[2021] FCAFC 202 

Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd

The case concerned Electronic Gaming Machines (EMGs). Feature games were implemented in the EGMs to encourage players to keep wagering by making it more interesting to do so.

The majority held that the correct enquiry comprised:

(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?

The majority found that the substance of the invention disclosed by Claim 1 was the feature game implemented on the computer, which was an Electronic Gaming Machine (EGM).  The substance of the invention was determined as a matter of substance, rather than the specific form of arrangement claimed.

Aristocrat, the respondent, had submitted that in identifying what the substance of an invention is, for the purpose of determining patentability, one was not entitled to disregard those elements which were part of the common general knowledge.  As part of the decision the majority held that in Myriad there was an apparent holding that one may disregard the form of the claims defining the invention to conclude that the invention is something altogether different.  Further the majority found that if one is allowed to proceed in different terms to the claims in the process of characterisation, it is surely permissible to ignore some of the features recited.

It was also noted that care needs to be exercised in considering the substance of an invention not to discount or disregard those integers of the claim which are part of the common general knowledge.  Doing so would avoid an approach that sought to denude an invention of patentability by prematurely discounting elements of the claim.

The appeal was allowed, the substance of the invention was not seen to provide an advance in computer technology.  The invention as claimed in claim 1 was held not to constitute a manner of manufacture.

As an aside, the majority noted that human interactions may constitute an advance in computer technology.  For example, some form of human interactive interface akin to the advance constituted by the touch screen on a mobile phone may well disclose patentable subject matter.

The majority viewed concepts such as generic computer technology as being unhelpful in considering manner of manufacture, for the reason that patentable subject matter may be implemented using generic computer technology.  The CCOM decision was discussed.

The minority decision referred to questions relating to solving a “technical problem” or making some “technical contribution” in a field of technology.  Reference was made to the Encompass decision and whether the invention did or did not ‘transcend, as a matter of substance, what remained an abstract idea or mere information of a kind that has never been considered to be patentable subject matter under Australian law’. It must evolve to an artificially created state of affairs where the computer is integral to the invention.  Advances in computer technology was seen by the majority as being that which transcends.  In the minority decision, reference to fields and technical problems outside the computer were also noted.

The Australian Patent Office Manual notes that ‘If the substance lies in an improvement to the operation of the computer or in the application of the computer to the playing of a game, then the invention may be eligible.  For example, the application of specific networking features to improve communication between game machines. 

Examples include: (i) an improved interface that presents an option for selecting both a game and denominations from respective pluralities, with one action by a player; and (ii) a material advantage or technical effect of optimised/improved use of screen space.  The contributions generally must  be technical in nature and achieve a practical and useful result.



(Numbering and indentation issues may be present below)

Summary of Findings