As has been widely reported, including in our earlier article, the Full Federal Court has recently decided1 that an otherwise conventional gaming machine configured to run a new game type is patentable subject matter. Whilst there is the prospect of an appeal to the High Court, it is also possible that this decision will serve as guidance for the future on the patentability of both gaming machine inventions and other inventions implemented in whole or in part by a computer.
The formulation
A key reason for the decision that the invention is patentable subject matter was a finding by the Court that the invention, properly characterised, was not merely an abstract idea manipulated on a computer. Instead, the invention involved an artificial state of affairs and a useful result. This formulation alone has little practical value if one is seeking to apply the reasoning in Aristocrat to other computer-implemented inventions. However, the context for the formulation provides valuable insight.
What was relevant to the inquiry into an artificial state of affairs and a useful result?
The inquiry into the existence of an artificial state of affairs and useful result is attributed to a High Court decision2 from 1959. The High Court also referred to the distinction between a process or product that is part of the useful arts rather than the fine or intellectual arts. This distinction provides more flavour for what is meant by “artificial” and is reflected in the example cases discussed below.
When considering whether the invention in issue involved an artificial state of affairs and a useful result, the Full Court referred to several factors:
- Evidence that the game type is a significant enhancement of a player’s experience.
- The aspects of the game of configurable symbols and feature games are inextricably connected with the player interface; they require implementation in the gaming machine and interact with and depend on the physical parts of the gaming machine.
- Due recognition must be given to the non-inventive aspects of the claim, in addition to the inventive aspects. (It was common ground that the physical parts of the gaming machine were non-inventive aspects of the claim.)
Referring to these factors, the Full Court adopted a characterisation of the invention formulated by three members of the High Court in an earlier decision of “an EGM incorporating an interdependent player interface and a game controller which includes feature games and configurable symbols”. Evaluating the character of the invention as stated, the Court found the invention to be patentable subject matter.
The interdependency between the player interface and the function of the gaming machine (EGM) seems to have played a significant role in the decision. Given the evaluation of the gaming machine invention was with reference to case law discussing computer-implemented inventions, this may be readily extended to inventions in which there is an interdependency between other user interfaces and the operation of a computer. The application of this reasoning to other areas is discussed further below.
What was not relevant?
The Full Court referred with general disapproval to considerations of whether there was an improvement in computer technology or something new and unconventional in computer use. The Court was of the view 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 patentable subject matter. This aligns with, and perhaps follows from, the point that due recognition must be given to the non-inventive aspects of the claim.
Both from the statement itself and read in context, the court was clear that this does not open the floodgates for all manner of computer-implemented innovations. Whilst the approach may be “too rigid and narrow” for general application, the Court endorsed the outcome of the decisions that applied this approach, including Commissioner of Patents v RPL Central Pty Ltd. In RPL Central the invention was characterised as a computerised business method or in other words, a business method that was “put into” a computer, whether because it was necessary or advantageous to do so. Accordingly, while putting a method into a standard computer may constitute patentable subject matter, when the method is a business method or something else from the intellectual arts it will not be, unless the invention lies in the computerisation of the business method rather than the method itself.
Returning to the previous cases
As with many concepts, concrete examples help with explanation. Fortunately, the Full Court has continued to endorse the outcome of several previous cases and went further, stating that these cases supported the appropriateness of the formulation they adopted. Therefore, we may consider those cases through the lens of the Full Court’s inquiries in Aristocrat.
Not patentable subject matter
| Characterisation of the invention | Formulation application |
|---|---|
| Protecting assets from unsecured judgment creditors 3 | No artificial state of affairs. There are only legal effects. |
| Constructing data concerning a non-capitalisation weighted portfolio of assets 4 | No artificial state of affairs. This is only an idea for data representing an asset portfolio. There is nothing inextricably connecting the data with the function or physical elements of the computer; the data is only connected with information on the portfolio of assets. |
| Assessing the competency or qualification of people in accordance with recognised standards 5 | No artificial state of affairs. The data that is useful is not interdependent with the function or physical elements of the implementing computer system and is instead only dependent on information. |
| Method and apparatus for displaying information to provide business intelligence 6 | No artificial state of affairs. The computer operates only as the intermediary for the method, which is insufficient interdependence to the function or physical elements of the computer. |
| A marketing scheme for linking a computer user to an advertising message by way of an intermediate engagement offer 7 | No artificial state of affairs. Again, the computer is only the intermediary for the method, which itself is relies only on information of an intellectual nature e.g., user engagement data and attributes. |
| The use of the GPS-enabled mobile devices for dealing with risk management information 8 | No artificial state of affairs. The computer serves only as the intermediary to select and receive the risk management information. |
| An improved logistics method 9 | No artificial state of affairs. The computer operates only to perform calculations to determine collection points and the remainder of claim relates to the transport of goods. |
Patentable subject matter
| Characterisation of the invention | Formulation application |
|---|---|
| A curve drawing algorithm 10 | An artificial state of affairs. The algorithm controls how the computer renders the curve and therefore the useful result of an improved curve is inextricably tied to the function of the computer. |
| A method of characterisation of Chinese character strokes which was applied to an apparatus in such a way that the operation of a keyboard would enable the selection, through a computer, of the appropriate Chinese characters used for word processing 11 | An artificial state of affairs. The data available to the computer when configured with the invention controls how the computer usefully functions to enter Chinese characters for word processing. There is an interdependence between the useful result and the function of the computer. |
| A communications system, computer program and smartphone configured to determine signal strengths of entry and exit signals to control a user’s entry to and exit from a restricted area 12 | An artificial state of affairs, indicated by the useful result of controlled entry and exit. The useful result is inextricably tied to a physical entity, outside of the computer in this case, that controls entry and exit. |
| A method of scanning used in a Time Division Multiple Access system in digital mobile radios to reduce the time required for completing scan operations 13 | An artificial state of affairs. The method is inextricably tied to the function of a device to complete scan operations and is therefore an artificial state of affairs. |
Considering the characterisations of the inventions in the left columns of the tables, the collection of cases intuitively indicates a dividing line between what is patentable and what is not. As it is well settled that any specific rule is likely to have only limited application this intuitive approach may be valuable.
At the risk of associating too much of a rule with the dividing line, the examples suggest that when there is an interdependence or inextricable connection between the useful result of the invention and the operation of the computer or some other physical entity, then there is a likelihood of patentable subject matter. When the connection is no more than the physical elements were a convenient tool or intermediary for dealing with information of an intellectual nature, then it is more likely that the invention is not patentable subject matter.
Conclusion
The Full Federal Court’s decision in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents provides practical guidance for assessing the patentability of computer-implemented inventions in Australia. The Court’s approach emphasises the utility of considering whether there is an “artificial state of affairs” and a “useful result” and that this is likely to be present when the result is inextricably linked to the function or operation of a computer or other physical entity. The decision also reaffirms that abstract ideas or schemes merely implemented on a computer remain outside the scope of patentable subject matter. The Aristocrat decision is likely to influence both current and future patents and patent applications.
1 Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131
2 National Research Development Corporation v Commissioner of Patents [1959] HCA 67
3 Grant v Commissioner of Patents [2006] FCAFC 120
4 Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150
5 Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177
6 Encompass Corporation Pty Ltd v Infotrack Pty Ltd [2019] FCAFC 161
7 Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86
8 Repipe Pty Ltd v Commissioner of Patents [2021] FCAFC 223
9 Dei Gratia Pty Ltd v Commissioner of Patents [2024] FCA 1145
10 International Business Machines Corporation v Commissioner of Patents [1991] 33 FCR 218
11 CCOM Pty Ltd v Jeijing Pty Ltd [1994] 51 FCR 260
12 UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 2) [2023] FCA 885
13 Hytera Communications Corporation Ltd v Motorola Solutions Inc [2024] FCAFC 168
