Originating application for determination of equitable remuneration under section 20(2) of the Circuit Layouts Act 1989 (Form 94)

The Circuit Layouts Act 1989 protects eligible layouts of integrated circuits through EL rights. Section 20 protects a person who innocently commercially exploits an unauthorised integrated circuit, if they did not know and could not reasonably have known it was unauthorised when they acquired it. Once that person becomes aware, or could reasonably be expected to have become aware, the protection only continues if they pay the owner or exclusive licensee equitable remuneration, either as agreed or, if there is no agreement, as determined by the Federal Court on the application of either of them (s 20(2)). Rule 34.32 of the Federal Court Rules 2011 requires that application to be made by originating application in Form 94.

When you need it

• You are the owner or exclusive licensee of EL rights and cannot agree with an innocent acquirer of unauthorised circuits on what they should pay to continue exploiting them.
• You are the person exploiting the circuits and want the Court to fix the remuneration in default of agreement (either party may apply).
• Not for infringement claims: those are commenced by an ordinary originating application and need particulars of the infringement (r 34.34).

1. 1

   Heading

   Insert the District Registry, Division and applicant and respondent names, using the schedule if there are more parties.

2. 2

   Leave the hearing details to the Registry

   The Registry inserts the hearing time and place and any order abridging time for service.

3. 3

   Your capacity

   In the claim paragraph, state whether you seek the determination as owner or exclusive licensee of the EL rights. If you are the person exploiting the circuit, adapt the paragraph to describe your capacity accurately.

4. 4

   Details of the eligible layout

   Give enough particulars to identify the eligible layout in which EL rights are claimed, such as its name or designation, the integrated circuits made to it and when it was first commercially exploited.

5. 5

   Address, service and signature

   Give the address for service, email and residential or business address, choose the service option, and sign as the Applicant or lawyer.

• File the application with a statement of claim or affidavit setting out the material facts, such as when the respondent became aware the circuits were unauthorised and what attempts were made to agree (r 8.05). eLodgment is the Court's electronic filing system. A filing fee applies - check the Court's current fee schedule.
• A Registrar fixes the return date and place and endorses them on the application (r 8.05, note 2).
• Serve the application and accompanying documents personally on each respondent as soon as practicable and at least 5 days before the first hearing (r 8.06).

• Section 20(2) only comes into play after the exploiting party knows, or could reasonably be expected to know, the circuit is unauthorised. Your evidence should pin down that date.
• Show the negotiations. The Court determines remuneration in default of agreement, so evidence that agreement could not be reached is relevant.
• Intellectual property matters, including eligible layout rights, are managed under the Court's Intellectual Property Practice Note (IP-1).