The Federal Court of Australia has recently released its new suite of practice notes, effective immediately, as part of its National Court Framework Reform initiative.
One of those practice notes is Intellectual Property Practice Note IP-1 (IP-1), which can be found here. Under the above initiative, National Practice Areas (NPAs) were created, one of which is Intellectual Property. The Intellectual Property NPA homepage can be found here.
IP-1 sets out quite detailed directions for the conduct of IP proceedings – particularly those relating to patents, trade marks (TM), designs and copyright. IP-1 also applies to proceedings commenced under the Circuit Layouts Act 1989, Plant Breeders’ Rights Act 1994 and Australian Grape and Wine Authority Act 2013. In certain circumstances it may also apply to proceedings under the Australian Consumer Law, and passing off proceedings.
Many of the measures in IP-1 will be familiar to IP litigants who have experienced the case management process in IP proceedings.
Although prior to issue of IP-1 there were IP panels of Federal Court judges across various Court registries, IP-1 and the new Framework formally accord certain judges the role of (among other things) Intellectual Property NPA Judge, and ascribe to them responsibility in various sub-areas of the IP NPA. Those sub-areas are Patents, Trade Marks, and Copyright & Industrial Design (and the list of judges can be found here.
The Court will endeavour to allocate an Intellectual Property NPA Judge to any IP matter at the time it is filed – even on urgent originating applications.
New case management procedures
- Filing and service 7 days prior to the first case management hearing of any registered IP right the subject of the proceeding, and any written decision from which the proceeding appeals (e.g. in appeals from Patent office proceedings)
- Parties must be ready to address the follow matters (among other things), at the first case management hearing:
- whether all appropriate parties have been joined
- whether the patentee intends to amend the patent
- how experts are introduced to the patent and the prior art
- whether a primer or tutorial explaining the technological field is warranted
- in trade mark proceedings, whether survey evidence is to be adduced
- in copyright proceedings, whether subsistence and/or ownership is in dispute
There is a particular focus in IP-1 on patent litigation procedures. We set out some of the key features below:
- The Court will now contemplate the use of experimental evidence from other Court proceedings to obviate the need to re-conduct effectively the same experiment for Australian proceedings relating to the same subject matter. This is intended to afford significant costs savings to patent litigants.
- The Court may order that a primer be prepared setting out the relevant scientific and technical background to the invention the subject of a patent in suit, and the agreed common general knowledge.
- The exchange of position statements setting out which claims are alleged to be infringed (in the patentee’s case) and whether infringement is denied and why (in the alleged infringer’s case).
- In infringement cases, the alleged infringer providing a description of the allegedly infringing product or method of sufficient detail to traverse the full range of alleged infringement. The statement must be verified by a person personally acquainted with the relevant facts, who may be cross-examined on the statement at trial.
- The joint preparation of a table setting out the full range of issues in dispute and how each party pleads, and the effect of a successful pleading, in respect of each issue (e.g. if claim 1 is found valid and infringed, how does this affect infringement claims in respect of each of the relevant dependent claims?)
- The parties must at the earliest opportunity early identification of priority date disputes, or of any reliance upon ‘secondary indicia’ of inventiveness.
- In infringement cases, the parties should consider the appointment of a Court expert, referee or assessor.
There are also suggestions regarding the conduct of TM, design and copyright matters, including a caution that extensive discovery is not likely to be granted.
Other topics covered in IP-1 include suggestions for the creative use of Alternative Dispute Resolution options, management of expert witnesses (including the preparation of joint reports and giving of concurrent evidence), survey evidence and case management hearings.
Other relevant practice notes
There are also practice notes relating specifically to survey evidence and expert evidence – each of which will likely be of interest and relevance to IP litigators.
To read more about the new practice notes click here.