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On the heels of the Supreme Court of Canada's ("SCC") hearing in Pharmascience Inc. v. Janssen Inc., et al. regarding subject matter eligibility of methods of medical treatment, the Federal Court issued a subject matter eligibility decision in Dusome v. Canada (Attorney General).1
Consistent with other subject matter appeals from decisions of the Commissioner of Patents, the Federal Court remitted a patent application previously rejected for ineligibility under section 2 of the Patent Act back to the Patent Office for reconsideration.
The difficulties with subject matter eligibility assessments are not unique to Canada. Recent United States Patent and Trademark Office ("USPTO") memoranda and decisions signal clear intention to reduce similar difficulties experienced during patent prosecution, particularly for innovations involving artificial intelligence.2
With all of the attention on section 2 of the Act and section 101 of the US Patent Act, we examine the current state of section 2 in Canada.
A. Amazon – Patent claims must be purposively construed
Amazon related to the patentability of Amazon's "One-Click" patent, which used unique identifiers stored in a merchant's computer to link a customer's order with their personal information to streamline online purchases.
The Court of Appeal's decision was the first in a series of decisions that overturned subject matter eligibility determinations of the Commissioner of Patents.3 The Commissioner found that the invention was not patentable "art", applying tests the Federal Court later rejected. The Federal Court instead adopted a literal construction of the claims.
The Court of Appeal emphasized that subject matter assessments must be grounded in a purposive construction of the claims and rejections for unpatentable subject matter must be grounded in the Act. The Court of Appeal specifically rejected the Commissioner's attempts to rely on tests that were not found in the jurisprudence.
For example, patentability assessments are not based on whether the subject matter is "technological in nature." Also, "business methods" are not per se unpatentable. The Court of Appeal observed that patentable subject matter must have "physical existence or manifest a discernible effect or change."
With this guidance, the Court of Appeal remitted the 933 Application to the Patent Office for reconsideration. The 933 Application issued two months later.
B. Choueifaty – The problem-solution approach is inconsistent with Canadian law
Next came Choueifaty, where the Federal Court considered whether the Commissioner erred in using the "problem-solution" approach to construe the essential elements of Patent Application No. 2,635,393, and to conclude that the claims fell outside the definition of an "invention."4
The problem-solution approach was originally set out in the Manual of Patent Office Practice (or MOPOP) and identified the essential elements of a claim as those that were necessary to achieve the disclosed solution to an identified problem. The Commissioner found that the essential elements of the relevant claims were directed to a scheme or rules involving calculations to weigh securities, which did not satisfy the physical requirement for an "invention."
On appeal, the Court found that using the problem-solution approach was inconsistent with Canadian Law and that it was akin to using the "substance of the invention" approach discredited by the Supreme Court in Free World Trust.5 Instead, the Court reiterated that the Commissioner was required to use the purposive construction test, citing Amazon and other leading decisions.
The 393 Application was remitted to the Patent Office for reconsideration and was later issued by the Patent Office.
C. Benjamin Moore – No unique test for computer-implemented inventions
Benjamin Moore was the next chapter of subject matter eligibility from the Federal Courts.6
The Commissioner initially refused to grant Patent Application Nos. 2,695,130 and 2,695,146 on the basis that the essential elements of the claims were directed to solving the practical problem disclosed in the applications rather than to the physical components. Accordingly, the applications were directed to non-patentable subject matter.
On appeal, the Federal Court found that the Commissioner erred. The Federal Court also set out a three-part test to assess subject matter eligibility for computer-implemented inventions, which tied eligibility to whether the claims were directed to a practical application.7
Referencing Amazon, the Court of Appeal concluded the Federal Court had gone too far and refused to adopt its three-part test. The Court of Appeal did not, however, provide further guidance on how to apply Amazon. Instead, the two patents at issue were remitted for reconsideration in light of the existing jurisprudence, including Amazon.
The Patent Office found the patents to be ineligible again on August 22, 2025. The deadline to appeal was on November 22, 2025, but no appeal appears to have been launched.
D. Dusome – The next chapter
Dusome involved a judicial review of the Commissioner's refusal to grant Patent Application No. 2,701,028 on the basis that it was not an "invention." The innovation related to a method of playing a wagering poker game using either conventional physical cards or a computerized system. The claims included elements directed to the physical cards or the computerized system. The Commissioner, however, considered the actual invention to be the rules of the game, and not the physical elements.
Dusome, representing himself, successfully appealed to the Federal Court, which took issue with the Commissioner's approach to analyzing the claims and the subject matter eligibility. That is, instead of following Amazon and established jurisprudence on purposively construing claims, the Commissioner looked for the "actual invention," which stripped the claims of the physical elements and focused too heavily on the rules of the game.
The Court explained that once the claims are purposively construed "the Commissioner will need to take into account the nature of the discovery claimed and consider whether the subject-matter defined by the claims meets the definition of patentable 'art' as defined in Shell Oil, which asks whether the claims of the 028 Application add new knowledge to affect a desired result which has commercial value."8
In other words, the focus of the eligibility analysis must be the claims as purposively construed, and not the "actual invention" as incorrectly determined by the Commissioner.
The 028 Application was remitted to the Patent Office for reconsideration. The Patent Office has until December 11, 2025 to appeal this decision to the Court of Appeal.
Conclusion
These decisions from the Federal Courts show that patentable subject matter eligibility continues to be a difficult determination when dealing with computer-implemented inventions. Notwithstanding these four precedential decisions over 15 years, the exercise remains difficult.
Similar challenges arise with subject matter eligibility for methods of medical treatment, as shown in Pharmascience. Although the exclusion for "methods of medical treatment" originated as a statutory exclusion that has since been repealed, the Courts have not yet rejected the exclusion. Instead, there is inconsistency in how the exclusion is analyzed by the Courts. The SCC may have the opportunity to clarify this issue in its upcoming Pharmascience decision.
In light of these uncertainties and challenges, and given the USPTO's efforts to clarify section 101 of the US Patent Act and the Congressional push for statutory reform through the Patent Eligibility Restoration Act, it raises the question of whether Canada should explore similar changes.9
Read the original article on GowlingWLG.com
Footnotes
1. 2024 CanLII 88324 ("Pharmascience"), released September 19, 2024; 2025 FC 1809 ("Dusome"), released November 12, 2025.
2. United States Patent and Trademark Office, Memorandum re: Reminders on evaluating subject matter eligibility claims under 35 U.S.C. 101, dated August 4, 2025; United States Patent and Trademark Office, Appeal 2024-000567 ("ARP Decision"), notification dated September 26, 2025.
3. 2011 FCA 328 ("Amazon"), released November 24, 2011.
4. 2020 FC 837 ("Choueifaty"), released August 21, 2020.
5. Ibid. at para 37; 2000 SCC 66 ("Free World Trust"), released December 15, 2000.
6. 2023 FCA 168 ("Benjamin Moore"), released July 26, 2023.
7. Ibid. at para 8; see also FC's judgement in Benjamin Moore & Co. v. Canada (Attorney General), 2022 FC 923, released June 17, 2022.
8. Dusome at para 58.
9. Library of Congress, Congress.gov, S.1546 – 119th Congress: Patent Eligibility Restoration Act of 2025, latest action May 1, 2025.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
