Litigation / Foreign Patent Litigation / Australia

Patent Litigation in Australia

Scope of Protection

Claim interpretation in Australia is fairly literal with no fully developed doctrine of equivalents. The general view is that the patentee should be held to what he has said is essential in his claim. However, the claim will be construed in a purposive manner and the court will look to see whether a requirement of a claim should be construed strictly or some latitude may be possible and still achieve the same purpose.

A significant change made by the 1991 Act is to provide for the first time a basis for infringement actions based on contributory infringement although this only applies if the infringing use is the only reasonable use of the product in question or the supplier has reason to believe that the product in question will be used in an infringing way. The Act also specifically provides for remedies against those who induce an infringement.

Enforcement

About 20 to 40 patent infringement actions are started each year but only about 10% go to trial.

Patent infringement actions may be brought in the state courts or the Federal Court, of which there is a Register in each state. For the court to have jurisdiction either the infringement must occur within its jurisdiction or a party be resident there.

Litigation follows the English model with evidence normally being given in person or by affidavit. Anyone who gives evidence by way of affidavit must be available for cross examination at the trial unless the adverse party agrees that this is not necessary. Discovery of documents held by the adverse party is required and it is common for the court to order inspection of a plant where it is alleged that infringement occurs. In appropriate cases the Court may issue an Anton Piller order (an order normally issued on an ex parte application in cases where it is feared that if the prospective defendant were given notice of the impending inspection the evidence sought would disappear) enabling a plaintiff to gain access to the defendant's premises in order to search for and seize any evidence of infringement found. Deposition of witnesses before trial does not form part of Australian practice although written interrogatories are possible.

Remedies for infringement include an injunction, either damages or an account of profits made by the infringer and delivery up and destination of infringing items. An "innocent" infringer who did not know the patent existed may avoid the need to pay damages or account for the profits made. However, the court will normally presume such knowledge and it is up to the defendant to prove its "innocence". Damages are intended to be compensatory and not punitive.

Invalidity of the patent being sued upon is a defense to an infringement action and the defendant may also counter claim for revocation of the patent in question, in which case the actions will be consolidated.

Interlocutory injunctions to retain the status quo prior to trial are available as a matter of equity to provide early relief in cases where damages are an inadequate remedy. To obtain an interlocutory injunction the plaintiff show must show that there is a prima facie case of infringement, the patent is likely to be valid and that the balance of convenience lies in favor of making the order. A major factor in determining where the balance lies is often whether or not there have been any significant sales of the infringing product. To obtain an interlocutory injunction, the plaintiff must give an undertaking as to damages in case it fails to succeed at the final trial of the action. If the plaintiff has insufficient assets in Australia to satisfy the undertaking, the court may order that the plaintiff provides security for the amount in question, normally in the form of a bank guarantee. Evidence in applications for interlocutory injunctions is normally given by way of affidavit.

Typically it takes from one to two years for a patent infringement action to reach a first instance decision and, if as is normal there is a counterclaim for revocation, the costs will be in the range $A 100,000 to $A 500,000. The loser is required to contribute to the costs of the winner (including attorney fees) and the winner normally recoups about 2/3 of its expenditure from the loser.

Australia has no criminal provisions relating to patent infringement.