Patents and Associated Statutes Sub-area
About this 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
- appeals from the Commissioner of Patents.
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 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.
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:
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.
- 18 Oct 2021:
Vald Performance Pty Ltd v Kangatech Pty Ltd (No 3)  FCA 1265
INTELLECTUAL PROPERTY - consideration of procedural orders in relation to patent proceedings having regard to the earlier procedural history of the matter
Judge: Greenwood J
- 30 Sep 2021:
Surefoot IP Holdings Pty Ltd v All Footings Solutions Pty Ltd  FCA 1181
PRACTICE AND PROCEDURE - patents - position statement on infringement - adequacy of position statement - need to identify features of allegedly infringing products and corresponding integers of claims in patent
Judge: Rofe J
- 29 Sep 2021:
Falkenhagen v West (No 3)  FCA 1176
PRACTICE AND PROCEDURE - application for leave to file an amended statement of claim - where proposed amended statement of claim liable to be struck out under rule 16.21 of the Federal Court Rules 2011 (Cth) - leave refused.
Judge: Downes J
- 22 Sep 2021:
Deco Australia Pty Ltd v Aliwood Pty Ltd  FCA 1159
PRACTICE AND PROCEDURE - application for summary judgment - where priority date yet to be determined - where legal issues complex - where matter listed for trial and trial preparatory steps underway
Judge: Perram J
- 15 Sep 2021:
Caffitaly System S.P.A. v One Collective Group Pty Ltd (No 2)  FCAFC 164
PRACTICE AND PROCEDURE - costs - appeal - where appellant unsuccessful in its infringement case and in its validity case regarding two out of three patents - where appellant successful in relation to the validity of one patent
Judge: Yates, Moshinsky and Burley JJ
- 19 Aug 2021:
Cytec Industries Inc. v Nalco Company  FCA 970
PATENTS - appeal from decision of delegate of the Commissioner of Patents - patent application for method of reducing aluminosilicate scale - claims of patent application amended following delegate's decision - hearing de novo PATENTS - claim construction - whether claims include within their scope a reaction product mixture containing a single…
Judge: Burley J
- 12 Aug 2021:
Merck Sharp & Dohme Corp. v Sandoz Pty Ltd  FCA 947
PATENTS - patent for treatment of diabetes - alleged threat of infringement - validity of extension of term of patent - pharmaceutical substance - construction of ss 71(2)(b) and 77 of the Patents Act 1990 (Cth) - patent extension invalid - application dismissed - cross-claim allowed.
Judge: Jagot J
- 5 Aug 2021:
Watson v Kriticos (Costs of Summary Judgment Application)  FCA 917
COSTS - application for lump sum indemnity costs - application to dispense with Federal Court Rules 2011 (Cth) r 40.13
Judge: Perram J
- 30 Jul 2021:
Thaler v Commissioner of Patents  FCA 879
PATENTS - artificial intelligence - machine learning - artificial neural networks - invention produced by a computer - semi-autonomous systems - concept of inventor - whether a machine can be an inventor - whether only a human can invent - device for the autonomous boot-strapping of unified sentience (DABUS) - invention created by DABUS in the… 160 IPR 72
Judge: Beach J
- 30 Jun 2021:
Caffitaly System S.P.A. v One Collective Group Pty Ltd  FCAFC 118
PATENTS - three patents relating to single serve coffee capsules for use in an espresso machine - appeal against primary judge's findings on infringement and claim validity - whether certain claims of two patents invalid for lack of inventive step - whether certain claims of the third patent were invalid because the invention, as claimed, was not… 160 IPR 1
Judge: Yates, Moshinsky, Burley JJ
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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.