Aristocrat case update - Special leave refused

More Certainty for Innovators of Computer-Implemented Inventions

Summary

• The High Court of Australia has refused an application by the Commissioner of Patents seeking special leave to appeal the decision of the Full Federal Court in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131.
• The 2025 Full Federal Court decision had found in favour of Aristocrat, holding that certain claims directed to an electronic gaming machine (EGM) were patentable subject matter contrary to the position of the Commissioner of Patents. The High Court considered the approach proposed by the Full Federal Court decision was correct and so declined the special leave request.
• The result is that the Full Federal Court's approach to assessing patentable subject matter now stands. This approach is almost universally seen as more favourable to patent applicants on the question of eligibility of computer-implemented inventions (CIIs) in Australia. Practically, this should mean fewer objections on eligibility grounds and improved prospects for patent applicants looking to protect their computer-implemented innovations in Australia.

Background

This "dispute" kicked off in late 2017 and early 2018 with the Commissioner of Patents refusing four Aristocrat innovation patents directed to EGMs on the basis they were not directed to patentable subject matter. That matter eventually found its way to the Full Federal Court where it found in favour of the Commissioner, and then onto the High Court where, with only six justices hearing the matter, the Court split evenly with three justices finding for Aristocrat and the remaining three finding for the Commissioner (see Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 (Aristocrat HCA)).

In these unusual procedural circumstances where there was no majority decision, the earlier Full Federal Court's decision that had found for the Commissioner, but which had also adopted an unorthodox "advance in computer technology" test for CIIs, stood by operation of s 23(2)(a) of the Judiciary Act 1903 (Cth) (see our article here).

This initial sequence of litigation was decided on the basis of a representative patent claim selected from the refused innovation patents, so the next step was consideration of the remaining innovation patent claims. Assessment of these remaining claims eventually made its way to the Full Federal Court again, who then found for Aristocrat in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131 (Aristocrat 2025) (see our article here).

Critically in Aristocrat 2025, the Full Federal Court adopted a mode of reasoning aligned with the three justices of the High Court who had earlier found for Aristocrat in Aristocrat HCA and who had proposed a test for assessing patentable subject matter more in line with traditional Australian jurisprudence.

This approach asks (see Aristocrat 2025 at [131]):

"whether, properly characterised, the subject matter that is alleged to be patentable is:

1. an abstract idea which is manipulated on a computer; or
2. an abstract idea which is implemented on a computer to produce an artificial state of affairs and a useful result " [Emphasis Added].

High Court Refusal

Against that background, the High Court's refusal of the Commissioner's application for special leave takes on particular significance. In the disposition of the special leave application (see Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2026] HCA at [2]) the High Court stated:

"In light of the background to this application, there is insufficient reason to doubt the correctness of the decision of the Full Court. A grant of special leave to appeal is not in the interests of the administration of justice in circumstances in which that Full Court applied established principles concerning the assessment of manner of manufacture and reached a unanimous and clear conclusion as to characterisation. There is therefore no utility in a grant of special leave to consider the operation of rules of precedent concerning s 23(2)(a) of the Judiciary Act" [Emphasis Added].

Normally, any reasoning provided by the High Court in these circumstances is fairly terse, but here the more expansive language used goes beyond a routine refusal and could be read as endorsing not only the findings of the Full Federal Court in Aristocrat 2025, but also their reasoning.

This is critical, as the Full Federal Court specifically rejected the approach taken by the Commissioner of Patents to assess whether a CII is directed to patentable subject matter. This approach involved effectively ignoring elements of a patent claim by stripping away integers characterised as common general knowledge (see Aristocrat 2025 at [71]). The Full Federal Court's approach places more emphasis on examining the claim as a whole and whether the interaction of the parts produced a useful result.

Conclusion

In so far as this litigation is concerned, this is the end of the line for both parties and while some of the innovation patent claims were cancelled as a result of Aristocrat HCA, Aristocrat has substantially succeeded in this matter with the balance of claims now standing as valid.

More generally, the apparent affirmation of Aristocrat 2025 by the High Court should mean that the approach adopted in this decision will now be followed by the Courts and IP Australia when assessing the patentability of CII. IP Australia had made some minimal changes to their Patent Manual of Practice and Procedure following Aristocrat 2025, presumably on the basis that the decision was being appealed by the Commissioner. It remains to be seen to what extent the Manual will now be updated to reflect the High Court's rejection of the Commissioner's appeal.

It is important to note that the eligibility of CIIs will continue to turn on a proper characterisation of the claim in suit, and the decision by the High Court should not be read as rendering all computer‑implemented inventions patentable.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.