CIPO has issued its preliminary determination on the Dusome remand following the Federal Court’s decision in Dusome v. Canada (Attorney General), 2025 FC 1809. My colleague Richard Mar has the following summary and context.
CIPO’s Revised Approach to Patentable Subject Matter in the Dusome application
The Patent Appeal Board has issued a redetermination to provide a preliminary review (PDF) in connection with Canadian Patent Application No. 2,701,028, filed by Barry Dusome and Wyatt Dusome, which relates to a method of playing a wagering poker card game. The redetermination was issued on May 5, 2026 and follows a redetermination ordered by the Federal Court in Dusome v Canada (Attorney General), 2025 FC 1809.
The patent application relates to a wagering poker game in which players split their starting hand into two hands and play consecutive sub-games as part of the overall game, combining elements of Texas Hold’em and Pai Gow poker with additional features including a showdown round against the dealer. The application was rejected following a Final Action dated November 22, 2018, which found that the claims were not directed to patentable subject matter under section 2 of the Patent Act, and indefinite under subsection 27(4). In a decision by the Commissioner on May 29, 2024, the Commissioner had considered the “actual invention” to be the rules of a wagering poker game rather than the physical elements of the claims.
On appeal, the Federal Court held that this approach was wrong: the focus must be on the claims as purposively construed, and the Commissioner must then consider whether the subject matter “add[s] new knowledge to affect a desired result which has commercial value.” as stated by the Supreme Court of Canada in Shell Oil. The focus should not be on an independently identified “actual invention”. The Court also stated that “determining what in good faith the inventor actually discovered is a question that forms part of purposive construction”, and that the Commissioner should consider whether 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.
Accordingly, the Federal Court’s decision in Dusome v Canada (Attorney General), 2025 FC 1809, directed the Commissioner of Patents to consider the application afresh based on amended proposed claims and in accordance with the Court’s reasons. The decision was the latest in a line of Federal Court decisions — including Amazon, Choueifaty, and Benjamin Moore — each of which overturned the Commissioner’s subject-matter eligibility determinations.
In response to the Federal Court’s decision, CIPO released a new Practice Notice on March 24, 2026, updating its framework for assessing patentable subject matter. The 2026 Practice Notice supersedes the 2020 Practice Notice (PN2020-04) and takes into account recent court decisions, including Benjamin Moore, Dusome, and Pharmascience v Janssen. The 2026 Practice Notice reaffirms that purposive construction precedes any determination of validity, including patentable subject matter. The subject matter defined by a claim is determined on the basis of a purposive construction conducted in accordance with the principles set out by the Supreme Court of Canada. In carrying out purposive construction, all elements set out in a claim should be considered essential, unless the inventor establishes otherwise or if essentiality is contrary to the language used in the claim. Considerations in determining the nature of the invention include whether elements are described as well-known or presented with little detail (suggesting they belong to common general knowledge), and asking what the inventor has actually invented or claims to have invented.
According to the 2026 Practice Notice, once a claim has been construed, the subject matter must comply with the definition of “invention” in section 2 of the Patent Act (i.e., an art, process, machine, manufacture, or composition of matter), must not be a mere scientific principle or abstract theorem under subsection 27(8), and must not fall into a judicially excluded category such as a method of medical treatment. Claimed subject matter that includes a disembodied idea, scientific principle, or abstract theorem is patentable if the idea is part of a practical application that has physical existence or manifests a discernible effect or change — the “physicality requirement” implicit in the definition of “invention”.
In particular, where a claim recites a computer, the computer is generally an essential element, but the mere fact that a computer is essential does not necessarily mean the physicality requirement is met. In computer-implemented inventions where there are additional physical essential elements such as a measurement step, sensor, or output means like a robotic actuator, there generally is physicality. Where the invention does not extend beyond the computer, the analysis turns on whether the invention can be distinguished from a mathematical calculation merely programmed into a computer. If a computer merely processes an abstract algorithm in a well-known manner and the processing does not improve the functioning of the computer, then the computer is not part of what has been discovered, and the invention is not patentable subject matter. On the other hand, if processing the algorithm improves the functioning of the computer, the improved computer and its improved functionality impart physicality to the invention, and the subject matter is patentable.
In summary, it appears that much of the analytical framework from the 2020 Practice Notice is preserved, with some minor tweaks in an attempt to take the Federal Court decision into consideration. The most significant change is that the 2026 Practice Notice does away with the concept of identifying the “actual invention” as a distinct analytical step after claim construction. In particular, there is no longer a need to draw a distinction between essential elements identified during purposive construction and elements that were “part of the actual invention,” noting that an element could be essential for claim construction purposes but not necessarily part of the actual invention. The Federal Court criticized this two-step approach, and CIPO has responded by folding the inquiry into what the inventor “actually invented” into the purposive construction stage itself. Furthermore, the 2026 Practice Notice has removed the games prohibition since there is no per se prohibition on the patenting of games.
The 2026 Practice Notice elevates the physicality requirement to a more prominent position in the analysis. Where there is no physicality outside of the computer system, the question is now explicitly framed as the key inquiry, asking whether the invention simply processes an abstract algorithm in a well-known manner or whether it improves the computer’s own functioning. The guidance on what constitutes physicality clarifies what counts as additional physical elements (e.g., measurement sensors that generate data, robotic actuators) versus conventional computer elements that do not supply additional physicality (e.g., keyboard, display, printer). “Discernible” is interpreted as referring to physical effects or changes.
The 2026 Practice Notice includes new worked examples, including the first machine-learning example addressing a neural network trained on historical weather, irrigation, and crop yield data. In that example, CIPO found that model sophistication does not matter: a detailed layered neural network is treated the same as a simple formula if neither addresses a computing problem. Domain-level improvements such as better crop yields are not enough unless acted upon by physical means.
On redetermination, the Patent Appeal Board applied the revised framework and reached the same conclusion as it did initially: the claims are preliminarily directed to non-patentable subject matter. The Board identified the person skilled in the art as a team comprising a poker game designer, a computer technician, and a software developer. The Board found that all claimed elements are essential.
In regard to claims 1–21 (physical cards), the Board concluded the claims are not distinguishable from Schlumberger and that the skilled person would understand the discovery to lie in the set of rules governing the poker game, because the physical cards are standard and their use to play poker games is part of the common general knowledge. The Board found that the physical cards are nothing more than a well-known tool used to implement the game, and their use does not add to human knowledge on the subject of poker games. The physicality requirement will not likely be satisfied without “something more” and the Board concluded that claims 1–21 do not provide that “something more”.
For claims 22–24 (computer implementation), the Board similarly concluded that the discovery lies in the algorithm or set of programmable instructions coded on the computer readable medium, as there is no suggestion in the specification that the computer device or its components represent anything other than well-known computer components operating in a well-known manner, and there is no indication that the functioning of the computer is improved. The Board concluded that the computer merely acts in a well-known manner and that the only new knowledge lies in the algorithm for implementing the poker game. The Board rejected the Applicant’s arguments that the computer was a “unique specifically programmed computer/server” that was “physically altered with permanently installed memory storage,” finding instead that the computer device is merely a general-purpose, well-known computer specifically programmed to implement the game. The Board also rejected the Applicant’s argument that the computer’s functioning was “inherently improved” because the system could run two games at once or provide a better experience for participants, noting that improvements to the functioning of the computer would include such examples as improvement in memory usage or processing speed, neither of which was disclosed.
The Board also considered the jurisprudence and found the conclusions were consistent: the claimed modifications to the rules of play do not constitute a new and innovative method of applying skill or knowledge, nor a contribution to the cumulative wisdom on the subject of poker games within the meaning of Shell Oil. The Board further found that the proposed amended claims would not alter the patentable subject-matter assessment, as the proposed amendments were not substantive in nature and did not add any limitations that would provide the “something more” required to meet the physicality requirement.
Has Anything Really Changed?
On its face, the 2026 Practice Notice represents a meaningful doctrinal shift. The abandonment of the “actual invention” as a standalone analytical construct, the removal of the per se prohibition on games, and the elevation of the Schlumberger decision all reflect CIPO’s responsiveness to the Federal Court’s criticisms in Dusome and the broader line of jurisprudence.
However, a review of the Board’s redetermination in Dusome itself suggests that, in practice, the revised framework may produce substantially similar outcomes for applicants whose inventions are characterized as abstract methods implemented on well-known tools. The Board reached the same preliminary conclusion as it had before, that the claims are directed to non-patentable subject matter, applying the new framework as it did under the old one. The inquiry into “what has been discovered” has been relocated from a post-construction “actual invention” analysis into the purposive construction stage, but the substantive question remains functionally the same: where the only new knowledge lies in an abstract set of rules or algorithm, and the physical implementation involves only well-known instruments used in well-known ways, the physicality requirement will not be met without “something more”. For inventors in the gaming, software, and AI spaces, the path to patentability in Canada continues to require a demonstration that the invention does more than implement an abstract idea on a generic platform and must either involve additional physical elements or demonstrably improve the functioning of the computer itself. The Dusome redetermination is a useful illustration that doctrinal refinement does not always translate into different results on the ground.
While this redetermination is not final and the applicant has the opportunity to further amend the application and provide arguments in writing and orally, it is likely that the Patent Appeal Board, and by extension the Commissioner, will once again refuse this application.