Australia: Full Federal Court Ruling Shifts Standards for Patenting Computer-Implemented Inventions

Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131

Key Takeaways

• The Full Federal Court of Australia has issued a pivotal ruling in the ongoing appeals by Aristocrat Technologies Australia Pty Ltd (Aristocrat) regarding the patentability of computer-implemented inventions (CIIs) under Australian patent law.
• The patents in question involve electronic gaming machines (EGMs) that feature a "feature game" mode, where prizes are awarded based on "configurable symbols" shown on the user interface.
• In 2022, Australia's High Court split 3-3 on the eligibility of Aristocrat's broadest claim, leaving no binding precedent.
• The Full Court has now aligned with the High Court judges who supported patent eligibility for Aristocrat's EGM, overturning prior rejections.
• This outcome is positive for innovators and patent holders in the tech space, though the outcome could still face a potential appeal to the High Court. IP Australia has acknowledged the decision and may adjust examination guidelines accordingly in the meantime.

Aristocrat's Extended Patent Battle

The case revolves around four innovation patents held by Aristocrat. Like traditional EGMs, these devices include a game controller (combining hardware and software) and a user interface (with screens, audio outputs, payment mechanisms, and input controls). What sets them apart is the programming that activates a "feature game" under certain conditions, introducing "configurable symbols" that offer extra winning chances.

Litigation has been protracted:

• In mid-2018, the Commissioner of Patents denied Aristocrat's applications, deeming them unpatentable due to lack of manner of manufacture (i.e. not patentable subject matter) - as they merely applied abstract game rules via standard computing hardware.
• By June 2020, a single Federal Court judge overturned this, with Burley J ruling the invention was a specific mechanism delivering tangible benefits, making it patentable subject matter.
• In late 2021, the Full Federal Court reversed that finding. Using a two-step test—confirming it was a CII and then checking for a technological advancement—the majority concluded it lacked innovation in computing itself.
• The matter reached the High Court in 2022, heard by six justices as one was on leave due to Covid. The even split meant no definitive ruling: Kiefel CJ, Gageler, and Keane JJ saw the claims as defining an unpatentable abstract concept without technological progress, while Gordon, Edelman, and Steward JJ viewed it as a modified EGM creating a practical, artificial outcome.
• Statutory rules meant the tie upheld the prior Full Court decision for the broadest claims. On remand, Burley J followed precedent to reject the remaining claims. Aristocrat's appeal from that led to this latest Full Court review.

Recent Ruling Boosts Prospects for CII Patentability

The Full Court critiqued the prior two-step test, noting unanimous High Court disapproval of it as overly rigid. This allowed a fresh evaluation of Aristocrat's claims.

The court favored the perspective of Gordon, Edelman, and Steward JJ, who emphasised holistic claim assessment. They determined the invention wasn't just abstract rules but a functional integration producing a useful, artificial state—qualifying as a "manner of manufacture" under the Patents Act 1990.

Central to the decision was proper invention characterisation. Kiefel CJ et al. focused on whether the implementation innovated beyond generic tech, finding no such advance. In contrast, Gordon, Edelman, and Steward JJ considered all claim elements, concluding the EGM's interactive features (via hardware-software synergy and configurable symbols) went beyond mere abstraction to yield practical results, regardless of using digital rather than mechanical components.

Broader Implications

While not binding on the High Court, this unanimous Full Court view provides greater stability for CII applicants. This Full Court endorsement binds lower courts and the Commissioner. It may also reduce objections based on "generic implementation," encouraging software patent claims that demonstrate real-world utility.

Patent seekers in gaming, software, and related sectors are encouraged to consult Baxter IP's software specialist patent attorneys to align new applications with this evolved standard.