In a development that should surprise nobody – least of all readers of this blog, where I have foreshadowed it twice – on 20 July 2020 the Commissioner of Patents filed an application for leave to appeal the decision in Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778 to a Full Bench of the Federal Court of Australia. I wrote about the original decision back in June, and a further decision relating to costs earlier in July. While the Commissioner does require the Full Court to agree to hear the appeal, I anticipate that the Court will adopt the same practice as in earlier similar cases, and hear the application for leave, and the substantive appeal, concurrently.
This should be an important appeal. The Aristocrat case presents the Full Court with an opportunity to draw a clear distinction between patent-eligible and ineligible computer-implemented inventions. The case concerns electronic gaming machines (EGMs). On the one hand – as the primary judge found – an EGM is very much a material product, and not an ephemeral scheme or abstract idea. It is thus arguably just as eligible for patent protection as a traditional mechanical gaming machine. On the other hand, in a number of recent cases the Full Court has found that taking an unpatentable method, scheme or idea, and ‘merely’ implementing it through generic programming of conventional hardware does not transform it into a patentable invention.
An argument may be made that the claims in Aristocrat differ from those in other cases, where computer-implemented processes were found to be patent-ineligible, only inasmuch as a number of the recited hardware elements are specific to EGMs. These elements were not, however, novel or inventive, either individually or in combination, at the priority date. They were, in fact, well-known and conventional within the specific context of the regulated gaming industry in Australia. It was this context, as much as anything else, that led the primary judge to conclude that…
…to the person skilled in the art, the invention may be characterised as a machine of a particular construction which implements a gaming function. It yields a practical and useful result. Simply put, the machine that is the subject of the claims is built to allow people to play games on it. That is its only purpose. In this regard, the physical and virtual features of the display, reels, credit input mechanism, gameplay mechanism and game controller combine to produce the invention. It is a device of a specific character.
I would note also that, in contrast to something of an abstract nature, an EGM is ‘a device of a specific character’ upon which one could painfully stub one’s toe, if one were not careful! The question is whether the primary judge was therefore correct to conclude, as he did, that such a device is inherently patent-eligible, without proceeding to consider – as the Full Court has done in previous cases relating to computer-implemented methods – whether there is any invention in the computerisation of the method itself.
The case number for the appeal in the NSW Division of the Federal Court of Australia is NSD787/2020.
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