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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:
NPA Practice Note: |
Other practice notes which may be relevant to this NPA include:
General Practice Notes: |
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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
- 23 Apr 2024:
Vald Pty Ltd v KangaTech Pty Ltd (No 6) [2024] FCA 408
PATENTS - form of orders following judgment on claim and cross-claim - whether declaration of non-infringement should be made when relief not sought in cross-claim - where respondent offered form of undertaking following trial by email to judge's chambers - whether respondent should be (or needs to be) released from proposed undertaking
Judge: Downes J - 12 Apr 2024:
Aristocrat Technologies Australia Pty Limited v Commissioner of Patents (No 4) [2024] FCA 362
COSTS - revision of costs order of the first instance proceedings in light of remittal decision - discretion as to costs - costs to follow the event
Judge: Burley J - 12 Apr 2024:
Australian News Channel Pty Ltd v Isentia Pty Limited [2024] FCA 363
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) - application dismissed
Judge: Burley J - 12 Apr 2024:
Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd (No 5) [2024] FCA 360
PATENTS - claims for methods of treatment and Swiss-style claims - methods of treatment for primary insomnia characterised by non-restorative sleep and for improving restorative quality of sleep - construction of claims - meaning of non-restorative sleep - meaning of characterised by non-restorative sleep - meaning of restorative quality of sleep…
Judge: Nicholas J - 9 Apr 2024:
Hanwha Solutions Corporation v REC Solar Pte Ltd (No 2) [2024] FCA 336
COSTS - discretion as to costs - whether to treat infringement claim and validity cross-claim as separate events - where infringement claim failed and cross-claim partially successful - discount for alternative and unnecessary defences to infringement. COSTS - apportionment of costs - where three separate proceedings heard together and two…
Judge: Burley J - 5 Apr 2024:
Vald Pty Ltd v KangaTech Pty Ltd (No 5) [2024] FCA 333
PATENTS - patent for apparatus for use in assessing the strength of at least one knee flexor muscle of a subject - claim construction - patent for method of assessing strength of at least one knee flexor muscle using an apparatus - infringement - validity PATENTS - claim construction - whether results obtained from use of apparatus and method must …
Judge: Downes J - 4 Apr 2024:
Google LLC v Interactive Engineering Pty Ltd [2024] FCA 338
Judge: Markovic J - 2 Apr 2024:
The Agency Group Australia Ltd v H.A.S. Real Estate Pty Ltd (No 2) [2024] FCAFC 44
COSTS - application for lump sum costs order calculated on an indemnity basis - whether the failure of the applicants to accept an offer of compromise was unreasonable - where offer of compromise included payment of costs other than legal costs - where rejection of offer was not unreasonable - whether costs should be apportioned taking account of…
Judge: Yates, Markovic and Kennett JJ - 27 Mar 2024:
McD Asia Pacific LLC v Hungry Jack's Pty Ltd (No 2) [2024] FCA 299
COSTS - discretion as to costs - consideration and determination of percentages - lump sum costs orders made pursuant to r 40.02(b) of the Federal Court Rule 2011 (Cth) - if not agreed, amounts to be determined by a Registrar of the Court
Judge: Burley J - 26 Mar 2024:
Boehringer Ingelheim Animal Health USA Inc v Zoetis Services LLC (No 2) [2024] FCA 291
PATENTS - three patent applications on appeal from a decision of a delegate of the Commissioner of Patents - validity of dependent claims after findings in Boehringer Ingelheim Animal Health USA Inc v Zoetis Services LLC [2023] FCA 1119 that certain independent claims were invalid - lack of inventive step - lack of disclosure and support - whether …
Judge: Rofe 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.