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.

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 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.

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:

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.

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

• Patents Act 1990 (Cth)
• Plant Breeder's Rights Act 1994 (Cth)
• Australian Grape and Wine Authority Act 2013 (Cth)
• Evidence Act 1995 (Cth)

• 1 Oct 2024: Dei Gratia Pty Ltd v Commissioner of Patents [2024] FCA 1145
  PATENTS - a logistics facility and related systems and methods for the provision of goods or services to an end user - network of modified local outlets - manner of manufacture - s 18(a) of the Patents Act 1990 (Cth) - computer-implemented scheme - patentability of a computer-implemented scheme - use of computers for their well-known purpose -…
  Judge: Rofe J
• 19 Sep 2024: Samsung Bioepis AU Pty Ltd v Janssen Biotech, Inc. (Costs) [2024] FCA 1099
  COSTS - consent to surrender of innovation patents and discontinuance of proceedings nearly three months before trial - whether costs should be ordered on indemnity basis - application refused PRACTICE AND PROCEDURE - circumstances where short form reasons are appropriate
  Judge: Downes J
• 11 Sep 2024: Stasiuk v Monster Energy Au Pty Ltd (No 3) [2024] FCA 1052
  COSTS - application for award of costs in a lump sum, including indemnity costs - whether costs should be awarded on an indemnity basis following offers of settlement - whether costs should be awarded in a lump sum - whether costs should be awarded for enforcement of costs order in foreign jurisdiction Held: costs awarded in a lump sum including…
  Judge: Nicholas J
• 30 Aug 2024: Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2024] FCA 987
  PATENTS - application for leave to appeal under s 158(2) of the Patents Act 1990 (Cth) - appeal from remitted decision flowing from High Court equally divided opinion - application of s 23(2)(a) of the Judiciary Act 1903 (Cth) - where proposed grounds of appeal arguable and issues sought to be raised are novel
  Judge: O'Bryan J
• 14 Aug 2024: Rakman International Pty Limited v Boss Fire & Safety Pty Ltd (No 3) [2024] FCA 914
  COSTS - remitted question as to what, if any, discount should be made in respect of the costs awarded to the respondents/cross-claimant who were unsuccessful on some issues but ultimately successful in the proceeding
  Judge: Yates J
• 17 Jul 2024: Glass Hardware Australia Pty Ltd v TCT Group Pty Ltd [2024] FCAFC 95
  PATENTS - innovation patent relating to hinges - infringement - validity - whether primary judge erred in the proper construction of the invention disclosed PATENTS - validity - lack of clear and complete description - classical sufficiency - "relevant range" - s 40(2)(a) of the Patents Act 1990 (Cth) - whether primary judge erred in finding…
  Judge: Yates, Charlesworth and Rofe JJ
• 3 Jul 2024: EIS GmbH v LELO Oceania Pty Ltd (Evidence of Experiments) [2024] FCA 713
  PRACTICE AND PROCEDURE - patent infringement proceedings - application for leave to rely upon evidence of the conduct and results of experiments performed on devices without compliance with rule 34.50(1) Federal Court Rules 2011 (Cth) - leave sought pursuant to rule 34.50(2) Federal Court Rules 2011 (Cth) - explanation provided for failure to…
  Judge: Downes J
• 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