February 6, 2023

Volume XIII, Number 37

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February 03, 2023

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High Court Split 3-3 in Landmark Decision on the Patentability of Computer Implemented Inventions in Australia

The High Court has issued its eagerly awaited decision in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 (Aristocrat). Six High Court Justices presided over the appeal from the Full Federal Court of Australia (Full Court Decision), which we wrote about in November 2021. The High Court was split 3-3, meaning the appeal was dismissed and Aristocrat’s patent application will not proceed to grant.

The split decision leaves the question of the patentability of computer implemented inventions (CIIs) somewhat unresolved in Australia.

Chief Justice Kiefel and Justices Gageler and Keane moved to dismiss the appeal and found that the electronic gaming machine (EGM) that was the subject of the claimed patent was not a manner of manufacture and therefore did not qualify as patentable subject matter. Their Honours found that the new game devised by Aristocrat was an idea and not itself patentable subject matter, and that there was nothing in claim 1 that might lead to the conclusion that it had produced some adaptation or alteration of, or addition to, technology otherwise well-known in the common general knowledge. Notably, their Honours took a somewhat critical view of the two-step test adopted by the majority in the Full Court Decision, stating that it “… unnecessarily complicates the analysis of the critical issue” (paragraph 77 of Aristocrat).

On the other side of the bench, Justices Gordon, Edelman and Steward moved to allow the appeal, finding at paragraph 154:

“The claimed operation of the game controller, displayed through the player interface, is an altered EGM involving an artificial state of affairs and a useful result amounting to a manner of manufacture.”

Key to their Honours’ reasoning was their finding that claim 1, properly characterised, was to an EGM incorporating an interdependent player interface and a game controller which included feature games and configurable symbols, and was more than merely the ‘idea of a game incorporated into a game controller’ (at paragraph 154).

Interestingly, neither of the split judgements found that there had to be an advance in computer technology for a CII to meet the manner of manufacture test. This is in tension with the majority in the Full Court Decision, who held that to constitute a manner of manufacture, CIIs must involve some kind of advance in computer technology. Chief Justice Kiefel, Gageler J and Keane J found (at paragraph 77) that a CII does not necessarily need to involve an improvement to technology so long as it features some “adaptation of, alteration of, or addition to technology otherwise known to the common general knowledge“. Likewise, Gordon J, Edelman J and Steward J found at paragraph 122 “…the artificial state of affairs may be an improvement in computer technology, but it need not be.”

While a split decision means Australia will have to continue to wait for more definitive guidance from the High Court on the patentability of CIIs, much can still be gleaned from their Honours’ findings.

Copyright 2023 K & L GatesNational Law Review, Volume XII, Number 234

About this Author

Patrick Sands IP Litigation Attorney K&L Gates Australia

Patrick is a partner in the Melbourne Intellectual Property (IP) group with a focus on IP litigation, especially life sciences and technology patent cases.

Patrick is one of Australia’s leading intellectual property lawyers, providing commercially focused advice and guidance on major strategic IP disputes and regulatory matters to sophisticated companies. He is passionate about the intersect of science, technology, and the law and achieving commercial solutions to complex problems.

Patrick is a very experienced IP...

Senior Associate

Harrison is a senior associate in the intellectual property (IP) team focusing on IP litigation, and in particular, patent and trade mark disputes. He reguarly acts in complex IP litigation and large scale commercial disputes. Harrison's experience covers various industries including information technology, life sciences and fast moving consumer goods.

Harrison has undertaken post-graduate studies in international intellectual property law and an internship at the World Trade Organization. This provides him with a sound understanding of the...


John is a lawyer in the intellectual property team in Melbourne. His focus is on advising clients in relation to brand protection, trade marks, copyright and intellectual property litigation. John has experience in acting for clients with complex legal problems across various industries including information technology, consumer goods and construction.