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.

The NPA practice note sets out the arrangements for the management of intellectual property proceedings.

Other practice notes which may be relevant to this NPA include:

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.

For further procedural and case management information you should refer to the Central Practice Note and the Intellectual Property Practice Note.

• Patents Act 1990 (Cth)
• Plant Breeder's Rights Act 1994 (Cth)
• Australian Grape and Wine Authority Act 2013 (Cth)
• Evidence Act 1995 (Cth)

• 12 Sep 2023: UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 3) [2023] FCA 1079
  PRACTICE AND PROCEDURE - patent litigation - form of final orders - costs - where applicant successful in defeating infringement claim - where applicant largely successful in unjustified threats claim - where first respondent (the patentee) successful in defeating revocation claim
  Judge: Moshinsky J
• 29 Aug 2023: Orikan Group Pty Ltd v Vehicle Monitoring Systems Pty Limited [2023] FCA 1031
  PRACTICE AND PROCEDURE - interlocutory application for stay of proceedings on basis of Anshun estoppel and strike out of claims on basis of abuse of process - whether claim for invalidity of patent should have been raised in earlier proceedings - application dismissed
  Judge: O'Bryan J
• 29 Aug 2023: Hanwha Solutions Corporation v REC Solar Pte Ltd [2023] FCA 1017
  PATENTS - patent for method for manufacturing a solar cell with a surface-passivating dielectric double layer, and corresponding solar cell - infringement - validity - claim construction PATENTS - infringement - construction of method and product claims - no infringement found PATENTS - validity - lack of inventive step - ss 7(2) and (3) of the…
  Judge: Burley J
• 16 Aug 2023: Novartis AG v Pharmacor Pty Limited (No 2) [2023] FCA 963
  PRACTICE AND PROCEDURE - patents - interlocutory application for question to be heard separately pursuant to r 30.01(1) of the Federal Court Rules 2011 (Cth) - where proposed separate question concerns the relevant time at which a patent applicant's knowledge of the best method is to be fixed for the purposes of s 40(2)(a) of the Patents Act 1990…
  Judge: Yates J
• 2 Aug 2023: UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 2) [2023] FCA 885
  PATENTS - infringement - patent for system, method and computer program for an access control system for controlling access to a restricted area (eg, a car park) - where claim 1 comprised a system including a communication system and a computer program executable by a mobile communication device (such as a smartphone) wherein the device was…
  Judge: Moshinsky J
• 27 Jul 2023: Stasiuk v Monster Energy Au Pty Ltd [2023] FCA 856
  COSTS - application for security for costs - where applicant in proceeding is a natural person residing in Cayman Islands - whether security should be calculated by reference to costs of enforcing judgment in foreign jurisdiction - whether amount of security sought by respondents reasonable
  Judge: Nicholas J
• 27 Jul 2023: Calix Limited v Grenof Pty Ltd (No 2) [2023] FCA 832
  COSTS - whether first respondent should be awarded costs on an indemnity basis - offer of compromise - rule 25.14(2) Federal Court Rules 2011 (Cth) - whether applicant's failure to accept an offer of compromise was unreasonable in the circumstances
  Judge: Nicholas J
• 21 Jul 2023: MMD Design and Consultancy Limited v Camco Engineering Pty Ltd [2023] FCA 827
  PATENTS - where invention claimed is a tooth construction for a mineral sizer - construction of patent - meaning of "front cover which is weldingly secured to and seated in face to face contact with the front face of the support body" - infringement - where respondents supplied tooth constructions for mineral sizers - whether repair defence…
  Judge: Rofe J
• 14 Jul 2023: Novartis AG v Pharmacor Pty Limited [2023] FCA 804
  PRACTICE AND PROCEDURE - patents - where in the principal proceeding the respondent alleges that the patent in suit does not disclose the best method of performing the invention - discovery - where applicants oppose the respondent's proposed discovery category
  Judge: Yates J
• 14 Jul 2023: Watson v Kriticos (Further Discovery and Adjournment) [2023] FCA 793
  PRACTICE AND PROCEDURE - application for further discovery and adjournment of trial - whether reasonable grounds for being fairly certain that documents disclosing energy recycling mechanism in Second Respondent's surf machines exist
  Judge: Perram J