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.
- 5 May 2021:
Fuchs Lubricants (Australasia) Pty Ltd v Quaker Chemical (Australasia) Pty Ltd  FCAFC 65
PATENTS - standard and innovation patents for a method for detecting fluid injection in a patient - whether invalid for lack of novelty - working in public of the invention within the period of 12 months before the priority date - working for the purposes of "reasonable trial" - grace period exception under s 24(1)(a) of the Patents Act 1990 (Cth) …
Judge: Beach, Moshinsky and Thawley JJ
- 27 Apr 2021:
Otsuka Pharmaceutical Co., Ltd v Generic Health Pty Ltd (No 4)  FCA 416
PRACTICE AND PROCEDURE - application for additional discovery
Judge: Yates J
- 30 Mar 2021:
Sandoz Pty Ltd v H. Lundbeck A/S (No 2)  FCAFC 47
COSTS - application for costs orders - where appellant successful on appeal and cross-appeal but unsuccessful on some issues - whether costs to be awarded to the appellant should be discounted - costs of proceedings below - whether appellant should pay some part of respondents' costs of the proceedings below - whether costs awarded to appellant…
Judge: Nicholas, Yates and Beach JJ
- 24 Mar 2021:
Watson v Kriticos (Summary Judgment)  FCA 261
PRACTICE AND PROCEDURE - application for summary judgment and strike out - application for further particulars
Judge: Perram J
- 19 Mar 2021:
Juno Pharmaceuticals Pty Ltd v Celgene Corporation  FCA 236
PATENTS - compound claims - pharmaceutical products - lenalidomide - reduction of tumor necrosis factor alpha - invalidity grounds - failure to disclose best method - false suggestion - summary dismissal application concerning particulars of invalidity - cross-claim for infringement of patent in suit and method of treatment patents - strike out…
Judge: Beach J
- 2 Mar 2021:
C.M.E. Blasting & Mining Equipment Ltd v Rock Tool Refurbishment Solutions Pty Ltd  FCA 160
PRACTICE & PROCEDURE -- application for security for costs under s 56 of the Federal Court of Australia Act 1976 (Cth) and r 19.01 of the Federal Court Rules 2011 (Cth) -- where applicant in proceeding a corporation in Ontario, Canada -- where assets in the jurisdiction, but considerable uncertainty about respondents' ability to recover costs from …
Judge: Besanko J
- 25 Feb 2021:
Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 7)  FCA 142
PRACTICE AND PROCEDURE -- application for leave to issue a subpoena to produce documents -- where witness gave evidence in advance of trial and later discovered additional materials that may be relevant -- potential for documents to lead to applications with respect to further evidence and amendments to pleadings -- documents not irrelevant by…
Judge: Besanko J
- 3 Feb 2021:
Merck Sharp & Dohme Corporation v Pfizer Inc  FCA 57
PRACTICE AND PROCEDURE - application for hearing to be adjourned - where one of a party's two expert witnesses is unable to participate in the proceedings -application to adjourn opposed - balancing of considerations - whether retaining hearing dates would cause undue prejudice to the respondent - application granted
Judge: Burley J
- 29 Jan 2021:
Repipe Pty Ltd v Commissioner of Patents (No 3)  FCA 31
PATENTS - validity - manner of manufacture - where appellant's claims held to be mere scheme or business method - where appellant given limited opportunity to amend claims after delivery of judgment - where appellant proceeded to engage in iterative process with the Commissioner of Patents and filed two amendment applications - whether any…
Judge: McKerracher J
- 22 Dec 2020:
Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 6)  FCA 1866
PRACTICE AND PROCEDURE -- interlocutory application for leave to file and serve a Further Amended Defence and a Second Further Amended Statement of Cross-Claim -- where opposition to the application is limited to an amendment to the Cross-Claim raising a plea of a lack of entitlement in relation to two patents -- consideration of the nature of the …
Judge: Besanko 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.