A recent hearing decision of Crown Melbourne ([2023] APO 3) by a Delegate of the Australian Patent Office, now on appeal to the Federal Court, brings to light some interesting questions, including the patentability of board games and the role of estoppel in proceedings.
Background
Briefly, the facts of patent application 2020204279 (application) in the name of Crown Melbourne Limited (applicant) are:
- the invention related to an alternative version of the conventional Double Zero Roulette game;
- the application was a divisional application;
- the application had the same claims as the parent; and
- the parent application was refused by a delegate of the Commissioner (see [2020] APO 47), the sole remaining objection being for a lack of manner of manufacture.
Patentability of board games
For context, there are two main types of roulette wheels – American (“Double Zero”) and European (“Single Zero”). The wheels differ in the sequence and number of numbers, with the American roulette having an additional number, the “double zero”.
Double Zero Roulette is unattractive to most Single Zero players because of the order of numbers on the wheel and the available betting options.
The invention aimed to provide a version of Double Zero that was more attractive to the Single Zero market by minimising the differences between the systems. In this regard, the invention comprised a Roulette wheel with the same order of numbers as in Single Zero, but with the addition of the “double zero” placed adjacent to “0” and a wagering table for placing wagers. The invention was designed to preserve the same betting options as available on the Single Zero game, as well as including three betting options lost on a conventional Double Zero game.
The specification as filed had seven claims:
- claim 1 was to a Roulette apparatus comprising a table layout adapted for placing wagers;
- claims 2 to 4 were to a Roulette apparatus comprising a table layout and a Roulette wheel;
- claim 5 was to a method of playing Roulette using an apparatus comprising a table layout and a Roulette wheel;
- claims 6 and 7 were also to a method of playing Roulette using an apparatus comprising a table layout and a Roulette wheel.
The applicant argued, among other things, that the invention did not lie in the presentation of information per se or in any scheme, but rather there was an artificial state of affairs produced to realise the invention. The invention involved carrying out physical steps on a physical product using physical apparatus, to produce a physical and tangible result. The invention was directed to a new combination of known physical elements to produce a new effect, namely, the playing of a new game.
The Australian Patent Office’s view
However, as the Delegate of the Australian Patent Office pointed out, legal precedence has held that games per se are not patentable because a game itself is merely a mental process, abstract idea, or scheme. A game does not become patentable just because it is implemented with the assistance of physical articles (e.g. cards, tokens or a games board) where these physical articles are characterised by intellectual information related to the rules of the game.
Table layout – was characterised as the presentation of numbered spaces. The contribution was the provision of betting options of a modified Roulette game, in a visually similar way to conventional Single Zero Roulette. The arrangement of distinctive marks on the physical surface of the table layout did not serve a mechanical purpose.
Roulette wheel – while the Roulette wheel was a physical device, less weight was attributed to the physical form of the wheel. This was because of its visual similarity to the Single Zero wheel. Also, it was considered that the contribution of the wheel was to present printed matter, where the printed matter provided players with information which was not mechanical in nature. There was no mechanical relationship between the table layout and the Roulette wheel.
Important points – the decision reinforces the difficulty of patenting games that make use of physical articles (e.g. board games). However, it is important to note that, despite legal precedence, a game apparatus may be patentable where it has practical utility other than merely allowing the game to be played and where it fulfils the necessary criteria for patentability (i.e. being new and inventive).
Also worth noting is that board games may be eligible for other forms of protection. For example, certain aspects of a game such as the game board design itself and game pieces may be eligible for design protection, which protects the appearance of a product. Copyright protection of the written rules may also be available.
What about estoppel?
Another issue that is worth considering, especially during prosecution of a divisional with similar claims to one or more rejected parent applications, is that of estoppel.
The issue was discussed in detail in SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited [2016] APO 8. In the present decision, the Delegate did not spend a great deal of time on the issue, other than to state that estoppel does not apply to matters before the Commissioner of Patents. However, a delegate may still have regard to an earlier decision. In this case, given that the applicant’s submissions included arguments that the previous Delegate had mischaracterised the invention, the Delegate informed themselves of and had regard to the earlier decision of the Commissioner.
Although not bound by estoppel, the Delegate of the present decision came to the same conclusion – the invention was not for a manner of manufacture.
Our observations
The applicant’s arguments emphasised that the table and wheel served a mechanical purpose and there was a mechanical effect and thus the invention was more than just non-patentable printed matter. The Delegate, considering the legal principles derived in Myriad, looked to the substance of the invention, concluding that the substance lay in the presentation of printed matter, although the form of the invention was physical.
The sole purpose of the invention was presenting information relating to a game. Therefore, neither the table nor the wheel had a practical and useful result.
In its appeal to the Federal Court, Crown will need to show the substance of the invention is more than just a way of arranging printed matter.
Those who have read the full decision may have noticed that an innovation patent sharing the same independent claim 1 was examined and certified in 2008, with no manner of manufacture objection raised. The great grandparent of the present application, which had the same claims, was examined in 2014 with no objections raised. It did not proceed to acceptance/grant because the ‘694 patent was in force. However, after the ‘694 patent expired, Crown attempted to have the great grandparent accepted, but it was rejected on the grounds that it was not for a manner of manufacture.
It is likely that the subsequent rejection of the great grandparent claim reflects the changing standards at the Patent Office, primarily due to the advent of computer programs.
While we cannot be sure what the future holds for the patentability of board games or for Crown in its ongoing battle, we know, that Crown has appealed the APO’s decision, leaving the alternative Roulette game in limbo for at least 18-24 months.
