Key points

  • IP Australia is sticking with the 3-part Myriad test for patentable subject matter, requiring identification of the substance of the invention.
  • The substance of the invention is not necessarily the same thing as the novel features of the claim.
  • With respect to electronic gaming machines, Examiners will find “game play” inventions to be unpatentable but might find “technology” inventions to be patentable.

 

Original decision

In a recent decision on 19 November 2021, in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 (the latest Aristocrat decision), Justices Middleton, Perram and Nicholas unanimously reversed the Primary Judge’s decision of last year that claims directed to an electronic gaming machine (EGM) constituted patentable subject matter and were not the generic use of a computer per se.

In the original decision, the Primary Judge had determined that the physical gaming machine could not be a mere business scheme as what was claimed was for a physical hardware device, or in his words that the “invention it disclosed was an EGM which was a device of a particular construction with hardware and software elements. Consequently, it could not be a business scheme or, to put the matter another way, that which was concrete could not be abstract.” [in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 at [19]]

Thus, the Primary Judge concluded that the gaming machine was patent eligible.

A new two-step test?

In the latest Aristocrat decision, the ruling of the Primary Judge was overturned and a new two-step approach was provided for inventions related to software. The new two-step approach involved posing the following questions:

I. Is the invention claimed a computer implemented invention II. If so, can the invention claimed broadly be described as an advance in computer technology?

In addressing the two questions above, if (II.) is answered in the negative, the invention will not be for a manner of manufacture (patentable subject matter).

The language “advance in computer technology” comes from one of the considerations that may be relevant to whether a computer implemented invention is in substance a manner of manufacture, as summarised in Aristocrat Technologies Australia Pty Limited [2016] APO 49 at [35].

Conflict with three-step Myriad test?

The three-part test for patentability in the Australian Patent Examiner’s Manual is derived from the High Court decision in D’Arcy v Myriad Genetics Inc [2015] HCA 35 (Myriad). That three-part test includes the steps of:

  1. Identify the substance of the claimed invention;
  2. Ask whether the substance of the claim lies within established principles of what does not constitute a patentable invention (e.g. is the substance merely a scheme, plan, rules of gameplay, intellectual or genetic information?);
  3. If not, consider whether the substance of the claim otherwise lies outside of existing concepts of manner of manufacture and is to be treated as a “new class” of subject matter.

Considerations about substance

There are a number of considerations that may be relevant to whether a computer implemented invention is in substance a manner of manufacture. These considerations were summarised in Aristocrat Technologies Australia Pty Limited [2016] APO 49 at [35]. They include:

  • there must be more than an abstract idea, mere scheme or mere intellectual information;
  • whether the contribution of the claimed invention is technical in nature;
  • whether the invention solves a technical problem within the computer or outside the computer;
  • whether the invention results in improvement in the functioning of the computer, irrespective of the data being processed;
  • whether the application of the method produces a practical and useful result;
  • whether it can be broadly described as an improvement or advance in computer technology;
  • whether the method requires generic computer implementation;
  • whether the computer is merely an intermediary or tool for performing the method while adding nothing of substance to the idea;
  • whether there is ingenuity in the way in which the computer is utilised;
  • whether the invention involves steps that are foreign to the normal use of computers; and
  • whether the invention lies in the generation, presentation or arrangement of intellectual information.

Examiners Manual now updated: The three-step Myriad test remains

IP Australia’s Patent Manual of Practice and Procedure (the Examiners’ Manual) has now been amended to take into account the latest Aristocrat decision. Importantly, the three-part Myriad test has been retained.

There have however been some amendments that will impact prosecution strategy for computer- implemented inventions, as set out below.

Substance is not just the novel features of a claim

The Examiners’ Manual now includes a statement that “when considering a combination claim, the substance of the invention can lie in an individual integer of the combination, or a collection of integers. In determining the substance, while it is legitimate to consider when the individual integers are part of the state of the art, it is a mistake to determine the substance of the invention solely by excluding known integers and examiners must ultimately consider the claims as a whole.”

In other words, Examiners cannot simply equate the novel features of a claim to the substance of a claimed invention.

Patentable and unpatentable Gaming Machines

The Examiners’ Manual now distinguishes between patentable “technology” inventions and unpatentable “game play” inventions.

The Examiners’ Manual provides the improved interface of Aristocrat Technologies Australia Pty Limited [2016] APO 49 (Aristocrat ‘16) as an example of a “Technology” invention that presents an option for selecting both a game and denominations from respective pluralities, with one action by a player. The Manual states that this contribution was found to be “technical in nature, and [achieved] a practical and useful result”.

However, the Examiners’ Manual provides the spinning reel games and the specific way in which the games were divided into groups with group-specific associated sets of bet denominations in Aristocrat Technologies Australia Pty Limited [2017] APO 1 (Aristocrat ‘17) as an example of an unpatentable “game play” patent. The Manual states that the delegate did not consider this substance to produce any technical, practical or useful result, and did not see any improvement in the relevant computer technology.

Practical outcomes

When it comes to computer-implemented inventions, helping the Examiner correctly identify the substance of the invention is paramount.

And while there are a number of considerations that may be relevant to determining whether the substance of the invention is patentable subject matter, the most important in our experience are whether the contribution of the claimed invention is technical in nature and whether the invention solves a technical problem within the computer or outside the computer.

The latest Aristocrat decision does not seem to have changed those two issues.

However, the explicit statement in the Examiners’ Manual that the substance of a claimed invention is not just the combination of novel features may ease the examination pathway for otherwise “technical” inventions.