Intellectual Property

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:

Patents and Associated Statutes 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.
  

Trade Marks Sub-area

• 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 and Industrial Design Sub-area

• 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.

The NPA practice note sets out the arrangements for the management of intellectual property proceedings:

Other practice notes which may be relevant to this NPA include:

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

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:

For further procedural and case management information you should refer to the Central Practice Note and the Intellectual Property Practice Note.

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.

• 4 Sep 2026: Roadshow Films Pty Limited v Telstra Limited (No 2) [2026] FCA 1319
  COPYRIGHT – application to extend operation of site blocking orders under s 115A of the Copyright Act 1968 (Cth) – notice identifying new IP addresses providing access to existing Target Online Locations – operation of variation procedure under existing orders – where no respondent objected – whether five-year extension appropriate. Held: orders…
  Judge: CHEESEMAN J
• 4 Sep 2026: The Pops Group Pty Ltd as trustee for The Pool Shops Trust v Pro Pool Services Pty Ltd (No 3) [2026] FCA 1303
  COSTS – application for reduction of successful applicant’s costs – where applicant substantially successful on primary issues and obtained injunctive and compensatory relief for trade mark infringement – whether costs should be reduced for applicant’s inefficient prosecution of the proceedings – where respondent unrepresented – costs reduced by…
  Judge: DERRINGTON J
• 2 Sep 2026: Nalco Company v Cytec Industries Inc (No 2) [2026] FCAFC 113
  PATENTS — costs of appeal and first instance proceeding concerning an application to amend a patent application — costs concerning a successful application under s 105(1A) of the Patents Act 1990 (Cth) — comparison with the costs position concerning a successful s 105(1) application — scope and application of any indulgence principle — whether any …
  Judge: BEACH, JACKSON AND JACKMAN JJ
• 31 Aug 2026: Bickford’s Australia Pty Ltd v Noot Drinks Co Pty Ltd [2026] FCA 1296
  PRACTICE AND PROCEDURE — application by cross-claimant to amend statement of cross-claim — where proposed amendments are raised one month prior to trial — where the Court is not satisfied the cross-respondent will not be prejudiced if proposed amendment is allowed — application dismissed
  Judge: O'SULLIVAN J
• 26 Aug 2026: Yey Pty Ltd v Active Skin Pty Ltd [2026] FCA 1288
  PRACTICE AND PROCEDURE – application for leave to appeal – where primary judge declined to make a third party costs order against the directors of an impecunious applicant – whether decision of the primary judge attended with sufficient doubt to warrant its reconsideration on appeal – application for leave to appeal dismissed
  Judge: MOSHINSKY J
• 28 Aug 2026: National Tyre & Wheel Pty Ltd v Starcorp Holdings (NSW) Pty Ltd (Application for particulars) [2026] FCA 1273
  PRACTICE AND PROCEDURE — application for further and better particulars – where the applicant alleges that the respondent infringed the applicant’s registered designs by importing and selling tyres embodying those designs – where the respondent pleads in its defence that the goods were sold with the licence or authority of the applicant or its…
  Judge: WHEELAHAN J
• 28 Aug 2026: Telix Pharmaceuticals (Innovations) Pty Ltd v Purdue Research Foundation [2026] FCA 1262
  PRACTICE AND PROCEDURE – interlocutory application costs – where interlocutory application and amended interlocutory application later abandoned and costs were incurred – costs claimed under IP-2 practice note and statement of costs filed – whether costs claimed were reasonable and not excessive – lack of detail in relation to costs claimed –…
  Judge: BURLEY J
• 27 Aug 2026: Scidera, Inc. v Meat and Livestock Australia Limited (No 4) [2026] FCA 1257
  PRACTICE AND PROCEDURE – cross-claim – application for leave to file and serve notice of cross-claim – out of time – indemnity claim – substantial and longstanding proceeding – overlap between proposed cross-claim and principal proceeding – whether determination of cross-claim should be deferred – case management – efficient use of Court and party …
  Judge: ROFE J
• 27 Aug 2026: Toyota Jidosha Kabushiki Kaisha v OZI4x4 Pty Ltd (No 3) [2026] FCA 1215
  TRADE MARKS — claim of trade mark infringement under s 120 of the Trade Marks Act 1995 (Cth) – where the first applicant is the registered owner of several trade marks and the second applicant is an authorised user of those marks – where the first respondent operated a business of selling aftermarket four-wheel drive accessories – whether the…
  Judge: WHEELAHAN J
• 26 Aug 2026: Kumiai Chemical Industry Co., Ltd v Kenso Corporation (M) SDN. BHD [2026] FCA 1219
  PATENTS – application for leave to amend pleadings – leave to amend cross-claim – proposed best method ground – sub-s 40(2)(aa) Patents Act – whether proposed ground is sufficiently arguable at the interlocutory stage – characterisation of the invention – process to manufacture herbicide – pyroxasulfone – industrial-scale process – overlap with…
  Judge: ROFE J

• 7 Mar 2026: Common counts, common law and common sense
  Speech presented to the Symposium on Australian Restitution in the 21st Century.
  
• 3 Dec 2025: Innovation
  Speech presented at the Intellectual Property Society of Australia and New Zealand
  
• 4 Apr 2025: Disclosure of the best method - how much is enough?
  Presented at the Institute of Patent and Trade Mark Attorneys of Australia conference, Brisbane, by Justice Downes.
  
• 1 Sep 2024: Remedies in intellectual property law in Australia post-Redbubble
  Presented at the Intellectual Property Society of Australia and New Zealand annual conference, New Zealand, by Justice Downes.
  
• 1 Mar 2018: Ongoing patent infringement: Is injunctive relief an inevitable outcome? (Abstract)
  Presented at the Journal of Equity Conference on 1 March 2018
  

• IP Australia
• Copyright Tribunal