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.
- 12 Jul 2019:
Davies v Lazer Safe Pty Ltd (No 2)  FCAFC 118
COSTS - costs following the event - appellants unsuccessful on appeal from patent infringement and respondent unsuccessful on cross-appeal on validity - whether to consider claim and cross-claim globally - appellants to pay the costs of the appeal and respondent to pay costs of the cross-appeal
Judge: Greenwood, White and Burley JJ
- 12 Jul 2019:
Merck KGaA v Merck Sharp Dohme Corp  FCA 1084
ESTOPPEL - issue estoppel - proper law of "co-existence" agreement - whether first respondent precluded from denying that agreement governed by German law - whether first respondent bound by issue estoppel arising out of proceedings between applicant and the first respondent in United Kingdom ("UK proceedings") in which it was found that the…
Judge: Nicholas J
- 5 Jul 2019:
Calidad Pty Ltd v Seiko Epson Corporation  FCAFC 115
PATENTS - pellants/cross-respondents ("Calidad") importers and sellers of printer cartridges modified or "repurposed" by a third party - first respondent - first cross-appellant ("Seiko Epson") the patentee of two patents in suit said to have been infringed by Calidad's conduct - consideration of the doctrine of implied licence - consideration of…
Judge: Greenwood, Jagot and Yates JJ
- 3 Jul 2019:
Howden Australia Pty Ltd v Minetek Investments Pty Ltd  FCA 1042
COSTS - costs of the interlocutory application - whether the adjournment application increased the overall length of the hearing
Judge: Jagot J
- 28 Jun 2019:
Watson v Commissioner of Patents  FCA 1015
INTELLECTUAL PROPERTY - appeal from decision of delegate of Commissioner of Patents revoking innovation patent - whether invention was patentable invention under Patents Act 1990 (Cth) s 18(1A) - whether invention was a manner of manufacture within meaning of Statute of Monopolies 1623 (UK) s 6 - where invention claimed was engagement of…
Judge: Rares Acj
- 27 Jun 2019:
Sequenom, Inc. v Ariosa Diagnostics, Inc.  FCA 1011
PATENTS - non-invasive prenatal diagnosis - detection of fetal DNA in maternal serum or plasma samples - detection of fetal abnormalities for chromosomal aneuploidies or simple mutations - detection and monitoring of pregnancy-associated conditions such as pre-eclampsia - asserted grounds of invalidity - manner of manufacture - lack of inventive…
Judge: Beach J
- 21 Jun 2019:
Howden Australia Pty Ltd v Minetek Pty Ltd  FCA 981
EQUITY - interlocutory application -breach of confidence - whether the applicant has shown a sufficient likelihood of success to justify in the circumstances the preservation of the status quo pending the trial - balance of convenience - the interlocutory application, insofar as it remains undetermined, be dismissed
Judge: Jagot J
- 21 Jun 2019:
Rodney Jane Racing Pty Ltd v Monster Energy Company  FCA 923
TRADE MARKS - registration - opposition - appeal from decision of Registrar of Trade Marks refusing registration - whether appellant had valid claim to ownership of marks at priority date - whether appellant intended to use or authorise use of marks at priority date - whether marks likely to deceive or cause confusion - appeal allowed EVIDENCE -…
Judge: O'Bryan J
- 20 Jun 2019:
Key Logic Pty Ltd v Blue Groper Investments Pty Ltd (No 3)  FCA 926
COSTS - whether lump sum costs order should be made - whether any reason demonstrated that order should not be made - good reasons established - lump sum costs orders to be assessed by District Registrar
Judge: Derrington J
- 20 Jun 2019:
Trident Seafoods Corporation v Trident Foods Pty Ltd  FCAFC 100
TRADE MARKS - application for leave to appeal - leave to appeal granted - exercise of discretion under s 101(3) - statutory purpose of Pt 9 of the Trade Marks Act 1955 (Cth) - evidentiary basis for there being relevant prospect of confusion in the minds of consumers - whether the use of the mark after the non-use period "did not lack good faith"…
Judge: Reeves, Jagot and Rangiah JJ
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.