The case has a complicated history. For anybody who may just be joining us, or who requires a recap, here is the story so far in a nutshell.
- Way back in 2018, a Delegate of the Commissioner of Patents revoked four innovation patents relating to the implementation of a ‘feature game’ in an EGM (i.e. a secondary, or bonus, game triggered by the occurrence of a defined event in the ‘base’ game of spinning reels) on the basis that the patents did not claim a patent-eligible ‘manner of manufacture’ under Australian law: Aristocrat Technologies Australia Pty Limited [2018] APO 45.
- Aristocrat appealed to the Federal Court where, at first instance, Justice Burley determined that the claims were, in fact, directed to ‘a mechanism of a particular construction, the operation of which involves a combination of physical parts and software to produce a particular outcome in the form of an EGM that functions in a particular way’, and that this was patentable subject matter in Australia: Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778. (For more, see Federal Court Finds Computer-Implemented Gaming Machine Patent-Eligible in Australia.) Importantly, this decision was based on consideration of a single claim that the parties agreed was representative of the primary claims in all four innovation patents. The dependent claims of the patents were not considered at all in the judgement.
- The Commissioner of Patents was granted leave to appeal to the Full Federal Court, where all three judges on the panel agreed that the decision of Justice Burley should be overturned, and the matter remitted back for consideration of any residual issues relating to the dependent claims. However, a plurality of two judges (Middleton and Perram JJ) based their decision on a new two step test – first asking whether the claims are for a ‘computer-implemented invention’ and then whether that invention can ‘broadly be described as an advance in computer technology’ – while the third judge (Nicholas J) instead took a more conventional path, observing that the substance of the claimed invention lay in the mere computer implementation of an unpatentable ‘scheme or set of rules for the playing of a game’: Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202. (For more, see Patent-Eligibility of Computer-Implemented Inventions – Appeals Court Says an ‘Advance in Computer Technology’ is Required.)
- The High Court granted Aristocrat special leave to appeal. Unfortunately, on the days of the hearing one judge was absent due to illness and – for whatever reason – the Court decided to proceed with a panel of six judges (which, astute observers will note, is an even number). The panel split 3:3, meaning that, under section 23(2)(a) of the Judiciary Act 1903, ‘the decision appealed from shall be affirmed’. This left the judgment of the Full Federal Court intact, notwithstanding that three judges of the High Court (Gordon, Edelman and Steward JJ) would have reversed it, and the remaining three (Kiefel CJ, Gageler and Keane JJ) would have upheld it on different grounds. All six judges of the High Court explicitly or implicitly disapproved the novel two step test of patentability proposed by the plurality in the Full Federal Court: Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29. (For more, see High Court’s Failure Exposes the Festering Eligibility Sore in Australia’s Patent Laws.)
- In accordance with the orders of the Full Court, the case was remitted back to Justice Burley for consideration of the ‘residual issues’. In the resulting judgment, his honour determined that the effect of section 23(2)(a) of the Judiciary Act is plainly that the Full Court decision is ‘affirmed’, that he was bound, as a single judge of the court, by that decision, and that he should not therefore have any regard to the reasoning of the High Court in reaching his decision. As a result, Burley J found all of the remaining claims to be unpatentable under the plurality’s two step test: Aristocrat Technologies Australia Pty Limited v Commissioner of Patents (No 3) [2024] FCA 212.
Aristocrat sought leave to appeal this further decision of Burley J. Section 25(2) of the Federal Court of Australia Act 1976 stipulates that applications for leave to appeal must be heard and determined by a single judge unless a judge directs that the application be heard and determined by a Full Court – which happens quite often in cases such as this, including in Aristocrat’s appeal from Justice Burley’s original decision. On this occasion, however, Aristocrat expressly sought that the application for leave be determined by a single judge, separately and before the hearing of any appeal. This preserves its option to have the appeal removed directly to the High Court under s 40(2) of the Judiciary Act.
With leave having now been granted by O’Bryan J in Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2024] FCA 987, it seems reasonable to assume that Aristocrat will now apply to have the High Court take up the case directly. But for those who may be hoping that this is a short-cut to having the Court resolve the impasse it reached in 2022, I regret that matters may not be quite so simple.
Australia has a pre-grant patent opposition system. That is to say, once an application has passed examination and been accepted for potential grant as a patent, there is a period (of three months) during which anybody may oppose the grant. The subsequent opposition proceedings – if they run their full course – consist of a series of evidentiary stages, legal submissions, and an oral hearing, following which the hearing officer (a delegate of the Commissioner of Patents) issues a written decision on the outcome of the opposition. In the final reckoning, the patent application may emerge unscathed, it may be refused, or it may end up being granted subject to narrowing amendments. 
As I recently reported, 
Over the past five years (i.e. since 2019) Korea’s LG Electronics Inc and China’s Huawei Technologies Ltd have consistently placed in the top five applicants for Australian patents. Indeed, for the past four years they were in the leading three. In 2021, 
In 2023 the total number of standard patent applications filed in Australia remained above 30,000 for the third year running, despite a 2.4% drop in filings. This follows a decline of nearly 0.5% in the previous year. However, whereas the decline in new applications in 2022 was due to fewer filings by Australian residents (with a slight increase in foreign-originating applications preventing a larger fall), the drop in 2023 was the result of nearly 800 fewer filings by foreign applicants. As always, a majority of new filings were national phase entries (NPEs) derived from international applications under the Patent Cooperation Treaty (PCT). But, for the first time since 2016, the number of PCT NPEs fell – by 3.2% – offset somewhat by a 14% rise in new direct national filings. The number of divisional applications also fell in 2023, by 7.3%.
