By Sue Gilchrist, Aaron Hayward, Brae Aslanidis and Nick Bradman
The Full Court of the Federal Court of Australia has provided some clarity on assessing whether computer-implemented inventions constitute patentable subject matter, finding that Aristocrat’s patent claims to electronic gaming machines with particular gaming features were not a “manner of manufacture”. However, applying the Court’s reasoning to future cases will require careful analysis.
Key takeaways
- The Full Court of the Federal Court allowed the Commissioner of Patents’ appeal from the decision of Burley J in Aristocrat, overturning the earlier finding that electronic gaming machines with particular gaming features constituted a “manner of manufacture” and were therefore patentable.
- The majority decision reasoned that a “computer-implemented invention” will 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.
- The battle between the Commissioner and Aristocrat is not over. The matter has been remitted to the trial judge to consider outstanding issues, including whether dependent claims in the patents in suit meet the requirements set out by the Full Court.
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