More

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.

• 30 Jul 2025: Watson Webb Pty Ltd v Comino [2025] FCA 871
  DESIGN – entitlement – identification of co-designer for purposes of s 13(1)(a) of the Designs Act 2003 (Cth) (Designs Act) – whether first respondent was only person whose mind conceived relevant shape, configuration, pattern or ornamentation applicable to article in question and reduced it to visible form – where design combined features that…
  Judge: HALLEY J
• 29 Jul 2025: Oxford Nanopore Technologies Plc v MGI Australia Pty Ltd (No 2) [2025] FCA 869
  COSTS – whether prospective applicant should pay prospective respondent’s costs thrown away by vacation of hearing date – where hearing of preliminary discovery application stayed due to prospective applicant independently acquiring materials subject of application – where prospective applicant may commence substantive proceedings – where…
  Judge: JACKMAN J
• 15 Jul 2025: Bickford’s Australia Pty Ltd v Trink Tank Pty Ltd (No 2) [2025] FCA 839
  COSTS — where respondent reserved the right to make further submissions on costs depending on the decision of its interlocutory application — where Court heard further argument on costs — whether orders previously made should be set aside — costs orders confirmed — interlocutory application dismissed
  Judge: O'SULLIVAN J
• 14 Jul 2025: Dyno Nobel Asia Pacific Pty Ltd v Orica Explosives Technology Pty Ltd [2025] FCA 767
  PATENTS – validity – infringement – standard patent entitled “Wireless detonator assembly, and methods of blasting” – standard patent entitled “Wireless electronic booster and methods of blasting” – standard patent entitled “Selective control of wireless initiation devices at a blast site” – standard patent entitled “A method of underground rock…
  Judge: DOWNES J
• 15 May 2025: CPC Patent Technologies Pty Ltd v Apple Pty Limited [2025] FCA 489
  PATENTS – patents for secure access systems – claim construction – infringement – validity PATENTS – construction of the asserted claims – construction of seven contested integers PATENTS – infringement – where the impugned devices incorporate biometric security systems utilising fingerprint and face recognition – factual contest regarding…
  Judge: BURLEY J
• 11 Jul 2025: Toyota Jidosha Kabushiki Kaisha v OZI4x4 Pty Ltd [2025] FCA 768
  Catchwords: PRACTICE AND PROCEDURE – request by party to issue a subpoena against a non-party foreign corporation and for substituted service of that subpoena outside Australia – proposed recipient a Singapore company – request refused
  Judge: HILL J
• 7 Jul 2025: Aristocrat Technologies Australia Pty Limited v Light & Wonder, Inc. (No 3) [2025] FCA 775
  PRACTICE AND PROCEDURE – r 30.01 of the Federal Court Rules 2011 (Cth) – whether appropriate to make orders for separate determination of issues of liability and quantum – where close relationship between pecuniary and non-pecuniary relief sought – where separation of issues not suitable to nature of relief sought – where hearing to be conducted…
  Judge: BURLEY J
• 10 Jul 2025: Paige LLC v Sage and Paige Collective Pty Ltd [2025] FCA 750
  TRADE MARKS – whether composite marks containing the registered mark and other words (Opposed Marks) deceptively similar under s 44 of the Trade Marks Act 1995 (Cth) – whether the appellant’s trade mark acquired a reputation in Australia before the Priority Date and because of that reputation would likely deceive or cause confusion under s 60 of…
  Judge: NEEDHAM J
• 9 Jul 2025: Roadshow Films Pty Limited v Telstra Limited [2025] FCA 744
  INTELLECTUAL PROPERTY – copyright – application for injunction under s 115A of the Copyright Act 1968 (Cth) – whether site blocking orders should be made against carriage service providers – whether online locations outside of Australia infringed, or facilitated the infringement of, copyright works – application granted
  Judge: YOUNAN J
• 9 Jul 2025: Fanatics, LLC v FanFirm Pty Limited [2025] FCAFC 87
  TRADE MARKS – infringement – s 120 of the Trade Marks Act 1995 (Cth) – use as a trade mark – whether use on information labels is use as a trade mark – whether use on a website is use in relation to goods or use in relation to online retail services – whether goods are of the same description. TRADE MARKS – defences to infringement –…
  Judge: BURLEY, JACKSON AND DOWNES JJ

• 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