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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:
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.
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.
Central Practice Note (CPN-1)
The NPA practice note sets out the arrangements for the management of intellectual property proceedings:
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Other practice notes which may be relevant to this NPA include:
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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
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(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.
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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:
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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:
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(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:
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For further procedural and case management information you should refer to the Central Practice Note and the Intellectual Property Practice Note.
Legislation
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.
Latest Judgments
- 17 Dec 2024:
Abbey Laboratories Pty Ltd v Virbac (Australia) Pty Ltd [2024] FCA 1488
PATENTS - application for an interlocutory injunction by patent holder - where generic recently launched - where patent holder is claiming for infringement - where patent alleged to be invalid - whether balance of convenience favours the grant of an injunction - where there has been substantial delay on the part of the patent holder - where…
Judge: Jackman J - 17 Dec 2024:
Hampden Holdings I.P. Pty Ltd v Aldi Foods Pty Ltd [2024] FCA 1452
COPYRIGHT - artistic works - designs on packaging of children's food products - where the applicants claimed that the respondent had infringed copyright by selling products in packaging that reproduced a substantial part of the applicants' works - whether the applicants owned the copyright in the relevant works - whether the respondent's designs…
Judge: Moshinsky J - 16 Dec 2024:
Hix Investment Pty Ltd v Wong [2024] FCA 1461
PRACTICE AND PROCEDURE - application for interlocutory injunction restraining the reproduction of plans and 3D images of portable homes products - where the applicant alleges the respondents copied the plans and 3D images in the portable homes products in infringement of the applicant's copyright - former employee's fiduciary and contractual…
Judge: Meagher J - 13 Dec 2024:
Maxim Media Inc. v Nuclear Enterprises Pty Ltd [2024] FCA 1443
INTELLECTUAL PROPERTY - application for interlocutory injunction on grounds of contravention of ss 18 and 29 of the Australian Consumer Law (Sch 2 to the Competition and Consumer Act 2010 (Cth)), passing off and infringement of a registered trade mark under s 120 of the Trade Marks Act 1995 (Cth) - consideration of relevant factors - prima facie…
Judge: Rofe J - 12 Dec 2024:
Cipla Australia Pty Ltd v Novo Nordisk A/S [2024] FCA 1414
PATENTS - patent for formulations of liraglutide - validity of extension of term of patent - where application for extension must concern a patent which discloses a 'pharmaceutical substance per se' under s 70 of the Patents Act 1990 - whether 'pharmaceutical substance' includes formulations of active ingredients and excipients - whether…
Judge: Perram J - 9 Dec 2024:
Directed Electronics OE Pty Ltd v Isuzu Australia Limited (No 3) [2024] FCA 1413
PRACTICE AND PROCEDURE - form of orders - failed interlocutory application to stay substantive proceeding COSTS - costs arising from failed interlocutory application seeking to stay substantive proceeding - whether costs should follow the event or be costs in the cause - whether conduct of the first respondent warrants the award of indemnity costs …
Judge: Rofe J - 6 Dec 2024:
Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCAFC 156
TRADE MARKS -- s 62(b) of the Trade Marks Act 1995 (Cth) - where an Examiner considered that a trade mark under examination was not inherently adapted to distinguish in respect of a certain class, and sought evidence or representations as to the trade mark applicant's prior use of the mark - where the representations as to prior use by the trade…
Judge: Katzmann, Wheelahan and Hespe JJ - 4 Dec 2024:
Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (Costs) [2024] FCAFC 155
PRACTICE AND PROCEDURE - application for leave to appeal from costs orders made by trial judge - where trial judge made costs orders which differed from those proposed by the parties - application refused
Judge: Perram, Downes and O'Sullivan JJ - 3 Dec 2024:
Roadshow Films Pty Limited v Telstra Limited [2024] FCA 1388
COPYRIGHT - whether site blocking orders should be made under s 115A of the Copyright Act 1968 (Cth) - Held: site blocking and related orders made
Judge: Cheeseman J - 22 Nov 2024:
Killer Queen, LLC v Taylor [2024] FCAFC 149
TRADE MARKS - infringement of registered trade mark established - where registered trade mark is a name - joint tortfeasance - principles discussed TRADE MARKS - specification of registered goods - meaning of "clothes" - role of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the…
Judge: Yates, Burley and Rofe JJ
Latest Speeches & Papers
- 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
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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.
