In a recent decision, a Hearing Officer within the Australian Patent Office rejected Australian patent application no. 2018219972, in the name of casino operator Crown Melbourne Ltd, relating to a modified roulette table layout. In particular, the claimed invention was designed to provide a ‘double zero’ roulette game having similar visual appearance and betting options to a ‘single zero’ game, while also offering additional betting options over the traditional ‘double zero’ game. In essence, the modified layout ‘stacks’ the single and double zero boxes at one end of the number grid, instead of placing them side-by-side in the previously-established manner. The application was rejected on the ground that the subject matter of the claimed invention is ineligible for patenting, i.e. is not for a ‘manner of manufacture’ under Australian law. Specifically, the Hearing Officer found that ‘merely presenting a different wagering space layout that does nothing otherwise to the functioning of the apparatus cannot be considered as a physical phenomenon or transformation’, which would have been required for the invention to be patent-eligible.
You might not be surprised by this outcome. Surely – you might think – simply providing a different layout of the numbered boxes on a roulette table cannot be the kind of thing for which a patent may be granted? Traditionally, however, the situation would not have been considered so clear-cut. Changing the layout also changes the wagering options available to players of the game. The layout thus interacts with the rules of the game to change the game itself, arguably producing a ‘new’ game. Throughout most of the history of the Australian patent system, this would have been considered patentable.
But you do not have to take my word for this. The very same claims were previously found to be patentable by the Australian Patent Office! The rejected application is a divisional, the ultimate ancestor of which was application no. 2008203384 (‘the original application’). That application was itself filed in parallel with innovation patent no. 2008100694 (‘the innovation patent’). The innovation patent was examined in 2008, and successfully certified on 5 February 2009. The original application was also eventually examined, and received a clear examination report on 3 November 2014. The only reason the original application did not proceed to acceptance and grant was because the innovation patent remained in force, and section 64 of the Australian Patents Act 1990 prohibits a single owner from being granted two patents simultaneously for the same invention. After the innovation patent expired on 25 July 2016, Crown submitted that the original application should then proceed to acceptance. But, instead, the Patent Office issued an adverse examination report, including the objection that the claimed invention was not a patentable ‘manner of manufacture’.
So, what changed? The law? Patent Office practice? Or something less easily identified?
In this article, I discuss developments over the past 20 years in the patentability of games in Australia. In summary, it seems that as recently as 2003 it was relatively straightforward to obtain a patent for a game, with the overwhelming majority of examined applications being successful. Over time it has become substantially more difficult, although there are numerous examples of a relatively liberal approach by the Australian Patent Office up until at least the early 2010’s. But since 2015 the tide has definitely turned, and patent applications relating to games now fail more often than they succeed. The recent Aristocrat decision provides a glimmer of hope for game innovators, suggesting the possibility of a return to the principle that a working inter-relationship between game apparatus and associated rules of play may be sufficient to support a valid patent. However, with this decision currently under appeal, and the Patent Office applying it narrowly only to certain types of analogous computer-implemented casino gaming systems, the prospects of any significant new liberalisation of examination practice in this area seem limited.