Intellectual Property NPA and Requests for Expedition in the Federal Court: ‘Faster, flexible and cheaper’

The Federal Court of Australia has a designated intellectual property national practice area (IP NPA), where the Court allocates specific judges to intellectual property matters to ensure a more consistent national practice.

The Court recognises that there is a certain degree of specialisation required within these matters and as such there are three sub-areas within the IP NPA:

  1. Patents and Associated Statutes;
  2. Trade Marks; and
  3. Copyright and Industrial Designs.

To facilitate the running of those proceedings, the Court has published Practice Notes for intellectual property matters in the Court.

Expedited Hearings

Previously, the Court had instilled a ‘Fast Track’ process in which the Court has allowed parties to seek a quicker and more streamlined hearing process through the introduction of an informal pleadings process.

Historically, the use of the Fast Track proceedings was limited and confined to commercial and intellectual property matters only.  Since 2019, the Fast Track proceedings process has been superseded by the ‘request for expedition’ process in which the Court provides an even broader avenue for parties to engage in innovative processes to expedite the interlocutory process.

Current reforms and new practice documents now provide parties with the option to request an expedited or truncated hearing process and a concise pleading process.

If a Court deems it appropriate for the proceeding to be expedited, the Court endeavours to provide a judge with the necessary availability to devote themselves to the expedited hearing. 

They key focus of the Court is to ensure that the most appropriate and efficient mechanisms for case management are adopted when considering the nature of each matter and the needs of the parties. This recognises that speed of resolution can be very important in disputes.

How and when do parties make a Request for Expedition?

The parties to a dispute need to consider whether it is appropriate for them to request to utilise the flexible procedures available for the commencement of proceedings, or the filing of tailored pleading material.

Parties should endeavour to make their request for a ‘truly expedited procedure and hearing’ at the time of filing.

If the parties fail to make this request at the first available instance, parties should otherwise ‘make plain at the first case management hearing any request for an informal or abbreviated pleadings process’.

An example of this process includes the ‘concise statement’ method as outlined in the Commercial and Corporations Practice Note (C&C-1), which involves the applicant filing a concise statement in support of an originating application.

The purpose of a concise statement is for the applicant to outline to the respondent and the Court the key issues and facts that are at the heart of the dispute, in addition to the relief sought from the Court at the outset.

A benefit of this method is to condense the key issues in the dispute before incurring what might be a considerable amount of costs in preparing detailed pleadings.

Lavan comment

Identifying the most appropriate mechanism to proceed with your intellectual property dispute at the first instance can help resolve your dispute in the most expedient fashion could save you from incurring a considerable amount of legal costs in preparing detailed pleadings.

It is something that needs to be considered at the outset if the process is to be accessed.

If you require further assistance or advice in relation to commencing intellectual property proceedings in the Federal Court of Australia, or further information on requests for expedition, please do not hesitate to contact Iain Freeman or Andrew Sutton.