Patents and Associated Statutes Sub-area NPA logo with link NPA logo with link

Patents and Associated Statutes Sub-area

About this Sub-area

The Patents and Associated Statues Sub-area consists of:

  • 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
  • appeals from the Commissioner of Patents.

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.

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:

Forms, Rules & Fees

Filing fees for commencing a proceeding in this Sub-area 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).

1.  Commencing Patents and Associated Statutes Sub-area proceedings

A party may apply to dispute the validity of a patent under the Patents Act 1990 (Cth). The main grounds upon which the Court can revoke a patent are as follows:

  • The invention is not a patentable invention
  • The patent was obtained by fraud, false suggestion or misrepresentation
  • The patent does not comply with the requirements of s 40 of the Patents Act
  • The patent holder does not have a legal entitlement to the patent.
Forms:
Rules:

2.  Applications under the Plant Breeder's Rights Act 1994

A claim for infringement of plant breeder's rights under the Plant Breeder's Act 1994 (Cth) may be commenced in the Federal Court by filing:

Forms:
Rules:

3.  Appeals from the Commissioner of Patents

A party who wants to appeal from a decision of the Commissioner of Patents must within 21 days of the date of the decision, file a Notice of appeal, which must include:

  • the date of the decision
  • whether the appeal is from the whole or a part of the decision and if only from a part of the decision, details of the part
  • order(s) sought
  • grounds relied on in support of each order sought.
Forms:
  • Form 92 – Notice of appeal (intellectual property)
Rules:

For further procedural and case management information you should refer to the Central Practice Note and the Intellectual Property Practice Note.

Latest Judgments

  • 12 Jul 2019: Davies v Lazer Safe Pty Ltd (No 2) [2019] FCAFC 118
    COSTS - costs following the event - appellants unsuccessful on appeal from patent infringement and respondent unsuccessful on cross-appeal on validity - whether to consider claim and cross-claim globally - appellants to pay the costs of the appeal and respondent to pay costs of the cross-appeal
    Judge: Greenwood, White and Burley JJ
  • 5 Jul 2019: Calidad Pty Ltd v Seiko Epson Corporation [2019] FCAFC 115
    PATENTS - pellants/cross-respondents ("Calidad") importers and sellers of printer cartridges modified or "repurposed" by a third party - first respondent - first cross-appellant ("Seiko Epson") the patentee of two patents in suit said to have been infringed by Calidad's conduct - consideration of the doctrine of implied licence - consideration of…
    Judge: Greenwood, Jagot and Yates JJ
  • 28 Jun 2019: Watson v Commissioner of Patents [2019] FCA 1015
    INTELLECTUAL PROPERTY - appeal from decision of delegate of Commissioner of Patents revoking innovation patent - whether invention was patentable invention under Patents Act 1990 (Cth) s 18(1A) - whether invention was a manner of manufacture within meaning of Statute of Monopolies 1623 (UK) s 6 - where invention claimed was engagement of…
    Judge: Rares Acj
  • 27 Jun 2019: Sequenom, Inc. v Ariosa Diagnostics, Inc. [2019] FCA 1011
    PATENTS - non-invasive prenatal diagnosis - detection of fetal DNA in maternal serum or plasma samples - detection of fetal abnormalities for chromosomal aneuploidies or simple mutations - detection and monitoring of pregnancy-associated conditions such as pre-eclampsia - asserted grounds of invalidity - manner of manufacture - lack of inventive…
    Judge: Beach J
  • 20 Jun 2019: InterPharma Pty Ltd v Hospira, Inc (No 5) [2019] FCA 960
    PATENTS - dexmedetomidine in intensive care unit sedation - construction of claims - alleged invalidity of patent on grounds of lack of clarity, manner of manufacture, novelty, inventive step and fair basis - challenge to validity of patent rejected - whether proposed conduct threatened to infringe claims of patent prior to expiry - threatened…
    Judge: Kenny J
  • 12 Jun 2019: Mylan Health Pty Ltd (formerly BGP Products Pty Ltd) v Sun Pharma ANZ Pty Ltd (formerly Ranbaxy Australia Pty Ltd) (No 2) [2019] FCA 883
    PATENTS - costs of patent proceeding - whether unsuccessful applicant (patentee) should be required to pay all of respondent's costs - where respondent unsuccessful on some issues - apportionment justified - applicant to pay 80% of respondent's costs
    Judge: Nicholas J
  • 3 Jun 2019: Pilkin v Sony Australia Limited (No 2) [2019] FCA 980
    INTELLECTUAL PROPERTY - patents - whether patent had deferred priority date under Patents Act 1990 (Cth) ss 102, 114 and Patents Regulation 1991 (Cth) reg 3.14 - where result of amending complete specification disclosed matter that extended beyond that disclosed in complete specification as filed - whether patent lacked novelty - where prior art…
    Judge: Rares J
  • 17 May 2019: Gram Engineering Pty Ltd v Oxworks Pty Ltd [2019] FCA 689
    PATENTS - action for infringement of Australian standard patent - fence plinth - construction of claim: "A fence plinth formed from sheet material having spaced apart end edge margins and being profiled to incorporate stiffening formations that extend along the sheet between the end edge margins" - cross-claim for unjustified threats -…
    Judge: Robertson J
  • 13 May 2019: Pfizer Ireland Pharmaceuticals v Samsung Bioepis AU Pty Ltd (No 2) [2019] FCA 657
    COSTS - application for preliminary discovery pursuant to r 7.23 of the Federal Court Rules 2011 (Cth) - where prospective applicant was substantially successful in application which was contested by prospective respondents - discretion in making costs orders pursuant to s 43(2) of Federal Court of Australia Act 1976 (Cth) to be exercised…
    Judge: Burley J
  • 3 May 2019: Teva Pharma Australia Pty Ltd v Boehringer Ingelheim Pharma GMBH & Co. KG [2019] FCA 625
    PRACTICE AND PROCEDURE - discovery - patents - application for discovery of documents relating to development of alleged invention
    Judge: Moshinsky J

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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.