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.
- 12 Jul 2019:
Davies v Lazer Safe Pty Ltd (No 2)  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  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  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.  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)  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)  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)  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  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
- 3 May 2019:
Teva Pharma Australia Pty Ltd v Boehringer Ingelheim Pharma GMBH & Co. KG  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.