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

  • 18 Oct 2021: Vald Performance Pty Ltd v Kangatech Pty Ltd (No 3) [2021] 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 [2021] 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) [2021] 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 [2021] 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) [2021] 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 [2021] 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 [2021] 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) [2021] 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 [2021] 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 [2021] 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.

NPA Judges

National Coordinating Judges

  • Greenwood J
  • Nicholas J
  • Yates J
  • Burley J
NPA Judges

Urgent Applications