About this NPA
The Intellectual Property National Practice Area (NPA) covers disputes concerning matters such as patents, trade marks, copyright, designs, circuit layouts, plant breeder's rights and appeals from the Commissioner of Patents or Registrar of Trade Marks.
The three Sub-areas in the Intellectual Property NPA are:
- 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.
- Any trade mark dispute, with respect to validity of a trade mark and/or distinguishing goods and services (including in respect of a letter, number, word, phrase, sound, smell, shape, logo, picture and packaging).
- "Geographical indication" disputes involving a geographical indication or other term signifying a related attribute of goods.
- An appeal from a decision of the Registrar of Trade Marks.
- Copyright disputes concerning works such as books, computer programs, architectural drawings, musical and artistic works and other subject matter such as films and sound recordings.
- Design disputes concerning the distinctive shape, configuration, pattern or ornamentation of products in an industrial or commercial context.
- Other disputes, including circuit layout disputes concerning layout designs for integrated circuits and computer chips.
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.
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 NPA 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).
The most commonly used forms and rules relating to intellectual property proceedings are:
1. Commencing intellectual property proceedings
(Refer to paragraph 4.3 of Intellectual Property Practice Note)
2. Appeals from the Commissioner of Patents or Registrar of Trade Marks
A party who wants to appeal from a decision of the Commissioner of Patents or the Registrar of Trade Marks must file a Notice of appeal within 21 days of the date of the decision.
3. Applications under the Plant Breeder's Rights Act 1994
A claim for infringement of plant breeder's rights under the Plant Breeder's Rights Act 1994 (Cth), may be commenced in the Federal Court by filing:
4. Applications under the Circuit Layouts Act 1989
Disputes concerning layout designs for integrated circuits and computer chips include:
(a) Determination of equitable remuneration
A party may apply to the Court under section 20(2) of the Circuit Layouts Act 1989 (Cth) for a determination of equitable remuneration in relation to an eligible layout by filing:
(b) Determination of the terms of the doing of an act
A party may apply to the Court under section 25(4) of the Circuit Layouts Act 1989 for a determination of the terms of the doing of an act in relation to an eligible layout by filing:
The Intellectual Property NPA comprises any proceeding relating to the following:
- A patent granted under the Patents Act 1990 (Cth)
- A trade mark registered under the Trade Marks Act 1995 (Cth)
- Copyright under the Copyright Act 1968 (Cth)
- A registered design / design under: the Designs Act 2003, the Advance Australia Logo Protection Act 1984 (Cth) or the Olympic Insignia Protection Act 1987 (Cth)
- Eligible layout rights under the Circuits Layout Act 1989 (Cth)
- Plant breeder's rights under the Plant Breeder's Rights Act 1994 (Cth)
- A geographical indication or other term registered under the Australian Grape and Wine Authority Act 2013 (Cth)
- Other proceedings under those statutes.
- 5 May 2021:
Fuchs Lubricants (Australasia) Pty Ltd v Quaker Chemical (Australasia) Pty Ltd  FCAFC 65
PATENTS - standard and innovation patents for a method for detecting fluid injection in a patient - whether invalid for lack of novelty - working in public of the invention within the period of 12 months before the priority date - working for the purposes of "reasonable trial" - grace period exception under s 24(1)(a) of the Patents Act 1990 (Cth) …
Judge: Beach, Moshinsky and Thawley JJ
- 30 Apr 2021:
Universal Music Publishing Pty Ltd v Palmer (No 2)  FCA 434
COPYRIGHT - Infringement - musical work and literary work constituted by a famous rock song used in multi-media advertisements for a political party in an election campaign - where no issue that each work was an original work and applicants were respectively licensor and owner of the copyright in each work, whether copyright in each was infringed…
Judge: Katzmann J
- 27 Apr 2021:
Bendigo and Adelaide Bank Limited v Community First Credit Union Limited (No 2)  FCAFC 62
COSTS - application for indemnity costs - where appellant made a unilateral decision to remove certain pagination from the appeal book without notifying the first respondent - where costs incurred by first respondent updating submissions with references to new pagination - where decision was made in good faith - indemnity costs not awarded
Judge: Middleton, Burley and Thawley JJ
- 27 Apr 2021:
Otsuka Pharmaceutical Co., Ltd v Generic Health Pty Ltd (No 4)  FCA 416
PRACTICE AND PROCEDURE - application for additional discovery
Judge: Yates J
- 21 Apr 2021:
Boomerang Investments Pty Ltd v Padgett (Costs of the Liability Phase)  FCA 385
COSTS - where Applicants partially successful at trial - whether to adopt an issue-by-issue, party-by-party or global approach to question of costs - whether costs to be determined on a party and party or indemnity basis - appropriate measure of discounts
Judge: Perram J
- 13 Apr 2021:
BCI Media Group Pty Ltd v Corelogic Australia Pty Ltd (No 2)  FCA 382
PRACTICE AND PROCEDURE - application to set aside orders made pursuant to r 7.23 of the Federal Court Rules 2011 (Cth) requiring Prospective Respondents to make preliminary discovery - Prospective Applicant commenced substantive proceedings before the Prospective Respondents complied fully with the preliminary discovery orders - application…
Judge: White J
- 9 Apr 2021:
Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2)  FCA 328
TRADE MARKS - validity - whether "Corner Hotel" and "Corner" marks capable of distinguishing applicant's services of conducting a live music venue within s 41 of the Trade Marks Act 1995 (Cth) - whether use of those marks likely to deceive or cause confusion within s 88(2)(c) - infringement - whether respondents infringed applicant's marks by…
Judge: O'Bryan J
- 31 Mar 2021:
Goodman Fielder Pte Ltd v Conga Foods Pty Ltd  FCA 307
TRADE MARKS - infringement - goods of the same description - where scope of alleged infringing goods not sufficiently made clear by the parties at trial - further infringement findings PRACTICE AND PROCEDURE - form of final orders - scope of declaratory and injunctive relief PRACTICE AND PROCEDURE - whether respondents should be granted…
Judge: Burley J
- 30 Mar 2021:
Sandoz Pty Ltd v H. Lundbeck A/S (No 2)  FCAFC 47
COSTS - application for costs orders - where appellant successful on appeal and cross-appeal but unsuccessful on some issues - whether costs to be awarded to the appellant should be discounted - costs of proceedings below - whether appellant should pay some part of respondents' costs of the proceedings below - whether costs awarded to appellant…
Judge: Nicholas, Yates and Beach JJ
- 30 Mar 2021:
Martin & Pleasance Pty Ltd v A Nelson & Co Limited  FCA 368
PRACTICE AND PROCEDURE - application for stay of interlocutory judgment - whether appeal would be rendered nugatory without a stay - whether the balance of harm to the applicant outweighed the harm to the respondent in favour of a stay - whether leave application to be heard concurrently with or immediately before appeal - whether hearing of leave …
Judge: Wigney J
Latest Speeches & Papers
- 1 Mar 2018:
Ongoing patent infringement: Is injunctive relief an inevitable outcome? (Abstract)
Presented at the Journal of Equity Conference on 1 March 2018; published in the Journal of Equity in November 2018.
- 9 Sep 2016:
Recent developments in IP remedies
An edited version of speaking notes used in a presentation at the 30th Annual Conference of the Intellectual Property Society of Australia and New Zealand Inc held 9-11 September 2016 by Justice Yates.
- 23 Oct 2014:
Random observations of a Southern Judge or what does sports law have in common with patent law?
Presented at the IPSANZ Dinner, Brisbane.
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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.