“Aristocrat strikes back” – A new hope for computer-implemented inventions in Australia

Background and Procedural History

The Aristocrat case has traversed multiple levels of review, including a split decision in the High Court in 2022 (Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29). The central issue was whether Aristocrat's electronic gaming machine (EGM) patents were directed to patentable subject matter (that is, a “manner of manufacture”) under the Patents Act 1990 (Cth). Historically, Australian patent examiners have objected to CIIs that merely implement abstract ideas or business schemes using conventional computer technology, relying heavily on determining whether the invention is “an improvement in computer technology”.

In this latest chapter, the Full Court was tasked with resolving the patentability of certain residual claims after the High Court’s equal division left the previous Full Court decision affirmed by operation of s 23(2)(a) of the Judiciary Act 1903 (Cth). Importantly, in this decision, the Full Court took the opportunity to reconsider its earlier reasoning in light of the High Court’s criticisms.

The decision: a broader test for patentability

The Full Court held that the assessment of CIIs should not be confined to whether the invention constitutes an improvement in computer technology. The Full Court has stated that:

…it is too rigid and narrow an approach to say that the implementation of an idea in a computer, using conventional computer technology for its well-known and well-understood functions, cannot constitute a “manner of manufacture”.¹

Instead, the Court endorses a more flexible test: whether, properly characterised, the claimed invention is:

• an abstract idea which is manipulated on a computer; or
• an abstract idea which is implemented on a computer to produce an artificial state of affairs and a useful result.²

This approach aligns with the “allowing reasons” of the High Court’s earlier decision and reflects the principle that patentable subject matter is not limited to inventions that advance computer technology. In this decision, the Full Court affirmed that “configurable symbols” with variable prize values and “feature games” triggered by specific events produce an “artificial state of affairs and useful result” by significantly enhancing a player’s experience.³

The Full Court also emphasised that an “artificial state of affairs and useful result” may:

• be a physical change in something, but need not be;
• be an improvement in computer technology, but it need not be;
• be created by the way in which the method is carried out in the computer; and
• need not be inventive or ingenious, in that the ingenuity may lie only in the idea.⁴

What this means

The decision provides welcome clarity for patent applicants in the computer science sector. CIIs may no longer need to demonstrate an improvement to computer technology to be considered patentable in Australia. Instead, the decision shifts focus to whether the invention delivers a practical effect or useful result beyond mere financial gain or administrative efficiency.

The Court cited several examples from previous cases to illustrate what may constitute “an artificial state of affairs and a useful result” including:

• improved curve images for computer graphics;⁵
• enabling the appropriate Chinese characters used for word processing;⁶
• enabling the opening of the entry and exit barriers to allow vehicles to pass;⁷
• reducing the time required for completing scan operations.⁸

However, the Full Court cautions that “mere business schemes, and abstract ideas or information”⁹ that are implemented on a computer still do not define a “manner of manufacture” under Australian law.

It remains to be seen how IP Australia will respond to this decision and whether examination guidelines will be updated. While the decision may be a positive step towards promoting innovation in computer science, applicants should continue to ensure that their patent applications include technical detail that highlights practical effects and useful results.

Further advice

If you would like further advice with regards to seeking patent protection of your computer-implemented invention, please reach out to our electrical and computer science team.