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.
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:
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.
- 29 May 2023:
Firstmac Limited v Zip Co Limited  FCA 540
TRADE MARKS - infringement claim pursuant to s 120 of the Trade Marks Act 1995 (Cth) - whether the infringing marks are substantially identical with, or deceptively similar to, the applicant's mark - defence under s 122(1)(f) and (fa) of the Act - whether respondents would obtain registration of the infringing marks if they were to apply for it on …
Judge: Markovic J
- 26 May 2023:
Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Final Orders)  FCA 546
PRACTICE AND PROCEDURE - formulation of orders to give effect to the reasons for judgment in Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Liability)  FCA 1585
Judge: Perram J
- 26 May 2023:
Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Redaction of Judgment)  FCA 545
PRACTICE AND PROCEDURE - redactions to be applied to reasons for judgment in Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Liability)  FCA 1585
Judge: Perram J
- 26 May 2023:
Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd (No 4)  FCA 517
PRACTICE AND PROCEDURE --- application for freezing orders against respondents to a proceeding for patent infringement and a third party --- third party holds security interests over intellectual property assets of first respondent and member of same group of companies as respondents --- liability previously determined in favour of applicant…
Judge: Besanko J
- 23 May 2023:
The Noco Company v Hong Kong Haowei Technology Co., Ltd.  FCA 533
PRACTICE AND PROCEDURE - service out of the jurisdiction - substituted service - where the respondents are registered in Hong Kong and China - where the applicant claims that the respondents are infringing its Australian patents by conduct in Australia and seeks injunctive relief - where the applicant contends that it is not practicable to serve…
Judge: Moshinsky J
- 18 May 2023:
Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods  FCA 487
TRADE MARKS - appeal from decision of a delegate of the Registrar of Trade Marks refusing registration application - whether use of mark sought to be registered would be likely to mislead or deceive - whether registered mark registered in respect of closely related goods - whether use of mark sought to be registered would contravene the Australian …
Judge: Kennett J
- 17 May 2023:
The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd  FCA 482
TRADE MARKS - alleged infringement under s 120(1) of the Trade Marks Act 1995 (Cth) - registered composite and logo marks - whether words used in website URLs and social media handles used as trade marks - whether regard may be had to the context in which the allegedly infringing mark is used - whether descriptiveness of registered mark relevant…
Judge: Jackman J
- 16 May 2023:
Globaltech Corporation Pty Ltd v Reflex Instruments Asia Pacific Pty Ltd (No 2)  FCA 476
PRACTICE AND PROCEDURE - whether stay of costs judgment should be granted pending determination of appeal - whether there should be a set-off of such costs order against costs order made in other proceedings between the same parties - whether stay should be granted in aid of appeal or rights of set-off Held: enforcement of costs order stayed until …
Judge: Nicholas J
- 16 May 2023:
Hardingham v RP Data Pty Limited (Third Party Costs)  FCA 480
COSTS - application for costs order against third party litigation funder - where funded applicants brought unsuccessful proceedings - where litigation funder stood to receive financial benefit from the fruits of the litigation - cost orders made against litigation funder
Judge: Thawley J
- 15 May 2023:
Commonwealth Scientific and Industrial Research Organisation v Urrbrae Foods Pty Ltd  FCA 504
PRACTICE AND PROCEDURE - preliminary discovery - pre-action production of samples - where the prospective applicant sought production of samples for testing to assist it in deciding whether to commence a proceeding to obtain relief from the prospective respondent - whether the Court has power to make an order for production of samples for testing…
Judge: Moshinsky J
Latest Speeches & Papers
- 24 Sep 2021:
The prior use defence and exhaustion doctrine in intellectual property law
Presented virtually at the launch event of issue 44(2) of the University of New South Wales Law Journal by Justice Rares.
- 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.