Software patents in Australia after Aristocrat: A guide for European patent attorneys
Under the “any hardware” approach of Duns, endorsed by the EPO Enlarged Board in G1/19 and recently adopted by the UK Supreme Court in Emotional Perception, European patent attorneys are accustomed to crossing the patentability threshold of Article 52 EPC relatively easily. The real contest is inventive step, where the focus shifts to the technical contribution of the invention. In Australian prosecution of computer-implemented inventions, it is not unusual to overcome novelty and inventive step in the first office action response, only to find manner of manufacture still contested several rounds later. The Aristocrat decisions and IP Australia’s updated guidelines have clarified the legal framework considerably but understanding how it differs from the European approach remains essential for any attorney with clients seeking patent protection in Australia.
The Australian framework: A different question at a different stage
Australia has no statutory exclusions equivalent to Article 52(2) EPC. Instead, the Patents Act requires positively that an invention be a “manner of manufacture,” a concept rooted in the Statute of Monopolies of 1623. The modern interpretation was decided in the High Court’s landmark decision in NRDC in 1959, which stated that an invention qualifies if it produces an “artificially created state of affairs” with a “useful result.”
The contrast with the European approach is stark. At the EPO, the Article 52 hurdle is low (almost any claim incorporating a technical element clears it) and the real analytical work happens at inventive step. In Australia, inventive step is less structured and does not follow the formal EPO problem solution framework, in practice presenting a somewhat lower bar than the EPO. The result is that manner of manufacture, not inventive step, is where Australian prosecution of computer implemented inventions is won or lost. Indeed, some inventions that raise no eligibility concerns in Europe will face manner of manufacture objections in Australia.
After a decade of restrictive examination practice in Australia inspired by the UK Aerotel/Macrossan decision the Full Federal Court’s recent ruling in Aristocrat Technologies v Commissioner of Patents [2025] FCAFC 131, subsequently endorsed by the High Court’s refusal of special leave in early 2026, has significantly clarified the position. In summary:
- An abstract idea merely manipulated on a computer is not patentable
- An abstract idea implemented on a computer to produce an artificial state of affairs and a useful result is patentable
- The claim must be assessed as a whole - both inventive and non-inventive features count
- The use of conventional computer technology is not automatically disqualifying
The test is less structured than the EPO framework, and Australian case law on computer-implemented inventions is sparse compared to the rich body of EPO Board of Appeal decisions. In practice, this results in greater examiner discretion and variability of outcomes.
The updated guidelines: Progress and persistent tensions
IP Australia’s updated examination guidelines, published in March 2026, represent a genuine step forward. The guidelines articulate the Aristocrat test, require examiners to assess claims as a whole including non-inventive features, and confirm that the use of conventional computer technology is not automatically disqualifying. They also include a set of worked examples, providing useful reference points for both examiners and practitioners.
However, significant tensions remain. The guidelines introduce the concept of a “relevant” artificial state of affairs (not found in Aristocrat itself) and continue to cite earlier decisions such as RPL Central, Research Affiliates, Dei Gratia and Rokt as useful reference material, despite Aristocrat calling their reasoning into question. Because “artificial state of affairs” remains loosely defined, examiners often continue to rely on these earlier restrictive authorities when assessing computer-implemented inventions.
The net result is that while the legal framework is clearer, examination outcomes for computer-implemented inventions remain inconsistent. The law has moved; examination practice is following, but not uniformly.
Practical takeaways
In practice, success in Australia often turns on influencing how the examiner perceives the invention. A critical first step in the Australian approach is characterisation: the examiner writes a sentence summarising the substance of the invention, and it is against that characterisation that manner of manufacture is assessed. Examiners often default to describing a computer implemented invention as a scheme implemented on a generic computer, which will typically fail.
Push back on unfavourable characterisation
During prosecution, it is important to challenge an unfavourable characterisation by reframing the substance of the invention to emphasise its more technical features. Examiners are required to characterise the invention by construing the claims in light of the specification as a whole, meaning a well drafted specification can significantly influence how the examiner characterises the substance of the invention. Further, Aristocrat requires that due weight be given to those physical elements of the claim which, although non-inventive, are fundamental to the operation of the invention.
Where the examiner has abstracted the invention to a bare idea, pushing back with a characterisation anchored in the concrete technical features of the claim, including any interaction between computer implemented and physical elements, is often the most productive first step. At the drafting stage, including in the specification an explanation of the technical problem addressed, any technical advantage achieved, or the interaction between computer implemented and physical features can help establish a favourable characterisation from the outset.
Focus on concrete technical or physical effects
The most effective arguments link claim features to concrete technical or physical effects, or to the interaction between computer-implemented features and physical elements within the claimed system. IP Australia decisions show that the Patent Office can be persuaded by effects such as improved speed, efficiency, reduced resource usage, improved system behaviour or a tangible physical outcome. Recent decisions illustrating successful approaches include:
| Bio-Rad | Reduced material use in laboratory testing |
| Overcoming architectural constraints in software environments | |
| Apple | Interaction with device hardware to control access or display functionality (noting that broader authentication scheme claims failed where specific sensor and display interaction claims succeeded) |
| UniPark | Software controlling a physical barrier in the real world |
| Hytera | Improved efficiency of a digital communications system |
Demonstrating that the invention produces a concrete effect, whether inside or outside the computer, is generally more persuasive than abstract descriptions of functionality alone. An alternative approach, illustrated by Aristocrat, is to focus on the physical features recited in the claim and their interrelationship with other features, even where those features are conventional in isolation.
Use the updated guidelines and argue by analogy to authority
The updated IP Australia guidelines, together with recent Federal Court and Patent Office decisions, are valuable tools in examination. Examiners frequently reason by analogy, and it is effective to do the same by referring to the worked examples in the guidelines. Improvements in computer operation can be aligned with IBM or Hytera, data structures and interfaces delivering practical utility with CCOM, and software producing real-world effects with UbiPark. These authorities can be used to counter reliance on older, more restrictive cases and to anchor the invention within an established line of patentable subject matter.
Overall, post Aristocrat examination remains highly sensitive to how the substance of the invention is characterised. Specifications that clearly articulate the technical context, the interaction between computer implemented and physical features, or resulting physical effects tend to progress more smoothly.
Conclusion
Australia and Europe are ultimately asking the same question: when does a computer implemented idea become a patentable invention? But they ask it at different stages of prosecution and through different conceptual lenses, and understanding that difference is the key to prosecuting effectively in Australia.
The good news for European attorneys and their clients is that Australia is now genuinely more accessible for computer implemented inventions than it has been for a decade. The practical message is this: while EPO style arguments will often work in Australia, they will not always be sufficient. It is important to push back on overly abstract characterisation of the invention, assert a clear link between the claimed features and a technical effect, map to the growing body of positive examples in the guidelines, and consider more granular detail of technical implementation at the drafting stage.
As the home of Canva, Atlassian and a growing base for cloud computing, Australia is a jurisdiction worth taking seriously as part of a global patent portfolio strategy.
FB Rice’s team includes attorneys qualified in both Australian and European patent law, giving us a particular understanding of the issues facing European firms and their clients. We work closely with European firms to develop Australian filing and prosecution strategies for computer implemented inventions and would be happy to discuss how the post Aristocrat landscape applies to your clients’ portfolios.