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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:

Patents and Associated Statutes 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.
  

Trade Marks Sub-area

• 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 and Industrial Design Sub-area

• 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.

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 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

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:

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

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.

• 16 Apr 2025: MSA 4X4 Accessories Pty Ltd v Clearview Towing Mirrors Pty Ltd (Discovery) [2025] FCA 375
  PATENTS – discovery – significant claim for damages following liability judgment – discovery application successful with modifications made to categories of discovery sought
  Judge: DOWNES J
• 16 Apr 2025: Paco Nominees Pty Ltd v Ella Secret Australia Pty Ltd (Default Judgment) [2025] FCA 366
  TRADE MARKS – default judgment – respondents’ failure to comply with orders and appear – claim of trade mark infringement – default judgment granted PRACTICE AND PROCEDURE – application for default judgment pursuant to r 5.23 of the Federal Court Rules 2011 (Cth) – whether appropriate to grant injunction – whether satisfied that an order for…
  Judge: RAPER J
• 16 Apr 2025: University of New England v Boerner (Costs Review) [2025] FCA 368
  COSTS – review of Registrar’s decision to order costs against prospective respondents – where prospective applicant was substantially successful in application for preliminary discovery – whether approach taken by either respondent was adversarial
  Judge: HESPE J
• 10 Apr 2025: Australian News Channel Pty Ltd v Isentia Pty Limited [2025] FCAFC 49
  COPYRIGHT – statutory construction – section 183(1) of the Copyright Act 1968 (Cth) – meaning of “for the services of the Commonwealth or State” – whether provision of media monitoring services to government clients within s 183(1) – appeal dismissed
  Judge: CHEESEMAN, JACKMAN AND OWENS JJ
• 8 Apr 2025: Rock Solid Industries International (Pty) Ltd v Ozi 4X4 Pty Ltd [2025] FCA 334
  DAMAGES – assessment of damages for infringement of registered designs – where default judgment was entered against respondent granting injunctive and declaratory relief – where applicant sought damages to reputation and additional damages – assessment of considerations relevant to award of damages – damages granted
  Judge: ANDERSON J
• 8 Apr 2025: EV20 Consulting Group Pty Ltd v Paperless Warehousing Pty Ltd [2025] FCA 328
  COPYRIGHT – default judgment – applicants failure to appear – claim for wrongful threats of copyright infringement – consideration of Federal Court Rules 2011 (Cth) (FCR) r 5.23(1) – default judgment granted – claim dismissed COPYRIGHT – default judgment – cross-respondents failure to appear – cross-claim for copyright infringement, breach of…
  Judge: BURLEY J
• 7 Apr 2025: Scidera, Inc. v Meat and Livestock Australia Limited [2025] FCA 308
  PRACTICE AND PROCEDURE – application to strike out statement of claim – whether pleading or parts of the pleading are ambiguous, likely to cause prejudice, embarrassment or delay, or fail to disclose a reasonable cause of action – whether the pleading fails to comply with rr 16.21 and 34.42 of the Federal Court Rules 2011 (Cth)
  Judge: ROFE J
• 28 Mar 2025: The Epoch Holding Group Pty Ltd v Katz (Disclosure of Documents) [2025] FCA 271
  PRACTICE AND PROCEDURE – Discovery of documents – extent to which particulars to pleadings can govern matters “directly relevant to the issues raised by the pleadings” – consideration of operation of Federal Court Rules 2011 (Cth) r 20.14(1)(a) where a pleading notes that further particulars will be provided after discovery – need for connected…
  Judge: NEEDHAM J
• 3 Apr 2025: Quach v Registrar of Trade Marks [2025] FCA 311
  TRADE MARKS – Intellectual property – Application for Registration – Registration of Trade Mark – Opposition to Registration – Assignment CONSTITUTIONAL LAW – Power to register a trade mark – Whether a judicial power – Whether validly conferred on Registrar of Trade Marks ADMINISTRATIVE LAW – Whether judicial review enlivened – Whether a decision…
  Judge: MEAGHER J
• 28 Mar 2025: Perfect Day, Inc. v Commissioner of Patents [2025] FCA 270
  PATENTS – appeal from decision of a delegate of the Commissioner of Patents in opposition proceedings – hearing de novo – claimed invention directed to providing a dairy substitute food composition that has the characteristics of cow’s milk – whether disclosure is clear enough and complete enough– whether claims lack support – whether…
  Judge: ROFE J

• 4 Apr 2025: Disclosure of the best method - how much is enough?
  Presented at the Institute of Patent and Trade Mark Attorneys of Australia conference, Brisbane, by Justice Downes.
  
• 1 Sep 2024: Remedies in intellectual property law in Australia post-Redbubble
  Presented at the Intellectual Property Society of Australia and New Zealand annual conference, New Zealand, by Justice Downes.
  
• 1 Mar 2018: Ongoing patent infringement: Is injunctive relief an inevitable outcome? (Abstract)
  Presented at the Journal of Equity Conference on 1 March 2018
  

• IP Australia
• Copyright Tribunal