If your efforts to resolve a disoute outside of court are unsuccessful, or if you choose to bypass these alternative alternative resolution methods, you may wish to start proceedings in a court of law.
Infringement proceedings are very expensive and they allow the other party to challenge the validity of IP rights.
The following are examples of applications made on an urgent basis.
The court has the power to order an interim injunction. This may be an order that the alleged infringers stop their infringing action pending the outcome of a trial (which can take many months).
Application for interim injunction
This is an application to the court to immediately stop certain behaviour or to require a person or company to do certain things.
A court will issue an injunction when it believes there is a serious issue to be tried and monetary damages would not be an adequate remedy.
If an injunction is issued, the infringing conduct, although yet unproven, must be stopped immediately.
Interim injunctions are usually ordered for short periods of time, often one or two days. After this time the parties are required to attend court to determine whether or not the injunction should be continued.
If an interim injunction is granted and it is later found that it should not have been ordered, compensation may need to be paid to the person adversely affected.
Application for preliminary discovery
You may not know the identity of an infringer until you gain access to relevant information and documents. An order for preliminary discovery requires a person or company to give you information about possible infringers. The person or company concerned may not end up being a defendant, but merely someone who has relevant information or documents.
Anton Piller order
Anton Piller orders are the civil equivalent of a search warrant. They allow the owner of an IP right to search an infringer's premises and seize specific items relating to infringing conduct.
Anton Piller orders are not easily obtained. You must demonstrate:
- a prima facie case of infringement (a case with evidence)
- potentially serious or actual damage
- clear and strong evidence that the alleged infringer is likely to possess relevant documents or evidence
- clear and strong evidence that relevant documents or evidence are likely to be destroyed or concealed if the infringer has prior notice of the proceedings.
An Anton Piller order is only the first part of proceedings. All other aspects of the alleged infringement need to be proven in court.
Patent litigation in the Federal Court
The Federal Court of Australia has jurisdiction to hear and determine patent infringement and patent revocation disputes, and appeals from the Commissioner of Patents.
The Federal Court recognises that patent cases will vary in complexity and that there may need to be different approaches applied to the case management.
That is, some patent cases are necessarily complex, whereas other patent disputes may be more straightforward.
The key objective of case management is to reduce costs and delay, where possible, so that there is/are:
- fewer issues in contest;
- in relation to those issues, no greater factual investigation than justice requires;
- effective use of expert evidence; and
- as few interlocutory applications as necessary for the just and efficient disposition of matters.
For further information about case management of patent cases in the Federal Court see the Federal Court’s Intellectual Property Practice Note (IP-1) which is to be read together with the Central Practice: National Court Framework and Case Management (CPN-1).
Request for expedited hearing
Where it is appropriate to do so, parties may seek an expedited or truncated hearing process in any proceeding.
Parties should request any truncated or expedited hearing process at or before the first case management hearing before the Judge. The parties should also make plain at the time of filing any request for a truly expedited procedure and hearing.
Request for trial limitations
Parties may also seek, where it is appropriate to do so:
- trial limitations as to time (for the examination of witnesses; for making submissions; for presenting a party’s case; and for the hearing generally); the number of witnesses to be called (including expert witnesses); and the length of written submissions; and the number of documents that can be tendered under rule 30.23 of the Federal Court Rules 2011 (Cth) (the Rules);
- an order specifying the maximum costs as between party and party that may be recovered for the proceeding under rule 40.51 of the Rules; and
- orders for other suitable procedures to be adopted to streamline the conduct of the proceedings.
For further information regarding the Federal Court’s practice notes, forms, rules, fees, legislation and the latest judgments regarding patents, see the Federal Court’s Patents and Associated Statutes Sub-area page.
Please note that the information on this page is general advice and not intended to replace legal advice specific to your situation.