Back in August, the High Court of Australia handed down a ‘decision’ on the patent-eligibility, under the ‘manner of manufacture’ test in Australian law, of claims directed to computer-implemented electronic gaming machine (EGM) technology developed by Aristocrat Technologies Australia Pty Ltd: Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29. Unfortunately, the Court was evenly split, 3:3, on whether or not Aristocrat’s claims were patentable, resulting in the adverse decision of the Full Federal Court being affirmed on a technicality, despite all six High Court judges having criticised the approach taken by the lower court. (See High Court’s Failure Exposes the Festering Eligibility Sore in Australia’s Patent Laws for my analysis of the case.) This left many people scratching their heads trying to work out what effect, if any, the decisions of either the High Court, or the Full Federal Court, might have on the treatment of computer-implemented inventions by lower courts and – more immediately – the Patent Office.
While we are still waiting for a decision in which a single judge of the Federal Court is required to consider whether she or he is bound by anything said by the higher courts in the Aristocrat case, the reaction from IP Australia – following an initial statement that ‘the Commissioner will carefully review the decision and consider its implications’ – has been… silence. There have been no further statements or other communications. There have been no updates to the Patent Manual of Practice and Procedure (a.k.a. the Examiners’ Manual). All indications are that the High Court’s decision has changed nothing.
As further evidence of this, there have now been three hearing decisions on patentable subject matter issued by the Patent Office since the High Court handed down its opinions in Aristocrat. In all three cases, the inventions described and claimed in the patent applications at issue were struck down as not being patent-eligible, for reasons that would have applied equally prior to the High Court decision.