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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.
Central Practice Note (CPN-1)
The NPA practice note sets out the arrangements for the management of intellectual property proceedings:
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Other practice notes which may be relevant to this NPA include:
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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
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(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.
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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:
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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:
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(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:
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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:
- 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.
Latest Judgments
- 20 May 2025:
Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 5) [2025] FCA 505
COSTS – application for review of a decision of a Registrar of the Court determining the quantum of costs payable pursuant to a lump sum award – requirement for a de novo hearing on the question of quantum – question of quantum referred to an experienced costs lawyer for inquiry and report – whether report should be adopted in whole or in part
Judge: O'BRYAN J - 14 May 2025:
EV20 Consulting Group Pty Ltd v Paperless Warehousing Pty Ltd (No 2) [2025] FCA 476
PRACTICE AND PROCEDURE – application by party to vary default judgment – Federal Court Rules 2011 (Cth) r 39.05
Judge: BURLEY J - 1 May 2025:
Village Roadshow IP Pty Ltd v VUR Village Trading No 1 Limited [2025] FCA 428
TRADE MARKS – where the respondent brought non-use actions before the Registrar of Trade Marks (the Registrar) pursuant to s 92(4)(b) of the Trade Marks Act 1995 (Cth) against various class registrations of a trade mark (the Trade Mark) by the appellant – where the delegate of the Registrar determined that the Trade Mark had not been used in…
Judge: O’CALLAGHAN J - 30 Apr 2025:
Somers Enterprises Australia Pty Ltd v Basefun Pty Ltd (No 2) [2025] FCA 418
COSTS – appeal from Registrar of Trade Marks successful – costs of appeal proceeding – where submitting notice filed – where success partially based on evidence not advanced before delegate of Registrar – where concessions made which were not made before delegate COSTS – whether party successful in Court should have its costs of proceeding before…
Judge: BENNETT J - 29 Apr 2025:
The Advanced Technology Group Pty Ltd v Foxtel Cable Television Pty Ltd [2025] FCA 408
PRACTICE AND PROCEDURE – application for security for costs – principles applicable where risk of stultification alleged – nature of evidence required – where insufficient evidence of stultification
Judge: MOORE J - 23 Apr 2025:
Sanofi v Amgen Inc. (No 3) [2025] FCA 387
PATENTS – appeal from decision of Delegate of Commissioner of Patents holding oppositions to patent applications unsuccessful – applications for patents including claims to isolated monoclonal antibodies that bind to epitopes on PCSK9 that include one or more specified amino acid residues and which block binding of PCSK9 to LDLR and claims to…
Judge: NICHOLAS J - 16 Apr 2025:
MSA 4X4 Accessories Pty Ltd v Clearview Towing Mirrors Pty Ltd (Discovery) [2025] FCA 375
PATENTS – discovery – significant claim for damages following liability judgment – discovery application successful with modifications made to categories of discovery sought
Judge: DOWNES J - 16 Apr 2025:
Paco Nominees Pty Ltd v Ella Secret Australia Pty Ltd (Default Judgment) [2025] FCA 366
TRADE MARKS – default judgment – respondents’ failure to comply with orders and appear – claim of trade mark infringement – default judgment granted PRACTICE AND PROCEDURE – application for default judgment pursuant to r 5.23 of the Federal Court Rules 2011 (Cth) – whether appropriate to grant injunction – whether satisfied that an order for…
Judge: RAPER J - 16 Apr 2025:
University of New England v Boerner (Costs Review) [2025] FCA 368
COSTS – review of Registrar’s decision to order costs against prospective respondents – where prospective applicant was substantially successful in application for preliminary discovery – whether approach taken by either respondent was adversarial
Judge: HESPE J - 10 Apr 2025:
Australian News Channel Pty Ltd v Isentia Pty Limited [2025] FCAFC 49
COPYRIGHT – statutory construction – section 183(1) of the Copyright Act 1968 (Cth) – meaning of “for the services of the Commonwealth or State” – whether provision of media monitoring services to government clients within s 183(1) – appeal dismissed
Judge: CHEESEMAN, JACKMAN AND OWENS JJ
Latest Speeches & Papers
- 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
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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.
National Coordinating Judges
- Nicholas J
- Burley J
- Rofe J
National Coordinating Registrar
- Susan O’Connor
