Practice Note for Proceedings under the Patents Act – Effective 1 July 2010!

The Chief Justice of the Federal Court has issued a new Practice Note which applies to Federal Court proceedings under the Patents Act 1990.  The Practice Note is to be applied flexibly to promote the efficient identification of issues and improve facilitation in the trial process.  It commences on 1 July 2010.  Click here for a copy.

The Practice Note outlines the following “General Procedures” which “practitioners can expect will be adopted”:

  • The parties should be in a position to explain the issues in the proceeding on the first return date, including whether infringement is disputed.
  • After filing particulars of invalidity, the party seeking revocation must be able to explain how each ground of invalidity is supported.
  • The particulars of invalidity should include details of the passages of any prior art relied on for novelty.
  • The Court will enquire, before the filing of evidence, whether expert evidence will be required, whether a single expert is appropriate for all or any part of the evidence, whether any evidence can be given orally or by standard texts and the appropriate method for giving evidence (for example, whether expert evidence is required and whether it is appropriate for meetings between experts to narrow the issues in dispute).
  • Before any order for discovery is made, the parties must confer to discuss the issues to be addressed by discovery, the nature of documents sought and whether evidence should precede discovery.
  • If the parties have not satisfactorily narrowed the issues in dispute, they may be referred to procedural alternative dispute resolution.
  • A case management conference will be convened to resolve discovery issues.
  • Any special matters, such as an intention to amend the patent, should also be raised at the earliest possible time. 

The Note also provides that the Patents List Judge may require the parties to amend their pleadings to only include the issues which are in dispute.  Further, the parties may be required to reduce to writing the issues in dispute and non-controversial matters, outstanding pre-trial issues, the issues which are to be addressed by each witness and the mechanism by which evidence will be adduced, the likely time which will be required for the hearing, and details of any matters which are likely to attract a cost order.

It is important to be aware of these general procedures which will be adopted by the Federal Court from 1 July 2010.  It will also be interesting to observe the effect which the Practice Note has on the efficiency of pre-trial case management, and particularly, whether the Court’s approach to discovery improves the efficient conduct of patent matters.

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