On 17 August 2022, the High Court handed down its decision in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents  HCA 29 which concerned the patentability of computer-implemented inventions.
The High Court was ultimately divided 3:3 on whether claims for a system and method for providing a feature game on electronic gaming machines (EGMs) satisfied the ‘manner of manufacture’ requirement in order for it to be considered a patentable invention under section 18 of the Patents Act 1990 (Cth) (the Act).
Where the High Court is equally divided in opinion, the decision appealed from is affirmed in accordance with section 23(2)(a) of the Judiciary Act 1903 (Cth). In this case, this resulted in Aristocrat’s appeal being dismissed and the revocation of Aristocrat’s patent applications. The split High Court decision also means that those seeking clarification on the patentability of computer-implemented inventions in Australia will have to wait a while longer.
Aristocrat is the owner of four innovation patents related to a system and method for providing a feature game on EGMs, or poker/slot machines as they are more commonly known. Specifically, the claimed invention described a mechanism that allowed game symbols to be configured so as to define when a bonus, or ‘feature game’ would be triggered on an EGM.1
On examination, the innovation patents were revoked on the basis that the claims were not for a ‘manner of manufacture’ within the meaning of section 18(1A)(a) of the Act. Aristocrat was initially successful in appealing the revocation to the Federal Court. However, the Commissioner then appealed to the Full Court of the Federal Court, which held that the claimed invention was not patentable subject matter.
A split decision
The issue before the High Court was therefore, whether Aristocrat’s invention was a ‘manner of manufacture’ in accordance with section 18(1A)(a) of the Act. In line with established principles, the High Court agreed that in order for a computer-implemented invention to constitute a ‘manner of manufacture’, it must be more than a mere scheme or abstract idea that is simply implemented onto a computer. Nevertheless, the High Court was ultimately divided in its characterisation of Aristocrat’s invention, leading to different conclusions on its patentability.
Chief Justice Kiefel, and Justices Gageler and Keane characterised the invention as nothing more than a claim for a new system or method of gaming. Their Honours were of the view that in the absence of a claim to some variation of generic computer technology to implement or accommodate the ‘feature game’, the claimed invention was merely an abstract idea and therefore, not patentable subject matter.2
On the other side of the bench, Justices Gordon, Edelman and Steward characterised the invention as an EGM that was altered by the inclusion of feature games and configurable symbols in its game controller. As a result, their Honours concluded that the invention was not merely the idea of a game incorporated into a generic EGM, and that it actually involved a degree of inventiveness or novelty so as to constitute a patentable invention.3
What comes next?
Whilst it was hoped that the High Court decision would provide some much needed clarity on the patentability of computer-implemented inventions in Australia, it seems that without a clear and binding precedent or legislative intervention, the lack of certainty in this area remains for the time being.
In the meantime, it appears that the High Court decision will not impact on current patent examination practice, with IP Australia confirming that a claimed invention will not meet the ‘manner of manufacture’ requirement “if it is merely directed towards the implementation of an otherwise unpatentable idea in conventional computer technology”.
Unsure of what this means for your patent or computer-implemented invention? Our experienced Intellectual Property team can assist. Contact us today to find out more.
This article was written by Helen Kavadias, Partner and Katherine Zheng, Solicitor.
1 Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents  HCA 29, .
2 Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents  HCA 29, .
3 Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents  HCA 29, .