The significance of this outcome cannot be overstated. In recent years we have seen many cases conclude with claims being found ineligible – i.e. not for a ‘manner of manufacture’ under Australian law – namely Grant v Commissioner of Patents [2006] FCAFC 120, Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150, Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177, Watson v Commissioner of Patents [2019] FCA 1015 (leave to appeal refused in Watson v Commissioner of Patents [2020] FCAFC 86), Repipe v Commissioner of Patents [2019] FCA 1956, and Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86. That is a lot of cases telling us what is not patent-eligible, with absolutely no guidance from the courts on where the boundary might lie on the positive side of patent-eligibility. Finally, we have a decision of the Full Federal Court that sets out a reasonably clear and concise test which is then applied to eligible claims. The High Court, in denying the Commissioner’s application for special leave to appeal, stated that the ‘Full Court applied established principles concerning the assessment of manner of manufacture and reached a unanimous and clear conclusion as to characterisation’: Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2026] HCADisp 15, at [2].
Following a rather convoluted passage through the Federal Court, the Full Federal Court and the High Court, back to the primary judge and then to the (differently constituted) Full Court, the final word on patent-eligibility of Aristocrat’s claims is Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131. In this decision, the Full Court effectively overruled the reasons (though not the orders) of the earlier Full Court, and adopted the affirmative reasons of three High Court judges in the split decision Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 (see High Court’s Failure Exposes the Festering Eligibility Sore in Australia’s Patent Laws for more). Somewhat unusually, this also involved, in a sense, ‘overruling’ the negative reasons of the other High Court judges, in a rare instance of three judges of an inferior court asserting precedence over three judges of a superior court (albeit with the support of three further judges of that superior court). But that’s just a function of how weird this case became!
In what follows, I will briefly summarise how we got here, where the law stands in view of the Full Court’s 2025 decision, and the High Court’s reasons for refusing special leave to appeal. Finally, I will review the current examination practice of the Australian Patent Office, and the prospects of change in the wake of the High Court’s decision.
The Convoluted Passage – A Brief History
Aristocrat holds a number of innovation patents directed to EGMs that combine novel and inventive game rules defining feature games and configurable symbols, with specific hardware elements such as displays, credit mechanisms, and game controllers that were known and conventional within the specific field of electronic gaming technology. It was not substantially in dispute, throughout the litigation, that the game rules, standing alone, would be unpatentable as mere schemes.
After the Commissioner's delegate revoked the patents as not being for a ‘manner of manufacture’, Aristocrat appealed to the Federal Court, where the primary judge reversed that decision, holding the inventions patentable: Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778 (see Federal Court Finds Computer-Implemented Gaming Machine Patent-Eligible in Australia for more).
The Commissioner appealed, and the Full Court then reversed again: Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 (see Patent-Eligibility of Computer-Implemented Inventions – Appeals Court Says an ‘Advance in Computer Technology’ is Required for more). A majority of the Full Court (Middleton and Perram JJ) proposed a two-step test requiring computer-implemented inventions to constitute an ‘advance in computer technology’, while Nicholas J concurred on different grounds. The Full Court ordered that the case be remitted to the primary judge for determination of residual claims.
Aristocrat applied for, and was granted, special leave to appeal to the High Court where, with Justice Gleeson calling in sick on the hearing dates, the remaining six judges divided equally 3-3, with both the dismissing (‘anti-Aristocrat’) opinion and allowing (‘pro-Aristocrat’) opinion criticising the Full Court's two-step approach but for fundamentally different reasons. With no majority in the High Court, s 23(2)(a) of the Judiciary Act 1903 operated to affirm the Full Court's orders. On remitter, the primary judge determined that he was bound to apply the Full Court majority's reasoning, and found the residual claims invalid, from which Aristocrat appealed – again – to the Full Court.
The Law Following the Outcome of the 2025 Appeal
On 16 September 2025, the Full Court comprising Justices Beach, Rofe and Jackman handed down its ruling that Aristocrat’s remaining claims were all for a patent-eligible ‘manner of manufacture’. (In another unique twist, the court’s reasons would also have upheld the claim that was expressly invalidated by the 2021 decision of the Full Court, but that claim could not be saved because the order that it be revoked had already been given effect following the split decision of the High Court, and could not be made the subject of any further appeal.)
The 2025 Full Court had to consider the history of the matter, the effect of the 2021 Full Court decision being affirmed – effectively on a technicality – and the extent of any binding effect of the earlier Full Court’s reasoning and/or either of the sets of reasons of the divided High Court. To cut a long story short, the 2025 Full Court determined that it was not bound by anything that had come before and, in particular, that the High Court’s unanimous criticism of the 2021 Full Court reasons provided a ‘compelling reason’ to depart from those reasons.
Nonetheless, the 2025 Full Court looked to the High Court opinions, finding a preference for the allowing reasons, in favour of Aristocrat. I would summarise the relevant principles set down by the 2025 Full Court as follows.
- Characterisation (at [126]-[127]): Whether an invention is a "manner of manufacture" depends on characterisation of the claimed invention, determined by construction of the claim in light of the specification as a whole and common general knowledge, as a matter of substance not form. All integers must be considered as a combination, without giving undue weight to inventive over non-inventive elements.
- The Test (at [131]-[132]): For computer-implemented inventions, the question is whether the subject matter, properly characterised, is: (i) an abstract idea manipulated on a computer; or (ii) an abstract idea implemented on a computer to produce an artificial state of affairs and a useful result. Only (ii) is patentable. It is too rigid and narrow to hold that using conventional computer technology for its well-known functions cannot constitute a manner of manufacture.
- The NRDC Principles Apply (at [128]-[129]): The NRDC formulation – an artificially created state of affairs of utility in the field of economic endeavour – remains the guiding principle. Two factors are necessary: (i) a product made or process producing an outcome from human action; (ii) economic utility. Computer-implemented inventions (not a new class of claim by 2014, when the Aristocrat patent applications were filed) are assessed directly under these principles.
Applying these principles to Aristocrat’s claims (at [135]-[136], [141]) the 2025 Full Court determine that an EGM comprising interdependent physical and software elements – where a game controller with feature games and configurable symbols interacts with and depends upon a player interface – is an abstract idea implemented on a computer to produce an artificial state of affairs and useful result, and therefore constitutes a manner of manufacture.
This is the final outcome, and the status quo, following the High Court’s refusal of special leave to appeal.
The High Court’s Reasons for Refusal
As has become the norm, the Commissioner’s application for special leave was determined on the papers (i.e. without an oral hearing) by all seven judges of the High Court. It is just three paragraphs long, which is pretty much par for the course (one paragraph of background, one of brief reasons, and one announcing the outcome, e.g. ‘special leave to appeal is refused with costs’). The Court’s reasons for refusal may therefore be reproduced in their entirety:
In light of the background to this application, there is insufficient reason to doubt the correctness of the decision of the Full Court. A grant of special leave to appeal is not in the interests of the administration of justice in circumstances in which that Full Court applied established principles concerning the assessment of manner of manufacture and reached a unanimous and clear conclusion as to characterisation. There is therefore no utility in a grant of special leave to consider the operation of rules of precedent concerning s 23(2)(a) of the Judiciary Act.
This was probably not a difficult decision for the Court. Of the six judges who presided over the split decision in 2022 (i.e. Gordon, Edelman and Steward JJ allowing, and Kiefel CJ, Gageler and Keane JJ dismissing), the only remaining dismissing judge is Chief Justice Gageler (as he now is). Justice Gleeson did not participate in the earlier hearing due to illness, and Justices Kiefel and Keane have retired, replaced by Justices Jagot and Beech-Jones. On the other hand, all three of the allowing judges remain on the bench, and all three would doubtless consider that they have nothing further to contribute, given that their reasons were essentially adopted by the 2025 Full Court. Thus even if Gageler CJ were disinclined to reconsider his position, it would only take one of Gleeson, Jagot or Beech-Jones JJ to join with Gordon, Edelman and Steward JJ – a practically certain eventuality, in my opinion – to determine the outcome. Not a great use of limited High Court time and resources.
The Future of Examination Practice – What Needs to Change?
The Australian Patent Office Manual of Practice and Procedure (‘Manual’) was updated in October 2025 following the Full Court's Aristocrat decision, with revisions appearing in sections 5.6.8.1 General Principles – Assessing Manner of Manufacture (archived snapshot, 5 December 2025) and 5.6.8.6 Computer Implemented Inventions, Mere Schemes, and Business Methods (archived snapshot, 7 February 2026). While the updates added references to the Aristocrat framework, in my view the current guidance remains problematic in several respects and should be further updated to fully implement the legal principles now definitively established by the High Court's refusal of special leave.
The most significant issue is the Manual's characterisation of Aristocrat as essentially confirming, rather than clarifying, existing law. Section 5.6.8.6 now states that ‘examiners may assess an invention according to Aristocrat ‘25 by utilising principles from established principles [sic] prior to this decision’ and that determining whether an invention involves an abstract idea ‘manipulated on a computer’ versus ‘implemented on a computer to produce an artificial state of affairs and useful result’ is ‘best understood as being commensurate with assessing the substance of the invention as per existing case law.’ This framing risks undermining the clarity that Aristocrat provides. While the Full Court approved the outcomes in cases like Research Affiliates and RPL Central, its reasoning provides a clearer analytical structure than simply reasoning by analogy to a disparate body of case law. The Manual's approach of treating Aristocrat as, effectively, ‘just another case’ may perpetuate the very uncertainties that have plagued examination practice for more than a decade.
The updated guidance does incorporate some key elements from Aristocrat, including the distinction between abstract ideas ‘manipulated on’ versus ‘implemented on’ a computer, new factors such as ‘interdependence of physical features’ and whether the invention ‘produces an artificial state of affairs.’ However, these additions are integrated into existing multi-factor lists rather than being presented as a governing analytical framework. The Manual continues to emphasise older restrictive concepts such as whether there is ‘improvement in computer technology’ or whether ‘ingenuity lies in technical features’, despite this being language that the High Court's allowing reasons specifically critiqued. Examiners following this guidance may continue to apply a patchwork of considerations rather than the more focused inquiry that Aristocrat requires: proper characterisation, followed by asking whether the invention is merely an abstract idea manipulated on a computer or an idea implemented to produce an artificial state of affairs and useful result.
To properly align with current law, I believe that the examination guidance should be restructured to make the Aristocrat framework the primary analytical approach. This means directing examiners to:
- properly characterise the claimed invention as a matter of substance, considering all integers in combination without giving undue weight to inventive over non-inventive elements; and
- determine whether the subject matter is an abstract idea manipulated on a computer, or an abstract idea implemented on a computer to produce an artificial state of affairs and useful result (within the principles of NRDC).
The guidance should make clear that formalistic categorisations and requirements for ‘technical contributions’ or ‘advances in computer technology’ do not determine patent-eligibility where an invention, properly characterised, is implemented on a computer to produce an artificial state of affairs and useful result. The October 2025 update represents a step forward, but a more fundamental revision is needed to ensure examination practice reflects the clarity the courts have now provided.
The challenge facing IP Australia is that while the 2025 Aristocrat decision finally provides positive guidance on patent-eligibility, the earlier decisions finding claims ineligible remain good law. The task is to reconcile the Aristocrat principles with outcomes in Research Affiliates, RPL Central, Rokt and others, explaining why those claims failed while Aristocrat's succeeded. This requires careful analysis. Proper characterisation is inherently case-specific, and the distinction between ‘manipulated on’ and ‘implemented on’ will yield different results for different claims. But credible and consistent examination practice depends on examiners understanding and properly applying the Aristocrat framework, not simply adding it to an existing grab-bag of factors. With the High Court's emphatic endorsement – stating there is ‘insufficient reason to doubt the correctness’ of the Full Court's approach – the time for half-measures has passed.
Conclusion – A Rare Opportunity To Get Back on Track
It has been nearly 35 years since IBM v Commissioner of Patents gave us positive guidance on CIIs in Australia. While this initially resulted in a more permissive approach, since the mid-2000s, we have seen case after case – mostly driven by decisions and actions of the Commissioner – telling us what is not patentable. The law has, as a result, become progressively more restrictive and uncertain. Aristocrat changes that. For the first time in a generation, we have clear, positive principles from the Full Federal Court, unanimously endorsed by the High Court. This is an opportunity!
IP Australia now has a choice. It can treat Aristocrat as just another data point in an ever-expanding constellation of case law, to be navigated by analogy and multi-factor balancing tests. Or it can embrace the clarity that Aristocrat provides and restructure its examination guidance accordingly. The October 2025 update reflects the former approach. With the High Court brining the case to a close, it is time to adopt the latter.
Sadly, past experience gives me little cause for optimism. IP Australia has been the driving force behind a series of decisions limiting patent-eligibility of CIIs, based on what has appeared to be a tacit policy position. I fear that it will be reluctant to take a step back. The current Manual update, while acknowledging Aristocrat, seems designed to minimise disruption to existing practice rather than to implement genuine change.
But this time should be different. The High Court could not have been clearer in its endorsement of the Full Court’s approach. There is ‘insufficient reason to doubt the correctness’ of the decision. The Full Court ‘applied established principles’ and ‘reached a unanimous and clear conclusion as to characterisation.’ These are not equivocal statements. They represent a definitive statement of the law, backed by the highest court in the land.
The question is whether IP Australia will rise to meet this moment. Will examiners be properly trained to apply the Aristocrat framework? Will the Manual be revised to make characterisation and the manipulated/implemented distinction the primary analytical tools? Will the outdated emphasis on ‘technical contributions’ and ‘advances in computer technology’ be abandoned? Or will we see more of the same: eligible applications rejected through misapplication of superseded principles, followed by expensive and time-consuming appeals that should never have been necessary?
The Australian innovation community, and the patent attorneys who serve it, will be watching closely. After more than a decade of uncertainty, we finally have clarity. IP Australia should not squander it.
Before You Go…
Thank you for reading this article to the end – I hope you enjoyed it, and found it useful. Almost every article I post here takes a few hours of my time to research and write, and I have never felt the need to ask for anything in return.
But now – for the first, and perhaps only, time – I am asking for a favour. If you are a patent attorney, examiner, or other professional who is experienced in reading and interpreting patent claims, I could really use your help with my PhD research. My project involves applying artificial intelligence to analyse patent claim scope systematically, with the goal of better understanding how different legal and regulatory choices influence the boundaries of patent protection. But I need data to train my models, and that is where you can potentially assist me. If every qualified person who reads this request could spare just a couple of hours over the next few weeks, I could gather all the data I need.
The task itself is straightforward and web-based – I am asking participants to compare pairs of patent claims and evaluate their relative scope, using an online application that I have designed and implemented over the past few months. No special knowledge is required beyond the ability to read and understand patent claims in technical fields with which you are familiar. You might even find it to be fun!
There is more information on the project website, at claimscopeproject.net. In particular, you can read:
- a detailed description of the study, its goals and benefits; and
- instructions for the use of the online claim comparison application.
Thank you for considering this request!
Mark Summerfield
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