Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd

In the case of Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd, the court was asked to determine the patentability of an innovation patent application for electronic gaming machines (EGMs) and methods for providing feature games. The central issue was whether the invention claimed in the patent was to a "manner of manufacture" within the meaning of section 18 of the Patents Act 1990 (Cth). The court also had to consider whether the primary judge's two-stage inquiry for patentability was appropriate. The primary judge had concluded that the claims were to a manner of manufacture and therefore not patentable.

The Full Court found that the primary judge's two-stage inquiry was flawed as it did not adequately address whether the invention was a computer-implemented scheme or set of rules. The court emphasised that the substance of the invention, as described and claimed, resided in the game program code embodying a computer-implemented scheme or set of rules for playing a game. The EGM described in the specification was either a computer or an apparatus incorporating a computer, but the analysis did not change because the invention's substance was in the game program code. The Full Court concluded that the invention did not constitute an advance in computer technology and was therefore not patentable.

The Full Court allowed the appeal and set aside the orders made on 10 July 2020. The matter was remitted to the primary judge to determine any residual issues in light of the Full Court's reasons, including any issues concerning claims other than Claim 1. The parties were directed to file agreed minutes of order within 14 days, or if there was disagreement, short written submissions and minutes of order, which the court would determine on the papers.