Co-authored with Adam Haller
On November 12, 2025, the Federal Court (per Whyte Nowak J.) held that the Commissioner of Patents (the “Commissioner”) made several errors of law in finding that an application for a “Method for Playing a Card Game” did not qualify as patentable subject matter under the Patent Act. The Court remitted the application to the Commissioner to be re-examined in accordance with the Court’s reasons. This is the Federal Court’s most recent pronouncement on the correct approach to determining the patentability of computer implemented inventions following the Federal Court of Appeal’s 2023 decision in Benjamin Moore.[1]
Dusome v. Canada (Attorney General) 2025 FC 1809
Background & Commissioner’s Decision
Patent Application Number 2,701,028 (the “‘028 Application”) claims a method for playing a new poker game either with physical cards or a computer system. The Commissioner found that the physical cards and computer system were essential elements of their respective claims, but concluded that those conventional elements did not form part of the “actual invention” for the purpose of determining patentable subject matter.
The Commissioner found that the actual invention – a new method of playing poker – is not an “art” within s. 2 of the Patent Act as it does not change the character or condition of anything material. The Commissioner also found that the invention lacked physicality as required in Amazon[2] and Benjamin Moore. The Commissioner refused the application on the basis that the actual invention is abstract and therefore not patentable under subsection 27(8) of the Patent Act.
The Federal Court’s Decision
The Court found that the Commissioner committed multiple errors in considering the “actual invention” and in his approach to assessing whether something is a patentable “art”.
Error #1: The Commissioner erred in construing the claims of the ‘028 Application. The Court found that the Commissioner did not construe the claims properly or adequately. While the Commissioner stated the correct test and made conclusions as to the essential elements of the claims, the Commissioner’s failure to assign meaning to the claim terms through the eyes of the person of ordinary skill in the art meant that the remainder of the Commissioner’s analysis was not grounded in a purposive construction. This error alone justified remitting the application for re-examination.
Error #2: The Commissioner erred in determining patentability based on the “actual invention” rather than the subject matter defined by the claims. The Court held that the Commissioner based his analysis of the “actual invention” solely on the description, rather than on the subject matter of the claims, as construed purposively. As such, the Commissioner erred in law by running afoul of the Federal Court of Appeal’s decision in Amazon.
Error #3: The Commissioner improperly applied the “actual invention” question. The Court found that in considering the “actual invention”, the Commissioner erred by stripping away the physical elements of the alleged invention: the physical cards and the computer. In the Court’s view, this approach fails to recognize that some combinations of old elements can be patentable inventions under the Patent Act.
Although the Court rejected the Commissioner’s use of the “actual invention” in this case, the Court confirmed that the “actual invention” can nonetheless play a role: (i) as an inherent part of claim construction; and (ii) in applying Schlumberger[3] to determine whether the only inventive aspect of the claimed invention is an algorithm. The Court warned, however, that such an analysis cannot “supplant the importance of purposive construction upon which a proper assessment is ultimately based”.[4]
Error #4: The Commissioner applied an improper definition of patentable “art”. The Court held that the correct definition of “art” is that articulated in Shell Oil[5] as expressed in Progressive Games,[6] not the one found in the earlier Lawson[7] decision. Put another way, a patentable art does not need to “cause a change in the character or condition of a physical object.”[8] Each case turns on its own facts and those facts must be considered in the context of the state of knowledge at a particular point in time.[9] Any suggestion to the contrary in MOPOP section 17.03.09 is contrary to the decision in Amazon. There is no per se prohibition on patenting subject-matter related to the rules of a card game.
Conclusion
The Court set aside the Commissioner’s Decision and instructed the matter to be re-examined in an expedited manner based on a proper construction of the claims and correct legal tests.
The Attorney General has 30 days from the date of the judgement to file an appeal with the Federal Court of Appeal.
[1] Canada (Attorney General) v Benjamin Moore & Co, 2023 FCA 168.
[2] Amazon.com Inc v Canada (Attorney General), 2011 FCA 328.
[3] Schlumberger Canada Ltd v Commissioner of Patents, [1982] 1 FC 845 (CA).
[4] At para 47.
[5] Shell Oil Co v Commissioner of Patents, [1982] 2 SCR 536.
[6] Progressive Games, Inc v Canada (Commissioner of Patents) (1999), 177 FTR 241 (FC).
[7] Lawson v Commissioner of Patents (1970), 62 CPR 101 (CA EXC) at 109-110.
[8] Amazon at paras 52-53.
[9] Amazon at paras 53-54 and Benjamin Moore at para 84.