Commonwealth Numbered Regulations

1992 No. 453 FEDERAL COURT RULES (AMENDMENT) - RULE 3

3.1 Omit Order 54B, substitute:
                "ORDER 54B-INTELLECTUAL PROPERTY
Interpretation

"1. (1) In this Order, unless the contrary intention appears:
'Advance Australia Logo Protection Act' means the Advance Australia Logo 
Protection Act 1984 ;
'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;
'Circuit Layouts Act' means the Circuit Layouts Act 1989;
'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 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.

"(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, 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. Directions hearing

"7. A directions hearing shall 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; 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.
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 in the First Schedule. 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 in the First Schedule. 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 Protection Insignia Act Application of Division

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