With the Aristocrat saga1 at an end, the Australian Patent Office has updated several chapters of the Patent Manual of Practice and Procedure (the manual).
It will take some time to fully digest the updates to the manual, and there may be further changes to come. Notwithstanding this, the updates look like they will make significant changes to the way that computer implemented inventions are examined and – ultimately – result in fewer subject matter eligibility objections being raised.
Background
As a high-level summary, the most recent events in the Aristocrat saga are as follows:
- Australia’s Full Federal Court found the claims of Aristocrat’s patents (directed to computer-implemented inventions) were directed to patent-eligible subject matter.
- The Commissioner of Patents requested special leave to appeal the Full Federal Court decision to the High Court.
- The High Court refused leave to appeal, finding the decision “applied established principles concerning the assessment of manner of manufacture and reached a unanimous and clear conclusion as to characterisation”.
- In an official notice, the Australian Patent Office indicated they were “working closely with a range of stakeholders and will ensure that our practice, and the Patent Manual of Practice and Procedure, reflects the Full Federal Court’s decision in this matter. ”
- Today, the relevant chapters of the manual were updated.
(For more detailed background on the decision, and request for special leave to appeal, see here, here and here.)
What does the (updated) manual say?
The updated manual appears to be favourable for computer implemented inventions. This is particularly the case for inventions which result in an external artificial effect (i.e. an effect that is outside the computer that is performing the processing).
For computer implemented inventions with effects that are indirect or internal to the computer system itself, however, the updated manual suggests that additional factors (such as whether the computer system works in an improved or altered manner) may need to be considered.
It will be interesting to see how such a requirement for “additional factors” plays out in practice, given an arguably clear position to arise from the Aristocrat decision is that an improvement in computer technology is not required.
More specifically, the chapters of the manual that are most relevant to assessing patentable subject matter are:
- 5.6.8.1 General Principles – Assessing Manner of Manufacture
- 5.6.8.6 Computer Implemented Inventions, Mere Schemes, and Business Methods
Chapter 5.6.8.1, dealing with general eligibility principles, now explicitly states that considerations of an artificial effect and economic utility will generally be sufficient. The chapter also emphasises, however, that assessing subject matter eligibility involves properly characterising a claimed invention as a whole and requires a case-by-case approach.
In chapter 5.6.8.6, dealing specifically with computer implemented inventions (and schemes and business methods), the manual adopts the question posed in the Aristocrat decision. That is, once a claimed invention has been “properly characterised” does it involve:
- an abstract idea which is manipulated on a computer – which is unpatentable; or
- an abstract idea which is implemented on a computer to produce an artificial state of affairs and a useful result – which is patentable.
The second category (ii) aligns squarely with the established principles and requirements of NRDC 2. The manual appears to position the scope of the first category (i) as analogous to various computer implemented inventions that were found ineligible in previous Full Federal Court decisions.
A key question for computer implemented inventions remains that of “proper” characterisation of the invention. In this, the manual acknowledges that characterisation of the substance of an invention:
- must take into account all claim integers, whether known (in isolation) or not; and
- must not place undue weight on inventive aspects of a claim over non-inventive aspects.
What’s next
The updates to the manual do look to provide a more favourable basis for assessing the eligibility of computer implemented inventions. We are hopeful this will result in:
- fewer patentable subject matter objections being raised to clearly eligible inventions; and
- for cases where patentable subject matter objections are raised, clearer guidelines for overcoming such objections.
It will, however, take some time to digest the updates to the manual and for examination practice to adapt accordingly.
Beyond this, there may well be further changes to the manual with the Australian Patent Office currently seeking feedback on the update in a consultation process that will end on 17 May 2026 (here).
FPA Patent Attorneys has a dedicated team with expertise in protecting computing, software and artificial intelligence inventions. Please reach out if you are interested in protecting your innovations in this space.
1 Litigation between Aristocrat Technologies Australia Pty Ltd and the Commissioner of Patents concerning the subject matter eligibility of an electronic gaming machine configured to play a feature game.
2 National Research Development Corporation v Commissioner of Patents [1959] HCA 67
