The Full Court of the Federal Court of Australia (FCFCA) – the first appellate level in the Australian Federal Court system – has recently issued an important decision on the eligibility of computer-implemented inventions (CII). The decision in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (Aristocrat) may significantly ease the patent prosecution burden of applicants in the CII practice area.
Summary
In recent years, Australia has gone from being one of the most accommodating jurisdictions for CII patents to one of the most challenging. This shift is particularly evident in the case for the implementation of an idea using generic computing means, with applicants often required to demonstrate that their invention makes an improvement in the computer technology used to implement that idea.
The introduction of a new Aristocrat test has adjusted the eligibility criteria – it now requires “an artificial state of affairs and a useful result”. This is likely to make it easier to progress applications using regular computing components in innovative ways.
The Australian Patent Office (IP Australia) has indicated that updates to the examiner guidelines should be provided later this month.
What constitutes eligible subject matter?
An earlier decision in the Aristocrat case required CII inventions related to the computer implementation of an idea to define an improvement in computing technology. Following that decision, Australian patent examiners have often objected that many CII inventions are simply abstract ideas implemented on generic computing technology and therefore not a manner of manufacture – Australian parlance for eligible subject matter. Such objections have been challenging to address and often required amendment to include narrow technical features to demonstrate an improvement in the computer itself.
In the latest Aristocrat decision, the FCFCA stated that:
…it is too rigid and narrow an approach to say that the implementation of an idea in a computer, using conventional computer technology for its well-known and well-understood functions, cannot constitute a “manner of manufacture”.
The Court instead adopted a more flexible approach asking whether the claimed invention is:
- an abstract idea which is manipulated on a computer; or
- an abstract idea which is implemented on a computer to produce an artificial state of affairs and a useful result.
The claims of Aristocrat define an electronic gaming machine using conventional computing technology configured to trigger a “feature game” involving configurable symbols associated with variable prize values displayed on a player interface and designed to enhance player engagement. The FCFCA found that the claimed invention produced an artificial state of affairs and a useful result by “significantly enhancing a player’s experience”.
What is an artificial state of affairs and a useful result?
The Court provided further guidance on what constitutes an artificial state of affairs and a useful result, stating this may be:
- a physical change in something, but need not be
- an improvement in computer technology, but it need not be
- created by the way in which the method is carried out in the computer
- need not be inventive or ingenious, in that the ingenuity may lie only in [the application of] the idea.
The Court also provided several examples from previous cases to illustrate what might constitute an artificial state of affairs and a useful result, including:
- a curve drawing algorithm for improved curve image
- characterisation of Chinese character strokes for word processing character selection
- using smartphone signal strength to control user access to a restricted area, enabling the opening of the entry and exit barriers to allow vehicles to pass
- reducing scanning time in a TDMA system in digital mobile radios.
On the other hand, the Court noted that “mere business schemes, and abstract ideas or information” implemented on generic computing technology do not constitute a manner of manufacture.
What next
The examination guidelines are currently under review by IP Australia who have indicated that updates should be published later this month. These updates will provide further guidance on how examination practice will be changed by this most recent Aristocrat decision.
Further advice
If you want advice on how this affects your patent applications, feel free to contact the authors.
