A SYSTEM AND METHOD FOR PROVIDING A FEATURE GAME

[2021] FCAFC 202 

Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd

The case concerned Electronic Gaming Machines (EMGs). Feature games were implemented in the EGMs to encourage players to keep wagering by making it more interesting to do so.

The majority held that the correct enquiry comprised:

(a)                Is the invention claimed a computer-implemented invention?

(b)                If so, can the invention claimed broadly be described as an advance in computer technology?

The majority found that the substance of the invention disclosed by Claim 1 was the feature game implemented on the computer, which was an Electronic Gaming Machine (EGM).  The substance of the invention was determined as a matter of substance, rather than the specific form of arrangement claimed.

Aristocrat, the respondent, had submitted that in identifying what the substance of an invention is, for the purpose of determining patentability, one was not entitled to disregard those elements which were part of the common general knowledge.  As part of the decision the majority held that in Myriad there was an apparent holding that one may disregard the form of the claims defining the invention to conclude that the invention is something altogether different.  Further the majority found that if one is allowed to proceed in different terms to the claims in the process of characterisation, it is surely permissible to ignore some of the features recited.

It was also noted that care needs to be exercised in considering the substance of an invention not to discount or disregard those integers of the claim which are part of the common general knowledge.  Doing so would avoid an approach that sought to denude an invention of patentability by prematurely discounting elements of the claim.

The appeal was allowed, the substance of the invention was not seen to provide an advance in computer technology.  The invention as claimed in claim 1 was held not to constitute a manner of manufacture.

As an aside, the majority noted that human interactions may constitute an advance in computer technology.  For example, some form of ‘human interactive interface akin to the advance constituted by the touch screen on a mobile phone may well disclose patentable subject matter’.

The majority viewed concepts such as ‘generic’ computer technology as being unhelpful in considering manner of manufacture, for the reason that patentable subject matter may be implemented using generic computer technology.  The CCOM decision was discussed.

The minority decision referred to questions relating to solving a “technical problem” or making some “technical contribution” in a field of technology.  Reference was made to the Encompass decision and whether the invention did or did not ‘transcend, as a matter of substance, what remained an abstract idea or mere information of a kind that has never been considered to be patentable subject matter under Australian law’. It must evolve to an artificially created state of affairs where the computer is integral to the invention.  Advances in computer technology was seen by the majority as being that which transcends.  In the minority decision, reference to fields and technical problems outside the computer were also noted.

The Australian Patent Office Manual notes that ‘If the substance lies in an improvement to the operation of the computer or in the application of the computer to the playing of a game, then the invention may be eligible.  For example, the application of specific networking features to improve communication between game machines.’ 

Examples include: (i) an improved interface that presents an option for selecting both a game and denominations from respective pluralities, with one action by a player; and (ii) a material advantage or technical effect of optimised/improved use of screen space.  The contributions generally must  be technical in nature and achieve a practical and useful result.

 

 

(Numbering and indentation issues may be present below)

Methods and Systems for Providing and Receiving Information For Risk Management in the Field

[2021] FCAFC 223

Repipe Pty Ltd v Commissioner of Patents [2021] FCAFC 223

 

The invention was seen as involving the provision of notifications in the field with changes of authority being responded to dynamically.  The court held that there was no advance in computer technology that overcame a technical problem. Rather the invention was seen as the deployment of existing computer technology for a useful purpose.  It was stated that the invention was not directed to a technical problem that could be understood to lie in the field of computer technology.

Access control (authority) and health and safety management as shown in Figures 1 to 14 was considered deployment of existing technology. Amendments to the claims were refused.

In order to sustain a software patent in Australia there must be something more than the mere use of existing technology. There must be a technical problem and an advance in computer technology.

(Numbering and indentation issues may be present below)

Apparatus for Managing Transportation Vehicles

Amsted Rail Company, Inc. [2021] APO 25

 

The Hearing Officer applied various questions and tests in considering whether the alleged invention met the manner of manufacture requirement.  All the questions and tests were answered in the negative.  The ‘technical feature’ questions were applied as was the ‘substance of the invention’ test.  The Applicant’s submissions made in relation to the advantages were seen to reside more in there being a ‘practical and useful result’ rather than a solution to a ‘technical problem’.  The ‘substance of the invention’ was the overriding test.  The common general knowledge was referred to in arriving at the decision (see Rokt).

In the words of the Hearing Officer: ‘The substance clearly amounts to a scheme for providing vehicle cargo packing slip information and vehicle cargo safety information on a transportation vehicle and allowing remote access of the vehicle cargo packing slip information to only authorised users and remote access to vehicle cargo safety information to other users.  The substance does not result in any technical benefit and amounts to little more than the convenient placement of particular information for remote access to particular persons in a particular environment.’

 

(Numbering issues and indentation issues still to be fixed below)