The Federal Court in Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778 has overturned a decision of the Australian Patent Office in relation to a set of innovation patents directed to gaming machines.

Justice Burley clarified the approach to be taken when assessing computer-implemented inventions, confirming that the reasoning from earlier cases "involves 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 a 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".

As in this case, if the answer to the initial question is in the negative (i.e., the claimed invention is not for a mere scheme or business method), then there is no need to inquire as to whether there is any improvement in the computer, or whether the computer is integral to the invention, rather than acting as a mere tool. This confirms that if the subject matter is not directed to a mere scheme or business method, an improvement in the computer is not required for a computer-implemented invention to be patent eligible subject matter.

This decision also confirms that the role of expert evidence in assessing patent eligible subject matter is limited to placing the Court in the position of the person skilled in the art at the priority date, in order to properly construe the claimed invention.

Further, the decision cautions against prematurely discounting any element of a claim when assessing whether the claim is properly directed to patent eligible subject matter.

The Commissioner had posited that the claims were directed to a mere scheme in the form of a set of game rules, or a scheme for making money. Justice Burley ultimately disagreed with the Commissioner's position and found that the claims were patent eligible subject matter. In particular, the Court found that the present case did not constitute a scheme that had been merely "put into" a computer.

In his reasoning, Justice Burley found that the claimed invention was not directed to a mere scheme, but rather 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 [electronic gaming machine] that functions in a particular way". In doing so, Justice Burley identified the hardware, firmware, and software components present in the claim, including a display, reels, a credit input mechanism, meters, a game play mechanism, and a game controller.

Justice Burley found that "The result is that to the person skilled in the art, the invention may be characterised as a machine of a particular construction which implements a gaming function. It yields a practical and useful result. Simply put, the machine that is the subject of the claims is built to allow people to play games on it. That is its only purpose. In this regard, the physical and virtual features of the display, reels, credit input mechanism, gameplay mechanism and game controller combine to produce the invention. It is a device of a specific character."

The Court also approved of Aristocrat's submissions that identified the danger of "denuding an invention of patentability by prematurely discounting elements of the claim", noting that "Any claim can be stripped back to remove all specific limitations, so that at its core an abstract idea emerges".

Notably, Justice Burley disagreed with the approach to the characterisation of the invention taken by the delegate and the Commissioner, "insofar as they first identify the “inventive concept” and then utilise that concept to conclude that the invention is a mere scheme. That rather puts the cart before the horse."

This is a positive decision for applicants and patentees of computer-implemented inventions in Australia. Hopefully, the characterisation of the substance of an invention will now be approached in a more consistent manner with full regard to all integers of the claim and by first making an assessment of whether the claimed invention is directed to an abstract scheme or business method before seeking to identify any improvement in the computer implementation.