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Background
On November 12, 2025, the Federal Court set aside the Commissioner of Patents' refusal to grant a patent for a "Method of Playing a Card Game" (2025 FC 1809). The Commissioner found that the patent application did not meet the definition of "invention" under section 2 of the Patent Act and constituted excluded subject-matter under subsection 27(8). However, the Court identified several legal errors in the Commissioner's approach and remitted the application for expedited re-examination based on amended claims.
The Court's Reasoning: Key Legal Errors
1. Failure to Consider the Subject Matter of the Claims by Considering the "Actual Invention" Instead
The Court reaffirmed that patentability must be assessed based on the subject-matter defined by the claims, while the Commissioner had assessed whether the "actual invention" was patentable. The Commissioner found that the so-called "actual invention" was an abstract algorithm, but did not include the physical playing of cards or the implementation of the game on a computer. The Court criticized the Commissioner's approach of stripping away physical elements and focusing solely on new knowledge added to the art of poker, which failed to recognize that certain types of inventions can include a combination of elements, some of which may be old.
2. Failure in Proper Claim Construction
The Court found that the Commissioner failed to conduct a purposive construction of the claims. Specifically, the Commissioner did not (i) interpret key terms to identify the elements of the invention and define the subject-matter of the claims, (ii) analyze the meaning of the key terms from the perspective of a person skilled in the art, and (iii) reference the disclosure to understand the purposes of the invention. The Commissioner provided conclusions without justification, undermining the fairness and transparency of the examination process, which is iterative and allows for amendments and responses.
3. Improper Assessment of Patentable Art
The Court emphasized that the correct test for patentable art is whether the claims include a new method of applying skill or knowledge that achieves a commercially useful result. The Commissioner found that the method of playing a poker game was not patentable art because it does not "change the character or condition of anything material". In coming to this conclusion, the Commissioner relied on the definition of patentable art in Lawson, section 17.03.09 of MOPOP, and the holding in Progressive Games that changes in playing poker do not add to the cumulative wisdom on the subject of games. The Court rejected this approach and reiterated that the holding in Progressive Games is not a valid basis for finding that the subject-matter of the application does not meet the definition of art, as each case must be considered on its own facts and in light of the state of knowledge at the relevant time.
Significance
This decision underscores the importance of:
- Purposive construction of the subject matter of the claim: Claims must be interpreted through the lens of a skilled person, considering the disclosure and the purpose of the invention. It is the claims as construed that must be assessed for patentability.
- Fair and transparent examination: Patent applicants are entitled to understand the basis for claim construction and subject-matter assessment.
- Nuanced approaches to subject-matter patentability: Innovation in gaming methods may be patentable if the claims, as properly construed, support the inventive concept.
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