Over the course of today and tomorrow, the High Court will hear arguments on whether Aristocrat’s electronic gaming machines with particular features are patentable subject matter. Gaming company Aristocrat is appealing a 2020 decision of the Full Federal Court which held that Artistocrat’s innovation patents did not claim a patentable manner of manufacture. The High Court’s decision is expected to finally resolve uncertainty around when computer implemented inventions are patentable. Intervenors submit that a loss to Aristocrat could adversely affect innovation broadly.
Gaming company Aristocrat is appealing a decision of the Full Federal Court which held that its computer implemented invention relating to electronic gaming machines with particular features is not patentable. The High Court will hear the appeal today and tomorrow. The High Court’s decision is expected to finally resolve the uncertainty that exists about when computer implemented inventions will be patentable.
The Commissioner’s view is that like business, commercial and financial schemes, games, rules for playing them and discoveries of laws of nature, schemes have never been patentable
Aristocrat’s view is that there is no foundation in the law for computer implemented inventions to be treated differently to other categories of patent eligible subject matter
The third party intervenors’ views are that the Full Federal Court’s decision has the potential to stifle innovation and is inconsistent with Australia’s international obligations to make patents available without discrimination as to field of technology (Fédération Internationale des Conseils en Propriété Intellectuelle and the Institute of Patent and Trade Mark Attorneys of Australia)
The hearing before the High Court has a long prelude. The Commissioner of Patents decided in 2018 that Aristocrat’s innovation patents did not claim a patentable ‘manner of manufacture’. On appeal, the Federal Court found that the claims did claim patentable subject matter. In so doing, Justice Burley formulated a two-step test for determining the patentability of computer implemented inventions:
- as a threshold question, is the substance of the claimed invention a mere scheme or business method, which alone would not be considered the proper subject matter for the grant of a patent? If the answer is ‘yes’…
- does the invention lie in the computerisation of the method?
Finding that the claimed invention was not merely to a scheme or set of rules, Justice Burley concluded that the subject matter of the invention was patentable, and it was not therefore necessary to consider whether the computerisation of the method was inventive.
Aristocrat’s appeal to the High Court: fetters on patents
In its written submissions to the High Court, Aristocrat criticises a series of Full Federal Court decisions that started with Research Affiliates, and were further developed in RPL Central, Encompass and Rokt, relating to the patentability of inventions that utilise a computer. It submits this line of jurisprudence has developed “contrived constraints” that place undue fetters on the patentability of computer implemented inventions.
Properly construed, Aristocrat submits, these constraints should only apply to determine the patentability of an otherwise unpatentable scheme. The development of these constraints is said to have resulted, in part, from the exercise of insufficient caution when drawing from the US and EU approach to computer implemented inventions that has “resulted in chaos”.
Seeking to re-enliven the application of the High Court’s previous decisions relating to patentable subject matter generally in NRDC and Myriad, Aristocrat argues that widening the concept of what amounts to a patentable ‘manner of manufacture’ involving a computer is a necessary feature of the development of patent law and that there is no foundation in the law for computer implemented inventions to be treated differently to other categories of patent eligible subject matter.
What happened in the Full Court?
On appeal from Justice Burley’s decision, the Full Court formulated an alternative two-step test to determine the patentability of computer implemented inventions:
- is the invention claimed a computer implemented invention; and, (only) if so,
- can the invention claimed broadly be described as an advance in computer technology.
In its submissions to the High Court, Aristocrat argues that these questions are only appropriate to ask where an invention is properly characterised as a mere scheme. Applying the Full Court’s test to any computer implemented invention, Aristocrat submits:
- confuses questions of novelty and inventive step with the assessment of manner of manufacture;
- places an unjustifiable gloss on the statutory test for patentable subject matter that is not founded in the Patents Act or any High Court authority; and
- narrows the concept of ‘manner of manufacture’ without “logic, simplicity or coherence of principle”.
The Commissioner of Patents’ Submissions
In written submissions to the High Court, the Commissioner of Patents argues that the subject matter of Aristocrat’s claims is in fact an abstract idea, being a set of rules for playing a game, using conventional technology to achieve its known functions. The Commissioner submits that the Full Court’s recognition that unpatentable subject matter does not become patentable because it is implemented by a computer is correct, and the proper application of recent Full Court decisions (RPL Central, Encompass and Rokt).
The Commissioner’s view is that like business, commercial and financial schemes, games, rules for playing them and discoveries of laws of nature, schemes have never been patentable. Here, the claimed invention is an instruction to carry out a game using computer technology in circumstances where there is no ingenuity in the implementation of the game (as distinct from the scheme or rules of the game itself).
The Fédération Internationale des Conseils en Propriété Intellectuelle (FICPI) and the Institute of Patent and Trade Mark Attorneys of Australia (IPTA) have sought leave to intervene in the appeal as amicus curiae. Both interveners support Aristocrat’s appeal.
IPTA submits that the Full Court’s two-step test that applies a different threshold of patent eligibility for computer implemented inventions is inconsistent with Australia’s international obligations to make patents available without discrimination as to field of technology. This submission is supported by FICPI. IPTA also argues that this “seismic shift” will exclude from patentability inventions that are not properly characterised as mere schemes or abstract ideas and that would otherwise be patentable, purely because they are implemented by a computer. IPTA submits that patentability should be determined by asking a single question: “Is the invention, considering the subject-matter of the claim as a whole, no more than a mere scheme, method of doing business or abstract idea?”.
FICPI supports Aristocrat’s submission that the approach of the US Supreme Court to patentable subject matter in Mayo and Alice has led to confusion and uncertainty that is correctly described by Aristocrat as “chaos”. FICPI also submits that the Full Court’s two-step test is likely to have the same “chilling effect on innovation in Australia as has been experienced in the US” following the tests set out in Mayo and Alice.
High Court – what’s next?
It will be for the High Court to decide whether, in finding that Aristocrat’s inventions are not a patentable manner of manufacture, the Full Court wrongly held that the general principles of patentability do not apply to computer implemented inventions.
After several years of Courts grappling with differently formulated tests relating to the patentability of computer implemented inventions, we hope that the High Court’s decision will finally determine whether it is necessary to treat computer implemented inventions differently from other patentable subject matter.
- If so, we look forward to the final word on the test to be applied.
- If not, the High Court may decide that the orthodox principles of patentability from NRDC and Myriad should apply to computer implemented inventions. If this is the case, we expect the decision will provide guidance on how to apply those principles when the invention is implemented in whole or part using a computer.
The High Court’s decision, that we anticipate will be delivered within four to five months, will be significant for anyone seeking to protect intellectual property relating to computer implemented inventions in Australia.
 Research Affiliates LLC v Commissioner of Patents 227 FCR 378.
 Commissioner of Patents v RPL Central Pty Ltd 238 FCR 27.
 Encompass Corporation Pty Ltd v InfoTrack Pty Ltd 372 ALR 646.
 Commissioner of Patents v Rokt Pte Ltd 277 FCR 267.
 Appellant’s written submissions at .
 Appellant’s written submissions at .
 National Research Development Corporation v Commissioner of Patents 102 CLR 252.
 D’Arcy v Myriad Genetics Inc 258 CLR 354.
 Patents Act 1990 (Cth).
 Appellant’s written submissions at .
 Institute of Patent and Trade Mark Attorneys of Australia written submissions at .
 Mayo Collaborative Services v Prometheus Laboratories Inc., 566 US 66 (2012).
 Alice Corporation Pty Ltd v CLS Bank International, 573 US 208 (2014).