Patents and Associated Statutes Sub-area NPA logo with link NPA logo with link

Patents and Associated Statutes Sub-area

About this Sub-area

The Patents and Associated Statues Sub-area consists of:

  • 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.

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 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.
Forms:
Rules:

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:

Forms:
Rules:

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.
Forms:
  • Form 92 – Notice of appeal (intellectual property)
Rules:

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

Latest Judgments

  • 4 Aug 2020: Sandoz Pty Ltd v H. Lundbeck A/S [2020] FCAFC 133
    CONTRACTS - proper construction of settlement agreement compromising patent proceedings - effect of clause granting appellant licence to exploit patent prior to its expiry - where clause specified possible commencement dates but no end date - whether licence continued to apply in relation to acts occurring after expiry of term of the patent and…
    Judge: Nicholas, Yates and Beach JJ
  • 30 Jul 2020: Sovereign Hydroseal Pty Ltd v Steynberg [2020] FCA 1084
    PRACTICE AND PROCEDURE - application for preliminary discovery from prospective respondent - possible patent infringement - whether prospective applicant
    Judge: McKerracher J
  • 27 Jul 2020: Southern Cross Mining Services Pty Ltd v Mickala Mining Maintenance Pty Ltd [2020] FCA 1064
    INTELLECTUAL PROPERTY - consideration of an application for leave to amend a statement of cross-claim in support of a notice of cross-claim seeking an order for revocation of the patent in suit- consideration of whether the cross-claimant is to have leave to rely upon, as a ground of lack of novelty, a demonstration of an apparatus at a Field Day…
    Judge: Greenwood J
  • 20 Jul 2020: Yang v Vuly Pty Ltd [2020] FCA 1037
    PRACTICE AND PROCEDURE - application pursuant to r 34.25 of the Federal Court Rules 2011 (Cth) for an extension of time within which to appeal from decision of delegate of Commissioner of Patents - two month delay - where cause of delay is innocent mistake - where no prejudice to respondent - where appeal will be conducted as a hearing de novo and …
    Judge: Burley J
  • 17 Jul 2020: Watson v Kriticos (Joinder and Service Applications) [2020] FCA 1019
    PRACTICE AND PROCEDURE - application to join company as second respondent - whether joinder necessary to determine related dispute - where claims concern patents owned by proposed second respondent PRACTICE AND PROCEDURE - service outside the jurisdiction application - whether prima facie case established for relief sought
    Judge: Perram J
  • 16 Jul 2020: Commonwealth of Australia v Sanofi (formerly Sanofi-Aventis) (No 6) [2020] FCA 1001
    COSTS - whether costs to be awarded to respondents should be reduced on account of applicant's success on discrete issues - respondents awarded 85% of their costs of the proceeding
    Judge: Nicholas J
  • 14 Jul 2020: Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Cognate Amendment) [2020] FCA 1041
    PRACTICE AND PROCEDURE - application for leave to file Seventh Further Amended Defence - where proposed amendment concerns matters raised in late evidence - where leave to rely on late evidence previously refused
    Judge: Perram J
  • 13 Jul 2020: Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Second Adjournment) [2020] FCA 987
    PRACTICE AND PROCEDURE - second application by Respondents to adjourn trial - where virtual trial proposed in circumstances of COVID-19 pandemic - where six of Respondents' witnesses located in China - where Chinese law submitted by Respondents to prevent witnesses giving evidence by video link - where Applicant proposes witnesses travel to Macau…
    Judge: Perram J
  • 10 Jul 2020: Aristocrat Technologies Australia Pty Limited v Commissioner of Patents (No 2) [2020] FCA 974
    COSTS - usual rule that costs follow the event - whether Commissioner should pay costs of hearing before delegate - whether discretion should be exercised to apportion costs - where appellant filed considerable volume of duplicative or unnecessary expert evidence - costs of expert evidence apportioned
    Judge: Burley J
  • 9 Jul 2020: Vehicle Monitoring Systems Pty Ltd v SARB Management Group Pty Ltd (No 2) [2020] FCA 961
    PRACTICE AND PROCEDURE - form of final orders - unsuccessful appeal from opposition to a standard patent pursuant to s 60(4) of the Patents Act 1990 (Cth) - application for stay of orders pending outcome of application for leave to appeal and, if granted, appeal - stay granted COSTS - whether costs should follow the event - where offer made by the …
    Judge: Burley 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.