More
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:
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: |
(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: |
|
Rules: |
|
Notes: |
|
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: |
|
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: |
|
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:
- 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
- 28 Jun 2024:
Vald Pty Ltd v KangaTech Pty Ltd (Costs) [2024] FCA 693
COSTS - where applicant achieved partial success in patent infringement proceeding - where applicant was successful in defending cross-claim alleging invalidity - where respondent advanced aspects of its invalidity case on premise that applicant's construction of claims was correct (which construction was not accepted) - where parties agreed that…
Judge: Downes J - 21 Jun 2024:
TMA Capital Australia Pty Ltd v UbiPark Pty Ltd [2024] FCAFC 85
PATENTS - patent for system, method and computer program for an access control system for controlling access to a restricted area (eg, a carpark) PATENTS - infringement - construction of integers of the claims - whether primary judge erred in finding that features in a claim were absent from the respondent's technology - whether the primary…
Judge: Nicholas, Rofe and O'Sullivan JJ - 18 Jun 2024:
Pfizer Ireland Pharmaceuticals v Samsung Bioepis AU Pty Ltd (No 4) [2024] FCA 678
PATENTS - discovery - whether "fishing" - excessive prior art permutations under s 7(3) of the Patents Act 1900 (Cth) - relevance of inventor's notes to inventive step - discovery not granted. PATENTS - discovery - best method under s 40(2) of the Patents Act 1900 (Cth) - discovery granted.
Judge: Burley J - 14 Jun 2024:
Elanco Australasia Pty Ltd v Abbey Laboratories Pty Ltd [2024] FCA 640
PATENTS - appeal from decisions of a Delegate of the Commissioner of Patents refusing grant of patent following amendment - patent for ectoparasitic treatment method and composition - validity - lack of inventive step - s 7(3) of the Patents Act 1990 (Cth) - appeal dismissed
Judge: Burley J - 12 Jun 2024:
Lian Fa International Dining Business Corporation v Mu (No 2) [2024] FCA 630
PRACTICE AND PROCEDURE - interlocutory application by the respondents for an adjournment of the trial dates - where the fifth application by the parties for an adjournment - application allowed
Judge: Raper J - 10 Jun 2024:
Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 4) [2024] FCA 607
PRACTICE AND PROCEDURE - Application to set aside order under r 39.05(f) of the Federal Court Rules 2011 - Where order entered in favour of the applicant - Where the applicant is no longer trading - Where the trademark is no longer registered - Where no benefit derived from the order - Where all parties consent to the orders proposed - Order set…
Judge: Meagher J - 7 Jun 2024:
Vitaco Health IP Pty Ltd v AFI Cosmetic Pty Ltd (No 3) [2024] FCA 598
PRACTICE AND PROCEDURE - application for default judgment pursuant to r 5.23(2)(c) and/or (d) of the Federal Court Rules 2011 (Cth) - where the respondents have failed to comply with court orders and failed to appear - allegations of trade mark infringement, misleading and deceptive conduct and passing off - where marks were used by respondents as …
Judge: Rofe J - 4 Jun 2024:
Cargill, Incorporated v Cargill Financial Services International Pty Ltd [2024] FCA 604
TRADE MARKS - infringement - Trade Marks Act 1995 (Cth) s 120 - use of name as a mark - use of deceptively similar mark - infringement established. TRADE MARKS - application for final relief - application for relief where respondents rogue agents - application to change name on ASIC register - application to change name on bank account -…
Judge: Burley J - 4 Jun 2024:
Transportable Shade Sheds Australia Pty Ltd v Aussie Shade Sheds Pty Ltd [2024] FCA 584
PRACTICE AND PROCEDURE - application for urgent interlocutory relief ex parte - circumstances when Court prepared to make ex parte order - need for disclosure of relevant facts - principles in Australian Broadcasting Corporation v O'Neill [2006] HCA 46; (2006) 227 CLR 57 discussed - prospective claim of infringement of intellectual property rights …
Judge: Collier J - 30 May 2024:
Fortescue Ltd v Element Zero Pty Ltd [2024] FCA 590
PRACTICE AND PROCEDURE - where the applicants had successfully applied for, and executed, Anton Piller search orders - where hearing was first return date after the execution of the search orders - where proceedings had, necessarily, been heavily suppressed prior to the execution of the search orders - where the respondents sought to keep the…
Judge: Logan J
Latest Speeches & Papers
- 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.
Subscribe
To stay up-to-date with news in the Federal Court, including developments in this NPA, subscribe to our email subscription services.
We provide subscriptions to the latest judgments and events (by NPA); Practice News to keep up-to-date with changes to practice and procedure; and Daily Court Listings.
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.