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Soft decision on computer-implemented inventions

Read time
2  minute read
Date published
18 August 2022

Dr Simone Shu-Yen Lee and Tom Hamilton-Gilligan provide early insights into the High Court’s decision in Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778 (5 June 2020).

Just released is the eagerly awaited High Court’s decision which was expected to finally resolve the contentious patent subject matter issues on computer-implemented inventions in the High Court.

Under the microscope were four innovation patents for Electronic Gaming Machines (EGMs) from Aristocrat Technologies Australia (‘Aristocrat’) which have been the subject of several actions beginning in 2018, with Aristocrat Technologies Australia Pty Limited [2018] APO 45 (5 July 2018), ending most recently with a hearing in the Full Federal Court. The High Court hearing was due to Aristocrat’s appeal to the Full Federal Court decision.

The result: 3-3 split = Dismissal

The High Court dismissed Aristocrat’s appeal. Of the six judges, three would have dismissed the appeal while three would have allowed it, resulting in a 3-3 split in judgement, which by law results in a dismissal of Aristocrat’s appeal.

The nature of a 3-3 split between the judges shows a disagreement on the central premise of the patentability of computer-implemented inventions in general. This certainly reflects the ongoing tension in recent years between the Patent Office and companies who want to protect their computer-implemented inventions such as Aristocrat.

While it was hoped that this High Court Decision would provide some long hoped for clarity on the patentability of computer-implemented invention, we believe this may have little effect on the Patent Office approach. Unfortunately, it appears manner of manufacture issues for computer-implemented inventions will continue to be contentious going forward.

We will be issuing a more detailed review of the decision shortly, to assess whether the broader discussion in this High Court decision can provide any clarification on some of the other minor issues raised in the case.