Dusome v. Canada (Attorney General): Are card games patentable?
INTRODUCTION
Once again, the Federal Court has reviewed a Patent Office decision concerning subject matter patent eligibility under section 2 and 27(8) and once again the Court has found the Patent Office’s decision faulty.
This case is not primarily about computer-implemented inventions, however the question of the eligibility of card game rules shares some of the same subject matter eligibility issues with computer implemented inventions. In this case both issues are combined.
As the Court of Appeal has noted in Benjamin Moore, the approach for the determination of the patentability of computer-implemented inventions is a very complex issue that has been the subject of much debate before the highest courts in the United States and Australia, and that our Canadian case law dealing with computer-implemented inventions, particularly in the context of applying judicial or statutory exclusions is not fully developed, consisting of only a few decisions.[1]
This question of whether a particular judicial or statutory exclusion exists at all has been masked in this case by the failure of the Commissioner to apply a meaningful purposive construction to the claims.[2]
In this case, as in all cases the central question is whether the subject matter of the claim is an “invention” under section 2.
If on a purpose construction, the “actual invention” or the “contribution to human knowledge” is for example only the rules for playing a card game, the subject matter of this claim is not an “invention” and must be non-statutory under section 2. This would seem to be the holding in Progressive Games[3]and Benjamin Moore.[4] As Justice Gauthier observed: “Also, it appears that the very essence of the learning or knowledge referred to by the Supreme Court [in Shell Oil] which falls within the definition of “art”, requires it to bring something that adds to human knowledge on the particular subject.”[5] According to the Court in Dusome, how the office determines the “actual invention” requires considerably more analysis than was present in the Commissioner’s decision, although how much more has yet to be determined although this case gives the Commissioner some guidance.
THE 028 APPLICATION
This patent application (028 application) involved a method of playing a poker type card game both with conventional physical cards and by computer. There are 24 claims on file: the method claims 1-21 are directed to a method played with physical cards; and claims 22-24 are directed to a method played on a computerized system.
The invention was described as follows in the Application:
The present invention provides a poker-type game that creates a new “math” and fresh strategies from prior poker games. The present invention also provides a game, which includes an ante system and a betting structure that encourages larger pots. The present invention also provides two or more rounds of play for each dealt hand leading to two or more pots that may be won, and possibly different winners for each pot per dealt hand.
THE COMMISSIONER’S DECISION
The Patent Office decision was based on its practice notice PN 2020-04 which had been issued after the decision in Choueifaty [6]and before the decision in Benjamin Moore. The Court did not consider that this practice notice was a misinterpretation of the law but found that the Commissioner of Patents did not construe the claims as described in that notice.[7] From this point of view perhaps all that is necessary to remedy this defective decision is for the Commissioner to follow its own practice notice upon re-examination.
In particular PN 2020-04 provided as follows:
“For each claim, the identification of the actual invention must be grounded in a purposive construction of the claim and cannot be determined solely on the basis of a literal reading of the claim, or a determination, not anchored in the language of the claim, of the “substance of the invention” within the meaning of that phrase as used by the Supreme Court of Canada in paragraph 46 of Free World Trust v Électro Santé Inc., 2000 SCC 66”.[8]
The Court did not quote this section of PN 2020-04, but it is implicit in the Court’s decision that this is precisely what the Commissioner did not do. According to the Court the Commissioner used purposive construction only to determine the essential elements of the claim and did not identify the “actual invention” as part of that purposive construction.
In addition, the Commissioner did not explain how he had determined which elements were essential. According to the Court, the Commissioner’s claims construction was restricted to a mere conclusion that all of the claim elements in claims 1-24 are essential.[9]
There was, in the court’s view, in effect, an incomplete purposive construction of the claim language. In part, this has been an unfortunate effect of the language and circumstances of the Supreme Court’s decision in Free World Trust which has led the patent office to focus on purposive construction as a means to determine the essential elements of a claim. However purposive construction must be addressed to much more than simply determining which elements are essential, particularly when subject matter eligibility is an issue.
An attempt to find “the substance of the invention” is bad but the determination of the “actual invention” is acceptable, perhaps even necessary, as long as it is part of purposive construction and not the sole basis for determining the subject matter of the claim. The difference between the ‘substance of the invention” and the “actual invention” requires a level of subtlety which may be nearly impossible to apply.
The Benjamin Moore court has emphasized that “novelty and ingenuity are relevant considerations in determining whether the addition to human knowledge fell within the statutory definition of “invention” at section 2, which refers to a “new and useful art”. Also, it appears that the very essence of the learning or knowledge referred to by the Supreme Court [in Shell Oil] , which falls within the definition of “art”, requires it to bring something that adds to human knowledge on the particular subject” [10]
THE COMMISSIONER’S ERRORS
Did the Commissioner err in his analysis of the actual invention of the 028 Application?
In relation to this question, the Court considered that the Commissioner made three errors.
- The first error: a failure to properly construe the claims
- The second error: the improper assessment of subject-matter patentability based on the actual invention of the 028 Application
- The third error: the improper approach and application of the actual invention question
The Court accepted that the determination of the “actual invention” was relevant and necessary but considered that the Commissioner had errored in determining this without performing the necessary purposive construction.
In essence the Commissioner performed a perfunctory purposive construction without any analysis.
According to the Court, the Commissioner’s analysis was lacking in three areas:
First there was no attempt to isolate and give meaning to descriptive words and phrases employed in the representative claim in order to identify the elements of the invention of the claim as contemplated by the inventor and which define the subject-matter of the claims. By giving meaning to words and phrases such as “operating wagering poker events/games” and “second buy-in bet,” the Commissioner gives insight into the POSITA’s understanding of the inventor’s intention and where the discovery lies over the common general knowledge.[11]
Second, despite having identified the POSITA and the common general knowledge, missing from the Commissioner’s analysis is any attempt to construe the representative claim through the eyes of the POSITA.[12]
Finally, the Court considered that the Commissioner had failed to give reference to the disclosure in analyzing the representative claim.[13]
The Court considered that the Commissioner’s failure to ground his determination of the actual invention of the 028 Application in a purposive construction of the claims was intentional. This observation was based on the following statement in the Commissioner’s Decision 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.” In the Court’s view this is contrary to Amazon at para 47.[14]
This was an unfortunate use of words by the Commissioner. To say that there is no “second step” must be read in the context of the debate over “literal” versus “infringement in substance” which underlined the Free World decision.[15] The Commissioner’s error was in not performing a proper purposive construction at all. It should have been possible to determine the actual invention as part of the purposive construction analysis and that analysis should involve a number of considerations as outlined by the Court. There was no need for the Commissioner to refer to a “second step” if he was construing the actual invention in the claim at the same time as determining the essential elements. While purpose construction clearly governs, determining the actual invention or the inventive concept can be part of that purposive construction as long as it is not the sole basis.
The Commissioner must not consider purposive construction is completed simply because the essential elements have been determined. As pointed out by the Court in Benjamin Moore:
“The subject matter could not be determined “solely on the basis of the inventive concept” (Amazon at para. 47). However, it [the Court in Amazon] did state at paragraph 42 that “what the inventor has actually invented or claims to have invented is a relevant and necessary question” when assessing patentable subject matter (section 2 and the judicial and statutory exclusions).” [16]
The failure of the Commissioner was not to perform a meaningful purposive construction. As noted by the Court and as mentioned above, taking account of the actual invention has been considered by the court to be a relevant and necessary consideration.
“This is in line with our Court’s statement in Schlumberger Canada Ltd. v. Commissioner of Patents, 1981 CanLII 4718 (FCA), [1982] 1 F.C. 845 at 847, 56 C.P.R. (2d) 204 (F.C.A.) (Schlumberger) that “in order to determine whether the application discloses a patentable invention, it is first necessary to determine what, according to the application, has been discovered.”[17]
Based on the Court’s analysis, all of the three errors flowed from the failure to adequately purposively construe the claims.
The Court accepts that after the claims are purposely construed the Commissioner can ask the “Schlumberger question”, whether a purposive construction of the claims in issue leads to the conclusion that the only inventive aspect of the claimed invention is the algorithm—a mathematical formula.
The Court accepts that this same analysis is acceptable for non-computer implemented inventions or card game rules as follows:
“Based on a purposive construction of the claims of the 028 Application, the Commissioner will need to determine whether the only inventive aspect of claims 1-21 are the rules of a game, and whether the only inventive aspect of claims 22-24 is the algorithm that is programmed into the computer to cause it to take the necessary steps to accomplish the subject-matter defined by the claims (which may or may not be new rules of a game). Alternatively, the Commissioner should consider whether Schlumberger is distinguishable because the rules of the game and the use of playing cards and a computer are not the whole invention but only one of a number of essential elements in a novel combination.” [18]
This is also consistent with the decision in Benjamin Moore:
“In other words, if the only new knowledge lies in the method itself, it is the method that must be patentable subject matter. If, however, the new knowledge is simply the use of a well-known instrument (a book or a computer) to implement this method, then it will likely not fall under the definition found at section 2 without something more to meet the requirement described at paragraph 66 of Amazon.”[19]
Viewed as a whole it would appear that the Benjamin Moore Court is in favour of looking at what was actually invented or what was the contribution to human ingenuity when considering whether the claimed subject matter qualifies as an invention under section 2, and this would seem to include determining whether an element, even if deemed essential under purposive construction, actually contributed to the claimed invention.[20]
Assume that the Commissioner does conclude that the playing cards are an essential element but assume also that he also concludes that, on a purposive construction, the only inventive aspect (or new knowledge) in the claims is the rules of the card game. The subject matter of the claim should be non-statutory.
The Court also considered the Commissioner had errored by the application of an improper definition of patentable “art”.
Here the Court is on shaker ground. It is true that there is no specific mention of the rules of a card game in the Patent Act and no per se prohibition on patenting subject-matter related to the rules of a card game. However, the Supreme Court in Monsanto recognized that there is subject matter that has been excluded by judicial interpretation. These exclusions include a number of things perhaps relevant to the rules of a card game, including computer programs if the discovery involved is a method of calculation, business systems and methods and professional skills and methods, printed matter producing only an artistic, intellectual or literary result, mere human conduct or mental steps, or instructions and architectural plans.[21]
In addition, in Benjamin Moore the Court of Appeal mentioned “when looking at pure questions of law, problems surrounding the interpretation of relevant definitions of an “invention” in other common law jurisdictions, and the application of well-recognized judicial exceptions in old common law cases become worthy of consideration.”[22]
“If, however, the only new knowledge is the collection, consolidation, and presentation of well-known information using a book to proffer recommendations, then the subject matter will likely not be patentable, as it will not qualify as a “new and useful art” within the meaning of section 2.”[23] By analogy, the rules of a card game may be like the information in a book.
The Court gave no weight to the decision of the Court of Appeal in Progressive Games on the basis that each case must turn on its own facts. It remains true that each claim must be purposively construed, but if the claim construction shows that the alleged invention is directed to a game using the standard deck of playing cards and the conventional rules of poker with a slight variation, then the claim should be rejected as unpatentable subject matter under section 2 as not amounting to a new and innovative method of applying skill or knowledge within the meaning given to those words in Shell Oil Company v. The Commissioner of Patents.[24]
Since the Court determined that the Commissioner had not done a proper purposive construction, going further was perhaps unnecessary and dangerous. Are the categories of prohibited subject matter closed? What is the situation in other common law countries? What level of physicality is needed. Perhaps these decisions could have been left to another day.
Finally, the Dusome Court noted that in Amazon the Federal Court of Appeal rejected the Commissioner’s consideration that in order to meet the definition of “art” the invention had to “cause a change in the character or condition of a physical object”[25].
However, this interpretation makes the decision in Amazon clearer than it is. No case has clearly interpreted “a change of character of condition” as completely divorced from the physical world. In Amazon at paragraph 69 the Court of Appeal states that the
“practical application” requirement in Shell Oil “ensures that something which is a mere idea or discovery is not patented—it must be concrete and tangible. This requires some sort of manifestation or effect or change of character.” Justice Phelan is here acknowledging that because a patent cannot be granted for an abstract idea, it is implicit in the definition of “invention” that patentable subject-matter must be something with physical existence, or something that manifests a discernible effect or change. I agree.[26]
Here there does not appear to be any “discernible effect or change”. If the Court is intending to suggest that the manipulation of conventional playing cards in a game could be “a change of character or condition” this potentially vastly expands the areas of patentable subject matter into uncharted areas.
In conclusion, if the Court can determine what was actually invented after a purposive construction and the actual invention involves a series of steps that exist only in the mind or that have, as the patent office says, intellectual significance only, the subject matter of the claim should be unpatentable.
At this point the Commissioner may continue to struggle to stand on firm judicial ground. The advice of the Court in Dusome in relation to purposive construction will be a help.
[1] Canada (Attorney General) v. Benjamin Moore & Co., 2023 FCA 168 (herein after Benjamin Moore) at paragraph 11.
[2] Purposive construction is a difficult exercise even for judges. Benjamin Moore para 43.
[3] “a new and innovative method of applying skill or knowledge within the meaning given to those words in Shell Oil Company v. The Commissioner of Patents 1982 CanLII 207 (SCC), [1982] 2 S.C.R. 536 “. Progressive Games, Inc. v. Canada (Commissioner of Patents), 2000 CanLII 16577 (FCA). In order to be an invention, there must be a “contribution or addition to the cumulative wisdom on the subject of games”
[4] Benjamin Moore para 65
[5] Ibid at paragraph 65
[6] Choueifaty v. Canada (Attorney General), 2020 FC 837
[7] Dusome v. Canada (Attorney General) 2025 FC 1809 paragraph 23 (hereinafter Dusome)
[8] https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/patentable-subject-matter-under-patent-act
[9] Dusome para 26
[10] Benjamin Moore paragraph 65
[11] Dusome paragraph 28
[12] Dusome paragraph 29
[13] Dusome paragraph 31
[14] Dusome paragraph 32
[15] Free World Trust v. Électro Santé Inc., 2000 SCC 66
[16] Benjamin Moore paragraph 68,quoting from Amazon.com, Inc. v. Canada (Attorney General), 2011 FCA 328
[17] Ibid para 68
[18] Dusome paragraph 48
[19] Benjamin Moore paragraph 94
[20] Benjamin Moore paragraphs 75,78, 87
[21] “Subject matters that are specifically precluded by statute from patent protection are natural phenomena, laws of nature, and scientific principles: s. 27(8). Other subject matter has been excluded by judicial interpretation of s. 2 definitions of “invention” and “process” and s. 27(8). For example, the following have been excluded: computer programs if the discovery involved is a method of calculation (Schlumberger Canada Ltd. v. Commissioner of Patents, 1981 CanLII 4718 (FCA), [1982] 1 F.C. 845 (C.A.)); methods of medical treatment (Tennessee Eastman Co. v. Commissioner of Patents, 1972 CanLII 167 (SCC), [1974] S.C.R. 111); higher life forms (Harvard College, supra); business systems and methods and professional skills and methods (State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998)); printed matter producing only an artistic intellectual or literary result (Re Application of Boussac, CIPO, Commissioner’s Decision No. 143, March 10, 1973); mere human conduct or mental steps, or instructions (Re Application of Ijzerman, CIPO, Commissioner’s Decision No. 254, July 4, 1975; Gale’s Application, [1991] R.P.C. 305 (Pat. Ct.), at p. 323); and architectural plans (Application No. 995 for a Townhouse Building Design (Re) (1979), 1979 CanLII 4559 (CA CP), 53 C.P.R. (2d) 211 (Pat. App. Bd.)). These examples demonstrate that it is not unusual for courts and the Patent Office to interpret provisions of the Patent Act so as to exclude subject matter from patentability.” Monsanto Canada Inc. v. Schmeiser, 2004 SCC 34 (CanLII), [2004] 1 SCR 902 paragraph 133
[22] BM paragraph 58
[23] BM para 92
[24] 1982 CanLII 207 (SCC), [1982] 2 S.C.R. 536
[25] Amazon.com, Inc. v. Canada (Attorney General), 2011 FCA 328 paragraphs 52-52
[26] Amazon paragraph 69