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.
- 4 Aug 2020:
Sandoz Pty Ltd v H. Lundbeck A/S  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  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  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  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)  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)  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)  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)  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)  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)  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.