Patents and Associated Statutes Sub-area NPA logo with link NPA logo with link

Patents and Associated Statutes Sub-area

About this Sub-area

The Patents and Associated Statues Sub-area consists of:

  • 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
  • appeals from the Commissioner of Patents.

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.

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 Sub-area 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).

1.  Commencing Patents and Associated Statutes Sub-area proceedings

A party may apply to dispute the validity of a patent under the Patents Act 1990 (Cth). The main grounds upon which the Court can revoke a patent are as follows:

  • The invention is not a patentable invention
  • The patent was obtained by fraud, false suggestion or misrepresentation
  • The patent does not comply with the requirements of s 40 of the Patents Act
  • The patent holder does not have a legal entitlement to the patent.
Forms:
Rules:

2.  Applications under the Plant Breeder's Rights Act 1994

A claim for infringement of plant breeder's rights under the Plant Breeder's Act 1994 (Cth) may be commenced in the Federal Court by filing:

Forms:
Rules:

3.  Appeals from the Commissioner of Patents

A party who wants to appeal from a decision of the Commissioner of Patents must within 21 days of the date of the decision, file a Notice of appeal, which must include:

  • the date of the decision
  • whether the appeal is from the whole or a part of the decision and if only from a part of the decision, details of the part
  • order(s) sought
  • grounds relied on in support of each order sought.
Forms:
  • Form 92 – Notice of appeal (intellectual property)
Rules:

For further procedural and case management information you should refer to the Central Practice Note and the Intellectual Property Practice Note.

Latest Judgments

  • 13 Jan 2022: Watson v Kriticos (Costs Payable Forthwith) [2022] FCA 4
    COSTS - costs thrown away - application to dispense with Federal Court Rules 2011 (Cth) r 40.13
    Judge: Perram J
  • 16 Dec 2021: Airco Fasteners Pty Ltd v Commissioner of Patents [2021] FCA 1594
    PRACTICE AND PROCEDURE - notice to produce - legal professional privilege - whether privilege has been waived - whether conduct of second respondents is consistent with the maintenance of the privilege
    Judge: Rofe J
  • 16 Dec 2021: Biogen International GmbH v Pharmacor Pty Ltd [2021] FCA 1591
    PRACTICE AND PROCEDURE - patents - interlocutory injunction application - prima facie case - validity of patents - extension of patent term - balance of convenience - quantification of potential loss and damage - application refused
    Judge: Rofe J
  • 8 Dec 2021: Repipe Pty Ltd v Commissioner of Patents [2021] FCAFC 223
    PATENTS - manner of manufacture under s 18(1A) of Patents Act 1990 (Cth) - computer-implemented inventions - application for leave to appeal from decisions and orders of primary judge dismissing appeal against revocation of innovation patents - where invention involved use of GPS-enabled mobile devices for dealing with risk management information… 164 IPR 1
    Judge: Perram, Nicholas and Burley JJ
  • 8 Dec 2021: Vehicle Monitoring Systems Pty Ltd v SARB Management Group Pty Ltd [2021] FCAFC 224
    PATENTS - application for leave to appeal from a judgment of a single Judge of the Court - opposition to the grant of a standard patent - vehicle detection system - entitlement to the grant of a patent - whether the managing director of the applicant is a joint inventor - discussion of the notion of the "inventive concept" as applied to…
    Judge: Nicholas, Yates and O'Bryan JJ
  • 25 Nov 2021: Boehringer Ingelheim Animal Health USA Inc v Elanco New Zealand [2021] FCA 1457
    INTELLECTUAL PROPERTY -- appeal under s 104(7) of Patents Act 1990 (Cth) from orders made by delegate of Commissioner of Patents allowing amendments to Patent Application -- where respondent filed Patent Application for anti-infective formulation to prevent or ameliorate mammary gland infections including mastitis -- where application disclosed… 164 IPR 17
    Judge: Besanko J
  • 23 Nov 2021: Redbubble Ltd v Hells Angels Motorcycle Corporation (Australia) Pty Limited [2021] FCA 1467
    APPEAL AND NEW TRIAL - exercise of the power under s 25(2B)(b) of the Federal Court of Australia Act 1976 (Cth) by a single Judge to dispose of an appeal by consent - preconditions to the exercise of the power - requisite level of satisfaction of existence of appellable error in the primary judgment - whether the Court must be satisfied as to the… 163 IPR 491
    Judge: McKerracher J
  • 19 Nov 2021: Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202
    PATENTS - manner of manufacture - electronic gaming machines ('EGMs') - innovation patent for EGMs and methods for providing feature games - application for leave to appeal from decision of primary judge concluding claims were to a manner of manufacture within the meaning of s 18 of Patents Act 1990 (Cth) - patentability of 'computer-implemented… 163 IPR 231
    Judge: Middleton, Perram and Nicholas JJ
  • 18 Nov 2021: Pfizer Ireland Pharmaceuticals v Samsung Bioepis AU Pty Ltd (No 3) [2021] FCA 1428
    PRACTICE AND PROCEDURE - application for preliminary discovery pursuant to r 7.23 of the Federal Court Rules 2011 (Cth) ('FCR') - where prospective applicants previously satisfied the Court that it reasonably believed it may have a right to relief from the prospective respondent with respect to patent infringement - documents produced - where…
    Judge: Burley J
  • 1 Nov 2021: Cytec Industries Inc. v Nalco Company (No 3) [2021] FCA 1332
    COSTS - where appellant succeeded in its opposition to the grant of patent application - where not all grounds of appeal successful - where grace period argument raised late - respondent to pay 70% of appellant's costs
    Judge: Burley J

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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.

NPA Judges

National Coordinating Judges

  • Greenwood J
  • Nicholas J
  • Yates J
  • Burley J
NPA Judges

Urgent Applications