About this NPA
The Intellectual Property National Practice Area (NPA) covers disputes concerning matters such as patents, trade marks, copyright, designs, circuit layouts, plant breeder's rights and appeals from the Commissioner of Patents or Registrar of Trade Marks.
The three Sub-areas in the Intellectual Property NPA are:
- 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.
- Any trade mark dispute, with respect to validity of a trade mark and/or distinguishing goods and services (including in respect of a letter, number, word, phrase, sound, smell, shape, logo, picture and packaging).
- "Geographical indication" disputes involving a geographical indication or other term signifying a related attribute of goods.
- An appeal from a decision of the Registrar of Trade Marks.
- Copyright disputes concerning works such as books, computer programs, architectural drawings, musical and artistic works and other subject matter such as films and sound recordings.
- Design disputes concerning the distinctive shape, configuration, pattern or ornamentation of products in an industrial or commercial context.
- Other disputes, including circuit layout disputes concerning layout designs for integrated circuits and computer chips.
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.
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 NPA 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).
The most commonly used forms and rules relating to intellectual property proceedings are:
1. Commencing intellectual property proceedings
(Refer to paragraph 4.3 of Intellectual Property Practice Note)
2. Appeals from the Commissioner of Patents or Registrar of Trade Marks
A party who wants to appeal from a decision of the Commissioner of Patents or the Registrar of Trade Marks must file a Notice of appeal within 21 days of the date of the decision.
3. Applications under the Plant Breeder's Rights Act 1994
A claim for infringement of plant breeder's rights under the Plant Breeder's Rights Act 1994 (Cth), may be commenced in the Federal Court by filing:
4. Applications under the Circuit Layouts Act 1989
Disputes concerning layout designs for integrated circuits and computer chips include:
(a) Determination of equitable remuneration
A party may apply to the Court under section 20(2) of the Circuit Layouts Act 1989 (Cth) for a determination of equitable remuneration in relation to an eligible layout by filing:
(b) Determination of the terms of the doing of an act
A party may apply to the Court under section 25(4) of the Circuit Layouts Act 1989 for a determination of the terms of the doing of an act in relation to an eligible layout by filing:
The Intellectual Property NPA comprises any proceeding relating to the following:
- A patent granted under the Patents Act 1990 (Cth)
- A trade mark registered under the Trade Marks Act 1995 (Cth)
- Copyright under the Copyright Act 1968 (Cth)
- A registered design / design under: the Designs Act 2003, the Advance Australia Logo Protection Act 1984 (Cth) or the Olympic Insignia Protection Act 1987 (Cth)
- Eligible layout rights under the Circuits Layout Act 1989 (Cth)
- Plant breeder's rights under the Plant Breeder's Rights Act 1994 (Cth)
- A geographical indication or other term registered under the Australian Grape and Wine Authority Act 2013 (Cth)
- Other proceedings under those statutes.
- 24 Nov 2023:
The Epoch Holding Group Pty Ltd v Katz  FCA 1468
COSTS - whether costs order should be made - where, if costs order made, whether costs should be payable forthwith following the dismissal of an interlocutory application - where the application concerns access to documents - where the application has been rendered otiose by reason of access to documents being provided without final determination…
Judge: Cheeseman J
- 24 Nov 2023:
Allied Pumps Pty Ltd v LAA Industries Pty Ltd  FCA 1457
PATENTS - innovation patent - power and control system for a dewatering submersible pump - claim construction - validity - infringement PATENTS - novelty - prior acts as disclosures - where commercial hire of systems to customer before priority date - where hired systems were used by customer without restriction - where customer conducted its own…
Judge: Downes J
- 22 Nov 2023:
Vitaco Health IP Pty Ltd v AFI Cosmetic Pty Ltd  FCA 1463
PRACTICE AND PROCEDURE - application for interlocutory injunction - ex parte application - strong prima facie case of trade mark and copyright infringement, and breach of s 18 and s 29 of the Australian Consumer Law - First Respondent's two websites use the applicants' logos and other branded content, and falsely indicate the First Respondent has…
Judge: Rofe J
- 16 Nov 2023:
MMD Design and Consultancy Limited v Camco Engineering Pty Ltd (No 2)  FCA 1416
PRACTICE AND PROCEDURE - costs - where the respondent was largely successful in defending the proceeding - the form the costs order should take - whether costs should be discounted in light of the parties' mixed success at trial - whether indemnity costs should be ordered following a Calderbank offer on seventh day of trial
Judge: Rofe J
- 16 Nov 2023:
McD Asia Pacific LLC v Hungry Jack's Pty Ltd  FCA 1412
TRADE MARKS - infringement - Trade Marks Act 1995 (Cth) s 120 - deceptive similarity - consideration of intention to mislead or deceive - infringement not established. TRADE MARKS - application for cancellation of trade mark registration - Trade Marks Act 1995 (Cth) ss 44, 60 and 88 - no ground for cancellation established. TRADE MARKS -…
Judge: Burley J
- 13 Nov 2023:
Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd  FCAFC 178
PATENTS - where invention claimed is a safety system for protection against falling drill rods in mining industry - construction - meaning of 'anchor member' - meaning of 'configured to be fixed in a proximal end region of the bore' PATENTS - infringement - whether First Respondent's product included an anchor member - whether First Respondent's…
Judge: Perram, Nicholas and McElwaine JJ
- 8 Nov 2023:
Toyota Jidosha Kabushiki Kaisha v OZI4X4 Pty Ltd  FCA 1361
PRACTICE AND PROCEDURE - where orders in the nature of an injunction sought by consent - where there is no evidence or statement of agreed facts before the Court - orders made COSTS - application for indemnity costs - some delay in providing consent orders to the Court - application refused
Judge: Kenny J
- 3 Nov 2023:
STIHL Pty Ltd v Reggie Bowman Pty Ltd  FCA 1347
PRACTICE AND PROCEDURE - application for default judgment under r 5.23 of the Federal Court Rules 2011 (Cth) - where respondents have failed to file a defence - whether the court is satisfied on the basis of pleaded facts that the applicant is entitled to the relief claimed TRADE MARKS - infringement of registered trade marks - where applicant…
Judge: Button J
- 2 Nov 2023:
Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Limited  FCAFC 175
TRADE MARKS - where appellant's trade mark registered in respect of services comprising (inter alia) issuing halal certifications to businesses and individuals for goods and services if religious and technical requirements are met ("the registered services") - whether primary judge erred in finding that the respondents' use of a logo on their…
Judge: Nicholas, Burley and Cheeseman JJ
- 2 Nov 2023:
Sandoz AG v Bayer Intellectual Property GmbH  FCA 1321
PATENTS - infringement - where invention claimed is an oral tablet comprising the compound rivaroxaban "in hydrophilized form" and the use of that drug for the prophylaxis and/or treatment of a thromboembolic disease - construction of patent - meaning of "in hydrophilized form" and "hydrophilization" - whether pieces of prior art referred to in…
Judge: Rofe J
Latest Speeches & Papers
- 1 Mar 2018:
Ongoing patent infringement: Is injunctive relief an inevitable outcome? (Abstract)
Presented at the Journal of Equity Conference on 1 March 2018; published in the Journal of Equity in November 2018.
- 9 Sep 2016:
Recent developments in IP remedies
An edited version of speaking notes used in a presentation at the 30th Annual Conference of the Intellectual Property Society of Australia and New Zealand Inc held 9-11 September 2016 by Justice Yates.
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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.