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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
- 22 Aug 2025:
Paige LLC v Sage and Paige Collective Pty Ltd (Costs) [2025] FCA 988
COSTS – application for indemnity costs – rejection of walk away offers not unreasonable in the circumstances – appellant’s case reasonably and properly arguable –application for indemnity costs dismissed
Judge: NEEDHAM J - 21 Aug 2025:
Lift Shop Pty Ltd v Next Level Elevators Pty Ltd [2025] FCAFC 108
COPYRIGHT – additional damages – whether primary judge erred in determining entitlement to additional damages in advance of determining quantum and prior to the applicant’s election – whether primary judge erred in her approach to assessing the flagrancy of the conduct – where threatening communications considered in the context of the…
Judge: FEUTRILL, NESKOVCIN AND MOORE JJ - 19 Aug 2025:
Toyota Jidosha Kabushiki Kaisha v Ozi4x4 Pty Ltd (Leave to proceed) [2025] FCA 981
PRACTICE AND PROCEDURE – first respondent wound up in insolvency under the Corporations Act 2001 (Cth) – winding up order made by Supreme Court of Victoria – applicants applied for leave to proceed against the first respondent under s 471B of the Corporations Act – whether leave ought to be granted – leave to proceed may be granted by this Court…
Judge: WHEELAHAN J - 15 Aug 2025:
Fanca Technologies Pty Ltd v CFH Airtechnic Australia Pty Ltd [2025] FCA 953
PRACTICE AND PROCEDURE – where the applicants applied for leave to file an amended originating application and statement of claim which re-defines some of the impugned products and alleges additional claims of infringement – where respondents submit that the infringed products are defined to include ‘hypothetical’ products – where the respondents…
Judge: PERRAM J - 11 Aug 2025:
Fanatics, LLC v FanFirm Pty Limited (Costs) [2025] FCAFC 111
COSTS – whether appropriate to apportion costs according to mixed success – whether costs should follow the event
Judge: BURLEY, JACKSON AND DOWNES JJ - 11 Aug 2025:
Thomas v Monsoon Group Pty Ltd [2025] FCA 911
TRADE MARKS – non-use – where the respondent brought a non-use action before the Registrar of Trade Marks (the Registrar) pursuant to s 92(4)(b) of the Trade Marks Act 1995 (Cth) (the Act) – whether to grant the applicant an extension of time to appeal decision of the Registrar’s delegate under r 34.25 of the Federal Court Rules 2011 (Cth) – where …
Judge: HESPE J - 7 Aug 2025:
The NOCO Company v Brown and Watson International Pty Ltd [2025] FCA 887
PATENTS – jump starter device for jump starting a depleted or discharged battery (eg in a vehicle) – priority date – where the patents in suit claimed an earliest priority date based on the filing date of a PCT application – where the cross-claimant contended that the patents were not entitled to the asserted priority date – whether, for each…
Judge: MOSHINSKY J - 6 Aug 2025:
McCallum v Projector Films Pty Ltd [2025] FCA 903
COPYRIGHT – interlocutory application – dispute over which of two persons is to be attributed and credited as the “principal director” of a documentary to be premiered this week at the Melbourne International Film Festival – moral rights – right of attribution of authorship – false attribution – misleading and deceptive conduct – interlocutory…
Judge: SHARIFF J - 30 Jul 2025:
Watson Webb Pty Ltd v Comino [2025] FCA 871
DESIGN – entitlement – identification of co-designer for purposes of s 13(1)(a) of the Designs Act 2003 (Cth) (Designs Act) – whether first respondent was only person whose mind conceived relevant shape, configuration, pattern or ornamentation applicable to article in question and reduced it to visible form – where design combined features that…
Judge: HALLEY J - 29 Jul 2025:
Oxford Nanopore Technologies Plc v MGI Australia Pty Ltd (No 2) [2025] FCA 869
COSTS – whether prospective applicant should pay prospective respondent’s costs thrown away by vacation of hearing date – where hearing of preliminary discovery application stayed due to prospective applicant independently acquiring materials subject of application – where prospective applicant may commence substantive proceedings – where…
Judge: JACKMAN J
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.
