Federal Court Rules (Amendment) (Cth)

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Statutory Rules 1994

No. 332 1

__________________

Federal Court Rules 2(Amendment)

WE, Judges of the Federal Court of Australia, make the following Rules of Court under the Federal Court of Australia Act 1976.

Dated 27 September 1994.

M. E. J. BLACK J.

C. A. SWEENEY J.

R. M. NORTHROP J.

J. A. KEEELY J.

J. F. GALLOP J.

J. D. DAVIES J.

J. S. LOCKHART J.

I. F. SHEPPARD J.

A. R. NEAVES J.

B. A. BEAUMONT J.

M. R. WILCOX J.

P. R. A. GRAY J.

J. C. S. BURCHETT J.

J. A. MILES J.

W. M. C. GUMMOW J.

R. S. FRENCH J.

M. R. EINFELD J.

M. L. FOSTER J.

M. C. LEE J.

H. W. OLNEY J.

J. W. VON DOUSSA J.

D. G. HILL J.

M. F. O’LOUGHLIN J.

D. F. O’CONNOR J.

T. J. HIGGINS J.

P. C. HEEREY J.

D. P. DRUMMOND J.

R. E. COOPER J.

A. P. WHITLAM J.

M. J. BEAZLEY J.

C. J. S. M. CARR J.

M. F. MOORE J.

C. M. BRANSON J.

J. H. MATTHEWS J.

K. E. LINDREN J.

B. TAMBERLIN J.

R. SACKVILLE J.

Judges of the Federal

Court of Australia

A.C. DAWSON

Acting Registrar

____________

1. Commencement

1.1These Rules commence on 6 October 1994.

2. Amendment

2.1The Federal Court Rules are amended as set out in these Rules.

3. Order 23 (Payment into Court)

3.1 Omit the Order, substitute:

“ORDER 23

“OFFER OF COMPROMISE AND PAYMENT INTO COURT

Interpretation

“1. In this Order, unless the contrary intention appears:

“ ‘applicant’ includes ‘cross-claimant’;

“ ‘claim in the proceeding’ includes a claim in relation to costs to which Order 62 applies;

“ ‘proceeding’ means a proceeding in the Court (except an interlocutory application), not being an application that is capable of:

(a)
substantially disposing of the proceeding or of the whole or any part of any claim for relief in the proceeding; or
(b)
rendering unnecessary any trial or further trial in the proceeding or of the whole or any part of any claim for relief in the proceeding;

“ ‘respondent’ includes ‘cross-respondent’.

Application

“2.(1)In any proceeding, a party may make to another party an offer to compromise any claim in the proceeding on the terms set out in the notice of offer.

“(2) If an offer to compromise the separate claims of several parties to the proceeding is in a single notice of offer, the notice of offer must specify separately the offer made to each party.

Form of offer

“3.(1)An offer of compromise is made to a party by serving a notice of the offer on the party.

“(2) A notice of offer must:

(a)
be prepared in accordance with Order 41; and
(b)
bear a statement to the effect that the offer is made under this Order; and
(c)
be signed by the party making the offer or by the solicitor appearing for that party.

“(3) Until an offer has been accepted, notice of the offer must not be filed.

Further requirements of offer

“4.(1) If:

(a)
a sum of money is offered; and
(b)
that sum is inclusive of the costs of the proceeding;

the notice of offer may specify the amount that is in respect of costs.

“(2) If:

(a)
a sum of money is offered; and
(b)
that sum is inclusive of interest;

the notice of offer must specify the amount that is in respect of interest and how it is calculated.

“(3) An offer to pay a sum of money is, unless a notice of offer otherwise provides, taken to be an offer to pay that sum within 28 days after acceptance of the offer.

Time for making or accepting offer

“5.(1) An offer may be made at any time before the time prescribed by subrule (7) in respect of the claim to which it relates.

“(2) A party may make more than one offer.

“(3) An offer may be expressed to be limited as to the time that it is open to be accepted, but the time expressed must not be less than 14 days beginning on the day after it is made.

“(4) An offeree may accept an offer by serving notice of acceptance in writing on the offeror before:

(a)
the expiration of the time specified in accordance with subrule (3); or
(b)
the time prescribed by subrule (7) in respect of the claim to which the offer relates;

which ever time is sooner.

“(5) An offer must not be withdrawn within 14 days after it is made, unless:

(a)
the Court otherwise orders; or
(b)
the offer is replaced by an offer in terms more favourable to the offeree.

“(6)An offer is open to be accepted within the period referred to in subrule (4) despite the fact that during that period the party to whom the offer is made makes a counter-offer, whether or not the counter-offer is made in accordance with this Order.

“(7) The time prescribed for the purposes of subrules (1) and (4) is:

(a)
if the trial is before a jury—when the judge begins to sum up to the jury; or
(b)
in any other case—when the Court, registrar or taxing officer pronounces the decision or begins to give reasons for the decision.

Withdrawal of acceptance

“6.(1) A party who accepts an offer may, by serving a notice of withdrawal on the offeror, withdraw the acceptance:

(a)
if:
(i)
the offer provides for payment of a sum of money; and
(ii)
the sum is not paid to the offeree or into Court:
(A)
within 28 days after the acceptance of the offer; or
(B)
within such other time as the offer provides; and
(iii)
the notice of withdrawal is served within 7 days after the expiration of the relevant period; or
(b)
if the Court gives leave to do so.

“(2) On withdrawal of an acceptance, all steps in the proceedings taken in consequence of the acceptance have effect only as the Court may direct.

“(3) On withdrawal of an acceptance or on the motion for leave to withdraw an acceptance, the Court may:

(a)
give directions under subrule (2); and
(b)
give directions for restoring the parties as nearly as may be to their positions at the time of the acceptance; and
(c)
give directions for the further conduct of the proceedings.

Offer to be without prejudice

“7. An offer made in accordance with this Order is taken to have been made without prejudice, unless the notice of offer otherwise provides.

Offer not to be disclosed to Court

“8.(1) No statement of the fact that an offer has been made is to be contained in any pleading or affidavit.

“(2) If an offer has not been accepted, no communication with respect to the offer is to be made to the Court at the trial or hearing until after all questions of liability and the relief to be granted have been determined.

“(3) This rule does not apply where a notice of offer provides that the offer is not made without prejudice.

Failure to comply with accepted offer

“9.(1) If a party to an accepted offer fails to comply with the terms of the offer, then, subject to rule 6, and, unless the Court otherwise orders, the other party may elect to move the Court on notice:

(a)
for such judgment or order as is appropriate to give effect to the terms of the accepted offer; or
(b) (i) if the party in default is the applicant—for an order that the proceedings be dismissed; or
(ii)
if the party in default is the respondent—for an order that the defence be struck out;

and in either case for judgment accordingly.

“(2) If:

(a)
a party to an accepted offer fails to comply with the terms of the offer; and
(b)
a respondent in the proceeding has made a cross-claim that is not the subject of the accepted offer;

the Court may:

(c)
make such order or give such judgment under subrule (1); and
(d)
make such order that the proceeding on the cross-claim be continued;

as it thinks fit.

Multiple respondents

“10. If:

(a)
two or more respondents are alleged to be jointly, or jointly and severally, liable to the applicant in respect of a debt or damages; and
(b)
rights of contribution or indemnity appear to exist between the respondents;

rule 9 does not apply to an offer unless:

(c)
in the case of an offer made by the applicant—the offer:
(i)
is made to all respondents; and
(ii)
is an offer to compromise the claim against all of them; or
(d)
in the case of an offer made to the applicant:
(i)
the offer is to compromise the claim against all respondents; and
(ii)
if the offer is made by 2 or more respondents—by the terms of the offer, the respondents who made the offer are jointly, or jointly and severally, liable to the applicant for the whole amount of the offer.

Costs

“11.(1)On the acceptance of an offer of compromise in accordance with subrule 5 (4), the applicant may, unless the Court otherwise orders, or the offer is inclusive of the costs of the proceeding:

(a)
tax costs on a party and party basis in respect of the claim against the respondent incurred up to and including the day the offer was accepted; and
(b)
if the costs are not paid within 4 days after the signing of a certificate of taxation—enter judgment against that respondent for the taxed costs.

“(2) If a notice of offer contains a term that purports to negative or limit the operation of subrule (1), that term is of no effect for any purpose of this Order.

“(3) Subrules (4), (5) and (6) apply to an offer that has not been accepted within the time prescribed by subrule 5 (4).

“(4) If:

(a)
an offer is made by an applicant and not accepted by the respondent; and
(b)
the applicant obtains judgment on the claim to which the offer relates not less favourable than the terms of the offer;

then, unless the Court otherwise orders, the applicant is entitled to an order against the respondent for costs incurred in respect of the claim:

(c)
up to and including the day the offer was made—taxed on a party and party basis; and
(d)
after that day—taxed on an indemnity basis.

“(5) If:

(a)
an offer is made by a respondent and not accepted by the applicant; and
(b)
the applicant obtains judgment on the claim to which the offer relates not more favourable than the terms of the offer;

then, unless the Court otherwise orders:

(c)
the applicant is entitled to an order against the respondent; and
(d)
the respondent is entitled to an order against the applicant;

for costs in respect of the claim taxed as provided in subrule (6).

“(6) For the purpose of subrule (5), if an offer was made:

(a)
on the day before the trial or hearing of the proceeding commenced; or
(b)
on any later day;

then, unless the Court otherwise orders:

(c)
the applicant is entitled to costs, in respect of the claim, incurred up to 11 a.m. on the day following the day on which the offer was made; and
(d)
the respondent is entitled to costs, in respect of the claim, incurred after that time;

taxed on a party and party basis.

“(7) If an applicant obtains judgment for the payment of a debt or damages and:

(a)
the amount for which judgment is given includes interest or damages in the nature of interest; or
(b)
by or under any Act the Court awards the applicant interest or damages in the nature of interest in respect of the amount;

then, for the purpose of determining the consequences as to costs referred to in subrules (4) and (5), the Court must disregard so much of the interest as relates to the period after the day the offer was made.

“(8) Subrules (4) and (5) do not apply unless the Court is satisfied by the party making the offer that the party was at all material times willing and able to perform the offer if the offer had been accepted.

Where tender before action pleaded

“12. If a respondent pleads, or otherwise raises, a defence of tender before action, the sum of money alleged to have been tendered must, unless the Court otherwise orders, be paid into Court.

Payment of moneys into Court

“13.Money paid into Court must not be paid out of Court except under an order of the Court.

Notice of deposit – Form 31

“14. If a party pays, or files a security to pay, money into Court, that party must, at the same time, file a notice in accordance with Form 31.

Security to pay into Court – Form 36

“15.(1) A security to pay money into Court must be an instrument in accordance with Form 36 or in a form approved by the Registrar by which an authorised person (whether a party to the proceeding or not):

(a)
promises to pay into Court, when ordered to do so, a specified sum of money (in this rule called ‘the money secured’); and
(b)
gives an address for service.

“(2) A person who is a licensed or authorised insurer under legislation of any State or Territory providing for workers’ compensation or the insurance of motor vehicles against third party claims must, unless the Court otherwise orders, be an authorised person for the purposes of this rule.

“(3) A person approved by the Court is taken to be an authorised person for the purposes of this rule.

“(4) A person giving security under this rule may pay the money secured into Court and thereupon:

(a)
subject to any order or judgment for interest under this rule, or for costs—that person has no further liability on the security in the proceeding; and
(b)
the money paid into Court must, unless the Court otherwise orders, be dealt with as if it had been brought into Court in place of the security by the party filing the security.

“(5) If a security has been filed, the Court may order the person giving the security to pay, within the time specified in the order, the whole or any part of the money secured:

(a)
into Court; or
(b)
to such person as the Court may direct.

“(6) If a person giving a security fails to comply with an order under subrule (5), the Court may:

(a)
order the person giving the security to pay into Court, or pay to such person as the Court may direct, interest on the money unpaid until payment at such rate not exceeding 10% per annum as the Court may determine;
(b)
in addition to any order as to costs which the Court may make, order the person giving the security to pay the costs of any party incurred by reason of failure to comply with the order under subrule (5) (including costs known as ‘costs thrown away’).

“(7) The Court may pronounce such judgment as the nature of the case may require in favour of any party against a person giving a security for:

(a)
the whole or any part of any money secured; or
(b)
interest or costs the subject of an order under subrule (5) or (6); or
(c)
costs.

“(8) A party moving for an order or direction under subrule (5), (6) or (7) must serve notice of the motion on the person giving the security.

“(9) A party filing a security must, on the day of filing, serve a copy of it on each party interested.

Service

“16. A party filing a notice under this Order must, on the day of filing, serve the notice on each other party on whom the notice has not previously been served.”.

4. Order 43 rule 10 (Payment into Court)

4.1 Omit “bring money into Court under Order 23 or accept money brought into Court under that Order.”, substitute “pay money into Court or make an offer of compromise.”.

5. Order 43 rule 12 (Terms of approval)

5.1 Subrule 12 (1):

Omit the subrule, substitute:

“(1) The Court may give leave or approval under rule 10 or 11 on terms.”.

6. Order 54B (Intellectual Property)

6.1Omit the Order, substitute:

“ORDER 54B

“MIGRATION ACT 1958

Application

“1. Subject to this Order, the Rules of Court prescribe the manner of making an application for review of a judicially-reviewable decision under the Migration Act 1958.

Form of application – Form 56

“2.(1) An application to review a judicially-reviewable decision under the Migration Act 1958 must be in accordance with Form 56.

“(2) An application to review a judicially-reviewable decision under the Migration Act 1958 must indicate the date that the applicant was notified of the judicially-reviewable decision.

“(3) If the grounds of the application include an allegation of fraud, bad faith or actual bias, the applicant must set out in the application particulars of the fraud, bad faith or actual bias relied on.

Notice of objection to competency – Form 57

“3. If a respondent to an application under this Order objects to the competency of the application, the respondent must, within 14 days after service upon him of the application, file and serve on the other parties to the proceeding a notice of objection stating briefly the grounds of the objection.

Directions

“4. In addition to the powers of the Court under Order 10 of these Rules, the Court may give directions:

(a)
that a party serve a copy of the application on the Attorney-General of the Commonwealth;
(b)
that a party give notice of the application to such persons, or classes of persons, in such manner as the Court directs; and
(c)
if a notice of objection to competency has been filed by a party—that the objection be heard and determined before the hearing of the application to which the objection to competency relates.

Staying or dismissal of applications

“5. In applying Order 20, rule 2 to applications to which this Order applies, that rule is to be construed as if paragraph (1) (a) read ‘no reasonable basis for the application is disclosed’.

Dismissal of application

“6. Any party who seeks to have an application to which this Order applies dismissed:

(a)
on a ground set out in Order 20, rule 2; or
(b)
in the exercise of the Court’s discretion;

must apply promptly for such dismissal.

Use of affidavit without cross-examination of maker

“7.Notwithstanding Order 14, rule 9, the Court may dispense with the attendance for cross-examination of a person making an affidavit and may direct that an affidavit be used without the person making the affidavit being cross-examined thereon.”.

7. New Orders 58 and 59

7.1After Order 57, insert:

“ORDER 58—INTELLECTUAL PROPERTY

“Part I—Intellectual Property Cases Generally

Interpretation

“1.(1) In this Order, unless the contrary intention appears:

“‘Advance Australia Logo Protection Act’ means the Advance Australia Logo Protection Act 1984;

“‘Circuit Layouts Act’ means the Circuit Layouts Act 1989;
“‘Commissioner’ means:
(a)
in relation to proceedings under the Patents Act—the Commissioner under that Act; and
(b)
in relation to proceedings under the Designs Act—the Registrar under that Act; and
(c)
in relation to proceedings under the Trade Marks Act—the Registrar under that Act; and
(d)
in relation to proceedings under the Olympic Insignia Protection Act—the Registrar under the Designs Act;
“‘Copyright Act’ means the Copyright Act 1968;

“‘decision’ includes a direction or determination made by the Commissioner or Secretary, as the case may be;

“‘Designs Act’ means the Designs Act 1906;
“‘intellectual property case’ means:
(a)
a proceeding arising in respect of infringement of:
(i)
the monopoly in the design of a logo provided for by the Advance Australia Logo Protection Act; or
(ii)
a copyright subsisting under the Copyright Act; or
(iii)
the monopoly in a design registered under the Designs Act; or
(iv)
a patent granted under the Patents Act; or
(v)
a trade mark registered under the Trade Marks Act; or
(vi)
the monopoly in a protected design provided for by the Olympic Insignia Protection Act; or
(vii)
EL rights subsisting under the Circuit Layouts Act; or
(viii)
plant variety rights granted under the Plant Variety Rights Act; or
(b)
an application, appeal or other proceeding under a subject Act, whether or not joined with any other claim or cause of action, unless the proceeding is one to which Order 54 or 54a applies;

“‘Olympic Insignia Protection Act’ means the Olympic Insignia Protection Act 1987;

“‘Patents Act’ means the Patents Act 1990;
“‘Plant Variety Rights Act’ means the Plant Variety Rights Act 1987;

“‘Secretary’ means the Secretary referred to in the Patents Act;

“‘subject Act’ means the Advance Australia Logo Protection Act, the Circuit Layouts Act, the Copyright Act, the Designs Act, the Olympic Insignia Protection Act, the Patents Act, the Plant Variety Rights Act or the Trade Marks Act, as the case requires;

“‘Trade Marks Act’ means the Trade Marks Act 1955.

“(2) In this Order, the words ‘plaintiff’ and ‘defendant’ in the Patents Act are taken to have the same meaning, respectively, as ‘applicant’ and respondent’.

“(3) An expression used in this Order that is also used in a provision of a subject Act under which, or in relation to which, proceedings are taken has the same meaning in this Order as it has in that provision.

Application of Order

“2.(1) This Order applies to intellectual property cases.

“(2) Subject to this Order and to any other law of the Commonwealth, the other Orders of these Rules apply to intellectual property cases.

Appearance by the Commissioner

“3. The Commissioner may appear and be heard in any proceedings, but is not a party to proceedings other than an appeal:

(a)

from a decision of the Commissioner; and

(b)
in which there is no party in opposition to the party bringing the appeal.

“PART II—Appeals from decision, etc of Commissioner or Secretary

Form and filing of notice of appeal—Form 58a

“4.(1) An appeal from a decision of the Commissioner or Secretary is instituted by filing in an appropriate Registry a notice of appeal in accordance with Form 58a.

“(2) An appeal must be instituted within 21 days after the date of the decision appealed from or within such further time as the Court, on application, fixes, unless a law of the Commonwealth provides otherwise.

“(3) Application may be made to the Court to extend the time for filing, by notice of motion:

(a)
made at any time—unless a law of the Commonwealth provides otherwise; and
(b)
supported by affidavit showing special circumstances.

“(4) If application is made under subrule (3), a copy of the notice of motion and supporting affidavit must be served on the Commissioner or Secretary, as appropriate, and on the persons directly affected by the appeal, not later than 14 days before the day appointed for the directions hearing.

“(5) In this rule, ‘appropriate registry’ means:

(a)
the Registry at the place where the applicant prefers the appeal to be heard; or
(b)
the Registry determined at any time by order of the Court or a Judge to be an appropriate Registry.

Notice of appeal, etc

“5.(1) Documents filed in an appeal must include in the title to the proceedings the title or description of the decision-maker from whose decision the appeal is brought.

“(2) A notice of appeal must also state:

(a)
the decision from which the appeal is brought and the date of the decision;
(b)
whether the appeal is from the whole or a part of the decision (including, if from a part only, details of the part);
(c)
the order or orders sought;
(d)
briefly—the specific grounds relied on in support of the order or orders sought; and
(e)
the date given by the Registry for the directions hearing.

Provision of documents by Commissioner or Secretary

“6. Not later than 14 days after being served with a notice of appeal, the Commissioner or Secretary, as the case may be, must:

(a)
file in the appropriate Registry the documents (or certified copies of the documents) necessary for the hearing that are in the Commissioner’s or Secretary’s possession, and a list of the documents; and
(b)
give to the parties to the appeal notice in writing of the documents filed.

Directions hearing

“7. A directions hearing must be fixed for a date not earlier than 28 days after the day notice of appeal is filed.

Evidence

“8.(1) Material before the Commissioner or Secretary for the purpose of the decision appealed from is, with the leave of the Court and saving all just exceptions, admissible in evidence on the hearing of the appeal.

“(2) At the directions hearing in respect of an appeal from a decision under the Patents Act, the Court may give directions, for the purposes of paragraph 160 (a) of that Act, as to the giving of further evidence.

“PART III—Other proceedings under a subject Act

“Division 1—Patents Act

Application of Division

“9. This Division applies to proceedings under the Patents Act other than an appeal from a decision of the Commissioner or Secretary.

Applications under subsection 105 (1) of Patents Act (amendments)

“10.(1) An application for an order under subsection 105 (1) of the Patents Act may be made only after the applicant gives to the Commissioner a notice of intention to apply accompanied by an advertisement that states:

(a)
the identity of the proceedings, or pending proceedings, in which the application will be made;
(b)
the particulars of the amendment sought;
(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 or pending proceedings must, not later than 28 days after publication of the advertisement, give written notice of that intention to the Commissioner and to the persons who are parties to the proceedings.

“(2) The Commissioner must publish the advertisement in the Official Journal once unless the Court otherwise orders.

“(3) A person who gives notice under paragraph (1) (d) is entitled to be heard in opposition to the application, subject to any direction of the Court as to costs.

“(4) The application may be instituted by filing a notice of motion in the relevant proceedings before the end of 50 days after the date of publication of the advertisement.

“(5) A copy of 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 party to the proceedings and each person who has given notice under paragraph (1) (d).

“(6) On the hearing of the motion, the Court may give any direction it thinks fit for the conduct of that proceeding, including a direction:

(a)
requiring the applicant to give to each party or other person who opposes the application a statement of the grounds relied on for the amendment;
(b)
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)
determining that the motion will be heard with the relevant proceedings or separately and, if separately, fixing the date for hearing the motion;
(d)
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 filed and served.

Applications under subsection 120 (1) of Patents Act (infringements)

“11.(1) Notwithstanding Order 4 rule 11, an application under subsection 120 (1) of the Patents Act and an affidavit or statement of claim must be served, not later than 14 days before the date appointed for the directions hearing:

(a)
on the respondent in the proceeding and, if the applicant is an exclusive licensee, the patentee; and
(b)
on the Commissioner.

“(2) Particulars of infringements complained of must give at least one instance of each type of infringement alleged and must specify, in proceedings for infringement of a standard patent, which of the claims of the complete specification of that patent are alleged to be infringed.

“(3) A respondent relying on a defence under subsection 144 (4) of the Patents Act must give particulars of:

(a)
the date of, and the parties to, a contract on which the respondent intends to rely for the defence; and
(b)
the provision of the contract that the defendant asserts is void.

Applications under subsection 125 (1) of Patents Act (non-infringement declarations)

“12. Notwithstanding Order 4 rule 11, an application under subsection 125 (1) of the Patents Act and an affidavit or statement of claim must be served, not later than 14 days before the date appointed for the directions hearing:

(a)
on the nominated person, or the patentee, as the case requires; and
(b)
on the Commissioner.

Applications under subsection 128 (1) of Patents Act (relief from unjustified threat)

“13. Notwithstanding Order 4 rule 11, an application under subsection 128 (1) of the Patents Act and an affidavit or statement of claim must be served, not later than 14 days before the date appointed for the directions hearing:

(a)
on the person making the threat; and
(b)
on the Commissioner.

Applications under Chapter 12 of Patents Act (compulsory licences, revocation, etc)

“14.(1) Notwithstanding Order 4 rule 11, an application under subsection 133 (1), 134 (1) or 138 (1) of the Patents Act and an affidavit or statement of claim must be served, not later than 14 days before the date appointed for the directions hearing:

(a)
on the patentee; and
(b)
as a further respondent—on any person who claims an interest in the patent as exclusive licensee; and
(c)
on the Commissioner.

“(2) An application and affidavit or statement of claim referred to in this rule must comply with Chapter 12 of the Patents Regulations.

“(3) An application for leave under subsection 137 (4) of the Patents Act may be made by notice of motion in the pending proceedings.

Particulars of invalidity

“15.(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 one of the grounds referred to in subrule (1) is:

(a)
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 Court, evidence is not admissible in proof of a ground of invalidity of which particulars have not been given.

“Division

2—Copyright Act

Applications under Copyright Act

(infringements)

“16. In proceedings for infringement of copyright, particulars of the infringement must specify the manner in which the copyright is alleged to be infringed and must give at least one instance of each type of infringement alleged.

“Division 3—Trade Marks Act

Application of Division

“17. This Division applies to proceedings under the Trade Marks Act other than an appeal from a decision of a Commissioner.

Applications under Trade Marks Act (infringements)

“18. In proceedings for the infringement of a registered trade mark, particulars of the infringement must specify the manner in which the trade mark is alleged to be infringed and must give at least one instance of each type of infringement alleged.

Particulars of invalidity

“19.(1) A party who disputes the validity of the registration of a registered trade mark 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) Except by leave of the Court, evidence is not admissible in proof of a ground of invalidity of which particulars have not been given.

“Division 4—Designs Act

Application of Division

“20. This Division applies to proceedings under the Designs Act other than an appeal from a decision of the Commissioner.

Applications under Designs Act (infringements)

“21. In proceedings for the infringement of the monopoly in a registered design, particulars of the infringement must specify the manner in which the design is alleged to be infringed and must give at least one instance of each type of infringement alleged.

Particulars of grounds for cancellation, rectification or of invalidity

“22.(1) A party who:

(a)
applies under paragraph 28 (a) of the Designs Act for the cancellation of the registration of a design; or
(b)
applies under section 32 or section 39 of that Act for the rectification of the Register; or
(c)
disputes the validity of registration of a registered design;

must deliver with the pleading, or other document in which the party makes that application or disputes the validity of registration, particulars of the grounds for cancellation or rectification or of invalidity on which the party relies.

“(2) If one of the grounds referred to in subrule (1) 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 must:

(a)
specify the name of the person who is alleged to have made the previous user;
(b)
specify the period during which the previous user is alleged to have continued; and
(c)
contain a description sufficient to identify the previous user.

“(3) Except by leave of the Court, evidence is not admissible in proof of a ground for cancellation or rectification or of invalidity of which particulars have not been given.

Application under paragraph 28 (b) of the Designs Act (compulsory licence)

“23. In proceedings for the grant of a compulsory licence under paragraph 28 (b) of the Designs Act, particulars of the application must:

(a)
specify the article to which it is alleged the design is applied by manufacture outside the Commonwealth;
(b)
specify the country in which that article is manufactured; and
(c)
state the facts intended to be relied on to show that the design is not so applied in the Commonwealth to such an extent as is reasonable in the circumstances of the case.

“Division 5—Circuit Layouts Act

Applications under subsection 20 (2) of the Circuit Layouts Act (equitable remuneration)

“24. Proceedings to determine equitable remuneration under subsection 20 (2) of the Circuit Layouts Act must be commenced by an application in accordance with Form 64.

Applications under subsection 25 (4) of the Circuit Layouts Act (terms of

the doing of the act)

“25. Proceedings to determine the terms of the doing of the act under subsection 25 (4) of the Circuit Layouts Act must be commenced by an application in accordance with Form 65.

Applications under Circuit Layouts Act (infringements)

“26. In proceedings for infringement of EL rights, particulars of the infringement must specify the manner in which it is alleged the EL rights have been infringed and must give at least one instance of each type of infringement alleged.

“Division 6—Plant Variety Rights Act

Applications under Plant Variety Rights Act (infringements)

“27.(1) In proceedings for infringement of plant variety rights, particulars of the infringement must specify the manner in which it is alleged the plant variety rights have been infringed and must give at least one instance of each type of infringement alleged.

“(2) A respondent in such proceedings who relies on subsection 41 (2) of the Plant Variety Rights Act by way of cross-claim must give:

(a)
particulars of the facts intended to be relied on to show that the plant variety was not a new plant variety; or
(b)
particulars of the facts intended to be relied upon as facts existing before the grant of the plant variety rights and which, if known, would have resulted in the refusal of the grant.

“Division

7—Olympic Insignia Protection Act

Application of Division

“28. This Division applies to proceedings under the Olympic Insignia Protection Act other than an appeal from a decision of the Commissioner.

Application under Olympic Insignia Protection Act (infringements)

“29. In proceedings for infringement of the monopoly in a protected design, particulars of the infringement must specify the manner in which the design is alleged to be infringed and must give at least one instance of each type of infringement alleged.

Particulars of grounds for rectification or of invalidity

“30.(1) A party who:

(a)
applies under subsection 12 (6) or 12 (9) of the Olympic Insignia Protection Act for the rectification of the register; or
(b)
disputes the validity of a protected design;

must deliver with the pleading or other document in which the party makes that application or disputes the validity of the protected design, particulars of the grounds for rectification or of invalidity on which the party relies.

“(2) If one of the grounds referred to in subrule (2) 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 must:

(a)
specify the name of the person who is alleged to have been the previous user;
(b)
specify the period during which the previous user is alleged to have continued; and
(c)
contain a description sufficient to identify the previous user.

“(3) Except by leave of the Court evidence is not admissible in proof of a ground for rectification or of invalidity of which particulars have not been given.

“PART IV—EVIDENCE

Experimental proof as evidence

“31.(1) In any proceedings in which a party proposes to submit experimental proof of a matter as evidence, that party must obtain directions from the Court:

(a)
as to the service on other parties of particulars of the experiment and of the fact or facts that the proponent asserts will, or may, be established by the experiment; and
(b)
as to the conduct of the experiment and as to the persons who may attend it.

“(2) Unless such directions have been obtained and complied with, evidence derived from experimental proof is not admissible in the proceedings except by leave of the Court.

“order 59

“MOOMBA-SYDNEY PIPELINE SYSTEM SALE ACT 1994

Appeals from determinations of Trade Practices Tribunal under section 126

“1. An appeal to the Court under section 126 of the Moomba-Sydney Pipeline system Sale act 1994 from a determination of the Trade Practices tribunal is to be instituted by filing a notice of appeal in accordance with Form 55A.

Enforcement under Part 6, Division 6

“2.An application made to the Court under Part 6, Division 6 of the Moomba-Sydney Pipeline system Sale act 1994 must be made by filing an application in accordance with Form 5.

Inquiry by Court under subsection 124 (3) where non-compliance with requirements of Trade Practices Commission

“3.(1) For the purposes of an inquiry under subsection 124 (3) of the Moomba-Sydney Pipeline system Sale act 1994, the Trade Practices Commission must file:

(a)
an application made in accordance with Form 5; and
(b)
an affidavit certifying the details of non-compliance with the requirements of the Trade Practices Commission and annexing a copy of the notice given under section 95 of that Act.

“(2) In addition to the powers of the Court under Order 10 of these Rules, the Court may give directions as it thinks fit for the conduct of the inquiry, including directions as to the filing of a statement of facts and contentions by the respondent.”.

8.Order 62, new rule 1A

8.1After rule 1, add:

Party represented by officer of the Crown

“1A. If a party is represented by a practitioner (as counsel) who is a law officer or an employee of the Crown, a fee commensurate with that which would be allowable if the practitioner had been a private practitioner may be allowed despite the fact that the party is unable to vouch payment of the fee either by the signature of the practitioner or otherwise.”.

9.Order 75 rule 12 (Registration of determinations)

9.1Omit the rule, substitute:

Registration of determinations

“12.(1) An application for registration of a determination of the NNTT must be made by filing an application in accordance with Form 138A to which is attached a copy of the determination.

“(2) Upon the filing of an application for registration, the Registrar must have prepared a document in accordance with Form 139 that includes an NNTT determination registration number and the date of receipt of the application for registration and the determination.

“(3) The date of receipt of the application and the determination must be the date of its registration.

“(4) The Registrar must:

(a)
sign and seal the document prepared under subrule (2); and
(b)
indicate on each page of the determination:
(i)
the registered number of the determination; and
(ii)
the date of registration of the determination; and
(c)
sign and seal each page of the determination; and
(d)
return the determination and a copy of the document prepared under subrule (2) to the Native Title Registrar.”.

10. First Schedule

10.1 Form 31:

Omit the Form, substitute:

“FORM 31

“NOTICE OF DEPOSIT

(Order 23, rule 14)

The (party, eg applicant, respondent) has paid (filed a security to pay) into Court $ (insert amount).

That sum (security) has been paid (filed) under an order of the Court made on (insert date, eg 7 May 19 ).

OR

That sum (security) is in respect of the following: (specify).”.

10.2 Forms 32, 33, 34 and 35:

Omit the Forms.

10.3 Form 36:

Omit the Form, substitute:

“FORM 36

“SECURITY TO PAY INTO COURT

(Order 23, rule 15)

(Name of authorised person under subrule 15 (2) or (3)), whose address for service is (insert address), promises to the Registrar of the Court to pay $ (insert amount) into Court or in a manner directed by the Court as and when ordered by the Court to do so under Order 23 of the Rules.

Signed

or

The Common Seal

(and so on)”.

10.4 Form 41:

Paragraph (c);

Omit subparagraph (i), substitute:

“(i)
you need not comply with this subpoena unless allowances and travelling expenses sufficient to meet your reasonable expenses are paid, or tendered to you, or vouched for at the time of service of the subpoena, or not later than a reasonable time before the day on which you would be required to attend the Court; and”.

10.5 Form 41:

Paragraph (c):

After subparagraph (iii), add:

“; and (iv)
if you are not a party to the proceeding and you incur substantial expense or loss in complying with this subpoena, you may apply to the Court for an order that the party who requested the issue of the subpoena pay to you an amount to compensate you for such expense or loss as is reasonably incurred or lost by you in complying with the subpoena.”.

10.6 Form 42:

Omit:

“(c)
on (insert date) at (insert time) and until you are excused from further attending;

but you need not attend on any day unless reasonable expenses have been paid or tendered to you.”;

substitute:

“(c)
on (insert date) at (insert time) and until you are excused from further attending, but:
(i)
you need not comply with this subpoena unless allowances and travelling expenses sufficient to meet your reasonable expenses are paid, or tendered to you, or vouched for at the time of service of the subpoena, or not later than a reasonable time before the day on which you would be required to attend the Court; and
(ii)
if you are not a party to the proceeding and you incur substantial expense or loss in complying with this subpoena, you may apply to the Court for an order that the party who requested the issue of the subpoena pay to you an amount to compensate you for such expense or loss as is reasonably incurred or lost by you in complying with the subpoena.”.

10.7 Form 43:

Paragraph (c):

Omit subparagraph (i), substitute:

“(i)
you need not comply with this subpoena unless allowances and travelling expenses sufficient to meet your reasonable expenses are paid, or tendered to you, or vouched for at the time of service of the subpoena, or not later than a reasonable time before the day on which you would be required to attend the Court; and”.

10.8 Form 43:

Paragraph (c):

After subparagraph (ii), add:

“; and (iii)
if you are not a party to the proceeding and you incur substantial expense or loss in complying with this subpoena, you may apply to the Court for an order that the party who requested the issue of the subpoena pay to you an amount to compensate you for such expense or loss as is reasonably incurred or lost by you in complying with the subpoena.”.

10.9 Form 55A:

Omit “(Order 53, rule 2)”, substitute “(Order 53, rule 2 and Order 59, rule 1)”.

10.10Form 55A:

Omit “On appeal from the

division of the Administrative Appeals Tribunal”, substitute “On appeal from the (insert name of Tribunal)”.

10.11Form 55A:

Omit:

“1.

TAKE NOTICE that the applicant appeals from the decision of (specify division of Tribunal below) constituted by (specify members constituting the Tribunal) given on (specify date) at (specify place) whereby the Tribunal decided (specify decision appealed from).”;

substitute:

“1.

TAKE NOTICE that the applicant appeals from the decision or determination of (specify Tribunal below) constituted by (specify members constituting the Tribunal) given on (specify date) at (specify place) whereby the Tribunal decided or determined (specify decision or determination appealed from).”.

10.12Form 56:

Omit “(Order 54)”, substitute “(Orders 54 and 54B)”.

10.13Form 56:

Omit “(Particulars of fraud or bad faith if alleged.)”, substitute:

“(Particulars of fraud or bad faith if alleged (Order 54, rule 2))

OR
(Particulars of fraud, bad faith or actual bias if alleged
Order 54B, rule 2))”.

10.14 Form 57:

Omit “(Order 54, rule 4)”, substitute “(Order 54, rule 4 and Order 54B, rule 3)”.

10.15 Form 57:

Omit “Administrative Decisions (Judicial Review) Act 1977”, substitute “Administrative Decisions (Judicial Review) Act 1977, or the Migration Act 1958,”.

10.16 Form 58A:

Omit “(Order 54B, rule 4)”, substitute “(Order 58, rule 4)”.

10.17 Form 64:

Omit “(Order 54B, rule 24)”, substitute “(Order 58, rule 24)”.

10.18 Form 65:

Omit “(Order 54B, rule 25)”, substitute “(Order 58, rule 25)”.

10.19 New Form 138A:

After Form 138, insert:

“FORM 138A

“APPLICATION FOR REGISTRATION OF DETERMINATION OF NATIONAL NATIVE TITLE TRIBUNAL

(Order 75, subrule 12 (1))

IN THE FEDERAL COURT OF AUSTRALIA

No. of 19

DISTRICT REGISTRY

GENERAL DIVISION

National Native Title Tribunal Registrar

(applicant for registration)

APPLICATION FOR REGISTRATION OF DETERMINATION OF NATIONAL NATIVE TITLE TRIBUNAL

The Registrar of the National Native Title Tribunal requests registration of the attached determination dated (insert date of determination) in proceeding number (insert NNTT proceeding number) of the National Native Title Tribunal in which (insert name of applicant in NNTT) was the applicant before the Tribunal.

Date:
eg 7 May 19
(Signed, Registrar,
National Native Title Tribunal)”.

10.20 Form 139:

Omit “(Order 75, subrule 12 (1))”, substitute “(Order 75, subrule 12 (2))”.

____________________________________________________________

NOTE

1. Notified in the Commonwealth of Australia Gazette on 5 October 1994.
2. Statutory Rules 1979 No. 140 as amended by 1980 No. 87; 1982 Nos. 217 and 408; 1983 No. 264; 1984 Nos. 9 and 258; 1985 Nos. 16, 97, 168 and 227; 1986 Nos. 61, 157 and 324; 1987 Nos. 73, 174 and 197; 1988 Nos. 14, 54, 144, 217 and 306; 1989 Nos. 50, 253 and 318; 1990 Nos. 72, 102, 276, 319, 414 and 453; 1991 Nos. 70, 249, 395 and 461; 1992 Nos. 43, 44, 86, 87, 186, 330, 421 and 453; 1993 Nos. 40, 45, 137, 225 and 290; 1994 Nos. 63, 130, 224 and 279.

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