Barry Dusome and Wyatt Dusome v. Attorney General of Canada, 2025 FC 1809
On November 12, 2025, the Federal Court released Dusome, another chapter in Canada’s long-running struggle to define patentable subject matter. The case concerns a “Method of Playing a Card Game” and asks, once again, how the Commissioner should approach “actual invention”, business methods, and the definition of “art” in section 2 of the Patent Act.
The Court found four errors of law in the Commissioner’s analysis, set the refusal aside, and remitted the application for expedited re-examination. In doing so, the Court tried to reconcile Amazon, Benjamin Moore and Shell Oil, while leaving plenty of uncertainty for applicants working with business methods, games and other non-traditional inventions.
The Dusome Application
The Dusomes’ application (2,701,028) was filed under the PCT in 2008. It claims a wagering poker-type game that can be played with physical cards or on a computer. The invention is described as creating “a new ‘math’ and fresh strategies” along with an ante and betting structure that encourages larger pots.
After years of prosecution, the Commissioner refused the application on two grounds:
- the “actual invention” did not meet the definition of “invention” in section 2
- the subject matter was excluded under subsection 27(8) as a mere abstract algorithm or rules for a game
The decision leaned heavily on Lawson, Schlumberger, Progressive Games and MOPOP’s long-standing position that rules for playing a game or sport are non-statutory.
Four Errors in the Commissioner’s Approach
Justice Whyte Nowak accepted that the case was about how the Commissioner has been applying Amazon and Benjamin Moore to subject matter questions. The Court identified four key errors (for blog purposes, the four errors have been reorganized under several subheadings, with particular emphasis on the fourth error).
Purposive construction sidelined
The Court held that the Commissioner did not carry out a proper purposive construction of the claims before turning to subject matter and “actual invention”. Instead, physical elements such as cards and computer implementation were declared “standard” and effectively ignored at the “actual invention” stage.
This is exactly what Benjamin Moore warned against.
Over-stripping to find the “actual invention”
In focusing only on the “new knowledge added to the art of poker”, the Commissioner ended up with an “actual invention” that was nothing more than rules for a game and an abstract algorithm. The Court noted that this approach risks missing legitimate inventions where the discovery lies in new properties or uses implemented through combinations of familiar elements, something the Supreme Court accepted in Shell Oil.
Misuse of Schlumberger and algorithms
The Commissioner treated the computer claims (22-24) as indistinguishable from Schlumberger, because the computer components were generic and not improved by the steps. The Court held that this analysis again flowed from an improper “actual invention” exercise; the Commissioner needed first to determine, based on purposive construction, what the invention really is and where the discovery lies.
The wrong test for “art”
This is where Dusome pushes the doctrine forward. The Commissioner had concluded that a method of playing a poker game is not an “art” because it “does not change the character or condition of anything material”, relying on Lawson and MOPOP’s position that rules of a game do not solve a practical problem.
The Court labelled this a fourth error of law. In its view:
- Lawson is not the definitive test for “art”
- The authoritative definition is the Shell Oil test, as applied in Progressive Games and endorsed in Benjamin Moore:
- not a disembodied idea but has a method of practical application
- a new and innovative method of applying skill or knowledge
- a result or effect that is commercially useful
By insisting on a “change in something material”, the Commissioner applied a narrower and incorrect gloss on “art”.
Business Methods and an “Open Mind”
Perhaps the most striking passage appears near the end of the reasons:
“the task of purposive construction … should be undertaken anew by the Commissioner, with a mind open to the possibility that a novel business method may be an essential element of a valid patent claim.”
This echoes Amazon’s statement that business methods are not categorically excluded, and Benjamin Moore’s reminder that conventional computer technology does not automatically doom a claim.
At the same time, the Court is careful not to bless the Dusome claims. It sends the application back for re-examination, instructing the Commissioner to:
- re-do purposive construction
- re-assess the “actual invention” without stripping away all physical or implemented elements
- apply the Shell Oil and Progressive Games definition of “art”, rather than Lawson’s “change to something material” test
All of this happens against the backdrop of the Supreme Court’s pending decision in Pharmascience v. Janssen on methods of medical treatment, which the Federal Court openly acknowledges may soon reshape subject-matter law more broadly.
Where Does This Leave Subject-Matter Law?
From a practitioner’s standpoint, Dusome does a few important things:
- Re-affirms that purposive construction comes first; the Commissioner cannot jump directly to “actual invention” and subject-matter exclusions.
- Confirms that business methods and games are not automatically out of bounds, provided they satisfy the Shell Oil “art” test and are properly claimed.
- Explicitly downgrades Lawson from being the test for “art” to being, at most, a contextual illustration.
However, Dusome also reinforces a trend that I see as problematic. The Court once again embraces the Shell Oil and Progressive Games three-part definition of “art”, which effectively incorporates novelty (“new”), non-obviousness (“innovative”) and utility (“commercially useful”) into the subject-matter analysis itself.
This is the same “blurred line” concern discussed in the subject-matter chapter of Canadian Patent Law, 5th ed.: subject matter under section 2 is being tested using criteria that properly belong to sections 28.2 and 28.3 (novelty and non-obviousness) and the traditional utility requirement.
The Missing Mouse
Both Benjamin Moore and now Dusome canvass a long list of authorities on subject matter, including Shell Oil, Amazon, Progressive Games, Schlumberger, Tennessee Eastman and Lawson. Yet the Supreme Court’s seminal decision in Harvard College v. Canada (Commissioner of Patents) is conspicuously absent from the analysis.
That omission matters. Whatever one thinks of the result in Harvard Mouse, both the majority and minority approached subject matter as a pure construction of section 2, asking whether a higher life form fit within “art, process, machine, manufacture or composition of matter” without folding in novelty, obviousness or utility. In other words, Harvard Mouse applied a bright-line section 2 analysis, separate from the other patentability requirements.
By contrast, Benjamin Moore and Dusome adopt the more blended Shell Oil and Progressive Games formulation without openly grappling with Harvard Mouse’s bright-line approach.
Why a Bright-Line Test Still Matters
In my view and as argued in the subject-matter chapter of Canadian Patent Law, 5th ed., Canadian law would benefit from returning to a bright-line test for statutory subject matter:
- First, construe the claims purposively.
- Second, ask only whether the construed claim, as a whole, fits within one of the categories in section 2.
- Only then move on to novelty, obviousness and utility under the provisions that govern those requirements.
Such a sequence keeps each concept in its own lane, reduces circularity, and makes it easier for innovators and CIPO to know what is being decided at each stage.
Takeaways for Innovators (and Game Designers)
For now, Dusome offers both risk and opportunity:
- CIPO has been told again to stop over-stripping claims down to an “actual invention” that looks like a bare idea, and to keep an open mind about business methods and game mechanics.
- At the same time, the governing test for “art” remains entangled with novelty, obviousness and utility, and the Supreme Court’s Harvard Mouse guidance on section 2 is still sitting on the shelf.
Applicants in software, fintech, gaming and other non-traditional fields should therefore expect continued uncertainty and should draft and prosecute with both the bright-line and blurred-line approaches in mind.
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