It has long been the case under the Australian patent system that mere business schemes, and abstract ideas or information have not been regarded as a ‘manner of manufacture’ and are therefore not subject matter that is eligible for a patent. Such inventions, even if implemented in a computer environment, may still be ineligible as the ‘substance’ of the invention remains the ineligible scheme or abstract idea and if the computer implementation is merely ‘generic’ or conventional.  

However, there has been a lot of debate in recent years, as there has been in other countries, as to where the line is drawn between patent eligible and ineligible computer implemented inventions.

On 19 November 2021, the Full Federal Court of Australia issued a decision in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 which which was an appeal from a decision of a single judge, Justice Burley handed down in 2020. The Full Court's decision on the appeal provides some additional guidance in this fraught area. The Full Court's decision provides that the focus of the assessment for the patent eligibility of computer implemented inventions should be on whether the invention provides a technical solution to a technical problem, such as an advancement in computer technology such as processing or some other technical characteristic, as opposed to a solution to a non-technical problem such as a mere business method or scheme.

In doing so, the Full Court rejected the rather novel approach adopted by Justice Burley in Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778 who found that computer implemented inventions involving special, single purpose machines such as an electronic gaming machines (EGM), are not unpatentable business schemes, abstract ideas or information, but rather they are inherently a ‘manner of manufacture’ and are therefore eligible for a patent.

The Decision of Justice Burley at First Instance

In considering whether an invention for an EGM comprising a new feature game was a ‘manner of manufacture', Justice Burley formulated a two stage analysis as follows:

1. The first stage of analysis is to ask “whether the claimed invention is for a mere scheme or business method of the type that is not the proper subject matter of a grant of letters patent”; and
2. “Once that question is answered in the affirmative, the subsequent inquiry becomes whether the computer-implemented method is one where invention lay in the computerisation of the method, or whether the language of the claim involves…merely plugging an unpatentable scheme into a computer”, (i.e. “whether the invention claimed involved the creation of an artificial state of affairs where the computer was integral to the invention, rather than a mere tool in which the invention was performed”.

Justice Burley went on to conclude that an electronic gaming machine, as a matter of substance, is not directed to a mere scheme or plan. Rather, the invention is 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. Accordingly, it is unnecessary to consider the second enquiry.” [95]

An outcome of Justice Burley’s decision was the suggestion that computer implemented inventions implemented in a special purposes machine such as an electronic gaming machine, or for that matter other special purpose machines, are eligible for patent protection as a matter of substance.  It is then not necessary to consider whether other features of the claimed invention may resemble an ineligible scheme or business method.

However, the decision of Justice Burley was appealed to the Full Federal Court by the Commissioner of Patents and a decision was handed down by Justices Middleton, Perram and Nicholas on 19 November 2021 in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202, the decision of Justice Burley has been overturned and his novel approach to 'manner of manufacture' for computer implemented inventions has been rejected.

Joint Judgement of Justices Middleton & Perram

In the joint judgement of Justices Middleton and Perram, their Honours considered the first stage of Justice Burley’s approach in particular to be flawed because it asked the wrong question.  Their Honours found that Justice Burley’s first question did not include a “computer implementation” element.  

Their Honours reformulated the approach and suggested that the appropriate questions should be:

• Is the invention claimed a computer-implemented invention?
• If so, can the invention claimed broadly be described as an advance in computer technology? [26]

Their Honours essentially found that any device that comprises a computing device e.g. electronic gaming machines, gaming consoles, smartphones, tablets and smart televisions, is a “computer” for the purposes of question (a) of their two part formulation. [12]  Their Honours suggested that the more complex part of the analysis is whether the invention is a “computer implemented invention”.  In other words, just because a claimed invention involves a computer doesn’t necessarily mean the invention is a “computer-implemented invention”.

Their Honours indicated that to determine if the invention is a “computer-implemented invention” requires an analysis of the substance of the invention.  They acknowledged and agreed with the Patentee that determining the substance of the invention requires consideration of all the integers, even those that might be regarded as “common general knowledge”. [52]

Nevertheless, their Honours did seem to place some emphasis on the fact that the inventive integer of the claimed invention was the feature game.  Their Honours noted that “What makes this invention different to all other kinds of EGM is that feature game which is also, incidentally, its only inventive aspect.” [54]

In discussing what constitutes the substance of the invention, they commented that Justice Burley’s approach of saying the invention is, in substance, simply an EGM is not the correct approach as it ignores the contribution to the substance of the invention provided by the feature game integer.  However, their Honours also cautioned against the opposite extreme of regarding the substance of the invention as residing only in the feature game integer.

In concluding that the invention is, in substance, a computer implemented invention their Honours reasoned that:

“What is the relationship which emerges from the fact that the feature game in integers 1.10-1.12 is to be executed on the EGM?  It is a relationship of implementation.  What this purpose-specific but extremely common computer does is play the feature game.  Consequently, the substance of the invention disclosed by Claim 1 is that feature game implemented on the computer which is an EGM.  It is therefore a computer-implemented invention.” [56]

Having answered part (a) of their two-part analysis in the affirmative, their Honours went on to consider the second part, namely (b) can the invention claimed broadly be described as an advance in computer technology?

Their Honours concluded that the invention did not involve an advancement in computer technology.  In reaching this conclusion, their Honours noted that:

• the feature game integers of the invention embody an abstract idea, comprising a set of rules defining a family of games as a business scheme for increasing player interest and thereby increasing profit; [57]
• the specification makes no mention as to how the feature game would be programmed or implemented; [63]
• the claim is silent on the topic of computer technology beyond that the person implementing the invention should use some; and [63]
• that the invention improves player engagement or increases subjective satisfaction has nothing to do with the development or advance of computer technology. [64]

Accordingly, their Honours concluded that the invention did not provide an advancement in computer technology and is therefore not a patentable invention.  

Judgement of Justice Nicholas

In a separate judgement, Justice Nicholas agreed with the majority of Middleton and Perram that the primary judge had erred in not addressing the ‘computer implementation’ question.

Justice Nicholas formulated the proper analysis as first requiring an assessment of the substance of the invention, which he concluded resided in game program code embodying a computer implemented scheme or set of rules for playing game.

Having determined the substance of the invention, the question is “whether there is anything about the way in which the game code causes the EGM to operate which can be regarded as having transformed what might otherwise be regarded as purely abstract information encoded in memory into something possessing the required artificial effect.” [140]

Accordingly, Justice Nicholas’ approach focused on concepts such as “artificial effect” and “technical contribution” (e.g. an improvement in processor, memory or display technology or some other field of technology), and “transformation”.  His Honour noted that transformation in particular is “unlikely to be achieved by taking an inherently unpatentable scheme and implementing it utilising generic computer technology for its well-known and well-understood functionality that does not involve any ingenuity in the way in which the computer is utilised.” [119]

His Honour reasoned in relation to the invention that

“the invention is not directed to a technological problem residing either inside or outside the computer” and “the specification does not identify any technological problem to which the patent purports to provide a solution. Nor did the expert evidence (insofar as it was made available to us) suggest that the invention described and claimed in the specification was directed to any technical problem in the field of gaming machines or gaming systems.  Rather, as the specification makes clear, the purpose of the invention is to create a new game that includes a feature game giving players the opportunity to win prizes that could not be won in the base game.  Ultimately, the purpose of the invention is to provide players with a different and more enjoyable playing experience.” [141]

Accordingly, Justice Nicholas’ approach focused quite heavily on the question of whether the invention provides a solution to solving a technical problem.  The purpose of simply providing a new game does not suggest a technical problem requiring a solution.

There was some discussion in Justice Nicholas’s judgment about whether the gaming machine described and claimed might be regarded as exhibiting an “unusual technical effect” due to the way in which the computer is utilised.  His Honour seemed to leave open the door for potentially patent eligible subject matter.

As previously mentioned, the primary judge did not make any specific findings in relation to the use of configurable symbols, and whether they were capable of amounting to a technological innovation.  The fact that a game is made more interesting to players is not in itself such an effect but there may well be ways in which the computer could be utilised that adds to the attractiveness of the game through the use of unconventional technical methods or techniques which might themselves give rise to patentable subject matter

Differences between the Judge’s Approaches

The separate judgements of Middleton and Perram on the one hand and Nicholas on the other have some similarities in that they reject Justice Burley’s approach of automatically conferring patent eligibility on inventions embodied in special purpose machines incorporating a computer such as an EGM.

The approaches to analysing patent eligibility of computer implemented inventions in both judgements are somewhat similar.  They both call for an analysis of the substance of the invention to assess whether the invention is a computer implemented invention embodying an abstract idea or scheme (e.g. a business method or a game).

If the first question is answered in the affirmative then the second part of the analysis is to determine if the invention provides an advancement in technology.  The invention is likely to be a ‘manner of manufacture’ if the invention involves an advancement in computer technology such improvements in processor, memory or display technology or some other field of technology.  Also, if the specification suggests that the invention is directed to overcoming a technical problem and provides information as to how to implement the invention in a technical sense and doesn’t simply leave it to the reader to work it out, then this may also point to the invention being a ‘manner of manufacture’.

However, if the specification suggests that the invention is focused on non-technical subject matter or a solution to a non-technical problem such as a mere business method or scheme or, as in the present case a feature game of an EGM as a business scheme for increasing player interest and thereby increasing profit, then this points to the invention not being a ‘manner of manufacture’.

Conclusions

The decision of the three judges overrules Justice Burley’s two step test to determining the patent eligibility of computer implemented inventions and his approach which says that a special purpose machine or apparatus, such as an electronic gaming machine, as a matter of substance is not directed to a mere scheme or plan and is therefore eligible subject matter for a patent.

Instead, Justices Middleton and Perram posited a different test which asks:

1. Is the invention claimed a computer-implemented invention?
2. If so, can the invention claimed broadly be described as an advance in computer technology? [26]

Despite overturning the decision at first instance, the matter has been returned to Justice Burley for further consideration of other claimed subject matter in the patent directed to ‘configurable symbols’ and whether this could potentially involve a ‘manner of manufacture’.  

Accordingly, the decision of the Full Court reverts to an approach in assessing computer implemented inventions and ‘manner of manufacture’ that focuses on a consideration of whether the invention provides a technical solution to a technical problem as opposed to a solution to a non-technical problem such as a mere business method or scheme, or for that matter a feature game of an EGM as a business scheme for increasing player interest.

If you would like more information about this decision and the patentability of computer implemented inventions then please contact Daniel McKinley.

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