Chris Wilkinson and Anthony Lee
In the recent decision of Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131 (Aristocrat 2025), the Full Federal Court of Australia has allowed an appeal by Aristocrat Technologies Australia Pty Ltd against the Commissioner of Patents, finding the claims of several patents to electronic gaming machines are directed to a patentable subject matter (known as a “manner of manufacture”). This subject matter requirement is a separate requirement from novelty and inventiveness, and relates to the type of developments that should be allowed to be patented. For example, mere schemes, abstract ideas and theories have traditionally been excluded as they lack practical effect.
An ongoing issue has been how to decide which types of software or computer implemented inventions should be allowed to be patented. In this case, Aristocrat had applied for several patents directed to electronic gaming machines, but the Commissioner of Patents (i.e. the patent office) rejected them on patentable subject matter grounds. This case has a tortured history where it went to the High Court, but was only heard by six judges who then issued a 3:3 split (non) decision and resulting in the decision of a lower Court being affirmed. As a result, the patents in suit have now been reviewed by 13 judges in the Federal Court or High Court, with seven of them, including three High Court judges, now finding the patents are directed to patentable subject matter. This decision rejects the current approach of the patent office as being too narrow and avoids the logical inconsistency that while a mechanical gaming machine having the features of the contested patents is patentable, an implementation involving an electronic gaming machine is not.
The Court reviewed the procedural history of the case and the differing opinions at each level, and ultimately sided with the “allowing reasons” of the three judges in the High Court who found the patents directed to patentable subject matter. The Full Court’s analysis began with the characterisation of the claimed invention. It was determined that the invention should be viewed as a combination of both the inventive and non-inventive elements, encompassing an interdependent player interface and a game controller, which includes “feature games” and “configurable symbols”. The fight was then over whether the invention was simply a game (i.e. a set of rules or abstract idea) implemented in a general purpose computer as proposed by the Commissioner of Patents, or whether the interaction of the components represented an improvement in the functionality of the electronic gaming machine.
The Full Court rejected the Commissioner of Patents’ argument that the invention should be characterised as a mere scheme or set of rules for playing a game (Aristocrat 2025 at [131]). Instead, the Full Court highlighted the importance of considering the invention as a whole rather than isolating the inventive aspects from the non-inventive ones (Aristocrat 2025 at [127]). The Full Court then found the use of configurable symbols in the feature games and their role in enhancing the player’s experience represented a substantial improvement in the functionality of the electronic gaming machine (Aristocrat 2025 at [127]). In particular, they found these features interacted with, and were dependent upon, the other components of the gaming machine such that they were considered to be inextricably connected to the player interface.
This holistic approach ensured the invention was not merely seen as an abstract idea or set of rules implemented on a computer, but as a practical application that produces an artificial state of affairs and a useful result. The court’s final ruling was also influenced by the need to encourage innovation and not to disqualify modern technological advancements from patent eligibility simply because they use electronic technology instead of mechanical means(Aristocrat 2025 at [134]). It avoided the outcome that a mechanical gaming machine was patentable, but an electronic gaming machine was not.
This decision marks a pivotal moment in the ongoing legal discourse surrounding patent eligibility for computer-implemented inventions and underscores the importance of a comprehensive and holistic approach to patent eligibility. By recognising how the inventive and non-inventive components of the invention interact to generate a useful result, the Court has set a precedent that will influence future cases involving computer-implemented inventions. This ruling not only affirms the patentability of Aristocrat’s inventions but also reinforces the broader principles of encouraging technological innovation and protecting intellectual property rights.
The Commissioner of Patents now has the option to seek special leave to appeal this decision of the Full Federal Court to the High Court (again!). On one view, this would not appear necessary as the Full Federal Court has provided a workable approach consistent with long-standing case law. It is also consistent with the approach of the three judges of the High Court set out in the allowing reasons, noting that these three judges would also hear any new appeal. Any special leave application must be filed within 28 days of this judgement so we will know soon enough if there will be another chapter to this long running litigation.
