Aristocrat’s success after a long fight – electronic gaming machines can be a “manner of manufacture”, and therefore patentable
For around the last two decades, Australian courts have grappled with developing a clear and consistent test for determining when a computer-implemented invention will be patentable subject matter. The decisions from the courts have varied in determining whether the inventions before them constitute a “manner of manufacture”, and are therefore patent eligible subject matter.
The latest party to attempt to turn the tide, and succeed, is Aristocrat Technologies Australia Pty Ltd, which has been attempting to convince the courts that its patents directed to feature games in electronic gaming machines (EGMs) should be patentable, ever since the Australian Patent Office found them to be non-patentable subject matter in 2018.[i]
The decision handed down by three judges of the Full Federal Court on 19 September 2025 in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131 represents a convincing win for Aristocrat, but given the history of the dispute, another appeal to the High Court of Australia is not out of the question.
How did we get here?
The latest decision of the Full Court represents a welcome development in the lengthy and complex litigation that first started when the Australian Patent Office revoked Aristocrat’s patents on the basis that none of the claims in any of the patents was for a manner of manufacture.
Aristocrat appealed the Australian Patent Office decision. Justice Burley of the Federal Court upheld the appeal, finding Aristocrat’s inventions to be patentable subject matter.[ii]
The Commissioner of Patents appealed this decision to Full Court, which reversed Justice Burley’s decision. Although the Full Court was unanimous in its decision to find some of the claims were not a manner of manufacture, the judges were not unanimous in their reasoning. They also determined that the matter should be remitted to the primary judge (Justice Burley) for consideration of outstanding issues concerning the remainder of the claims in light of its reasons: Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC; (2021) 286 FCR 572 (Previous Full Court Decision).
Aristocrat successfully obtained Special Leave to appeal to the High Court. Unfortunately, of the six judges who heard the case, three thought that the inventions were not patentable subject matter, and three thought that they were: Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29; (2022) 274 CLR 115 (High Court Decision). As a result, Aristocrat was unsuccessful and the Full Court’s decision was left undisturbed, including its order that the matter be remitted to the primary judge.
Notably, neither set of judges agreed with the test articulated in the Previous Full Court Decision, namely: Is the invention claimed a computer-implemented invention? If so, can the invention claimed broadly be described as an advance in computer technology? However, on remittal, Justice Burley – feeling bound by the reasoning of the Previous Full Court Decision – considered he had no choice but to find the remaining claims non-patentable, despite his initial view that they were patentable.[iii]
Aristocrat sought Special Leave to appeal this decision directly to the High Court, in view of its previously split decision. However, the High Court refused Special Leave, and consequently Aristocrat had to settle for an appeal to the Full Court, which had previously looked unfavourably on its case.
The new approach set out by the Full Federal Court
In considering the history of this litigation, the Full Court found that they were not bound by either set of reasons in the High Court case, nor were they bound by the previous decision of the Full Court. They also considered it appropriate to go beyond considering whether the first instance judge had made an error when the case was remitted from the High Court, and instead felt that they could reconsider whether the claims in question were directed to patentable subject matter.
The Full Court decided to adopt the reasoning of the three judges in the High Court who found that the invention was capable of being patented. More specifically, after considering the relevant previous decisions,[iv] the majority decision of the previous Full Court case as well as the dismissing and allowing reasons of the High Court Decision, the Full Court considered it appropriate to clarify a test for patentable subject matter, summarized at paragraph at [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 considered that such a test was entirely consistent with previous jurisprudence, and avoided the pitfalls in previous formulations of a test for assessing the patent eligibility of computer implemented inventions.
Applying this clarified test to the patents before them, the Full Court accepted Aristocrat’s characterisation of the invention that each of the claims in question is a combination claim concerned with an altered EGM that produces an artificial state of affairs and a useful result, and in which the integers pertaining to the functionality of the game controller interact with, and are dependent upon, the integers relating to the user interface. The Full Court held that each of the claims is therefore a manner of manufacture within the meaning of s 18(1A)(a) of the Patents Act, and was therefore patent eligible.
Final Thoughts
The Commissioner has 28 days from the date of this decision to seek Special Leave to appeal to the High Court. Should an appeal not be lodged, or Special Leave not granted, patent attorneys will be left with this new test for patentability. The new test would appear to broaden the scope of patentable subject matter for computer-implemented inventions in Australia (making patentable some subject matter that would have been considered patent-ineligible under the previous tests). Where previous debates centred around issues such as whether an invention provided an advance in computer technology, future debates will likely relate to whether an invention is an abstract idea manipulated on a computer or implemented on a computer to produce an artificial state of affairs and a useful result.
This latest Full Federal Court decision recognises that a nuanced approach is needed in determining what makes computer-implemented inventions eligible for patent protection, and provides patent applicants and patentees with greater clarity on the test to be applied.
[i] Re Aristocrat Technologies Australia Pty Ltd [2018] APO 45
[ii] Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2020] FCA 778 (2020) 382 ALR 400; 153 IPR 11 (Burley J)
[iii] Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (No 3) [2024] FCA 212; (2024) 177 IPR 73
[iv] National Research Development Corporation v Commissioner of Patents [1959] HCA 67; (1959) 102 CLR 25; CCOM Pty Ltd v Jeijing Pty Ltd (1994) 51 FCR 260; Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150; (2014) 227 FCR 378; D’Arcy v Myriad Genetics Inc [2015] HCA 35; (2015) 258 CLR 334; Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177; (2015) 238 FCR 27; Encompass Corporation Pty Ltd v Infotrack Pty Ltd [2019] FCAFC 161; (2019) 372 ALR 646; Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86; (2020) 277 FCR 267