In a much awaited judgement in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131, the Full Court of the Federal Court of Australia may have significantly lowered the threshold for satisfying the manner of manufacture requirement of s 18(1A)(a) of the Patents Act 1990 (Cth), which is also known as the subject matter eligibility requirement.  

This decision could be a very positive development in favour of innovators of computer implemented inventions and be an impetus for new patent filing activity.

The case considered a number of procedural and jurisdictional questions arising due to the unusual history of the litigation.  Nevertheless, what will be most relevant to patent attorneys and their clients are the findings relating to whether the inventions defined in the claims of a number of patents under consideration, related to a patent eligible manner of manufacture.

High Court Reasons

Notably, manner of manufacture of the inventions had previously been considered by the High Court in 2022 in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29.  The result was two judgments, respectively endorsed by three judges for a split 3:3 result.  

The Full Court referred to these as the dismissing reasons, where the judges upheld an earlier Full Federal Court finding of no manner of manufacture, and the allowing reasons respectively, where the judges overturned that earlier finding and decided that the claimed inventions under consideration were for a manner of manufacture.

967 Patent

The Full Court’s consideration of manner of manufacture begins at [125] by explaining that claim 1 of the so called ‘967’ patent, would be used as a representative claim that would determine the issue for all the other claims and patents under consideration.  

Claim 1 relevantly related to an Electronic Gaming Machine (EGM) including numerous integers, although critically including a game controller executing a programmed game that included a feature game and configurable symbols, which were said to improve player engagement or increase subjective satisfaction.

Manner of Manufacture

The Full Court explained at [126] that both the dismissing and allowing reasons agreed that whether a claimed invention is a manner of manufacture, will be determined by how the claimed invention is characterised.  The claim must be construed 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.

The Full Court adopted the characterisation adopted in the allowing reasons of the High Court (at [149]), which said:

“However, given the emphasis upon both the feature game and the configurable symbols in the specification, the best characterisation of Claim 1 is: an EGM incorporating an interdependent player interface and a game controller which includes feature games and configurable symbols.”

The Full Court reasoned at [127] that the above characterisation:

“reflects the emphasis in the specification not just on the feature game but also on the function and display of configurable symbols in relation to the feature game, and the integration of those elements in the interdependent player interface and game controller”.

The Full Court went on the mention the basis laid out in the allowing reasons to support the construction, namely that:

“The allowing reasons refer (at [137]) to expert evidence before the primary judge that the configurable symbols, particularly the prize values overlaid on them, are a significant enhancement of a player’s experience. Further, the allowing reasons (at [137]) point out that the configurable symbols and the feature games require implementation in the EGM, and in the operation of the EGM, they interact with, and are entirely dependent upon, other integers of the claim, especially the physical integers, and therefore are inextricably connected with the player interface. The characterisation adopted in the allowing reasons does not give undue or preponderant weight to the inventive aspects of the claim over the non-inventive aspects, and gives due recognition to those physical elements which are non-inventive yet fundamental to the operation of the EGM.”

In [128] the Full Court stated that the allowing reasons better aligned with the reasoning in National Research Development Corporation v Commissioner of Patents [1959] HCA 67 (NRDC), which rejected attempts to place upon the idea of “a manner of manufacture” the fetters of an exact verbal formula, and subsequent authorities that followed them, including the High Court in D’Arcy v Myriad Genetics Inc [2015] HCA 35 (Myriad) which enunciated the following factors as relevant to the assessment of manner of manufacture:

1. Whether the invention as claimed is for a product made, or a process producing an outcome as a result of human action.

2. Whether the invention as claimed has economic utility.

In [129], the Full Court went on to cite with approval the approach of the Full Court in CCOM Pty Ltd v Jeijing Pty Ltd (1994) 51 FCR 260 (CCOM), with its emphasis on the notions of an artificially created state of affairs and utility in a field of economic endeavour, and the “appropriateness of using the notion of an artificial effect of economic utility derived from NRDC in the context of a computer-implemented invention”.

The Full Court levelled some criticism in [130] at previous applications of the Full Court’s statement in Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (RPL Central) that:

“Where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to “put” a business method “into” a computer to implement the business method using the computer for its well-known and understood functions”.

At [131], the Full Court criticised the approach, derived from RPL Central and adopted in the previous Full Court’s two step approach, which had the result that inventions susceptible to generic computer implementation could not be a manner of manufacture, when it stated:

“In our respectful view, it is too rigid and narrow an approach to say that the implementation of an idea in a computer, using conventional computer technology for its well-known and well-understood functions, cannot constitute a “manner of manufacture”.”

The Full Court then proceeded to outline its preferred formulation of the test for manner of manufacture as follows:

“We respectfully agree with the view expressed in the allowing reasons (at [122]) that a better way of expressing the point in such cases is to ask whether, properly characterised, the subject matter that is alleged to be patentable is: (i) an abstract idea which is manipulated on a computer; or (ii) an abstract idea which is implemented on a computer to produce an artificial state of affairs and a useful result.”

The Full Court concurred with the analysis in the allowing reasons of previous Full Court decisions rejecting the patentability of certain computer-implemented inventions, in that each of them merely involved the use of a machine to manipulate an abstract idea rather than involving the implementation of the idea on a machine to produce an artificial state of affairs and a useful result.  These included:

• a scheme for protecting assets from unsecured judgment creditors;

• a scheme for constructing data concerning a non-capitalisation weighted portfolio of assets;

• a scheme for assessing the competency or qualification of people in accordance with recognised standards;

• a method and apparatus for displaying information to provide business intelligence; and

• a marketing scheme.

• use of the GPS-enabled mobile devices for dealing with risk management information; and

• an improved logistics method.

The Full Court referenced contrasting decisions in which inventions were found to produce an artificial state of affairs of economic utility and to, therefore, be for a manner of manufacture, including:

• a formula to produce an artificial state of affairs of economic utility, namely the desired and improved curve image;

• a particular method of characterisation of Chinese character strokes applied to an apparatus in such a way that the operation of a keyboard would enable the selection, through a computer, of the appropriate Chinese characters used for word processing;

• a communications system, computer program and smartphone configured to determine signal strengths of entry and exit signals to control a user’s entry to and exit from a restricted area; and

• a method of scanning used in a Time Division Multiple Access system in digital mobile radios to reduce the time required for completing scan operations;

Having effectively endorsed the allowing reasons throughout the judgment, the Full Court reached the unsurprising conclusion that claim 1 of the 967, was for a “manner of manufacture”.  Therefore, the other claims of the patents under consideration were also for a manner of manufacture.

The Full Court also noted that finding the computerised EGM to be a manner of manufacture would resolve the anomaly expressed in the allowing reasons, that as acknowledged by both parties to the litigation an EGM implemented with old fashioned, mechanical technology would be a manner of manufacture, whereas implemented with computer technology it might not.

Key Take Aways

The key take aways that seem to be relevant to practitioners and innovators that are apparent from the judgment are:

• the two step approach set out by the Full Federal Court in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC is jettisoned;

• the correct approach for assessing manner of manufacture of computer implemented inventions is from NRDC and Myriad and applied in CCOM and involves notions of an artificially created state of affairs (i.e. artificial effect) and utility;

• the implementation of an idea in a computer, using conventional computer technology for its well-known and well-understood functions, could in some cases constitute a “manner of manufacture;

• if the analysis is to be undertaken by reference to a question, then the question to ask is whether, properly characterised, the subject matter of the invention is: (i) an abstract idea which is manipulated on a computer, which is not patentable; or (ii) an abstract idea which is implemented on a computer to produce an artificial state of affairs and a useful result, which is patentable;

• the invention may be a manner of manufacture if there are physical integers that are integrated with and/or inextricably connected with the inventive concept; and

• assistance may be gleaned from the above previous Full Federal Court judgments as to what types of inventions are, or are not a manner of manufacture.

For more information on the patentability of computer implemented inventions then please contact Daniel.

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