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

  • 18 May 2022: Boehringer Ingelheim Animal Health USA Inc. v Intervet International B.V. [2022] 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…
    Judge: Perram, Nicholas and Burley JJ
  • 17 May 2022: Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd (No 3) [2022] FCA 596
    PRACTICE AND PROCEDURE -- application by respondents for order that applicants make election between damages or account of profits -- where applicants have filed evidence with respect to damages and respondents have filed evidence with respect to account of profits -- where applicants seek to reserve making election until after service of…
    Judge: Besanko J
  • 16 May 2022: Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2022] FCA 540
    PATENTS - where invention claimed is a safety system for protecting against the hazard of drill rod failure - construction of patent - meaning of "anchor member" - meaning of "a proximal end region of the bore adjacent to a rock-face - whether third respondent's provision of the safety system product was for "experimental purposes" and therefore…
    Judge: Rofe J
  • 13 May 2022: Vald Performance Pty Ltd v Kangatech Pty Ltd (No 4) [2022] FCA 557
    INTELLECTUAL PROPERTY - consideration of an application to amend particulars of invalidity - consideration of the approach in determining whether the claims defining the invention are supported by matter disclosed in the specification for the purposes of s 40(3) of the Patents Act 1990 (Cth)
    Judge: Greenwood J
  • 9 May 2022: Vector Corrosion Technologies Limited v E-Chem Technologies Ltd [2022] FCA 519
    COSTS -- application for indemnity costs in two related proceedings -- where case which proceeded to final judgment was weak but arguable -- where applicant unreasonably rejected settlement offer in discontinued proceedings -- costs ordered on indemnity basis from date of settlement offers in discontinued proceeding
    Judge: Jagot J
  • 5 May 2022: Illinois Tool Works Inc v Airco Fasteners Pty Ltd [2022] FCA 495
    PATENTS - where invention claimed is a fuel cell for use in a combustion tool - construction of patent - meaning of "close proximity" - meaning of "opposite" - whether respondent infringed patent in suit - held: respondent's products infringed the patent PATENTS - application for extension of time in which to file an appeal against decision of…
    Judge: Rofe J
  • 4 May 2022: Hood v Down Under Enterprises International Pty Limited [2022] FCAFC 69
    PATENTS - alleged infringement by supply of products - s 117 of the Patents Act 1990 (Cth) - staple commercial product - whether essential oil derived from the shrub Kunzea ambigua was a staple commercial product - where the primary judge found that the oil was a staple commercial product - whether the primary judge erred in so finding - held: no…
    Judge: Yates, Moshinsky and Rofe JJ
  • 29 Apr 2022: Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd [2022] FCA 445
    PRACTICE AND PROCEDURE -- Interlocutory application by respondents in NSD 1089 of 2016 (2016 Proceeding) for stay of 2016 Proceeding pending determination of liability in NSD 1040 of 2019 (2019 Proceeding) -- where applicants successful in establishing infringement of claims of Patent in 2016 Proceeding, appeal rights exhausted by respondents and…
    Judge: Besanko J
  • 29 Apr 2022: Rakman International Pty Limited v Trafalgar Group Pty Ltd [2022] FCA 464
    PATENTS - innovation patent - infringement alleged under s 117(1) of the Patents Act 1990 (Cth) (Patents Act) -whether instructions given for the use of a firestopping device in conformity with the claims of the patent - whether infringement established, assuming the claims in suit to be valid PATENTS - innovation patent - infringement - whether,…
    Judge: Yates J
  • 13 Apr 2022: Commissioner of Patents v Thaler [2022] FCAFC 62
    PATENTS - artificial intelligence - where Patents Regulations 1991 (Cth) require name of the inventor to be provided in application under the Patent Cooperation Treaty - where patent application named DABUS, an artificial intelligence machine, as inventor - where parties agreed that the invention described in the patent application was the output…
    Judge: Allsop CJ, Nicholas, Yates, Moshinsky 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.

NPA Judges

National Coordinating Judges

  • Greenwood J
  • Nicholas J
  • Yates J
  • Burley J
NPA Judges

Urgent Applications