A Cliffhanger with No Sequel –
Australia’s Apex Court Divided
on Patentable Subject Matter
Inspire November 2022
In a surprising turn of events, the High Court has handed down
an evenly split decision in the highly anticipated case Aristocrat
Technologies Australia Pty Ltd v Commissioner of Patents 1 . This was
the first time that Australia’s apex court has considered the issue of
patentable subject matter for computer implemented inventions.

4 for novelty and inventiveness.

computer-implemented invention?; To illustrate this point, Keifel CJ,
and if so
Gageler and Keane JJ referred to
the ball point pen argument that
> can the invention claimed broadly
“whilst a claim for the ball point pen
be described as an advance in
now would fail for anticipation and
computer technology?
obviousness, it would still be a claim
The majority in the Full Court
for a manner of manufacture”. Their
considered that the answer to
Honours explained that the ball point
the second question was ‘no’,
pen would not meet the threshold
meaning that Aristocrat’s claim
requirement that it be an alleged
was not a manner of manufacture.

invention today because it is not new.

In their separate reasonings, all
Moreover, Gordon, Edelman, Steward
Justices of the High Court ultimately
JJ noted that the threshold should
rejected the suitability of the
not be assessed in hindsight. Their
questions proposed by the Full
Honours also cautioned that when
Court, noting that the two-step
assessing the threshold question
test unnecessarily complicated
without the benefit of expert
the analysis. The High Court
evidence as to prior art, the Court
agreed that the crucial issue is the
should avoid assuming technical
characterisation of the invention.

expertise it does not have.

The threshold requirement
However, when considering the
for ‘an alleged invention’
question of how the invention should
be characterised, their Honours
Under the Patents Act, a “patentable
reached entirely different outcomes.

invention” is defined as an
invention that is “any manner of
Team ‘Not MoM’
new manufacture the subject of
Keifel CJ, Gageler and Keane JJ
letters patent and grant of privilege
reiterated that the claimed invention
within section 6 of the Statute of
was to be characterised by reference
Monopolies, and includes an alleged
Background to the terms of the specification
invention”. All Justices of the
having regard to the substance of
Hight Court generally agreed that
Aristocrat manufactures electronic
the claim and in light of common
a threshold requirement must be
gaming machines (EGMs). Aristocrat
general knowledge. In order to
satisfied for there to be an “alleged
owns four divisional innovation
invention”. The threshold requirement characterise the invention, their
patents derived from common
is separate to the consideration of
Honours considered that it was
parent application no. 2015210489,
novelty and inventive step, which
first necessary to separate out the
directed to a gaming system and
must be assessed based on prior
elements of the claim which are
method for providing a feature
art. The threshold is low and requires not common general knowledge.

game. The question central to the
only a minimal level of ‘newness’
judgement is whether the claims of
To illustrate this point, their Honours
and ‘inventiveness’. This threshold
the innovation patents are directed
referred to a card game example [30]:
is to be assessed by reference to
to patentable subject matter.

“…[T]he facilitation of card games
the face of the claim in the context
In the Full Federal Court
by the use of packs of cards
of the specification rather than with
decision reported here, their
bearing visible symbols and
reference to the prior art base. As
Honours proposed two
values has for so long been part
such, it should be less stringent
questions for consideration:
of common general knowledge
than the independent requirements
that no one would suggest that
a new variation of the rules of a
1 Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29
2 game such as poker is patentable
Invention Pathways Pty Ltd [2010] APO 10
In 2010, the Australian Patent
Office issued a decision in
Invention Pathways 2 , refusing a
patent application for a computer
implemented business method on
the ground that the claimed subject
matter was not patentable subject
matter or a “Manner of Manufacture”
(MoM) as defined in the legislation.

The Invention Pathways decision
was one of the first of many
adverse decisions against computer
implemented inventions issued
by the Australian Patent Office.

The issue of patentability of
computer implemented business
methods has also been debated
in several subsequent Federal
Court and Full Federal Court
decisions, which set out different
considerations and assessment
criteria. The patentability of
computer implemented inventions
in Australia has been a difficult
and unsettled area of law for some
time. After over a decade of debate
and confusion, it was hoped that
the High Court would bring some
clarity to this challenging area of law.

Instead, the opposite has happened.

> Is the invention claimed a