Executive Summary: Key Legal and Evidentiary Issues

• The proper legal standard for determining patentable subject-matter under section 2 and subsection 27(8) of the Patent Act was at issue.

• Errors in the Commissioner’s approach to purposive construction of patent claims were central to the appeal.

• The court examined whether the Commissioner improperly excluded physical elements and focused solely on abstract rules or algorithms.

• The definition and assessment of “art” for patent eligibility, as interpreted in Canadian jurisprudence, was challenged.

• Judicial review standards and the scope of administrative decision-making authority were scrutinized.

• The decision addressed the need for transparency and fairness in the patent examination process.

Facts of the case

Barry Dusome and Wyatt Dusome filed a Canadian patent application (No. 2,701,028) for a “Method of Playing a Card Game” in 2008, seeking protection for a novel poker-type game that could be played with physical cards or on a computerized system. The invention involved unique rules, an ante system, and a betting structure designed to create new mathematical strategies and encourage larger pots, with multiple rounds and potentially different winners per hand. The application contained 24 claims, with the first 21 directed to a method using physical cards and the remaining claims directed to computerized implementations.

The Canadian Intellectual Property Office (CIPO) examiner rejected the application, finding that the claimed subject-matter did not meet the definition of “invention” under section 2 of the Patent Act and was excluded under subsection 27(8) as an abstract theorem. The Patent Appeal Board (PAB) upheld this view, and the Commissioner of Patents ultimately refused the application in May 2024, concluding that the invention lacked the necessary physicality and did not constitute patentable “art.” The Commissioner’s decision relied on CIPO’s practice notice PN2020-04 and referenced relevant case law, including Amazon.com Inc v Canada (Attorney General) and Canada (Attorney General) v Benjamin Moore & Co.

Legal arguments and policy terms

The appellants challenged the Commissioner’s approach, arguing that the decision failed to properly apply purposive construction to the patent claims, as required by Supreme Court and Federal Court of Appeal jurisprudence. They contended that the Commissioner erred by stripping away all physical elements and focusing only on the abstract rules of the game, thereby misapplying the legal test for patentable subject-matter. The appellants also argued that the Commissioner relied on an outdated and incorrect definition of “art,” and improperly referenced the Manual of Patent Office Practice (MOPOP) rather than grounding the analysis in the Patent Act itself.

The respondent maintained that the Commissioner’s analysis was consistent with the guidance in Amazon and Benjamin Moore, and that the refusal was justified under the Patent Act. The court examined the relevant statutory provisions, including section 2 (definition of “invention”) and subsection 27(8) (exclusions for abstract theorems), as well as the standards for judicial review established in Vavilov and Housen.

Court’s analysis and findings

The Federal Court found multiple errors in the Commissioner’s decision. First, it held that the Commissioner failed to properly construe the claims using the purposive construction required by law, neglecting to analyze the claims through the eyes of a person skilled in the art and to consider the disclosure in context. Second, the court determined that the Commissioner’s assessment of subject-matter patentability was flawed, as it was based on an improper identification of the “actual invention” and failed to apply the correct legal test. Third, the court found that the Commissioner erred by disregarding physical elements and focusing solely on abstract knowledge, contrary to the principles established in Shell Oil and Amazon. Finally, the court held that the Commissioner applied an incorrect definition of “art,” relying on outdated case law and non-statutory guidance, rather than the authoritative definition from Shell Oil.

Outcome and final disposition

The Federal Court allowed the appeal, set aside the Commissioner’s decision, and ordered that the patent application be remitted for a fresh and expedited examination based on the amended claims and in accordance with the court’s reasons. No costs or damages were awarded, as the judgment specified there would be no order as to costs.