The odds were not in Aristocrat Technologies Australia’s favour last week, with the High Court dismissing an appeal by the gaming technology provider over whether computerised components in their electronic gaming machines which triggered a ‘feature game’ constituted patentable subject matter.

After a long history before both the Patents Office and the courts, Aristocrat’s appeal was ultimately split evenly between the six justices of the High Court. Although in theory the ruling should provide more clarity on the increasingly important question of the patentability of computer-implemented inventions, the opposing views taken by the two camps of justices may instead have simply raised the stakes for future disputes on the issue.

Kiefel CJ, Gageler and Keane JJ held that Aristocrat’s appeal should be dismissed, on the basis that the invention failed to claim some variation or adjustment to generic computer technology so as to give effect to the new game. They considered that the invention could not be classified as more than a new method of gaming, implemented using existing conventional computer technology. The justices also found the two-step model proposed by the Full Court (asking first whether the invention claimed a computer-implemented invention and then whether it can be described as an advance in computer technology) unnecessarily complicated the test for whether an invention is patentable subject matter.

In contrast, Gordon, Edelman and Steward JJ would have allowed the appeal, finding that an abstract idea implemented on a computer, which created an artificial state of affairs and useful result, may be a patentable manner of manufacture. They emphasised that the same approach should be taken in respect of methods carried out using a computer as would be taken in considering the implementation of a scheme or idea by any other machine. They considered that the claimed operation of the game controller, displayed through the player interface, was an altered machine involving an artificial state of affairs and a useful result amounting to a manner of manufacture.

As the High Court was evenly split, the Full Court’s decision (that the alleged invention was not patentable) was affirmed.


Partner | Global Head of Consumer Markets and Head of Litigation and Intellectual Property

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