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What the High Court's Decision in Aristocrat Means for Patent Owners

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The Australian High Court Aristocrat Technologies Australia Pty Ltd v Commissioner of Patent Offices[1] August 17, 2022. previous article, this case relates to the patentability of computer-implemented inventions, particularly electronic game console (EGM) systems and methods. With his six judges presiding over the appeal, the High Court split 3 to 3 on whether Aristocrat’s application was directed to patentable subject matter.

The division decision means that the appeal will be dismissed, upholding the federal court’s decision to dismiss Aristocrat’s patent application.

While the High Court decision does not provide the clarity that patent owners and IP professionals were hoping for regarding the patentability of computer-implemented inventions in Australia, it does point to further developments in Australian law in this area. The decision also provides several key points to patentees that advances in computer technology are not essential to patent eligibility, and that the characterization of inventions is not I have confirmed that it is just as important as before.

Summary of decisions

The question of the High Court’s decision was whether Aristocrat Technologies’ inventions relating to systems and methods of functional gaming in EGMs were patentable subject matter under Australian law. All members of the court agreed that for an invention to be patentable it must be more than just a scheme or abstract idea.[2] in line with established principles. However, the judges were divided as to the proper characterization of Aristocrat’s invention.

Chief Justice Kiefel, along with Justices Geegeler and Keane (Kiefel), characterized the invention as merely an abstract idea with no variations in common computer technology, no more than a new system or method of gaming. . From that characterization it follows that the invention was not patentable subject matter.[3]

In contrast, Justices Gordon, Edelman, and Steward (Gordon) characterized the invention as an electronic game machine modified by the implementation of feature games. Their honor was satisfied with the ingenuity and ingenuity in incorporating the game into the EGM, and concluded that the invention constitutes patentable subject matter.[4]

important point

It was hoped that the High Court’s decision would clarify the patentability of computer-implemented inventions under Australian law. This decision doesn’t solve the problem, but it does make some important points.

No advances in computer technology required

An important issue for the High Court to consider was whether the following Supreme Court adopted the correct approach for assessing patent eligibility of computer-implemented inventions. The full court majority adopted a two-part test involving asking whether the claimed invention involves advances in computer technology.[5] As Aristocrat argued before the High Court, its approach found that computer-implemented inventions lack patent-eligible subject matter, despite advances or technical contributions in other technical fields. presents a possible risk.

Both the Kiefel and Gordon decisions rejected the full court’s approach. On the surface, these decisions appear to indicate that computer-implemented inventions that provide improvements in another technical field may constitute patentable subject matter.[6]

This provides some reassurance to patentees that their inventions may not involve advances in computer technology, but may nonetheless provide technical advantages in other areas.

Characterization remains important to determine patentability

The division between the members of the High Court in this case ultimately hinged on the correct characterization of Aristocrat’s invention, showing how important this step is in determining patentability.

Kiefel emphasized the lack of “adapting to general computer technology,” or the lack of components “physically affected” by Aristocrat’s invention.[7] Gordon, on the other hand, emphasized the inventive game controller providing a “modified” EGM.[8] While not establishing binding precedent, these comments do not clearly distinguish computer-implemented inventions from common or standard computer technology under current Australian law. It emphasizes the importance of ensuring that it is described in sufficient detail so that it can be distinguished.

What’s next for computer-implemented inventions in Australia?

Unfortunately, the High Court decision has not resolved the issue of patent eligibility for computer-implemented inventions in Australia.

Being a divisional judgment, the High Court judgment does not provide a binding precedent for lower courts or administrators to rely on. As such, the decision is unlikely to impact IP Australia’s current examination practices. Individual cases may develop arguments for or against patentability based on the principles set forth in Kiefel and Gordon.

Uncertainty remains over the patent eligibility of computer inventions under Australian law. Nonetheless, this divisional decision leaves the door open for the High Court to further consider the patentability of computer-implemented inventions in the future.