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.

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.
  • Form 92 – Notice of appeal (intellectual property)

For further procedural and case management information you should refer to the Central Practice Note and the Intellectual Property Practice Note.

Latest Judgments

  • 17 May 2019: Gram Engineering Pty Ltd v Oxworks Pty Ltd [2019] 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) [2019] 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 [2019] 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 [2019] 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) [2019] 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 [2019] 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 [2019] 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) [2019] 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) [2019] 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) [2018] 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.