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High Court hearing considers patentability of computer inventions

In early June, a hearing was held in the High Court of Australia to review an appeal from the Full Federal Court concerning the patentability directed to an electronic gambling machine.

The hearing involved in the appeal was Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202.

In the hearing, Aristocrat’s (the owner of the electronic gaming machine) submission focused on the principles of “manner of manufacture”. This is the terminology used in Australia’s patent legislation to define a patentable invention. Aristocrat emphasised that the requirement for an invention to be a manner of manufacture is separate from the requirements of novelty, inventiveness, and utility. Aristocrat argued that the Full Federal Court failed to make this distinction when assessing the patentability of its electronic gaming machine. Moreover, Aristocrat submitted that the threshold for patentability should be low. Patentability should belong to the useful arts rather than fine arts, and the test for patentability should reflect this. Aristocrat also submitted that international legislation and case law from the US and UK have distorted Australia’s understating of patent law, blurring the lines between manner of manufacture and novelty.

The Commissioner of Patents countered these arguments by concentrating on the characterisation of the invention. The Commissioner’s primary argument was that patent claims must be determined on a matter of substance, not form. An abstract idea does not become patentable merely because it is implemented on a computer. The Commissioner also focused on the generality with which the invention was described by Aristocrat in its patent application, whereby it was left entirely up to the discretion of the programmer to implement instructions. Therefore, the rules of the game (as distinct from the game itself) involved no invention.

The Institute of Patent and Trade Mark Attorneys of Australia was also granted leave to make oral submissions. The Institute supported Aristocrat, submitting, amongst other things, that the new test adopted by the Full Federal Court treats computer-implemented inventions differently from other forms of inventions despite there being no distinction in Australian law.

The case now sits with the judges of the High Court, and it is anticipated that the High Court will provide clarity to the test of patentability, especially as it relates to computer-implemented inventions.

For the full reading of the hearing, see here.

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