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Enforcement through the courts
What level of expertise can a patent owner expect from the courts?
A patent owner can expect a high level of expertise from the Federal Court, particularly as most judges have experience as IP barristers. Where a judge lacks the relevant technical experience, he or she can engage independent experts.
Are cases decided by one judge, a panel of judges or a jury?
First-instance cases are decided by a single judge. In appeal proceedings, a panel of three judges will usually hear the case; however, this panel may be increased up to seven judges for sensitive or complex cases.
If jury trials do exist, what is the process for deciding whether a case should be put to a jury?
Jury trials do not exist for IP cases in Australia.
What role can and do expert witnesses play in proceedings?
Usually, each party will select independent experts to provide written and/or oral evidence to the court. This evidence can include insight as to the common general knowledge in the art, as well as explanations of technical features. The evidence provided by each expert is available for cross-examination and experts commonly attend court proceedings.
Where experts offer conflicting views, the court may also engage its own independent expert.
Does your jurisdiction apply a doctrine of equivalents and, if so, how?
The doctrine of equivalents does not apply in Australia.
Is it possible to obtain preliminary injunctions? If so, under what circumstances?
Preliminary injunctions may be granted where a judge is convinced that there is a sufficiently strong prima facie case. The decision to grant an injunction will take into account the balance of convenience between all parties.
How are issues around infringement and validity treated in your jurisdiction?
Where both infringement and validity proceedings have been commenced in respect of the same patent, the court will normally hear the cases together as part of the same action.
Will courts consider decisions in cases involving similar issues from other jurisdictions?
The court will consider decisions from foreign jurisdictions. However, these considerations are not binding or indicative of how the court will rule.
Damages and remedies
Can the successful party obtain costs from the losing party?
A successful party may obtain recovery of a significant portion of its legal costs from the losing party; however, the quantum of costs awarded is determined by the court on a case-by-case basis.
What are the typical remedies granted to a successful plaintiff?
Typical remedies include injunctions, damages or an account of profits and orders for destruction or delivery up of the infringing goods.
How are damages awards calculated? Are punitive damages available?
The plaintiff may choose either damages (compensating losses resulting from the infringement) or an account of profits (recovering profits made by the infringing party resulting from the infringement). The relief granted aims to restore the parties to the position they would have been in had the infringing conduct not taken place.
Punitive damages are available, but are rarely awarded. Punitive damages have been awarded in certain circumstances for flagrant infringement and conduct.
How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?
The court has the power to grant permanent injunctions in favour of the successful applicant. An order permanently restraining the respondent from doing or engaging in the impugned act or acts will be made by the judge if the applicant has established infringement (and any revocation action is unsuccessful). Such orders will not be made until after the matter has proceeded to a final hearing or been determined by way of an application for summary judgment.
Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?
Parties can generally expect to wait from about four months following the final hearing before the court will publish its reasons for judgment. Decisions on matters heard on an urgent basis (eg, in applications for urgent interlocutory relief) may be published earlier. However, in the absence of compelling reasons before the court, there is no formal process by which parties can expedite the delivery of judgment.
How much should a litigant plan to pay to take a case through to a first-instance decision?
The costs of litigation vary depending on the number of patents in suit and the complexity of the case. Other factors affecting costs include the selection of counsel (senior counsel, junior counsel or both) and expert witnesses. Litigants can expect costs to vary widely, from about US$80,000 to more than US$1 million.
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