The Full Federal Court has reframed a test for patent eligibility of software inventions in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202, finding an electronic gaming machine (EGM) to be ineligible for patent protection.

We reported on the previous decision, where the primary judge Burley J explained that the test for eligibility, defined by the phrase 'manner of manufacture', should be approached using a two-stage enquiry for patentability.

Whilst the Full Court ultimately held that this two-stage enquiry was incorrect, and held that Aristocrat's EGM was ineligible for patent protection, the Court's reasoning provides some much-needed clarity for computer implemented inventions.

The two-stage enquiry for determining patentable subject matter

The majority judges, Middleton and Perram JJ, formed the view that the primary judge's two-stage enquiry for patentability was incorrect,1 instead favouring the posing of the following two questions:2

(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?

What constitutes an advance in computer technology?

Although the primary judge characterised EGMs as a machine of a particular construction which implements a gaming function, the majority judges found it hard to characterise EGMs as anything other than a computer.3 This characterisation appeared to originate from an understanding that, at the priority date of the invention, 'it was common general knowledge that what distinguished gaming machines from each other was their capacity to engage and entertain those who played them.'4

However, the majority judges struggled to agree with concepts typically used by the Patent Office such as 'generic computer technology' or 'generic software' as it was unclear 'what they actually mean'. 5

To illustrate this point, the majority judges referred to previous Full Court decisions on inventions that were deemed patent eligible despite being implemented on a standard computer,6 to caution that 'talking loosely' with such an expression may overlook patentable inventions that are implemented on a standard computer,7 and does not answer 'the basic question of whether the invention claimed represents an advance in computer technology.'8

The majority judges also confirmed that one 'should eschew an approach which seeks to denude an invention of patentability by prematurely discounting elements of the claim',9 noting that to do so would be problematic as it may result in a characterisation that is entirely different to the actual invention claimed.10

Nicholas J, in separate reasons, opined that whether an invention results in an advance in computer technology may depend on problems which may arise with respect to how computing technology has been implemented in different fields of technology.11 An invention that provides an advance in computer technology in one field of technology will not necessarily provide an advance in some other field of technology.12 Thus, the way in which an EGM functions may be patentable 'even though a computer engineer may not consider that there has been any advance in the field of computer technology'.13

Aristocrat's electronic gaming machine

Although the majority judges considered that the game was the only inventive aspect,14 the majority judges acknowledged that Aristocrat's invention cannot be solely the EGM itself, nor can it be the game itself.15 Rather, '[i]t is a relationship of implementation', which is characterised as a game implemented on a computer which is an EGM, and therefore a computer-implemented invention.16

The majority judges ultimately held that although elements of the game 'may constitute advances in gaming technology', 'they are not advances in computer technology.'17

Nicholas J left open the possibility for EGMs to be patent eligible if they 'might be regarded as exhibiting an unusual technical effect due to the way in which the computer is utilised'.18 In this respect, although making a game more interesting to players may not in itself be an unusual technical effect, 'there may well be ways in which the computer could be utilised that adds [sic] to the attractiveness of the game through the use of unconventional technical methods or techniques which might themselves give rise to patentable subject matter.'19

Ultimately, all three judges agreed that the proceedings should be remitted back to the primary judge for reconsideration.

Is the glass half empty or half full?

Although this round has not ended favourably for Aristocrat, it is open for Aristocrat to demonstrate to the primary judge that their invention as claimed in claim 1, or in any of the dependent claims, should be patent eligible. Aristocrat may also file a special leave application to appeal this decision to the High Court.

An EGM may still be patentable if it can be shown to constitute an advance in computer technology or if it enables an effect using unconventional technical methods or techniques.

On a positive note, this decision discourages the use of broad and unclear concepts such as 'generic computer technology' or 'generic software'. Nicholas J's comments also clarify that how computing technology may be implemented, and what problems may be faced, depends on the field of technology.

It remains to be seen whether, and how, the Patent Office will adopt the judges' comments in their approach for determining patentable subject matter. The Full Court however made it clear that advances in computer technology, including software, are patent eligible (without providing a definition of the former), and abstract ideas and schemes are not.


1 Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202, [21].
2 Ibid [26].
3 Ibid [34].
4 Ibid [8].
5 Ibid [35].
6 Ibid [36]-[37].
7 Ibid [36]-[38].
8 Ibid [38].
9 Ibid [52].
10 Ibid [58]-[61].
11 Ibid [116].
12 Ibid [116]-[120].
13 Ibid [120]
14 Ibid [54].
15 Ibid [55].
16 Ibid [56].
17 Ibid [65].
18 Ibid [142].
19 Ibid [142].

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