Patents and Associated Statutes Sub-area
About this Sub-area
- 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.
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 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.
- 13 Jan 2022:
Watson v Kriticos (Costs Payable Forthwith)  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  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  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  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  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  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  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  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)  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)  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.