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Following Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131 (Aristocrat ‘25), IP Australia updated its Patent Manual guidance on patentable subject matter for computer implemented inventions (CIIs). We explore the implications of the first Australian Patent Office decision to apply that updated approach: CQMS Pty Ltd v Joy Global Surface Mining Inc [2026] APO 19 (CQMS).
As discussed in our earlier article on those updates, the pathway for protecting computer-implemented inventions in Australia is now clearer, but remains highly dependent on how the invention is claimed.
The CQMS decision confirms that useful or commercially valuable outcomes are not sufficient on their own. The claims must still define patentable subject matter, assessed by reference to the substance of the invention as claimed.
Why this matters for applicants
CQMS provides early practical guidance on how IP Australia may apply the post-Aristocrat approach to CIIs.
For applicants, the key point is that generic computing and a useful recommendation may not be enough. However, a properly claimed and adequately disclosed interaction between a technical device, its data and computerised processing may materially affect the characterisation of the invention.
The decision is particularly relevant for inventions involving software, data analytics, AI, automated recommendations, sensors or other technical equipment. It shows that technical features should not be treated as mere background context where they form part of how the claimed invention actually works.
The stronger patent story is usually found in the implemented system: the data source, the technical device, the software-controlled processing, the interaction between them, and the practical result produced by that combination.
The decision in brief
CQMS concerned an opposition to grant of Joy Global’s Australian patent application (AU 2018203749), which related to predictively determining when wear components of mining machinery should be replaced. Although the application was challenged on several grounds, our commentary focuses on manner of manufacture – the Australian legal test for patentable subject matter.
Before turning to the claims, the Delegate reviewed the relevant decisions on manner of manufacture, along with the revised approach from the Patent Manual1. This approach requires the substance of the claimed invention to be properly characterised by first determining if any physical elements alone involve patentable subject matter, and if not, whether any additional factors should be considered2.
The Delegate focused on the characterisation of independent system claim 1 and method claim 14 of the opposed application. Independent claim 19 was similar in scope to system claim 1. Although the parties essentially treated the system and method claims as having the same characterisation, the outcome in CQMS ultimately turned on the method claim’s use of hardware to measure a physical characteristic of the wear component3.
The table below identifies selected claim features relevant to the Delegate’s analysis of claims 1 and 14. It is not a substitute for the full claim language, but highlights the features of each claim that appear to have been most relevant to the different outcomes.
| Feature | Claim 1: replacement recommendation system | Claim 14: device-assisted replacement method | Why it mattered |
| Claim framing / preamble | A system for predicting replacement of a component of a mining machine. | A method for predicting replacement of a component included in a mining machine. | The claims appeared similar at a high level. Both concerned predicting replacement of mining-machine components. The important distinction was not the field of use, but whether the claim tied the computer processing to a technical measurement step involving the physical component.f a component of a mining machine. |
| Operative claim language | “determine a replacement cost for the component” including “a cost of downtime,” “a material cost,” and “an operating cost”; “determine a replacement recommendation for the component” based on the wear rate, replacement cost and discard criteria; and “output the replacement recommendation.” | “receiving, with an electronic processor, data collected by a wear detection device representing a current dimension of the component”; then comparing that current dimension with a discard dimension and, in specified circumstances, “adding, with the electronic processor, the component to [a] used pool of components.” | This was the key claim feature. Claim 14 did not merely use a processor to make a recommendation. It required the processor to receive measurement data collected by a wear detection device about the current dimension of the physical component. That device-collected data was central to why the claim was treated differently. |
| Role of the processor | The processor used dimensional and cost information to calculate a wear rate, determine replacement cost, determine a replacement recommendation, and output that recommendation. | The processor received device-collected current-dimension data, compared that data with a discard dimension, predicted a future dimension, and controlled whether the component was added to a used pool of components. | Claim 1 was characterised as using the processor to implement a decision-making or recommendation process. Claim 14 more clearly defined technical interaction between the processor and measurement data collected from the physical component. |
| Source and nature of input data | A current dimension and historical dimensions of the component, together with cost information. The claim did not specify how the current dimension was obtained. | Data collected by a wear detection device representing the current dimension of the component. | This is the clearest point of distinction. Claim 14 expressly required device-collected data from the physical component, whereas claim 1 was not limited to a particular measurement device or data-collection arrangement. |
| Connection to the physical component | The claim referred to a component of a mining machine and to dimensions of that component, but did not require a device that collected the current-dimension data. | The claim tied the claimed processing to data collected by a wear detection device representing the component’s current physical dimension. | The physical component was present in both claims, but claim 14 went further by requiring the claimed process to operate on device-collected measurement data from that component. That was the feature that gave the claim a stronger technical character. |
| How the invention was characterized | The Delegate treated claim 1 as being directed, in substance, to a computer-implemented scheme for making a replacement recommendation. | The Delegate treated claim 14 differently because the method was anchored in data collected by a wear detection device from the physical component. | The contrast illustrates that a claim is less likely to be saved by merely referring to a machine component or outputting a recommendation. The stronger position is where the claim defines how computer processing uses data obtained through a technical measurement arrangement. |
| Practical takeaway | A claim that focuses on calculated outputs or recommendations may be vulnerable if the technical data-collection pathway is not defined. | A claim is in a stronger position where it ties the computer processing to measurement data collected from a physical device and uses that data in a defined process. | For CIIs, the claim should identify the technical feature that gives the processing its practical application. In claim 14, that feature was the wear detection device collecting current-dimension data from the component. |
Why claim 1 failed?
While claim 1 defined a system, the only hardware component was a conventional electronic processor, which was not considered to be new and therefore insufficient alone for patentability4.
Regarding the additional factors, the Delegate reviewed the specification and noted that the physical system was described only generally and “it is left to the PSA to choose appropriate hardware and any other implementation details”5. The Delegate was not satisfied that the claimed invention involved an improvement in the working of the processor itself.
The applicant argued that claim 1 was directed to the “physical and predictive aspects” of optimising component replacement and material use. The Delegate rejected that characterisation, finding that the invention optimised overall operating costs rather than material utilisation6. The claim was also considered to define a broad functional outcome without any specific software implementation7. There was no technical effect occurring external to the computer, or technical problem solved outside of or within the computer.
While the system of claim 1 involved physical components, the Delegate considered the decision process of when to replace those components as “an abstract, mental exercise of weighing competing costs, which is of the nature of a business scheme”8.
Why claim 14 was treated differently?
The difference was not simply that claim 14 referred to a physical device. Adding a sensor, machine or other hardware label will not, by itself, convert an otherwise abstract scheme into patentable subject matter.
What mattered was the claimed role of the wear detection device. Claim 14 required the processor to receive data collected by that device, representing the component’s current dimension, and to use that data in the comparison and prediction steps of the method.
The Delegate observed that claim 14 included an electronic processor and a wear detection device with “a defined interaction between the two,” because the processor received device-collected data representing the current dimension of the component.9 The device was relevant because it was defined by what it did within the claimed method: collecting data about a physical characteristic of the component.10
That was different from claim 1, whose operative focus was the calculation of wear-related and replacement-related costs to generate a recommendation. The mining setting did not, by itself, alter the claim’s substantive character.
The Delegate also found that, even if the wear detection device were conventional, the claimed interaction between the device, the collected data, the processor and the software processing could amount to a new system with altered functionality.11
Support and enablement: a separate issue
Claim 14 was found to be a manner of manufacture, but it still failed on support and enablement grounds. That is an important qualification to the decision.
Where patentability depends on a technical feature, the application must adequately disclose that feature and its role in the claimed combination. It is not enough simply to identify a sensor or detector at a high level. The specification must provide a proper basis for the claimed breadth of its operation and for the way its output is used in the claimed process.
For CIIs, this means that the disclosure should connect the relevant technical input with the processing that produces the asserted practical result. A technical feature that assists on manner of manufacture may therefore require closer attention to support and enablement.
Practical lessons for applicants
CQMS does not establish that CIIs require hardware, nor that conventional hardware will necessarily supply the required technical character. Rather, it illustrates the importance of identifying the features that give the claimed combination its practical operation.
| A claim vulnerable to abstraction | A more robust technical framing |
| Applies decision logic to available information and outputs a recommendation | Defines the technical source of relevant data and what that data represents |
| Treats the relevant device, machinery or industrial environment as context | Explains the device’s role in obtaining data used by the claimed process |
| Defines the processor principally by its informational output | Defines the functional relationship between the technical input and computerised processing |
| Relies on the usefulness of the output or commercial result | Connects the data source, processing and resulting system operation |
| Refers generally to hardware without technical detail | Provides sufficient disclosure to support the technical feature relied upon |
The drafting objective is not to add unnecessary implementation detail. It is to ensure that the claims and specification capture the features that actually give the invention its technical character.
In prosecution, an objection that reduces an invention to an abstract scheme should be answered by returning to the claim as a whole. The relevant question is whether the claimed technical features form part of the invention’s operation, rather than merely its setting.
In summary, for applicants the lesson is straightforward: generic computing and a useful recommendation may not be enough. However, a properly claimed and adequately disclosed interaction between a technical device, its data and computerised processing may materially affect the characterisation of the invention.
How can we help
For businesses developing computer-implemented technology, early patent advice can help identify the features that provide an invention’s technical character and ensure they are properly reflected in the claims and specification.
Footnotes
1. The Patent Manual of Procedure and Practice (PMPP) at Section 5.6.8.6.
2. CQMS Pty Ltd v Joy Global Surface Mining Inc [2026] APO 19 at [269]-[294]
3. See CQMS [2026] APO 19 at [316]; [320]-[322]
4. See CQMS [2026] APO 19 at [318]
5. See CQMS [2026] APO 19 at [324]
6. See CQMS [2026] APO 19 at [327]
7. See CQMS [2026] APO 19 at [332]
8. See CQMS [2026] APO 19 at [339]
9. See CQMS [2026] APO 19 at [325]
10. See CQMS [2026] APO 19 at [327]
11. See CQMS [2026] APO 19 at [330]
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.
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