Intellectual Property

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.

• 1 Jul 2026: Chapcon Building Services Pty Ltd v Spectrum Homes Qld Pty Ltd (No 2) [2026] FCA 888
  PRACTICE AND PROCEDURE – proceedings commenced in 2023 – doubt expressed in prior judgment about ownership of copyright – statement of claim amended on 20 April 2023, 6 November 2023, 29 April 2025 and 14 May 2026 but no amendment to allegations relating to ownership of copyright – late joinder of second applicant caused trial dates to be vacated…
  Judge: DOWNES J
• 1 Jul 2026: Clarke v TNSG Biotech Co., Ltd [2026] FCA 851
  TRADE MARKS – appeal under s 56 of the Trade Marks Act 1995 (Cth) – where respondent did not appear at the hearing – where Registrar of Trade Marks did not wish to be heard – where affidavits filed by the respondent in the proceeding but not read into evidence – appeal allowed
  Judge: STELLIOS J
• 25 Jun 2026: EV20 Consulting Group Pty Ltd v Paperless Warehousing Pty Ltd (No 4) [2026] FCA 805
  PRACTICE AND PROCEDURE – rule 39.05(a) of the Federal Court Rules 2011 (Cth) – application to set aside default judgment – where applicant failed to file a Notice of address for service after his solicitors ceased acting for him – where applicant has no satisfactory explanation for failure to do so – where applicant aware of proceedings and…
  Judge: BURLEY J
• 23 Jun 2026: Comino v Watson Webb Pty Ltd (Costs) [2026] FCAFC 88
  COSTS – whether single costs order should be made for three proceedings – whether an issue-by-issue approach to costs appropriate – whether costs order by primary judge should be set aside or varied – whether costs should be assessed on a lump-sum basis
  Judge: MOSHINSKY, DOWNES AND OWENS JJ
• 23 Jun 2026: Republic of Peru (Peruvian State) v Registrar of Trade Marks [2026] FCA 791
  TRADE MARKS – section 177 of the Trade Marks Act 1995 (Cth) – application for word PISCO to be registered as a certification mark – appeal from a decision of a delegate of the Registrar of the Australian Trade Mark Office – whether certification trade mark sought is inherently adapted to distinguish – whether certification trade mark sought is…
  Judge: BURLEY J
• 16 Jun 2026: Mobile Skips (Australia) Pty Ltd v Registrar of Trade Marks [2026] FCA 744
  TRADE MARKS – appeal under s 35 of the Trade Marks Act 1995 (Cth) from decision of delegate of Registrar of Trade Marks refusing registration of plain word mark “MOBILE SKIPS” – plain word mark rejected under s 41 of the Trade Marks Act – whether mark not to any extent inherently adapted to distinguish designated services of the applicant –…
  Judge: HESPE J
• 12 Jun 2026: Universal Music Australia Pty Limited v TPG Internet Pty Ltd (No 2) [2026] FCA 731
  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 – removal of domain names that have ceased to enable or facilitate access to online locations – removal of…
  Judge: BURLEY J
• 2 Jun 2026: EOS Defence Systems Pty Limited v Pahlavani [2026] FCA 688
  PRACTICE AND PROCEDURE – urgent application for interlocutory mandatory injunction requiring the respondents to withdraw an application filed under the Patent Cooperation Treaty – prima facie case established – balance of convenience favours granting relief – application granted
  Judge: STELLIOS J
• 4 Jun 2026: Byrnecut Australia Pty Ltd v Develop Global Ltd [2026] FCA 738
  PRACTICE AND PROCEDURE – application to strike out various paragraphs of the Amended Statement of Claim – whether information claimed to be confidential is identified with sufficient specificity – whether lack of specificity can be remedied by identifying information which is not claimed to be confidential – strike out allowed in part –…
  Judge: JACKMAN J
• 26 May 2026: AstraZeneca AB v Pharmacor Pty Ltd (No 4) [2026] FCA 663
  PRACTICE AND PROCEDURE – patents – discovery – application for discovery of documents said to be relevant to inventive step case based on failure to satisfy the selection patent principles claimed to form part of Australian law – where documents relate to work performed by inventors – limited discovery ordered
  Judge: DOWNES J

• 7 Mar 2026: Common counts, common law and common sense
  Speech presented to the Symposium on Australian Restitution in the 21st Century.
  
• 3 Dec 2025: Innovation
  Speech presented at the Intellectual Property Society of Australia and New Zealand
  
• 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