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.
- 29 Sep 2023:
Roadshow Films Pty Limited v Telstra Corporation Limited (Extension of Orders)  FCA 1167
COPYRIGHT - section 115A of the Copyright Act 1968 (Cth) - extension of injunction requiring carriage service providers to take reasonable steps to disable access to online locations infringing or facilitating infringement of copyright - joinder of additional carriage service providers - appropriate form of orders - extension granted
Judge: Burley J
- 29 Sep 2023:
Reflex Instruments Asia Pacific Pty Ltd v Globaltech Corporation Pty Ltd  FCAFC 158
PATENTS - construction - whether the primary judge erred in construction of "downhole equipment" and "downhole gathering data system" as excluding equipment for use in holes drilled for oil and gas exploration and production and wireline telemetry equipment - whether primary judge erred in construing the phrases "electromagnetic signal direction…
Judge: Moshinsky, Burley and Kennett JJ
- 26 Sep 2023:
Red Hill Wine Pty Ltd v Red Hill Vineyard Pty Ltd  FCA 1151
COSTS - where party failed to file notice of objection within 21 day time period after estimate issued by Registrar - where party seeks to have the time extended and file notice of objection to estimate of costs - whether reason for delay and merits of the notice of objection sufficient to allow orders sought - application dismissed
Judge: Rofe J
- 22 Sep 2023:
Sanofi v Amgen Inc. (No 2)  FCA 1156
PRACTICE AND PROCEDURE - patents - appeal from decision of a delegate of the Commissioner of Patents in opposition proceedings - application seeking orders pursuant to r 5.04 of the Federal Court Rules 2011 (Cth) limiting evidence to be relied on at the hearing of the appeal - where respondent intends to tender declarations relied on before the…
Judge: Yates J
- 21 Sep 2023:
Boehringer Ingelheim Animal Health USA Inc v Zoetis Services LLC  FCA 1119
PATENTS - three patent applications on appeal from a decision of a delegate of the Commissioner of Patents - patent applications disclose supernatant vaccine for Mycoplasma hyopneumoniae (M. hyo), a disease affecting pigs - applications include a platform, a bivalent and a multivalent vaccine - validity EVIDENCE - challenge to independence of…
Judge: Rofe J
- 13 Sep 2023:
Firstmac Limited v Zip Co Limited (No 2)  FCA 1074
COSTS - application for indemnity costs - principles in respect of Calderbank offers - where applicant did not accept offers by respondents to settle proceedings - whether offers were commensurate with a possible outcome in the proceeding
Judge: Markovic J
- 12 Sep 2023:
UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 3)  FCA 1079
PRACTICE AND PROCEDURE - patent litigation - form of final orders - costs - where applicant successful in defeating infringement claim - where applicant largely successful in unjustified threats claim - where first respondent (the patentee) successful in defeating revocation claim
Judge: Moshinsky J
- 6 Sep 2023:
Directed Electronics OE Pty Ltd v Gridtraq Australia Pty Ltd  FCAFC 149
PRACTICE AND PROCEDURE - appeal from decision of trial judge in proceedings where former employees colluded with suppliers to misappropriate Appellant's business - whether trial judge erred in dismissing proceedings against Respondents - where Appellant submitted that findings made against Respondents sufficient to constitute copyright…
Judge: Perram, Downes and Button JJ
- 29 Aug 2023:
Orikan Group Pty Ltd v Vehicle Monitoring Systems Pty Limited  FCA 1031
PRACTICE AND PROCEDURE - interlocutory application for stay of proceedings on basis of Anshun estoppel and strike out of claims on basis of abuse of process - whether claim for invalidity of patent should have been raised in earlier proceedings - application dismissed
Judge: O'Bryan J
- 29 Aug 2023:
Hanwha Solutions Corporation v REC Solar Pte Ltd  FCA 1017
PATENTS - patent for method for manufacturing a solar cell with a surface-passivating dielectric double layer, and corresponding solar cell - infringement - validity - claim construction PATENTS - infringement - construction of method and product claims - no infringement found PATENTS - validity - lack of inventive step - ss 7(2) and (3) of the…
Judge: Burley J
Latest Speeches & Papers
- 24 Sep 2021:
The prior use defence and exhaustion doctrine in intellectual property law
Presented virtually at the launch event of issue 44(2) of the University of New South Wales Law Journal by Justice Rares.
- 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.
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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.