lots, said building sites having variable depth from said frontage line; and

d) means for generating a technical representation of the parcel of land subdivided into building lots on the basis of said allocation.

Although claim 13 describes a statutory "machine" under section 2 of the Patent Act, it still would not conform with section 28.3 of the Patent Act if the description and drawings merely stated that the method would lend itself to implementation through commonplace computer technology. In Lawson', the method of laying out land was considered to be a professional skill or art rather than a manual art with an essentially economic result in relation to trade, commerce or industry. Merely using known computing technology to automate a method in an obvious manner cannot secure a patent for an otherwise non-statutory method.

The exercise of professional skill is not patentable but invention may lie in systems for subdividing land. A complete description of the hardware, software and data structures and the interactions with the data will go a long way to establish patentable subject matter in a computing application. A full description of the hardware, program and data components in an integrated system, and an amended claim 13 defining the inventive features of the computer implementation of the method, may elevate the subject matter from a mere method belonging to a professional field into an art, process or machine of section 2 of the Patent Act.


16.05.05 Non-patentable media claims


A computer-readable medium storing data may be a statutory "manufacture" under section 2 of the Patent Act, but it still will not be patentable if the stored data does not provide inventive functionality. For example, data or information representing a molecular structure or piece of music does not possess processing functionality. Record

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carriers embodying, in a known or unspecified manner, such non-functional descriptive material, will be considered as obvious physical embodiments of non-statutory subject matter, and as not conforming with section 28.3 of the Patent Act.


Example


Claim 14 A computer readable storage medium having recorded thereon music or a literary work.


The descriptive material on the storage medium has information for presentation on a display or for creating sound. The descriptive material stored on the medium does not provide the functionality for reconfiguring the computer to process input data. So, claim 14 may be describing a statutory "manufacture", but it is an obvious physical embodiment of non-statutory subject matter, and still does not conform to section 28.3 of the Patent Act.


Example


[Claim 15] Computer readable medium having recorded thereon the nucleotide sequence depicted in SEQ ID N0:5, a representative fragment thereof or a nucleotide sequence at least 99% identical to the nucleotide sequence in SEQ ID N0:5.


Processing of the descriptive material in the computer does not alter or reconfigure the function of the computer nor transform the computer into a new machine. Although claim 15 describes a statutory "manufacture", it would be obvious to store non­functional descriptive material (like the nucleotide sequence) upon it. Claim 15 would therefore be considered not to conform with section 28.3 of the Patent Act.

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Computer-implemented inventions

Chapter 16 Endnotes



1. "Appeal Board Decisions with Respect to Computer Software", T. McDonough, Canadian Intellectual Property Review, August 1985, vol. 2, no. 1, pp. 10-16

2. Re Application for Patent Containing Claims that Read on Mental Steps Performed by a Human Operator in Deciding to Transmit a Signal (1972) 23 C.P.R. (2nd) 93.

3. Lawson v. Commissioner of Patents (1970) 62 C.P.R. 101 at 110-111

4. Re: Mobil Oil, patent 1,254,297 (1988) 24 C.P.R. (3d) 571 at 576, "the applicant's system is useful and does not relate solely to calculations or algorithms"

5. Lawson v. Commissioner of Patents (1970) 62 C.P.R. 101 at 109

6. Lawson v. Commissioner of Patents (1970) 62 C.P.R. 101 at 110-111

Tennessee Eastman v Com of Patents (1970) 62 CPR 117 at 130-152, (1974) SCR 111

Lawson v. Commissioner of Patents (1970) 62 C.P.R. 101 (Ex. Ct.) [Lawson] at 110-111; Tennessee Eastman v. Commissioner of Patents (1970) 62 C.P.R. 117 (Ex. Ct.) [Tennessee Eastman] at 154-155, affirmed (1972) 8 C.P.R. (2nd) 202 (S.C.C.); Imperial Chemical Industries Ltd. v. Commissioner of Patents (1986) 9 C.P.R. 289 (F.C.A.) at 295-296; Visx v. Nidek (1999) 3 C.P.R. (4"') 417 (F.C.T.D.) [Visx] at 459, affirmed (2001) 16 C.P.R. (4"') 251 (F.C.A.); Apotex v. Wellcome Foundation Ltd. (2002) 21 C.P.R. (4"') 499 (S.C.C.) [Apotex] at 519, affirming (2000)10 C.P.R. (4th) 65 (F.C.A.), allowing appeal in part (1998) 79 C.P.R. (3'")193 (F.C.T.D.). The Supreme Court also referred to and applied the professional skill test in Shell Oil v. Commissioner of Patents (1982) 67 C.P.R. (2nd) 1(S.C.C.) [Shel!J at 15. However, the Court appears to have viewed professional skills as being excluded from "useful art" under s. 2 rather than "art" under s. 2. Nonetheless, the Court still excluded professional skills from patentability under s. 2, rendering the point moot.

8. Lawson v. Commissioner of Patents (1970) 62 C.P.R. 101

9. Shell Oil v. Commissioner of Patents (1982) 67 C.P.R. (2d) 1 at 15.

10. Progressive Games v. Commissioner of Patents (1999) 3 C.P.R. (4th) 517, aff'd (2000) 9 C.P.R.

(4'n) 479.

11. Lawson v. Commissioner of Patents (1970) 62 C.P.R. 101 (Ex. Ct.) [Lawson] at 110-111; Tennessee Eastman v. Commissioner of Patents (1970) 62 C.P.R. 117 (Ex. Ct.) [Tennessee Eastman] at 154-155, affirmed (1972) 8 C.P.R. (2"d) 202 (S.C.C.); Imperial Chemical Industries Ltd. v. Commissioner of Patents (1986) 9 C.P.R. 289 (F.C.A.) at 295-296; Visx v. Nidek (1999) 3

C.P.R. (4'n) 417 (F.C.T.D.) [Visx] at 459, affirmed (2001) 16 C.P.R. (4"') 251 (F.C.A.); Apotex v.

Wellcome Foundation Ltd. (2002) 21 C.P.R. (4th) 499 (S.C.C.) [Apotex] at 519, affirming (2000) 10

C.P.R. (4`n) 65 (F.C.A.), allowing appeal in part (1998) 79 C.P.R. (3rd) 193 (F.C.T.D.). The Supreme Court also referred to and applied the professional skill test in Shell Oil v. Commissioner of Patents (1982) 67 C.P.R. (2nd) 1 (S.C.C.) [Shell at 15. However, the Court appears to have viewed professional skills as being excluded from "useful art" under s. 2 rather than "art" under s. 2. Nonetheless, the Court still excluded professional skills from patentability under s. 2, rendering

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Computer-implemented inventions



the point moot.

12. Lawson, ibid..; Tennessee Eastman, ibid.. at 130-152.

13. Re: Waldbaum Patent Application No. 961,392 (1971) 5 C.P.R. (2d) 162 (PAB) at 167-169.

14. Re Motorola Inc. Patent Application No. 2,047,731 (1998) 86 C.P.R (3d) 76 (PAB).

15. Visx v. Nidek (1999) 3 C.P.R. (4"') 417, aff d(2001) 16 C.P.R. (4"') 251.

Appendix 16.1 References


Re Application 564,175 to Atkins

6 C.P.R. (4 th ) 3851999

Re: Motorola 2,047,731

86 C.P.R. (3d) 761998

Re: Motorola 2,085,228

86 C.P.R. (3d) 72 1998

Re: Honeywell Info System 1,216,072

13 C.P.R. (3d) 4621986

Re: Sunwell Engineerlng 1,200,911

9 C.P.R. (3d) 4791986

Re: Vapor Canada 1,023,624

9 C.P.R. (3d) 5241985

Re: Gerber Garment Technology 1,179,422

Re: Battelie Memorial Institute 1,179,780

Re: Tokyo Shlbaura Electrlc 1,197,919

Re: Westinghouse Electric 1,199,133

C.P.O.R. Feb 191985

C.P.O.R. Dec 31 1985

C.P.O.R. Dec 31 1985

9 C.P.R. (3d) 2021985

Re: Westinghouse Electric 1,199,134

8 C.P.R. (3d) 851985

Re: Seicom Delta 1,196,082

7 C.P.R. (3d) 5061985

Re: Societé National Elf Aquitaine 1,190,311

6 C.P.R. (3d) 91984

Re: Dlssily Research 1,188,811

6 C.P.R. (3d) 4201984

Re: Dialog Systems 1,180,813

5 C.P.R. (3d) 423 1984

Re: Exxon Production Research 1,163,353

Re: Control Data Canada 1,160,345

Re: Bendix 1,176,734

C.P.O.R. May 15 1984

C.P.O.R. May 151984


5 C.P.R. (3d)

1981984

Re: International Business Machines 1,187,197

6 C.P.R. (3d)

991984

Re: Jassens et a1.1,187,157

6 C.P.R. (3d)

2131984

Re: Measurex 1,170,750

Re: Dlebo/d 1,174,362

Re: Western Geophysical 1,160,334

Re: General Electric 1,188,775

C.P.O.R. Aug 71984

C.P.O.R. Oct 9 1984

C.P.O.R. Oct 23 1984

6 C.P.R. (3d) 191 1984

Re Application 178,570, Securities Valuation System

2 C.P.R. (3d) 483 1983

Re: Bartley et a1.1,167,549

3 C.P.R. (3d) 3961983

Re: Westinghouse Electric 1,185,714

6 C.P.R. (3d) 58 1983

Re: North Oakland Development 1,163,822

82 C.P.R. (2d) 282 1982

Re Application 961,392 to Waldbaum

5 C.P.R. (2d) 162 1971

Re Application by E. S. P.

62 R.P.C. 871945


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