Major Patent Decision in Australia – But Still Controversy
The High Court of Australia has today handed down a decision that was hoped to clarify the issue of “manner of manufacture”, i.e., patent-eligible subject matter, for so-called ‘computer-implemented inventions’ (CIIs) under Australian law. As the High Court decision was equally split, however, the decision was effectively one by default and thus still leaves a lack of legal clarity in this area.
The case Aristocrat Technologies Australia Pty Limited v. Commissioner of Patents S40/2022 concerns the patentability of an electronic gaming machine (EGM) defined in the patent as comprising a range of hardware features in combination with operational or functional features carried out by a processor or controller of the EGM. The subject matter was held to be patent-eligible by the trial judge but, on appeal by the Commissioner of Patents, the Full Court of the Federal Court of Australia overturned the finding of the trial judge in a 2:1 split decision and held that the EGM was not patent-eligible. Particularly troublesome was the finding of the Full Court that the EGM was, in essence, a “computer” and that, to be patent-eligible, the subject matter claimed should therefore concern “an improvement in computer technology”. The reasoning of the Full Court seemed problematic on a number of fronts.
In March 2022 the High Court of Australia granted special leave to Aristocrat Technologies Australia Pty Limited to appeal the Full Court’s decision and set down the matter to be heard before a full bench of seven judges. The Institute of Patent and Trade Mark Attorneys of Australia (IPTA) and FICPI Australia (the Fédération Internationale des Conseils en Propriété Intellectuelle) both intervened in the appeal as ‘amicus curiae’ in support of the Appellant. The High Court heard the case on 9th and 10th June 2022 before only six judges, after one of the judges became unavailable.
The Commissioner of Patents had pursued the argument that, in construing the “substance of the invention”, it was appropriate to exclude or disregard known hardware features of the claim and focus solely on operational or functional features carried out by the processor of the EGM. The Commissioner of Patents further argued that those operational or functional features in the EGM amounted to mere “rules of a game” and, as such, were not patent-eligible. While three of the judges held for the Commissioner of Patents, three of the judges allowed the appeal, characterising the invention as an EGM incorporating an interdependent player interface and a game controller which included feature games and configurable symbols. They held that this involved an artificial state of affairs and a useful result amounting to a manner of manufacture.
As the High Court was equally divided in opinion, s. 23(2)(a) of the Judiciary Act 1903 (Cth) required that the decision appealed from be affirmed. The appeal by Aristocrat Technologies Australia Pty Limited was therefore dismissed.
We shall provide a more detailed analysis of this High Court decision in the coming days, but we expect that the examination practice of the Australian Patent Office for CIIs will remain essentially unchanged for the time being.
The Engineering and Information Technologies Group at Wrays helps innovators and market-leaders protect their innovations in this technology field.