22 March 2024

Aristocrat v Commissioner of Patents – the latest update

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In the latest appeal by Aristocrat, the residual claims were found not to be directed to patentable subject matter.
Australia Intellectual Property
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Aristocrat v Commissioner of Patents – the latest update

Aristocrat v Commissioner of Patents – the latest update

In the latest appeal by Aristocrat Technologies Australia Pty Limited (Aristocrat) against a decision of the Commissioner of Patents, Burley J of the Federal Court delivered a judgement on the patentability of the residual claims of innovation patent numbers 2017101629 (629 patent), 2017101097 (097 patent) and 2016101967 (967 patent).  The residual claims were found not to be directed to patentable subject matter. 

A brief history of a tumultuous series

This decision concludes a long series of appeals initiated by Aristocrat, outlined as follows:

  • In 2018 Aristocrat appealed an objection for lack of patentable subject matter raised by the Australian Patent Office during prosecution of the aforementioned innovation patent applications.2 
  • The initial decision to reject the innovation patent applications was reversed by Burley J of the Federal Court in 2020.3   The claims were found to be for patentable subject matter.
  • The Commissioner of Patents appealed the Federal Court decision to the Full Federal Court. In 2021, the resultant Full Court decision reversed the 2020 Federal Court decision4 in finding that the claims were not for patentable subject matter.
  • Special leave was granted to appeal to the High Court. 
  • The High Court hearing was held in 2022. The resultant decision5 was evenly split, thereby affirming the Full Court decision that the claims were not for patentable subject matter.
  • As the High Court decision was evenly split, an initial remittal order from the Full Court to examine the validity of the appended claims of the 629, 097 and 967 patents as well as innovation patent number 2017101098 (098 patent) was brought into play, which brings us back to this Federal Court case.

The considerations

The claims in question were generally directed to an electronic gaming machine including hardware features such as a display, a credit input mechanism, a plurality of buttons, a processor and memory and software features such as a random number generator, game program code, and reconfigurable symbol data defining reels.7

Following an extensive analysis of the subject matter of the independent claims of the 629, 097 and 967 patents in view of their respective specification as well as the allowing and dismissing reasons of the High Court split, Burley J discussed the scope of the remittal order.  In the present circumstances, Burley J did "not consider that it is correct to draw upon the reasoning of the High Court to influence [my] his decision making in the relation to the residual claims".8 Instead, Burley J found that the determination of the question of the manner of manufacture of the residual claims must be made in regard to the reasoning of the Full Court.9

Application of the Full Court reasoning to the appended claims

Burley J considered, having regard to the findings of the majority decision of the Full Court, that the only conclusion available was that dependent claim 5 of the 967 patent provided no additional features that would warrant a conclusion different to the conclusion reached by the majority decision in respect of claim 1 of the 967 patent.10

Regarding claim 5 of the 629 patent, Burley J found that the none of the additional features pertained to the development of computer technology and further followed the Full court decision that "neither changes in reel structure nor the idea of configurable symbols were to be seen as advances in computer technology".11

Referring to claim 5 of the 097 patent, Burley J stated that the additional features "are directed to the rules of the game itself in displaying information and awarding additional games based on the outcome of particular game events" and "any ingenuity in the additional features resides in the scheme or rules of the game itself and not in the manner of its implementation in a conventional EGM".12


In his findings, Burley J concluded that none of the appended claims in the 629, 097 and 967 patents are directed to patentable subject matter and therefore dismissed the appeal. 

The overall test applied by Burley J decision generally followed the 2021 Full Court decision. It remains to be seen if this decision will affect examination practice at the Australian Patent Office.  This decision reiterates the importance of clearly defining the technical nature and features of the invention at the drafting stage of a patent specification.


1 Aristocrat Technologies Australia Pty Limited v Commissioner of Patents (No 3) [2024] FCA 212 (Aristocrat FCA 2024).
2 Aristocrat Technologies Australia Pty Limited [2018] APO 45.
3 Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778.
4 Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 (Aristocrat FCAFC).
5 Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29.
6 Aristocrat FCAFC at [97].
7 Aristocrat FCA 2024 at [54].
8 Aristocrat FCA 2024 at [109].
9 Aristocrat FCA 2024 at [111].
10 Aristocrat FCA 2024 at [135].
11 Aristocrat FCA 2024 at [137].
12 Aristocrat FCA 2024 at [149].

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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