Patents and Associated Statutes Sub-area
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.
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 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.
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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:
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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.
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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.
Latest Judgments
- 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 - 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 - 23 May 2024:
ToolGen Incorporated v Fisher (No 3) [2024] FCA 539
PATENTS - application to amend claims following determination of appeal under s 60(4) of the Patents Act 1990 (Cth) ("the Act") - whether proposed amendments allowable under s 102 of the Act - correction of obvious mistake - discretion Held: order made pursuant to s 105(1A) of the Act
Judge: Nicholas J - 10 May 2024:
Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd (No 6) [2024] FCA 480
PATENTS - appropriate form of declaration of infringement - amendment of claim for additional damages - whether outside terms of leave previously granted - whether costs relating to preparation of written evidence should be reduced - whether such costs unreasonably or unnecessarily incurred
Judge: Nicholas J - 3 May 2024:
Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 11) [2024] FCA 456
COSTS - where question of costs remitted to the trial judge by the Full Court - whether, as a result of the Full Court's decision, existing costs orders should be varied - where appeal was on limited grounds and appeal was allowed - where the respondents made offers in accordance with the principles in Calderbank v Calderbank [1975] 3 ALL ER 333 - …
Judge: Besanko J - 1 May 2024:
SARB Management Group Pty Ltd trading as Database Consultants Australia v Vehicle Monitoring Systems Pty Limited (No 2) [2024] FCAFC 53
PATENTS - form of orders following hearing of appeal -whether injunctions granted by trial judge should be set aside - utility of injunctions - patents lapsed on day of hearing of appeal - application for extension of time filed to pay renewal fees - impact on final orders - whether costs should be awarded against litigation funder - orders in…
Judge: Burley, Jackson and Downes JJ
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