The Federal Court of Australia has implemented innovative ways of dealing with interlocutory processes, especially in the field of intellectual property.
The new IP Practice Note takes effect from 25 October 2016. Some important new issues for practitioners come out of this:
a. There is now a “Intellectual Property NPA” (“national practice area”), under a National Coordinating Judge, with dedicated judges allocated IP matters in an effort to perpetuate, amongst other things, a “consistent national practice”.
b. The Federal Court had a “Fast Track” regime, where by pleadings can be dispensed with and substituted by a summaries outlining the nature of the dispute, the issues and the contentions. This Fast Track note has been revoked and replaced by an apparently broader direction that, read in conjunction with a new Central Practice Note, the parties should engage in innovative processes to expedite and abbreviate the interlocutory process.
Request for Expedition (previously “Fast Track”)
4.4 The Court notes that “parties may seek an expedited or truncated hearing process and a tailored or concise pleading process in any proceeding.”
4.5 The former Fast Track mechanisms permitted parties to seek a quicker or truncated hearing process than usually available and to use more informal pleadings than usual. The Fast Track procedure, or other effective and commercially sensible methods of commencing or expediting a proceeding or introducing informal pleadings processes, remains open to the parties in this NPA.
4.6 If a Fast Track or other expedited proceeding process is appropriate, the Court will attempt to provide a judge who has the necessary time available to devote to an expedited process and hearing. The parties should make plain at the time of filing any request for a truly expedited procedure and hearing.
4.7 The parties should otherwise make plain at the first case management hearing any request for an informal or abbreviated pleadings process.
c. . the parties must now inform the Court prior to the Case Management Conference of the intellectual property subject matter of the dispute:
4.3 at least 7 days prior to the first case management hearing (or earlier if the docket judge so requires), copies of the following documents are filed and served:
* any patent upon which the applicant sues;
* any trade mark registration or certificate of registered design upon which the applicant sues;
* any patent application which is the subject of the appeal;
* any application for a registered trade mark or application for a registered design that is the subject of the appeal;
* any written record of the decision (including any reasons) the subject of the appeal.
The last class of documents refers to appeals from the written decisions of the Trade Marks Registrar, the Designs Registrar, and the Patents Commissioner.
d. Extensive (and accordingly expensive) discovery now seems not just unlikely, but very unlikely. With an eye focussed especially upon copyright, the Note says, “In most cases there will not be any need for discovery except where it directly relates to proof of copying, knowledge or intention by or on the part of the party alleged to have infringed or other specific topics directly relevant to an issue in the proceeding. However, the Court is unlikely to make an order requiring extensive discovery unless satisfied that it is necessary for the just disposition of the proceeding.” Given the apparently weary observations in 2011 of His Honour Justice Applegarth this should not be too surprising.
e. Patent litigation receives special attention. Australian courts have been regarded as sitting on the edge of innovation in respect of dealing with evidence provided by patent experts in the “hot tub” method. The new practice note opens the door to the parties applying to the Court for the appointment of a Court expert – on the face of it a very European approach, but one with a basis in section 217 of the Patents Act 1990 which permits a court to appoint an assessor at trial.
Other new rules affecting patents apply to:
a. Case management especially relating to experiments and investigations, no doubt to partly mitigate the court’s discretion to exercise of s 135 of the Evidence Act 1995, under which the Court may refuse to admit evidence if its probative value is substantially outweighed by the danger that the evidence might be misleading or confusing or cause or result in an undue waste of time;
b. An early, agreed primers for judges and an agreed glossary of key terms;
c. A “Position Statement on Infringement”;
d. An “unambiguous” description of the product, method or process, which intended to cut across the complexity of interpreting often esoteric patent drafting;
e. Early dealings with validity issues to do with priority dates and secondary indicia of inventiveness.
Some of this seems likely to be also appropriate for plant breeder’s rights disputes.
f. Survey evidence again receives special attention. The utility of survey evidence especially in trade mark matters has been questioned many times by Australian courts and in this note the Court observes surveys’ sometimes “questionable utility”.
The issue of the IP Practice Note coincides with the issue of many other practice notes, including a Central Practice Note. Some of these have obvious and immediate application to intellectual property issues: for example, in considering the question of written evidence the parties should attempt to eliminate the use of unnecessary or prolix affidavits, parties should consider exchanging proofs of evidence of witnesses at an early stage – again, an echo of Justice Applegarth’s sentiments. Such proofs do not have to be in admissible form and may not require large expense in preparation. They can be exchanged to show the nature of the case to be met; and they will usually be exchanged under order of the Court that prohibits cross-examination upon them or their tendering, except with the leave of the Court.