The Federal Court has published new Practice Notes for IP litigation in the Federal Court of Australia.

The new rules will have a significant impact on how IP disputes are run, including

  • Patent infringement and validity disputes;
  • Trade mark infringement and validity disputes; and
  • Copyright disputes.

The new rules reflect the Court’s recognition of the specialised and technical nature of IP disputes, and a desire to focus the issues in dispute early-on in the matter.

Our Intellectual Property team set out a summary of the updated Intellectual Practice Note (IP-1) below.

Discovery – it’s out of fashion

As has been the trend in recent years in the Federal Court, IP-1 confirms that orders for wide-ranging discovery are unlikely to be granted. If discovery is to be sought, then the parties are expected to seek narrow orders which are relevant to the key issues in dispute.

In respect of trade mark, copyright and industrial design matters, IP-1 notes that in most cases there will not be any need for discovery except where it directly relates to proof of copying, knowledge or intention by or on the part of the party alleged to have infringed, or other specific topics directly relevant to an issue in the proceeding.

Patent litigation

The changes to the patent litigation procedures are particularly significant. The Court has expressly noted that it does not wish for patent matters to become complicated by irrelevant issues or unnecessary evidence with respect to matters that are, or should be, agreed and which cannot be expected to influence the resolution of the real issues in dispute.

The parties to a dispute are expected by the Court to have an understanding of the particular provisions of the Patents Act that apply having regard to any applicable transitional provisions in the Patents Act or any amending Act (such as the recent changes brought in under the Raising the Bar amendments to the Act).

Some of the key changes include:

  • Primer: In some circumstances the Court may order that a primer be prepared in order to educate the Court on the relevant technical issues, and to place the Court in the position of the “person skilled in the art”, which is relevant to issues such as inventiveness in patent validity disputes.
  • Position statement to address infringement issues early-on: A party who alleges patent infringement may be required to provide a "Position Statement on Infringement" which concisely states the facts and matters relied upon in support of the infringement allegation, including by reference to the particular integers of any claim alleged to have been infringed. Similarly, a party defending an infringement claim will be required to put forward a statement showing the factual or legal basis for non-infringement. It is no longer acceptable to simply leave this to the Applicant to prove.
  • Description of product, method or process: The alleged infringer should provide a description of the allegedly infringing product or method to address the infringement allegations – in particular the presence or absence of an integer in each allegedly infringed claim. The statement must be verified by a person familiar with the relevant facts and that person may be later cross-examined at trial.
  • Reuse of experimental evidence: Previously, where it was necessary to prove a certain issue in dispute (such as patent infringement or validity), experimental evidence was required to be put forward – often at great expense. In order to reduce these costs, the Court is now willing to consider reusing evidence put forward in other disputes where they concerned the same subject matter.
  • Agreed statement or table: The Court may also require the parties to file an agreed statement or table that delineates the scope of the dispute with respect to the infringement and/or validity of the claims in issue, especially if there are a large number of such claims.

New case management rules

New guidance has also been provided in respect of case management hearings. Some of the new rules include:

  • If the matter concerns an appeal from a decision of the Registrar of Trade Marks or the Commissioner of Patents, the relevant decision should be filed and served seven days before the first case management hearing;
  • At the first case management hearing, the parties should address, and the Court will consider, the following:
    • whether all appropriate parties have been joined and whether any cross claim is to be made;
    • in patent matters whether a primer (discussed above) is required;
    • in trade mark matters, whether survey evidence is to be adduced; and
    • in copyright matters, whether subsistence and ownership are disputed.

Specialist judges

Federal Court judges at each State registry have now been allocated according to sub-category expertise (patents, trade marks or copyright and industrial designs). The list of such judges can be found here.