On 9 and 10 June 2022, a hearing was held in the High Court of Australia in the case of Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents. Spruson & Ferguson Australia sent a team of experienced patent attorneys and intellectual property lawyers down to Canberra to watch the landmark hearing. This is the first time that computer inventions have been considered by the High Court, and it is hoped that the Court's decision will settle the uncertainties surrounding patenting of computer inventions in Australia. The decision will have significant ramifications for those who hold, or wish to seek, patents for computer implemented inventions in any field of technology.
This case involves an appeal from the Full Federal Court's decision in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd,1 in which the Full Court determined that a patent application directed to an electronic gaming machine, owned by Aristocrat Technologies Australia Pty Ltd (Aristocrat), was not directed to patentable subject matter.
Over one and half days, Aristocrat and the Commissioner of Patents put forward their submissions to a bench of six justices in the High Court.
Aristocrat's submissions focused on the principles of "manner of manufacture" (the term used in Australia's patents legislation to define a patentable invention) and the appropriate test to be applied when assessing computer-implemented inventions. Aristocrat emphasised that the requirement for an invention to be a "manner of manufacture" is separate and distinct from the requirements for novelty, inventiveness and utility, and argued that the courts below failed to maintain this distinction. It argued that, when assessing the patent eligibility of a computer-implemented invention, the critical question is whether the invention provides a practical and useful result, so that it is more than a mere scheme or abstract idea. Aristocrat submitted that patent eligibility should be a low threshold test, designed merely to ensure that the invention belongs to the useful arts, rather than the fine arts, and that this test should be applicable to all areas of technology, not only the assessment of computer-implemented inventions.
Aristocrat submitted that previous Federal Court decisions, such as Research Affiliates,2 have distorted the assessment of manner of manufacture for inventions that involve computers, by importing principles from UK and US patent law, including a requirement for a "technical contribution", that have no basis in Australian law. Aristocrat argued that importing these foreign law concepts into the assessment of patent eligibility has blurred the distinction between manner of manufacture and novelty. It submitted that to ask whether a computer-implemented invention involves an "advancement in computer technology" (as did the majority in the Full Federal Court) is to address the wrong question.
The Commissioner's submissions primarily concentrated on the characterisation of the invention, submitting that Aristocrat's claims were, as a matter of substance, directed to the rules of a game implemented using conventional computer technology for its well-known and well-understood functions. At the forefront of the Commissioner's submissions was the proposition that patent claims must be assessed as a matter of substance, not form. The Commissioner submitted that an otherwise unpatentable abstract idea does not become patentable simply because it is implemented on a computer, or because aspects of known hardware are mentioned in the claims.
The Commissioner broke down Aristocrat's claim down into two parts, a first set of integers which defined known hardware of a standard electronic gaming machine, and a second set of integers which defined a controller to carry out instructions corresponding to the rules of a game. The Commissioner focused on the level of generality with which the invention was described in Aristocrat's patent specification, including the claims, arguing that it was left entirely to the discretion of the programmer to implement the instructions. The Commissioner submitted that the implementation of the rules of the game (as distinct from the game itself) involved no ingenuity or invention.
The Institute of Patent and Trade Mark Attorneys of Australia (IPTA) was granted leave to make oral submissions as an intervener. IPTA's submissions supported those of Aristocrat, and raised concerns over statements made in the Full Federal Court's decision, submitting that:
- under the test adopted by the Full Court, which extends beyond gaming machines to all fields of technology, any invention implemented using a computer will not be patentable unless it constitutes an advance in computer technology;
- the new test adopted by the Full Court treats computer-implemented inventions differently from all other inventions, despite there being no basis for this distinction in Australian legislation and despite such discrimination between fields of technology being prohibited by TRIPS agreement, to which Australia is a party;
- there are practical difficulties in implementing the Full Court's new test which, by blurring the distinction between "manner of manufacture" and novelty, imports a temporal aspect into the former; and
- the Full Court's approach to identifying the substance of the invention led it to (impermissibly) disregard essential integers of Aristocrat's claims.
Regardless of the outcome of this case, it is expected that the High Court's decision will provide clarification on the correct test for patentable subject matter, especially as it relates to computer-implemented inventions. It is hoped that the decision will provide a degree of certainty in what has been a tumultuous landscape relating to the patent eligibility of computer inventions in Australia over recent years.
It remains to be seen whether the High Court will advance a new test for patent eligibility, endorse a specific, separate test for computer-implemented inventions, or reaffirm existing legal precedents and explain how traditional principals should be applied to computer implemented inventions. In any case, patentees and innovators will welcome certainty in this area of patent law as computers are increasingly used across numerous fields of technology.
Spruson and Ferguson will be closely monitoring for this highly anticipated decision, which is expected to issue within the next four or five months.
1  FCAFC 202.
2 Research Affiliates LLC v Commissioner of Patents  FCAFC 150.