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.
- 17 May 2019:
Gram Engineering Pty Ltd v Oxworks Pty Ltd  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)  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
- 26 Apr 2019:
Davies v Lazer Safe Pty Ltd  FCAFC 65
PATENTS - patent for safety system for use with machinery - construction of claims - appeal against findings of non-infringement - non-infringement findings upheld - cross-appeal dismissed
Judge: Greenwood, White and Burley JJ
- 11 Apr 2019:
Mylan Health Pty Ltd v Cipla Australia Pty Ltd  FCA 506
PRACTICE AND PROCEDURE - application for interim injunctive relief pending determination of appeal - where patent found invalid at trial - where generic pharmaceutical suppliers intending to enter market -whether balance of convenience lies in granting interim injunctive relief
Judge: Yates J
- 11 Apr 2019:
Mylan Health Pty Ltd v Sun Pharma ANZ Pty Ltd (No 2)  FCA 505
PRACTICE AND PROCEDURE - application for interim injunctive relief pending determination of appeal - where patent found invalid at trial - where generic pharmaceutical suppliers intending to enter market - whether appellants show an arguable case on appeal -whether balance of convenience lies in granting interim injunctive relief
Judge: Yates J
- 27 Mar 2019:
SNF (Australia) Pty Limited v BASF Australia Ltd  FCA 425
PATENTS - appeals from decisions of the delegate - rehearing de novo - opposition to grant of patent applications - mining processes - treatment of waste material slurries - disposal of tailings - secondary flocculation - co-disposal of coarse and fine solids as a homogeneous mixture - thickener underflow - process for improving rigidification of…
Judge: Beach J
- 25 Mar 2019:
Mylan Health Pty Ltd v Sun Pharma ANZ Pty Ltd  FCA 411
PRACTICE AND PROCEDURE - application to set aside notice to produce - whether notice to produce is oppressive - whether documents sought are adjectivally relevant to the proceeding - whether categories of documents sought are unduly broad, ambiguous or imprecise - whether appellants' claim of privilege relevant - application dismissed
Judge: Yates J
- 19 Feb 2019:
Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd (No 2)  FCA 154
PATENTS - application by patentee to amend patent pursuant to s 105(1) of the Patents Act 1990 (Cth) - discretion - relevant considerations - where following grant patentee made amendments to claims of patent applications in other jurisdictions - relevance of such amendments - whether patentee knew or ought reasonably to have known that there was…
Judge: Nicholas J
- 31 Jan 2019:
Dometic Australia Pty Ltd v Houghton Leisure Products Pty Ltd (No 2)  FCA 57
COSTS - patent infringement proceeding - Respondent brought cross-claim for revocation of patent on the ground of invalidity - claim and cross-claim both dismissed - whether a single order for costs is appropriate - single order for costs made taking account of apportionment.
Judge: White J
- 19 Dec 2018:
Sanofi-Aventis Deutschland GmbH v Alphapharm Pty Ltd (No 3)  FCA 2060
PRACTICE AND PROCEDURE - patents - interlocutory injunction application - prima facie case - validity of patents - novelty - balance of convenience - application refused 138 IPR 242
Judge: Burley 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.