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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

  • 1 Jul 2022: UON Pty Ltd v Hoascar [2022] FCA 769
    PRACTICE AND PROCEDURE - application for leave to amend statement of claim and notice of appeal in two related proceedings - no fundamental change to the case - proceedings at a relatively early stage - objection to leave to amend on basis that amended pleadings would be liable to be struck out - inadequate particularisation - asserted…
    Judge: Jackson J
  • 29 Jun 2022: Group One Limited v GTE Gesellschraft Fur Technische Entwicklungen GMBH [2022] FCA 767
    PRACTICE AND PROCEDURE - consideration of an application for an order requiring the respondents to nominate a new address for service, the respondents having withdrawn the instructions from their present solicitors
    Judge: Greenwood J
  • 22 Jun 2022: Hood v Down Under Enterprises International Pty Limited (No 2) [2022] FCAFC 106
    PRACTICE AND PROCEDURE - costs - offer to compromise - Calderbank offer - whether unreasonable to fail to accept offer - appropriate order as to costs in relation to cross-claim involving two distinct issues - where each side successful in relation to one of those issues
    Judge: Yates, Moshinsky and Rofe JJ
  • 17 Jun 2022: Watson as Trustee for the Watson Family Trust v Cosmetic Warriors Ltd [2022] FCA 700
    TRADE MARKS - consideration of the question of whether the applicant/appellant has discharged the burden arising under s 100(1)(c) of the Trade Marks Act 1995 (Cth) (the "Act") in relation to the question arising under s 92(4)(b) of the Act as to whether in the relevant period contemplated by that section there was use of the trade mark in…
    Judge: Greenwood J
  • 3 Jun 2022: C.M.E. Blasting & Mining Equipment Ltd v Rock Tool Refurbishment Solutions Pty Ltd (No 2) [2022] FCA 632
    PRACTICE AND PROCEDURE - Interlocutory application by applicant/cross-respondent for orders requiring first respondent/cross-applicant to produce documents and things and for orders for discovery and inspection - where first respondent brings cross-claim for non-infringement declaration under ss 125 and 126 of Patents Act 1990 (Cth) in relation to …
    Judge: Besanko J
  • 24 May 2022: Karlsson v Griffith University [2022] FCA 591
    PRACTICE AND PROCEDURE -- application by applicant for default judgment -- where respondent failed to file a defence within the time permitted by the rules but later excused from doing so until further order -- whether judgment in favour of applicant should be entered PRACTICE AND PROCEDURE -- application by respondent for summary judgment --…
    Judge: Katzmann J
  • 23 May 2022: Southern Cross Industrial Group Pty Ltd v Mickala Lighting Towers Pty Ltd [2022] FCA 598
    PRACTICE AND PROCEDURE - application to set aside originating application pursuant to r 13.01 Federal Court Rules 2011 (Cth) - application to strike out all or part of a statement of claim pursuant to r 16.21 Federal Court Rules 2011 (Cth) - application for an order that the applicant provide a Position Statement on Infringement within meaning of…
    Judge: Downes J
  • 18 May 2022: GME Pty Ltd v Uniden Australia Pty Ltd (No 2) [2022] FCA 638
    PRACTICE AND PROCEDURE - form of final orders - whether delivery up and takedown orders should be made COSTS - whether respondent should pay applicant's costs of and incidental to the application for short service and the interlocutory relief
    Judge: Burley J
  • 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

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.

NPA Judges

National Coordinating Judges

  • Greenwood J
  • Nicholas J
  • Yates J
  • Burley J
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