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.
- 10 May 2018:
GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Limited v Generic Partners Pty Limited  FCAFC 71
PATENTS – patent for pharmaceutical formulation to provide extended pain relief – appeal against finding that patent was not infringed – construction of patent specification – whether claim 1 should be construed to correct a mistake – whether “basket” should be read to mean “cylinder” – where no application to amend claim to correct mistake –…
Judge: Middleton, Nicholas and Burley JJ
- 2 May 2018:
Multisteps Pty Ltd v Specialty Packaging Aust Pty Ltd  FCA 587
INTELLECTUAL PROPERTY - patents and designs for plastic produce containers - validity and infringement
Judge: Jagot J
- 27 Apr 2018:
Axent Holdings Pty Ltd v Compusign Australia Pty Ltd (No 5)  FCA 675
Judge: Kenny J
- 26 Apr 2018:
Axent Holdings Pty Ltd v Compusign Australia Pty Ltd (No 4)  FCA 674
Judge: Kenny J
- 29 Mar 2018:
Motorola Solutions, Inc. v Hytera Communications Corporation Ltd  FCA 446
PRACTICE AND PROCEDURE – application for discovery – whether discovery should be granted over documents already discovered in related foreign proceedings
Judge: Perram J
- 29 Mar 2018:
Encompass Corporation Pty Ltd v InfoTrack Pty Ltd  FCA 421
PATENTS - whether Patents are invalid - novelty - prior art - self-anticipation - innovative step - disclosure - support - manner of manufacture - secret use - where Patents are method and apparatus for displaying information CONTRACTS - whether licence granted over Patents is exclusive licence - whether Licence Deed is a sham STATUTES - Patents…
Judge: Perram J
- 28 Mar 2018:
Liberation Developments Pty Ltd v Lomax Group Pty Ltd  FCA 721
INTELLECTUAL PROPERTY - alleged infringement of patent, trademark and copyright - application for interlocutory injunctions - whether prima facie case - balance of convenience - whether damages an adequate remedy - application dismissed
Judge: Rangiah J
- 28 Mar 2018:
ESCO Corporation v Ronneby Road Pty Ltd  FCAFC 46
INTELLECTUAL PROPERTY - consideration of an application for leave to appeal and an appeal under s 60(4) of the Patents Act 1990 (Cth) (the "Act") from a decision of the Commissioner's delegate rejecting all grounds of opposition - consideration of questions of construction of the Patent Application including the claims and the specification -…
Judge: Greenwood Rares and Moshinsky JJ
- 19 Mar 2018:
Damorgold Pty Ltd v Blindware Pty Ltd (No 2)  FCA 364
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 - apportioning costs - offers of…
Judge: Middleton J
- 16 Mar 2018:
University of Sydney v ObjectiVision Pty Limited  FCA 393
PRIVILEGE - Legal professional privilege - Waiver of privilege - whether sending letter of advice to third parties constitutes waiver of privilege under common law
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.