Ben Coogan & Craig Sherritt

Federal Court of Australia – National Court Framework reforms. The IP Practice Note is a must read for IP lawyers and attorneys

Ben Coogan & Craig Sherritt

10 November 2016

Copyright Designs Patents Trade marks

On 25 October 2016, the Federal Court of Australia (FCA) published 26 new practice notes as part of the National Court Framework reforms.  Amongst these is the Intellectual Property Practice Note (IP-1) which establishes guidelines for all current and future Intellectual Property matters in the FCA.

The practice note updates and expands the previous practice note for Intellectual Property matters, which was published on 1 August 2011.  The previous practice note was limited to proceedings under the Patents Act 1990 (Cth) and described itself as deliberately not overly prescriptive.

The new practice note is substantially more extensive and applies to matters within the Intellectual Property National Practice Area including, inter alia:

  1. Patents;
  1. Trade marks;
  1. Copyright;
  1. Designs;
  1. Other proceedings relating to intellectual property (including those arising under other statutes, passing off or misleading or deceptive conduct).

IP-1 should be read in conjunction with the Central Practice Note (CPN-1) which was also published on 25 October 2016 as part of the suite of practice notes and sets out fundamental case management principles for all matters in the FCA.

To the extent practicable, it applies to proceedings whether filed before, or after, 25 October 2016.

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Central Practice Note (CPN-1)

CPN-1 provides an overview of key principals of case management which should be applied to all matters in the FCA, including guiding principles relating to:

  1. Commencing proceedings and allocation of cases;
  1. Hearings and urgent applications;
  1. Written submissions;
  1. Case management;
  1. Alternative dispute resolution;
  1. Requests for discovery, evidence and witnesses;
  1. Conduct of the parties and communications with the court; and
  1. Costs.

CPN-1 applies to all matters in the Federal Court and should be read together with the practice notes applicable to each National Practice Area.  A link to CPN-1 can be found here.

Intellectual Property Practice Note (IP-1)

IP-1 addresses procedural matters specific to proceedings in the Intellectual Property National Practice Area.  Some examples of the type of topics the practice note deals with include:

  1. General guidance on the process required for making urgent originating applications and interlocutory applications;
  1. Commencing proceedings and the need to identify any material specific to the matter (for example, patents, registrations, applications etc.) that will need to be filed prior to the first case management hearing. The practice note also guides parties where it might be appropriate to make a request for the proceedings to be expedited;
  1. Guidance on documents that the parties should provide to assist the court (particularly in complex scientific or technical intellectual property proceedings). Where there is substantial technical background to the issues in dispute, the parties should produce an agreed primer to assist the court.  A primer provides a clear non-contentious technical background to the dispute.  In many cases, it may also assist the court to be provided with an agreed matrix that succinctly describes the scope of the issues in dispute and the position of the parties in relation to each issue (this is similar to a Scott Schedule which is commonly used in other areas of litigation).
  1. Guidance on alternative dispute resolution options.
  1. Guidance on evidentiary matters (for example, how expert evidence may be dealt with).
  1. The pre-trial case management hearing and issues that parties should be prepared to deal with.

A link to IP-1 can be found here.

Intellectual Property matters can regularly involve complex issues that require the parties, and the court, to immediately acquire technical knowledge in relation to the issues in dispute.  However, this can cause unnecessary conduct and disputes by the parties over peripheral matters.  Of course, the new suite of practice notes do not provide steadfast rules for litigation in the FCA and they are designed to be applied flexibly depending on the particular characteristics of the dispute.  The purpose of IP-1, and the entirety of the practice notes, is to streamline proceedings in the FCA by avoiding wasteful procedural steps and unnecessary disputes between the parties.

It would be prudent for all IP litigators, attorneys and their clients in the Intellectual Property National Practice Area to consider how CPN-1 and IP-1 apply to their circumstances.  We believe that the practice notes provide useful advice on the procedural steps of advancing litigation in the FCA.