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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.

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

Forms:
Rules:
Notes:
  • In addition to any material required to be filed by the Federal Court Rules, and at least 7 days prior to the first case management hearing (or earlier if the docket judge so requires), copies of the following documents should be filed and served:
      • any patent upon which the applicant sues
      • any trade mark registration or certificate of registered design upon which the applicant sues
      • any patent application which is the subject of the appeal
      • any application for a registered trade mark or application for a registered design that is the subject of the appeal
      • any written record of the decision (including any reasons) the subject of the appeal.

(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.

Forms:
  • Form 92 - Notice of appeal (intellectual property)
Rules:
Notes:
  • For a Notice of appeal, the party bringing the appeal should be referred to as the "applicant" and the other party should be referred to as the "respondent"
  • A Notice of appeal must also be served on the Commissioner of Patents.

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:

Forms:
Rules:

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:

Forms:
  • Form 94 – Originating application for determination of equitable remuneration under s 20(2) of the Circuits Layouts Act 1989
Rules:

(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:

Forms:
  • Form 95 – Originating application for determination of the terms of the doing of an act under section 25(4) of the Circuits Layouts Act 1989
Rules:

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:

Latest Judgments

  • 18 May 2022: Boehringer Ingelheim Animal Health USA Inc. v Intervet International B.V. [2022] FCAFC 88
    PATENTS - where leave to appeal sought against primary judge's decision dismissing appeal from decision of delegate of the Commissioner of Patents rejecting opposition to patent application on ground that the invention as claimed did not involve an inventive step - whether primary judge erred in assessment of expert evidence - whether primary…
    Judge: Perram, Nicholas and Burley JJ
  • 16 May 2022: Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2022] FCA 540
    PATENTS - where invention claimed is a safety system for protecting against the hazard of drill rod failure - construction of patent - meaning of "anchor member" - meaning of "a proximal end region of the bore adjacent to a rock-face - whether third respondent's provision of the safety system product was for "experimental purposes" and therefore…
    Judge: Rofe J
  • 13 May 2022: Vald Performance Pty Ltd v Kangatech Pty Ltd (No 4) [2022] FCA 557
    INTELLECTUAL PROPERTY - consideration of an application to amend particulars of invalidity - consideration of the approach in determining whether the claims defining the invention are supported by matter disclosed in the specification for the purposes of s 40(3) of the Patents Act 1990 (Cth)
    Judge: Greenwood J
  • 11 May 2022: Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (Further Conduct of Proceedings) (No 2) [2022] FCA 543
    PRACTICE AND PROCEDURE - where parties unable to agree on a short minute of order - where timetable for the future conduct of proceedings.
    Judge: Perram J
  • 9 May 2022: Vector Corrosion Technologies Limited v E-Chem Technologies Ltd [2022] FCA 519
    COSTS -- application for indemnity costs in two related proceedings -- where case which proceeded to final judgment was weak but arguable -- where applicant unreasonably rejected settlement offer in discontinued proceedings -- costs ordered on indemnity basis from date of settlement offers in discontinued proceeding
    Judge: Jagot J
  • 9 May 2022: GME Pty Ltd v Uniden Australia Pty Ltd [2022] FCA 520
    INTELLECTUAL PROPERTY - registered designs - threatened infringement of applicant's registered design for a microphone - consideration of factors relevant - consideration of the prior art base - whether respondent's product is substantially similar in overall impression to the registered design - infringement established
    Judge: Burley J
  • 5 May 2022: Illinois Tool Works Inc v Airco Fasteners Pty Ltd [2022] FCA 495
    PATENTS - where invention claimed is a fuel cell for use in a combustion tool - construction of patent - meaning of "close proximity" - meaning of "opposite" - whether respondent infringed patent in suit - held: respondent's products infringed the patent PATENTS - application for extension of time in which to file an appeal against decision of…
    Judge: Rofe J
  • 4 May 2022: Hood v Down Under Enterprises International Pty Limited [2022] FCAFC 69
    PATENTS - alleged infringement by supply of products - s 117 of the Patents Act 1990 (Cth) - staple commercial product - whether essential oil derived from the shrub Kunzea ambigua was a staple commercial product - where the primary judge found that the oil was a staple commercial product - whether the primary judge erred in so finding - held: no…
    Judge: Yates, Moshinsky and Rofe JJ
  • 29 Apr 2022: Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd [2022] FCA 445
    PRACTICE AND PROCEDURE -- Interlocutory application by respondents in NSD 1089 of 2016 (2016 Proceeding) for stay of 2016 Proceeding pending determination of liability in NSD 1040 of 2019 (2019 Proceeding) -- where applicants successful in establishing infringement of claims of Patent in 2016 Proceeding, appeal rights exhausted by respondents and…
    Judge: Besanko J
  • 29 Apr 2022: Rakman International Pty Limited v Trafalgar Group Pty Ltd [2022] FCA 464
    PATENTS - innovation patent - infringement alleged under s 117(1) of the Patents Act 1990 (Cth) (Patents Act) -whether instructions given for the use of a firestopping device in conformity with the claims of the patent - whether infringement established, assuming the claims in suit to be valid PATENTS - innovation patent - infringement - whether,…
    Judge: Yates J

Latest Speeches & Papers

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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.

NPA Judges

National Coordinating Judges

  • Greenwood J
  • Nicholas J
  • Yates J
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