As a result of a split Court, the High Court yesterday dismissed Aristocrat’s appeal of a Full Federal Court decision that its electronic gaming machines are not patentable subject matter.
After several years of uncertainty about when computer implemented inventions are patentable, the judgment of Kiefel CJ, Gageler J and Keane J will provide some welcome guidance. However, the split Court and the dissenting judgment of Gordon, Edelman and Steward JJ reflect the widespread differences in opinions about the circumstances in which computer implemented inventions should be patentable.
In instances where the High Court does not reach a unanimous decision, such as the 3:3 split in this case, the decision appealed from is affirmed.[1]
Unfortunately for those wishing to patent computer implemented inventions, the diametrically opposed views of the alternative judgments mean that the decision is not likely to be seen as a strong precedent and it is also likely to fuel further challenges to decisions of the Commissioner of Patents.
A long history
After a 2018 decision in the Patent Office that Aristocrat’s innovation patents did not claim a patentable manner of manufacture, the primary judge applied a two step test and found that the claims were to patentable subject matter.[2] On appeal, the Full Federal Court applied a different two step test:[3]
- is the invention claimed a computer implemented invention; and, if so,
- can the invention claimed broadly be described as an advance in computer technology.
Applying this test, the Full Court found that the inventions were not patentable (for more on the Full Court decision, see here).
Most recently on appeal to the High Court, on 9 and 10 June 2022, the Court heard arguments on the patentability of Aristocrat’s computerised electronic gaming machines from Aristocrat, the Commissioner of Patents and two interveners - the Fédération Internationale des Conseils en Propriété Intellectuelle and the Institute of Patent and Trade Mark Attorneys of Australia.
For further detail about the journey to the High Court and the arguments on appeal, see our previous article here.
The decision to dismiss the appeal (Kiefel CJ, Gageler and Keane JJ)
Following Myriad, the judges in favour of dismissing the appeal, Kiefel CJ, Gageler and Keane JJ (Judges Dismissing), first characterised the invention as a new system or method of gaming, noting that the inventive elements of the claim were those that did not form part of the common general knowledge.[4] In finding that the subject matter of the claims is not patentable, the Judges Dismissing noted that it was common ground that the new game “devised by Aristocrat, as an abstract idea, is not itself patentable” and went on to conclude that there is nothing in the claims to support a conclusion that the invention produced an adaptation, alteration or addition to technology that was not in the common general knowledge. [5] Without any basis to conclude that the invention related to any physical representation of the operation of the game, the Judges Dismissing concluded that the claimed subject matter was not patentable. Rather, the invention was no more than “an unpatentable game operated by a wholly conventional computer, using technology which has not been adapted in any way to accommodate the exigencies of the game or in any other way”.[6]
The Full Court’s Two Step Test
The Judges Dismissing also found that the Full Court’s formulation of the two-step test “unnecessarily complicates the analysis of the crucial issue”.[7] Their Honours emphasised (again following Myriad) that it is not appropriate to ask whether a claimed invention is an advance in computer technology (or gaming or any other technology) because it would be erroneous to reject the possibility that an advance in gaming technology could be patentable subject matter. Rather, the question must always remain whether the invention as characterised from the terms of the specification, having regard to the claims in light of the common general knowledge, claims patentable subject matter. Here, the Judges Dismissing concluded that it did not.
Joint judgment allowing appeal (Gordon, Edelman and Steward JJ)
In a separate joint judgment, the judges in favor of upholding the appeal, Gordon, Edelman and Steward JJ (Judges Allowing), acknowledged that it is well established that like a “mere scheme or plan”, the rules of a game cannot be the subject matter of a patent. For patentable subject matter to exist, there must be more than a “mere method or mere idea or mere desideratum”.[8] However, the Judges Allowing went on to find that in the same way a “mere method” may become a patentable manner of manufacture when practised in a way that is embodied in a physical form, where an idea consists of the rules of a game, it may be patentable subject matter when combined with physical materials for playing the game.[9]
In finding that Aristocrat’s game was patent eligible subject matter, the Judges Allowing found that the question to ask is whether the subject matter is:
- use of a computer to manipulate an abstract idea (and so unpatentable); or
- an abstract idea which is implemented on a computer to produce an artificial state of affairs and a useful result (so as to be patentable).
Further, the Judges Allowing found that a method of carrying out an idea using a computer, and the artificial state of affairs and useful result, need not be inventive. The inventiveness may lie in the idea, and when applied to produce an artificial state of affairs and useful result, may be a patentable manner of manufacture. The Judges Allowing referred to the invention considered in CCOM of enabling, through the operation of a computer keyboard, the selection of Chinese characters for word processing, as an example of an idea implemented on a computer to produce an artificial state of affairs.[10] Where a computer carries out a method to produce a useful result (rather than merely implementing an abstract idea), in the opinion of the Judges Allowing, the invention will be patentable.
"The artificial state of affairs and useful result may be a physical change in something, but it need not be. The artificial state of affairs may be an improvement in computer technology, but it need not be. It is enough that the artificial state of affairs and useful result are created by "the way in which the method is carried out in the computer".[11]
In this instance, the Judges Allowing considered the specific claim in issue and concluded that it went beyond a generic EGM. The claim included specific functionality which had an effect on the user interface of the game. Their Honours concluded that:
“the best characterisation of Claim 1 is: an EGM incorporating an interdependent player interface and a game controller which includes feature games and configurable symbols”.[12]
The specific effect on the game controller was found to be an altered EGM involving an artificial state of affairs and a useful result. On this basis, the Judges Allowing concluded that the claim involved a manner of manufacture.
Comment
For some time, Australian patent law has lacked clarity in relation to whether and if so, when, computer implemented inventions will be patentable. As the world turns to digital solutions, the issue has increased in commercial importance as Courts around the world have grappled with differently formulated tests.
The High Court's decision to grant special leave in Aristocrat and hear the case in front of a full bench is reflective of the significance of the issues raised and was welcomed by those interested in the topic. The High Court’s 3:3 split is reflective of the complexity of the issues.
The judgment of the Judges Dismissing clarifies that where an invention is computer implemented, to be patentable, it must either provide an adaptation, alteration or addition to the computer technology (that was not in the common general knowledge) or contribute to the physical representation of the idea. However, the split of the opinions in the two judgments and the differences in approach and conclusion, reflects the widespread differences in opinion on this topic.
Unfortunately, the fact the Judges were evenly split means the decision does not provide the level of clarity hoped for and is likely to lead to ongoing challenges to decisions of the Commissioner in relation to patentability of computer implemented inventions. We also expect that calls for reform in this area will increase.
Reference
[1] Judiciary Act 1903 (Cth) s 23(2)(a).
[2] Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 423.
[3] Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572.
[4] Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29, [73].
[5] Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29, [75]-[76].
[6] Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29, [76].
[7] Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29, [77].
[8] Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29, [116].
[9] Re Cobianchi's Application (1953) 70 RPC 199.
[10] CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260.
[11] Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29, [122].
[12] Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29, [149].
