Patents and Associated Statutes Sub-area NPA logo with link NPA logo with link

Patents and Associated Statutes Sub-area

About this Sub-area

The Patents and Associated Statues Sub-area consists of:

  • 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
  • appeals from the Commissioner of Patents.

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.

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:

Forms, Rules & Fees

Filing fees for commencing a proceeding in this Sub-area 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).

1.  Commencing Patents and Associated Statutes Sub-area proceedings

A party may apply to dispute the validity of a patent under the Patents Act 1990 (Cth). The main grounds upon which the Court can revoke a patent are as follows:

  • The invention is not a patentable invention
  • The patent was obtained by fraud, false suggestion or misrepresentation
  • The patent does not comply with the requirements of s 40 of the Patents Act
  • The patent holder does not have a legal entitlement to the patent.
Forms:
Rules:

2.  Applications under the Plant Breeder's Rights Act 1994

A claim for infringement of plant breeder's rights under the Plant Breeder's Act 1994 (Cth) may be commenced in the Federal Court by filing:

Forms:
Rules:

3.  Appeals from the Commissioner of Patents

A party who wants to appeal from a decision of the Commissioner of Patents must within 21 days of the date of the decision, file a Notice of appeal, which must include:

  • the date of the decision
  • whether the appeal is from the whole or a part of the decision and if only from a part of the decision, details of the part
  • order(s) sought
  • grounds relied on in support of each order sought.
Forms:
  • Form 92 – Notice of appeal (intellectual property)
Rules:

For further procedural and case management information you should refer to the Central Practice Note and the Intellectual Property Practice Note.

Latest Judgments

  • 18 Sep 2018: Dincel Constructions Systems Pty Ltd v AFS Systems Pty Ltd [2018] FCAFC 157
    APPEAL - nature of appellate review - appeal in the nature of a "real review" - degree of deference to be accorded to the primary judge's findings - requisite degree of error - whether there is error on the facts and what inferences are to be drawn - where preferences made as to expert witnesses - reviewability of the primary judge's construction…
    Judge: Kenny, Besanko and McKerracher JJ
  • 11 Sep 2018: Sanofi-Aventis Deutschland GmbH v Alphapharm Pty Ltd [2018] FCA 1426
    PRACTICE AND PROCEDURE - patents - application to set aside a notice to produce seeking documents recording or evidencing an assessment of the invalidity and proposed amendments to the Australian patent in suit and overseas equivalents - where the documents were sought in support of the respondent's defence to an interlocutory injunction…
    Judge: Burley J
  • 14 Aug 2018: Apotex Pty Ltd v ICOS Corporation (No 3) [2018] FCA 1204
    PATENTS - where applicant seeks relief by way of declarations of invalidity and orders for revocation of claims in two patents (the 946 Patent and the 666 Patent) - where respondent is the registered owner of the two patents and denies that the claims are invalid - whether, in respect of the 946 Patent, there is a lack of inventive step, lack of…
    Judge: Besanko J
  • 10 Aug 2018: Industrial Galvanizers Corporation Pty Ltd v Safe Direction Pty Ltd [2018] FCA 1192
    PATENTS - priority date - external fair basis - whether patent date deferred by subsequent amendment - held no real and reasonably clear disclosure in unamended specification of what was claimed as a result of the amendment PATENTS - internal fair basis - whether claimed invention is fairly based on disclosure in the specification - held claims of …
    Judge: Burley J
  • 9 Aug 2018: University of Sydney v ObjectiVision Pty Limited (No 8) [2018] FCA 1184
    PRACTICE AND PROCEDURE - application for leave to amend particulars of quantum - where the proposed amendments seek to change the cross-claimant's damages claim for copyright infringement and breach of confidence from lost profits to a claim for wasted expenditure or, in the alternative, notional royalties - where the amendment is sought after the …
    Judge: Burley J
  • 8 Aug 2018: Domino's Pizza Enterprises Limited v Precision Tracking Pty Ltd (No 7) [2018] FCA 1160
    Judge: Robertson J
  • 3 Aug 2018: Apotex Pty Ltd v Cipla Limited (No 2) [2018] FCA 1393
    PRACTICE AND PROCEDURE - discovery - patents - pharmaceutical products and formulations for nasal and ocular use - antihistamines, particularly azelastine - corticosteroids, particularly fluticasone - combination of azelastine and steroids - grounds of invalidity - lack of inventive step - related US proceedings - depositions - transcripts of…
    Judge: Beach J
  • 27 Jul 2018: Australian Mud Company Pty Ltd v Coretell Pty Ltd (No 2) [2018] FCA 1109
    PATENTS - where relief claimed in connection with the infringement of claims in a patent - where liability determined separately from, and in advance of, all issues of the quantum of any pecuniary relief - whether respondents infringed claims in the patent - where all but one respondent, being the fourth respondent, admit infringement of claims in …
    Judge: Besanko J
  • 24 Jul 2018: Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd [2018] FCA 1082
    PATENTS – legal professional privilege/patent attorney privilege – whether implied waiver – application by patentee to amend patent pursuant to s 105 of Patents Act 1990 (Cth) – delay – where patentee alleges that it did not decide that it would be desirable to amend patent until shortly prior to filing of application under s 105 – whether implied …
    Judge: Nicholas J
  • 28 Jun 2018: Davies v Lazer Safe Pty Ltd (No 2) [2018] FCA 971
    COSTS - costs of patent proceeding - where both the claim for infringement and cross-claim for invalidity were dismissed - appropriate costs order following the judgment as to liability - assessment of the relative success of the parties - Calderbank and other offers made - effect of those offers
    Judge: McKerracher J

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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.