Worth the fight: IP dispute resolution that won’t break the bank

Small businesses and individual rights holders are set to benefit from the Intellectual Property National Pilot Scheme in the Federal Circuit Court

A specialist IP list in the Federal Circuit Court of Australia (FCC) is open for business, with the goal of achieving quick, cheap and effective dispute resolution of intellectual property matters.

The Intellectual Property National Pilot Scheme commenced on 1 July 2018 and appeals to small and medium-sized enterprises, individual rights holders and young innovators who may have previously avoided the court system even though they had a legitimate right or a good defence, but found that it simply wasn’t worth the fight.

All intellectual property matters filed in the FCC will be docketed to Judge Julia Baird. Prior to her appointment, Judge Baird was a Sydney based barrister specialising in intellectual property.

The scheme aims to give litigants greater certainty in enforcing and defending their rights with timeliness, lower cost and less risk.  For instance, upon issuing proceedings, an applicant will pay A$655 (individual rate) or A$1,605 (corporate rate) compared with A$1,390 (individual rate)/A$4,045 (corporate rate) in the Federal Court. The FCC will aim to list the matter for case management within three weeks of initiating proceedings.

While intellectual property matters could previously be filed in the FCC, the list is significant because it represents a dedicated approach to IP matters with a Judge that specialised in intellectual property.

On 21 August 2018, the FCC published a practice direction, which sets out the arrangement for management of intellectual property matters in the FCC.

What do I need to know?

• The FCC has jurisdiction to hear and determine copyright, designs, trade marks and plant breeder’s rights, as well as consumer law claims.
• The FCC has concurrent jurisdiction with the Federal Court and matters can be transferred between the courts.
• Costs are awarded on a party-party basis according to the FCC scale, although the Court has discretion to depart from this approach.

Click here for the Intellectual Property Practice Direction.

By Chris Round and Olivia Coburn