An altered approach to litigation: the significance of New Standard Directions for Australian Patent Proceedings

The Federal Court of Australia (Court) has informally commenced the introduction of the New Standard Directions for Australian Patent Proceedings (New Directions).

It is usual that cases are listed for trial in Court and other superior courts after most, if not all, pre-trial steps have been completed. In the New Directions the Court is proposing to allocate a trial date routinely within 14 days from the first case management hearing.

A copy of the New Directions can be found in the link at the conclusion of this article.

The Court, in collaboration with The Intellectual Property Society of Australia and New Zealand Inc. (IPSANZ) and IP Australia, held panel discussions in March 2025 in relation to the New Directions in Sydney and Melbourne to which members and non-members of IPSANZ were invited. Those discussions were hosted by the Hon. Justice Stephen Burley, the Hon. Justice Helen Rofe and Registrar Susan O’Connor of the Court and members of the profession.

It is expected that the New Directions will shortly commence formally and may ultimately find their way into a practice note.

Important characteristics of the New Directions are as follows:

1. The New Directions are in furtherance of the overarching purpose of section 37M of the Federal Court of Australia Act 1976 (Cth). That purpose is to facilitate the just resolution of disputes according to law as quickly, inexpensively and efficiently as possible.
2. The first case-management hearing will be allocated to occur shortly after the date by which it is expected the respondents will have served a defence and any cross-claim. Under the Court rules, defences are to be filed 28 days after service of the statement of claim, although the respondent may seek the applicant’s consent to an extension of time.
3. Under the New Directions, the first case management hearing will assume even greater importance than is presently the case. This is for the following reasons:
   1. At the first case management hearing the parties will need to be in a position to inform the Court of available provisional trial dates, which are expected to be between 12 and 18 months from the first case management hearing.
   2. The parties will need to consider the length of the hearing by the time the defence is filed.
   3. A particular consideration will also be the choice and future availability of experts given their frequent use in patent court proceedings.
   4. Within 14 days of the first case management hearing the Court will notify the parties as to whether the dispute is to be determined on the papers, listed for a hearing (and if so the date of that hearing), or referred to a registrar for determination within a set time frame. As such, the New Directions will mean the Court will be (subject to exceptional circumstances) setting a trial date which will provide a backstop to pre-trial interlocutory steps. Preparatory steps will be allocated dates for completion with the trial date in mind and there will need to be a real focus on how long respective preparatory steps will take.
      This approach is not unique. The United Kingdom Patents Court Practice Statement provides that parties are expected to begin considering potential trial dates as soon as reasonably practicable after the service of court documents commencing the proceedings. The Practice Statement also expects the parties to attempt to agree trial dates when seeking directions for trial.
      This approach is also to be applauded, as a reduction in delays between commencement and trial date is a focus of the courts.
4. Perhaps concomitant with the goals referred to above, the Court has, in its introduction to the New Directions, asked:
   1. applicants to confine infringement allegations, if possible, to a minimum number of claims and one patent; and
   2. respondents to confine the number of prior art documents and grounds in cross claims to the minimum necessary.
      This arises from the Court’s frequent experience of statements of claim containing undue repetition, resulting in increased costs and a wastage of court time. In this area of the law which regularly involves highly technical disputes of fact, it would appear that at least to some extent Oliver Wendell Holmes Jr. was correct when he said ‘The life of the law has not been logic; it has been experience.’
5. The increased importance of the first case management hearing will have the following consequences:
   1. There will be front-end loading of a material amount of work by legal practitioners required to be done prior to the first case management hearing;
   2. As part of the work in paragraph 5(a), there will need to be a number of judgement calls made by the legal representatives for the parties;
   3. Counsel will need to be quite involved in the work and deliberations referred to in paragraphs 5(a) and (b) above. If senior counsel is briefed in the matter, it may be of assistance if they were also involved in such work;
   4. The first case management hearing may be longer than has been previously expected or occurs in other types of cases;
   5. It will be necessary for legal representatives to explain to their clients the matters referred to in paragraphs 5(a), (b) and (c) above in advance of the first case management hearing; and
   6. At least part of the work referred to in paragraphs 5(a), (b) and (c) could and should be performed by the applicant’s legal representatives prior to the commencement of Court proceedings. This is particularly relevant to considerations as to expert evidence.
6. In summary, some important parts of the New Directions (without setting out all parts) are:
   1. The applicant is to file and serve a position paper on infringement by reference to each distinguishable instance of infringement, within 2 weeks of the first case management hearing;
   2. The applicant is to indicate, also within 2 weeks of the first case management hearing, whether it proposes to rely on expert evidence in respect of infringement and if so the expert’s relevant technical or scientific discipline;
   3. The respondent is to file and serve a responsive position statement on infringement and a product/process description in respect of any integers in dispute within 3 weeks of the date in 6(a) above;
   4. If the applicant still believes discovery is necessary, the applicant is to notify the respondent of document categories relating to disputed integers within 2 weeks of the date in 6(c) above;
   5. The respondent is to respond to the document categories within 2 weeks of the date in 6(d) above;
   6. The schedule of requests and responses is to be provided to the Court within 2 days of the date in 6(e) above;
   7. The respondent/cross claimant is to file and serve a position statement in relation to the validity of any patent claim within two weeks of the first case management hearing;
   8. The Court will make orders as to how many expert witnesses may be called by each party and in what fields;
   9. An order will be made that each party is to file its evidence in chief (being both lay and expert evidence) on or before a date approximately five months prior to the pre-trial directions hearing (as discussed further below). This may be limited to a certain number of pages and be the subject of discussion and Court approval at the first case management hearing;
   10. Each party is to file and serve its affidavit evidence in answer approximately two months prior to the pre-trial directions listing;
   11. By a date some weeks after the evidence referred to in paragraph 6(j) above, the parties are to file a document combining certain uncontroversial evidence from the expert reports;
   12. The case will be listed for a further case-management hearing to make pre-trial directions on a date following the evidence under paragraph 6(j) above, which may be six months after the first case management hearing. Prior to that second case-management hearing, it will be necessary for the parties to communicate with each other and provide to the Court some draft directions at least two working days prior to the listing, showing any points of disagreement in markup, relating to at least the following matters:
       1. the necessity of any reply evidence;
       2. scope and topics for conclaves of experts;
       3. joint expert reports;
       4. the possibility of concurrent evidence being given by experts at the hearing; and
       5. any necessary changes to the estimated hearing length.
          If there is any evidence in reply, a date will be set by the Court for the provision of that evidence and limited to a certain number of pages.
7. Under the New Directions, interlocutory applications must be accompanied by a statement of costs claimed at least a full business day prior to the hearing of such application. On deciding the interlocutory application, the Court may make a specific sum costs order payable within 14 days of the date of order.
8. Perhaps the approach in these standard directions will be used in other matters before the Court. This approach may also prove attractive to other courts and jurisdictions as well.

This article was written by Ashley Holland, Partner.

New Directions