High Court gamble does not pay out for computer-implemented inventions in Australia

By Sue Gilchrist, Aaron Hayward and Byron Turner

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.

Read the full article here.

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 finding^[3] 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. See our full article on the High Court decision and its implications

^{[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.}