The High Court of Australia recently refused the Australian Commissioner of Patents’ application for special leave to appeal the decision of the Full Court of the Federal Court of Australia in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131 (“Aristocrat ‘25”). As a result, IP Australia has just updated the section of the Patent Manual of Practice and Procedure (“PMPP”) related to patentability of computer implemented inventions: https://manuals.ipaustralia.gov.au/patent/5.6.8.6-computer-implemented-inventions-schemes-and-business-methods.

IP Australia revised the PMPP to more closely follow the framework expounded in Aristocrat ‘25 to determine whether a claimed invention is a manner of manufacture (i.e. is patentable subject matter). The Aristocrat framework is based on fundamental patentable subject matter principles set out by the High Court of Australia in National Research and Development Corporation v Commissioner of Patents [1959] HCA 67 and in D’Arcy v Myriad Genetics Inc [2015] HCA 35. Section 5.6.8.6 of the PMPP now explores the dichotomy between whether a “properly characterised” computer-implemented invention, as a matter of substance, involves:

(i) an abstract idea which is manipulated on a computer - which is unpatentable, 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.

A revised decision-making framework

The revised PMPP also includes a breakdown of why previous Federal Court decisions fall into either category and a new decision-making framework (complete with examples) for determining whether a claimed invention is patentable subject matter. The framework operates as follows:

1. Understanding the physical elements of a claimed invention

  • If a claim defines software elements alone (e.g., purely functional language) without including any physical elements, additional factors will need to be considered.
  • If a claim defines known (i.e., common general knowledge in the art or “CGK”) computer elements, additional factors will need to be considered.
  • If a claim defines physical elements that are not CGK and a new combination requiring interaction between physical elements and non-physical elements, then the claimed invention will be considered patentable subject matter without needing to consider additional factors.

2. Additional factors to consider from 1.1. and 1.2., noting that the computerised products or systems discussed would be storing or running the claimed invention (if the claimed invention consists of software elements only) are:

  • Whether a computerised product/system works in an improved or altered manner - as in, does the computerised product/system work better or differently as a product/system generally, rather than a computerised product/system whose only alteration is the inclusion of the claimed invention.
  • Whether there is a relevant technical effect occurring outside of a computerised product/system, or a technical problem is solved outside of the computerised product/system.
  • Whether a technical problem is solved with a computerised product/system.
  • Claimed inventions where a computer is essential for performing the invention (with no practical “pen and paper” equivalent) is not on its own a sufficient factor to confer patentability.

Although it remains to be seen whether the new framework will provide for more objective and predictable examination of patent applications for computer-implemented inventions in Australia, It is likely that the updated PMPP will be a positive development for inventors and industry. For example, in its application to inventions beyond the gaming context in issue in Aristocrat ‘25. It also enables some enhanced flexibility, in that the updated PMPP does not identify “improving computer technology” as an essential requirement for an invention to constitute patentable subject matter.

Ultimately, these framework updates should be applied by the Australian Patent Office in the spirit of Aristocrat ’25; that patentable subject matter is intended to operate as a low hurdle to patentability, in comparison to the more rigorous criteria of novelty and inventive step.