Notice of appeal (intellectual property) (Form 92)

Division 34.3 of the Federal Court Rules 2011 governs intellectual property proceedings. 'Commissioner' there means the Commissioner of Patents, the Registrar of Trade Marks, or the Registrar of Designs (also for Olympic insignia) (r 34.21). A party who wants to appeal from the Commissioner's decision must, within 21 days of the date of the decision, file a notice of appeal in accordance with Form 92 (r 34.24(1)). The notice must state the decision-maker and date, whether the appeal is from all or part of the decision, the orders sought, the grounds for each order and the particulars of each ground (r 34.24(2)). Grounds and particulars not stated cannot be relied on (r 34.26).

When you need it

• You lost a patent, trade mark or design opposition, or other decision of IP Australia's Commissioner or Registrar, and want to appeal to the Federal Court.
• You are within 21 days of the date of the decision. If not, apply for an extension of time in Form 67 with a draft notice of appeal (r 34.25).
• Not for infringement claims, which start with an originating application.

1. 1

   Heading

   In the 'On appeal from' line insert the title or office of the decision-maker, for example the Registrar of Trade Marks. Leave the hearing details for the Registry; the return date will be at least 28 days after filing (note to r 34.24).

2. 2

   The decision

   State the decision-maker, the date and place of the decision, what was decided, and whether you appeal from the whole or only part of it, identifying the part (r 34.24(2)(a), (b)).

3. 3

   Orders sought

   State each order you seek, for example that the opposition be upheld and registration refused.

4. 4

   Grounds and particulars

   Give the grounds for each order and the particulars of each ground (r 34.24(2)(d), (e)). For a patent ground based on prior publication or prior use, or lack of utility, include the detailed particulars in rule 34.27.

5. 5

   Address and service

   Give your address for service and residential or business address, choose the service option, then date and sign.

• File within 21 days of the date of the decision (r 34.24(1)). A filing fee applies - check the current fee schedule.
• Serve the notice of appeal on the Commissioner and each other party within 5 days after filing (r 34.24(3)).
• The Intellectual Property Practice Note asks the appellant to file and serve the application, registration or patent that is the subject of the appeal and the written decision and reasons at least 7 days before the first case management hearing.
• The Commissioner must lodge the documents necessary for the hearing within 14 days after service (r 34.30).

• The Commissioner is not a party unless the appeal is from the Commissioner's decision and there is no opposing party (r 34.23(2)), but can file an address for service and be heard.
• Draft grounds fully at the start. You cannot lead evidence or make submissions on a ground, or a ground without particulars, that is not in the notice (r 34.26).
• Material that was before the Commissioner is admissible on the appeal only with leave (r 34.31(1)).