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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
- 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 - 19 Nov 2024:
EIS GmbH v LELO Oceania Pty Ltd (Expert Evidence) [2024] FCA 1334
PATENTS - invalidity - affidavits of witness filed by party which do not comply with rule 23.13 Federal Court Rules 2011 (Cth) - affidavits sought to be relied upon as expert evidence in invalidity case for purposes of having witness participate in expert conclaves to be held in next fortnight - independence of witness challenged - both parties…
Judge: Downes J - 19 Nov 2024:
Hugo Boss AG v Hardge [2024] FCA 1325
PRACTICE AND PROCEDURE - application for default judgment pursuant to r 5.23(2)(c) of the Federal Court Rules 2011 (Cth) - where substituted service orders made - where respondent in default of appearance - allegations of trade mark infringement, misleading and deceptive conduct and passing off - whether the applicant is entitled to relief -…
Judge: Neskovcin J - 15 Nov 2024:
Cytec Industries Inc. v Nalco Company (No 4) [2024] FCA 1318
PATENTS - application to amend patent application following determination of appeal under s 60(4) of the Patents Act 1990 (Cth) - whether proposed amendments allowable under s 102 of the Patents Act - application refused PATENTS - whether proposed amendments overcome deficiencies identified on appeal from opposition proceedings - lack of support - …
Judge: Burley J - 15 Nov 2024:
Zoetis Services LLC v Boehringer Ingelheim Animal Health USA Inc [2024] FCAFC 145
PATENTS - patents for supernatant vaccine against diseases affecting pigs PATENTS - validity - best method - where antigen concentrations of vaccine disclosed as a range - whether antigen concentrations material to the advantages claimed of the invention - consideration of Firebelt Pty Ltd v Brambles Australia Ltd [2000] FCA 1689; 51 IPR 531 -…
Judge: Perram, Nicholas and Downes JJ - 13 Nov 2024:
Novartis AG v Pharmacor Pty Limited (No 3) [2024] FCA 1307
PATENTS - infringement - standard patent for a pharmaceutical composition containing certain active pharmaceutical ingredients (APIs) - claim construction - whether claim covers a pharmaceutical composition where the API is in the form of a complex in which the ions are associated by non-covalent bonds PATENTS - identity of the person skilled in…
Judge: Yates J - 12 Nov 2024:
The Practice Pty Ltd v The Practice Business Advisers & Tax Practitioners Pty Ltd [2024] FCA 1299
TRADE MARKS - infringement claim pursuant to s 120 of the Trade Marks Act 1995 (Cth) (the Act) - whether the respondent used the plain word mark THE PRACTICE as a trade mark - whether the respondent's marks are substantially identical with, or deceptively similar to, the applicant's mark - defence under s 122(1)(b)(i) of the Act - whether the…
Judge: O'Callaghan J - 7 Nov 2024:
Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277
TRADE MARKS -- shape marks - where the first applicant is the registered owner of a trade mark constituted by the shape of a cylindrical container with a stopper in Class 30 over coffee and instant coffee (the KDE shape mark) - where the respondent (Cantarella) released a 400-gram instant coffee product under its brand name "Vittoria" in a…
Judge: Wheelahan J - 31 Oct 2024:
Global Retail Brands Australia Pty Ltd v Bed Bath 'N' Table Pty Ltd [2024] FCAFC 139
CONSUMER LAW - misleading or deceptive conduct - where, by its use of trade mark "HOUSE BED & BATH" (appellant's mark) in relation to soft homewares in a market in which respondent's trade mark "BED BATH 'N' TABLE" (respondent's mark) has a significant reputation, appellant found to have contravened ss 18(1) and 29(1)(g) and (h) of Australian…
Judge: Nicholas, Katzmann and Downes JJ - 30 Oct 2024:
Otsuka Pharmaceutical Co., Ltd v Generic Health Pty Ltd (No 5) [2024] FCA 1268
PRACTICE AND PROCEDURE - application for stay of hearing regarding adoption of a Referee's report pending relevant decision of the High Court of Australia - granting of the stay not favoured by the balance of convenience - stay declined
Judge: Burley J
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
- 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.
