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.
- 18 Sep 2018:
Dincel Constructions Systems Pty Ltd v AFS Systems Pty Ltd  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  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)  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  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)  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)  FCA 1160
Judge: Robertson J
- 3 Aug 2018:
Apotex Pty Ltd v Cipla Limited (No 2)  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)  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  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)  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.