AUSTRALIA Trends and Developments Contributed by: Ben Miller, Stephen Rohl, Katie Pryor and Jenny Wong, Maddocks
of course following the selection of rivaroxaban as a lead candidate. Further, the Full Court confirmed that the “rel- evant expectation” should be measured against the ordinary level of expectation and risk inher- ent in routine work in the field. It is not neces- sary to know a particular outcome at the outset of the hypothetical task. Rather, the Full Court stated the question as whether a person skilled in the art with the relevant CGK would have been directly led, as a matter of course, to develop rivaroxaban in the expectation that it might pro- duce a useful alternative (or better drug than) the existing compounds for the treatment of throm- boembolic disorders. In the absence of any evidence of any particu- lar problem or difficulty overcome in arriving at a suitable formulation (using a standard wet granulation process) or an (obviously desirable) once-a-day dosing regimen, the Full Court found that these matters would have been arrived at in the course of conventional clinical trials. Bayer has applied to the High Court of Australia for special leave to appeal. Aristocrat special leave application As the authors reported on in the 2024 Trends & Developments chapter in this guide, whether computer-implemented inventions are patent- able subject matter (a “manner of manufacture”) remains a contentious issue under Australian law following the High Court’s decision in the ongo- ing litigation between Aristocrat Technologies Australia (Aristocrat) and the Commissioner of Patents. This year, the matter made its way to the High Court for a second time. This litigation concerns a single patent claim that the parties agreed was representative of
Aristocrat’s other electronic gaming machine (EGM) claims. The invention, as claimed, was not simply to a novel feature game but to an EGM comprising physical parts (including a display, a game controller comprising a proces- sor, and a game play mechanism comprising a plurality of buttons) and the operation of which involves the novel feature game. In 2021 the Full Court of the Federal Court of Australia in Com- missioner of Patents v Aristocrat Technologies Australia [2021] FCAFC found that Aristocrat’s patent lacked patentable subject matter, but that residual issues, including the other patent claims, be remitted back to the primary judge. Subsequently, Aristocrat obtained special leave to appeal to the High Court of Australia. In unu- sual circumstances, only six justices sat on the High Court and delivered an evenly split 3:3 judg- ment in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2022) 274 CLR 115. Kiefel CJ, Gageler and Keane JJ gave dismiss- ing reasons, finding that the claimed invention did not produce an adaptation or alteration of, or addition to, technology and was simply the implementation of a new idea, namely a feature game, using old technology. In contrast, Gordon, Edelman and Steward JJ would have allowed the appeal, finding that the invention created an artificial state of affairs and a useful result, and considered that the general principles of patent- ability should not be applied differently simply because the subject matter is “computer imple- mented”. As a result of the evenly split decision, the out- come of the High Court decision was that the Full Court decision was affirmed, per Section 23(2)(a) of the Judiciary Act 1903 (Cth) (Judiciary Act), and the case was remitted back to Justice Burley for consideration of the “residual issues”. In his decision on 12 April 2024, Aristocrat Tech-
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