Aristocrat Technologies Australia Pty Limited - [2018] APO 45

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Aristocrat Technologies Australia Pty Limited [2018] APO 45

Patent:2016101967, 2017101097, 2017101098 and 2017101629

Title:A System and Method for Providing a Feature Game

Patentee:  Aristocrat Technologies Australia Pty Limited
Delegate:  Xavier Gisz
Decision Date:  5 July 2018
Hearing Date:  Written submissions filed on 4 May 2018

Catchwords: PATENTS - section 101B – innovation patents – gaming machines – rules of a game – examiner’s objection – alleged inventions not a manner of manufacture – innovation patents revoked.

Representation: Patent attorney for the patentee: Griffith Hack

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:2016101967, 2017101097, 2017101098 and 2017101629

Title:A System and Method for Providing a Feature Game

Patentee: Aristocrat Technologies Australia Pty Limited
Date of Decision: 5 July 2018
DECISION
The invention claimed in all of the claims of each of 2016101967, 2017101097, 2017101098 and 2017101629 is not a manner of manufacture. Having reviewed the specifications I do not consider it appropriate to provide an opportunity to amend as, in the circumstances of the case, it will serve no useful purpose. The patents are revoked.
REASONS FOR DECISION
Background

Innovation patent 2016101967 is a divisional application of 2015210489. It was filed on 10 November 2016. The innovation patent was granted on 24 November 2016. Examination was requested on 18 October 2017. An adverse examination report was issued on 7 December 2017. A hearing was requested on 2 March 2018. Written submissions were received on 4 May 2018.
Innovation patent 2017101097 is a divisional application of 2017200840. It was filed on 11 August 2017. The innovation patent was granted on 23 August 2017. Examination was requested on 18 October 2017. An adverse examination report was issued on 7 December 2017. A hearing was requested on 2 March 2018.
Innovation patent 2017101098 is a divisional application of 2017200840. It was filed on 11 August 2017. The innovation patent was granted on 23 August 2017. Examination was requested on 21 November 2017. An adverse examination report was issued on 7 December 2017. A hearing was requested on 2 March 2018.
Innovation patent 2017101629 is a divisional application of 2017204560. It was filed on 21 November 2017. The innovation patent was granted on 6 December 2017. Examination was requested on 21 November 2017. An adverse examination report was issued on 16 January 2018. A hearing was requested on 2 March 2018.
All four patents are ultimately divisional from 2015210489 which was filed on 10 August 2015. Thus all four patents have an effective filing date of 10 August 2015.
While the final date to gain certification of the innovation patents would have ordinarily been 7 June 2018 for 2016101967, 2017101097, 2017101098 and 16 July 2018 for 2017101629, since hearings have been requested on the examiner objections the date to gain acceptance has been delayed pursuant to sub-regulation 9A.4(f) pending the outcome of this decision.
A hearing was requested on 2 March 2018. Written submissions were received on 4 May 2018.
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Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2018] APO 45
Decision Date: 5 July 2018

CaseChat Overview and Summary

The case before the court involved a dispute between Aristocrat Technologies Australia Pty Limited and an examiner of innovation patents. The dispute centred around the validity of several innovation patents held by Aristocrat, which pertained to gaming machines. The matter was heard in the Federal Court of Australia. The primary issue before the court was whether the alleged inventions in question constituted a manner of manufacture as required by section 101B of the relevant legislation. The examiner had objected to the patents on the grounds that the inventions did not meet the necessary criteria.

The court was required to determine whether the alleged inventions were indeed a manner of manufacture and, if so, whether the examiner’s objections were justified. The court examined the relevant statutory provisions and considered the nature of the inventions in question. It was necessary to assess whether the inventions related to the rules of a game, which the examiner argued did not constitute a manner of manufacture. The court considered the scope of section 101B and the relevant case law to determine whether the examiner’s objections were valid.

In its decision, the court found that the alleged inventions did not constitute a manner of manufacture as required by the statute. The court held that the rules of a game were not sufficient to meet the criteria of a manner of manufacture under section 101B. Consequently, the examiner’s objections were upheld, and the patents were revoked. The court’s reasoning was based on a detailed analysis of the statutory provisions and the specific nature of the inventions in question. The decision was based on a strict interpretation of the relevant legislation and a consideration of the case law in this area.

As a result of the court's decision, the patents held by Aristocrat Technologies Australia Pty Limited were revoked. The examiner's objections were upheld, and the patents were found to be invalid. The decision provides clarity on the scope of section 101B and the types of inventions that may be protected by innovation patents in Australia. The outcome of this case is likely to have implications for future patent applications in the gaming industry and beyond.

Orders