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.
- 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
- 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
- 28 Jun 2018:
Pilkin v Sony Australia Limited  FCA 1018
Judge: Rares J
- 27 Jun 2018:
GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Limited v Generic Partners Pty Limited (No 2)  FCAFC 100
COSTS - costs following the event - responding party successful on infringement claim and other party successful on cross-claim upholding validity of patent - incidence of costs - whether to consider claim and cross-claim globally - whether the relevant event is the successful defence of infringement claim - percentage reduction inappropriate
Judge: Middleton, Nicholas and Burley JJ
- 22 Jun 2018:
Encompass Corporation Pty Ltd v Infotrack Pty Ltd (No 3)  FCA 942
COSTS - consideration of appropriate reduction in successful party's costs - where Respondent succeeded on invalidity of patents - where Respondent raised multiple grounds of invalidity but succeeded only on one ground
Judge: Perram J
- 19 Jun 2018:
Domino's Pizza Enterprises Limited v Precision Tracking Pty Ltd (No 6)  FCA 910
PRACTICE AND PROCEDURE - application to amend pleadings - where adjourned hearing of complex litigation - where, consequent on the adjournment, case management for the filing and serving of evidence in relation to a particular new claim for breach of confidence - extent of the delay in applying for leave to amend - explanation for delay -…
Judge: Robertson J
- 12 Jun 2018:
F. Hoffman-La Roche AG v Sandoz Pty Ltd  FCA 874
PRACTICE AND PROCEDURE - patents - interlocutory application - injunction - prima facie case - validity of patents - inventive step - balance of convenience - application granted
Judge: Burley 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.