Almost three years ago a 6-judge bench in the High Court of Australia delivered an unsatisfying 3-all stalemate judgment (reported here). Aristocrat have now achieved a significant win before the Full Court of the Federal Court of Australia in their quest for recognition of their electronic gaming machine invention as a manner of manufacture (as required by s 18(1A)(a) of the Patents Act 1990). The full decision is available here. 

Aristocrat’s victory gives hope to many innovative companies whose computer-implemented or related inventions have historically been denied protection due to Australia’s strict approach to determining patentability of such inventions. 

How did they get back to the Full Court of the Federal Court? 

Following the split High Court decision, the matter was remitted to the primary judge in the Federal Court to consider the “residual claims” (ie All claims other than claim 1 of the 967 patent) in light of the decision of the Full Court in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC. 

Unsurprisingly, on remittal, despite argument from Aristocrat that the reasoning of the High Court should be considered, Burley J in the Federal Court dismissed Aristocrat’s appeal from the original decisions of the Commissioner’s delegate, applying the reasons in the majority decision of the Full Court. 

Aristocrat sought leave to appeal directly to the High Court, bypassing the Full Court. However this was denied, so they found themselves back before the Full Court. Time will tell if they revisit the High Court. 

What was the view of the FCAFC on appeal? 

Given the history of the matter, the Full Court based its analysis on Claim 1 of the 967 patent which was the claim considered in most detail in the previous history of the matter as a representative claim.  

Although it was common ground that the invalidity of claim 1 of the 967 patent was finally determined (as a result of the conclusion of the previous Full Court in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC), it was also common ground between the parties that if claim 1 of the 967 patent is a manner of manufacture, then so too are the rest of the claims in all of the patents in suit. 

Consistent with previous cases on the issue of manner of manufacture of computer implemented inventions, the first point of analysis is the question of characterisation of the claimed invention. This is dependent on the construction of the claim in light of the specification as a whole and common general knowledge, and to be determined as a matter of substance, not merely the form of the claim. 

Referring to the allowing reasons of the High Court’s decision, the Full Court considered that the characterisation of the invention should reflect the integers of the claim viewed as a whole, encompassing the combination of both the inventive and the non-inventive elements. 

The Full Court then referred to the fundamentals of the decision of the High Court in NRDC and how this historic authority regarding the requirement for an artificial state of affairs having utility has flowed through case law consistently. 

This led them to what is effectively the ratio of the case at [131]: 

The Court then sought to illustrate this point with reference to the facts of recently decided cases on manner of manufacture such as Grant, Research Affiliates, RPL, Repipe, Dei Gratia, IBM, CCOM and UbiPark. 

The Full Court’s reasons interestingly noted that recognising the invention as a manner of manufacture “avoid[s] the anomaly of treating a computerised EGM as unpatentable, whereas it would be patentable if the EGM operated mechanically”. 

The Court then confirmed that all the claims at issue were considered a manner of manufacture based on the parties’ agreement before the primary judge that if claim 1 of 967 was patentable, so were the residual claims. For completeness, they also made further comments to “characterise” the residual claims consistently with their stated approach, finding in each case an artificial state of affairs and useful result were produced, and thus a manner of manufacture. 

What are the implications of the decision going forward? 

It is hard to say with certainty how this decision will be applied going forward, bearing in mind its complicated procedural history and its individual facts. However, the simplified manner in which the Full Court set out the law, with reference to the historic fundamentals of manner of manufacture from NRDC, in our view, renders it appropriate for application to future situations. 

Indeed, it may be of significance that there is a notice on the IP Australia Patent Manual website page for Manner of Manufacture advising that: “This page is under review. The content on this page must be considered in light of the Full Federal Court’s decision in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131.”   

As such, we expect that IP Australia’s practice will be modified going forward to apply the law from this case, and that the case will be given due weight before the Courts on issues regarding manner of manufacture. 

It is, of course, possible that the decision may be again appealed to the High Court by the Commissioner of Patents. If so, we would hope that it would be considered by a full bench this time! In any case we will keep you posted! 

Let us know if you have any questions about this case (or other patentability issues) in Australia. 

Jesse Strafford – October 2025