Intellectual Property Practice Note - Standard Directions for Australian Patent Proceedings (IP-2)
National Practice Sub-Area Practice Note
1. Introduction
2. Standard Directions
3. Summary assessment of costs payable forthwith
Annexure A
Annexure B
Annexure C
Annexure D
1. Introduction
1.1This practice note, including the following documents:
(a) the Draft Minutes of Short Order (“Standard Directions”) (see Annexure A);
(b) the Instructions for Expert Conferences (see Annexure B);
(c) the Suggested Common General Knowledge Directions to Experts (see Annexure C); and
(d) the Draft Form Statement of Costs (“Statement of Costs”) (see Annexure D), applies to all patent proceedings commenced within the Federal Court.
1.2The above material should be read together with:
(a) the Central Practice Note (CPN-1), which sets out the fundamental principles concerning the National Court Framework of the Federal Court and key principles of case management procedure;
(b) the Intellectual Property Practice Note (IP-1);
(c) the Federal Court of Australia Act 1976 (Cth) (“Federal Court Act”); and
(d) the Federal Court Rules 2011 (Cth) (“Federal Court Rules”).
1.3This practice note takes effect from the date it is issued and, to the extent practicable, applies to proceedings whether filed before, or after, the date of issuing.
2. Standard Directions
2.1The purpose of this practice note is to further the overarching purpose set out in s 37M of the Federal Court Act, in summary, to facilitate the just resolution of disputes according to law and as quickly, inexpensively and efficiently as possible, including by increasing consistency and certainty in procedure.
2.2Subject to the discretion of the Court, parties should expect that the Standard Directions will be issued at a first case management hearing which will be scheduled to occur shortly after the date when all respondents who intend to file and serve a defence and any cross-claim have done so. Pursuant to rr 16.32 and 15.04 of the Federal Court Rules, this is to occur within 28 days of the filing of the statement of claim. If a respondent requires more than 28 days to file its defence and any cross claim, it should seek the applicant’s consent to an extension of time before the expiration of the 28 day deadline, or seek to list the matter before the deadline. At the case management hearing, the standard directions provided by this practice note may be amended or added to, if required. A respondent that fails to file its defence and any cross claim in accordance with rr 16.32 and 15.04 of the Federal Court Rules, or any extended deadline, may be required to pay the costs of the first case management hearing.
2.3Frequently, statements of claim that allege the infringement of multiple patents and large numbers of claims are productive of undue repetition, increased costs and wasted court time. Applicants should confine their allegations of infringement to the minimum possible number of claims and, if possible, one patent. Respondents advancing cross claims should also confine the number of prior art documents and grounds advanced to the minimum necessary.
2.4If a patentee advances infringement allegations in respect of large numbers of patents, claims and/or scenarios of infringement, the Court may direct a patentee to propose determination of infringement and validity of a subset of patents, claims or infringement types as separate questions. Whether it is appropriate to order separate questions should be determined as soon as possible, ideally at the first case management hearing, to minimise complexity and cost in the pre-trial period. In addition, the parties might agree that the Court need only hear and determine infringement and validity issues with respect to certain exemplar patent claims or products. These matters should be discussed between the parties prior to the first case management hearing.
2.5Should a patent applicant seek to amend a patent, or a party rely on experimental evidence, they should raise these matters, if possible, at the first case management hearing.
2.6Annexure A sets out the Standard Directions for the first case management hearing by which time the statement of claim, any cross claim and the defence is expected to have been filed. The parties must have discussed the Standard Directions and be in a position to indicate to the Court whether they agree on any variation to the orders (which otherwise could be taken to be a default position) and, if not, what their points of difference are. A draft of these short minutes, marked up with any proposed differences should be supplied. It is anticipated that the Court will not lightly depart from the form set out below.
2.7The draft short minutes of order take the proceedings up to a provisional trial date that is expected to be no more than 18 months from the date of the first case management hearing.
2.8If a party wishes to seek time to allow for a mediation to be conducted, it may do so at any point.
3. Summary assessment of costs payable forthwith
3.1The Standard Directions contemplate that the Court may make a lump sum costs order, upon deciding an interlocutory application, to be paid within 14 days of the order being made. To enable the Court to do so, parties should file, at least one full business day prior to the hearing of an interlocutory application, a statement of costs that they claim for that application in the form annexed to the standard directions. It may be noted that it is not a requirement that they state the costs actually incurred, although the statement must certify that the amount claimed is less than the amount incurred.
3.1Summary orders for costs to be made payable forthwith are intended to encourage parties either to resolve or narrow interlocutory disputes due to the immediacy of costs (in contrast to costs of an interlocutory application being taxed or assessed at the conclusion of the proceedings). This also encourages practitioners to be transparent with clients on an ongoing basis about the costs of interlocutory applications, including costs not recoverable on a party-party basis.
D S Mortimer
Chief Justice
8 August 2025
Annexure A
Draft minutes of short order
IT IS ORDERED THAT:
1. Patentee position statement on infringement/ respondent product or process description, and where appropriate limited discovery
(a) The applicant file and serve a position statement on infringement by [two weeks] in the form described in paragraph 6.12 of the Intellectual Property Practice Note (IP-1) by reference to each distinguishable instance of infringement
(b) The applicant indicate by [same date as (a)] whether it proposes to rely on expert evidence in support of its infringement case and, if so, the relevant technical or scientific discipline of that expert.
(c) Unless the respondent admits the presence of all integers in the accused product or process, the respondent file and serve a responsive position statement on infringement in the form described in paragraph 6.13 of IP-1, and a product/process description directed to any integers in dispute as described in paragraph 6.15 of IP-1, by [three weeks after the date in (a)].
(d) If, despite orders 1(a) and 1(b), the applicant believes discovery is necessary, on or before [two weeks after the date in (c)], the applicant notify the respondent of the categories of documents directed to the disputed integers of which it seeks discovery using the discovery procedure described in paragraph 8.5 of the Commercial and Corporations Practice Note (C&C-1).
(e) On or before [two weeks after the date in (d)], the respondent responds to the applicant’s discovery categories following the same discovery procedure referred to above in order 1(d).
(f) The schedule of requests and responses be provided to the Court on or before [two days thereafter].
(g) The Court will notify the parties [within 14 days’ time] whether the dispute is to be:
i. determined on the papers;
ii. listed for hearing on [a date to be set by the Court]; or
iii. referred to a registrar for determination within [time frame set by the Court].
Commentary:
The patentee should file a position statement on infringement, pointing to where it says the asserted claim integers are to be found in the product or arise from the respondent’s conduct. The patentee might only be able to do that by way of inference on some integers, but the patentee should identify the matters that support that inference. Such a document will be taken to have the status of particulars of the patentee’s claim. The alleged infringer should respond, admitting the integers that are not in contest and identifying those that are, with a short explanation of why the patentee’s position is rejected (including, where applicable, because of construction). This document will also be taken to have the status of particulars. Where integers are admitted, these will be taken to have the status of formal admissions in the proceeding and require leave to be withdrawn.
The respondent should then file a product and/or process description (“PPD”), directed towards the integers in dispute. Where the description is against the respondent’s interest, the patentee may treat it as an admission, and leave will be required for the respondent to depart from it. The description otherwise does not have evidentiary status. The patentee (other than for admissions) and the respondent will still need to prove any factual matters on which they rely by admissible evidence. It may be noted that the right to apply to cross-examine the maker of the PPD arises in an interlocutory context akin to seeking to cross-examine the deponent of a list of discovered documents. It does not enable a patentee to compel a respondent to call the maker as a witness in the respondent’s case, enabling the patentee to cross-examine the maker.
A prudent respondent might choose to supplement the PPD with business records substantiating the description, increasing the likelihood of the applicant accepting the description as accurate. However, the standard approach should allow for the possibility of the applicant seeking targeted discovery in relation to the disputed integers. In order to make discovery requests as quickly, inexpensively and efficiently as possible, interlocutory applications, supporting affidavits and traditional written submissions will be not required in the first instance. Rather, the parties will follow the discovery procedure set out in paragraph 8.5 of the C&C-1. Where a factual matter is not self-evident, the party seeking to prove that fact may file affidavit evidence in support of it. Inter partes correspondence is not to be proved by affidavit, but an agreed bundle may be provided to the Court. The Court may choose to have a hearing to determine the discovery requests or decide the request on the papers.
2. Respondent position statement
The respondent/cross claimant file by [two weeks] a position statement on the validity of any patent claim, identifying, in the form of a schedule, the patent claims alleged to be invalid and for each and on which grounds invalidity is alleged.
3. Evidence and Technical Primer
(a) Each party may call [at least/only one] expert witness in these proceedings, in each of the following fields: [relevant fields to be decided at the case management hearing];
(b) Each party is to file its affidavit evidence in chief (expert and lay) on or before [date, on or around five months before pre-trial directions] limited to [[X] pages] in length, such page number being the subject of discussion and approval by the Court at the case management hearing.
(c) In the affidavit evidence in chief referred to at order 3(b):
i. The expert giving evidence at the request of the patentee is to give evidence in a section entitled “Primer” of information that the expert considers is likely to be uncontroversial technical background knowledge relevant to the question of infringement known to that expert as at the priority date, which is intended to serve as a technical primer, including a glossary of key technical terms (“Primer”).
ii. The expert giving evidence at the request of the party alleging invalidity is to give evidence in a section entitled “common general knowledge” that represents a summary of information that the expert considers is likely to be uncontroversial background common general knowledge (if releva4nt to the issues in the case) that is known to that expert and likely to be known others in the field before the relevant priority date(s) (“CGK Summary”).
(d) Each party is to file and serve its affidavit evidence in answer on or before [date on or around two months before pre-trial directions]; and
(e) At the time of serving their affidavit evidence in answer referred to in order 3(d):
i. The expert giving evidence on behalf of the party alleging invalidity is to include in that expert’s evidence in answer a copy of the Primer marked up to indicate any areas of disagreement with the contents of the Primer and supplemented by any additional material that expert witness considers to be suitable information that is likely to be uncontroversial to the question of infringement to include in the Primer.
ii. The expert giving evidence on behalf of the patentee is to include in that expert’s evidence a copy of the CGK Summary marked up to indicate any areas of disagreement with the contents of the CGK Summary and supplemented by any additional material that expert witness considers that is likely to be uncontroversial and which is suitable for inclusion in the CGK Summary.
(f) By [a date on or around weeks after the evidence in (d)], the parties file a separate document combining the Primer and the CGK Summary, indicating the areas of agreement or disagreement that have been identified in accordance with orders 3(c) and 3(e), and minimising any duplication to the extent possible.
4. Preparation for pre-trial directions
The matter be listed for a case management hearing to make pre-trial directions on [date following evidence in answer under order 3(d) eg. six months hence], prior to which the parties will discuss and provide to the Court, no later than two working days earlier, draft directions marked up to indicate any points of disagreement addressing at least:
(a) whether the parties consider reply evidence is necessary;
(b) the topics and scope for any expert conclaves;
(c) joint expert reports;
(d) giving of concurrent evidence by experts at the hearing; and
(e) whether there should be any changes to the estimated hearing length.
5. Expert conclave / joint expert reports
(a) On or before [two weeks before the pre-trial case management hearing], the parties are to confer regarding any expert conclaves and topics; and provide an agreed list of participants and topics for the experts to the Court or, in the event of disagreement, a marked-up list of topics indicating the areas of disagreement.
(b) The parties’ expert witnesses (as specified) participate in joint expert conferences during the period between [eg. seven days from three weeks after the pre-trial directions] such conferences to be conducted in accordance with Part 7 of the Expert Evidence Practice Note (GPN-EXPT) and facilitated by a Registrar of the Court, and, by [four weeks after the pre-trial directions], produce a joint report that identifies areas of agreement, partial agreement and disagreement, in respect of any matters in which they have expertise, and, where there is partial disagreement or disagreement, short reasons for any disagreement.
Note:
Parties may choose to provide information to experts as to the law relevant to the common general knowledge in the form set out in the schedule to Novartis AG v Pharmacor Pty Limited (No 3) [2024] FCA 1307. A form of standard instructions that may be provided to experts is provided separately with these Standard Directions.
6. Evidence in reply
If leave is obtained to file evidence in reply at the pre-trial directions, affidavit evidence in reply be by [date to be set by the Court] and limited to [X] pages in length.
7. Trial
The trial will be listed for [date on or around 12 to 18 months after the case management hearing] with a time estimate of [number of days].
Commentary:
The Standard Directions set the trial date for 12 to 18 months after the case management hearing, unless exceptional circumstances apply. This effectively ‘back-stops’ the pre-trial process and allows other deadlines to be calculated by reference to the trial date.
8. Summary assessment of interlocutory costs payable forthwith
(a) If either party files an interlocutory application in these proceedings, at least one full business day prior to the hearing of that application each party must file and serve a statement of costs that it claims for that application in the form annexed to these directions.
(b) Upon deciding the application, the Court may make a lump sum costs order having regard to the statement of costs prepared by each party, to be paid within 14 days of the order being made.
Note:
The Court may direct the parties to prepare and file statements of costs that they each claim in relation to any interlocutory matter which the Court is asked to determine whether that matter is the subject of a formal application or not, and make appropriate directions for the filing and service of statements of costs following determination of that matter.
Commentary:
Interlocutory costs orders payable forthwith encourage parties to either resolve or narrow interlocutory disputes due to the immediacy of costs (in contrast to costs of an interlocutory application being taxed or assessed at the conclusion of the proceedings). This also encourages practitioners to be transparent with clients about the costs of interlocutory applications. Each party’s cost summary could be prepared using a standard form, to reduce time spent on this issue by both the Court and the parties. A copy of a draft template can be found of the Federal Court of Australia website.
The summary assessment procedure is influenced by the practice in the UK of making costs orders payable forthwith at the conclusion of an interlocutory hearing. The UK summary assessment procedure was introduced in 1999 following the Woolfe Report into access to justice. The effectiveness of summary assessments was considered 10 years after its introduction in the Jackson Review. A paper outlining the rationale and basis for proposing that a similar procedure be adopted in the Federal Court, and some of the pros and cons of the UK experience (together with relevant extracts of the Woolfe Report and Jackson Review ), can be found on the Federal Court of Australia website.
Annexure B
Instructions for expert conferences
No. of 20
Federal Court of Australia
District Registry: [State]
Division: [Division]
Applicant/Cross Respondent
Respondent/Cross-Claimant
TOPICS FOR JOINT EXPERT CONFERENCES
Dear Experts
The Court asks you to consider and discuss a series of topics set out below. At the conclusion of your discussion, the Court asks you to prepare a joint report and to provide this report to the parties by [date]. In your joint report you are to briefly identify what you agree upon and, where you disagree, why you disagree. You are encouraged to reach agreement on a subject where you consider it is possible to do so consistently with your knowledge and opinions on that subject, even if your opinion, at the time of your discussion, differs in some respects from the opinion expressed in your affidavit evidence. Sometimes apparent differences between experts are resolved by discussion and turn out to be an artefact of the process of affidavit drafting. Sometimes discussion enables disagreements to be clarified, and the scope of the dispute narrowed or eliminated. Experts are encouraged to approach the discussion with an open mind, with a view to assisting the Court. However, you should not feel pressured to agree to any matter that is not consistent with your knowledge and opinions on that subject.
The experts are required to comply with the following guidelines when they are preparing their joint expert report:
(a) In the period from the commencement of the expert meeting to the signing of the joint report, the experts must not communicate with the parties, their lawyers or counsel regarding the case except with the consent of the other party or as set out in sub-paragraphs (b) and (c) below.
(b) If any expert requires guidance in relation to a matter of procedure during this period, then the expert should send their enquiry by email to Registrar [name] (email), copying their assistant, [email], and the other expert or experts.
(c) An expert may communicate with the lawyers for a party for the purpose of getting assistance with logistical arrangements such as travel or teleconferencing but may not, in the course of that communication, discuss or disclose any substantive issue the subject of the meeting (or any aspect of it) with those legal representatives.
(d) The experts are asked to discuss and decide between themselves how a final report is to be prepared. By way of example only, following discussion of a particular topic or topics, each expert might initially prepare their own draft response and exchange them before further discussion, or the experts may divide up responsibility for preparing a first draft response on each topic that reflects the outcome of the discussion on that topic, with the report then to be collated, reviewed, amended as required and approved by each expert before it is finalised.
(e) All draft versions of the report and draft materials exchanged are to remain confidential to the experts and must not be given or shown to the parties’ lawyers or counsel in any jurisdiction either during or after the conclusion of the expert meeting.
(f) The experts should also re-read and comply with Federal Court’s Expert Evidence Practice Note (GPN-EXPT) (including, Annexure A and Annexure B).
Note 1: In relation to all of the following topics you are asked to discuss and then identify in your joint report: (i) where you agree (ii) where you disagree; and (iii) in summary, the reasons for any disagreement. Cross-referencing to your affidavit evidence may be undertaken to avoid substantial repetition.
Note 2: In relation to the topics which require you to consider the disclosure or teaching of the Patent, or the prior art publications and devices, you are to comment on that disclosure or teaching as at the priority date of the Patent, namely [date].
Note 3: The list of topics below may include references to passages of affidavit evidence that discuss matters that are relevant to each topic. Those references are for convenience only and are not intended to confine the matters you should discuss, if you consider them to be relevant to the topic.
Note 4: Once approved by all conference participants, the joint report is to be sent by [date] in a single email addressed to:
Registrar:
Solicitor:
Solicitor:
Annexure C
Suggested common general knowledge directions to experts
Standard Instructions to Expert Witnesses in Patent Litigation
Application of the Court's Guidelines
The following guidelines are to be provided to experts giving evidence on the question of inventive step (obviousness) in proceedings under the Patents Act 1990 (Cth) (“Patents Act”), together with the Harmonised Expert Witness Code of Conduct (Annexure A to the Expert Evidence Practice Note (GPN-EXPT)).
These guidelines explain some key terms relevant to the Court's assessment of obviousness, describe the risk of hindsight bias arising in evidence about obviousness, and set out steps that can be taken to minimise that risk.
1. Background: the test of obviousness
Under the Patents Act, an invention is taken to involve an inventive step unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed before the priority date of the relevant claim of the patent.
The common general knowledge may be considered separately, or together with pieces of prior art information, such as a document published before the priority date. These pieces of information are to be considered individually, unless the skilled person could, before the priority date, be reasonably expected to have combined some or all of them. Depending on the dates on which the patent was filed and examined, there may be other criteria relevant to determining whether prior art information may be considered.
Accordingly, key issues for which expert evidence can be especially relevant and helpful to the Court when considering the test of obviousness include the identification of the technical field(s) of the invention of the patent, the relevant expertise of the person or team skilled in the art (relevant technical field(s)) and the specific content of the information comprising the common general knowledge of the skilled person or team.
2. The priority date
The priority date is usually the date that a patent application for the invention was first filed, whether in Australia or another jurisdiction. It is possible that an expert witness will be asked to consider matters as at several possible priority dates, if the correct priority date is in issue in the proceeding.
3. The person skilled in the art
The "person skilled in the relevant art" is the hypothetical person (or team of people) from whose perspective the invention is evaluated and the patent is read and understood. They are a skilled, but non-inventive, worker or team in the field of the invention - someone who may be taken to have a practical interest in the subject matter of the invention, who will have the qualifications of, and an understanding of the practices and techniques regarded as commonplace and known in the field by, the notional worker, at the relevant priority date(s).
4. The common general knowledge
The common general knowledge of the hypothetical skilled person is the foundation for any assessment of whether an invention would have been obvious.
For older patents (ie. patents granted before 15 April 2013 or patents granted on applications for which examination had not been requested as at 15 April 2013), the relevant common general knowledge is limited to Australia and its surrounding waters and airspace. For patents more recent than that, the information that comprises the relevant common general knowledge is not restricted to Australia and its surrounding waters and airspace.
The common general knowledge is the general background knowledge that is available to all in the field. It consists of matters that the person skilled in the relevant field will have at the back of their mind when working in the field, but is not necessarily knowledge that has been memorised. It will also include material that those persons know exists and to which they would refer as a matter of course.
For instance, in some circumstances this may include standard texts or technical reference materials but only if the skilled person would refer to them as a matter of course.
A report prepared by an expert witness for use in Court relating to the question of inventive step should identify each relevant fact or matter that the expert considers forms part of the common general knowledge and why they consider it to be common general knowledge (in light of the matters set out in the preceding paragraph). The expert should clearly distinguish between facts or matters they consider were common general knowledge at the relevant priority date(s) and facts or matters that were not, for example where they knew them due to their own particular experience (eg. information or experience acquired in specific jobs or confidential projects).
Whether an expert is asked to opine as to the common general knowledge in the relevant field at the priority date of the patent in suit before the expert is provided with, or told about, the relevant patent is a matter for the lawyers assisting with the preparation of the expert's evidence.
5. What hindsight involves
Hindsight bias in the context of an obviousness assessment, refers to the use by an expert (usually inadvertently) of post-priority date knowledge and practice in an assessment of whether an invention was obvious as at the priority date of the patent, or in any decision-making process relating to that question.
Hindsight bias can arise in the evaluation of the likelihood, foreseeability or predictability of a past decision or event where a person already knows the outcome of that decision or event. It may involve:
(a) the selective recollection of information consistent with what a person already knows is true; and/or
(b) overstating the predictability of an outcome in the present, relative to its prior likelihood.
6. Why hindsight reasoning is impermissible
In patent cases, the risk of hindsight bias arises where an assessment is being made of whether a claimed invention was obvious to the relevant skilled person or team, with the common general knowledge they then had, as at the priority date of the patent. As research and development may have led to significant advances in the relevant technical field in the period between the priority date and the date of the litigation, and the invention itself may have become common general knowledge, reliance on hindsight in the assessment becomes a significant risk.
A person skilled in the relevant art acting as an expert witness may, due to their professional role/s have kept up to date with developments in the field in the period between the priority date and the date they are being asked to give their opinion. Consequently, there is a risk they unconsciously rely on that subsequent knowledge in making their assessment beforehand.
7. The need to avoid hindsight
To make a fair evaluation and provide an objective opinion to the Court, an expert must, to the extent possible, avoid reliance on hindsight.
It can be challenging for an expert, in particular one who has worked in the relevant field after the priority date, to provide a view not impacted by that later knowledge. However, an expert can take some steps to provide their opinion in a manner which minimises the risk of hindsight. These include the following.
- Familiarising themselves with this note relating to the risks of relying on hindsight in the context of a patent case.
- Trying to fix their knowledge and the assessment they are making, as at the priority date and avoiding that knowledge being impacted by subsequent events. They could be assisted by focusing on particular events that occurred around that date - for example particular career milestones such as academic or corporate appointments or achievements.
- Avoiding conducting their own research, analysis or enquiries, including in relation to the patent in issue or post-priority date developments in the field, unless instructed to do so by the lawyers assisting in preparing the expert's evidence.
- Identifying how they first became aware of the invention in issue and when.
- In their evidence, providing transparent and detailed explanations of their logic, reasoning and information taken into account (and its source) in support of any opinions relating to the meaning of any claim or wording in a patent or whether any product, method or process was or was not routine or obvious.
- Acknowledging where hindsight is a risk (because of knowledge of, for example, the invention the subject of the patent) and explaining whether and how the expert has sought to negate the effect of hindsight.
Taking these steps should assist the expert to minimise the risk that the Court would consider that hindsight has impacted their opinion.
