5.6.8.6 Computer Implemented Inventions

Date Published

Introduction

Determining whether there is patentable subject matter in relation to a computer-implemented invention involves application of the same considerations that were addressed by the High Court in National Research and Development Corporation v Commissioner of Patents [1959] HCA. There must be an artificially created state of affairs and a useful result. For a claim to a computer-implemented invention (examples of which are addressed in the next section) the examiner will need to give particular consideration to whether there is an artificially created state of affairs for the reasons explained below.

In Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131 (Aristocrat ’25) at [131] the Full Court said that a computer-implemented invention needs to be assessed, once it has been “properly characterised”, to determine whether it involves:

(i)           an abstract idea which is manipulated on a computer – which is unpatentable; or

(ii)         an abstract idea which is implemented on a computer to produce an artificial state of affairs and a useful result – which is patentable.

The examiner must give particular consideration to the characterisation of a claim to a computer-implemented invention because even for unpatentable subject matter – “an abstract idea which is manipulated on a computer” – the claimed invention may be argued to involve an artificial state of affairs. For example, there may be changes that occur in a computer’s memory, or the claim may include reference to one or more physical elements (such as a computer). Australian case law, including Aristocrat 25, has recognised that it would be incoherent for the development of patent law for an otherwise unpatentable scheme, mere abstract idea, or mere information (as to which see 5.6.8.4 Discoveries, Ideas, Scientific Theories, Schemes and Plans) to be patentable merely because it is implemented using a computer. See also Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (Research Affiliates) at [114]. It follows that an artificial state of affairs must be identified that is not one that results only because there is mere manipulation of an unpatentable abstract idea on a computer.

It is only after properly characterising the invention that the examiner can, using the Full Court’s language in Aristocrat ’25, determine if the required “artificial state of affairs” will result through the implementation of an abstract idea on a computer. The characterisation of the invention must focus on whether in substance the claim is to an unpatentable scheme, mere abstract idea or mere information.

There may be more than one possible characterisation of an invention, and further guidance is provided below about characterising the claimed invention consistently with the developed case law. As the Full Court emphasised in Aristocrat 25, a claim to a computer-implemented invention is not unpatentable merely because it is possible to characterise the invention as involving the implementation of an idea in a computer using conventional computer technology for its well-known and well-understood functions.

Consideration of the physical integers of the subject matter that is claimed may alone mean that the claimed invention may be able to be characterised as involving something more than an unpatentable scheme, mere abstract idea or mere information, without needing to consider additional factors.

Forms of computer-implemented inventions

Computer-implemented inventions may be claimed in different forms. For example:

  • a processing apparatus characterised by its method of operation;

  • software or programs in a machine-readable form causing a computer to operate in a particular way;

  • a computer, when programmed with code (source or executable), to operate in a particular way;

  • a computer implemented method; and

  • a particular product (for example an electronic gaming machine, washing machine, etc) comprising a computer processor.

Often computer-implemented inventions are defined by functional features, that is, by the action that is being carried out by a piece of computer equipment. Just because functional terminology is used in defining an invention does not mean the claimed invention is not a manner of manufacture. The claimed invention needs to be properly characterised. This characterisation involves an understanding of the claim as a whole. One should not place undue weight on the inventive aspects of a claim over non-inventive aspects and must give due recognition to all the physical elements which are fundamental to the invention’s operation (Aristocrat ‘25 at [127]).

The decision-making framework

Properly characterising the invention using the guidance below may involve turning to examples in the case law discussed below to guide decision making. 

Do the physical elements of the claimed invention alone mean that the claimed invention can be characterised as involving patentable subject matter?

Consideration of the physical elements of the claimed invention, considered in light of the common general knowledge (CGK), may alone mean that the claimed invention can be characterised as involving patentable subject matter, without needing to consider the additional factors that are addressed in the next section. 

This assessment is not one where novelty or inventiveness is being assessed, but instead an understanding in light of the CGK as to whether the physical elements of the claim constitute an allegedly new physical product or system as such, regardless of the method steps involved.  

  1. If a claim is to software alone, then it is likely to be defining something that can be run on a known computerised product or system (or at least include such use). In such a situation, the factors addressed in the next section will need to be considered.

  2. Where the physical features of the claim are standard features of a known (CGK) computer or computerised product/system, and those standard features include a computer processor, then the factors addressed in the next section will need to be considered.

For example, in Repipe the claimed method involved use of a server communicating with GPS-enabled personal computer devices (which would include a smartphone), which was a CGK computerised system.  Aristocrat ‘25 involved the use of a CGK electronic gaming machine that could itself be considered to be a computer, or alternatively to include a computer (the ‘game controller’). 

  1. If the physical features of the claim describe a new (not CGK) physical product or system, and the claim defines a new combination having the required interaction between integers (and not a mere collocation), then there will be patentable subject matter because in substance it cannot be a claim to an unpatentable scheme, mere abstract idea or mere information. It will not be necessary to consider the factors addressed in the next section. 

For example, a claim that involves a computer system that incorporates a new physical feature giving rise to a new computer as such will be patentable subject matter even where the claim includes method integers. 

Additional factors to consider in characterising the claimed invention

Characterising the invention as claimed involves considering all of the integers of the claim, and how they interoperate. No integers should be disregarded. The examiner should consider how the claimed invention will operate in practice. The examiner should also consider what the specification is describing as being the invention, and what the substantive aspects of that invention are. The required analysis does not involve an assessment of whether what is claimed is novel or inventive.

The examiner should in particular consider whether there are aspects of the invention that indicate that what is claimed relates to something more than, or different from, using an unpatentable business method or scheme in a CGK computerised product or system. There will be patentable subject matter where the claimed invention involves, as a matter of substance, more than use of an abstract idea, that is, use of an unpatentable method or scheme, or a mere abstract idea or information (see Aristocrat 25 at [126]).  A conclusion that a computer is essential for performing the method of the claimed invention (i.e. there is no practical “pen and paper” equivalent) is not a sufficient factor to confer patentability; the computer must be more than an intermediary (see RPL Central).

The following are some factors that may support a conclusion that the claimed invention is to an “abstract idea which is implemented on a computer to produce an artificial state of affairs and a useful result” and therefore patentable. Each of the factors, if applicable, would generally show that the substance of what is being claimed is not merely an unpatentable method or scheme. None of the following factors is, in and of itself, a requirement that must be satisfied for there to be patentable subject matter.

  1. Does the computerised product or system work in an altered or improved manner, noting that an invention is not patentable merely because a computer is programmed with a new method? This factor considers whether the computerised product or system works differently or better as a product generally, rather than being different or better only because it is executing a new specific method or scheme that itself would be unpatentable.   

  • Each of IBM and CCOM involved a computer working in an improved manner as part of their general operation. In IBM the computer could better perform diverse tasks by having an improved ability to represent a curve on its display. And similarly, in CCOM the computer had broader utility as a computer because of an improved ability to process Chinese language characters.

  • In Aristocrat ‘25 the Court found there was an altered EGM that resulted from the interaction of the method with the physical components, involving the display of “configurable symbols” relating to the playing of “feature games” to produce the improved engagement result. The Full Court considered that these interactions resulted in there being an “altered EGM”, which appeared to be based on it operating as an improved (relating to player engagement), or at least different, type of EGM in a general sense, analogous to IBM and CCOM. 

  • Hytera similarly involved an invention that involved improved operation of the computerised components of a two-way radio system that improved how that system operated (the efficiency of sending the messages). 

  • The above examples may be contrasted with examples such as the mere instructions to implement a specific method in a computer in Research Affiliates, RPL Central and Encompass which each claimed an unpatentable method being used in a computer or series of CGK computers.

  1. Is a relevant technical effect occurring external to the computerised product or system, or is a technical problem being solved outside the computerised product or system? 

  • See for example UbiPark and the opening of the entry and exit barriers (a relevant specific external effect). The external effect was achieved as a result of a method based on interactions defined by the claims (including a calculation of proximity based on signal strength).

  • This may be contrasted with the delivery of goods to the optimum collection point in Dei Gratia, which was the result of the use of an unpatentable business method. The external effect was indirect and would have resulted from use of an equivalent unpatentable method that did not involve computerisation. That was also the case in F45 Training Pty Ltd v Body Fit Training Company Pty Ltd [2022] FCA 96 which involved a computerised method for determining arrangements of exercise stations.

  1. Is a technical problem solved with a computerised product or system?

  • Hytera could also be considered under this factor. The improved efficiency helped solve a technical problem relating to the speed with which messages could be sent.

Inventions found to constitute an abstract idea implemented on a computer to produce an artificial state of affairs and a useful result

This section outlines examples of inventions found by the Federal Court as constituting an abstract idea implemented on a computer to produce an artificial state of affairs and a useful result. Included are examples identifying reasons why the Court concluded that patentable subject matter was present – that properly characterised, what was claimed was not merely the use of a CGK computerised system to manipulate an unpatentable abstract idea.

In Aristocrat ’25 – The invention was directed to a game implemented on an electronic gaming machine.     
As noted by the Full Court (at [127]):

“The characterisation adopted … reflects the emphasis in the specification not just on the feature game but also on the function and display of configurable symbols in relation to the feature game, and the integration of those elements in the interdependent player interface and game controller… Further, the allowing reasons (at [137]) point out that the configurable symbols and the feature games require implementation in the EGM, and in the operation of the EGM, they interact with, and are entirely dependent upon, other integers of the claim, especially the physical integers, and therefore are inextricably connected with the player interface.”

Reasoning supporting a finding of patentability included:

  • The function and integration of configurable symbols was important to player experience

  • The configurable symbols interacted with other integers, especially the physical integers and were therefore inextricably linked to the player interface

  • The invention was not merely a scheme or idea for a game that was separate from the external or artificial application of the game

  • The invention was to an improved/altered EGM 

  • While EGM technology was well known, the invention was more than a mere abstract idea manipulated on generic computer technology

In International Business Machines Corporation v Commissioner of Patents (1991) 22 IPR 417 (IBM) the claimed invention was directed to the use of non-floating-point arithmetic to produce an improved curve on a display. Reasoning supporting a finding of patentability included:

  • While a standard computer was involved, the method improved the way in which the computer worked as a computer (because of its improved curve display)

  • There was an artificial and useful result in the form of the improved curve display

  • The claimed invention was not in substance a claim to an unpatentable method or scheme. Instead it related to how the computer functioned in practice

In CCOM Pty Ltd v Jiejing Pty Ltd (1994) FCA 1168 (CCOM) the invention used a particular method of characterisation of Chinese character strokes which was applied to an apparatus in such a way that the operation of a keyboard would enable the selection, through a computer, of the appropriate Chinese characters used for word processing. Reasoning supporting a finding of patentability included:

  • The output on the screen interacted with other integers, in particular, the keys of the keyboard

  • The method involved the improved use of a keyboard/computer to generate Chinese characters for word processing and other applications

  • The claimed invention was not in substance a claim to an unpatentable method or scheme. Instead it related to how the computer functioned in practice

In UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 2) [2023] FCA 885 (UbiPark) the invention was directed towards a communications system, computer program and smartphone configured to determine signal strengths of entry and exit signals to control a user’s entry to and exit from a restricted area. Reasoning supporting a finding of patentability included:

  • The opening of entry and exit barriers was considered to be an artificial state of affairs with the useful result of allowing entry into and exit from a restricted area

  • There was an interrelationship between the physical components of the system

  • The claimed invention was not in substance a claim to an unpatentable method or scheme. It instead related to the timing of sending a signal to open a barrier that was based on signal strength measurements

In Hytera Communications Corporation Ltd v Motorola Solutions Inc [2024] FCAFC 168 (Hytera) the invention was directed to a method of scanning used in a Time Division Multiple Access system in digital mobile radios to reduce the time required for completing scan operations. Reasoning supporting a finding of patentability included:

  • There was an improvement in the (computer) technology for undertaking communications using two-way radios

  • Technical means interacted to embody the invention by utilising the structure of data frames by which communications were carried in a digital communications device.

Inventions found to constitute an abstract idea manipulated on a computer

This section outlines examples of inventions found by the Federal Court to constitute an abstract idea manipulated on a computer.  Included with each example are elements that the court found relevant to their determination.

In Research Affiliates the invention was directed towards a scheme for constructing data concerning a non-capitalisation weighted portfolio of assets. The invention involved a mathematical process operated within a single computer. Reasons why the invention was found unpatentable included:

  • In substance the claimed invention involved an unpatentable business method

  • The invention operated on a generic or general-purpose computer

  • There were no factors supporting the existence of patentable subject matter

In Commissioner of Patents v RPL Central [2015] FCAFC 177 (‘RPL’) the invention was directed towards a scheme for assessing the competency or qualifications of people in accordance with recognised standards. The invention operated across networked computers to implement the method. Reasons why the invention was found unpatentable included:

  • In substance the claimed invention involved an unpatentable business method

  • The invention operated on generic or general-purpose computers

  • There were no factors supporting the existence of patentable subject matter

In Encompass Corporation Pty Ltd v Infotrack Pty Ltd [2019] FCAFC 161 (Encompass) the invention was directed towards a method and apparatus for displaying information to provide business intelligence. The invention involved interaction with a visualised network of information presented on a computer screen and operation across computer devices. Reasons why the invention was found unpatentable included:

  • In substance the claimed invention involved an unpatentable business method

  • The invention operated on generic or general-purpose computers

  • There were no factors supporting the existence of patentable subject matter

In Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 (Rokt) the invention was directed to a marketing scheme run across a series of networked computers which generated engagement offers tailored to the user. Reasons why the invention was found unpatentable included:

  • In substance the claimed invention involved an unpatentable business method

  • The invention operated on generic or general-purpose computers

  • There were no factors supporting the existence of patentable subject matter

In Repipe Pty Ltd v Commissioner of Patents [2021] FCAFC 223 (Repipe) the invention involved the use of GPS-enabled mobile devices for dealing with risk management information. Reasons why the invention was found unpatentable included:

  • In substance the claimed invention involved an unpatentable business method

  • The invention operated on generic or general-purpose mobile computers interacting in a known way with servers

  • There were no factors supporting the existence of patentable subject matter

In Dei Gratia v Commissioner of Patents [2024] FCA 1145 (Dei Gratia) the invention was directed to an improved logistics method that used computer technology to optimise route information and facilitate delivery of goods. Reasons why the invention was found unpatentable included:

  • In substance the claimed invention involved an unpatentable business method

  • The physical outcomes of delivery of goods related solely to the outcome of the unpatentable business method (those physical outcomes would have resulted from the practice of the method without using a computer).

  • There were no factors supporting the existence of patentable subject matter

Amended Reasons

Amended Reason Date Amended

Updated content related to computer implemented inventions. Updated 5.6.8.6 page title.

Updating formatting at [127] paragraph

Updating content in view of Aristocrat decision ([2025] FCAFC 131)

Updated content.

Added note banner about page content being under review.

Case law examples updated to include content relating to Hytera Communications Corporation Ltd v Motorola Solutions Inc 2024 FCAFC 168 with additional minor amendments to subheading titles

Additional discussion added regarding various APO decisions in relation to MOM

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