Australian Federal Court rules electronic gaming invention unpatentable
The Federal Court of Australia has ruled that an electronic gaming machine (EGM) invention does not constitute patentable subject matter.
In a judgment handed down today, November 19, Federal judges Middleton and Perram JJ ruled that the primary claim of the EGM invention by Aristocrat Technologies Australia was not patentable.
The case concerned whether the invention detailed in claim 1 of Aristocrat’s patent application number 2016101967 passed a test for patent eligibility described as “manner of manufacture”.
Claim 1 describes an EGM with particular features of a game that “encourage players to keep wagering on the EGM by making it more interesting to do so”, according to the court.
In an earlier decision, the Australian Patent Office had found four of Aristocrat’s innovation patents lacked a manner of manufacture, leading the company to appeal to the Federal Court.
The appeal was granted by a primary judge in June 2020, who said that the patentability dispute should be limited to claim 1 of the ‘967 patent, and that the claim constituted manner of manufacture.
However, in a two to one judgment, the Federal Court has now ruled that claim 1 is not a patentable invention, adopting a separate test of patentability from the primary judge.
Judges’ test
The Federal Court judges concluded that the primary judge’s test for determining the patentability of the claim “reduced the richness of analysis called for” in the case, proposing an alternate approach.
The primary judge’s test for determining manner of manufacture posed two questions. Firstly, was Claim 1 for a mere business scheme?; secondly, if it was for a mere business scheme implemented in a computer did the invention lie in the manner in which it had been implemented in the computer?
The Federal Court judges adopted a new approach, posing two questions in lieu of those given by the primary judge: “Is the invention claimed a computer-implemented invention?” and, if so, “can the invention claimed broadly be described as an advance in computer technology?”
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