5th July 2019 - Sveth Milanes

The Intellectual Property National Pilot Scheme of the Federal Circuit Court (FCC) of Australia aims to resolve disputes quickly and effectively without breaking the bank! The pilot scheme commenced on 1 July 2018.

Small and medium-sized enterprises, individual rights holders and young innovators challenged by expensive and complex litigation proceedings even with legitimate rights or good defenses might now find going to court more appealing under the new IP FCC procedures. Important changes have been made to make the proceedings affordable, streamlined and informal.

From 1 July 2018, all intellectual property matters filed in the FCC will be docketed to Judge Julia Baird. Judge Baird usually sits in Sydney, but Court appearances will be managed by video or telephone link when parties or their representatives are in different locations.

This significant change was brought about through a study made by the Productivity Commission into Australia’s legal practices in intellectual property. The Productivity Commission observed in their final report that SMEs refrain from going to court with their intellectual property disputes due to the high cost of the proceedings.

Taking into consideration the Productivity Commission’s enquiry, the Australian Government then conducted trial practice directions before the Melbourne registry of the FCC, formed an intellectual property panel of three new judges. By 1 July 2018, the new practice directions have been applied nationally.

The FCC Intellectual Property Practice Direction details guidelines for the administration of intellectual property matters in the FCC.

According to the guidelines, the FCC has concurrent jurisdiction with the Federal Court on matters regarding civil disputes on copyright, designs, trade marks and plant breeder’s rights. The Court can also provide for declaratory and injunctive relief and award damages and accounts of profits. Significantly, there is no limit on the award of damages or taking of an account of profits, or on the ability of the Court to award additional damages for matters coming under intellectual property legislation.

The case management hearing will generally be held within three weeks of the filing of the application. The hearing will be conducted in such a manner that is proportionate to the type of the case, financial status of the parties, how complicated and important the case is, and the amount of money involved or issues in dispute.

Furthermore, the judge will make sure that the trial does not take longer than two days in the majority of cases and if the parties are in agreement, the trial may be conducted entirely on the papers. Decisions will be handed down within a month or earlier for urgent matters.

Mediation will be conducted by the Court Registrars or through private mediation by consent of the parties. After the final hearing, a decision will be given, where practicable, generally within the month, and in urgent matters, within a week.

As for costs, an applicant will pay AU$655 (individual rate) or AU$1,605 (corporate rate) in the FCC compared with AU$1,390 (individual rate) and AU$4,045 (corporate rate) in the Federal Court.

Take away points:

• The FCC has jurisdiction over matters concerning copyright, designs, trade marks and plant breeder’s rights, as well as consumer law claims. Currently, the court’s jurisdiction is not expanded to include patent matters.
• The FCC has concurrent jurisdiction with the Federal Court and matters can also be transferred from one court to another.
• According to the FCC scale, costs are awarded based on party-party, however, the Court has discretion to diverge from this concept.
• There is no limit on the award of damages, account of profits and additional damages for IP matters.
• There is a limit of $750,00 for damages awarded in consumers and trade practices matters.
  
  Svethlana Milanes, ABComm

  Contact W3IP Law on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at law@w3iplaw.com.au.

Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.