The Federal Court has recently found that a claim in four innovation patents directed to an electronic gaming machine (EGM), having a combination of physical parts and computer software for gameplay, is a 'manner of manufacture'. The innovation patents are owned by one of the leading gaming companies, Aristocrat Technologies Australia Pty Ltd.
The decision of the Federal Court overturns the 2018 decision of the Delegate of the Commissioner of Patents. In that earlier decision, the Delegate ordered that the innovation patents be revoked on the basis that those patents claimed games and game rules which were considered to be a mere 'scheme' and, therefore, not a 'manner of manufacture'.
In coming to this decision, the single judge of the Federal Court (Justice Burley) sought to apply the two-step test in the recent decision in Commissioner of Patents v Rokt [2020] FCAFC 86) of:
... an initial question of 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. 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 (to use the language employed in Rokt at [84]) "merely plugging an unpatentable scheme into a computer".
Justice Burley held that the invention claimed in the innovation patents was not for a "mere scheme or plan". Instead, his honour found that the invention described "yields a practical and useful result" and, as claimed,
...is 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.
On this basis, his Honour held that the first limb of the two-step test had been satisfied. Accordingly, consideration of the second limb was held to be "unnecessary" and, therefore, not undertaken by the Court.
Whilst this decision provides support for the patentability of computer-implemented inventions, the decision is not final. It awaits to be seen whether the Commissioner of Patents will seek leave to appeal this decision to the full bench of the Federal Court (of either 3 or 5 judges).
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