Patents and Associated Statutes Sub-area
About this 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
- appeals from the Commissioner of Patents.
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:|
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.
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:
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.
- 10 Jan 2020:
Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 3)  FCA 7
PRACTICE AND PROCEDURE - application for extension of period of non-disclosure orders - extension granted
Judge: Yates J
- 10 Jan 2020:
Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia  FCA 6
PRACTICE AND PROCEDURE - application for permanent stay of patent infringement proceedings - where earlier proceeding was brought by the applicant against the first respondent for infringement of a particular but now expired patent - where current proceeding is for infringement of another patent in force at the time of the earlier proceeding -…
Judge: Yates J
- 8 Jan 2020:
Hill & Smith Holdings PLC v Safe Barriers Pty Ltd (No 2)  FCA 8
PRACTICE AND PROCEDURE - application to amend pleadings - application to join parties, including parties in the Republic of Singapore - application for leave to serve outside Australia
Judge: Robertson J
- 23 Dec 2019:
Oxworks Trading Pty Ltd v Gram Engineering Pty Ltd  FCAFC 240
PATENTS - construction - whether the primary judge failed to construe the claim in the context of the specification as a whole - meaning of "formed from sheet material" - infringement - meaning of "sheet" - construction and infringement grounds of appeal dismissed PATENTS - award of additional damages - exercise of discretion under s 122(1A) of…
Judge: McKerracher, Burley and O'Bryan JJ
- 19 Dec 2019:
Toolgen Incorporated v Fisher  FCA 2158
PRACTICE AND PROCEDURE - security for costs - whether respondents/cross-appellants in appeal brought by patent applicant against decision of a delegate of Commissioner of Patents in opposition proceeding should be required to provide security for costs - whether respondents/cross-appellants are in substance applicants in the appeal proceeding -…
Judge: Nicholas J
- 17 Dec 2019:
BlueScope Steel Limited v Dongkuk Steel Mill Co., Ltd (No 2)  FCA 2117
PATENTS - alloy-coated steel strip products - alloy coatings of aluminium, zinc, silicon and magnesium - hot dip coating methods - asserted grounds of invalidity - lack of clarity and definition - lack of fair basis - lack of sufficiency - failure to disclose best method - false suggestion - novelty - inventive step - construction of patent claims …
Judge: Beach J
- 5 Dec 2019:
Liberation Developments Pty Ltd v Lomax Group Pty Ltd  FCA 2059
PATENTS - consideration of the disposition of the costs of the principal proceeding
Judge: Greenwood J
- 29 Nov 2019:
Hytera Communications Corporation Limited v Motorola Solutions, Inc.  FCAFC 210
PRACTICE AND PROCEDURE - application for leave to appeal from interlocutory order - application granted PRACTICE AND PROCEDURE - appeal from decision to dismiss application for leave to file third further amended defence - where primary judge erred in finding that proposed amendments lacked coherence - where amendments are relevant to the…
Judge: Jagot, Yates, Stewart JJ
- 22 Nov 2019:
Falkenhagen v West  FCA 2055
PRACTICE AND PROCEDURE - consideration of an application for summary judgment under s 31A of the Federal Court of Australia Act 1976 (Cth) and rule 26.01 of the Federal Court Rules 2011 (Cth) in terms of particular paragraphs of the statement of claim
Judge: Greenwood J
- 22 Nov 2019:
Repipe Pty Ltd v Commissioner of Patents  FCA 1956
PATENTS - validity - manner of manufacture under s 18(1A)(a) of the Patents Act 1990 (Cth) - Encompass Corporation Pty Ltd v InfoTrack Pty Ltd (2019) 145 IPR 1 applied - whether the patents, methods and systems for providing and receiving information for risk management in the field, are patentable subject matter - nature of the technical…
Judge: McKerracher 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.