Patents and Associated Statutes Sub-area
About this 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
- appeals from the Commissioner of Patents.
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:|
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.
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:
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.
- 23 Feb 2018:
Warner-Lambert Company LLC v Apotex Pty Limited (No 2)  FCAFC 26
PATENTS - validity - sufficiency of description - consideration of proper test - whether test of "undue burden" should be applied PATENTS - validity - false suggestion - whether false suggestion made - whether false suggestion materially contributed to the grant of the patent PATENTS - infringement - Swiss claims - whether the importation of a…
Judge: Jagot, Yates, Burley JJ
- 16 Feb 2018:
Seiko Epson Corporation v Calidad Pty Ltd  FCA 104
COSTS - form of declaratory relief - whether general award or issues based approach is best method - award of costs according to success on separate grounds - appropriate apportionment
Judge: Burley J
- 9 Feb 2018:
Meat & Livestock Australia Limited v Cargill, Inc  FCA 51
PATENTS - bovine genome - bovine DNA - single nucleotide polymorphisms - molecular genetics - quantitative genetics - inferring or identifying phenotype from genotype - methods to identify or infer quantitative traits by use of specified and non-specified single nucleotide polymorphisms - selection of number of polymorphisms - selection of number…
Judge: Beach J
- 5 Feb 2018:
InterPharma Pty Ltd v Hospira, Inc (No 4)  FCA 45
COSTS - costs of interlocutory injunction application - costs of interim injunction application - costs of interlocutory application to discharge interim injunction.
Judge: Kenny J
- 5 Feb 2018:
Domino's Pizza Enterprises Limited v Precision Tracking Pty Ltd (No 5)  FCA 48
COSTS - adjournment of final hearing by reason of deficient discovery by a party, leading to applications to amend pleadings by other parties - whether the other parties should have their costs thrown away by reason of the adjournment of the trial - whether those costs should be paid on an indemnity basis - whether those costs should be payable…
Judge: Robertson J
- 2 Feb 2018:
Idenix Pharmaceuticals LLC v Gilead Sciences Pty Ltd (No 2)  FCAFC 7
COSTS - discretion as to costs - applicable principles - where appeal was dismissed - where respondents' notice of contention was dismissed - where grounds of contention did not occupy substantial time on the hearing of the appeal - whether costs order in favour of respondents should be reduced
Judge: Nicholas, Beach and Burley JJ
- 30 Jan 2018:
Sealed Air Australia Pty Limited v Aus-Lid Enterprises Pty Ltd  FCA 31
PRACTICE AND PROCEDURE - corporate respondent - application to dispense with the requirement in r 4.01(2) of the Federal Court Rules 2011 (Cth) refused.
Judge: Kenny J
- 25 Jan 2018:
Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (No 2)  FCA 17
PRACTICE AND PROCEDURE - application for suppression or non-publication order - whether order necessary to prevent prejudice to proper administration of justice - consideration of appropriate duration of order
Judge: Perram J
- 11 Jan 2018:
Axent Holdings Pty Ltd v Compusign Australia Pty Ltd (No 3)  FCA 6
COSTS - whether costs should be paid forthwith assessed on a lump sum basis - no occasion to depart from the ordinary positon in Rule 40.13 Federal Court Rules
Judge: Kenny J
- 22 Dec 2017:
Apotex Pty Ltd v Cipla Limited  FCA 1627
PRACTICE AND PROCEDURE - patents - interlocutory application - injunction - prima facie case - validity of patent - infringement of patent - balance of convenience - application granted
Judge: Beach 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.