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About this NPA
The Intellectual Property National Practice Area (NPA) covers disputes concerning matters such as patents, trade marks, copyright, designs, circuit layouts, plant breeder's rights and appeals from the Commissioner of Patents or Registrar of Trade Marks.
The three Sub-areas in the Intellectual Property NPA are:
Patents and Associated Statutes Sub-area
- Patent disputes concerning the exclusive right to commercially exploit inventions (inventive devices, substances, methods or processes).
- Other disputes, including disputes concerning plant breeder's rights in new and distinct varieties of plants.
Trade Marks Sub-area
- Any trade mark dispute, with respect to validity of a trade mark and/or distinguishing goods and services (including in respect of a letter, number, word, phrase, sound, smell, shape, logo, picture and packaging).
- "Geographical indication" disputes involving a geographical indication or other term signifying a related attribute of goods.
- An appeal from a decision of the Registrar of Trade Marks.
Copyright and Industrial Design Sub-area
- Copyright disputes concerning works such as books, computer programs, architectural drawings, musical and artistic works and other subject matter such as films and sound recordings.
- Design disputes concerning the distinctive shape, configuration, pattern or ornamentation of products in an industrial or commercial context.
- Other disputes, including circuit layout disputes concerning layout designs for integrated circuits and computer chips.
Practice Notes
All practice notes are to be read with the Central Practice Note. It is the essential guide to practice in the Federal Court in all proceedings.
Central Practice Note (CPN-1)
The NPA practice note sets out the arrangements for the management of intellectual property proceedings:
NPA Practice Note: |
Other practice notes which may be relevant to this NPA include:
General Practice Notes: |
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Forms, Rules & Fees
Filing fees for commencing a proceeding in this NPA may apply. Information about Court fees, including the fees payable and circumstances where an exemption or deferral can be given is available in Forms, Fees & Costs or from the Registry.
Parties should consider whether it is necessary to file a Genuine steps statement (Form 16) in certain proceedings in this NPA - see r 8.02 of the Federal Court Rules 2011 (Cth) and the Civil Dispute Resolution Act 2011 (Cth) (including sections 6, 7 and 16).
The most commonly used forms and rules relating to intellectual property proceedings are:
1. Commencing intellectual property proceedings
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(Refer to paragraph 4.3 of Intellectual Property Practice Note) |
2. Appeals from the Commissioner of Patents or Registrar of Trade Marks
A party who wants to appeal from a decision of the Commissioner of Patents or the Registrar of Trade Marks must file a Notice of appeal within 21 days of the date of the decision.
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3. Applications under the Plant Breeder's Rights Act 1994
A claim for infringement of plant breeder's rights under the Plant Breeder's Rights Act 1994 (Cth), may be commenced in the Federal Court by filing:
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4. Applications under the Circuit Layouts Act 1989
Disputes concerning layout designs for integrated circuits and computer chips include:
(a) Determination of equitable remuneration
A party may apply to the Court under section 20(2) of the Circuit Layouts Act 1989 (Cth) for a determination of equitable remuneration in relation to an eligible layout by filing:
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(b) Determination of the terms of the doing of an act
A party may apply to the Court under section 25(4) of the Circuit Layouts Act 1989 for a determination of the terms of the doing of an act in relation to an eligible layout by filing:
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For further procedural and case management information you should refer to the Central Practice Note and the Intellectual Property Practice Note.
Legislation
The Intellectual Property NPA comprises any proceeding relating to the following:
- A patent granted under the Patents Act 1990 (Cth)
- A trade mark registered under the Trade Marks Act 1995 (Cth)
- Copyright under the Copyright Act 1968 (Cth)
- A registered design / design under: the Designs Act 2003, the Advance Australia Logo Protection Act 1984 (Cth) or the Olympic Insignia Protection Act 1987 (Cth)
- Eligible layout rights under the Circuits Layout Act 1989 (Cth)
- Plant breeder's rights under the Plant Breeder's Rights Act 1994 (Cth)
- A geographical indication or other term registered under the Australian Grape and Wine Authority Act 2013 (Cth)
- Other proceedings under those statutes.
Latest Judgments
- 27 Mar 2024:
McD Asia Pacific LLC v Hungry Jack's Pty Ltd (No 2) [2024] FCA 299
COSTS - discretion as to costs - consideration and determination of percentages - lump sum costs orders made pursuant to r 40.02(b) of the Federal Court Rule 2011 (Cth) - if not agreed, amounts to be determined by a Registrar of the Court
Judge: Burley J - 26 Mar 2024:
Boehringer Ingelheim Animal Health USA Inc v Zoetis Services LLC (No 2) [2024] FCA 291
PATENTS - three patent applications on appeal from a decision of a delegate of the Commissioner of Patents - validity of dependent claims after findings in Boehringer Ingelheim Animal Health USA Inc v Zoetis Services LLC [2023] FCA 1119 that certain independent claims were invalid - lack of inventive step - lack of disclosure and support - whether …
Judge: Rofe J - 19 Mar 2024:
Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd (No 2) [2024] FCA 256
TRADE MARKS - form of order for amendment of Register of Trade Marks - cross-respondent the registered owner of a trade mark in certain services in class 43 - cross-claimant alleging the registered owner of the trade mark was not the owner - cross-claim upheld in relation to some of the registered services but not others - Court earlier making an…
Judge: Charlesworth J - 19 Mar 2024:
Chou v Metstech Pty Ltd (Costs) [2024] FCAFC 39
COSTS - whether costs should follow the event - where respondents successful in substance but primary judge's declarations were amended in the interests of clarity
Judge: Yates, Downes and Jackman JJ - 19 Mar 2024:
MMD Australia Pty Ltd v Camco Engineering Pty Ltd [2024] FCAFC 38
PATENTS - construction of patent - invention of tooth construction for a mineral sizer - meaning of "front cover which is weldingly secured to and seated in face to face contact with the front face of the support body" - where primary judge rejected claim because, inter alia, "face to face contact" requires physical contact over most of two faces
Judge: Yates, Burley and Jackman JJ - 15 Mar 2024:
Societe Civile et Agricole du Vieux Chateau Certan v Kreglinger (Australia) Pty Ltd [2024] FCA 248
CORPORATIONS -- Bordeaux wine -- Tasmanian wine -- passing off -- extent of reputation of French wine in Australia -- relevant date for assessing reputation -- classes of consumers -- evidence of confusion -- characteristics or knowledge of ordinary and reasonable person -- misleading or deceptive conduct -- misrepresentation -- contraventions of…
Judge: Beach J - 14 Mar 2024:
Roadshow Films Pty Ltd v Telstra Limited [2024] FCA 246
COPYRIGHT - whether site blocking orders should be made under s 115A of the Copyright Act 1968 (Cth) Held: site blocking and related orders made
Judge: Nicholas J - 13 Mar 2024:
Bed Bath 'N' Table Pty Ltd v Global Retail Brands Australia Pty Ltd (No 3) [2024] FCA 226
PRACTICE AND PROCEDURE - scope of declarations and injunctions - whether injunctions restraining use of marks that are "substantially identical" or "similar" to the infringing mark are available for misleading and deceptive conduct and passing off. COSTS - whether costs should be awarded on an issue-by-issue basis - causes of action not discrete…
Judge: Rofe J - 12 Mar 2024:
Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (Pleadings Issues) [2024] FCA 223
PRACTICE AND PROCEDURE - cross-claim - application to strike out certain paragraphs of Cross-Respondent's defence - whether relevant parts of defence fail to disclose a reasonable defence or are otherwise an abuse of process in accordance with rr 16.21(1)(e)-(f) of the Federal Court Rules 2011 (Cth) PRACTICE AND PROCEDURE - application to amend…
Judge: Perram J - 11 Mar 2024:
Stasiuk v Monster Energy Au Pty Ltd (No 2) [2024] FCA 237
PRACTICE AND PROCEDURE - application for order dismissing proceeding on account of applicant's non-compliance with orders - where applicant resident outside Australia - where continuing non-compliance with orders not explained Held: self-executing order for dismissal pursuant to r 5.21 of the Federal Court Rules 2011 (Cth) made
Judge: Nicholas J
Latest Speeches & Papers
- 1 Mar 2018:
Ongoing patent infringement: Is injunctive relief an inevitable outcome? (Abstract)
Presented at the Journal of Equity Conference on 1 March 2018; published in the Journal of Equity in November 2018. - 9 Sep 2016:
Recent developments in IP remedies
An edited version of speaking notes used in a presentation at the 30th Annual Conference of the Intellectual Property Society of Australia and New Zealand Inc held 9-11 September 2016 by Justice Yates.
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Important note: This information is procedural advice only. You should seek your own legal advice about legal cases and procedure in the Federal Court and in this area of law.