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On November 12, 2025, the Federal Court (FC) released its decision in Dusome v Canada (Attorney General),1 the latest development in Canada's ongoing struggle to define patentable subject matter under section 2 of the Patent Act (the Act). The FC remitted Canadian Patent Application No. 2,701,028 (the 028 Application) for expedited re-examination and held that the Commissioner of Patents (the Commissioner) committed four errors of law in refusing the 028 Application. The 028 Application claims a "Method for Playing a Card Game."
The decision attempts to reconcile previous FC and Federal Court of Appeal (FCA) case law on patentable subject matter, including: Amazon.com v Canada (Attorney General),2 Choueifaty v Canada (Attorney General),3 and Canada (Attorney General) v Benjamin Moore.4 The FC and FCA have repeatedly emphasized purposive construction while resisting categorical exclusions — only to see those principles unevenly applied by patent examiners in practice.
1. Amazon – Purposive Construction of the Claims
The modern framework under section 2 of the Act begins with Amazon, in which the FCA rejected the Commissioner's refusal of Amazon's "one-click" purchasing claims on the basis that they were unpatentable "business methods."5 The FCA held that there is no per se exclusion on "business methods" as patentable subject matter, and instead, the inquiry must focus on the subject matter as defined by the claims, purposively construed,6 as is consistent with Free World Trust v Électro Santé Inc.7 and Whirlpool Corp. v Camco Inc.8 The FCA cautioned against vague descriptions such as "scientific" or "technological in nature," and stressed that identifying the "actual invention" must be grounded in purposive construction.9
2. Choueifaty – Rejecting the "Problem Solution Approach"
Notwithstanding the FCA's guidance in Amazon, CIPO introduced the "problem solution approach" to the Manual of Patent Office Practice (MOPOP), which attempted to narrow the scope of patent-eligible subject matter for computer-implemented inventions. This approach allowed patent examiners to disregard claim elements — often computer components — as non-essential if they were not deemed necessary to solve an identified problem.
This "problem solution approach" was rejected by the FC in Choueifaty — which concerned a patent application related to the selection and management of a portfolio of securities — as inconsistent with the established principles of purposive construction from Free World Trust and Whirlpool because it focused almost exclusively on functional considerations and ignored the inventor's intention as expressed in the claims. The FC set aside the Commissioner's refusal and ordered reconsideration in accordance with purposive consideration.10 Shortly thereafter, the Commissioner allowed Choueifaty's patent application.11
As a result of the FC's decision in Choueifaty, CIPO issued Practice Notice PN2020-04, which formally abandoned the problem-solution approach and reaffirmed that all elements recited in a claim are presumed essential unless established otherwise.12 This Practice Notice reinforced the FCA's approach in Amazon, whereby the examiner must identify the "actual invention," which must have physical existence or manifest a discernible physical effect or change and relate to the "manual or productive arts." While intended to align examination practices with the FCA and FC jurisprudence, this framework preserved a degree of examiner discretion to strip away conventional or generic elements at the subject-matter eligibility stage.
3. Benjamin Moore – Three-Step Framework Rejected
In Benjamin Moore, the Commissioner refused to grant two patent applications claiming a colour selection system on the basis that the applications did not comprise patentable subject matter pursuant to section 2 of the Act. At first instance, the FC rejected the Commissioner's continued reliance on the "problem-solution" approach and directed the Commissioner to apply a three-step eligibility framework, which distinguished between abstract theorems and practical applications before proceeding to the usual patentability criteria.13
On appeal, the FCA, relying on Amazon, declined to endorse the three-step test. The FCA emphasized that the three-step test was not useful in light of the practice of CIPO under the revised version of MOPOP and PN2020-04.14 The two patent applications were rejected by the Patent Appeal Board on redetermination.15 Benjamin Moore did not appeal the Patent Appeal Board's decisions.
4. Dusome
In Dusome, a self-represented litigant challenged the Commissioner's rejection of the 028 Application relating to a method of playing a wagering poker game either with conventional physical cards or on a computerized system. The Commissioner rejected the 028 Application on two grounds: (i) a method of playing a game is not an "art" among the manual or productive arts, as is required under the definition of "invention" at section 2 of the Act, and (ii) the invention did not have a physical component or discernible physical effect produced by the actual invention, contrary to subsection 27(8) of the Act.16
In reviewing the Commissioner's decision, the FC found that the Commissioner committed four errors:
- The Commissioner failed to properly construe the claims in accordance with Free World Trust and Whirlpool. The FC found this to be intentional on the part of the Commissioner, as his decision stated that "[w]hile there is no second step to purposive construction, the courts have not ruled it impermissible to determine the actual invention as distinct from the essential elements of the construed claims."17 As such, the FC held that it necessarily followed that the Commissioner's identification of the actual invention of the 028 Application was not grounded in purposive construction, as is required by Amazon.18
- The Commissioner failed to properly assess the subject-matter patentability of the claims, as subject-matter patentability must be based on a proper purposive construction of the claims. Relying on Amazon, the FC found that the Commissioner committed an error of law in conducting his assessment of subject matter patentability under section 2 and subsection 27(8) of the Act based on what the Commissioner considered to be the actual invention, as opposed to the subject matter defined by the claims.19
- The Commissioner failed to define the actual invention correctly. In defining the "actual invention," the Commissioner stripped away the physical elements of the invention (including the playing cards) since such elements were not novel.20 The FC held that this approach was improper and problematic, as it fails to recognize certain types of inventions, including those that claim the discovery of new properties, uses or methods through the combination of a number of essential elements (or non-essential elements), some of which are old.21 The FC emphasized that there is no need to separately consider the question of what constitutes new knowledge, as this gets folded into the exercise of purposive construction.22
- The Commissioner improperly defined patentable "art." The FC, relying on Amazon, held that the Commissioner was incorrect in interpreting "art" narrowly to require a change in character or condition of a physical object.23
Based on the four legal errors committed by the Commissioner, the FC set aside the Commissioner's decision and instructed the Commissioner to conduct a fresh and expedited examination of the 028 Application.
Where Are We Now and Where Are We Going?
Dusome once again reinforces that purposive construction, as opposed to the patent examiner's definition of the "actual invention,", remains the governing framework for assessing patentable subject matter under section 2 and subsection 27(8) of the Act. It underscores the ongoing tension between the Patent Office and the Federal Courts when it comes to the test to be applied to computer-implemented inventions.
Canadian courts are not alone in grappling with how to articulate a test for the patentability of computer‑implemented inventions — an issue that will only grow more complex in the age of artificial intelligence (AI).
For example, the United Kingdom Supreme Court (UKSC) just released its first decision addressing whether an invention implemented using an artificial neural network, a type of AI, can be patented under UK law.24 The UKSC endorsed a new framework, referred to as the "any hardware approach," under which a claim directed to a computer‑implemented invention can avoid the exclusion for "programs for computers."
While the UKSC's approach was grounded in the European Patent Convention, it is only a matter of time before the Canadian courts will face these same issues and need to shape Canadian patent law in the face of AI. The patentability of computer-implemented inventions remains a developing issue in Canada and will continue to evolve as AI makes its mark.
Footnotes
1 2025 FC 1809 [Dusome].
2 2011 FCA 328 [Amazon].
3 2020 FC 837 [Choueifaty].
4 2023 FCA 168 [Benjamin Moore FCA].
5 Amazon at para 63.
6 Amazon at para 49.
7 2000 SCC 66 [Free World Trust].
8 2000 SCC 67 [Whirlpool].
9 Amazon at para 25.
10 Choueifaty at para 39.
11 Choueifaty (Re), 2021 CACP 3.
12 Patentable Subject-Matter under the Patent Act (PN2020-04), last modified on 3 November 2020.
13 The three-step test endorsed by the FC in Benjamin Moore & Co. v Canada (Attorney General), 2022 FC 923 at para 43 involved (i) purposively construing the claim; (ii) asking whether the construed claim as a whole consists of only a mere scientific principle or abstract theorem, or whether it comprises a practical application that employs a scientific principle or abstract theorem; and (iii) if the construed claim comprises a practical application, assessing the construed claim for the remaining patentability criteria: statutory categories and judicial exclusions, as well as novelty, obviousness, and utility.
14 Benjamin Moore at para 20.
15 Benjamin Moore & Co (Re), 2025 CACP 9 and 10.
17 Dusome at para 32.
18 Dusome at para 23.
19 Dusome at paras 34-35.
20 Dusome at para 36.
21 Dusome at para 40.
22 Dusome at para 43.
23 Dusome at para 55.
24 Emotional Perception AI Ltd v Comptroller General of Patents, Designs and Trade Marks, [2026] UKSC 3 [Emotional Perception AI].
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