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:
- 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.
- 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 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:
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.
- 18 May 2022:
Boehringer Ingelheim Animal Health USA Inc. v Intervet International B.V.  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  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)  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)  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  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  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  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  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  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  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
- 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.
- 23 Oct 2014:
Random observations of a Southern Judge or what does sports law have in common with patent law?
Presented at the IPSANZ Dinner, Brisbane.
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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.