Federal Court Intellectual Property
Users' Group Meeting - NSW - Minutes
Thursday 5 June 2003
On the evening of Thursday 5
June 2003 there was a meeting held between the Sydney
Intellectual Property Panel Judges and the profession
(counsel, solicitors and patent and trade mark attorneys).
About 40 members of the profession attended.
Future Attendance
The Court would like to make it clear
to the profession that "Users Groups" meetings
in the Federal Court are open to anyone from the profession
who may wish to come either to observe and listen or actively
to participate.
Matters Discussed
Discovery
A view was expressed by members of
the profession, without dissent, that the system of categories
of documents (to replace the obligations of general discovery)
has failed. It was said that in practice it was productive
of as much expense and dispute as unrestrained general
discovery.
Discussion ensued. One possibility
discussed was categorising IP matters and identifying
"presumptive" issues or topics which would give
entitlement to discovery and requiring leave as to any
further discovery. This was thought by a number to be
likely to lead to the same kind of expensive, "definitional"
arguments.
Ultimately, there was general agreement
that the Court should look carefully at a proposal whereby
no discovery would be ordered until after evidence was
filed and then it would only be ordered with the leave
of the Court after an application in which the party seeking
the discovery moves and persuades the Court that it is
necessary and appropriate in the respects sought.
The judges will consider this proposal.
Should other members of the profession
have a view about it they should send any views to the
District Registrar, Mr John Mathieson <john.mathieson@fedcourt.gov.au>.
Evidence
There was discussion about the appropriateness
in some cases for there to be consideration given to some
evidence being given orally in chief. It was recognised
that no general rule should be laid down about this, but
practitioners should not necessarily look upon oral evidence
in chief as outdated or out of the question. The presentation
of a case is, in significant degree, a matter for the
parties and their advisers (though the Court in a docket
case management system retains significant overall control)
and if oral evidence is desired in a case for cost or
other reasons, it should be raised at a directions hearing.
Parties are encouraged to be innovative in the directions
sought in the preparation of cases.
Expert Evidence
Some discussion took place. It was
emphasised that care should be taken to identify the opinion(s)
being proffered. If this is done questions of admissibility
and necessary supporting evidence will often follow more
easily than if there is a mixture of assertion, assumption,
hearsay fact and opinion.
Also, in technical cases the
parties should always consider an agreed primer of agreed
principles and technical background to reduce the duplication
of this in expert statements.
Objections to Evidence
It was generally agreed that solicitors
and counsel should try to ensure that time is not overly
taken up with debates about admissibility in areas of
the case where it is not really material or in issue.
Anton Piller Orders and Anti-Piracy
Applications
There was a suggestion that the Court
might review its specimen order for Anton Piller actions
to promote uniformity and certainty. The judges will look
at this.
There was a suggestion that in circumstances
of default it should not be necessary to have to deal
with the matter evidentially to obtain orders. The rules
should provide for judgment in default of appearance or
defence as in the Supreme Court Rules. The judges will
consider and refer to the Rules Committee.
eCourt
It was noted that the eCourt can favour
the "serial defaulter" if the judge handling
the matter is not prepared to bring the matter back to
court to deal with repetitive default. Aside form eCourt
the profession were reminded that the telephone, email
and facsimile can be used to avoid directions hearings,
if there is agreement (especially in the absence of default).
