IGT v The Comptroller General of Patents

Patentability of computer-implemented gaming inventions is determined by identifying the actual contribution made to the prior art and asking whether that contribution consists of excluded subject matter as such. The structured four-stage approach requires the court to construe the claim, identify the actual contribution, determine whether it consists of excluded subject matter, and perform a technical-contribution cross-check. A conventional computer programmed with new software is not patentable merely because it performs a new function. Where the contribution lies solely in a scheme, rule or method for playing a game, the exclusion applies. A new physical combination of hardware may produce a different result, but software operating on conventional hardware does not thereby become a patentable gaming apparatus.

IGT appealed against the decision of a hearing officer refusing four patent applications concerning networked gaming systems and bonus games. The applications were refused under section 1(2)(c) of the Patents Act 1977 because the claimed inventions were schemes, rules or methods for playing a game. The claims involved, among other matters, allocation of bonus entries, player selection and timing controls, challenge games, and continuing bonus games with changing displays.

The central issues were the correct application of the approach in Aerotel Ltd v Telco Holdings Ltd and whether the claimed software-controlled functions constituted patentable technical apparatus or contributions lying solely within the gaming exclusion.

1. Appeal dismissed. Each application was excluded from patentability under Article 52(2) of the EPC and section 1(2)(c) of the Patents Act 1977.
2. The four-stage approach in Aerotel Ltd v Telco Holdings Ltd was binding. The court must construe the claim, identify the actual contribution, ask whether that contribution consists of excluded subject matter as such, and check whether it is technical. The fourth stage is a necessary cross-check, but the decisive question is ordinarily whether the contribution lies solely in excluded subject matter.
3. The exclusions were not confined to abstract or intellectual activities. A specific method of doing business or playing a game could fall within the exclusion. Improving player interest or interaction did not necessarily provide a technical solution, since the same objective might be achieved by changing the rules or method of play.
4. The distinction between a new physical combination of hardware and new software operating on conventional hardware was material. The contribution in Aerotel Ltd v Telco Holdings Ltd was a new physical combination of hardware. In the present applications the hardware and its architecture were conventional and the novelty lay in software.
5. For each application, the alleged advance concerned how the bonus game operated: allocation and balancing of entries, player-controlled selection and timing, challenge and response rules, or entry into and exit from a continuing bonus game. The display and mode-switching features were inextricably linked to gameplay. Those contributions therefore lay solely in the excluded field and did not constitute a technical contribution outside it.
6. The court agreed with the hearing officer’s conclusions and reasoning. IGT’s appeals were dismissed.

• High Court (Patents Court): Mr Justice Warren dismissed IGT’s appeals against the hearing officer’s decision dated 27 July 2006.
• Patent Office: the hearing officer refused four patent applications under section 1(2)(c) of the Patents Act 1977.