Australian software patentability still a lottery – 20 August 2015
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The patentability of inventions characterised by computer implementation remains uncertain under Australian law. A recent decision [1] (Aristrocrat v Konami) of the Federal Court of Australia [2] in respect of a computer-implemented invention provides only brief guidance on the topic and is difficult to reconcile with earlier authorities, although it does provide hope for patentees with computer-implemented inventions.
The Australian software community is eagerly awaiting the Full Federal Court’s [3] decision in respect of RPL [4] (previously discussed here and here) which will hopefully clarify the situation for all. In the meantime, Aristocrat v Konami includes [5] the following brief remarks in rebuttal to argument to effect that the claims did not define a manner of manufacture (i.e. did not define patentable subject matter):
‘A mere idea that does not translate into a claim for a new and useful result is not within the concept of a manner of manufacture because it involves no more than “mere discovery” or “discovery without invention”. However, the inventions claimed in the 689 patent are not “mere ideas” but new and useful gaming machines and new and useful methods of operation producing new and improved results’ (citations omitted).
The 689 patent included the following claims:
‘1. A random prize awarding feature to selectively provide a feature outcome on a gaming console, the console being arranged to offer a feature outcome when a game has achieved a trigger condition, the console including trigger means arranged to test for the trigger condition and to initiate the feature outcome when the trigger condition occurs, the trigger condition being determined by an event having a probability related to desired average turnover between successive occurrences of the trigger conditions on the console.
…
25. A gaming console including a prize awarding feature to produce a feature outcome, the console being arranged to offer the feature outcome when a game has achieved a trigger condition and including trigger means arranged to test for the trigger condition and to initiate the feature outcome when the trigger condition occurs, the trigger condition being determined by an event having a probability related to desired average turnover between successive occurrences of the trigger conditions on the console.
…
43. A method of awarding a prize on a gaming console, the console being arranged to offer a feature outcome when the game has achieved a trigger condition, the method including testing for the trigger condition and when the trigger condition occurs offering the feature outcome, the trigger condition being determined by an event having a probability related to desired average turnover between successive occurrences of the trigger condition on the respective console.
…’
Whilst the word ‘computer’ does not appear in these claims, it is difficult to view them as anything other than claims to a computer implementation of a scheme that would be not be patentable if implemented by a human. Thus there appear to be parallels to the computer-implemented calculation of a share market index held by the Full Federal Court to be unpatentable in Research Affiliates [6].
We now eagerly await further clarification from our Courts. In meantime, the practical guidance on software patentability that we outlined almost two years ago now remains current.
It is also worth bearing in mind that computer implementations of patentable methods are (generally speaking) patentable. Controversy arises when a claim is characterised by computer implementation and/or is to a computer implementation of a mere scheme (such as of a business method). We have previously discussed (here) the example in the New Zealand Patents Act 2013 of a patentable computer-implemented method that causes a washing machine to get clothes cleaner and use less electricity (here). Such a method would likewise be patentable in Australia.
[1] Aristocrat Technologies Australia Pty Limited v Konami Australia Pty Limited [2015] FCA 735
[2] The Court of first instance for Australian patent matters
[3] The Court of first appeal for Australian patent matters
[4] An appeal from RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871
[5] At paragraph 223
[6] Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150
