Understanding IP Litigation


Going to Court over IP is a difficult and potentially expensive exercise.  What follows is a brief explanation of how it works and the timelines involved.

The first step that should be followed is normally to issue a “cease and desist” demand letter to the potential infringer. Except in the most extraordinarily urgent cases, the Courts prefers that such a letter be issued as a prelude to beginning any Court action.

If the demand letter does not achieve the desired result (whether by complete capitulation to the demands or, alternatively, some acceptable negotiated settlement within a reasonably short space of time after the demand letter is sent) then Court proceedings are issued.

An Initiating Application and Statement of Claim to initiate the Court action is filed in the Federal Court Registry and then served on the respondent.

The Federal Court Registry will allot a first return date for review of the matter by a Judge. This is usually around four or so weeks after the filing date.

At that first return date, the Respondent (assuming it has been served by that time) will appear by its lawyers with the lawyers for the Applicant. A timetable for completion of at least the initial steps will either be worked out by agreement and then approved by the supervising Judge or, alternatively, if agreement cannot be reached by the parties, the Judge will make his/her own directions about the timetable for completion of steps.

The Federal Court procedures make mediation a mandatory step to have the parties try and resolve their dispute without going all the way through the litigation process to trial. Normally, the Court directs the parties go to a mediation at some date before the second review hearing before the Judge.

At the second review hearing and if the mediation does not settle the matter, the Court will make directions for the completion of further interlocutory steps that may be required at that stage including the filing and service of affidavits of evidence in chief and in response affidavits by each of the parties as to the issues been in dispute. Note that in the Federal Court evidence in chief is almost invariably given by way of affidavits so that each party commits its case to sworn evidence that has to be provided to the other side well before the trial. The other side then gets the opportunity at the trial to cross-examine each witness on his/her affidavit.

At some point the judge will set the matter down for a trial and make directions for the conduct of the trial and the final trial preparations.

The Federal Court has a policy that Judgements following trial are preferably to be delivered by Judges within a maximum of three months from the conclusion of the trial. Sometimes the Judgement delivery date can be a bit shorter than that but generally, it can be up to 4 or 5 months after the conclusion of the trial.

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