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.
- 29 Sep 2022:
Pharmacia LLC v Juno Pharmaceuticals Pty Ltd  FCAFC 167
PATENTS - standard patent claiming reconstitutable powder composition containing a cyclooxygenase-2 inhibitor for parenteral administration - claim construction - whether claims include or exclude residual water from the composition - meaning of "about" as used in claims - whether omnibus claim infringed - whether error in finding that only…
Judge: Jagot, Yates and Downes JJ
- 20 Sep 2022:
Rakman International Pty Limited v Boss Fire & Safety Pty Ltd (No 2)  FCA 1113
COSTS - whether costs should be awarded on an indemnity basis in light of failures to accept offers of compromise PRACTICE AND PROCEDURE - form of final orders - application for injunction restraining applicants/cross-respondents from making representations found to constitute misleading or deceptive conduct - injunction refused
Judge: Yates J
- 25 Jul 2022:
Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd (No 2)  FCA 867
COSTS - whether applicant should have to pay multiple sets of costs - where third respondent had separate representation to first, second, and fourth respondents - whether there was possibility of conflict of interest between the respondents COSTS - appropriate apportionment - where respondents ultimately successful - where third respondent…
Judge: Rofe J
- 12 Jul 2022:
Globaltech Corporation Pty Ltd v Reflex Instruments Asia Pacific Pty Ltd  FCA 797
PATENTS -- infringement of patent for optical device in borehole drill equipment -- respondent admits infringing patent but claims patent invalid for lack of novelty and inventive step -- where prior art documents do not deprive claimed invention of novelty -- common general knowledge -- cross-claim dismissed 167 IPR 515
Judge: Jagot J
- 1 Jul 2022:
UON Pty Ltd v Hoascar  FCA 769
PRACTICE AND PROCEDURE - application for leave to amend statement of claim and notice of appeal in two related proceedings - no fundamental change to the case - proceedings at a relatively early stage - objection to leave to amend on basis that amended pleadings would be liable to be struck out - inadequate particularisation - asserted…
Judge: Jackson J
- 29 Jun 2022:
Group One Limited v GTE Gesellschraft Fur Technische Entwicklungen GMBH  FCA 767
PRACTICE AND PROCEDURE - consideration of an application for an order requiring the respondents to nominate a new address for service, the respondents having withdrawn the instructions from their present solicitors
Judge: Greenwood J
- 22 Jun 2022:
Hood v Down Under Enterprises International Pty Limited (No 2)  FCAFC 106
PRACTICE AND PROCEDURE - costs - offer to compromise - Calderbank offer - whether unreasonable to fail to accept offer - appropriate order as to costs in relation to cross-claim involving two distinct issues - where each side successful in relation to one of those issues
Judge: Yates, Moshinsky and Rofe JJ
- 3 Jun 2022:
C.M.E. Blasting & Mining Equipment Ltd v Rock Tool Refurbishment Solutions Pty Ltd (No 2)  FCA 632
PRACTICE AND PROCEDURE - Interlocutory application by applicant/cross-respondent for orders requiring first respondent/cross-applicant to produce documents and things and for orders for discovery and inspection - where first respondent brings cross-claim for non-infringement declaration under ss 125 and 126 of Patents Act 1990 (Cth) in relation to …
Judge: Besanko J
- 23 May 2022:
Southern Cross Industrial Group Pty Ltd v Mickala Lighting Towers Pty Ltd  FCA 598
PRACTICE AND PROCEDURE - application to set aside originating application pursuant to r 13.01 Federal Court Rules 2011 (Cth) - application to strike out all or part of a statement of claim pursuant to r 16.21 Federal Court Rules 2011 (Cth) - application for an order that the applicant provide a Position Statement on Infringement within meaning of… 166 IPR 576
Judge: Downes J
- 18 May 2022:
Boehringer Ingelheim Animal Health USA Inc. v Intervet International B.V.  FCAFC 88
PATENTS - where leave to appeal sought against primary judge's decision dismissing appeal from decision of delegate of the Commissioner of Patents rejecting opposition to patent application on ground that the invention as claimed did not involve an inventive step - whether primary judge erred in assessment of expert evidence - whether primary… 166 IPR 468
Judge: Perram, Nicholas and Burley 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.