In patent systems built on centuries-old legal foundations, computer-implemented inventions (CIIs) have attracted patentability issues like no other class of inventions. In Australia, where patent eligibility is grounded in the Statute of Monopolies 1623, the courts have developed tests for assessing patent eligibility for technologies that were unimaginable when the law was first enacted.
In recent years, the Australian Patent Office (APO) has adopted a more restrictive and subjective approach to patentability of CIIs that has, until just days ago, been supported by Australian courts. On 16 September 2025, the Full Federal Court breathed new life into CIIs by reframing its previously “too rigid and narrow an approach” to assessing patentability of CIIs.
Patentable subject matter
Under s 18(1)(a) of the Australian Patents Act 1990 (Cth), a patent must be for “a manner of manufacture within the meaning of section 6 of the Statute of Monopolies” (the “patentable subject matter” requirement). In the seminal case on patentable subject matter, National Research Development Corporation v Commissioner of Patents [1959] HCA 67, the High Court interpreted a “manner of manufacture” to be an artificially created state of affairs having economic utility.
The High Court later recognised in D’Arcy v Myriad Genetics Inc [2015] HCA 35 that, in addition to being “made” by human action and being economically useful, certain other factors may need to be taken into account in assessing the patent-eligibility of new classes of claims, such as the purposes of the legislation, whether according patentability would enhance or detract from the coherence of the law relating to inherent patentability, and whether the matter would be more appropriately be addressed by Parliament.
The High Court in Myriad also confirmed that the patentability inquiry is one of substance, not form.
The special case of CIIs
Over the past decade, Australian courts have grappled with the patentability of CIIs, culminating in a 3–3 split decision of the High Court in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 (Aristocrat HC). While Aristocrat HC was slated to resolve the relevant test for assessing eligibility of CIIs once and for all, the outcome in the absence of the seventh judge of the country’s highest appellate court due to Covid was instead a frustrating anticlimax.
Following a series of decisions (see Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150; Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177; Encompass Corporation Pty Ltd v Infotrack Pty Ltd [2019] FCAFC 161), the Full Federal Court in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 (Aristocrat FC1) articulated the following two-step test for determining whether a claim to a CII is for a manner of manufacture
- Is the invention claimed a computer-implemented invention?
- If so, can the invention claimed broadly be described as an advance in computer technology
Because of the 3–3 High Court deadlock, the Full Court’s decision in Aristocrat FC1, in which it was found that claim 1 – directed to an electronic gaming machine – was not for a manner of manufacture, was effectively affirmed (see Aristocrat Technologies Australia Pty Limited v Commissioner of Patents (No 3) [2024] FCA 212). A major problem with this outcome was that neither set of judges agreed with the two-step test articulated by the Full Court, which was criticised for overcomplicating the analysis of the crucial issue, and resorting to consideration of whether the subject matter is computer-implemented.
The APO position
Interestingly, the Commissioner of Patents has actively participated in CII litigation in Australia. While the Commissioner is necessarily a party to proceedings that involve an appeal from an adverse decision of the APO, the role of the Commissioner as the appellant in several of these proceedings raises concerns about the Commissioner’s role in shaping judicial doctrine rather than simply applying it (see, e.g., Aristocrat FC1; RPL Central; Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86).
In 2024, the APO conducted a comparative analysis of CII patents trends at the APO, European Patent Office (EPO) and United States Patent and Trademark Office (USPTO). The analysis involved comparing filing and grant rates in the three jurisdictions over the period 2010-2020, and revealed the following:
- CIIs represented 32% of total patent filings at the APO, 41% of total patent filings at the EPO, and 50% of total patent filings at the USPTO.
- Of CII patents “at the margins of patent subject matter eligibility” (i.e., considered likely to receive a manner of manufacture objection by the APO), 54% were granted by the APO, 27% were granted by the EPO, and 68% were granted by the USPTO.
- Since the Australian court decision in Research Affiliates, the likelihood of past CII applicants filing subsequent CII patent applications at APO reduced by 23%.
- However, the report did not compare grant rates of equivalent claims across jurisdictions within the same patent family, which would have provided a clearer picture of any misalignment between the jurisdictions.
The Aristocrat saga
After the High Court split, the case was remitted back to the Federal Court to determine the residual issues, namely, the patent eligibility of certain dependent claims. In Aristocrat No 3, Burley J found that the dependent claims were also not for a manner of manufacture. However, while bound to follow the decision in Aristocrat FC1, His Honour avoided applying the Aristocrat Test:
I am bound to follow the reasons set out in the majority decision in considering the patentability of the residual claims. It is not open to me to consider whether those reasons are in conformity with established principle. The starting point is the finding of the majority decision that claim 1 of the 967 patent is not for a manner of manufacture.
Thus, Burley J considered whether the relevant dependent claims included language that would permit a different result and found they did not.
In a further appeal, Aristocrat sought to bypass the Full Court and have the residual issues considered directly by the High Court, but Special Leave was refused. The case then returned to the Full Court to consider the dependent claims.
Full Court resuscitates patentability of CIIs
On 16 September 2025, the Full Court issued its decision in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131 (Aristocrat FC2). To the marked relief of patent attorneys and patentees, the Full Court unanimously threw out its previous two-step step in favour of the allowing reasons in Aristocrat HC:
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]
While this decision could not save claim 1 as it pertained only to the dependent claims, the Full Court nonetheless expressed the view that it considered claim 1 to be for a manner of manufacture.
Concluding remarks
While experts have suggested there was scope within the two-step test of Aristocrat FC1 for a more patentee-friendly approach to assessing CIIs, the APO has been reluctant to change its practice in the absence of a clear court decision or legislative amendment to the contrary. The Aristocrat FC2 decision now marks a fundamental shift in Australian law relating to patentability of CIIs to a much more patentee-friendly approach. However, the option for the Commissioner of Patents to seek Special Leave to appeal the decision remains open for 28 days. Therefore, it remains to be seen whether the APO will accept this decision and adopt a less restrictive approach that is more closely aligned with other technologies.
This article was first published in October 2025 on IPKat.