{"id":117688,"date":"2025-11-10T09:39:08","date_gmt":"2025-11-10T09:39:08","guid":{"rendered":"https:\/\/my.legal500.com\/guides\/?post_type=comparative_guide&#038;p=117688"},"modified":"2025-11-10T09:53:57","modified_gmt":"2025-11-10T09:53:57","slug":"australia-patent-litigation","status":"publish","type":"comparative_guide","link":"https:\/\/my.legal500.com\/guides\/chapter\/australia-patent-litigation\/","title":{"rendered":"Australia: Patent Litigation"},"content":{"rendered":"","protected":false},"template":"","class_list":["post-117688","comparative_guide","type-comparative_guide","status-publish","hentry","guides-patent-litigation","jurisdictions-australia"],"acf":[],"appp":{"post_list":{"below_title":"<div class=\"guide-author-details\"><span class=\"guide-author\">Gilbert + Tobin<\/span><span class=\"guide-author-logo\"><img src=\"https:\/\/my.legal500.com\/guides\/wp-content\/uploads\/sites\/1\/2019\/03\/G_T_Logo_RGB_Positive_Stacked_NoPadding.png\"\/><\/span><\/div>"},"post_detail":{"above_title":"<div class=\"guide-author-details\"><span class=\"guide-author\">Gilbert + Tobin<\/span><span class=\"guide-author-logo\"><img src=\"https:\/\/my.legal500.com\/guides\/wp-content\/uploads\/sites\/1\/2019\/03\/G_T_Logo_RGB_Positive_Stacked_NoPadding.png\"\/><\/span><\/div>","below_title":"<span class=\"guide-intro\">This country specific Q&amp;A provides an overview of Patent Litigation laws and regulations applicable in Australia<\/span><div class=\"guide-content\"><div class=\"filter\">\r\n\r\n\t\t\t\t<input type=\"text\" placeholder=\"Search questions and answers...\" class=\"filter-container__search-field\">\r\n\t\t\t<\/div>\r\n\r\n\t\t\t\r\n\r\n\r\n\t\t\t<ol class=\"custom-counter\">\r\n\r\n\t\t\t\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What is the forum for the conduct of patent litigation?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The Federal Court of Australia (\u201cFederal Court\u201d) and the state\/territory Supreme Courts have jurisdiction to preside over patent cases.<\/p>\n<p>Patent infringement and post-grant revocation actions are typically commenced in the Federal Court. The Federal Court has an Intellectual Property National Practice Area which consists of three sub-areas, one of which is the \u2018Patents and Associated Statutes\u2019 sub-area, with specialist judges who preside over patent cases. Proceedings in the Federal Court at first instance are usually decided by a single judge, without a jury.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What is the typical timeline and form of first instance patent litigation proceedings?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>In Australia, issues of infringement and patent validity are usually heard before and separately from issues of monetary relief.<\/p>\n<p>Patent proceedings, like other proceedings, move through a number of pre-trial steps (such as discovery and evidence exchange) before the final trial. Parties to patent proceedings are expected to adhere to the Federal Court\u2019s \u201cIntellectual Property Practice Note (IP-1)\u201d and \u201cIntellectual Property Practice Note \u2013 Standard Directions for Australian Patent Proceedings (IP-2)\u201d (\u201cStandard Directions\u201d). The practice notes provide for a number of steps that are unique to patent cases, such as the exchange of a \u201cPosition Statement on Infringement\u201d (stating the facts and matters relied upon by the applicant and the respondent to support or answer the infringement allegations,) and a \u201cproduct description and\/or process description\u201d by the alleged infringer.<\/p>\n<p>While claim construction issues can be heard before and separately from all other issues, similar to a Markman hearing in the US, these types of hearings are rare, and issues of claim construction are usually heard and determined together with all other issues of infringement and validity.<\/p>\n<p>The Standard Directions provide that the trial in patent proceedings should take place within twelve to eighteen months after the first case management hearing. Depending on the complexity of the proceedings, a patent trial can run for anywhere between five and twenty days. A decision can be expected within nine to twelve months, although longer time periods may arise in complex cases.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Can interim and final decisions in patent cases be appealed?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>An interim, or interlocutory, decision of the Federal Court can only be appealed by leave of the Court. An application for leave of the Court can be made orally to the judge who delivered the relevant decision or made the relevant order at the time these are pronounced, or by filing a written application within 14 days of the decision being made, to be determined either via a hearing or on the papers.<\/p>\n<p>First instance decisions from a single judge of the Federal Court can be appealed to the Full Court of the Federal Court (\u201cFull Court\u201d), with the Full Court bench made up of\u00a0three or five judges from those within the Intellectual Property National Practice Area. From the Full Court, there is another tier of appeal to the High Court of Australia, which is Australia\u2019s highest appellate court. Appeal to the High Court is not a right; special leave to appeal is required.<\/p>\n<p>Appeals to the Full Court and the High Court are usually heard within four to nine months, although the time taken for issuing a decision varies.<\/p>\n<p>For an appeal to succeed, a party must convince the court that the judge who heard the original case (or the Full Court, if appealing to the High Court) made an error of law and that the error was of such significance that the decision should be overturned.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Which acts constitute direct patent infringement?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>An Australian patent will be directly infringed if a person, without authorisation, exercises any of the exclusive rights conferred on a patentee in the patent territory. Where the invention is a product, there will be direct infringement if a person makes, hires, sells or otherwise disposes of the product, offers to make, sell, hire or otherwise dispose of it, uses or imports it, or keeps it for the purpose of doing any of those things. Where the invention is a method or process, there will be direct infringement if a person uses the method or process or does any of the acts mentioned above in respect of a product resulting from use of the claimed method or process.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Do the concepts of indirect patent infringement or contributory infringement exist? If so, what are the elements of such forms of infringement?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>A party may be liable for indirect or contributory infringement of a patent in Australia in the following circumstances.<\/p>\n<p>The patentee&#8217;s monopoly includes the exclusive right to authorise another person to exploit the invention (section 13 of the Patents Act 1990 (Cth) (\u201cPatents Act\u201d)). It is an infringement for a person to authorise, without the patentee&#8217;s permission, another person to exploit the invention. A person &#8220;authorises&#8221; another person if it &#8220;sanctions, approves or countenances&#8221; the other person&#8217;s infringement.<\/p>\n<p>The Patents Act (section 117) provides that if the use of a product by a person would constitute an infringement, then the supply of that product by one person to another is an infringement of the patent by the supplier, unless the supplier is the patentee or a licensee.<\/p>\n<p>A person can be liable as a joint tortfeasor if it procures, induces or incites another person to infringe, or joins in a common design with another person to infringe.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">How is the scope of protection of patent claims construed?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Australian courts adopt a purposive construction that asks what the skilled addressee would understand, having regard to the common general knowledge at the priority date.<\/p>\n<p>There is no separate doctrine of equivalents in Australia. Similarly, the doctrine of prosecution history (or file wrapper) estoppel is not currently applied in Australia.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What are the key defences to patent infringement?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>A respondent to a claim of patent infringement can respond that it does not infringe the patent either because its product or process does not fall within the scope of the claims or because its conduct does not amount to infringement. In any proceedings for patent infringement, a respondent can also cross claim for revocation of the patent.<\/p>\n<p>The Patents Act also provides for a number of specific defences, including:<\/p>\n<ul>\n<li>Prior use by the respondent (section 119).<\/li>\n<li>Acts connected with obtaining regulatory approval (sections 119A and 119B).<\/li>\n<li>Acts done for experimental purposes (section 119C).<\/li>\n<li>Use of the patented invention in or on a foreign vessel, aircraft or vehicle (section 118).<\/li>\n<\/ul>\n<p>Where the claim of patent infringement relates to a patented product, a respondent may also be able to argue that there has been an exhaustion of patent rights (that is, where a patented product has been sold without any conditions, then the patentee\u2019s rights in respect of that particular product are exhausted upon first sale).<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What are the key grounds of patent invalidity?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The validity of a patent may be challenged on the following grounds:<\/p>\n<ul>\n<li>The patentee is not entitled to the patent.<\/li>\n<li>The invention is not a patentable invention for any of the following reasons:<\/li>\n<\/ul>\n<p>o lack of patentable subject matter (manner of manufacture);<\/p>\n<p>o lack of novelty;<\/p>\n<p>o for a standard patent, lack of inventive step (obviousness);<\/p>\n<p>o for an innovation patent, lack of innovative step;<\/p>\n<p>o lack of utility; and<\/p>\n<p>o prior secret use.<\/p>\n<ul>\n<li>The patent was obtained by fraud, false suggestion or misrepresentation.<\/li>\n<li>The specification does not comply with sections 40(2) and\/or 40(3) of the Patents Act, including for any of the following reasons:<\/li>\n<\/ul>\n<p>o insufficiency (lack of full description);<\/p>\n<p>o non-disclosure of best method;<\/p>\n<p>o lack of clarity;<\/p>\n<p>o lack of succinctness; and<\/p>\n<p>o lack of support for the claims (or lack of fair basis in the case of patents granted on applications filed before 15 April 2013 and for which examination had been requested before that date).<\/p>\n<p>An innovation patent is a second-tier patent, similar to a utility model in other jurisdictions (innovation patents are currently being phased out, with no new innovation patent applications filed after 25 August 2021). Innovation patents have a shorter patent term (eight years, compared to 20 years for a standard patent), which is adequate for many technologies. Innovation patents confer the same exclusive rights as standard patents, and the remedies for infringement are also the same (that is, injunction and monetary relief).<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">How is prior art considered in the context of an invalidity action?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>There is a distinction in Australia between the prior art bases used for assessing novelty and those used for assessing inventive step.<\/p>\n<p>For assessing novelty, the prior art base includes any information made publicly available anywhere in the world before the priority date, whether in a document or by doing an act. It also includes certain later published Australian patent specifications on a \u201cwhole of contents\u201d basis. \u201cMosaicing\u201d of prior art documents or prior art acts is only allowed where the documents or acts are related such that the skilled addressee would treat them as a single source of information.<\/p>\n<p>For assessing inventive step, the prior art base includes the common general knowledge as it existed before the priority date and additional prior art information that the skilled addressee could, before the priority date, be reasonably expected to have ascertained, understood and regarded as relevant.<\/p>\n<p>In assessing the prior art base, there are a number of grace period provisions in the Patents Act which may preclude public disclosures made by, or derived from, the patentee in the twelve month period before the filing of the complete patent application.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Can a patentee seek to amend a patent that is in the midst of patent litigation?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>A patentee can seek to amend a patent during proceedings by making an application to the court for an order that the patent be amended (section 105 of the Patents Act).<\/p>\n<p>Section 102 of the Patents Act sets out certain types of amendments that are not allowable, including an amendment that would result in the specification claiming or disclosing matter extending beyond that disclosed in the complete specification as filed.<\/p>\n<p>The patentee must persuade the court to exercise its discretion to order the amendment of the patent. The court\u2019s discretion to order the amendment must be exercised in light of all relevant matters. The court considers the patentee&#8217;s conduct and whether there are any circumstances that can lead to refusal of the amendments (e.g., has the patentee sought amendment promptly and without unreasonable delay).<\/p>\n<p>Prior to the court considering whether to grant the amendment, the Commissioner of Patents is notified, and the proposed amendment is advertised in the Official Journal, providing an opportunity for any third party to oppose the amendment. The amendment may also be opposed by any other party to the proceedings.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is some form of patent term extension available?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The term of a patent relating to pharmaceutical substances per se can be extended for up to five years if regulatory approval was not obtained until at least five years after the date of the patent.<\/p>\n<p>Challenging the validity of such extensions of time has, in recent years, become a significant strategy for generic pharmaceutical companies to avoid patent infringement.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">How are technical matters considered in patent litigation proceedings?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Expert witness evidence is used in the Federal Court for the purpose of assisting the court to understand complex subject matter by the giving of independent and objective opinions. Experts are almost always appointed by the parties. However, they are expected to be independent and owe duties to the court (\u201cExpert Evidence Practice Note (GPN-EXPT)\u201d). The Federal Court can appoint its own expert or assessor (technical assistant), although these powers have been rarely used.<\/p>\n<p>The court will give more or less weight to expert evidence, depending on its credibility and relevance.<\/p>\n<p>In summary, the process for expert witness evidence is:<\/p>\n<ul>\n<li>a party decides that, given the nature of the subject matter, the court would be assisted by the opinion of an expert witness;<\/li>\n<li>the expert prepares a written report, which is filed with the court;<\/li>\n<li>where the court requires, the experts appointed by each party will meet and confer on an agreed set of topics and produce a Joint Expert Report, which sets out areas of agreement and\/or disagreement between them;<\/li>\n<li>during trial, each expert will provide oral evidence, which may be by way of cross-examination or concurrently.<\/li>\n<\/ul>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is some form of discovery\/disclosure and\/or court-mandated evidence seizure\/protection (e.g. saisie-contrefa\u00e7on) available, either before the commencement of or during patent litigation proceedings?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><h4>Pre-trial Discovery<\/h4>\n<p>Pre-trial discovery is permitted by order of the Federal Court and is known as \u201cpreliminary discovery\u201d. Preliminary discovery is an order requiring a prospective respondent to give discovery of documents that are directly relevant to whether the prospective applicant has a claim against the prospective respondent. To obtain preliminary discovery, the prospective applicant must show that after making reasonable enquiries, they do not have sufficient information to decide whether to commence a proceeding and they reasonably believe that they may have a right to relief. Preliminary discovery has become a very important strategy for patentees to\u00a0use where they cannot identify the integers of a product\/process from the public domain.<\/p>\n<h4>Other Mechanisms<\/h4>\n<p>Other mechanisms include:<\/p>\n<ul>\n<li>Search orders (Anton Piller orders). A search order requires the respondent to permit persons to enter its premises for the purpose of securing the preservation of evidence that may be relevant to an issue in the proceeding (or prospective proceeding).<\/li>\n<li>Inspection orders. These are orders to inspect, sample, observe or conduct an experiment on any document or item.<\/li>\n<li>Interrogatories. These are orders requiring another party to provide written answers to questions, verified on affidavit.<\/li>\n<li>Notices to admit facts or documents. A party can require another party to admit the truth of any fact or the authenticity of any document.<\/li>\n<li>Notice to produce. A notice to produce is a request for the inspection of any document or item.<\/li>\n<li>Subpoenas. Subpoenas require attendance in court to give evidence and\/or produce any document or item.<\/li>\n<\/ul>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Are there procedures available which would assist a patentee to determine infringement of a process patent?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Preliminary discovery (outlined above) can be utilised by a patentee to determine if a prospective respondent is infringing.<\/p>\n<p>Once proceedings have commenced, a number of the mechanisms outlined above, such as interrogatories, notices to produce, notices to admit, as well as standard discovery, can be utilised. Additionally, as discussed above, the alleged infringer may be required to provide a responsive position statement on infringement and\/or a \u201cproduct description and\/or process description\u201d.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Are there established mechanisms to protect confidential information required to be disclosed\/exchanged in the course of patent litigation (e.g. confidentiality clubs)?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The Federal Court will often make orders requiring that certain materials (including evidence, documents produced, parts of judgments) be kept confidential and only available to certain persons or classes of persons (e.g. the parties\u2019 legal advisers, experts retained in the proceedings, and the principal instructing in-house counsel).<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is there a system of post-grant opposition proceedings? If so, how does this system interact with the patent litigation system?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>While Australia has a pre-grant opposition procedure which is administered by IP Australia (incorporating the Australian Patent Office), there is no post-grant opposition procedure.<\/p>\n<p>Re-examination of a patent can be requested by a third party or commenced by the Australian Patent Office at any time post-grant. Where litigation is subsequently\u00a0commenced in relation to the patent the subject of re-examination, the Australian Patent Office cannot take any steps to revoke or amend the patent while the litigation is proceeding.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">To what extent are decisions from other fora\/jurisdictions relevant or influential, and if so, are there any particularly influential fora\/jurisdictions?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Foreign patent decisions are not binding in Australia but can be persuasive, especially where there is no Australian authority or where analogous statutory concepts are in play. As Australia is a common law jurisdiction, decisions from other common law jurisdictions such as the United Kingdom, Canada and New Zealand are generally given more consideration. US decisions may be cited for comparative analysis, but differences in statutory text and doctrine limit their influence.<\/p>\n<p>Following the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, which commenced in part on 15 April 2013, Australian requirements for support and sufficiency were deliberately aligned with UK law. As the Explanatory Memorandum states, the reforms aimed to raise patent quality and harmonise tests with major trading partners such as the UK, US, Japan and Canada. This convergence means that UK and EPO jurisprudence may take on a greater level of significance and persuasive value where provisions share materially similar language and structure.<\/p>\n<p>It is possible under Australian law to admit a foreign judgment as evidence in Australia. Ultimately though, Australian courts apply the Patents Act by reference to its own text, context and purpose.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">How does a court determine whether it has jurisdiction to hear a patent action?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Australian courts will hear disputes concerning Australian patents. This is because Australian courts have traditionally treated patents as analogous to immovable property, and rights beyond Australia are beyond the jurisdiction of the court.<\/p>\n<p>However, where the dispute does not directly require the court to rule on the validity or infringement of a foreign patent, but instead concerns an obligation personal to the parties, such as a contractual or equitable duty involving those patent rights, the matter may be justiciable.<\/p>\n<p>In Australia, a court will only seek to restrain proceedings in another forum through the grant of an anti-suit injunction if foreign proceedings interfere with (or threaten to interfere with) ongoing domestic litigation, or where parallel proceedings are vexatious or oppressive. Such injunctions are an exercise of the court\u2019s inherent and equitable jurisdiction, designed to protect the integrity of its own processes and to prevent injustice: it is not a comment on the competence of the foreign court.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What are the options for alternative dispute resolution (ADR) in patent cases? Are they commonly used? Are there any mandatory ADR provisions in patent cases?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Under the Federal Court\u2019s legislation and rules, parties are required to consider the use of alternative dispute resolution (ADR) at an early stage of the litigation process. This reflects the Court\u2019s policy objective of encouraging efficient and cost-effective resolution of disputes wherever possible.<\/p>\n<p>ADR can be initiated in several ways. The Court itself may order mediation, either on its own initiative or at the request of a party. Alternatively, parties may arrange private mediation outside the formal court process. In some matters, the entire patent dispute may be referred to ADR early in proceedings; in others, ADR is used selectively to manage particular interlocutory disputes, such as those relating to discovery obligations or the assessment of costs. Registrars of the Court may also act as mediators in such circumstances.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What are the key procedural steps that must be satisfied before a patent action can be commenced? Are there any limitation periods for commencing an action?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Proceedings for infringement or revocation begin with the filing of an originating application specifying the relief sought. This is usually accompanied by a statement of claim or affidavit outlining the factual and legal basis of the claim. Once the application and supporting documents have been filed, they must be formally served on the respondent in accordance with the Federal Court Rules.<\/p>\n<p>There is also a framework under the Federal Court Rules to facilitate and encourage settlement of the dispute prior to commencing proceedings.<\/p>\n<p>Patent infringement proceedings must be commenced within the later of three years from the grant of the relevant patent or six years from the date of the alleged infringement.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Which parties have standing to bring a patent infringement action? Under which circumstances will a patent licensee have standing to bring an action?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Pursuant to the Patents Act, the parties with standing to bring a patent infringement action in Australia are the patentee and an exclusive licensee.<\/p>\n<p>The patentee, as the registered owner of the patent, always has standing to enforce its rights through infringement proceedings. In addition, an exclusive licensee may also commence proceedings in its own right, so long as the licence granted is to exploit the patented invention to the exclusion of all others, including the patentee.<\/p>\n<p>A licence that leaves the patentee free to exploit the invention alongside the licensee, or one that does not confer a genuine right of exploitation, will not qualify as an exclusive licence and therefore does not confer standing on the licensee to sue.<\/p>\n<p>Where an exclusive licensee brings proceedings, the Patents Act mandates that the patentee must be joined as a defendant unless joined as a plaintiff.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Who has standing to bring an invalidity action against a patent? Is any particular connection to the patentee or patent required?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Any person has standing to bring an action seeking revocation of a patent in Australia. Unlike infringement proceedings, there is no requirement for the applicant to demonstrate a specific legal or commercial connection to the patentee or the patent.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Are interim injunctions available in patent litigation proceedings?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Interlocutory injunctions (temporary injunctions preserving the status quo until substantive resolution of the proceedings) are available in Australian patent litigation, but are not frequently awarded.<\/p>\n<p>In deciding whether to grant an interlocutory injunction, the court applies a two-limb test. First, the patentee (or exclusive licensee) must establish a prima facie case, often framed as showing there is a serious question to be tried. This does not require proof that infringement is more likely than not to be established at trial, but rather, that the claim has sufficient merit to justify interlocutory relief.<\/p>\n<p>Second, the court considers the balance of convenience, weighing the likely harm to each party and to third parties if the injunction is granted or withheld. Key considerations include whether damages would be an adequate remedy, the financial position of the parties, the potential irreversibility of market effects, and whether third parties would be unfairly impacted. Ultimately, the balancing exercise is a discretionary one and an exercise that depends on the particular circumstances of each case.<\/p>\n<p>Factors that militate against the grant of equitable relief generally apply equally with respect to interlocutory injunctions, such as delay. The failure of an applicant to move with haste to seek an interim or interlocutory injunction tends to undercut any submission by the applicant that an interim or interlocutory injunction is urgently required to maintain the status quo to protect the applicant\u2019s position prior to the substantive determination of the rights of the parties.<\/p>\n<p>In Australian patent disputes, interlocutory injunctions are ordinarily heard on an inter partes basis, and it typically takes some months to apply for and obtain such an injunction (depending on urgency and complexity). That said, where there is exceptional urgency, a claimant may seek an ex parte interim injunction to preserve the position on a shorter term basis.<\/p>\n<p>Applicants are almost invariably required to give the \u201cusual undertaking as to damages\u201d, under which they agree to compensate the respondent and affected third parties if it is later found that the interlocutory injunction was wrongly granted. This ensures that the risks of restraining potentially lawful conduct are balanced by the availability of compensation.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What final remedies, both monetary and non-monetary, are available for patent infringement? Of these, which are most commonly sought and which are typically ordered?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Under the Patents Act, the relief available to a patentee where a (valid) claim of an asserted patent is found by a court to be infringed includes: an injunction restraining the infringer from infringing a particular patent or patents or restraining the specific infringements established at trial (subject to such terms, if any, as the court thinks fit), either damages or an account of profits (at the election of the patentee); and an additional amount in an assessment of damages if the court considers it appropriate to include such an amount (commonly referred to as \u201cadditional damages\u201d).<\/p>\n<p>The most commonly sought final remedies are injunctions, declarations and pecuniary remedies, being either an account of profits or an award of damages.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">On what basis are damages for patent infringement calculated? Is it possible to obtain additional or exemplary damages? Can the successful party elect between different monetary remedies?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The court can award damages or, alternatively at the option of the claimant, an account of profits.<\/p>\n<p>Damages may be calculated in a number of ways depending on the circumstances. Common approaches include assessing lost sales or applying the \u201cuser principle,\u201d which calculates a notional payment or reasonable licence fee\/royalty for the infringer\u2019s unauthorised use of the patented invention. Provided that causation and foreseeability are established, damages may also include losses related to goods commonly sold with the patented product or other consequential effects of the infringement. The purpose of damages is to put the claimant in the position it would have been but for the infringement.<\/p>\n<p>Additional damages may be awarded in cases of flagrant or wilful infringement, though exemplary damages are not commonly awarded.<\/p>\n<p>As an alternative to damages (and additional damages), the claimant can seek an account of the infringer&#8217;s profits. This remedy requires the infringer to account for and disgorge the profits it dishonestly made through infringement. An account can be attractive because, in some cases, the profits of the infringer may be greater than the recoverable damages.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">How readily are final injunctions granted in patent litigation proceedings?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Final injunctions are normally granted in Australia once infringement of at least one valid claim is established, but the remedy is equitable and discretionary. Courts weigh ongoing or threatened infringement, the adequacy of damages, proportionality and hardship (including to third parties), public interest (often acute in pharma\/health), and the parties\u2019 conduct.<\/p>\n<p>Where an injunction would be disproportionate (eg, a minor feature in a complex product) or would unduly harm the public or third parties, courts may narrow or refuse it and award monetary relief instead.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Are there provisions for obtaining declaratory relief, and if so, what are the legal and procedural requirements for obtaining such relief?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Where one or more valid claims of an Australian patent are found to have been infringed, declaratory relief will generally be granted, and no special procedural steps are required beyond seeking such relief in the originating application.<\/p>\n<p>Further, any person can apply to the court for a non-infringement declaration, provided that the declaration is in relation to an act the person has done, is doing or proposes to do.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What are the costs typically incurred by each party to patent litigation proceedings at first instance? What are the typical costs of an appeal at each appellate level?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>As mentioned above, the Federal Court has recently released Standard Directions for Australian Patent Proceedings by way of a new practice note, which attempts to facilitate the resolution of patent disputes as quickly and inexpensively as possible by increasing consistency and certainty in procedure.<\/p>\n<p>Whilst actual costs vary depending on the breadth and complexity of issues in dispute, cross claims, and need for expert witnesses, at first instance, a party commencing patent infringement proceedings (and defending any cross-claim) can expect to incur up to over AU $1 million in costs, including barristers, solicitors, expert witnesses and disbursements such as filing fees. The Federal Court filing fee for commencing proceedings is currently AU $5,050 for a corporation.<\/p>\n<p>A Full Federal Court appeal, typically a one to two-day hearing limited to written submissions and legal argument, generally costs around AU $500,000, inclusive of disbursements.<\/p>\n<p>Any application to the High Court of Australia must first be granted special leave by the High Court. Special Leave Applications are decided on the papers, and generally cost around AU $500,000.<\/p>\n<p>Federal Court Appeal filing fees are comparable to those at first instance, while a High Court Appeal attracts a fee of AU $12,515 for a corporation making a special leave application.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Can the successful party to a patent litigation action recover its costs?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>In Australian patent litigation, the successful party is generally entitled to recover its costs, though the amount and basis of recovery are at the court\u2019s discretion. The usual rule is that \u201ccosts follow the event,\u201d meaning the unsuccessful party pays the costs of the successful party. Costs are typically assessed on a \u201cparty\/party\u201d basis, which covers amounts fairly and reasonably incurred in conducting the litigation, but does not fully reimburse all legal expenses. The court may, on application, order costs on a different basis, including an indemnity basis, which allows a greater recovery.<\/p>\n<p>Parties can also influence potential cost liability through settlement offers or offers of compromise, which may affect costs orders if accepted or rejected.<\/p>\n<p>In certain circumstances, a party may be required to provide security for costs, ensuring that the opposing party\u2019s potential recovery is protected if the applicant may not have the means to pay.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What are the biggest patent litigation growth areas in your jurisdiction in terms of industry sector?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Recent Full Court decisions clarifying the test for patent eligibility of computer-implemented inventions have introduced much-needed certainty in this sector (for now). With the legal landscape now clearer, it is likely that patent holders will seek to enforce their rights, potentially triggering a rise in litigation. This could make computer technology and software-driven systems a notable growth area for patent disputes in the near term.<\/p>\n<p>Further, renewables, particularly electric vehicles and their supply chains, stands out as a likely growth area in Australia, with the IP Australia 2025 indicators showing strong, broad-based expansion in filings.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What do you predict will be the most contentious patent litigation issues in your jurisdiction over the next twelve months?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>In light of several recent decisions of the Federal Court and Full Court, as well as recent High Court authority, the patent-eligibility of computer-implemented inventions is likely to continue to be a contentious issue (albeit recent decisions have provided some greater certain in this regard for the time-being).<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What are the biggest challenges and opportunities confronting the international patent system?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Challenges facing the international patent system are the rise in number of filings and multilingual prior art, both of which present a challenge to timely, high-quality examination. Further, persistent differences in patentability complicate cross-border strategy for patent applicants.<\/p>\n<p>However, opportunities exist, such as the utilisation of AI in the process of patent application filings and examinations. These tools can assist in improving efficiency, reducing duplication, and giving businesses greater predictability.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\r\n<div class=\"word-count-hidden\" style=\"display:none;\">Estimated word count: <span class=\"word-count\">5270<\/span><\/div>\r\n\r\n\t\t\t<\/ol>\r\n\r\n<script type=\"text\/javascript\" src=\"\/wp-content\/themes\/twentyseventeen\/src\/jquery\/components\/filter-guides.js\" async><\/script><\/div>"}},"_links":{"self":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/comparative_guide\/117688","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/comparative_guide"}],"about":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/types\/comparative_guide"}],"wp:attachment":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/media?parent=117688"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}