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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:

Patents and Associated Statutes 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.

Trade Marks Sub-area

  • 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 and Industrial Design Sub-area

  • 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.

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 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

Forms:
Rules:
Notes:
  • In addition to any material required to be filed by the Federal Court Rules, and at least 7 days prior to the first case management hearing (or earlier if the docket judge so requires), copies of the following documents should be filed and served:
      • any patent upon which the applicant sues
      • any trade mark registration or certificate of registered design upon which the applicant sues
      • any patent application which is the subject of the appeal
      • any application for a registered trade mark or application for a registered design that is the subject of the appeal
      • any written record of the decision (including any reasons) the subject of the appeal.

(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.

Forms:
  • Form 92 - Notice of appeal (intellectual property)
Rules:
Notes:
  • For a Notice of appeal, the party bringing the appeal should be referred to as the "applicant" and the other party should be referred to as the "respondent"
  • A Notice of appeal must also be served on the Commissioner of Patents.

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:

Forms:
Rules:

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:

Forms:
  • Form 94 – Originating application for determination of equitable remuneration under s 20(2) of the Circuits Layouts Act 1989
Rules:

(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:

Forms:
  • Form 95 – Originating application for determination of the terms of the doing of an act under section 25(4) of the Circuits Layouts Act 1989
Rules:

For further procedural and case management information you should refer to the Central Practice Note and the Intellectual Property Practice Note.

Legislation

The Intellectual Property NPA comprises any proceeding relating to the following:

Latest Judgments

  • 5 May 2021: Fuchs Lubricants (Australasia) Pty Ltd v Quaker Chemical (Australasia) Pty Ltd [2021] 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) [2021] 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) [2021] 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) [2021] 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) [2021] 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) [2021] 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) [2021] 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 [2021] 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) [2021] 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 [2021] 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

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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.

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National Coordinating Judges

  • Greenwood J
  • Nicholas J
  • Yates J
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