A “useful result” for the patentability of computer-implemented inventions in Australia

In Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131 (the decision), the Full Federal Court has provided some much-needed clarity on the subject matter eligibility of computer-implemented inventions (CIIs) in Australia.

Key takeaways

It remains to be seen how the Patent Office will interpret the decision (and whether the decision is appealed). It does, however, seem likely that the decision will support an approach that is more favourable to the patentability of CIIs in Australia.

Two areas of the decision that appear likely to change the assessment of subject matter eligibility for CIIs concern:

1. how to properly characterise a CII; and
2. what is needed for a properly characterised CII to be patent eligible subject matter.

On the first of these areas, the Full Court held that the characterisation of an invention must involve viewing a claim as a whole, encompassing the combination of both inventive and non-inventive elements.

This can be contrasted with an approach of considering the claim features in isolation and raising subject matter eligibility objections based on whether individual features of a claimed invention are (in isolation) considered known or generic, or an approach of discounting from the consideration of patent eligibility the non-inventive elements of the claim.

On the second area, the Full Court adopts an approach of asking whether, properly characterised, a claimed invention is:

(i) an abstract idea which is manipulated on a computer [which is not patentable]; or

(ii) an abstract idea which is implemented on a computer to produce an artificial state of affairs and a useful result [which is patentable].

This can be contrasted with an approach of asking whether an invention can be described as an advance in computer technology or, conversely, an approach in which an invention is found not to be patent eligible because it is considered the implementation of an idea in a computer, using conventional computer technology for its well-known and well-understood functions.

The Full Court’s approach appears to align squarely with the principles set forth by Australia’s High Court in 1959 in National Research Development Corporation v Commissioner of Patents [1959] HCA 67 (NRDC).

The context

The patents considered in the decision relate to an electronic gaming machine (EGM) configured to implement a feature game.

The EGM’s hardware was considered standard, with the differentiating features lying in the (software) configuration of an electronic game controller which included the feature game and configurable symbols for display.

The decision is the latest in a series of decisions concerning the same patents. This case history created procedural complexities for the Full Court. A brief outline of the case history is provided below, however it is relevant to note that:

• The Full Court decided that it was not bound by a previous majority decision of the Full Federal Court (the previous majority decision).
• While the previous High Court decision did not create any binding precedent (due to the High Court evenly dividing on the issue), the Full Court did, of course, consider both the “allowing reasons” of the High Court judgement (i.e. the reasons in the joint judgement that considered the invention to be patent eligible) and the “dismissing reasons” (i.e. the reasons in the joint judgement that considered the invention to be patent ineligible).

Departing from the requirement for an advance in computer technology…

Before considering the Full Court’s approach to determining subject matter eligibility in this decision, a brief note on the approach set forth in the previous majority decision is warranted.

On this, the Full Court noted that despite the High Court’s division on the ultimate finding, all six judges of the High Court were critical of the approach to subject matter eligibility put forward in the previous majority decision.¹

The now rejected approach of the previous majority decision was to ask:²

1. Is the invention claimed a computer-implemented invention?
2. If so, can the invention claimed broadly be described as an advance in computer technology?

If the answer to (b) is no, the invention is not patentable subject matter. Of course if the answer to (a) is no, one must then consider the general principles of patentability.

In the High Court decision, the dismissing reasons criticised this approach as unnecessarily complicating the analysis of the crucial issue as to the characterisation of the invention.³ The rejection of this approach in the allowing reasons was more fundamental:⁴

…the question of whether a claim is for a manner of manufacture should not be deconstructed to require, separately from the general principles of patentability, consideration of whether the subject matter is “computer-implemented”, and instead the implementation of a scheme or idea on a computer (as with any other machine) should create “an artificial state of affairs and a useful result” as propounded in NRDC.

…and returning to the established principles of claim construction and requiring an artificial state of affairs and a useful result

Turning to the correct approach to assessing subject matter eligibility, the Full Court confirms that:

• the first step in analysing subject matter eligibility is to characterise the claimed invention; and
• characterisation of a claimed invention must involve consideration of the invention as a matter of substance and requires construction of the claim in light of the specification as a whole and common general knowledge.⁵

The Full Court then stated agreement with the characterisation of the invention in the High Court’s allowing reasons. Specifically, the Full Court regarded the characterisation set forth in the allowing reasons “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 Full Court further considered that 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”.⁶

Having characterised the invention, the Full Court also agreed with the approach to determining the eligibility of an invention (once properly characterised) set forth in the allowing reasons⁷:

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.

The Full Court found this approach to be better aligned with the seminal reasoning of NRDC and the decisions which have followed it.⁸

Against this background, the Full Court found that each claim under consideration was a combination claim including interdependent integers, and that properly characterised each claim produced an artificial state of affairs and a useful result.

In line with alternative (ii) above, therefore, the Full Court found that the claims were directed to patentable subject matter.⁹

Potential impact on Australian patent examination

Over recent years, the Australian Patent Office’s approach to examining the subject matter eligibility of CIIs has often involved:

1. identifying the substance of an invention based on its contribution to the art; and
2. asking whether that substance solves a technical problem or provides an improvement in computer technology.

In some cases, seeking to identify an invention’s contribution to the art has led examiners to isolate the distinguishing features of a claimed invention from any known features, and the claimed combination as a whole.

The reasoning in this latest decision indicates that the preferred approach to characterising a claimed invention is one that reflects the claim viewed as a whole, encompassing the combination of both the inventive and the non-inventive elements.

Additionally, the Full Court’s preferred approach of looking for an artificial state of affairs and a useful result appears broader – or, at the very least, different – to an approach that requires an improvement in computer technology.

The Australian patent office has released a statement indicating the Commissioner of Patents will carefully review and consider necessary changes to practice.¹⁰

Precisely how examination practice may change is yet to be seen. In our view, however, this decision should result in fewer patentable subject matter eligibility objections to CIIs.

The timeline

A brief history of the present decision is as follows:

• 2018 – After examination and rejection of the claimed invention at a Patent Office hearing (Aristocrat Technologies Australia Pty Limited [2018] APO 45), Aristocrat appealed the Patent Office’s decision to the Federal Court.
• 2020 – In the first instance Federal Court decision (Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778, PJ1), the primary judge found representative Claim 1 of AU2016101967 (the 967 patent) to be patentable subject matter, along with the rest of the claims in all of the patents being considered.
• 2021 – On appeal (Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202), the Full Federal Court overturned the first instance decision. Both the majority decision and the minority decision found that Claim 1 of the 967 patent was not patentable subject matter, albeit for different reasons. The majority decision remitted the case to the primary judge to consider the patentability of the residual claims, but consideration of these residual claims was paused by appeal of the decision regarding Claim 1 of the 967 patent to the High Court.
• 2022 – The High Court, in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29, was split 3:3, with half the six member bench considering that the invention was patentable subject matter (the allowing reasons), and the other half considering the invention was not patentable subject matter (the dismissing reasons). Given the High Court’s even split, no binding precedent was created and, by way of procedural expedient, the majority decision of the Full Federal Court was affirmed. This was a final determination in respect of Claim 1 of the 967 patent.
• 2024 – The primary judge, in Aristocrat Technologies Australia Pty Limited v Commissioner of Patents (No 3) [2024] FCA 212 (PJ2), was bound by the majority decision and as such found the residual claims to not be patentable subject matter.
• 2025 – In this latest decision, Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131, the Full Court rejected the reasoning of the majority decision, unanimously finding the residual claims to be patentable subject matter. As Claim 1 of the 967 patent had been finally determined by the High Court, the Full Court could not revisit this claim/find it patent eligible. Notwithstanding this, the Full Court noted that if it had been able to decide on Claim 1 of the 967 patent it would have found it patent eligible.¹¹

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