Following the High Court of Australia’s refusal of special leave to appeal the Full Federal Court’s decision in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131, IP Australia has updated the Patent Examiner’s Manual to consolidate a structured decision-making framework for assessing whether computer-implemented inventions (CIIs) constitute patentable subject matter. This framework reflects the outcomes of key Full Federal Court decisions and provides much-needed clarity for applicants and practitioners alike.
The framework proceeds in two stages: assessing the physical elements of the claimed invention, and subsequently, where necessary, applying a set of additional factors to determine whether the claimed invention rises above a mere scheme or method implemented on a computer.
However, before either step is applied, the invention must first be properly characterised. Characterisation requires consideration of all integers of the claim in light of the specification as a whole, assessed as a matter of substance rather than form. The Full Federal Court warned against artificially stripping inventive features from a claim to expose an abstract core, or placing undue weight on inventive aspects at the expense of non-inventive physical integers with which they interact.
Step One: Understanding the Physical Elements of the Claim
The first step requires an assessment of the nature of the physical elements present in the claim, viewed through the lens of common general knowledge (CGK). Three situations are distinguished:
1. Software-only claims are treated as defining something intended to run on a known computerised product or system. These claims will almost always require consideration of the additional factors in Step Two.
2. Claims involving only standard physical features of a known (CGK) computer or computerised system, such as a generic computer processor, mobile device, or standard electronic gaming machines. Such claims will also require consideration of the additional factors in Step Two.
3. Claims involving a new physical product or system that is not CGK may include patentable subject matter and the additional factors discussed below will not need to be considered, provided the claim defines a new combination with the required interaction between the integers (rather than a mere collocation).
Step Two: Additional Factors for Characterising the Claimed Invention
Where the claim involves standard features of a known computerised product or system, certain additional factors must be considered to determine whether the invention constitutes patentable subject matter, or is merely a scheme or abstract idea manipulated on a computer.
Factor 1: Does the Computerised Product or System Work in an Improved or Altered Manner?
This factor asks whether the computer or computerised system itself operates better or differently as a product generally, not merely whether a new method or scheme has been implemented on it. Programming a computer with a new method is not, of itself, sufficient.
Factor 2: Is There a Relevant Technical Effect or Problem Solved Outside the Computerised System?
A relevant technical effect occurring outside the computerised product or system, or a technical problem solved outside thereof, can support patentability. The key is that the external effect must be direct.
Factor 3: Is a Technical Problem Solved with the Computerised Product or System?
Solving a technical problem with the computerised product or system, for example, to provide an improvement in computer technology, can also be a relevant indicator of patentable subject matter.
Factor 4: Is the Computer More than an Intermediary?
The mere fact a computer is essential to performing the invention does not, by itself, confer patentability. The computer must be more than a conduit or intermediary for carrying out an otherwise unpatentable method.
PRACTICAL IMPLICATIONS
This framework is expected to provide clarity and a certain level of predictability to Australian patent examination of CIIs. Applicants should carefully consider:
1. Claim drafting – where feasible, include physical features in the claims rather than software alone.
2. Specification support – clearly articulate how the computer or system operates differently or better as a result of the invention.
3. Technical effects – identify and describe any direct technical effects occurring within or outside the computerised system, and ensure they are tied closely to the claimed integers.
4. Avoid abstract framing – claims that are, in substance, directed to a scheme, business method, or abstract process implemented on generic hardware remain at significant risk of rejection.
We will continue to monitor how IP Australia applies this framework in examination, and how the courts respond in any future litigation. Please do not hesitate to reach out if you have questions about how these developments may affect pending or prospective Australian patent applications for your clients.
AUTHORS
Written by Edward Quinn and Simon Reynolds
