The High Court of Australia issued a split decision in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents1 on 17 August 2022. As reported in our previous article, this case related to the patentability of computer-implemented inventions, and in particular to a system and method for an electronic gaming machine (EGM). With six Justices presiding over the appeal, the High Court divided 3:3 on whether Aristocrat's application was directed to patentable subject matter.
The split decision means that the appeal is dismissed, and the decision of the Full Federal Court, rejecting Aristocrat's patent application, is upheld.
While the High Court's decision has not provided the clarity that patent owners and IP professionals were hoping for concerning the patentability of computer-implemented inventions in Australia, it does leave the door open for further development of Australian law in this area. The decision also offers some key takeaways for patentees, confirming that an advance in computer technology is not essential for patent eligibility, and that characterisation of the invention remains as important as ever.
Summary of the Decision
The issue for determination by the High Court was whether Aristocrat Technologies' invention, relating to a system and method for a feature game on an EGM, was patentable subject matter under Australian law. All members of the Court agreed that an invention must be more than a mere scheme or abstract idea to be patentable,2 in line with well-established principles. However, the Justices were divided as to the proper characterisation of Aristocrat's invention.
Chief Justice Kiefel, together with Justices Gageler and Keane (the Kiefel Decision), characterised the invention as nothing more than a new system or method of gaming, that was merely an abstract idea without any variation of generic computer technology. It followed from that characterisation that the invention was not patentable subject matter.3
By contrast, Justices Gordon, Edelman and Steward (the Gordon Decision) characterised the invention as an electronic gaming machine that was altered by implementation of the feature game. Their Honours were satisfied that there was inventiveness and ingenuity in the incorporation of the game into the EGM, and concluded that the invention constituted patentable subject matter.4
It was hoped that the High Court's decision would clarify the patentability of computer-implemented inventions under Australian law. Whilst the decision has not resolved this issue, it does present some key takeaways.
Advancement in computer technology not required
An important issue for consideration by the High Court was whether the Full Federal Court below adopted a correct approach to assessing the patent eligibility of computer-implemented inventions. A plurality in the Full Court adopted a two-part test that involved asking whether the claimed invention involved an advance in computer technology.5 As Aristocrat argued before the High Court, that approach presents the risk that a computer-implemented invention may be held to lack patent eligible subject matter, notwithstanding that it involves an advance, or technical contribution, in some other field of technology.
Both the Kiefel and Gordon Decisions rejected the Full Court's approach. On their face, these decisions seem to indicate that computer-implemented inventions that result in an improvement in another field of technology may constitute patentable subject matter.6
This provides some reassurance for patentees whose inventions may not involve an advance in computer technology but nevertheless deliver technical advantages in other fields.
Characterisation remains crucial for determining patentability
The split between members of the High Court in this case ultimately hinged on the correct characterisation of Aristocrat's invention, demonstrating how significant this step is for determining patentability.
The Kiefel Decision emphasised the lack of "adjustment to generic computer technology" or lack of a component that is "physically affected" by Aristocrat's invention,7 while the Gordon Decision emphasised the game controller of the invention providing an "altered" EGM.8 While establishing no binding precedent, these comments do highlight the importance, under current Australian law, of ensuring that a computer-implemented invention is described in sufficient detail to enable it to be clearly distinguished over generic or standard computer technology.
What's next for computer implemented inventions in Australia?
Unfortunately, the High Court's decision does not resolve the questions that surround the patent eligibility of computer-implemented inventions in Australia.
Being a split decision, the judgment of the High Court does not provide a binding precedent for lower courts or administrators to rely upon. As such, it is unlikely that the decision will impact the current examination practice at IP Australia. In individual cases, arguments for or against patentability may be developed from the principles explained in the Kiefel and Gordon Decisions.
The uncertainty surrounding the patent eligibility of computer inventions under Australian law remains for now. Nevertheless, the split decision leaves the door open for the High Court to further consider the patentability of computer-implemented inventions in the future.
Spruson & Ferguson will continue to follow and report on developments in this area.
1 Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents  HCA 29 (Aristocrat HCA).
2 Aristocrat HCA at  and .
3 Aristocrat HCA at .
4 Aristocrat HCA at .
5 Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd  FCAFC 202 at .
6 Aristocrat HCA at , ,  and .
7 Aristocrat HCA at  and , quoting Grant v Commissioner of Patents  FCAFC 120 at 70.
8 Aristocrat HCA at .
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