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Patentable subject matter – a skill game
Dr Qi Zhang
Dr Qi Zhang

A court decision (Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778) was just handed down from the Federal Court of Australia in June on subject matter eligibility of four Australian divisional innovation patents 2016101967, 2017101097, 2017101098, 2017101629 owned by Aristocrat, a world-renowned Australian gambling machine manufacturer. The decision was made in favour of Aristocrat upholding their submissions that the gambling machine as claimed in the innovation patents is a manner of manufacture, and is thus not excluded from patentable subject matter. This is a good result for Aristocrat at least for now as a dozen of other divisional applications of the same parent application 2015210489 (filed in 2015, rejected for being unpatentable subject matter) are now being rejected by IP Australia on manner of manufacture grounds.

Aristocrat had similar experience in the US. The gambling machine was also filed for patent protection in the US, US patent application 14/823,536 (filed in 2015, rejected for being unpatentable subject matter), a continuation-in-part application 15/149,060 (filed in 2016, rejected for being unpatentable subject matter), and a further continuation-in-part application 15/428, 813 (filed in 2017, finally granted in January 2020).

In addition to celebrating another court decision confirming patentability of software-related inventions (the gambling machine as claimed is a mix of hardware and software), we ask the question, why did Aristocrat have to go this far to obtain a favourable decision? The answer to this question is important because most of the applicants of software patent applications don’t have the financial resources of a company as large as Aristocrat. This decision provides actionable steps that both patent attorneys and innovators can take to reduce subject matter objection risk from the outset.

We start the investigation at the decision made by IP Australia rejecting these innovation patents for being unpatentable subject matter, Aristocrat Technologies Australia Pty Limited [2018] APO 45, which Aristocrat appealed.

1. Balance of probabilities

As set out in paragraph [12] of the IP Australia decision, “the standard of proof that applies in the present case is the balance of probabilities. I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can refuse the application.” That is, the Delegate of the Commissioner (or Examiner) judges, when examining a patent application, all the information presented in the patent specification and decides whether an objection including the subject matter objection is more applicable than not. In other words, the more favourable information available in the patent specification, the less likely the Examiner would be to raise an objection. If translated into a first actionable step in the patenting process for patent attorneys and innovators, it is to provide more favourable information in the patent specification with respect to the subject matter objection. Although sometimes it is a bit confusing about what that favourable information could be, IP Australia helpfully gave some guidance in the decision. This guidance relates to technical contribution to the art and support for the contribution and is discussed below.

2. Technical contribution to the art

Although the patent specifications of the innovation patents at issue have described how the invention works in detail, there appeared to be less information about the technical contribution (technical advance, effects or improvements) made by the invention to the art.

It was stated in the “background of the invention” part of the patent specification that “[a] need exists for alternative gaming systems” without mentioning throughout the patent specification why an alternative gaming system is needed and why the gaming system as claimed is the desired design. Simply put, the advantage of the invention over prior art was not described as much as perhaps it could have been in the patent specification. Although it makes sense in Australia and the US not to detail prior art in order to avoid the scenario of making the solution appear obvious in light of the prior art (in hindsight), it is still necessary to emphasise the technical contribution made by the invention to the art.

This is particularly important for software inventions because technical contribution is one of the key elements which the Delegate bases the subject matter assessment on. In this case, the Delegate identified in paragraphs [46] – [54] a series of aspects in the invention but concluded that none of the aspects provides a technical contribution to the art. Aristocrat also listed a series of aspects (a) to (g) in paragraph [55] that they believe to be the technical contributions to the art, but none of them was accepted by the Delegate:

To the extent that it is necessary to identify a “technical contribution”, “technical effect”, solution of a “technical problem” or “improvement in computer technology”, the inventions of the Subject Patents confer at least the following technical advantages:

  1. A gaming machine incorporating a specific physical arrangement of components and providing a new feature game;
  2. The feature game of the invention may be triggered from any base game and other feature game and initiated across a range of gaming machines and systems. This flexibility confers substantial technical and non-technical advantages for game designers and operators (i.e., licensed venues), including cost savings and design efficiencies;
  3. The configurable symbols, having the multiple functions described, confer substantial technical advantage, in that they allow those functions to be achieved with a smaller set of symbols;
  4. The ability to award prizes of different types and values using the configurable symbols confers substantial technical advantage, in that the game designer can more readily implement the desired features of the gaming machine including achieving the theoretical return to player (RTP). This also has the benefit of not affecting the underlying base game pay structure;
  5. The visual indication of guaranteed prize values to players confers substantial technical and non-technical advantages, in that players are instantly notified of the winnings in the feature game, and they achieve satisfaction from that knowledge, including by visually informing the player of potential winnings;
  6. The independent reels feature (para 31 above) confers substantial technical advantage, in that the game designer can implement with greater precision the required theoretical RTP. Further, it allows the invention to be overlaid and applied across existing base games;
  7. The HYPERLINK feature confers substantial technical advantages described in Aristocrat ’15 at [55].

The second actionable step is for patent attorneys and innovators is to think deeply about the problem in the art and identify the technical contribution of the invention they are working on. The technical contribution needs to be clarified in the patent specification in the first place to shift the balance of probabilities in the applicant’s favour. This will make responding to the Delegate/Examiner much easier.

3. Support for the contribution

Simply stating one or more features of the invention is a technical contribution will not suffice. In order for the Delegate to accept a feature as a technical contribution, there has to be support for it in the patent specification. As set out in paragraph [64] of the IP Australia decision, “As noted above, the assertion of ‘design efficiencies’ such as “implement[ing] with greater precision the required theoretical RTP” is not supported by the description.” Similar comments can also be found in paragraphs [58] and [60]. This means that the Delegate did not find the information in the patent specification that explains why “design efficiencies” can be improved with the invention.

The finding of lack of support is not rare during patent examination. For example, sometimes innovators simply claim that their algorithm is faster, securer, etc. as technical contributions, but fail to clarify what features in their invention lead to the faster and securer algorithm. Patent attorneys need to dig further by asking why it is faster and securer. If what makes the algorithm run faster is simply to have it executed by a more powerful CPU (instead of for example less usage of memory by the algorithm) or what makes it securer is simply to run it in a secure environment (instead of for example involving a new cryptography method), then the technical contribution of the invention might not be the algorithm per se but the unique way of interacting with the more powerful CPU or the secure environment.

Clearly, the thought process of identifying support for the technical contribution also allows more accurate characterisation of the technical contribution of the invention. Of course, being a bit general is also a strategy to provide a broad interpretation of the invention, but there still needs to be sufficient information (for example, more embodiments) in the patent specification to support the broad interpretation on balance of probabilities. Therefore, the third actionable step is for patent attorneys and innovators to spend more time on identifying the details that support the technical contribution claimed and clarify those details in the patent specification.

An example

Australian innovation patent 2018100463 is a certified software patent in relation to language processing, which we drafted recently following the above steps for a start-up company in Sydney. We had multiple discussions with the inventor about the software when preparing the patent specification in order to reduce the subject matter risk. It was certified without a subject matter objection raised during certification.

When patent attorneys and innovators take the above actionable steps, a robust a patent specification as possible will result. This saves on time and costs.

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About the author
Dr Qi Zhang
Principal, Patent & Trade Mark Attorney
Dr Qi Zhang is a patent and trade mark attorney specialising in mobile communications, electrical engineering and software. Qi is based at Baxter IP's Sydney Office.

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