As part of the National Court Framework (NCF), the Chief Justice of the Federal Court yesterday issued new Practice Notes for the Federal Court of Australia. These 26 Practice Notes provide updated guidelines for how Federal Court cases are to be conducted and apply to all cases currently on foot.

Set out below are some of the key implications for cases which involve intellectual property law matters in view of the application of the new Central Practice Note (CPN-1) and the updated Intellectual Property Practice Note (IP-1).

Central Practice Note: National Court Framework and Case Management

CPN-1 contains details of how National Practice Areas will be managed under the national framework. In particular, it elaborates on:

  • case allocation principles upon initial filing;
  • the parties’ conduct and communications with the court;
  • the procedures and principles guiding case management hearings and pre-trial case management hearings;
  • Alternative Dispute Resolution;
  • the submission and receipt of urgent applications; and
  • the overarching purpose of proceedings.

CPN-1 now includes case management imperatives to be considered by the parties during preparation for a case management hearing. CPN-1 also provides guidance on evidence and witnesses generally and any further interlocutory steps that may be taken in proceedings. Discovery is also now dealt with in CPN-1, rather than as a separate practice note. Other matters addressed in CPN-1 include:

  • an outline of the procedural steps involved when expedited proceedings are requested (formerly known as ‘Fast Track’);
  • use of technology in ensuring that there is efficient case management; and
  • who to contact in the case of reserved judgements.

Intellectual Property Practice Note

The updated IP-1 is much more detailed than the previous 1 August 2011 version. The updated version specifically outlines which matters fall within the Intellectual Property National Practice Areas and refines and elaborates on principles with respect to general case management in the IP area. Some matters addressed in the previous 1 August 2011 version of this Practice Note have been moved to other Practice Notes, such as the new Expert Evidence Practice Note and CPN-1 (see above).

Notably, IP-1 provides protocols for specific steps in Court proceedings. For example IP-1 now provides for:

  • the filing and service of specified documents (such as the relevant patent, trade mark, design and/or decision), by the Applicant for the first case management hearing;
  • what matters are to be considered at the first case management hearing and the requisite readiness of each party’s legal representatives to assist the Court;
  • what should have been discussed, considered and where possible agreed between the parties prior to a pre-trial case management meeting and what is to be included on the Joint-Exhibit List;
  • for patent cases, details of documents that the court can ask parties to produce during the course of proceedings and rationales for these documents. In cases where validity is in contention, IP-1 outlines a number of requirements that parties must comply with in Court proceedings, for example, informing the Court at an early stage of the proceeding whether there is any dispute in relation to the priority date of any claim and informing the Court if the patentee seeks to rely upon “secondary indicia” of inventiveness;
  • principles to guide the provision of expert evidence and survey evidence;
  • steps to be taken when considering and prior to filing an interlocutory application and;
  • the ability of the Court to, at any stage of proceedings, refer a matter to mediation for resolution of the entire proceeding or particular issues.