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 Dec 2024:
Abbey Laboratories Pty Ltd v Virbac (Australia) Pty Ltd [2024] FCA 1488
PATENTS - application for an interlocutory injunction by patent holder - where generic recently launched - where patent holder is claiming for infringement - where patent alleged to be invalid - whether balance of convenience favours the grant of an injunction - where there has been substantial delay on the part of the patent holder - where…
Judge: Jackman J - 12 Dec 2024:
Cipla Australia Pty Ltd v Novo Nordisk A/S [2024] FCA 1414
PATENTS - patent for formulations of liraglutide - validity of extension of term of patent - where application for extension must concern a patent which discloses a 'pharmaceutical substance per se' under s 70 of the Patents Act 1990 - whether 'pharmaceutical substance' includes formulations of active ingredients and excipients - whether…
Judge: Perram J - 4 Dec 2024:
Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (Costs) [2024] FCAFC 155
PRACTICE AND PROCEDURE - application for leave to appeal from costs orders made by trial judge - where trial judge made costs orders which differed from those proposed by the parties - application refused
Judge: Perram, Downes and O'Sullivan JJ - 19 Nov 2024:
EIS GmbH v LELO Oceania Pty Ltd (Expert Evidence) [2024] FCA 1334
PATENTS - invalidity - affidavits of witness filed by party which do not comply with rule 23.13 Federal Court Rules 2011 (Cth) - affidavits sought to be relied upon as expert evidence in invalidity case for purposes of having witness participate in expert conclaves to be held in next fortnight - independence of witness challenged - both parties…
Judge: Downes J - 15 Nov 2024:
Cytec Industries Inc. v Nalco Company (No 4) [2024] FCA 1318
PATENTS - application to amend patent application following determination of appeal under s 60(4) of the Patents Act 1990 (Cth) - whether proposed amendments allowable under s 102 of the Patents Act - application refused PATENTS - whether proposed amendments overcome deficiencies identified on appeal from opposition proceedings - lack of support - …
Judge: Burley J - 15 Nov 2024:
Zoetis Services LLC v Boehringer Ingelheim Animal Health USA Inc [2024] FCAFC 145
PATENTS - patents for supernatant vaccine against diseases affecting pigs PATENTS - validity - best method - where antigen concentrations of vaccine disclosed as a range - whether antigen concentrations material to the advantages claimed of the invention - consideration of Firebelt Pty Ltd v Brambles Australia Ltd [2000] FCA 1689; 51 IPR 531 -…
Judge: Perram, Nicholas and Downes JJ - 13 Nov 2024:
Novartis AG v Pharmacor Pty Limited (No 3) [2024] FCA 1307
PATENTS - infringement - standard patent for a pharmaceutical composition containing certain active pharmaceutical ingredients (APIs) - claim construction - whether claim covers a pharmaceutical composition where the API is in the form of a complex in which the ions are associated by non-covalent bonds PATENTS - identity of the person skilled in…
Judge: Yates J - 30 Oct 2024:
Otsuka Pharmaceutical Co., Ltd v Generic Health Pty Ltd (No 5) [2024] FCA 1268
PRACTICE AND PROCEDURE - application for stay of hearing regarding adoption of a Referee's report pending relevant decision of the High Court of Australia - granting of the stay not favoured by the balance of convenience - stay declined
Judge: Burley J - 23 Oct 2024:
Sandoz AG v Bayer Intellectual Property GmbH [2024] FCAFC 135
PATENTS - whether skilled person could be reasonably expected to have ascertained international patent publication - where patent database would have been one of the databases searched by person skilled in the art - where expert provided with search results which formed a subset of larger set of search results which would have been derived from…
Judge: Yates, Burley and Downes JJ - 14 Oct 2024:
Nutrafruit Pty Ltd v Fivefifty5 Super Foods Pty Ltd [2024] FCA 1218
PRACTICE AND PROCEDURE - leave to withdraw an admission - where first to third respondents admitted that there have been at least 15,000 Queen Garnet trees on relevant property - where precise number of trees remains an issue in the proceedings - where no prejudice to the applicant
Judge: Jackman J
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