Patentability of Software may be revisited in Australia
The High Court of Australia could get another chance to rule on the patent-eligibility of software.
The Federal Court of Australia, on 30 August 2024, has given Aristocrat Technologies leave to appeal an earlier decision in which the Federal Court allowed the revocation of Aristocrat’s four patents for electronic gaming machines after the Australian Patent Office found they did not claim patent-eligible subject matter.
The last (and only) time the High Court ruled on the patentability of software was in 2022—that case caused general perplexity when the Court delivered two equally divided opinions, with three justices finding the invention was patent-eligible and three finding that it was not… the seventh justice was on sick leave.
In the aftermath, legal professionals speculated that common principles might still be drawn from the High Court’s two opinions that would be binding on the lower courts. The Federal Court has since refuted those speculations, so that, for all intents and purposes, it is as if the High Court 2022 case never happened.
The four patents subject to the current appeal are the same patents that the High Court ruled on in 2022. At the time, the Court only considered claim 1 of the patents; the claims in question now are the dependent claims.
All four patents are related. They describe electronic gaming machines, such as poker machines, programmed to trigger a bonus game during the playing of a base game. While the invention as claimed includes various hardware components, its novelty lies in the software functions. Earlier in 2024, the Federal Court ruled the invention was not patent-eligible because the software did not constitute an “advance in computer technology”, a standard which all six High Court justices criticised in 2022.
Aristocrat will now be able to seek appeal directly to the High Court. While the invention in question is substantially the same as the invention the Court considered in 2022, the High Court’s bench has since changed, so the appeal is not expected to be a repeat of 2022’s decision.
If the High Court agrees to hear the appeal, there is a possibility that it will clarify the principles to be applied when assessing the patent-eligibility of software inventions.
Contact: Dr. Mattia Pagani (mattia.pagani@halfords.com.au)
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