Uniform Civil Procedure Rules 2005
Current version for 9 April 2020 to date (accessed 4 June 2020 at 06:26)
Part 48 Division 1
Division 1 Intellectual property cases generally
48.1   Application
(cf SCR Part 81, rule 1)
This Part applies to intellectual property cases in the Supreme Court.
48.2   Definitions
(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.
48.3   Expressions in this Part
(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.
48.4   Mode of commencement
(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.
48.9   Statement of facts
(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.