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High Court Gamble Does Not Pay Out For Computer-implemented Inventions In Australia – Patent



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Even the High Court of Australia has found the question of
patentability of computer-implemented inventions challenging. As a
result of an equally divided opinion, an appeal from a decision of
the Full Court of the Federal Court of Australia,1 which
found that Aristocrat’s patent claims to electronic gaming
machines with particular gaming features were not a “manner of
manufacture”, has been dismissed. Reflecting the importance of
the decision, the Court has issued a summary.

Full article to follow.

Key Outcome

The High Court was equally divided on the proper
characterisation of computer-implemented inventions as a manner of
manufacture.

In its summary, the High Court has stated:

“Three Justices would have dismissed the appeal,
characterising the invention, in light of the specification as a
whole and the common general knowledge, as nothing other than a
claim for a new system or method of gaming. The only thing
differentiating it from the common general knowledge was the
unpatentable idea of the feature game. Three Justices would have
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.
That operation involved an artificial state of affairs and a useful
result amounting to a manner of manufacture.”

The result of an equally split High Court decision is that the
outcome of the majority of the Full Court of the Federal Court of
Australia therefore stands.2 That Court held:

  • the earlier finding3 that electronic gaming machines
    with particular gaming features constituted a “manner of
    manufacture” and were therefore patentable, was
    overturned;

  • while computer-implemented inventions can constitute patentable
    subject matter, a case-by-case assessment is required:

  • a “computer-implemented invention” may be
    patentable if it constitutes an “advance in computer
    technology
    “. That analysis will likely overlap with
    analyses of novelty and inventive step. However, merely
    giving life to an abstract idea by implementing it in a
    computer
    ” is unlikely to be patentable.

Click here to read our full analysis of the
decision of the Full Court of the Federal Court of Australia. Stay
tuned for our full article on the High Court decision and its
implications.

Footnotes

1. Aristocrat Technologies Australia Pty Limited v
Commissioner of Patents [2022] HCA 29.

2. Commissioner of Patents v Aristocrat Technologies
Australia Pty Ltd [2021] FCAFC 202.

3. Aristocrat Technologies Australia Pty Limited v
Commissioner of Patents [2020] FCA 778.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.

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