Anyone contemplating patent litigation in Australia.
What do you need to do?Patent litigants can take advantage of streamlined procedures in the Federal Court.
Kim O'Connell
Partner
Robert Cooper
Partner
Katie Hamilton
Solicitor
Robert Cooper
Partner
T +61 3 9643 4405
Sydney
Kim O'Connell
Melbourne
Wayne McMaster
Brisbane
John Swinson
The Australian Federal Court is to roll out an intensive case management procedure for patent litigation, following a pilot program that has been run in Sydney over the last 12 months. For some time, Judges and patent litigants have recognised a need to streamline Australian patent litigation so that matters can be dealt with faster and be more affordable.
The Federal Court has been trialling a case management procedure which focuses on narrowing the issues at an early stage of the proceeding in order to reduce the scale of discovery and limit the amount of technical expert evidence required. The scheme involves having one patent list Judge in each State, who will manage all patent proceedings until the case is ready for hearing, at which point it will be assigned to a docket Judge. The patent list judge for Sydney is Justice Annabelle Bennett, who has been running the pilot of the scheme for the past 12 months. The patent list Judges for the other states have yet to be announced.
Given that discovery is often a major expense in patent litigation, the scheme focuses on narrowing the issues before discovery is ordered. The parties have to meet to discuss the issues to be addressed by discovery, and the nature of the documents sought, before the patent list Judge will order targeted discovery.
If the patent list Judge considers that the parties have failed to satisfactorily narrow the issues in the pleadings, the parties may be referred to a procedural mediation. If appropriate, a case management conference may be arranged either with the patent list Judge or the docket Judge to resolve issues concerning discovery and any other interlocutory steps.
The scheme also focuses on identifying common ground between experts. For example, experts may agree on a textbook that can be used to give the Judge a basic understanding of the technology involved, rather than including this information in separate expert reports. Prior to the hearing, the parties should consult as to procedures in relation to evidence, such as concurrent evidence of experts and prior meetings of experts to explain or narrow the issues in dispute.
The timeline for the roll-out of this case management scheme beyond Sydney is yet to be determined.
Those contemplating patent litigation in Australia will welcome the broader application of the pilot scheme. It has the potential to greatly streamline proceedings and contain costs, and should enable parties to narrow the issues between them at an early stage. In appropriate matters, it should enable the parties to achieve a hearing date more quickly and, because of the early identification of issues, may also lead to earlier resolution of patent disputes.