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Australian Federal Court judges are prepared to expedite patent disputes when they are satisfied that the commercial reality requires it, and to use case management strategies to avoid foreseeable litigation quagmires. While there is no “rocket docket” in Australia, we have seen complex pharma patent disputes set down for hearing within five, ten and 11 months of filing in the New South Wales and Victorian registries.
This is applauded by parties and practitioners who recognise that swift resolution of patent disputes avoids unnecessary costs and induces market certainty for pharmaceutical companies, payers and patients.
For Australian pharma patent litigation, the selected forum will—almost always—be the Federal Court (over the state based Supreme Courts), and “forum shopping” will involve selecting between the various registries of the Federal Court. The Federal Court operates an IP practice area, with 17 patent judges nationwide each sitting within a certain state/s. Most patent judges sit in NSW and/or Victoria so most patent cases are filed there. Before selecting a registry, sophisticated applicants will consider various attributes of judges in each registry pool, including:
Given a case may be allocated to any judge within the relevant pool, choosing a forum will involve weighing up the likelihood that a preferred judge in the registry pool will be allocated the matter, against the likelihood that it will be allocated to a less preferred judge. Although on current averages the Victorian registry is faster than the NSW registry, often the considerations between the two registries are finely balanced, and secondary considerations such as convenience of the legal team may also sway the parties one way or the other. The impact of Justice Rofe in Victoria, who was appointed in July 2021, on this is yet to be seen.
“Before selecting a registry, sophisticated applicants will consider various attributes of judges in each registry pool.”
Four recent cases illustrate approaches to expedition and case management that may be taken into account by applicants:
While Australia does not yet have a “rocket docket”, judges in the two key registries for pharma patent litigation have shown an understanding of the commercial realities of pharma industries and a preparedness to expedite and appropriately manage patent litigation to timely conclusions.
Naomi Pearce is an executive lawyer and a patent and trademark attorney at Pearce IP. She can be contacted at: naomi.pearce@pearceIP.law
Katrina Crooks is an executive lawyer and patent attorney at Pearce IP. She can be contacted at: katrina.crooks@pearceIP.law
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Pearce IP, Australian Federal Court, patent litigation, pharmaceuticals, IP practice, case management, registry pool