Three years ago, the High Court’s equal division in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 (reported here) left Australia without binding guidance on the patentability of computer implemented inventions. Under section 23(2)(a) of the Judiciary Act, that 3:3 split affirmed the earlier Full Court orders but not its reasons, so no precedent was set and uncertainty persisted for software and digital innovation.
The case returned to the Federal Court for Burley J to address residual issues, but he dismissed the appeal, bound by the Full Court’s earlier reasoning. Aristocrat then obtained leave to appeal. The Full Court has now resolved the appeal in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131 (16 September 2025).
In this latest decision, the Full Court adopted the reasoning of Gordon, Edelman and Steward JJ from the High Court’s earlier split decision (‘the allowing reasons’), which recognised that claims directed to an electronic gaming machine with a feature game can constitute patentable subject matter [127]:
“In our respectful view, the characterisation adopted in the allowing reasons (at [149]) is to be preferred. We regard that characterisation as better reflecting the integers of the claim viewed as a whole, encompassing the combination of both the inventive and the non-inventive elements. The characterisation adopted in the allowing reasons (at [149]) reflects the emphasis in the specification not just on the feature game but also on the function and display of configurable symbols in relation to the feature game, and the integration of those elements in the interdependent player interface and game controller. The allowing reasons refer (at [137]) to expert evidence before the primary judge that the configurable symbols, particularly the prize values overlaid on them, are a significant enhancement of a player’s experience. Further, the allowing reasons (at [137]) point out that the configurable symbols and the feature games require implementation in the EGM, and in the operation of the EGM, they interact with, and are entirely dependent upon, other integers of the claim, especially the physical integers, and therefore are inextricably connected with the player interface. The characterisation adopted in the allowing reasons does not give undue or preponderant weight to the inventive aspects of the claim over the non-inventive aspects, and gives due recognition to those physical elements which are non-inventive yet fundamental to the operation of the EGM.” (Emphasis added)
For much of the last decade, a line of Full Court authorities has been that merely implementing a business scheme on a generic computer is not enough. In RPL Central, after emphasising that there must be more than an abstract idea and that the computer must be “integral to the invention, rather than a mere tool”, the Court stated:
“Where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to ‘put’ a business method ‘into’ a computer to implement the business method using the computer for its well‑known and understood functions.” RPL Central at [96]
That passage became a touchstone and was later endorsed in Encompass at [95] and Rokt at [84], and it informed the earlier Full Court majority’s two‑step approach in Aristocrat (asking first whether the invention is computer‑implemented and second whether it advances computer technology) [23].
Returning to NRDC and first principles, the Full Court in Aristocrat [2025] FCAFC 131 states [131]:
“In our respectful view, 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”. We respectfully agree with the view expressed in the allowing reasons (at [122]) that a better way of expressing the point in such cases is to ask whether, properly characterised, the subject matter that is alleged to be patentable is: (i) an abstract idea which is manipulated on a computer; or (ii) an abstract idea which is implemented on a computer to produce an artificial state of affairs and a useful result.” (Emphasis added)
The Full Court noted that there does not need to be an ‘advance in computer technology’ and the artificial state of affairs need not be a physical change; it is enough that the way the method is carried out in the computer produces the artificial state of affairs and a useful result [76].
Using that lens, the Full Court noted that the results in the earlier refusal cases remain correct because the claims there merely used a machine to manipulate an abstract idea, rather than implementing the idea to produce the requisite artificial state of affairs and useful result. These include: Grant (asset protection scheme), Research Affiliates (non‑capitalisation weighted index construction), RPL Central (competency assessment scheme), Encompass (business intelligence display method), and Rokt (marketing scheme), Repipe (GPS‑enabled risk information) and Dei Gratia (logistics method).
By contrast, examples where the claim does implement the idea to produce an artificial state of affairs with utility include IBM (applying a formula to generate an improved curve image), CCOM (the keyboard and software interplay produced a practical selection mechanism for word processing), UbiPark (system using signal strengths to control opening of barriers), and Motorola v Hytera (TDMA radio scanning method reducing scan time).
In this case, the Full Court agreed with the characterisation of claim 1 as:
“an EGM incorporating an interdependent player interface and a game controller which includes feature games and configurable symbols.” (Allowing reasons at [149])
The Full Court preferred that characterisation and applied it by analogy to the residual claims. It accepted that the feature games and configurable symbols are not free‑standing rules but are implemented through and “inextricably connected with” the machine’s interface and controller, creating a concrete digital state with economic utility. This is considered a manner of manufacture.
The Full Court also relied on the allowing reasons’ common sense principle of parity:
“in the 21st century … it would be absurd if the application of that principle were any different where the idea of the game is combined with a digital representation rather than a cardboard representation of the game.” (Allowing reasons [119])
The decision signals a return to the broad NRDC first principles approach, which offers greater flexibility in assessing whether a computer‑implemented invention qualifies as patentable subject matter. This shift is a positive development for software and digital innovation in Australia. The Commissioner may seek special leave to appeal to the High Court, so this may not be the final word.
