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

  • 23 Oct 2020: Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd (No 3) [2020] 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) [2020] 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) [2020] 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) [2020] 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) [2020] 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 [2020] 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) [2020] 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 [2020] 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. [2020] 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) [2020] 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

Subscribe

To stay up-to-date with news in the Federal Court, including developments in this NPA, subscribe to our email subscription services.

We provide subscriptions to the latest judgments and events (by NPA); Practice News to keep up-to-date with changes to practice and procedure; and Daily Court Listings.

All Subscriptions

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.