The Commissioner of Patents initially refused to certify four of Aristocrat’s innovation patent applications for a computer implemented gaming machine on the basis that they did not involve a manner of manufacture.  In response, Aristocrat appealed the Commissioner’s decision to the Federal Court of Australia, where the Primary Judge held that the invention was more than a mere scheme, and therefore constituted patentable subject matter. In turn, the Commissioner appealed the decision of the Primary Judge to the Full Federal Court where it was held that the patents did not contain an advance in computer technology and therefore did not constitute patentable subject matter. Upon being granted special leave to appeal, Aristocrat appealed the Full Court’s decision of the High Court, and the matter was heard by a panel of six Justices.

All six Justices agreed that for a computer implemented invention to be considered a ‘manner of manufacture’’, it must be directed to more than a mere scheme. However, the decision was ultimately a 3:3 split decision between the Justices, where three held that the invention did not constitute patentable subject matter on the basis of their characterisation of the invention as nothing more than a scheme for new system or method of gaming implemented on a generic computer.   In view of the lack of a majority finding, the appeal was dismissed, and the decision of the Full Federal Court was upheld.

This decision illustrates the complexities associated with the application of various principles established by the Australian Courts when assessing the patentability of computer implemented inventions.  Although it was hoped that the High Court would provide much needed clarity in this area, the fact that the opinion of the six Justices was evenly split means that uncertainty in determining the patentability of computer implemented inventions persists, suggesting that reform in this area of law is required.

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¹ Patents Act 1990 (Cth) s 18(1A)(a) (‘Patents Act’).