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.
- 24 Nov 2023:
Allied Pumps Pty Ltd v LAA Industries Pty Ltd  FCA 1457
PATENTS - innovation patent - power and control system for a dewatering submersible pump - claim construction - validity - infringement PATENTS - novelty - prior acts as disclosures - where commercial hire of systems to customer before priority date - where hired systems were used by customer without restriction - where customer conducted its own…
Judge: Downes J
- 16 Nov 2023:
MMD Design and Consultancy Limited v Camco Engineering Pty Ltd (No 2)  FCA 1416
PRACTICE AND PROCEDURE - costs - where the respondent was largely successful in defending the proceeding - the form the costs order should take - whether costs should be discounted in light of the parties' mixed success at trial - whether indemnity costs should be ordered following a Calderbank offer on seventh day of trial
Judge: Rofe J
- 13 Nov 2023:
Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd  FCAFC 178
PATENTS - where invention claimed is a safety system for protection against falling drill rods in mining industry - construction - meaning of 'anchor member' - meaning of 'configured to be fixed in a proximal end region of the bore' PATENTS - infringement - whether First Respondent's product included an anchor member - whether First Respondent's…
Judge: Perram, Nicholas and McElwaine JJ
- 2 Nov 2023:
Sandoz AG v Bayer Intellectual Property GmbH  FCA 1321
PATENTS - infringement - where invention claimed is an oral tablet comprising the compound rivaroxaban "in hydrophilized form" and the use of that drug for the prophylaxis and/or treatment of a thromboembolic disease - construction of patent - meaning of "in hydrophilized form" and "hydrophilization" - whether pieces of prior art referred to in…
Judge: Rofe J
- 20 Oct 2023:
Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3)  FCA 1258
TRADE MARKS - infringement - whether the respondents have infringed the applicant's registered trade marks comprising the word ORO TRADE MARKS - infringement - defences to infringement - whether the respondents can establish the defences under ss 122(1)(b)(i), 122(1)(e), 122(1)(f) and (fa), and 124 of the Trade Marks Act 1995 (Cth) TRADE MARKS -…
Judge: Yates J
- 12 Oct 2023:
Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 10)  FCA 1214
PRACTICE AND PROCEDURE -- interlocutory application by first respondent seeking an extension of existing orders -- where the first respondent was unsuccessful in defending patent infringement proceedings at the suit of the applicant and its cross-claim alleging patent invalidity was dismissed -- whether a stay of orders made by the Court,…
Judge: Besanko J
- 29 Sep 2023:
Reflex Instruments Asia Pacific Pty Ltd v Globaltech Corporation Pty Ltd  FCAFC 158
PATENTS - construction - whether the primary judge erred in construction of "downhole equipment" and "downhole gathering data system" as excluding equipment for use in holes drilled for oil and gas exploration and production and wireline telemetry equipment - whether primary judge erred in construing the phrases "electromagnetic signal direction…
Judge: Moshinsky, Burley and Kennett JJ
- 22 Sep 2023:
Sanofi v Amgen Inc. (No 2)  FCA 1156
PRACTICE AND PROCEDURE - patents - appeal from decision of a delegate of the Commissioner of Patents in opposition proceedings - application seeking orders pursuant to r 5.04 of the Federal Court Rules 2011 (Cth) limiting evidence to be relied on at the hearing of the appeal - where respondent intends to tender declarations relied on before the…
Judge: Yates J
- 21 Sep 2023:
Boehringer Ingelheim Animal Health USA Inc v Zoetis Services LLC  FCA 1119
PATENTS - three patent applications on appeal from a decision of a delegate of the Commissioner of Patents - patent applications disclose supernatant vaccine for Mycoplasma hyopneumoniae (M. hyo), a disease affecting pigs - applications include a platform, a bivalent and a multivalent vaccine - validity EVIDENCE - challenge to independence of…
Judge: Rofe J
- 12 Sep 2023:
UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 3)  FCA 1079
PRACTICE AND PROCEDURE - patent litigation - form of final orders - costs - where applicant successful in defeating infringement claim - where applicant largely successful in unjustified threats claim - where first respondent (the patentee) successful in defeating revocation claim
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.