What you need to know (in a nutshell)

1. Australia's High Court recently heard a case about the patentability of computer-implemented inventions - (Aristocrat Technologies Pty Ltd v Commissioner of Patents [2022] HCA 29).

2. The judges were split on the issue, with three ruling that the invention was not patentable subject matter, and three ruling that it was.

3. This decision means that uncertainty continues around the patentability of some computer-implemented inventions in Australia.

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The issue of whether computer-implemented inventions can be patented in Australia has been a source of uncertainty for some time. Recently, the High Court of Australia discussed this issue in a case involving Aristocrat Technologies Pty Ltd. The judges were divided on the issue, leading to continued uncertainty about the patentability of such inventions.

This is the first time that Australia's High Court has considered the eligibility of a computer-implemented invention for a patent. The invention in question was an electronic gaming machine with a unique feature. The court's decision did not provide clarity on the issue, leading to continued uncertainty about the patentability of such inventions.

Unfortunately, the judges on the High Court were split on the issue, with half ruling that the invention was patentable and half ruling that it was not. This means that the appeal was unsuccessful and the uncertainty around the patentability of some computer-implemented inventions continues.

Aristocrat claimed a patent for a gaming machine with standard hardware and a unique feature game. The judges agreed that claims to the rules of a game would not be eligible for a patent, but differed on whether this extended to the claims for the gaming machine itself.

Three judges believed that the invention's character, for the purposes of patent eligibility, came from elements of the claim that were not common knowledge. In this case, those elements related to the operation of the feature game. Therefore, the substance of the claim was not patentable.

The other three judges believed that a characterisation of a claim should include the idea and its implementation. Ignoring the means of implementing the idea, even if those means were common knowledge, could result in an artificially specific characterisation, according to these judges. They believed that an abstract idea implemented on a computer to produce a useful result was patentable subject matter.

This High Court case decision in Aristocrat Technologies Pty Ltd v Commissioner of Patents may affect a wide range of inventions in which the inventive concept is implemented by a general purpose device, such as a computer.

The patentability of computer-implemented inventions in Australia remains uncertain as it has been for many years. The Australian Patent Office will continue to consider claims that are "merely directed to the implementation of an otherwise unpatentable idea in conventional and well-understood computer technology" as ineligible for a patent. It remains to be seen how examination practice will be influenced by the High Court's decision.