Australian Patent Office Clarifies Patent-Eligibility of Computer-Implemented Subject Matter

In July 2016 the Australian Patent Office issued two decisions relating to computer-implemented casino gaming machine technology. In both cases, patent applications relating to electronic slot machines (also known as ‘poker machines’ or, in colloquial Australian, simply ‘pokies’) had been rejected by patent examiners on the basis that they did not claim patent-eligible subject matter.  There were mixed outcomes for the applicants, with the examination decision being upheld in one case, and overturned in the other.

Patent-eligibility of computer-implemented subject matter has long been contentious.  Recent decisions of a Full Bench of the Federal Court of Australia in Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 and Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 have reined-in the scope of patentable subject matter in this technology area.  As a result, rejections of claims for computer-implemented inventions have become far more common at the Australian Patent Office.  However, these two recent decisions represent the first time since the RPL Central decision that the correctness of such rejections has been considered at the Hearing Office level.

A Tale of Two Inventions

In the first case (Konami Gaming, Inc. [2016] APO 46), Konami — better known in the 1980s for developing such classic arcade games as Frogger, Scramble, Time Pilot and Gyruss – sought to patent a new form of matching game. However, while the game-play and payout rules might well be unique, rules for playing games have never, in themselves, been patentable. Konami’s argument that computer-implementation made them so fell upon deaf ears, particularly in view of the fact that the patent specification disclosed nothing unconventional in the machine hardware or the manner of its programming.

In the second case (Aristocrat Technologies Australia Pty Limited [2016] APO 49), casino gaming specialist Aristocrat has had better fortune. The invention claimed in its patents relates not to the rules of any game, but to a new interface enabling players to access a selected game on a multi-game machine. The interface provides a technical advantage, in that it simplifies the process of selecting both a game and a wager amount. While, arguably, a user interface is simply a presentation of information, it has long been established that such subject matter is not unpatentable where the arrangement of the information provides a practical advantage. Furthermore, the particular functionality provided by Aristocrat’s interface, despite requiring only routine programming of a ‘generic’ gaming machine, was found to be unconventional and therefore patent-eligible.

Conclusion – Looking to the ‘Substance’ of the Invention

A key theme that has arisen from recent Australian Federal Court and High Court decisions in relation to patent-eligibility is the need to look beyond the particular form of the patent claims to determine the underlying ‘substance’ of what the inventor has contributed to the art.  Both Konami and Aristocrat claimed methods implemented by programming of otherwise conventional electronic gaming machines. However, these differed in how the true ‘substance’ of the invention was characterised.

These two decisions therefore together provide useful guidance on identifying the substance of computer-implemented inventions in the wake of the Research Affiliates and RPL Central decisions.