Patents down under

Intellectual Property and Technology News

Patent prosecution and litigation are alive and well in Australia. While the country is a smaller market in the global context, Australians keenly take up new technology. Most international companies “tick the box” for Australia when considering where to seek patent protection for inventive products or processes.


Obtaining an Australian patent


Patent applications are filed with IP Australia, a government entity that administers Australian IP statutes and grants IP rights, including patents, designs, trademarks and plant breeder’s rights (PBR). After IP Australia is satisfied that a patent application fulfills the requirements of the Patents Act 1990 (Cth), the patent application is publicly advertised. Interested parties are then able to oppose the grant of the patent

within three months after publication. If there is opposition, IP Australia determines the issues, subject to the right to appeal to a prescribed court (usually the Federal Court of Australia).


To be granted, a patent must describe an invention – a “manner of new manufacture” as that term has been traditionally used in English and adopted in Australian jurisprudence. The subject matter must be patentable and new or novel and must involve an inventive step. If the application succeeds, IP Australia grants the patent, giving the owner the exclusive right to commercially exploit the invention.


Enforcing a patent


If a patentee believes its patent is being infringed, the patentee can initiate enforcement proceedings in court. A patent is infringed if the accused product or process practices all of the essential integers of a claim. Australia has a “purposive” approach to patent interpretation, which in US patent terminology could be described as a combination of literal infringement and the doctrine of equivalents. The court will consider whether the product or process contains all of the essential integers of the claim. If so, there is infringement.


Overview of the litigation process


Many of Australia’s legal principles are similar to those applied in the US, UK and other jurisdictions.


The Australian courts appoint a judge who actively case-manages:

  • the statement of claim alleging infringement with particulars
  • the defense and the usual cross claim for invalidity (e.g., lack of novelty, fair basis or obviousness)
  • discovery (if allowed, could be limited to specific documents or document classes)
  • written witness statements (usually sworn by affidavit) and expert reports
  • trial within about 12 months (Victoria is testing an even faster “rocket docket”) 

The court requires specificity early in the case. The patentee must provide details on the infringement, its interpretation of the claims and the particulars of why the product/process infringes, and the accused infringer must provide the particulars of invalidity relatively early in the proceedings. All trials are judge trials; there are no juries.


Our Australian team has acted in parallel patent litigation where the expert in the Australian court proceedings was the same expert to be used in the US. It significantly benefits parallel proceedings to have experts committed early to written and/or sworn affidavits or reports setting out their claim interpretations, the basis for infringement (or lack thereof) and patent validity (or invalidity).


Additionally, the Australian discovery process automatically provides confidentiality protection for documents disclosed for the purpose of litigation. However, in certain circumstances (under appropriate confidentiality agreements and/or joint defense agreements) processes can be put in place for access to these documents across borders.


Obtaining urgent protection


Unlike in the US, courts in Australia often issue preliminary injunctions. Our analysis of the applications for preliminary injunctions in patent infringement matters in Australia over the last couple of decades shows that the prospect of successfully obtaining such an injunction lies at approximately 50 percent. In Abbott GMBH & Co. KG v. Apotex Pty. Ltd. (CAN 096 916 148), decided in November 2009, the judge granted a preliminary injunction after considering the fact that the defendant had known of the potential for patent infringement for more than a year and yet had not instigated action to have the patent declared invalid.


Consequently, those looking for a freedom to operate in Australia, and recognizing they have some potential to be recipients of a preliminary injunction, need to decide whether they will instigate invalidity proceedings before they commence the allegedly infringing conduct. This could be done by way of a re-examination application to IP Australia or a court application to have the patent declared invalid.


Recovering costs and fees in unjustified lawsuits


Australian courts have confirmed the viability of bringing an application to restrain unjustified threats, where appropriate. In Uniline Australia Ltd. v. SBriggs Pty. Ltd. [2009] FCA 222, where we acted for the successful applicant, the court issued a declaration of non-infringement and further ordered the defendant to pay the recoverable costs, including indemnity costs (e.g., attorneys’ fees) for the trial.


Australian courts typically award at least a portion of costs to the prevailing party following the dispositive event.


In sum, with its clear and reliable processes, the land down under is an exciting forum for obtaining and enforcing patents.


For more information, please contact Tony Conaghan.