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.
- 23 Oct 2020:
Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd (No 3)  FCA 1552
PRACTICE AND PROCEDURE - proceeding for patent infringement - whether the applicant's entitlement (if any) to additional damages under s 122(1A) of the Patents Act 1990 (Cth) should be determined at the trial of liability issues or deferred for determination at any damages hearing - where applicant seeks to rely on other matters not pleaded in…
Judge: Nicholas J
- 14 Oct 2020:
Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Tender Withdrawal)  FCA 1469
EVIDENCE - where Applicant tendered portions of affidavit- where s 136 Evidence Act 1995 (Cth) direction made that paragraph only be used to qualify preceding paragraph - where Applicant claims Respondents now use qualifying paragraph to support freestanding submission - whether Applicant should be granted leave to withdraw tender - whether s 136…
Judge: Perram J
- 14 Oct 2020:
Merck Sharp and Dohme Corporation v Wyeth LLC (No 3)  FCA 1477
PATENTS - two standard patents relating to a 13-valent pneumococcal conjugate vaccine (composition patents) - one standard patent relating to a container means for stabilising an immunogenic composition (container patent) - infringement - validity PATENTS - infringement - construction of product claims - whether "comprising" inclusive or…
Judge: Burley J
- 12 Oct 2020:
Novartis AG v Arrow Pharmaceuticals Pty Ltd (No 2)  FCA 1475
PATENTS - appeal under s 60(4) of the Patents Act 1990 (Cth) - where opponent has filed submitting notice and Commissioner of Patents is not taking active part in proceedings - where there is no evidence to support grounds of opposition - appeal allowed - opposition dismissed - patent allowed to proceed to grant
Judge: Burley J
- 9 Oct 2020:
ViiV Healthcare Company v Gilead Sciences Pty Limited (No 2)  FCA 1455
PATENTS - anti-viral pharmaceutical compound to treat HIV - polycyclic carbamoylpyridone derivatives - integrase inhibitory activity - practice and procedure - particulars of invalidity - lack of utility - promise of the invention - identification of compounds said to lack utility - strike out application - uncertainty of technical terms -meaning…
Judge: Beach J
- 8 Oct 2020:
Meat and Livestock Australia Limited v Branhaven LLC  FCAFC 171
PATENTS - where appeal brought in respect of a decision of Commissioner under s 60(4) of the Patent Act 1990 (Cth) ("the Act") - power of Federal Court of Australia to order amendment of patent request or complete application - where order made after publication of reasons but before making of final orders disposing of appeal - whether primary…
Judge: Kenny, Nicholas and Burley JJ
- 5 Oct 2020:
Boehringer Ingelheim Animal Health USA Inc. v Intervet International B.V. (No 2)  FCA 1433
PRACTICE AND PROCEDURE - costs - costs of interlocutory applications to amend patent application - where orders made by consent that the patent application be amended - where appeal under s 60(4) of the Patents Act 1990 (Cth) dismissed
Judge: Moshinsky J
- 25 Sep 2020:
Axent Holdings Pty Ltd t/a Axent Global v Compusign Australia Pty Ltd  FCA 1373
PATENTS - changing sign system for use as variable speed limit sign on roadways - construction of claims - whether method or product claims - product claims containing a limitation by result - clarity of claims - infringement - defence of Crown use - defence of innocent infringement - defence of prior use - lapsed patent - alleged invalidity of…
Judge: Kenny J
- 17 Sep 2020:
Boehringer Ingelheim Animal Health USA Inc. v Intervet International B.V.  FCA 1333
PATENTS - appeal under s 60(4) of the Patents Act 1990 (Cth) - novelty - combination injectable formulation for controlling parasites in animals - where opponent contended that alleged invention lacked novelty based on Chinese patent application - where Chinese patent application did not describe the type of formulation intended to be made or any…
Judge: Moshinsky J
- 27 Aug 2020:
Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 5)  FCA 1243
PRACTICE AND PROCEDURE - application for removal of proceeding from docket of Docket Judge on the ground of apprehended bias - patent infringement proceeding - patent revocation proceeding - where previous proceeding and current proceeding involve related patent specifications containing identical text - where in previous proceeding Docket Judge…
Judge: Yates 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.