Aristocrat Decisions Provide Some Clarity on Manner of Manufacture of Software Type / IT Inventions in Australia

Software Inventions
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  • Barry Meskin - Principal, Patent & Trade Mark Attorney
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Australian Patent Law has typically shown and aversion to ‘pure’ business methods, working directions, mere instructions and the like; these being intangible and incorporeal concepts.  Software related inventions, on the other hand, have previously been able to avoid this exclusion by showing something ‘concrete’ resulting from the working of the software. Specifically, in CCOM v Jiejingi i, the Full Federal Court held that:

“a process, to fall within the limits of patentability………, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art……… – that its value is in the field of economic endeavour.” (emphasis added)

As such, according to this decision, “a computer, when programmed to achieve any result which has utility in the field of economic endeavour” would be patentable.

However, the Australian Patent Office, in an apparent attempt to prevent applicants from merely ‘tech washing’ business methods, requires that the involvement of a computer be more than a ‘merely incidental’ to the purpose of the invention. Specifically, relying on the Australian Patent Office decision in Invention Pathways Pty Ltd (in late 2010), the Examiners require that the:

“concrete effect or phenomenon or manifestation or transformation’ referred to must be one that is significant both in that it is concrete but also that it is central to the purpose or operation of the claimed process or otherwise arises from the combination of steps of the method in a substantial way…” (emphasis added)

As such, if during examination the Examiner formed a view that a computing device is not necessary to achieve the purpose of the claimed invention and that the invention could arguably be performed by other means, such as manually this has resulted in objections being raised that the claimed invention is not a manner of manufacture within the meaning of Section 18(1)(a) of the Patents Act 1990.

There are a number of considerations that may be relevant to whether a computer related invention is in substance a manner of manufacture.  These considerations, appearing in Grant v Commissioner of Patents [2006] FCAFC 120, Research Affiliates and RPL include:

  • whether the contribution of the claimed invention is technical in nature.
  • whether the invention solves a technical problem within the computer or outside the computer or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed.
  • whether the claimed method merely requires generic computer implementation.
  • whether the computer is merely an intermediary or tool for performing the method while adding nothing of substance to the idea.
  • whether the ingenuity in the invention is in a physical phenomenon in which an artificial effect can be observed rather than in the scheme itself.
  • whether the alleged invention lies in the way the method or scheme is carried out in a computer.
  • whether the alleged invention lies in more than the generation, presentation or arrangement of intellectual information.

While these considerations provide some useful guidelines, two decisions relating to gaming machines by the applicant Aristocrat Technologies Australia Pty Limited have provided more concrete examples of what is and what is not considered a manner of manufacture. 

The decisions are:

  • Aristocrat Technologies Australia Pty Limited [2016] APO 49 (Australian Patent Application 2013204646); and
  • Aristocrat Technologies Australia Pty Limited [2017] APO 1 (Australian Patent Application 2014100124). 

Even though both patents deal with similar and closely related technology, the claims of 2013204646 were found to be a manner of manufacture whereas the claims of 2014100124 were found not to be a manner of manufacture. 

A summary of each of the cases is below and may assist in more clearly displaying the current examination practice that the Australian patent office has adopted on the basis of recent case law. 

Aristocrat Technologies Australia Pty Limited [2016] APO 49 / Patent Application 2013204646

The patent disclosed an improved gaming machine interface where a player could select the game they wish to play and the denomination that they want to play using a single touch of the interface. 

A relevant claim defines the invention as follows:

A gaming machine including a controller and a touch sensitive electronic display, the controller being arranged to cause a game selection image to be displayed on the electronic display, the game selection image including a plurality of separate image elements including:

a) a name of a game that is available for play on the gaming machine; and

b) a set of different bet denominations for the game, wherein at least one of the sets of denominations of at least one of the separate image elements is different to the set of bet denominations of at least one other of the separate image elements,

the gaming machine being further arranged to allow a player to select a game and a denomination by touching the touch sensitive electronic display where a respective denomination is displayed.

A representation of the main screen of the gaming machine is shown below.  The means of operation of the screen is explained below as extracted from the patent.

Software Limitations - Example of Patentable Claim

One example of a game selection screen 49 is shown in Figure 4 which offers four games, ‘Queen of the Nile II’, ‘Fortuna’, ‘Wild Panther’ and ‘Indian Dreaming II’ and for each game, discloses a series of denomination button icons 50 for each game, each denomination button icon indicating the value of a single credit for the applicable game. By touching one of the button icons, the player will be able to select the desired denomination of the game applicable to the associated game image.

That is, by touching one button (of any denomination) the player chooses the game they want to play and the denomination in which they want to play it.  This requires one touch as opposed to having to select the game and then the denomination.

The delegate determined that the substance of the invention was an improved interface that presents an option for selecting both a game and denominations from respective pluralities, with one action by a player.  This contribution was found to be “technical in nature, and [achieved] a practical and useful result” and was therefore considered to be a manner of manufacture. 

Aristocrat Technologies Australia Pty Limited [2017] APO 1 / Australian Patent Application 2014100124 

The invention disclosed a gaming machine with a plurality of games on a screen.  The plurality of games that can be played on the machine are arranged such that at least four games of the plurality are divided into two groups of at least two games each, wherein all games of either one of the groups have identical associated sets of denominations and the games of different groups have different associated sets of denominations.  This means that there are two different sets of denominations, one for each group of games. 

The relevant claim is as follows:

A gaming machine comprising: an electronic game controller; and a touch sensitive display that is electrically coupled to the game controller, wherein:

the game controller is arranged to facilitate a play of any one of a plurality of games available on the gaming machine, each of the plurality of games being a spinning reel game of chance;

a first set of a plurality of denominations is associated with at least a first two of the plurality of games, and a second set of a plurality of denominations is associated with at least a second two of the plurality of games, the second set of a plurality of denominations being different to the first set of plurality of denominations; and

the game controller is further arranged to:

cause a simultaneous display of a plurality of separate image elements on the touch sensitive display, wherein separate image elements identify each of the at least a first two of the plurality of games and separate image elements identify each of the at least a second two of the plurality of games;

enable a player to make an initial selection of one of the at least a first two of the plurality of games or one of the at least a second two of the plurality of games by touching the touch sensitive display; and

subsequent to the player making the initial selection of one of the at least a first two of the plurality of games or one of the at least a second two of the plurality of games, enable the player to select any one of the plurality of different bet denominations associated with the selected game by touching the touch sensitive display.

This arrangement is illustrated below where the 1c/2c/5c denomination games are displayed in the first row of games and the 50c/$1 denomination games are displayed in the second row of games.

Software Limitations - Example of Non-Patentable Claim

Separate image elements are displayed on the touch sensitive display, wherein each one of the games in the two groups is identified by a corresponding image element.  By touching the screen, the player selects one of the games (i.e. the game the player wishes to play), the selected game belonging to either of the two groups.  After this selection, again by touching the screen, the player selects one denomination from the set of denominations associated with the selected game.  Therefore to select the game and the required denomination, the player needs to touch the screen twice, once to select the game and a second time to select the denomination.

In this case the delegate considered that the substance of the invention was the specific way in which the games were divided into groups with group-specific associated sets of bet denominations.  The delegate did not consider this substance to produce any technical, practical or useful result, and did not see any improvement in the relevant computer technology and therefore did not consider that this was a manner of manufacture. 

That is, grouping the games into predetermined groups and requiring the player to sequentially select the options was deemed by the delegate to be using computer technology in a known way and was not patentable technology. 

In contrast, the improved interface disclosed in the 2013204646 patent allowed a player to select a game an denomination in one touch (rather than two as in the 2014100124 patent) and was therefore considered a manner of manufacture.

Similarly, where the office believes the substance of the invention lies in the game rules or game play in relation to gaming machines, they do not consider this a manner of manufacture.

Conclusion

In summary, there are a number of aspects to consider in determining whether gaming machines and other software / information technology related claims will meet the test for a manner of manufacture in Australia.  Some non-exhaustive matters to consider are detailed below.

  • there must be more than an abstract idea, mere scheme or mere intellectual information;
  • is the contribution of the claimed invention technical in nature;
  • does the invention solve a technical problem within the computer or outside the computer;
  • does the invention result in improvement in the functioning of the computer, irrespective of the data being processed;
  • does the application of the method produce a practical and useful result;
  • can it be broadly described as an improvement in computer technology;
  • does the method merely require generic computer implementation;
  • is the computer merely an intermediary or tool for performing the method while adding nothing of substance to the idea;
  • is there ingenuity in the way in which the computer is utilised;
  • does the invention involve steps that are foreign to the normal use of computers; and
  • does the invention lie in the generation, presentation or arrangement of intellectual information.

In short, simply putting a business method or scheme into a computer is not patentable unless there is an invention in the way the computer carries out the scheme or method.  When the invention in substance lies in the application of computer technology (for example a technical solution to a technical problem, although not a “business method problem”) or in an improvement in computer technology, it will generally be considered patent eligible, subject to other requirements of novelty and inventive step.