A long-running series of Australian court proceedings on the patentability of Computer Implemented Inventions (CIIs) recently came to an end. This has resulted in a new framework for the examination of CIIs at the Australian Patent Office (APO).

The invention in question related to electronic gaming machines comprising hardware and software owned by Aristocrat Technologies Australia Pty Ltd. The initial rejection by the APO resulted in a series of appeals that went as high as Australia’s highest precedent Court, the High Court, as briefly outlined below:

• November 2022:[1] One of the seven judges scheduled to hear the appeal in the High Court was not present due to illness. As a result, a split decision (3 positive and 3 negative) was handed down. The split decision meant the appealed decision maintained, and an independent claim was found not to concern patentable subject matter. The case was hence referred back to the lower courts to consider the patentability of remaining claims.
• September 2025 (“Aristocrat ‘25”):[2] The second-highest court in Australia, the Court of Appeal found that (i) the positive finding of the High Court was correct, and (ii) the remaining claims were for patentable subject matter. The APO requested leave to appeal the Aristocrat ‘25 decision at the High Court.
• February 2026:[3] The High Court found that “there [was] insufficient reason to doubt the correctness of the decision” of Aristocrat ‘25, and leave was refused. As such, the Aristocrat ‘25 decision stands.

One of the key findings in Aristocrat ’25 was, as found by the High Court earlier, 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” (Aristocrat ’25, [127], emphasis added).

Additionally, the Court provided an outline of the correct test for the patentability of CIIs in Aristocrat ’25 at [131]:

“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”. 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.” (Emphasis added)

The phrase “artificial state of affairs” in the context of a useful effect reflects the case of NRDC,[4] a landmark decision of the High Court in 1959, which was considered to provide a flexible and adaptive test. The combination of the flexible, adaptable precedent and consideration of the invention as a whole (rather than characterisation based on novel features) is generally considered positive in the patentability of CIIs in Australia.

Following the High Court’s refusal to grant leave to appeal, the APO prepared a new framework for use in the examination of CIIs in Australia. The new framework comprises two steps:

Step 1 relates to characterisation of the physical features of the claimed invention to determine if additional features need to be considered. A general guideline is as follows:

• Software only invention: Step 2 required.
• Physical features are standard features of a known computer, including processor: Step 2 required.
• Physical features describe a new physical product or system and the claim defines a new combination having the required interaction between integers: Step 2 NOT required, invention is patentable subject matter.

Step 2, if required, involves consideration of the following additional factors to determine if the CII is patentable subject matter:

• Does the computerised product or system work in an improved or altered manner, i.e. better or differently?
• Does a relevant technical effect occur outside a computerised product or system, or is a technical problem outside the computerised product or system solved?
• Whether a technical problem is solved with a computerised product or system. We interpret this to relate to whether a problem in computer technology is addressed.
• Even if a computer is essential for performing the invention, the computer must be more than an intermediary. We interpret this to relate to whether the invention is merely an abstract idea implemented on a computer.

As the framework above is new, and still open for consultation, we expect to see fluctuation in examination of CIIs in Australia over the coming months. We suggest the following practical steps in relation to Australian prosecution.

Firstly, a first Examiner’s Report sets a 12-month deadline to achieve acceptance (allowance). We suggest responding earlier in the 12-month period to allow time in case multiple rounds of prosecution are required, particularly as the examination framework is new.

Secondly, it may be useful to use the Patent Prosecution Highway (PPH) where available, particularly if the Office of Earlier Examination is the European Patent Office (EPO).

Finally, we expect that including implementation detail in drafting will remain very important to avoid characterisation of the CII as an abstract idea or scheme. Implementation detail is also useful for the Australian requirements for enablement and support. The new framework will apply to AI-related inventions, where implementation detail for support and enablement will also be important.

[1] Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29

[2] Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131

[3] Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd ACN 001 660 715 [2026] HCADisp 15 S153/2025

[4] National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252