In Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd,[1] the High Court of Australia has refused an application by the Commissioner of Patents for special leave to appeal, ultimately supporting the decision arrived in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (“Aristocrat II”).[2] The High Court’s recent decision marks a significant clarification on the decade-long dispute over the patentability of computer implemented inventions and provides the prevailing interpretation of when an invention amounts to a ‘manner of manufacture’ under s 18(1A)(a) of the Patents Act 1990 (Cth) ("the Act").[3]

I BACKGROUND

A. Parties to the Proceedings

Aristocrat is a company that manufactures electronic gaming machines (EGMs), or otherwise, gambling devices which are commonly found in casinos and pubs. Aristocrat owned four innovation patents that were granted under s 62 of the Act,[4] a provision which outlines the registration of prescribed particulars of an innovation patent. The subject patent in this case was titled ‘[a] system and method for providing a feature game’, and the relevant field of innovation described by the patent specification related to a system and method of gaming through EGMs.

The Commissioner’s role was to examine the innovation patents pursuant to s 101A of the Act,[5] and in doing so, revoked each of the patents on the ground that the claim in each was not for a ‘manner of manufacture’ within the meaning of s 18(1A)(a).[6] The Commissioner's delegate concluded that, with no technical contribution to the art being made by any of the innovation patents, the substance of the invention could not be characterised as patentable.[7] It was further found that there would be no utility in providing the company with an opportunity to amend the patents.

B. Innovation Patent Applications

The four innovation patents were divisional applications filed and granted between November 2016 and December 2017, relating to EGMs with a common “hold and spin” feature game. Examination for all four patents was requested in late 2017, with adverse examination reports issued in December 2017 and January 2018.

Innovation patent 2016101967 described the basic feature of the game. That is, when the bonus game starts, certain symbols remain fixed on the screen while the other positions spin again to generate new symbols, and players receive credits based on the value of the symbols that remain at the end. Innovation patent 2017101097 adds a system that randomly triggers this bonus feature during normal gameplay, with the probability of triggering set to occur after a certain level of player turnover. Innovation patent 2017101098 introduces a rule that resets the number of remaining free spins whenever a particular symbol appears, allowing the bonus round to continue for longer. Finally, innovation patent 2017101629 adds a counter that tracks special symbols appearing on the screen, awarding a jackpot if a set number of those symbols are collected.

II PROCEDURAL HISTORY

Aristocrat successfully appealed the administrative decision of the delegate in relation to the above patents to the Federal Court where Burley J held the invention was patentable subject matter.[8] The Commissioner appealed to the Full Federal Court, which reversed the decision at first instance.[9] Aristocrat then appealed to the High Court, which split evenly before six judges, resulting in the Full Court’s decision being affirmed on remittal pursuant to s 23(2)(a) of the Judiciary Act 1903 (Cth).[10] On appeal to the Full Federal Court, Aristocrat sought to appeal the decision in Aristocrat I,[11] and made a subsequent application under s 40(2) of the Judiciary Act 1903 (Cth) to move the ongoing litigation to the High Court, effectively bypassing the common appellate process.[12] While this subsequent application was rejected as it did not meet the requisite urgency, the Full Federal Court ruled in favour of Aristocrat’s patents. More recently, in 2026, the High Court refused the Commissioner’s application for special leave to appeal the decision of the Full Federal Court in 2025, holding it as the authoritative law on computer implemented inventions.

III INTERPRETING THE ‘MANNER OF MANUFACTURE’ PROVISION

The concept of ‘manner of manufacture’ is foundational to Australian patent law and originates from section 6 of the Statute of Monopolies 1623 (UK). The UK provision carved out an exception to the general prohibition of monopolies for ‘manner of new manufactures’ which is codified in s 18(1A) of the Patents Act 1990 (Cth). The provision as a whole requires that inventions are a ‘manner of manufacture’, ‘novel’, ‘involve an innovative step’, are ‘useful’, and ‘not secretly used in the patent area before the priority date’.[13] While certain exclusions to this provision exist in ss 18(2) and 18(3), they are not relevant. Rather, the more contentious issue arising from the series of judgments reached in this case is the meaning and scope of the term ‘manner of manufacture’.

A. National Research Development Corporation v Commissioner of Patents (NRDC) Test

The NRDC test provided a rigid guideline on the requirements for an innovation patent to be granted. Specifically, the case outlined that for ‘[...] a process to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, [it] must be one that offers some advantage which is material, [...] that its value to the country is in the field of economic endeavour’.[14]

B. Case-by-Case Formulation

Burley J noted the NRDC test with caution. His Honour referenced D’Arcy v Myriad Genetics Inc which stated that ‘NRDC did not prescribe a well-defined pathway for the development of the concept of ‘manner of manufacture’ in its application to unimagined technologies [...] [r]ather, it authorised a case-by-case methodology.’[15] In the context of emerging technologies, it is clear why the courts have steered away from the NRDC test; its application would fail to protect innovative outcomes, preferring a formalistic approach over gradual adaptability.

C. An Artificial State of Affairs, Mere Schemes and Abstract Ideas

Further interpretative guidance on the provision was proffered by reliance on Research Affiliates LLC v Commissioner of Patents and Grant v Commissioner of Patents.[16] Burley J cited Emmett J’s interpretation in Research Affiliates LLC v Commissioner of Patents with approval, ruling that a method, such as a method for gaming, must produce a useful result as opposed to an ‘artificial state of affairs’ to be patentable.[17] In other words, a ‘mere scheme, an abstract idea or mere information’ will not suffice for the purpose of patents.[18] This principle reflects a broader policy consideration that courts take into account, that is, the patentability for abstract ideas, methods and rules confer temporary monopolies that have the effect of stifling innovation. However, a notable qualification to this overarching rule was stated in Aristocrat II, which found that an abstract idea embodied in a concrete machine with functional interactions may be marked as patentable.

D. Substance vs Form

The ultimate decision in Aristocrat II affirmed Burley J’s ruling which adopted the substantive approach, focusing on the functionality and purpose of Aristocrat’s innovations as a combination of hardware and software producing tangible outcomes. It is evident that the court digressed from its earlier judgment which leaned towards a formalistic approach that applied the statute rigidly, and on that basis, required that the invention specifically advance computer technology.

IV IMPLICATIONS

The contentious litigation in the Aristocrat judgments have significant implications in the current landscape, potentially expanding opportunities in the digital technologies sector. While the final decision is seen as a victory for innovation as it expands the scope of patent protection for computer implemented inventions, the judgment needs to be realised in practice. It must be noted that IP Australia’s approach relies heavily on outdated principles and rigid application of law. On this basis, there seems to be an unalignment between judicial decisions and administrative implementation. It is necessary to resolve the disparity between the two thresholds to ensure certainty for applicants who wish to challenge adverse examination outcomes. Moreover, as the High Court of Australia refused special leave to appeal rather than issuing a substantive judgment, the doctrinal position of the patentability of computer implemented innovations means that future litigation could revisit s 18(1A) requirements.

V FOOTNOTES

[1] Aristocrat Technologies Australia Pty Ltd [2026] HCADisp 15 S153/2025.

[2] Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 13 (“Aristocrat II”)

[3] Patents Act 1990 (Cth) ("the Act"), s 18(1A)(a).

[4] (n 3) s 62.

[5] (n 3) s 101A.

[6] (n 3).

[7] Aristocrat Technologies Australia Pty Limited [2018] APO 45.

[8] Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2020] FCA 778

[9] Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202

[10] Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29; Judiciary Act 1903 (Cth) s 23(2)(a).

[11] Aristocrat II (n 2).

[12] Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] HCADisp 7 (S131/2024)

[13] (n 3) s 18(1A)(a)-(b).

[14] National Research Development Corporation v Commissioner of Patents [1959] HCA 67, (1959) 102 CLR 252, 275.

[15] D’Arcy v Myriad Genetics Inc [2015] HCA 35, [23].

[16] Research Affiliates LLC v Commissioner of Patents [2013] FCA 71 (“Research Affiliates”); Grant v Commissioner of Patents (2006) 154 FCR 62 (“Grant”).

[17] Research Affiliates (n 16) [22] (Emmett J).

[18] Grant (n 16) 70-71.