About this NPA
The Intellectual Property National Practice Area (NPA) covers disputes concerning matters such as patents, trade marks, copyright, designs, circuit layouts, plant breeder's rights and appeals from the Commissioner of Patents or Registrar of Trade Marks.
The three Sub-areas in the Intellectual Property NPA are:
- 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.
- Any trade mark dispute, with respect to validity of a trade mark and/or distinguishing goods and services (including in respect of a letter, number, word, phrase, sound, smell, shape, logo, picture and packaging).
- "Geographical indication" disputes involving a geographical indication or other term signifying a related attribute of goods.
- An appeal from a decision of the Registrar of Trade Marks.
- Copyright disputes concerning works such as books, computer programs, architectural drawings, musical and artistic works and other subject matter such as films and sound recordings.
- Design disputes concerning the distinctive shape, configuration, pattern or ornamentation of products in an industrial or commercial context.
- Other disputes, including circuit layout disputes concerning layout designs for integrated circuits and computer chips.
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.
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 NPA 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).
The most commonly used forms and rules relating to intellectual property proceedings are:
1. Commencing intellectual property proceedings
(Refer to paragraph 4.3 of Intellectual Property Practice Note)
2. Appeals from the Commissioner of Patents or Registrar of Trade Marks
A party who wants to appeal from a decision of the Commissioner of Patents or the Registrar of Trade Marks must file a Notice of appeal within 21 days of the date of the decision.
3. Applications under the Plant Breeder's Rights Act 1994
A claim for infringement of plant breeder's rights under the Plant Breeder's Rights Act 1994 (Cth), may be commenced in the Federal Court by filing:
4. Applications under the Circuit Layouts Act 1989
Disputes concerning layout designs for integrated circuits and computer chips include:
(a) Determination of equitable remuneration
A party may apply to the Court under section 20(2) of the Circuit Layouts Act 1989 (Cth) for a determination of equitable remuneration in relation to an eligible layout by filing:
(b) Determination of the terms of the doing of an act
A party may apply to the Court under section 25(4) of the Circuit Layouts Act 1989 for a determination of the terms of the doing of an act in relation to an eligible layout by filing:
The Intellectual Property NPA comprises any proceeding relating to the following:
- A patent granted under the Patents Act 1990 (Cth)
- A trade mark registered under the Trade Marks Act 1995 (Cth)
- Copyright under the Copyright Act 1968 (Cth)
- A registered design / design under: the Designs Act 2003, the Advance Australia Logo Protection Act 1984 (Cth) or the Olympic Insignia Protection Act 1987 (Cth)
- Eligible layout rights under the Circuits Layout Act 1989 (Cth)
- Plant breeder's rights under the Plant Breeder's Rights Act 1994 (Cth)
- A geographical indication or other term registered under the Australian Grape and Wine Authority Act 2013 (Cth)
- Other proceedings under those statutes.
- 16 Oct 2019:
Aristocrat Technologies Australia Pty Limited v Konami Australia Pty Limited (No 2)  FCA 1701
PRACTICE AND PROCEDURE - application by respondent to amend defence on second day of three week hearing of applicant's claim to (inter alia) an account of profits - consideration of nature of amendment - whether new defence sought to be raised seriously arguable - effect on hearing dates - whether respondent should be permitted to amend -…
Judge: Nicholas J
- 10 Oct 2019:
Pinnacle Runway Pty Ltd v Triangl Limited  FCA 1662
TRADE MARKS - whether the second respondent infringed the applicant's trade mark pursuant to s 120 of the Trade Marks Act 1995 (Cth) - whether the mark was used to distinguish its goods from the goods of other traders. TRADE MARKS - cross-claim for cancellation of a trade mark pursuant to s 88 of the Trade Marks Act 1995 (Cth) - whether…
Judge: Murphy J
- 2 Oct 2019:
University of Sydney v ObjectiVision Pty Limited  FCA 1625
CONTRACT - termination of licensing agreements - where respondent was required to assign certain patents as a condition precedent - whether there was a failure to fulfil the condition precedent - whether compliance with a condition precedent would have been futile due to the other party's refusal to perform the agreement - whether non-payment of…
Judge: Burley J
- 1 Oct 2019:
Zoo Sport (Europe) Ltd v Zoo International Pte Ltd  FCA 1660
PRACTICE AND PROCEDURE - dismissal for want of prosecution - applicants in default - failure to comply with order for security for costs - failure to file notice of address for service - proceeding dismissed
Judge: Rangiah J
- 30 Sep 2019:
Merck Sharp & Dohme Corporation v Wyeth LLC (No 2)  FCA 1615
EVIDENCE - patent infringement - late application to amend pleadings to add a claim - production of documents - whether the respondent waived legal professional privilege with respect to affidavit evidence filed in support of application - if privilege waived, what was the scope of the waiver - held that the respondent waived privilege - specific…
Judge: Burley J
- 27 Sep 2019:
Chamberlain Group, Inc v Giant Alarm System Co, Ltd (No 2)  FCA 1606
PRACTICE AND PROCEDURE - application for default judgment pursuant to r 5.23 of the Federal Court Rules 2011 (Cth) - whether appropriate to grant injunction - whether appropriate to grant costs - application granted
Judge: Yates J
- 27 Sep 2019:
Calidad Pty Ltd v Seiko Epson Corporation (No 2)  FCAFC 168
PATENTS - appropriate form of orders to give effect to the Full Court's reasons for judgment on appeal - whether a declaration should be granted and the form of that declaration - whether injunctions should be granted and the form of those injunctions - whether it is appropriate to grant an injunction in general form
Judge: Greenwood, Jagot and Yates JJ
- 25 Sep 2019:
Baiada Pty Ltd v PQM (Vic) Pty Ltd trading as Lilydale Wholesale Meats  FCA 1604
TRADE MARKS - where applicants seek interim injunctive relief for trade mark infringement - final injunctions granted by consent CONSUMER LAW - where applicants seek interim injunctive relief for contraventions of the Australian Consumer Law -final injunctions granted by consent
Judge: Yates J
- 20 Sep 2019:
Community First Credit Union Limited v Bendigo and Adelaide Bank Limited  FCA 1553
TRADE MARKS - application for rectification of the Register of Trade Marks pursuant to s 88(1) of the Trade Marks Act 1995 (Cth) (TM Act) by removing or cancelling the mark COMMUNITY BANK and device mark and orders pursuant to s 97 or s 101 of the TM that the marks be removed from the Register - whether pursuant to s 88(2)(a) of the TM Act…
Judge: Markovic J
- 17 Sep 2019:
Dyno Nobel Inc v Orica Explosives Technology Pty Ltd (No 2)  FCA 1552
EVIDENCE - objection to evidence under s 59 of the Evidence Act 1995 (Cth) - whether print outs of archived webpages on the "Wayback Machine" are business records under s 69 of the Evidence Act - where the Court found that the evidence were not business records - whether to admit evidence under the discretion conferred by s 190 of the Evidence Act …
Judge: Burley J
Latest Speeches & Papers
- 1 Mar 2018:
Ongoing patent infringement: Is injunctive relief an inevitable outcome? (Abstract)
Presented at the Journal of Equity Conference on 1 March 2018; published in the Journal of Equity in November 2018.
- 9 Sep 2016:
Recent developments in IP remedies
An edited version of speaking notes used in a presentation at the 30th Annual Conference of the Intellectual Property Society of Australia and New Zealand Inc held 9-11 September 2016 by Justice Yates.
- 23 Oct 2014:
Random observations of a Southern Judge or what does sports law have in common with patent law?
Presented at the IPSANZ Dinner, Brisbane.
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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.