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

  • 16 Oct 2019: Aristocrat Technologies Australia Pty Limited v Konami Australia Pty Limited (No 2) [2019] FCA 1701
    PRACTICE AND PROCEDURE - application by respondent to amend defence on second day of three week hearing of applicant's claim to (inter alia) an account of profits - consideration of nature of amendment - whether new defence sought to be raised seriously arguable - effect on hearing dates - whether respondent should be permitted to amend -…
    Judge: Nicholas J
  • 2 Oct 2019: University of Sydney v ObjectiVision Pty Limited [2019] FCA 1625
    CONTRACT - termination of licensing agreements - where respondent was required to assign certain patents as a condition precedent - whether there was a failure to fulfil the condition precedent - whether compliance with a condition precedent would have been futile due to the other party's refusal to perform the agreement - whether non-payment of…
    Judge: Burley J
  • 30 Sep 2019: Merck Sharp & Dohme Corporation v Wyeth LLC (No 2) [2019] FCA 1615
    EVIDENCE - patent infringement - late application to amend pleadings to add a claim - production of documents - whether the respondent waived legal professional privilege with respect to affidavit evidence filed in support of application - if privilege waived, what was the scope of the waiver - held that the respondent waived privilege - specific…
    Judge: Burley J
  • 27 Sep 2019: Chamberlain Group, Inc v Giant Alarm System Co, Ltd (No 2) [2019] FCA 1606
    PRACTICE AND PROCEDURE - application for default judgment pursuant to r 5.23 of the Federal Court Rules 2011 (Cth) - whether appropriate to grant injunction - whether appropriate to grant costs - application granted
    Judge: Yates J
  • 27 Sep 2019: Calidad Pty Ltd v Seiko Epson Corporation (No 2) [2019] FCAFC 168
    PATENTS - appropriate form of orders to give effect to the Full Court's reasons for judgment on appeal - whether a declaration should be granted and the form of that declaration - whether injunctions should be granted and the form of those injunctions - whether it is appropriate to grant an injunction in general form
    Judge: Greenwood, Jagot and Yates JJ
  • 17 Sep 2019: Dyno Nobel Inc v Orica Explosives Technology Pty Ltd (No 2) [2019] FCA 1552
    EVIDENCE - objection to evidence under s 59 of the Evidence Act 1995 (Cth) - whether print outs of archived webpages on the "Wayback Machine" are business records under s 69 of the Evidence Act - where the Court found that the evidence were not business records - whether to admit evidence under the discretion conferred by s 190 of the Evidence Act …
    Judge: Burley J
  • 13 Sep 2019: Globaltech Corporation Pty Ltd v Australian Mud Company Pty Ltd [2019] FCAFC 162
    PATENTS - construction - where claims in suit comprised method claims and system claims for core sample orientation - where the method in claim 1 involved two timers, one in the downhole device and one on the surface - whether the primary judge erred in his construction of the patent - whether, on the true construction of claim 1, it required both …
    Judge: Kenny, Robertson and Moshinsky JJ
  • 13 Sep 2019: Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161
    PATENTS - validity - computer-implemented method and apparatus for displaying information - whether invention as claimed is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies PATENTS - validity - innovative step - whether claimed invention supported by an innovative step - whether additional innovative steps…
    Judge: Allsop CJ, Kenny, Besanko, Nicholas and Yates JJ
  • 30 Aug 2019: Merck Sharp & Dohme Corporation v Wyeth LLC [2019] FCA 1421
    PRACTICE AND PROCEDURE - where Notices to Produce served by each side upon the other pursuant to r 30.28 of the Federal Court Rules 2011 (Cth) - where compliance challenged by each side - applicants excused from compliance and respondent partially excused from compliance
    Judge: Burley J
  • 12 Aug 2019: Global Fruit Protection Pty Ltd v Mount Sommerset Pty Ltd [2019] FCA 1264
    PATENTS - consideration of an application for leave to amend a cross-claim for invalidity of the two patents in suit by introducing particulars of contended pieces of prior art going to lack of novelty - consideration of an application to amend the cross-claim to introduce matters going to a lack of inventive step
    Judge: Greenwood 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.