Judicial Administration Structure for IP Disputes: Australia

IP Australia is the Australian Government body responsible for administering Australia's intellectual property system.

Within IP Australia:

- The Commissioner of Patents examines, hears oppositions to, and grants patents;

- The Registrar of Trade Marks examines, hears oppositions to, and registers trade marks;

- The Registrar of Designs registers and certifies designs; and

- The Registrar of Plant Breeder's Rights examines, hears oppositions to, and grants plant breeder's rights.

Appeals from decisions made by the Commissioner and the Registrars, including decisions in relation to both opposed and unopposed applications, may be brought in the Federal Court of Australia where a single judge will hear the matter de novo.

A limited number of decisions made by the Registrars of Trade Marks and Designs may be brought in the Federal Circuit Court of Australia, which has limited jurisdiction to hear intellectual property matters. The proceedings will be heard by a single judge de novo.

The Copyright Tribunal of Australia has jurisdiction with respect to statutory and voluntary licensing of copyright works, and is not bound by the rules of evidence. The Tribunal may, of its own motion or on the motion of a party, refer any questions of law which arise to the Federal Court of Australia. There is no right of appeal from a decision of the Tribunal because it is an administrative body, however a party may seek judicial review of a Tribunal decision.

State and Territory courts

Australia is a federation of States and Territories, which each have their own governments and laws. Under s 51(xviii) of the Australian Constitution, the Federal Parliament has the power to make laws with respect to intellectual property. Accordingly, intellectual property disputes are generally brought in Federal courts. However, State and Territory courts have limited jurisdiction to hear criminal prosecutions and civil matters where the court's equitable jurisdiction is enlivened. Proceedings in State and Territory courts are heard by a single judge.

Federal Circuit Court of Australia

The Federal Circuit Court has limited jurisdiction to hear intellectual property matters. It does not have jurisdiction to hear any criminal proceedings, but deals with civil claims in relation to infringement of copyright, trade marks, designs and plant breeder's rights. In practice, it also has jurisdiction to hear certain appeals from the Registrars of Trade Marks and Designs, which are conducted as hearings de novo, although IP proceedings are infrequently commenced.

Federal Court of Australia

The Federal Court has both first instance and appellate jurisdiction. First instance matters are heard by a single judge, while appellate matters are typically heard by three or more judges sitting together as the Full Court of the Federal Court.

At first instance a single judge of the Federal Court has jurisdiction to hear both civil and criminal disputes relating to infringement of any intellectual property right. The Federal Court constituted by a single judge also has jurisdiction to hear appeals from the Commissioner of Patents and the Registrars of Trade Marks, Designs and Plant Breeder's Rights. Such appeals are conducted as a hearing de novo.

The Full Court of the Federal Court hears appeals from: decisions of the Federal Circuit Court; first instance decisions of a single judge in the Federal Court; and a single judge's decision in a de novo appeal from the Commissioner or Registrars, though leave is required in order to appeal such a decision to the Full Court.

High Court of Australia

The High Court is Australia's ultimate appellate court. There is no automatic right of appeal to the High Court from a decision of a lower court. Instead, a party must apply for special leave to appeal. Most special leave applications are decided on the papers, though the court may request oral submissions from the parties if considered necessary. If special leave is granted, the appeal is conducted by a full court of no less than two and up to seven judges.

Decisions of the High Court, including a decision to refuse special leave, cannot be appealed.

The Federal Court has developed a national intellectual property practice area which covers patent, trade mark, copyright and industrial designs. The national practice area is designed to ensure that these matters are dealt with by judges and registrars with experience and expertise in the subject. It has issued a Practice Note which describes how intellectual property matters are managed by the court.

The Federal Court Rules 2011 (Cth) provide specialized rules for intellectual property cases. Among other things, the Rules require specialized forms and documents to be filed in respect of allegations of invalidity and infringement of intellectual property rights. The Federal Circuit Court adopts the intellectual property rules of the Federal Court.

The usual rules of evidence do not apply in proceedings before the Commissioner of Patents and the Registrars of Trade Marks, Designs and Plant Breeder's Rights. However, if a party appeals to the Federal Court, the usual rules of evidence will apply for the hearing de novo.

High Court of Australia: http://eresources.hcourt.gov.au/

Federal Court of Australia: https://www.fedcourt.gov.au/digital-law-library/judgments/search

Federal Circuit Court of Australia and IP Australia, including decisions of the Commissioner of Patents and the Registrars of Trade Marks, Designs and Plant Breeder's Rights: http://www.austlii.edu.au/

WIPO Lex – Australia