Federal Court Rules (Amendment) (Cth)
WE, Judges
of the Federal Court of Australia, make the following Rules under the
Dated 18 December 1992.
M. E. J. BLACK C. J.
R. M. NORTHROP J.
J. R 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.
(L.S.) J. C. S. BURCHETT J.
J. A. MILES J.
D. M. RYAN 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.
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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.
Judges of the Federal Court of Australia
J. T. HOWARD
Registrar
1.1 These Rules commence on 1 January 1993.
2.1 The Federal Court Rules are amended as set out in these Rules.
3.1 Omit Order 54b, substitute:
“PART I—INTELLECTUAL PROPERTY CASES GENERALLY
“1. (1) In this Order, unless the contrary intention appears:
(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
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(d) in relation to proceedings under the Olympic Insignia Protection Act—the Registrar under the Designs Act;
(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;
“(2) In this Order, the words
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“(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.
“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.
“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
“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 in the First Schedule.
“(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.
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“(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,
(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.
“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.
“6. Not later than 14 days after being served with a notice of appeal, the Commissioner or Secretary, as the case may be, shall:
(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.
“7. A directions hearing shall be fixed for a date not earlier than 28 days after the day notice of appeal is filed.
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“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
“9. This Division applies to proceedings under the Patents Act other than an appeal from a decision of the Commissioner or Secretary.
“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
“(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.
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“(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.
“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
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(b) the provision of the contract that the defendant asserts is void.
“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.
“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.
“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.
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“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; a
(ii) the period in which, and the place where, the act is alleged to have been done publicly;
(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.
“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.
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“17. This Division applies to proceedings under the Trade Marks Act other than an appeal from a decision of a Commissioner.
“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.
“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.
“20. This division applies to proceedings under the Designs Act other than an appeal from a decision of the Commissioner.
“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.
“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
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(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.
“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.
“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 in the First Schedule.
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“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 in the First Schedule.
“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.
“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.
“28. This Division applies to proceedings under the Olympic Protection Insignia Act other than an appeal from a decision of the Commissioner.
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“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.
“30. (1) A party who:
(a) applies under subsection 12 (6) or 12 (9) of the Olympic Protection Insignia 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
“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.
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“(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.”.
4.1 Omit Order 68.
5.1 Omit Forms 58b, 58c and 58d.
5.2 Form 64:
Omit “(Order 68, rule 2)”, substitute “(Order 54b, rule 24)”.
5.3 Form 65:
Omit “(Order 68, rule 3)”, substitute “(Order 54b, rule 25)”.
1. Notified in the
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 No. 43, 44, 86, 87, 186, 330 and 421.
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