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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.

• 13 Mar 2025: Hugo Boss AG v Hardge (No 2) [2025] FCA 184
  PRACTICE AND PROCEDURE – costs – application for lump sum costs order – where order made for costs to be taxed – whether lump sum costs order could be made – whether to exercise discretion to make lump sum costs order – order for lump sum costs granted
  Judge: NESKOVCIN J
• 7 Feb 2025: Aristocrat Technologies Australia Pty Ltd v Light & Wonder, Inc. (No 2) [2025] FCA 64
  INTERLOCUTORY INJUNCTIONS – confidential information – serious question to be tried – undertakings not to disclose or use impugned devices given – whether additional mandatory orders affecting third parties warranted – whether joinder of third parties required – balance of convenience – additional orders refused.
  Judge: BURLEY J
• 27 Feb 2025: Crescent Capital Partners Management Pty Limited v Crescent Wealth Investments Australasia Pty Ltd [2025] FCA 133
  COSTS - where applicant has discontinued its claim and seeks an order that the respondents pay its costs of that claim on the bases of: (1) capitulation or surrender; (2) unreasonable conduct - assessment of capitulation or surrender to be undertaken on an objective basis by reference to the relief sought in the proceeding - no capitulation or…
  Judge: GOODMAN J
• 4 Feb 2025: The Pops Group Pty Ltd as trustee for The Pool Shops Trust v Pro Pool Services Pty Ltd [2025] FCA 136
  PRACTICE AND PROCEDURE - summary judgment - action for relief in respect of copyright infringement - judgment requires evaluative assessment of elements of respective marks - matter not suitable for summary judgment - application dismissed
  Judge: DERRINGTON J
• 14 Feb 2025: Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd [2025] FCAFC 12
  TRADE MARKS - validity - ownership - where primary judge found appellant (Cantarella) was not the owner of the ORO trade mark and ordered that registrations be cancelled pursuant to ss 88(1)(a) and 58 of the Trade Marks Act 1995 (Cth) ("the Act") - where primary judge found prior use of trade marks by third party (Molinari) - whether primary judge …
  Judge: NICHOLAS, JACKSON AND ROFE JJ
• 7 Feb 2025: Condari Pty Ltd v Haus Group Australia Pty Ltd [2025] FCA 65
  PRACTICE AND PROCEDURE - form of orders COSTS - costs arising from application to review the decision of a Registrar - where trial was vacated two weeks prior to its intended commencement - whether the conduct of the applicant warrants the award of indemnity costs - whether costs should be payable forthwith
  Judge: ROFE J
• 5 Feb 2025: Sun Pharma ANZ Pty Ltd v Otsuka Pharmaceutical Co Ltd [2025] FCA 44
  PATENTS - patent for controlled release aripiprazole formulations and methods for preparing and using such formulations - validity of extension of term of patent - validity of claims - whether pharmaceutical substance per se - whether pharmaceutical substance can include formulations - whether formulations can only include substances which have…
  Judge: DOWNES J
• 18 Dec 2024: Take-Two Interactive Software, Inc v Anderson (No 2) [2024] FCA 1459
  COPYRIGHT - circumvention devices - application by copyright owner under ss 116AN and 116AO of Copyright Act 1968 (Cth) ("the Act") - interpretation of relevant definitions in s 10(1) of the Act - "technological protection measure" - "access control technological protection measure" - "controls access" - whether device, product technology or…
  Judge: NICHOLAS J
• 31 Jan 2025: Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd (Costs) [2025] FCA 38
  COSTS -- where the applicants brought a claim of trade mark infringement against the respondent - where the respondent brought a cross-claim seeking the cancellation of the first applicant's registered trade mark - where both the applicants' claim and the respondent's cross-claim failed - where the cross-claim was only ever defensive - whether the …
  Judge: WHEELAHAN 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

• 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