The patentable subject matter battle being waged between the Commissioner of Patents and patent applications for the last decade may be taken to the High Court this year.
Following unfavourable opinions in the Full Federal Court of Australia, Aristocrat Technologies Australia Pty Ltd and Repipe Pty Ltd have filed applications for special leave to appeal to the decisions in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 and Repipe Pty Ltd v Commissioner of Patents [2021] FCAFC 223.
Both matters concerned the question of whether the substance of the subject inventions were for patentable subject matter and thus whether the claimed defined a manner of manufacture under s 18(1A) of the Patents Act 1990 (Cth). The Aristocrat case concerned innovation patents for electronic gaming machines (EGMs) and software for providing special feature games while the Repipe case related to the use of GPS-enabled mobile devices for assessing and managing risk management information.
In both cases, the three panel bench of the Federal Court found that the inventions were not directed to patentable subject matter. In
particular, the Justices focused on the distinction between the novel or new use of a computer alone, which is not patentable, compared to the novel use of a computer to advance computer technology.
It is rare for the High Court to grant a special leave for appeal, especially in patent litigation. The last time special leave to appeal to the High Court was sought in a patentable subject matter case was back in 2016 following the decision in Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177. At that time, the High Court dismissed the application for special leave confirming that the Full Court’s decision was correct.
If the High Court were to grant either, or both, applications, it would demonstrate that the High Court is satisfied that the appeal involves a legal error on the part of the Full Federal Court or that the matter is in the public interest.
We expect that the preliminary hearings will be held sometime this year and that a decision on whether to grant the special leave will be handed down within a few months of the preliminary hearings.
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