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.
- 10 Jan 2020:
Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 3)  FCA 7
PRACTICE AND PROCEDURE - application for extension of period of non-disclosure orders - extension granted
Judge: Yates J
- 10 Jan 2020:
Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia  FCA 6
PRACTICE AND PROCEDURE - application for permanent stay of patent infringement proceedings - where earlier proceeding was brought by the applicant against the first respondent for infringement of a particular but now expired patent - where current proceeding is for infringement of another patent in force at the time of the earlier proceeding -…
Judge: Yates J
- 8 Jan 2020:
Hill & Smith Holdings PLC v Safe Barriers Pty Ltd (No 2)  FCA 8
PRACTICE AND PROCEDURE - application to amend pleadings - application to join parties, including parties in the Republic of Singapore - application for leave to serve outside Australia
Judge: Robertson J
- 23 Dec 2019:
Oxworks Trading Pty Ltd v Gram Engineering Pty Ltd  FCAFC 240
PATENTS - construction - whether the primary judge failed to construe the claim in the context of the specification as a whole - meaning of "formed from sheet material" - infringement - meaning of "sheet" - construction and infringement grounds of appeal dismissed PATENTS - award of additional damages - exercise of discretion under s 122(1A) of…
Judge: McKerracher, Burley and O'Bryan JJ
- 19 Dec 2019:
Toolgen Incorporated v Fisher  FCA 2158
PRACTICE AND PROCEDURE - security for costs - whether respondents/cross-appellants in appeal brought by patent applicant against decision of a delegate of Commissioner of Patents in opposition proceeding should be required to provide security for costs - whether respondents/cross-appellants are in substance applicants in the appeal proceeding -…
Judge: Nicholas J
- 17 Dec 2019:
Hardingham v RP Data Pty Limited (No 2)  FCA 2138
Judge: Thawley J
- 17 Dec 2019:
BlueScope Steel Limited v Dongkuk Steel Mill Co., Ltd (No 2)  FCA 2117
PATENTS - alloy-coated steel strip products - alloy coatings of aluminium, zinc, silicon and magnesium - hot dip coating methods - asserted grounds of invalidity - lack of clarity and definition - lack of fair basis - lack of sufficiency - failure to disclose best method - false suggestion - novelty - inventive step - construction of patent claims …
Judge: Beach J
- 16 Dec 2019:
Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd (No 3)  FCA 2116
PRACTICE AND PROCEDURE -- application for a stay of various orders pending the hearing and determination of an appeal to the Full Court of the Federal Court of Australia -- whether grounds of appeal are arguable -- whether the applicants will be deprived of the full benefits of the judgment in their favour -- whether the respondents will be…
Judge: Besanko J
- 13 Dec 2019:
Chhabra v McPherson as Trustee for the McPherson Practice Trust  FCAFC 228
INTELLECTUAL PROPERTY - copyright - appeal from orders dismissing an application for damages for infringement of copyright subsisting in a logo - whether first appellant was the sole owner of the copyright - whether, as co-owner, the first appellant could revoke a licence previously granted jointly by the co-owners to the respondents - whether the …
Judge: Greenwood, Charlesworth and Burley JJ
- 9 Dec 2019:
Hardingham v RP Data Pty Limited  FCA 2075
INTELLECTUAL PROPERTY - Copyright - Action under s 115 of the Copyright Act 1968 (Cth) - copyright in photographs and floor plans - whether third party infringed copyright in the works - whether licence between photographer and real estate agencies to be inferred from conduct of the parties - whether licence implied in fact into an informal…
Judge: Thawley 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.
- 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.