In the recent decision of Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131 (Aristocrat 2025), the Full Federal Court of Australia has allowed an appeal by Aristocrat Technologies Australia Pty Ltd against the Commissioner of Patents, finding the claims of several patents to electronic gaming machines are directed to a patentable subject matter (known as a “manner of manufacture”). This subject matter requirement is a separate requirement from novelty and inventiveness, and relates to the type of developments that should be allowed to be patented. For example, mere schemes, abstract ideas and theories have traditionally been excluded as they lack practical effect.

An ongoing issue has been how to decide which types of software or computer implemented inventions should be allowed to be patented. In this case, Aristocrat had applied for several patents directed to electronic gaming machines, but the Commissioner of Patents (i.e. the patent office) rejected them on patentable subject matter grounds. This case has a tortured history where it went to the High Court, but was only heard by six judges who then issued a 3:3 split (non) decision and resulting in the decision of a lower Court being affirmed. As a result, the patents in suit have now been reviewed by 13 judges in the Federal Court or High Court, with seven of them, including three High Court judges, now finding the patents are directed to patentable subject matter. This decision rejects the current approach of the patent office as being too narrow and avoids the logical inconsistency that while a mechanical gaming machine having the features of the contested patents is patentable, an implementation involving an electronic gaming machine is not.

The Court reviewed the procedural history of the case and the differing opinions at each level, and ultimately sided with the “allowing reasons” of the three judges in the High Court who found the patents directed to patentable subject matter. The Full Court’s analysis began with the characterisation of the claimed invention. It was determined that the invention should be viewed as a combination of both the inventive and non-inventive elements, encompassing an interdependent player interface and a game controller, which includes “feature games” and “configurable symbols”.  The fight was then over whether the invention was simply a game (i.e. a set of rules or abstract idea) implemented in a general purpose computer as proposed by the Commissioner of Patents, or whether the interaction of the components represented an improvement in the functionality of the electronic gaming machine.

The Full Court rejected the Commissioner of Patents’ argument that the invention should be characterised as a mere scheme or set of rules for playing a game (Aristocrat 2025 at [131]). Instead, the Full Court highlighted the importance of considering the invention as a whole rather than isolating the inventive aspects from the non-inventive ones (Aristocrat 2025 at [127]). The Full Court then found the use of configurable symbols in the feature games and their role in enhancing the player’s experience represented a substantial improvement in the functionality of the electronic gaming machine (Aristocrat 2025 at [127]). In particular, they found these features interacted with, and were dependent upon, the other components of the gaming machine such that they were considered to be inextricably connected to the player interface.

This holistic approach ensured the invention was not merely seen as an abstract idea or set of rules implemented on a computer, but as a practical application that produces an artificial state of affairs and a useful result. The court’s final ruling was also influenced by the need to encourage innovation and not to disqualify modern technological advancements from patent eligibility simply because they use electronic technology instead of mechanical means(Aristocrat 2025 at [134]). It avoided the outcome that a mechanical gaming machine was patentable, but an electronic gaming machine was not.

This decision marks a pivotal moment in the ongoing legal discourse surrounding patent eligibility for computer-implemented inventions and underscores the importance of a comprehensive and holistic approach to patent eligibility. By recognising how the inventive and non-inventive components of the invention interact to generate a useful result, the Court has set a precedent that will influence future cases involving computer-implemented inventions. This ruling not only affirms the patentability of Aristocrat’s inventions but also reinforces the broader principles of encouraging technological innovation and protecting intellectual property rights.

The Commissioner of Patents now has the option to seek special leave to appeal this decision of the Full Federal Court to the High Court (again!). On one view, this would not appear necessary as the Full Federal Court has provided a workable approach consistent with long-standing case law. It is also consistent with the approach of the three judges of the High Court set out in the allowing reasons, noting that these three judges would also hear any new appeal. Any special leave application must be filed within 28 days of this judgement so we will know soon enough if there will be another chapter to this long running litigation.

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From an intellectual property (IP) perspective, a challenge with protecting space related technology is that it is located in space. However patents, which are traditionally used to protect and de-risk investment in research and development, can only be enforced in the territory of a country where a patent exists. While this makes enforcement more challenging, patent attorneys have had to deal with these jurisdictional issues for many years in fields such as telecommunications and internet technologies.

These technologies may span multiple jurisdictions, with different parts of the system located in separate jurisdictions. For example, a transmitter of a telecommunications system may be located in one jurisdiction and a receiver may be in another, and so the system as a whole, is never in a single country. A similar issue arises in systems where the different parts can be independently manufactured by different entities or in different countries, so that no single entity makes and sells the complete system.

To address this, patent applications can be filed in the countries where the parts exist and focussed on each separate part in the system, such as the receiver and the transmitter. The patent can include a first claim set to the transmitter and its interactions with the receiver, and a second claim set to the receiver and its interactions with the transmitter. In this way infringement by each part of system can be separately captured.

In the space domain, the task is to identify which parts of the system have a touchpoint to a component on the ground, or are solving a problem on the ground. Through careful system analysis, protection can typically be provided even in cases where parts of the system are deployed in space.

For example, if a ground system is controlling a satellite in space, or processing data received from the satellite, then method and software claims can be used to capture the operations in space. Similarly, if information gained from the satellite can be used to make a decision on the ground, then this system can potentially be protected. Claims can also be directed to where satellites terminals are used, or where a satellite is built or launched. Additionally layered patent protection strategies can often be utilised.

In most space systems there are multiple technical problems that need to be solved to provide a robust working system. Patents are directed to solving specific technical problems, and by using a family of patents, with each patent directed to a different problem, layered protection, potentially across multiple jurisdictions, can be provided for the overall system to provide greater enforcement options.

At Madderns, we specialise in helping high-tech companies protect their innovations, whether in space or on the ground.

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Background
Last time I wrote about this long-running litigation between Aristocrat Technologies Australia Pty Limited (Aristocrat) and the Commissioner of Patents (Commissioner) back in September 2024, Aristocrat had been successful in its application for leave to appeal an earlier Federal Court decision rejecting a bunch of “residual” claims in various patents directed to electronic gaming machines (EGM) (see Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2024] FCA 987 (Leave Decision)).

This matter commenced back in 2018 with the Commissioner (i.e. the Australian Patent Office) rejecting several Aristocrat innovation patents directed to a new computer-implemented gaming machine on the basis that they weren’t directed to patentable subject matter. Aristocrat appealed to the Federal Court, with the parties agreeing to conduct the litigation on the basis of a “representative” claim selected from the rejected patents.  Aristocrat succeeded in this initial appeal, with the Federal Court finding the representative claim to be patentable. This decision was then overturned by the Full Federal Court on appeal by the Commissioner. Finally (and sensationally), the High Court of Australia, on a further appeal by Aristocrat, split evenly in 2022 with three justices dismissing the appeal and the remaining three justices allowing the appeal. Because of the tie, the earlier Full Court decision was upheld.

Consideration by the High Court
As a result of the Leave Decision late last year, Aristocrat preserved for itself the option of having the litigation currently dealing with the residual claims “removed” to the High Court for its determination without first having the matter heard by the Full Federal Court. Aristocrat would, however, first need to convince the High Court to take on the matter by being successful in an application for special leave to appeal.

Unfortunately for Aristocrat, the High Court has recently refused special leave stating that:

“The Appeal does not raise an issue of wide and significant public importance which requires urgent resolution and would justify the interruption of the appellate process of the Full Court of the Federal Court, the absence of the reasons of that Court, and allowing the applicant to by-pass the requirements of s 35A of the Judiciary Act” (Aristocrat v Commissioner [2025] HCADisp 7 at [2]).”

This is perhaps not a surprising decision by the High Court, although disappointing for those of us who would like to see the High Court finally settle the approach that should be taken with respect to the patentability of computer-implemented inventions.

This is not the end!
Aristocrat will presumably continue with its appeal, but now to the Full Federal Court. The Full Court will then in due course make its determination as to the patentability of the residual claims. Depending on that decision, either Aristocrat or the Commissioner could apply to the High Court for special leave to appeal. At this stage, the High Court will either refuse special leave and finally put an end to this litigation or grant the application and perhaps give its considered view as to the correct approach to be adopted in the assessment of the patentability of computer-implemented inventions.

Stay tuned to find out…

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Typically, the question of whether leave should be granted from a first instance decision of the Federal Court is considered by the Full Federal Court at the same time as the merits of the appeal. Here Aristocrat, by applying to have the question of leave initially determined by a single judge of the Federal Court, has procedurally preserved its ability to apply to the High Court to hear any appeal – potentially leapfrogging the Full Federal Court if its application is successful.

Litigation History – The Representative Claim

A central feature of this litigation between Aristocrat and the Commissioner concerning the patentability of electronic gaming machines (EGMs) is that although four innovation patents were initially rejected by the Commissioner on the basis that they were not directed to patentable subject matter, subsequent appeals were all based on the consideration of a single representative patent claim selected from the innovation patents in suit (eg, see appeals to the Federal Court in Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778 (Aristocrat FCA), the Full Federal Court in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 (Aristocrat FCAFC) and subsequently the High Court (Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 (Aristocrat HCA).

The parties agreed that if this representative patent claim was found to be directed to patentable subject matter, then all claims of the four disputed innovation patents would also be patentable. If on the other hand, the representative claim was rejected, then a selection of the remaining claims (referred to as the “residual” claims) would still require assessment by the Court. The Leave Decision considers these residual claims.

High Court – No Decision but Disapproval of the Two-Step Approach

Another important and unusual feature of this litigation was that the High Court bench that heard the appeal from the Full Federal Court was comprised of only six justices. These justices then split evenly on the central question of the representative claim’s patentability, with three justices issuing joint reasons dismissing the appeal (dismissing reasons), and the remaining three justices issuing joint reasons allowing the appeal (allowing reasons).

In the unusual circumstances where the High Court is evenly split, Section 23(2)(a) of the Judiciary Act 1903 (Cth) applies. This provision essentially states that where there is a “tie”, then the decision of the Court below will be affirmed. Therefore, the relevant decision was that of the Full Court in Aristocrat FCAFC, where the Commissioner successfully overturned the first instance decision of the primary judge in Aristocrat FCA, that the representative claim was directed to patentable subject matter. Accordingly, the representative claim was finally rejected when the Full Federal Court’s decision was affirmed following Section 23(2)(a).

This brings us to yet another distinguishing feature of this litigation. Neither the allowing reasons nor the dismissing reasons of the High Court agreed with the “new” approach taken by Middleton and Perram JJ as set out in the plurality judgment of Aristocrat FCAFC. This approach concerned the central question of how to assess whether a patent claim is directed to patentable subject matter and involved a newly-posited two-step analysis that asked two questions – is the invention claimed a computer-implemented invention; and if so, can the invention claimed broadly be described as an advance in computer technology?

Back to the Federal Court

When the matter went back to the primary judge of the Federal Court for consideration of the remaining residual claims in Aristocrat Technologies Australia Pty Limited v Commissioner of Patents (No 3) [2024] FCA 212 (Aristocrat No 3), the primary judge felt bound, following a consideration of section 23(2)(a) and the terms of the remitter in the Full Court’s decision, to follow Middleton and Perram JJ’s two-step approach. This resulted in a finding that all the residual claims were not directed to patentable subject matter. This was despite the High Court’s apparent disapproval of the two-step approach as noted above.

This brings us finally to the present Leave Decision where Aristocrat has been granted leave to appeal the rejection of the residual claims by the Federal Court in Aristocrat No 3.

Leave Decision

Following a review of the authorities, Bryan J determined there were three factors to consider in  whether to grant leave to appeal (Leave Decision at [50]). These comprised:

1. Whether the primary decision is attended with sufficient doubt to warrant it being reconsidered on appeal.
2. Whether the issues proposed to be raised by the appeal are of general application.
3. The consequences of a refusal to grant leave – particularly whether the refusal would finally determine the matter.

Aristocrat submitted that leave to appeal should be granted because:

1. The Aristocrat No 3 judgment was effectively a final determination that the four innovation patents in suit would not be granted (Leave Decision at [52]) and that these patents (and other related standard applications) were of significant commercial value.
2. There was an arguable case that the primary judge was not bound by the plurality judgment of Middleton and Perram JJ in Aristocrat FCAFC (Leave Decision at [53]).
3. That the issues being considered had wider significance – particularly in the case where the plurality judgment’s approach to assessing patentable subject matter was said by Aristocrat to have been criticised by all six justices of the High Court (Leave Decision at [54]).

In reply, the Commissioner submitted that leave should be refused because:

1. The primary judge’s approach in following the plurality judgment was plainly correct and in accordance with s 23(2)(a) (Leave Decision at [56]).
2. There were no issues of more general or wider importance given the primary judge’s consideration of s 23(2)(a) was in accordance with normal statutory interpretation principles and there was a long line of Full Court authority applicable to assessing patentable subject matter in relation to computer-implemented inventions (Leave Decision at [57]).
3. The residual claims were not a suitable vehicle for considering the questions on appeal (Leave Decision at [58]).
4. There would be no substantial injustice if leave was not granted as the innovation patents in suit had all expired (Leave Decision at [59]).

As noted by Bryan J (Leave Decision at [60]), the application for leave was “finely balanced” with none of the factors weighing in favour of the granting of leave being “described as strong”.

Ultimately, Bryan J considered there were two factors that tipped the balance in favour of Aristocrat and the granting of leave to appeal (Leave Decision at [65]). The first factor was that the decision of Aristocrat 3 being appealed from was in effect a final determination that none of the innovation patents in suit would be granted. The second factor (and perhaps the more compelling for Bryan J) was that the grounds of appeal are arguable in that they relate to how section 23(2)(a) should operate in the “unusual circumstances of this case”.

Conclusion

Aristocrat can now apply to the High Court to have the appeal removed to itself for the High Court’s consideration. It is by no means certain the High Court will agree to take this appeal on, in which case the appeal will be heard by the Full Federal Court following standard procedure.

Even if the High Court agreed to take on the appeal, it could just confine itself to consider the operation of section 23(2)(a) in these unusual circumstances where a “lower” Court (ie the Federal Court in Aristocrat 3) has felt compelled to follow the approach of a “higher” Court (ie, the plurality judgment of the Full Federal Court in Aristocrat FCAFC) despite the apparent disapproval by the “highest” Court of the higher court’s approach (e.g. see both the dismissing and allowing reasons of the High Court in Aristocrat HCA).

Whether the High Court would also be minded to bring its authority to the question of how the patentability of computer-implemented inventions should be assessed is not clear. However, there was certainly a fundamental divide in approaches to this question evidenced by the dismissing and allowing reasons when the High Court last considered this topic, and perhaps the High Court may take the opportunity to bring some long desired clarity to this fundamental aspect of patent law. More to come!

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While navigating security requirements can add complexity, the potential benefits of a well-managed patent filing approach, embedded within a broader IP strategy, can make seeking patent protection for newly-developed or emerging defence technology worthwhile.

Unlocking the Potential
Commercialising defence technology presents unique technical challenges, often involving long product acquisition cycles, significant investment and inherent risk. However, a strategically-implemented intellectual property strategy, which may involve patent protection, can help to mitigate these commercialisation hurdles.

Ultimately, patent ownership encourages innovation by incentivising increased R&D investment and technology commercialisation in several ways:
• Securing a Competitive Advantage: patents can interfere with the decision-making process of competitors and reduce the risk of the competitor copying an innovation protected by a patent. A patent acts as a technical barrier to market entry, potentially delaying and hindering competitors and providing a first-mover advantage.
• Attracting Strategic Partners and Investment: a patent acts as a credible due diligence tool for potential collaborators and funding sources, such as government agencies and venture capitalists. This can facilitate strategic partnerships with defence primes or attract investment needed for further development and commercialisation, including adapting defence technology for new civilian markets or vice-versa.
• Enabling Licensing and Technology Transfer: a granted patent allow its owner to control who and how the patented technology is licenced to other entities, potentially generating new revenue streams and industry collaboration.

Beyond the Battlefield: Dual-Use Applications
Defence technology often offers “dual-use” potential, creating new commercial opportunities. For example, GPS technology, originally intended for military use, now plays a vital role in civilian navigation systems. Patents can help to incentivise exploring “dual use” applications through new civilian markets.

While some aspects of defence technology may be classified, a patent can offer a level of protection for non-classified aspects of a dual-use invention, particularly if those aspects can be reverse engineered.

Navigating the Landscape: Considerations for Defence Patents
While the benefits of patent protection are significant, the patenting application process for defence technology can be complex. Much of this complexity relates to national security obligations which may require a patent application for defence related technology to be subject to a ‘prohibition order’. Undertaking a patenting application process needs to balance the benefits of obtaining patent protection while safeguarding sensitive information.

Key considerations include:
• Publication and Security: Careful management of patent publication is essential. Collaboration with patent attorneys is crucial to navigate the secrecy requirements of government IP agencies and ensure compliance with national security regulations. Filing patent applications in overseas markets also requires an understanding of specific patent laws and the need to comply with international security obligations.
• Balancing the disclosure: Patents must include a sufficient level of technical disclosure to allow a skilled person to put the invention into effect. Obtaining the right balance between protecting sensitive information and disclosing, in a patent application, a sufficient level of technical detail for a valid patent can be challenging.
• Working with Patent Attorneys: Partnering with patent attorneys who have experience in the defence sector is helpful. They can advise on patentability, prepare patent application documents claims effectively, and identify potential risks and challenges involved with applying for patent protection.

Patents as a Launching Pad for Commercialisation
A strategically implemented patent filing approach, embedded within a broader IP strategy, can provide a springboard for commercialising defence technology by fostering R&D investment, attracting partnerships and investment, and enabling technology transfer.

By strategically leveraging patents and collaborating with patent attorneys, the prospects for innovations in defence technology reaching their full commercial potential may be improved.

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This decision is the latest instalment in the long-running contest between the Commissioner of Patents (i.e. the Australian Patent Office) and the gaming company Aristocrat Technologies Australia Pty Ltd (Aristocrat) concerning the patentability of electronic gaming machines (EGMs) which are said to fall broadly within the class of computer-implemented inventions.

Litigation History
Very briefly, this saga kicked off with rejections by the Commissioner on patentable subject matter grounds of a number of Aristocrat EGM patent applications. Aristocrat successfully appealed these rejections to the Federal Court (Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778 (Aristocrat FCA) but this decision was then subsequently reversed on appeal by the Commissioner to the Full Federal Court (Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 (Aristocrat FCAFC)).

As this matter concerned a number of rejected patent applications, it was agreed early on between the parties that a representative claim be selected from the initially-rejected applications on the basis that if this representative claim was found to be directed to patentable subject matter, then this finding would apply to all the remaining patent claims being rejected.

The parties also agreed that if this representative claim was ultimately found not to be directed to patentable subject matter, then Aristocrat could go to back to the Court for an assessment of a selection of the remaining claims of the rejected application (referred to as the “residual claims”) to determine if these might meet the requirements for patentable subject matter. If Aristocrat failed with respect to the residual claims, then they accepted that all claims of the rejected EGM patents would fail for lack of patentable subject matter.

Following the Full Court’s unfavourable decision, Aristocrat sought and was granted special leave to appeal to the High Court. Unfortunately, the makeup of the High Court hearing the Aristocrat appeal was comprised of only six justices, who then split evenly in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 (Aristocrat HCA), with three justices issuing joint reasons dismissing the appeal (dismissing reasons), and three justices issuing joint reasons allowing the appeal (allowing reasons). Notably, there was a clear conceptual divide between the two sets of reasons as to the correct approach for assessing the patentability of computer-implemented inventions.

In these circumstances where the High Court is evenly split, Section 23(2)(a) of the Judiciary Act 1903 (Cth) applies. This section essentially states that where there is a “tie”, then the decision of the Court below will be affirmed. In this case the Full Court had found the representative claim (i.e. claim 1 of Australian Innovation Patent No 2016101967) was not directed to patentable subject matter, as a result resolving this dispute, insofar as it concerned the representative claim, in favour of the Commissioner.

The Full Court’s Decision – Aristocrat FCAFC
At this stage it is worth examining the Full Court’s decision in some detail. As above, the Full Court reversed the decision at first instance, with all three judges finding for the Commissioner and concluding that the representative claim under consideration was not directed to patentable subject matter. Further, the Full Court ordered that the matter be remitted below for consideration of the residual claims (among other issues). Two sets of reasons were provided by the Full Court, with Middleton and Perram JJ joining for a first set of reasons (majority decision) and Nicholas J providing separate reasons (minority decision).

In the majority decision, their Honours rejected the approach taken at first instance and proposed an alternative two-step analysis for assessing computer-implemented inventions. This two-step analysis involved asking two questions, the first being is the invention claimed a computer implemented invention; and if so, can the invention claimed broadly be described as an advance in computer technology (Aristocrat FCAFC at [74])?

Problems with the Two-Step Analysis
It would be fair to say that the two-step analysis approach proposed in the majority decision has been the subject of some criticism. First, Nicholas J, while still allowing the appeal, did not agree with the approach of majority decision but instead adopted a more conventional analysis requiring that for an abstract idea or game to become patentable then the idea must be given “practical effect and transformed into a new product or process which solves a technical problem, or makes some other technical contribution in the field of the invention” (Aristocrat FCAFC at [124]).

In respect of the High Court, the allowing reasons warned against an approach to assessing patentable subject matter that involved a question of whether the subject matter is “computer-implemented” (Aristocrat HCA at [152]) and as Burley J notes in Aristocrat No 3 at [100] this could be understood as an indirect criticism of this two-step analysis. The dismissing reasons also criticised the two-step analysis as unnecessarily complicating the analysis of the actual critical issue, which is the “characterisation of the invention by reference to the terms of the specification having regard to the claim and in light of the common general knowledge” (see Aristocrat HCA at [77] and also Burley J’s review in Aristocrat No 3 at [86]).

Outside of the judicial world, the two-step analysis was also the subject of considerable concern and criticism as the requirement for an invention to satisfy the first step of the analysis, i.e. is the invention claimed a computer-implemented invention, would arguably be satisfied by claims directed to many modern electronic-based technologies involving a data processing aspect. Following the second step of the two-step analysis, many of these electronic-based technologies would arguably fail to have the requisite “advance” in “computer technology” to satisfy the second-step requirement given that the technical application of the invention may be solving a technical problem outside of the computer, and be unrelated to advancing computer technology.

There are significant concerns that if the two-step analysis was adopted, then it would follow that many more computer-implemented inventions would be rejected as not being directed to patentable subject matter. These issues (among others) with the two-step analysis were raised before the High Court by the Institute of Patent and Trade Mark Attorneys of Australia and FICPI who both appeared as amicus curiae in the High Court Appeal.

Back to the Residual Claims
Returning to the Aristocrat No 3 decision, this is the result of the Federal Court now going back to consider the patentability of the residual claims. Burley J was the original trial judge who presided over the first Federal Court proceeding and it now fell to his Honour to determine whether the residual claims were directed to patentable subject matter.

Determining the correct approach to be taken when assessing whether a claim to a computer-implemented invention was directed to patentable subject matter required deliberation, especially in light of the High Court’s divided approach to this question. His Honour first concluded that the High Court’s decision did not create any binding precedent, because a binding authority can only be established where there is a unanimous or majority decision (Aristocrat No 3 at [105]).

This was not the case here, and the effect of the affirmation of the Full Federal Court’s decision was that Burley J, being a single judge of the Federal Court, was bound by the orders of the Full Court and their reasons (Aristocrat No 3 at [110]) regardless of whether he was able to draw some applicable principle of law from the High Court’s reasoning (Aristocrat No 3 at [112]). Burley J was not persuaded that there was any principle that could be drawn from the High Court reasoning (Aristocrat No 3 at [112]) finding that while both sets of Judges were critical of the Full Court’s approach, they were critical for different reasons.

His Honour then proceeded to apply the two-step analysis to the residual claims under consideration. Unsurprisingly, given the previous findings in the majority decision of the Full Court that the representative claim involving no advance in computing technology, the residual claims being directed to other related aspects of an EGM, were also found to involve no advance in computing technology.

Conclusion
Despite the almost universal lack of endorsement of the two-step analysis approach to assessing patentable subject matter proposed in the Full Court’s majority decision, it has once again been applied in Aristocrat No 3. This is perhaps a unique set of circumstances, where the first instance judge has felt compelled to adopt this analysis because of the lack of binding authority from the High Court’s split decision and the resulting affirmation of the Full Court’s decision including the reasoning of the majority decision.

It seems unlikely that the two-step analysis requiring an “advance in computer technology” will find favour more generally outside of the special circumstances of this litigation given there are alternative approaches that have been endorsed by the Full Court to assessing the patentability of computer-implemented inventions and that the High Court was critical of the approach. However, it remains a risk.

Aristocrat will more than likely appeal to the Full Court but again there is the question of whether within the confines of this particular litigation, a differently constituted Full Court or even the High Court will be able to substitute another test for patentability for the two-step analysis, even though this outcome would seem perverse.

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If we look back to the Aristocrat case, the question of whether a computer-implemented invention was patentable was left unclear due to a 3-3 split in the decision. The High Court hearing considered an appeal from the Full Federal Court decision of Aristocrat².

In the recent³ case – Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Liability) [2022] FCA 1585 (Motorola), the Australian Federal Court considered whether methods relating to data communications carried out on an existing device were patentable subject matter.

In this case, Motorola Solutions Inc (‘Motorola’) sued Hytera Communications Corporation Ltd (‘Hytera’) and its Australian subsidiary, Hytera Communications (Australia) Pty Ltd (‘Hytera Australia’) alleging, inter alia, infringement of three of its granted Australian patents.

These patents related to a technology which allowed a frequency band within the radio frequency spectrum to be divided into timeslots so that more than one person could use the same channel at the same time. This technology was known as Time Division Multiple Access (TDMA).

The three patents were directed to methods which improved the efficiency of the TDMA technique. The first patent, No. 2005275355 (‘355 Patent’), was a method and system which improved the time taken to scan a channel to determine whether there was activity on that channel. The second patent, No. 2009298764 (‘764 Patent’), was for a method for efficiently synchronising to a desired timeslot, and the third patent, No. 2006276960 (‘960 Patent’), was for a method and system for accessing a base station.

In its suit, Motorola asserted that Hytera imported into Australia devices that infringed the three patents. In a counterclaim for invalidity, Hytera alleged the patents were invalid for not being a “Manner of Manufacture” (i.e. not being subject matter that was eligible for patent protection) in light of the Aristocrat decision.

Hytera’s submission was that there could be no manner of manufacture where what was claimed merely involved the new use of a known thing for a purpose for which its known properties made it suitable. That is, that the use of a known digital mobile radio (DMR) to carry out a method of steps, was not a manner of manufacture, and thus not patentable.

It then submitted that the methods claimed, as a matter of substance, was a scheme, working directions or directions for use, rather than an ‘improvement in computer technology’. It did not involve or contribute to any new hardware or software. The patent was merely a method achieved by programming existing hardware to carry out specified steps.

In considering the issue of patentability, Perram J, acknowledged⁴ that it was accepted that a computer-implemented invention would be patentable if, in substance, it constituted an improvement in computer technology rather than a use of that technology, and referenced a number of prior cases supporting that statement. Further, Perram J stated that neither the Federal Court decision nor the High Court decision of Aristocrat departed from that position, although it was notable that in the High Court decision, it was agreed that an improvement in computer technology was not a requirement for patentability.

In applying this position, Perram J rejected Hytera’s submissions and stated that the method “improves the way a particular class of computers – base stations and subscriber units – scan frequencies” ⁵, and the implementation of the claimed method solved the technical problem of how to improve scanning times in a TDMA communications system. As such, it was held that the claimed invention resulted in an improvement in computer technology and was thus for a manner of manufacture and therefore patentable subject matter.

This decision, together with another recent decision in UbiPark⁶ provides some clarity that a computer implemented method, constituting a new method, even if carried out on a known piece of hardware, can be for a manner of manufacture and is thus patentable subject matter.

It will be seen whether this position changes or is further reinforced if either of these cases is appealed.

1. Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29; 96 ALJR 837 – readers can view my colleague Dr Anthony Lee’s article on this case here 

2. Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202; 163 IPR 231

3. Note that while this case was decided in December 2022, it has only recently been published due to associated confidentiality arrangements

4. Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Liability) [2022] FCA 1585 at [356]

5. ibid at [358]

6. UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 2) [2023] FCA 885

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