Full Court Reverses Patentability After Prioritizing Computer Implementation Question

In Commissioner of Patents v Aristocrat Technologies Australia [2021] FCAFC 202 the Full Court of the Federal Court of Australia (FCAFC) effectively set aside the trial Judge’s finding of patentability although remitted the case back to the Federal Court to determine any residual issues in light of its guidance.

When Aristocrat sought to certify four of its innovation patents relating to electronic gaming machines (EGMs) it received adverse patentability reports finding no manner of manufacture. The alleged inventive contributions to the EGMs centred on rules of operation when a feature game is triggered from within a base game that encouraged prolonged wagering. The examiner found the alleged contributions merely amount to game rules or abstract ideas with no improvement in the operation of the EGM. Following a hearing a Delegate upheld the objections, finding there to be no patentable subject matter as the alleged technical contributions either amounted to games or game rules or are mere presentation of information, neither of which qualifies as a manner of manufacture.

As earlier discussed Aristocrat was successful in its Federal Court appeal of the Delegate’s decision. The Judge held that the invention is not for a mere scheme or plan, rather it is to a mechanism that combines hardware and software to realise an EGM that functions in particular ways, thereby producing practical and useful results. The Judge considered that the Delegate fell into error by characterising the inventive concept at too high a level of abstraction, and that this could be avoided by asking whether the claim is for a mere scheme at all as this is more likely to take into account all of its specific limitations. The Judge also noted that if a gaming machine could produce the same functions without the use of software that it would qualify as patentable subject matter and so the use of software should not turn it into unpatentable subject matter.

The Commissioner of Patents sought leave from the FCAFC to appeal the Judge’s decision, which the FCAFC granted on the basis that the Judge had misapplied precedent.

The FCAFC first noted that physical embodiments of abstract ideas which have practical applications can qualify as patentable subject matter, but the patent will not extend to the abstract idea. After determining that the core features of the claimed invention is merely implemented on a computer and do not pertain to the development of computer technology, the FCAFC asked whether the other integers transform the claim into patentable subject matter.

Before answering that though the FCAFC criticised the Judge’s two-step approach to the patentability inquiry, which first asked whether the claim is for a mere business method or abstract idea and secondly, if so, whether there was invention in the manner of its implementation on a computer. By deferring consideration of computer implementation to the second step and by not proceeding to the second step on account answering the first step in the negative, the FCAFC found that the Judge did not address the question of whether the invention is a computer implemented invention. The FCAFC noted that not asking that question does not matter in cases that involve no more than the implementation of a method on a computer or where the invention is no more than a business method or abstract idea. However, where the claim includes a physical object that contains or is a computer and where there is an open question as to whether or not what is claimed is a computer implemented invention, by not asking the question at the first step it is possible to fall into error. The FCAFC also considered addressing the question of computer implementation at the first step accords with the need to first characterise the claimed invention.

Consequently, the FCAFC proposed the following two-step approach as being more appropriate:

(a) Is the invention claimed a computer-implemented invention?
(b) If so, can the invention claimed broadly be described as an advance in computer technology?

The FCAFC answered the first step in the affirmative after finding the EGM of claim 1 to be a computer with the feature game integers of claim 1 showing the invention claimed to be a computer implemented invention. In answering the second step in the negative the FCAFC found that claim 1 pertains only to the use of a computer as it is silent on what computer technology is used to effect the computer implementation. While sub-claims involve changes in the reel structure and configurable symbols, they were held to at best represent advances in gaming technology rather than computer technology. The FCAFC also noted that a computer’s only purpose is to give effect to the abstract ideas embodied in the code. Such implementation of an abstract idea on a computer therefore requires something more, such as advances in computer technology, in order to be granted a monopoly.

Author: Quinn Miller

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