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FEDERAL COURT RULES (AMENDMENT) 1992 NO. 453
EXPLANATORY STATEMENTStatutory Rules 1992 No. 453
Issued by the authority of the Judges of the Federal Court of Australia
AMENDMENT OF THE RULES OF THE FEDERAL COURT OF AUSTRALIA
Section 59 of the Federal Court of Australia Act 1976 permits the Judges of the Court (of whom there are thirty-three (33) including the Chief Justice) or a majority of them to make Rules of Court not inconsistent with the Act, making provision for or in relation to the practice and procedure to be followed in the Court, including practice and procedure to be followed in Registries of the Court, and for or in relation to all matters and things incidental to any such practice or procedure, or necessary or convenient to be prescribed for the conduct of any business of the Court. Section 59 of the Act also provides that sections 48, 48A, 48B, 49 and 50 of the Acts Interpretation Act 1901 apply in relation to these Rules of Court made under that section as if references in those sections of that Act to regulations were references to Rules of Court.
The present Federal Court Rules came into operation on 1 August 1979. They have been reviewed regularly since then, These amendments are necessary because the Patents Act 1952 has been repealed and the Patents Act 1990 introduced.
Rule 1
Provides a commencement date of 1 January 1993.
Rule 2
Provides that the Rules be amended.
Rule 3
Omits existing Order 54B and substitutes Order 54B - Intellectual Property. The substitution is necessary following the repeal of the Patents Act 1952 and introduction of the Patents Act 1990.
New Order 54B rule 1 - Interpretation
Subrules (1), (2) and (3) defined terms to be used in the rules and includes reference to the relevant intellectual property Acts (eg. Advance Australia Logo Protection Act, Copyright Act, Circuit Layouts Act, Designs Act etc).
New Order 54B rule 2 - Application of Order
Applies Order 54B to intellectual property cases.
New Order 54B rule 3 - Appearance by Commissioner
Provides for the circumstance where the Commissioner, defined in subrule (1) as the Commissioner under the Patents Act, Registrar in relation to the Designs, Trade Marks and Olympic Insignia Acts, can appear and be heard.
New Order 54B rule 4 - Form and Filing of Notice of Appeal
Generally provides for the form and filing of a notice of appeal.
Subrule (1) provides that a notice. of appeal should be in Form 58A.
Subrule (2) provides that an appeal must be instituted within 21 days or such other time as the Court fixes.
Subrule (3) provides for an application to extend time to be made by way of notice of motion supported by affidavit.
Subrule (4) provides for service of any application filed to extend time, on the relevant persons ie the Commissioner or Secretary.
Subrule (5) provides a definition of "appropriate registry" as being the place where the applicant prefers the appeal to be heard or at a Registry determined by the Court or a Judge.
New Order 54B rule 5 - Notice of Appeal, etc
Subrule (1) provides that the documents filed should include certain information, ie proceeding name and the title or description of the decision-maker.
Subrule (2) provides details of information which is required to be stated in the appeal documentation including the decision appealed from and its date; whether it is the whole or part of the decision; the orders sought and the grounds relied upon,
New Order 54B rule 6 - Provision of documents by Commissioner or Secretary
Provides for the filing in the appropriate Registry of documents necessary for the hearing which are in the possession of the Commissioner or Secretary. A list of the documents filed is to be given to the parties to the appeal.
New Order 54B rule 7 - Directions hearing
Provides for the fixing of a directions hearing not earlier than 28 days after the notice of appeal has been filed.
New Order 54B rule 8 - Evidence
Provides that the material before the Commissioner or Secretary for the purpose of the decision may be admissible in evidence at the hearing of the appeal with the leave of the Court. The Court may also make directions in relation to further evidence, either oral, on affidavit or otherwise pursuant to s.160(a) of the Patents Act at a directions hearing,
New Order 54B rule 9 - Application of Division
This rule specifies that "Division 1 - Other proceedings under a subject Act" - applies to proceedings under the Patents Act other than an appeal from a decision of the Commissioner or Secretary.
New Order 54B rule 10 - Applications under subsection 105(1) Patents Act (amendments)
Subrule (1) provides for an application under this section to be made only after giving notice to the Commissioner, accompanied by an advertisement which includes the identity of the relevant proceedings in; the particulars of the amendment sought; the applicant's address for service and notification that other persons should give written notice to the Commissioner within 28 days if they intend to oppose the application.
Subrule (2) provides for the Commissioner to publish the advertisement in the Official Journal unless the Court otherwise orders.
Subrule (3) provides that a person who has advised their intention to oppose the application may be heard in opposition subject to any direction of the Court as to costs.
Subrule (4) provides that this application be made within 50 days of publication of advertisement by notice of motion.
Subrule (5) provides for information on the amendment sought and a copy of the notice of motion to be served on the Commissioner, all parties and persons who have opposed the application.
Subrule (6) provides for the Court to give directions as it thinks fit for the conduct of the matter including a requirement that the applicant and a person opposing the application provide a statement of the grounds relied upon; the fixing of a hearing date for the notice of motion and the manner of adducing evidence.
New Order 54B rule 11 - Applications under subsection 120(1) Patents Act (infringements)
Subrule (1) provides that notwithstanding Order 4 rule 11, (time for service generally), the affidavit and statement of claim must be served, not later than 14 days before the directions bearing. Service must be on the respondent, and if the applicant is an exclusive licensee, the patentee and the Commissioner.
Subrule (2) requires that particulars of the infringements complained of must be given with at least one instance of each type of infringement and, for an infringement of a standard patent, which of the claims of the complete specification of the patent are alleged to be infringed.
Subrule (3) provides that a respondent relying on a defence under ss.144(4) of the Patents Act, (which states it is a defence to proceedings for infringement of a patent that the patented invention is, or was when the proceedings were started, the subject of a contract containing a provision, inserted by the patentee, that is void under this section) must give particulars of the date of the contract relied upon and the provision of the contract that is asserted to be void.
New Order 54B ride 12 - Applications under subsection 125(1) of Patents Act (non-infringement declarations)
Provides that applications under ss.125(1) of the Patents Act (non-infringement declarations) must be served not later than 14 days before the directions hearing, on the nominated person or the patentee and on the Commissioner.
New Order 54B rule 13 - Applications under subsection 128 Patents Act (relief from unjustified threat)
Provides that applications under ss.128(1) (relief from unjustified threat) must be served not later than 14 days before the directions hearing on the person making the threat and on the Commissioner.
New Order 54B rule 14 - Applications under Chapter 12 of Patents Act (compulsory licences, revocation etc)
Subrule (1) provides that for applications under ss.133(1), 134(1) or 138(1) of the Patents Act (compulsory licences, revocation etc) must be served not later than 14 days before the directions hearing, on the patentee, a person who claims an interest in the patent as exclusive licensee and the Commissioner.
Subrule (2) requires that the application and statement of claim must comply with Chapter 12 of the Patents Regulations, These Regulations include prescribed times for and methods of taking these actions.
Subrule (3) provides that an application for leave under ss.157(4) of the Patents Act (which states that where relevant proceedings in relation to a patent are pending the Commissioner must not accept an offer to surrender the patent) may be made by notice of motion.
New Order 54B rule 15 - Particulars of Invalidity
Subrule (1) provides that a party disputing the validity of a patent must provide particulars of the grounds of invalidity.
Subrule, (2) provides for the particulars to be given when one of the grounds referred to in the dispute as to validity is that the invention is not a patentable invention because of information in a document or through the doing of an act.
Subrule (3) provides for the particulars to be given where one of the grounds In the dispute or to the validity is a claim that the invention, is not useful and, where it is intended to rely on the fact that an example of the invention cannot be made to work either at all or as described in the specification.
Subrule (4) provides that except by leave of the Court, evidence is not admissible in proof of a ground of invalidity in which particulars have not been given.
New Order 54B rule 16 - Applications under Copyright Act (infringements)
Provides that in proceedings for infringement, particulars of the infringement of copyright, manner and at least one instance of each type of infringement alleged must be specified.
New Order 54B rule 17 - Application of Division
Provides that "Division 3 - Trade Marks Act" applies to proceedings under the Trade Marks Act other than an appeal from a decision of a Commissioner.
New Order 54B rule 18 - Applications under Trade Marks Act (infringements)
Provides that in proceedings for the infringement of a registered trade mark, particulars of the infringement, the manner and at least one instance of each type of infringement alleged must be specified.
New Order 54B rule 19 - Particulars of invalidity
Subrule (1) provides that a party who disputes the validity of the registration of a registered trade mark must deliver particulars of the grounds of invalidity relied upon.
Subrule (2) provides that except by leave of the Court, evidence is not admissible in proof of a ground of invalidity in which particulars have not been given.
New Order 54B rule 20 - Application of Division
Provides that "Division 4 - Designs Act" - applies to proceedings under the Designs Act other than an appeal from a decision of the Commissioner.
New Order 54B rule 21 - Applications under Designs Act (infringements)
Provides that in proceedings for the infringement of a monopoly in a registered design, particulars of the infringement, the manner and at least one instance of each type of infringement alleged must be provided.
New Order 54B rule 22 - Particulars of grounds for cancellation, rectification or of invalidity
Subrule (1) provides that where a party applies for the cancellation of the registration of a design under para. 28(a) of the Designs Act, applies for rectification under s.32 or s.39, or disputes the validity of registration of a registered design particulars of the grounds for cancellation or rectification or of invalidity be delivered with the pleadings.
Subrule (2) provides that if one of the grounds referred to in subrule (1) is previous publication or user, the particulars must state the time and place of previous publication or user. In the case of previous user, the particulars must specify the name of the previous user, the period the previous user is alleged to have continued and a description sufficient to identify the previous user.
Subrule (3) provides that 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.
New Order 54B rule 23 - Application under paragraph 28(b) Designs Act (compulsory licence)
Provides that in proceedings for the grant of a compulsory licence, particulars of the application must specify the article to which it is alleged the design is applied by manufacture outside the Commonwealth; the country in which the article is manufactured and 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.
New Order 54B rule 24 - Applications under ss.20(2) Circuit Layouts Act (equitable remuneration)
Provides that proceedings to determine equitable remuneration must be commenced by an application in accordance with Form 64 in the First Schedule to the Rules.
New Order 54B rule 25 - Applications under ss.25(4) of the Circuit Layouts Act (terms of the doing of the act)
Provides that proceedings to determine the terms of the doing of an act by the Commonwealth in relation to an EL right under ss.25(4) must be commenced by an application in accordance with Form 65 in the First Schedule.
New Order 54B rule 26 - Applications under Circuit Layouts Act (infringements)
Provides that in proceedings for infringement of EL rights (defined as the exclusive rights specified in s.17 of the Circuit Layouts Act in relation to an eligible layout) particulars of the infringements must specify the manner in which it is alleged the rights have been infringed and give at least one instance of each type of infringement alleged.
New Order 54B rule 27 - Applications under the Plant Variety Rights Art (infringements)
Subrule (1) provides that in proceedings for infringement of plant variety rights particulars of the infringement must specify the manner and give at least one instance of each type of infringement alleged.
Subrule (2) provides that a respondent relying on ss.41(2) of the Plant Variety Rights Act by way of cross-claim must give particulars of the facts relied on to show that the plant variety is not a new plant variety or of the facts intended to be relied on as facts existing before the grant of the plant variety rights and which, if known, would have resulted in a refusal of the ground.
New Order 54B rule 28 - Application of Division
Provides Division 7 - Olympic -Protection Insignia Act applies to proceedings under that Act other than an appeal from a decision of the Commissioner.
New Order 54B rule 29 - Application under Olympic Protection Insignia Act (infringements)
Provides that 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 lest one instance of each type of infringement alleged.
New Order 54B rule 30 - Particulars of grounds for rectification or of invalidity
Subrule (1) provides that a party who applies for rectification of the register or disputes the validity of a protected design under the Olympic Protection Insignia Act must deliver particulars of the grounds for rectification or of invalidity on which the party relies.
Subrule (2) provides that if one of the grounds referred to in subrule (1) is previous publication or user, the particulars must state the time and place of previous publication or user. In the case of previous user, the particulars must specify the name of the previous user, the period the previous user is alleged to have continued and a description sufficient to identify the previous user.
Subrule (3) provides that 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.
New Order 54B rule 31 - Experimental proof as evidence
Subrule (1) provides that in any proceedings in which a party proposes to submit experimental proof of a matter as evidence, directions of the Court must be obtained as to service of the particulars and the fact or facts that the proponent asserts will be established by the experiment and, as to conduct of the experiment and persons who may attend it.
Subrule, (2) provides that 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.
Rule 4
Omits Order 68 (Circuit Layouts Act 1989) as the procedures for these matters have been incorporated into New Order 54B.
Rule 5
3.1 Omits Forms no longer required by the terms of the Patents Act 1990 (eg. caveats and petitions).
5.2 Corrects existing Form 64 so that the wording corresponds with New Order 54B.
5.3 Corrects existing Form 65 so that the wording corresponds with new Order 54B.