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
- 12 Apr 2024:
Aristocrat Technologies Australia Pty Limited v Commissioner of Patents (No 4) [2024] FCA 362
COSTS - revision of costs order of the first instance proceedings in light of remittal decision - discretion as to costs - costs to follow the event
Judge: Burley J - 12 Apr 2024:
Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd (No 5) [2024] FCA 360
PATENTS - claims for methods of treatment and Swiss-style claims - methods of treatment for primary insomnia characterised by non-restorative sleep and for improving restorative quality of sleep - construction of claims - meaning of non-restorative sleep - meaning of characterised by non-restorative sleep - meaning of restorative quality of sleep…
Judge: Nicholas J - 9 Apr 2024:
Hanwha Solutions Corporation v REC Solar Pte Ltd (No 2) [2024] FCA 336
COSTS - discretion as to costs - whether to treat infringement claim and validity cross-claim as separate events - where infringement claim failed and cross-claim partially successful - discount for alternative and unnecessary defences to infringement. COSTS - apportionment of costs - where three separate proceedings heard together and two…
Judge: Burley J - 5 Apr 2024:
Vald Pty Ltd v KangaTech Pty Ltd (No 5) [2024] FCA 333
PATENTS - patent for apparatus for use in assessing the strength of at least one knee flexor muscle of a subject - claim construction - patent for method of assessing strength of at least one knee flexor muscle using an apparatus - infringement - validity PATENTS - claim construction - whether results obtained from use of apparatus and method must …
Judge: Downes J - 26 Mar 2024:
Boehringer Ingelheim Animal Health USA Inc v Zoetis Services LLC (No 2) [2024] FCA 291
PATENTS - three patent applications on appeal from a decision of a delegate of the Commissioner of Patents - validity of dependent claims after findings in Boehringer Ingelheim Animal Health USA Inc v Zoetis Services LLC [2023] FCA 1119 that certain independent claims were invalid - lack of inventive step - lack of disclosure and support - whether …
Judge: Rofe J - 19 Mar 2024:
MMD Australia Pty Ltd v Camco Engineering Pty Ltd [2024] FCAFC 38
PATENTS - construction of patent - invention of tooth construction for a mineral sizer - meaning of "front cover which is weldingly secured to and seated in face to face contact with the front face of the support body" - where primary judge rejected claim because, inter alia, "face to face contact" requires physical contact over most of two faces
Judge: Yates, Burley and Jackman JJ - 11 Mar 2024:
Stasiuk v Monster Energy Au Pty Ltd (No 2) [2024] FCA 237
PRACTICE AND PROCEDURE - application for order dismissing proceeding on account of applicant's non-compliance with orders - where applicant resident outside Australia - where continuing non-compliance with orders not explained Held: self-executing order for dismissal pursuant to r 5.21 of the Federal Court Rules 2011 (Cth) made
Judge: Nicholas J - 8 Mar 2024:
Aristocrat Technologies Australia Pty Limited v Commissioner of Patents (No 3) [2024] FCA 212
PATENTS - operation of 23(2)(a) of the Judiciary Act 1903 (Cth) - split decision of the High Court of Australia - where decision of the Full Court of the Federal Court of Australia affirmed - approach to be taken by single judge on remitter - whether Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 has a ratio…
Judge: Burley J - 6 Mar 2024:
Allied Pumps Pty Ltd v LAA Industries Pty Ltd (No 2) [2024] FCA 188
COSTS - whether global costs order should be made - whether issues-based costs order should be made - whether costs order in favour of successful party should be discounted
Judge: Downes J - 20 Feb 2024:
Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd (No 6) [2024] FCA 101
PRACTICE AND PROCEDURE -- Interlocutory application by respondents for stay pending determination of the appeal in NSD 968 of 2022 -- where previous application for a stay of this proceeding refused (Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd [2022] FCA 445) -- whether changes in circumstances since last application support a…
Judge: Besanko J
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