A new Practice Note1 introduced by the Federal Court of Australia promises to facilitate more efficient and economical resolution of patent disputes in Australia.
The complexities of patent litigation, including the centrality of expert witnesses and the many common construction issues and challenges to validity, must be carefully managed to ensure that patent disputes can be resolved quickly and cost effectively.
The new Practice Note provides the Court with a range of tools to achieve this, centred around the keystone expectation of a trial within 12-18 months of commencement.
Background
Many of the measures introduced have been used in recent years by patent judges on a discretionary basis. However, their codification into a default position, with cogent reasons required to depart from the framework, is likely to have significant impact on patent litigation in Australia.
Following a pilot program of the new procedures earlier in 2025, the Practice Note came into effect on 8 August 2025 and now applies to all patent proceedings including those already in progress. Below, we consider the key new procedures and how patent litigants can expect to see patent litigation change in Australia. We also provide a timeline graphic incorporating the new procedures for clarity.
Key takeaways
Parties in Australian patent litigation proceedings should:
- Identify and retain suitable experts as early as possible once the prospect of litigation arises
- Prepare for earlier costs
- Consider carefully whether interlocutory applications are appropriate.
Appeals from decisions of the Commissioner of Patents are not within the scope of the Practice Note, although it is possible that judges may have regard to its principles, particularly in respect of evidence, expert conclaves and pre-trial matters.
First case management hearing and the Standard Directions
The first case management hearing is crucial to the new framework, and will continue to take place around 4-6 weeks after commencement of the proceeding. At that hearing the Court will consider the appropriateness for the particular case of Standard Directions, as set out in the Practice Note. We anticipate the Court will not lightly depart from these directions.
In a substantial change, other than in exceptional cases, a trial date will be set at the first case management hearing around 12 to 18 months after that hearing. This provides a 'back-stop' on the proceeding, and parties will be expected to 'cut their cloth' so that all preparatory steps are completed within that timeframe.
At the first case management hearing parties will need to be ready to discuss matters such as any need for experimental evidence, the length of trial, and potential separate questions.
Together with other steps which will be required early in the proceeding (see further below), the new framework will require parties to be well advanced in understanding their respective cases at a very early stage. This could prove a significant strategic advantage for applicants who have had the opportunity to prepare over a longer period of time. In particular, identifying and securing experts at an early stage will be crucial.
Position statements | Product/process descriptions
The Standard Directions require the exchange of position statements on infringement and validity within 5 weeks of the first case management hearing. Where a respondent does not admit infringement, this includes the filing of a product/process description directed to any integers of the relevant claims in dispute.
Product/process descriptions have been in use in patent infringement proceedings for some time, often offered by a respondent in order to avoid the need for discovery on relevant features. They involve a detailed explanation of relevant features of the product/process, to make clear the basis on which infringement is disputed, and must be verified by a person who can be called for cross-examination.
Given the consequences that can flow from the description, the task of preparing it is often an onerous one, requiring a very detailed analysis of the relevant product or process. Ideally engagement with the expert(s) will also have commenced before the description is completed.
While the Practice Note does not rule out discovery being sought on disputed integers, it is likely that a well executed description, supported by business records, will at least significantly reduce the discovery required.
Discovery | Multiple patents, claims & grounds of invalidity
A number of recent IP judgments have raised concerns about overly complex proceedings, including the assertion of multiple patents, large numbers of claims and invalidity attacks run on many grounds. The Practice Note:
- indicates that parties should confine their claims of infringement and invalidity as far as possible, including seeking to assert only one patent if possible.
- contemplates a direction to a patentee to propose determination of infringement and validity of a subset of patents, claims or infringement types as separate questions, or that the case is run on the basis of exemplar claims. This aims to reduce complexity, and a similar approach might apply where infringement is alleged in respect of a range of products.
To meet these expectations, the parties will likely need to discuss at the outset how the case can be confined on both sides, and what agreement can be reached with regard to exemplar claims and products, to allow for the outcome on certain claims or products to be extended to others.
Given that each patent claim represents a separate bargain, trading off between claim breadth and potential validity issues, the Court will need to balance the entitlement of the patentee to exercise its patent rights with the interests of efficiency.
The proposal to use separate questions is also an interesting one. The Court has often been reluctant to deal with separate questions, considering that they are more likely to increase cost and time, than create efficiencies. Over time, the factors supporting a separate question approach will likely become clearer.
Expert evidence
Overall, the Standard Directions with respect to evidence do not significantly change current practice.
The Directions contemplate that the number of experts and their technical fields will be stipulated in the orders made at the first case management conference, underscoring the need to engage early with experts.
They formalise a process for the experts to seek to agree in written evidence on a technical primer, and on matters of common general knowledge. Page limits for expert evidence may be imposed after consultation with the parties.
The Directions also include a summary of the law relevant to the concept of common general knowledge which may be supplied to the experts.
Costs payable forthwith on interlocutory applications
Currently, costs awarded on interlocutory applications are generally not quantified by the Court and consequently are not enforced until conclusion of the proceedings since it makes sense to quantify all costs together.
By contrast, the Practice Note specifies that the Court may make an order for lump sum costs, payable within 14 days of the costs order. Each party must file and serve a statement of costs claimed for an application shortly before the hearing of that application.
In this regard it refers to a similar approach in the UK, introduced by the Woolf reforms in 1999. The Jackson Review of Civil Litigation Costs published in the UK in 2009 was generally supportive of the concept, noting that it deterred frivolous applications.
It is likely to have a similar deterrent effect in the Federal Court, or at least encourage early resolution of such applications, and we will await future assessments of the impact that this measure has.
Security for costs
A respondent to patent proceedings may wish to consider whether the applicant would be able to satisfy an adverse costs order if unsuccessful.
Since proceedings will move quickly under the new procedures, a respondent will need to consider this question early, and should foreshadow any such application at the first case management hearing, if the application is not filed beforehand.
Conclusion
The Practice Note reflects a shift toward tighter case management, earlier and more substantive engagement on key issues, and greater discipline in the conduct of proceedings. As a result of this and the generally compressed timeline, early preparation will be critical.
While it is hoped that the measures will reduce overall costs of proceedings, the compressed timetable means that costs will be incurred over a shorter period of time with some of those costs shifted to the early weeks and months of the proceeding- including before the first case management hearing. Litigants will need to plan accordingly.
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Footnotes:
1 Intellectual Property Practice Note -(Practice Note IP-2)
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
