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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:

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.

Practice Notes

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.

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

Forms:
Rules:
Notes:
  • In addition to any material required to be filed by the Federal Court Rules, and at least 7 days prior to the first case management hearing (or earlier if the docket judge so requires), copies of the following documents should be filed and served:
      • any patent upon which the applicant sues
      • any trade mark registration or certificate of registered design upon which the applicant sues
      • any patent application which is the subject of the appeal
      • any application for a registered trade mark or application for a registered design that is the subject of the appeal
      • any written record of the decision (including any reasons) the subject of the appeal.

(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.

Forms:
  • Form 92 - Notice of appeal (intellectual property)
Rules:
Notes:
  • For a Notice of appeal, the party bringing the appeal should be referred to as the "applicant" and the other party should be referred to as the "respondent"
  • A Notice of appeal must also be served on the Commissioner of Patents.

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:

Forms:
Rules:

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:

Forms:
  • Form 94 – Originating application for determination of equitable remuneration under s 20(2) of the Circuits Layouts Act 1989
Rules:

(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:

Forms:
  • Form 95 – Originating application for determination of the terms of the doing of an act under section 25(4) of the Circuits Layouts Act 1989
Rules:

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

Legislation

The Intellectual Property NPA comprises any proceeding relating to the following:

Latest Judgments

  • 12 Jul 2019: Davies v Lazer Safe Pty Ltd (No 2) [2019] 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 [2019] 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 [2019] 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 [2019] 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 [2019] 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. [2019] 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 [2019] 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 [2019] 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) [2019] 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 [2019] 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

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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.

NPA Judges

National Coordinating Judges

  • Greenwood J
  • Nicholas J
  • Yates J
NPA Judges

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