Jumbo Interactive Ltd & New South Wales Lotteries Corp v Elot, Inc. [2011] APO 82 (28 October 2011)
Opposition – claims to a computer-implemented system for use in operating a lottery – whether claims novel – whether claims inventive – whether claims useful – whether claims satisfy requirements of section 40 of the
Patents Act 1990 – whether claims relate to a ‘manner of manufacture’
Once again, a hearing officer (Delegate Greg Powell) in the Australian Patent Office has wiped out patent claims directed to a computer-implemented invention in one fell swoop, on the basis that they do not define a ‘manner of manufacture’ – the threshold test for patent-eligibility under Australian law.
Thanks to the strict approach adopted recently by the Patent Office, manner of manufacture could become the thermonuclear warhead in the arsenal of opponents to patents relating to software-based technologies. As in the earlier opposition decision
Myall Australia Pty Ltd v RPL Central Pty Ltd [2011] APO 48, the present case – in which two parties opposed a patent relating to a lottery system by Elot, Inc (‘Elot’) – involves the invalidation of all claims previously approved by a Patent Office examiner, and which were found to be otherwise valid (i.e. satisfying all other requirements of the
Patents Act 1990, including novelty and inventive step).
The primary basis for all the rejections in this case was (as is becoming the pattern) a series of the Patent Office's own earlier, but relatively recent, decisions, particularly
Invention Pathways Pty Ltd [2010] APO 10,
Iowa Lottery [2010] APO 25,
Research Affiliates, LLC [2010] APO 31 and
Network Solutions, LLC [2011] APO 65. The real authorities on manner of manufacture – the High Court in
National Research and Development Corporation v Commissioner of Patents (‘NRDC’) [1959] HCA 67, and the Full Federal Court decisions in
CCOM Pty Ltd v Jiejing [1994] FCA 1168 and
Grant v Commissioner of Patents [2006] FCAFC 120 – are now viewed principally through the lens of these non-binding Office decisions.
In our view, however, the approach now taken by the Patent Office in relation to this subject matter has drifted a long way from the authorities. This is resulting in harsh, confusing and inconsistent decisions, and creating great uncertainty for applicants and their advisors. In this case, we consider that a return to the basic principles set down by the courts results not only in a more straightforward and pragmatic analysis, but also in a different result from that reached by the Delegate in the present decision.
This is one of our lengthiest articles to date, however we trust that interested readers will bear with us. It is our objective in the latter portion to, in effect, take on the role of the decision-maker and demonstrate how we believe the law should – and should not – be applied
We have written previously on this blog about ‘patent analytics’, patent ‘landscapes’ and ‘theme maps’ (see 
Updated: We originally reported that the appeal would be heard by Chief Justice Keane, along with Justices Dowsett and Yates. The 
