Seeking legal advice
You should seek legal advice about your matter as soon as possible. A lawyer can help you understand your legal rights and responsibilities. They can also explain how the law applies to your case. Intellectual property law can be complex and it is important to obtain some independent legal advice in relation to your situation.
A community legal centre or legal aid may be able to assist you with advice.
Preparing an application
To commence an intellectual property proceeding, you need to use the appropriate form.
- For all intellectual property disputes (except an appeal from a decision of the Registrar of Trade Marks, the Registrar of Designs, or the Registrar of Plant Breeder’s Rights), use the Originating Application – General Federal Law. The application must also state the principal legislation under which the proceeding is brought.
- For an appeal from a decision of the Registrar of Trade Marks or the Registrar of Designs, use the Federal Court’s Notice of Appeal (Intellectual Property)
You must also file a statement of claim or points of claim, or an Affidavit - General federal law and migration.
If Part 2 of the Civil Dispute Resolution Act 2011 applies to the proceeding, you must file a Genuine steps statement.
The grounds of an application must explain briefly the basis on which the orders are sought.
If you file a statement of claim or points of claim to support your application, that pleading should observe the requirements of Part 13 of the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2025 (General Federal Law Rules). The pleading should summarise the material facts on which you rely, but not the evidence by which those facts are to be proved. All necessary particulars must be given.
If you file an affidavit, see the fact sheet Preparing an affidavit.
Consider whether the use of a concise statement in support of your originating application should be used, instead of points of claim or supporting affidavit. The purpose of a concise statement is to enable you to bring to the attention of the respondent and the Court, the key issues and key facts at the heart of the dispute and the essential relief sought from the Court.
You should prepare it in the nature of a pleading summons and it may be drafted in a narrative form. If a concise statement is filed with the application, no further originating material in support (points of claim or affidavit) needs to be filed until the Court orders.
The concise statement should not exceed five pages (including formal parts). It should be plain, concise and direct, and summarise the following:
- the important facts giving rise to the claim
- the relief sought and against whom
- the primary legal grounds (causes of action) for the relief sought, and
- the alleged harm you suffered, including, wherever possible, a conservative and realistic estimate or range of loss and damage.
In most cases, if you file an application and affidavit in support, you will not need to file a statement of claim or a points of claim, but, where appropriate, on the first court date (a case management hearing) the Court may order you to file and serve points of claim, in addition to any affidavit you may have filed.
For more information see the General Federal Law Practice Direction – Intellectual property proceedings (GENFED-IP).
What do I need to pay?
You will need to pay a filing fee to the Court when you file the application. For the current fees see, Fees.
In some circumstances, you may be exempt from paying court fees, for example, if you are a concession holder. You will need to apply to the Court for the exemption, using the Application for Exemption from Paying Court Fees – General. You can also apply for an exemption if paying court fees would cause you financial hardship, by filing the Application for Exemption from paying Court fees or reduction – Financial Hardship.
The filing fee is separate from legal fees you may need to pay your lawyer if you decide to use one for your matter.
Filing with the Court
Wherever possible, you must file court documents commencing or relevant to an existing matter online using eLodgment. You may also eLodge documents regarding a proceeding including draft orders, consent orders, and case management correspondence. See the Federal Court website for information on how to use eLodgment.
If it is not possible to file using eLodgment, you may be able to file your documents in person, by mail, or in certain circumstances by fax or email. Contact the Court if you are not sure how to file the documents.
How do I notify the respondent?
After your application has been filed, you must 'serve' the application and the supporting statement of claim or points of claim or Affidavit - General federal law and migration on the respondent. This means you must make sure that the respondent receives the filed documents. At the hearing, the judge will often ask for evidence that you have served the documents.
You can serve the documents by delivering them in person. If the respondent is an organisation, corporation or partnership you may be able to send the documents by registered or express post to their registered office (see Division 10.1 of the General Federal Law Rules).
If you are serving documents on an individual, you (or someone who serves the documents on your behalf) should serve the documents in person.
If you cannot serve the documents in person or the documents sent by post cannot be delivered, you can apply to the Court for an order that you may serve the documents in a different way, for example, by email. This is known as ‘substituted service’. You make that application by filing an Interlocutory Application with an accompanying Affidavit explaining why you want to serve the application in a different way. The Court will then consider whether to make an order for substituted service. If an order is made, you will need to serve the documents as set out in the order.
After the documents have been served, you will need to complete an Affidavit of service, which you should file with the Court (using eLodgment). The affidavit of service must be sworn or affirmed in front of a person authorised by law to witness the swearing of affidavits, such as a lawyer or Justice of the Peace. You should have a copy of the filed affidavit of service with you at the court hearing.
Costs
The Court normally awards costs to the successful party. Schedule 2 to the General Federal Law Rules provides an event-based costs regime, which means certain events in the matter are assigned an amount of money the successful party can recover from the unsuccessful party. However, there is discretion to depart from this regime, and a judge may fix the amount of costs and disbursements payable.
If an order is made for costs to be paid in accordance with the scale of costs applied in the Federal Court of Australia, then – failing agreement – costs may be referred for assessment in accordance with the Federal Court Rules.
Rule 32.15 of the General Federal Law Rules provides that the Court may specify the maximum costs that may be recovered on a party-party basis. It is expected that the Court will use this provision in dealing with intellectual property proceedings.
