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

  • 30 Jul 2021: Thaler v Commissioner of Patents [2021] FCA 879
    PATENTS - artificial intelligence - machine learning - artificial neural networks - invention produced by a computer - semi-autonomous systems - concept of inventor - whether a machine can be an inventor - whether only a human can invent - device for the autonomous boot-strapping of unified sentience (DABUS) - invention created by DABUS in the…
    Judge: Beach J
  • 30 Jun 2021: Caffitaly System S.P.A. v One Collective Group Pty Ltd [2021] FCAFC 118
    PATENTS - three patents relating to single serve coffee capsules for use in an espresso machine - appeal against primary judge's findings on infringement and claim validity - whether certain claims of two patents invalid for lack of inventive step - whether certain claims of the third patent were invalid because the invention, as claimed, was not…
    Judge: Yates, Moshinsky, Burley JJ
  • 25 Jun 2021: Fuchs Lubricants (Australasia) Pty Ltd v Quaker Chemical (Australasia) Pty Ltd (No 2) [2021] FCAFC 114
    PRACTICE AND PROCEDURE - costs - appeal and cross-appeal - where appeal allowed and cross-appeal dismissed - whether, in relation to the appeal and cross-appeal, any basis to depart from the ordinary rule that costs follow the event - whether, in relation to the proceeding at first instance, it was appropriate to discount costs on account of the…
    Judge: Beach, Moshinsky and Thawley JJ
  • 18 Jun 2021: Ariosa Diagnostics, Inc v Sequenom, Inc [2021] FCAFC 101
    PATENTS - standard patent claiming method for detection of presence of foetal DNA in maternal plasma or serum - validity - infringement PATENTS - validity - whether manner of manufacture within the meaning of s 18(1)(a) of the Patents Act 1990 (Cth) - whether patent claimed a mere discovery of a naturally occurring phenomenon or a method involving …
    Judge: Middleton, Nicholas and Burley JJ
  • 11 Jun 2021: Ono Pharmaceutical Co, Ltd v Commissioner of Patents [2021] FCA 643
    PATENTS - pharmaceutical substance per se - nivolumab - human anti-PD-1 monoclonal antibody - substance contained in goods being OPDIVO - application for extension of term of patent - ss 70, 71, 74 and 77 of Patents Act 1990 (Cth) - refusal of application by delegate of Commissioner of Patents - judicial review - s 5 of Administrative Decisions…
    Judge: Beach J
  • 31 May 2021: Falkenhagen v West [2021] FCA 575
    PATENTS - consideration of an application for leave to amend the statement of claim - consideration of a corresponding application to strike out the existing statement of claim - consideration of the adequacy of the pleading of an agreement to develop an invention entitled "Hollow Borer Auger"
    Judge: Greenwood J
  • 20 May 2021: Vald Performance Pty Ltd v Kangatech Pty Ltd [2021] FCA 539
    INTELLECTUAL PROPERTY - considerations arising out of a directions hearing
    Judge: Greenwood J
  • 5 May 2021: Fuchs Lubricants (Australasia) Pty Ltd v Quaker Chemical (Australasia) Pty Ltd [2021] FCAFC 65
    PATENTS - standard and innovation patents for a method for detecting fluid injection in a patient - whether invalid for lack of novelty - working in public of the invention within the period of 12 months before the priority date - working for the purposes of "reasonable trial" - grace period exception under s 24(1)(a) of the Patents Act 1990 (Cth) … 159 IPR 1
    Judge: Beach, Moshinsky and Thawley JJ
  • 27 Apr 2021: Otsuka Pharmaceutical Co., Ltd v Generic Health Pty Ltd (No 4) [2021] FCA 416
    PRACTICE AND PROCEDURE - application for additional discovery
    Judge: Yates J
  • 30 Mar 2021: Sandoz Pty Ltd v H. Lundbeck A/S (No 2) [2021] FCAFC 47
    COSTS - application for costs orders - where appellant successful on appeal and cross-appeal but unsuccessful on some issues - whether costs to be awarded to the appellant should be discounted - costs of proceedings below - whether appellant should pay some part of respondents' costs of the proceedings below - whether costs awarded to appellant…
    Judge: Nicholas, Yates and Beach JJ

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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.

NPA Judges

National Coordinating Judges

  • Greenwood J
  • Nicholas J
  • Yates J
  • Burley J
NPA Judges

Urgent Applications