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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
- 18 Jul 2024:
Care A2 Plus Pty Ltd (Receiver Appointed) v The a2 Milk Company Limited [2024] FCA 782
PRACTICE AND PROCEDURE - form of orders COSTS - application for costs arising from interlocutory applications to be made payable forthwith - where applicant has failed to comply with orders to pay security for costs - consideration of whether extenuating circumstances were present which warranted departure from the general position under r 40.13…
Judge: Rofe J - 17 Jul 2024:
Glass Hardware Australia Pty Ltd v TCT Group Pty Ltd [2024] FCAFC 95
PATENTS - innovation patent relating to hinges - infringement - validity - whether primary judge erred in the proper construction of the invention disclosed PATENTS - validity - lack of clear and complete description - classical sufficiency - "relevant range" - s 40(2)(a) of the Patents Act 1990 (Cth) - whether primary judge erred in finding…
Judge: Yates, Charlesworth and Rofe JJ - 17 Jul 2024:
Sunnya Pty Ltd v FPA Group Ltd [2024] FCA 774
COSTS - where leave granted by consent to discontinue proceeding before trial on condition applicant pay respondents' costs - where statement of claim made allegations tantamount to fraud which were withdrawn and contradicted in amended statement of claim - where respondents alleged that proceeding had no reasonable prospects of success and/or…
Judge: Katzmann J - 17 Jul 2024:
FanFirm Pty Limited v Fanatics, LLC [2024] FCA 764
INTELLECTUAL PROPERTY - trade marks - alleged infringement of registered marks under s 120 of the Trade Marks Act 1995 (Cth) - deceptive similarity - misleading or deceptive conduct - alleged breaches of s 18 and s 29(1)(g) and (h) of the Australian Consumer Law (ACL) - tort of passing off. TRADE MARKS - infringement - deceptive similarity - s 120 …
Judge: Rofe J - 11 Jul 2024:
RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd (No 2) [2024] FCAFC 92
COSTS - application for variation to costs orders - appropriate order as to costs - where appellants failed to establish trade mark infringement at trial and on appeal but successful in resisting validity challenge - where respondent's validity arguments raised only in response to infringement case - where appellants successful in demonstrating…
Judge: Nicholas, Burley and Hespe JJ - 11 Jul 2024:
Comite Interprofessionnel du Vin de Champagne v Network Nutrition Pty Ltd [2024] FCA 780
PRACTICE AND PROCEDURE - costs - appeal from decision of Registrar of Trade Marks - where proceeding resolved on the eve of final hearing - where agreed resolution involved the appellants discontinuing the proceeding - where the parties did not reach agreement on costs - where each party sought its costs of the proceeding - consideration of…
Judge: Moshinsky J - 11 Jul 2024:
Societe Civile et Agricole du Vieux Chateau Certan v Kreglinger (Australia) Pty Ltd (No 2) [2024] FCA 755
CORPORATIONS - Bordeaux wine - Tasmanian wine - consumer law claims - passing off claims - trade mark revocation proceedings - final orders
Judge: Beach J - 8 Jul 2024:
Skildum-Reid v University of Queensland [2024] FCA 733
PRACTICE AND PROCEDURE - discovery - preliminary discovery - application under rr 7.22 and 7.23 of the Federal Court Rules 2011 (Cth) - documents sought in relation to alleged copyright infringement and infringement of moral rights - where applicant failed to provide sufficient evidence to satisfy criteria under either rule - application dismissed
Judge: Derrington J - 3 Jul 2024:
EIS GmbH v LELO Oceania Pty Ltd (Evidence of Experiments) [2024] FCA 713
PRACTICE AND PROCEDURE - patent infringement proceedings - application for leave to rely upon evidence of the conduct and results of experiments performed on devices without compliance with rule 34.50(1) Federal Court Rules 2011 (Cth) - leave sought pursuant to rule 34.50(2) Federal Court Rules 2011 (Cth) - explanation provided for failure to…
Judge: Downes J - 28 Jun 2024:
Vald Pty Ltd v KangaTech Pty Ltd (Costs) [2024] FCA 693
COSTS - where applicant achieved partial success in patent infringement proceeding - where applicant was successful in defending cross-claim alleging invalidity - where respondent advanced aspects of its invalidity case on premise that applicant's construction of claims was correct (which construction was not accepted) - where parties agreed that…
Judge: Downes J
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.
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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.
