IGT had applied for four patents for gaming systems which
operated games of chance. A hearing officer acting on behalf of the
Comptroller General of Patents said that none of the four claims
was patentable because the inventions all fell into areas which
were excluded from patentability by the Patents Act.
The hearing officer said that the inventions fell under the
category of being "schemes, rules and methods for playing a
game".
The Act says:
"It is hereby declared that
the following (among other things) are not inventions for the
purposes of this Act, that is to say anything which consists of –
(a) a discovery, scientific theory or mathematical method; a
literary, dramatic, musical or artistic work or any other aesthetic
creation whatsoever; (b) a scheme, rule or method for performing a
mental act, playing a game, or doing business, or a program for a
computer; (c) the presentation of information; but the foregoing
provision shall prevent anything from being treated as an invention
for the purposes of this Act only to the extent that a patent or
application for a patent relates to that thing as such."
IGT appealed against the hearing officer's ruling, but the High
Court rejected the appeal in relation to all four patent
applications. The Court followed the guidelines laid down in last
year's landmark patents ruling on the Aerotel and Macrossan
cases.
"The important question, following Aerotel, is, so it seems to
me, not whether the subject matter of the claim is patentable and
outside the excluded territory, but whether the contribution over
and above the prior art, assuming that the claim is otherwise
sufficient to result in patentability, is within the excluded
territory," said Justice Warren in his judgment
"The question is whether the contribution identified consists of
excluded subject matter as such. It is fair to note, however, that
Article 52 does not, as it might have done, exclude games per se.
The apparatus for playing a game remains, in theory, patentable,"
he said.
In one of the claims, IGT said that its invention was more than
just a method for playing a game. Justice Warren summarised IGT's
position saying, "the contribution provided by the claimed
invention is thus a new system operable to track machine use … It
is new because it provides a new combination of elements including
a new form of controller, not merely because of the manner of its
use. [IGT's lawyer] says that this is still true even if the
controller could have been implemented using conventional
components. The contribution is not properly to be characterised as
'a mere scheme, rule or method for playing a game as such'."
Justice Warren disagreed. "In my judgment, when the contribution
is understood in the context of the prior art, it is properly to be
seen as a way of operating a game. It is not to be categorised as a
tool for playing a game (any more than the system in Macrossan was
to be seen as a tool in the application of a business method).
Applying the four steps in Aerotel, the contribution falls within
the exclusion," he said.
Similar judgments were given for the three other patent claims,
each of which was said to produce new inventions only in the
excluded field of "schemes, rules and methods for playing a
game".
