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.

The NPA practice note sets out the arrangements for the management of intellectual property proceedings.

Other practice notes which may be relevant to this NPA include:

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.

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

• Patents Act 1990 (Cth)
• Plant Breeder's Rights Act 1994 (Cth)
• Australian Grape and Wine Authority Act 2013 (Cth)
• Evidence Act 1995 (Cth)

• 20 Feb 2023: Nufarm Australia Limited v Advanta Seeds Pty Ltd [2023] FCA 109
  PATENTS - appeal from decision of Administrative Appeals Tribunal to grant extension of time pursuant to s 223 Patents Act 1990 (Cth) to pay renewal fee for standard patent - where patentee paid fees through patent attorneys - where patentee failed to authorise patent attorneys to pay renewal fee within required time - where patent ceased - where…
  Judge: Downes J
• 13 Feb 2023: Airco Fasteners Pty Ltd v Illinois Tool Works Inc [2023] FCAFC 7
  PATENTS - where invention claimed is a fuel cell for use in a combustion tool - construction of claims - role of expert evidence - meaning of "close proximity" - meaning of "opposite" - appeal dismissed
  Judge: Rares, Moshinsky and Burley JJ
• 23 Dec 2022: Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Liability) [2022] FCA 1585
  PATENTS - Applicant patentee of three method patents relating to digital mobile radios ('DMR') using Time Division Multiple Access ('TDMA') to divide frequency channel - disputed constructions - fair basing - inventive step - identification of inventive step in claims - manner of manufacture - stare decisis - whether Aristocrat Technologies…
  Judge: Perram J
• 15 Dec 2022: Aristocrat Technologies Australia Pty Limited v Konami Australia Pty Limited (No 4) [2022] FCA 1501
  COSTS - whether applicant's costs should be reduced on account of lack of success on particular issues - offer of compromise - proper approach to consideration of offer of compromise and pre-judgment interest
  Judge: Nicholas J
• 14 Dec 2022: TCT Group Pty Ltd v Polaris IP Pty Ltd [2022] FCA 1493
  PATENTS -innovation patents relating to hinges - infringement - validity - claim construction PATENTS - validity - priority - whether patents entitled to priority date of parent patent application or provisional application - priority date deferred to filing date PATENTS - validity - lack of clear and complete description - classical sufficiency - …
  Judge: Burley J
• 21 Nov 2022: Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd (No 4) [2022] FCA 1429
  PRACTICE AND PROCEDURE -- application for stay of injunction, orders for delivery-up and destruction of infringing materials and costs -- appropriate form of injunction following findings of patent infringement --whether grounds of appeal reasonably arguable -- whether appeal would be rendered nugatory absent a stay -- whether balance of…
  Judge: Rofe J
• 18 Nov 2022: Aristocrat Technologies Australia Pty Limited v Konami Australia Pty Limited (No 3) [2022] FCA 1373
  PATENTS - account of profits - apportionment of profits - availability of apportionment - characterisation of invention - consideration of form of claims - consideration of substance of the invention - whether broadest claim for an electronic gaming machine ("EGM") including feature game with proportional trigger or to feature game with…
  Judge: Nicholas J
• 8 Nov 2022: Kilmallock (ACT) Pty Ltd v World Blinds Australia Pty Ltd [2022] FCA 1472
  PATENTS - interlocutory injunction application - issues of validity and lack of novelty - balance of convenience - where accused product alleged to infringe patent - where patent to expire shortly - where lack of novelty claim alleged to be fraudulent - whether delay by patentee in seeking to prevent earlier alleged infringements by same accused…
  Judge: Rares J
• 13 Oct 2022: Australian Mud Company Pty Ltd v Boart Longyear Australia Pty Ltd [2022] FCA 1224
  PRACTICE AND PROCEDURE - interlocutory application for joinder of related party - held: application for joinder of third respondent granted PRACTICE AND PROCEDURE - pleadings -application seeking leave to amend the amended originating application and amended statement of claim pursuant to r 16.53 of the Federal Court Rules 2011 (Cth) - held:…
  Judge: Rofe J
• 6 Oct 2022: Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd (No 3) [2022] FCA 1189
  PATENTS - where invention claimed is a core sample orientation device relating to a system and method for orienting core samples extracted from the ground - construction of patent - meaning of "predetermined time intervals" - whether respondents infringed patent in suit - held: respondents' product infringed patent - accessorial liability for… 169 IPR 1
  Judge: Rofe J