General Federal Law Practice Direction: Intellectual Property proceedings

(GENFED-IP)

1. Purpose

1.1 The purpose of this Practice Direction is to set out the practice and procedure of the Federal Circuit and Family Court of Australia (Division 2) (Court) for the case management of intellectual property (IP) proceedings.

1.2 The overarching purpose of the Court’s civil practice and procedure is the just resolution of disputes according to law as quickly, inexpensively and efficiently as possible.¹ Parties have a duty to act consistently with the overarching purpose, and practitioners must assist parties to comply with the duty.

2. Scope

2.1 This Practice Direction applies nationally from 1 September 2025 to all IP proceedings in the Court. This Practice Direction will also apply to IP proceedings commenced before 1 September 2025, unless the Court considers it would be unfair or impractical to do so.

2.2 This Practice Direction is to be read together with:

1. the Federal Circuit and Family Court of Australia Act 2021 (Cth) (the Act);
2. the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2025 (the General Federal Law Rules), in particular Part 30 which deals with IP proceedings;
3. the Federal Court of Australia Act 1976 (Cth) (Federal Court Act); and
4. the Federal Court Rules 2011 (Federal Court Rules).

2.3 Where the General Federal Law Rules are insufficient or inappropriate, the Court may apply the Federal Court Rules. 

3. Starting a proceeding

3.1 All documents must be lodged electronically via eLodgment unless otherwise permitted by the General Federal Law Rules.

3.2 To the extent that Part 2 of the of the Civil Dispute Resolution Act 2011 (Cth) (Civil Dispute Resolution Act) applies to a potential proceeding, the applicant must take genuine steps to try to resolve the dispute before commencing proceedings in the Court.

Originating application

3.3 An IP proceeding is commenced by filing an Originating Application—General Federal Law. Other than appeals from a decision of the Registrar of Trade Marks or Designs, the application must state the principal legislation under which the proceeding is brought.

3.4 For appeals from a decision of the Registrar of Trade Marks or the Registrar of Designs, the applicant must use the Notice of Appeal (Intellectual Property)—Federal Court Form 92, adapted to identify this Court. 

Additional documents for filing

3.5 The majority of IP proceedings are commenced by filing either a statement of claim or points of claim together with the originating application.

3.6 If Part 2 of the Civil Dispute Resolution Act applies, the applicant must also file an Applicant’s Genuine Steps Statement.

4. Responding to an application

4.1 Where the originating application is accompanied by a statement of claim or points of claim, the respondent must file a defence or points of defence.

4.2 If a defence or points of defence is filed, the respondent is excused from also filing a Response—General Federal Law. Otherwise, a respondent must file a Response—General Federal Law.

4.3 Where an applicant has filed a genuine steps statement, the respondent must file a Respondent’s Genuine Steps Statement.

5. Urgent applications

5.1 In urgent matters, relief in the nature of interlocutory injunctions, search orders (Anton Piller orders) and orders in the nature of Norwich Pharmacal relief may be sought to alleviate the effects of alleged infringements.

5.2 For information on urgent applications, refer to Part 7 of the General Federal Law Rules.

6. Pleadings

Points of claim or concise statement

6.1 An originating application must explain briefly the basis on which the orders are sought by identifying the supporting statement of claim, points of claim or affidavit, and must set out the orders sought.

6.2 Use of an originating application and affidavit may negate the need for pleadings but, where appropriate, a statement of claim or points of claim will be ordered, or an applicant may choose to file such a pleading. In accordance with Part 13 of the General Federal Law Rules, the pleading must:

1. identify in summary form the material facts on which the applicant relies, but not the evidence by which those facts are to be proved; and
2. include all necessary particulars.

6.3 Parties must consider whether the use of a concise statement in support of an originating application should be used, instead of points of claim or a supporting affidavit. The purpose of a concise statement is to enable the applicant 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. It should be prepared like a pleading summons and may be drafted in a narrative form. If a concise statement is filed with the originating application, no further originating material in support (points of claim or affidavit) is required to be filed until the Court orders.

6.4 The concise statement should not exceed 5 pages (including formal parts). It should be plain, concise and direct, and should summarise:

1. the important facts giving rise to the claim;
2. the relief sought and against whom;
3. the primary legal grounds (causes of action) for the relief sought; and
4. the alleged harm suffered by the applicant, including, wherever possible, a conservative and realistic estimate or range of loss and damage.

Defence and any cross claim

6.5 Together with the defence, points of defence or affidavit, a respondent may file a cross-claim: see Division 8.5 of the General Federal Law Rules.

6.6 In the ordinary course, orders will be made at the first case management hearing in relation to the filing of a defence or points of defence, and any cross-claim.

6.7 Where a concise statement is filed, the respondent may be required to file a concise statement in response, which may also be drafted in a narrative form.

7. Case management

7.1 Parties are strongly encouraged to try to resolve their disputes without the need for court proceedings or a court hearing.

7.2 For disputes that cannot be resolved and require the filing of a proceeding in the Court, parties and their lawyers must assist the Court to achieve the overarching purpose as set out in the Act.

7.3 Parties are expected to make a genuine effort to narrow or resolve issues in dispute. In deciding the best way to run their case consistently with the overarching purpose, parties and their lawyers must also consider:

1. whether it is reasonably justified on the material available to bring an application before the Court;
2. the use of dispute resolution where appropriate, both internal and external;
3. the most efficient way to manage lay and expert evidence;
4. making appropriate concessions; and
5. making all efforts to ensure that parties are prepared for any court event.

7.4 All IP matters filed in the Court are docketed in the National Intellectual Property List (IP List) and case managed by the IP List Judge through its interlocutory steps, and allocated to an IP List Judge for hearing. Court appearances are managed by audio or video link when parties or their lawyers are in different locations.

7.5 The conduct of proceedings on the first court date is detailed in Division 5.1 of the General Federal Law Rules. The first court date is a case management hearing unless the Judge directs that a directions hearing be conducted.

7.6 Wherever possible, the first case management hearing or directions hearing will take place within 3 weeks after the originating application is filed.

7.7 The first case management hearing flexibly organises the interlocutory steps in the proceeding so that the proceeding may be conducted as effectively and efficiently as possible. The Court may give directions, order the parties to mediation, fix a date for final hearing, conduct an interim hearing or finally determine the application. The purpose of the case management hearing is to formulate ways to manage the conduct of the proceeding so as to bring it to a final hearing in a manner proportionate to the nature of the dispute, the financial position of the parties, the degree of complexity of the case, the importance of the case and the amount of money or the number of issues in dispute.

7.8 The parties and their lawyers must attend court and are expected to have a good knowledge of the case. At the case management hearing, the parties or their lawyers must be prepared to engage in discussion with the Judge about all aspects of the proceeding, including factual and legal issues likely to require determination, procedural issues likely to arise and whether it is likely to be appropriate to make orders in relation to witness statements, expert evidence, discovery as well as cross-examination of witnesses.

7.9 Ordinarily, the case management hearing will be conducted in an informal manner in open court.

7.10 Unless otherwise ordered, once orders are made at the conclusion of the case management hearing, the parties will not be permitted to rely on additional evidence or on discovery or on written submissions, except in exceptional circumstances.

8. Trial

8.1 The Court is a trial court, and it is intended that proceedings be conducted expeditiously.

8.2 The Court will take an active part in controlling the final hearing of an IP proceeding. Before the final hearing, the Court ordinarily makes directions that involve the parties preparing, filing and serving:

1. a chronology of relevant events;
2. a brief outline of the case;
3. contentions of fact and law; and
4. a form of proposed orders.

8.3 Where objection is taken to any affidavit material, parties are expected to privately confer in advance of the hearing with a view to discussing and resolving the objections, making appropriate amendments to the relevant affidavit material. Except in exceptional circumstances, the Court will not permit significant amounts of court time to be devoted to the hearing and determination of evidentiary objections.

8.4 Where time can be saved, the parties should reduce openings and final addresses to written form.

8.5 The judge will try to ensure that the final hearing does not take longer than 3 days.

8.6 If the parties agree and where the Judge considers it appropriate to do so, the Judge may conduct the final hearing entirely on the papers.

8.7 After the final hearing, where practicable, a decision will be given expeditiously.

9. Costs

9.1 Schedule 2 to the General Federal Law Rules provides an events-based costs regime. However, there is discretion to depart from this regime, and a Judge may fix the amount of costs and disbursements payable.

9.2 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.

9.3 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 IP proceedings.

10. Further information

10.1 Parties and practitioners should consult the Court's website for more information about IP proceedings.

Footnote:

¹ Section 190 of the Federal Circuit and Family Court of Australia Act 2021 (Cth) and rule 1.05 of the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2025 (Cth).

The Honourable Justice William Alstergren
Chief Judge
Federal Circuit and Family Court of Australia (Division 2)
Re-issued: 1 September 2025