Part 48 Matters arising under Commonwealth intellectual property legislation
Division 1 Intellectual property cases generally
(cf SCR Part 81, rule 1)
This Part applies to intellectual property cases in the Supreme Court.
(cf SCR Part 81, rule 2)
(1) In this Part:Commissioner means:
(a) in relation to proceedings under the Designs Act 2003 of the Commonwealth, the Registrar within the meaning of that Act, or(b) in relation to proceedings under the Patents Act 1990 of the Commonwealth, the Commissioner within the meaning of that Act, or(c) in relation to proceedings under the Trade Marks Act 1995 of the Commonwealth, the Registrar within the meaning of that Act.intellectual property Act means the Circuit Layouts Act 1989 of the Commonwealth, the Copyright Act 1968 of the Commonwealth, the Designs Act 2003 of the Commonwealth, the Patents Act 1990 of the Commonwealth or the Trade Marks Act 1995 of the Commonwealth.
intellectual property case means:
(a) any proceedings for infringement of EL rights subsisting under the Circuit Layouts Act 1989 of the Commonwealth, or(b) any proceedings for infringement of copyright under the Copyright Act 1968 of the Commonwealth, or(c) any proceedings for infringement of a monopoly in a design registered under the Designs Act 2003 of the Commonwealth, or(d) any proceedings for infringement of a patent granted under the Patents Act 1990 of the Commonwealth, or(e) any proceedings for infringement of a trade mark registered under the Trade Marks Act 1995 of the Commonwealth, or(f) any other proceedings under any of those Acts,whether or not the cause of action in those proceedings is joined with any other cause of action.(2) These rules apply to proceedings under the Patents Act 1990 of the Commonwealth as if a reference in that Act to an applicant were a reference to a plaintiff and as if a reference in that Act to a respondent were a reference to a defendant.
(cf SCR Part 81, rule 3)
(1) Unless the contrary intention appears, expressions used in this Part have the same meanings, in relation to proceedings taken under an intellectual property Act, as they have in that Act.(2) A reference in any of the intellectual property Acts to a counter-claim (sometimes spelled counterclaim) is taken to be a reference to a statement of cross-claim or cross-summons, as the case requires.Note. See rule 9.1 (3) as to the application of these rules to cross-claims and cross-summonses.
(cf SCR Part 81, rule 5)
The requirements of these rules for a statement of claim or summons do not apply to an application for an order under an intellectual property Act if the application is required to be and is made under that Act in a petition, counter-claim or other document.
48.5 Applications: service and date of hearing
(cf SCR Part 81, rule 9)
(1) Unless the Supreme Court otherwise orders, the summons by which an application under an intellectual property Act is made to the Court:(a) must be served on the Commissioner, and(b) must not be heard before 14 days after service on the parties and the Commissioner.(2) Unless the Supreme Court otherwise orders, where:(a) rule 48.11, 48.12, 48.13 or 48.14 applies to the proceedings, and(b) the proceedings are commenced by summons,the proceedings must not be heard before 14 days after the requirements as to service contained in the applicable rule have been complied with.
48.6 Mode of giving notice to Commissioner
(cf SCR Part 81, rule 10)
Notice of any application to the Supreme Court under an intellectual property Act is to be given to the Commissioner by serving on the Commissioner the originating process by which proceedings on the application are commenced.
48.7 Appearance of Commissioner
(cf SCR Part 81, rule 11)
(1) In an intellectual property case, the Commissioner:(a) may appear and be heard, and(b) may file a statement in writing signed by the Commissioner giving particulars of:(i) any proceedings before the Commissioner in relation to the matter in issue, and(ii) the grounds of a decision, determination or direction given or made by the Commissioner in respect of those proceedings, and(iii) the practice of the Commissioner’s Office in like cases,and, as soon as practicable, serve it on all active parties.(2) The Supreme Court may make such use of a statement filed under subrule (1) (b) as the Court thinks just.
48.8 Commissioner: notice of objection
(cf SCR Part 81, rule 12)
Unless the Supreme Court otherwise orders, if the Commissioner elects or is required by the Court to appear in proceedings before the Court, the Commissioner must give reasonable notice to all active parties:(a) of the grounds of any objection the Commissioner proposes to take, and(b) of any evidence the Commissioner proposes to place before the Court.
(cf SCR Part 81, rule 16)
(1) The Supreme Court may direct each party to lodge a statement of the facts alleged to establish infringement, validity and absence of infringement and validity.(2) Subrule (1) does not affect any requirement of an intellectual property Act or of these rules for the giving or delivery of particulars.
Division 2 The Patents Act 1990 of the Commonwealth
48.10 Amendment of patent etc: section 105
(cf SCR Part 81, rule 17)
(1) An application for an order under section 105 (1) of the Patents Act 1990 of the Commonwealth may not be made until after the applicant has given the Commissioner a notice of intention to apply, accompanied by an advertisement that states:(a) the identity of the proceedings in which the application will be made, and(b) the particulars of the amendment sought, and(c) the applicant’s address for service, and(d) that a person intending to oppose the application who is not a party to the proceedings must, not later than 28 days after publication of the advertisement, give written notice of that intention to the Commissioner and to the active parties.(2) Unless the Supreme Court otherwise orders, the Commissioner must publish the advertisement once in the Australian Official Journal of Patents referred to in section 222 of the Patents Act 1990 of the Commonwealth.Note. The Australian Official Journal of Patents is published by IP Australia (an agency of the Commonwealth Government).(3) A person who gives notice under subrule (1) (d) is entitled to be heard in opposition to the application, subject to any direction of the Supreme Court as to costs.(4) The application may be instituted by filing a notice of motion in the relevant proceedings no later than 50 days after the date of publication of the advertisement.(5) The notice of motion, together with a copy of the patent, patent request or complete specification, as appropriate, showing in ink of contrasting colour the amendment sought, must be served on the Commissioner, each active party and each person who has given notice under subrule (1) (d).(6) On the hearing of the motion, the Supreme Court may give such directions as it thinks fit for the conduct of proceedings on the motion, including any one or more of the following:(a) a direction requiring the applicant to give, to each party or other person opposing the application, a statement of the grounds relied on for the amendment,(b) a direction requiring a party or other person opposing the application to give to the applicant a statement of the grounds relied on in opposition to the amendment,(c) a direction determining that the motion will be heard with the relevant proceedings or separately and, if separately, fixing the date for hearing the motion,(d) a direction determining the manner in which evidence will be adduced and, in the case of evidence by affidavit, fixing the times within which the affidavits must be served.
48.11 Infringement proceedings: section 120 (1)
(cf SCR Part 81, rule 18)
(1) The originating process in proceedings under section 120 (1) of the Patents Act 1990 of the Commonwealth must be served:(a) on the defendant in the proceedings, and(b) if the plaintiff is an exclusive licensee, on the patentee, and(c) on the Commissioner.(2) If the application relates to an innovation patent, the originating process or its supporting affidavit must state the date when the innovation patent was granted under the Patents Act 1990 of the Commonwealth.(3) Particulars of infringements complained of:(a) must give at least one instance of each type of infringement alleged, and(b) in proceedings for infringement of a standard patent, must specify which of the claims of the complete specification of that patent are alleged to be infringed.(4) A defendant relying on a defence under section 144 (4) of the Patents Act 1990 of the Commonwealth must give particulars of:(a) the date of, and the parties to, a contract on which the defendant intends to rely for the defence, and(b) the provision of the contract that the defendant asserts is void.
48.12 Non-infringement declarations: section 125 (1)
(cf SCR Part 81, rule 19)
The originating process in proceedings under section 125 (1) of the Patents Act 1990 of the Commonwealth must be served:(a) on the nominated person, or the patentee, as the case requires, and(b) on the Commissioner.
48.13 Relief from unjustified threat: section 128 (1)
(cf SCR Part 81, rule 20)
The originating process in proceedings under section 128 (1) of the Patents Act 1990 of the Commonwealth must be served:(a) on the person making the threat, and(b) on the Commissioner.
48.14 Compulsory licences, revocation etc
(cf SCR Part 81, rule 21)
(1) The originating process in proceedings under section 133 (1), 134 (1) or 138 (1) of the Patents Act 1990 of the Commonwealth must be served:(a) on the patentee, and(b) as a further defendant—on any person who claims an interest in the patent as exclusive licensee, and(c) on the Commissioner.(2) A plaintiff in proceedings to which subrule (1) applies must comply with Chapter 12 of the Patents Regulations 1991 of the Commonwealth.(3) If an application under section 133 (1) or 138 (1) of the Patents Act 1990 of the Commonwealth relates to an innovation patent, the originating process or its supporting affidavit must state the date when the innovation patent was granted under that Act.(4) An application for leave under section 137 (4) of the Patents Act 1990 of the Commonwealth may be made by motion in the proceedings pending in the Supreme Court.
48.15 Particulars of invalidity
(cf SCR Part 81, rule 22)
(1) A party who disputes the validity of a patent must deliver, with the pleading or other document in which the party disputes the validity of registration, particulars of the grounds of invalidity on which the party relies.(2) If one of the grounds referred to in subrule (1) is that the invention is not a patentable invention because of information about the invention in a document or through the doing of an act, the particulars must specify:(a) in the case of a document, the time when, and the place where, the document is alleged to have become publicly available, and(b) in the case of an act:(i) the name of the person alleged to have done the act, and(ii) the period in which, and the place where, the act is alleged to have been done publicly, and(iii) a description that is sufficient to identify the act, and(iv) if the act relates to apparatus or machinery, whether the apparatus or machinery exists and, if so, where it can be inspected.(3) If:(a) one of the grounds referred to in subrule (1) is that the invention, so far as claimed in any claim of the complete specification of the patent, is not useful, and(b) it is intended, in connection with that ground, to rely on the fact that an example of the invention which is the subject of any such claim cannot be made to work, either at all or as described in the specification,the particulars must identify each such claim and state that fact and must include particulars of each such example, specifying the respect in which it is alleged that it does not work as described.(4) Except by leave of the Supreme Court, evidence is not admissible in proof of a ground of invalidity of which particulars have not been given.
(cf SCR Part 81, rule 23)
(1) The Supreme Court may give directions:(a) for the service on the other parties, by any party desiring to submit experimental proof, of particulars of the experiments proposed and of the facts which the party claims to be able to establish by the experiments, and(b) for the conduct of, and the persons who may attend, the experiments.(2) In any proceedings for infringement or the revocation of a patent, the Supreme Court may direct that evidence with respect to any experiment made is not admissible unless the experiment has been made substantially in accordance with directions given under subrule (1).
Division 3 The Trade Marks Act 1995 of the Commonwealth
48.17 Particulars of infringements
(cf SCR Part 81, rule 37)
Particulars of the infringements of a registered trade mark:(a) must specify the manner in which the trade mark is alleged to be infringed, and(b) must give at least one instance of each type of infringement alleged.
48.18 Counter-claim to proceedings for infringement
(cf SCR Part 81, rule 38)
(1) The defendant in any proceedings for infringement of a registered trade mark may apply by way of counter-claim for an order:(a) that the Register be rectified, or(b) directing the Registrar to remove the trade mark from the Register.(2) There must be delivered with the counter-claim particulars of the grounds on which the order is sought.
48.19 Judgment in absence of defendant
(cf SCR Part 81, rule 38B)
(1) Unless the Supreme Court otherwise orders, a judgment based on infringement of a trade mark may not be given or entered against a defendant in his or her absence unless the plaintiff files an affidavit that the proceedings are not in contravention of section 128 of the Trade Marks Act 1995 of the Commonwealth.(2) Unless the Supreme Court otherwise orders, a judgment based on section 129 of the Trade Marks Act 1995 of the Commonwealth may not be given or entered against a defendant in his or her absence unless the plaintiff files an affidavit that the proceedings are not in contravention of section 129 (5) of that Act.
48.20 Evidences for purposes of regulation 8.2 of the Trade Marks Regulations 1995
(cf SCR Part 81, rule 38C)
Unless the Supreme Court otherwise orders, the evidence in support of an application to which regulation 8.2 of the Trade Marks Regulations 1995 of the Commonwealth (which relates to certain applications for rectification of the Register) applies must include evidence sufficient to enable the Court to comply with the regulation.
Division 4 The Designs Act 2003 of the Commonwealth
48.21 Particulars of infringements
(cf SCR Part 81, rule 39)
Particulars of infringements of the monopoly in a registered design:(a) must specify the manner in which the design is alleged to be infringed, and(b) must give at least one instance of each type of infringement alleged.
48.22 Particulars of invalidity
(cf SCR Part 81, rule 40)
(1) A person who:(a) applies under section 93 of the Designs Act 2003 of the Commonwealth for the revocation of the registration of a design, or(b) applies under section 120 of that Act for the rectification of the Register, or(c) disputes, in any proceedings, the validity of a registered design,must, in the pleading or other document that disputes the validity of the registered design, give particulars of the grounds of invalidity on which the person relies.(2) If one of those grounds is previous publication or user, the particulars must state the time and place of the previous publication or user alleged, and, in the case of previous user, the particulars:(a) must specify the name of the person who is alleged to have made the previous user, and(b) must specify the period during which the previous user is alleged to have continued, and(c) must contain a description sufficient to identify the previous user.(3) Except by leave of the Supreme Court, evidence is not admissible in proof of a ground of invalidity of which particulars have not been given.(4) The Supreme Court may extend the time for delivering particulars under this rule and may allow particulars so delivered to be amended.
48.23 Application for compulsory licence: section 90
(cf Federal Court Rules, Order 58, rule 23)
An application for the grant of a compulsory licence under section 90 of the Designs Act 2003 of the Commonwealth must state the facts intended to be relied on to show that:(a) products embodying the design have not been made in Australia, to the extent that is reasonable in the circumstances of the case, and(b) the registered owner of the design has given no satisfactory reason for failing to exercise the exclusive rights in the design, and(c) the applicant has tried for a reasonable period, but without success, to obtain from the registered owner of the design an authorisation to do, on reasonable terms and conditions, any of the things mentioned in section 10 (1) (a)–(e) of that Act in relation to the design.
Division 5 The Circuit Layouts Act 1989 of the Commonwealth
48.24 Applications concerning infringement of EL rights
In proceedings for infringement of EL rights (within the meaning of the Circuit Layouts Act 1989 of the Commonwealth), particulars of the infringement must specify the manner in which it is alleged that the EL rights have been infringed and must give at least one instance of each type of infringement alleged.