7.2.3.2 Filing the Statement of Grounds and Particulars

Date Published

Key Legislation:

Patents Act:

  • s70 Applications for extension of patent
  • s71 Form and timing of an application
  • s75 Opposition to grant of extension
  • s223 Extensions of time

Patents Regulations:

  • reg 5.2 Definitions
  • reg 5.4 Notice of opposition--standard patent opposition
  • reg 5.5 Statement of grounds and particulars--standard patent opposition
  • reg 5.9 Extension of time for filing evidence
  • reg 5.16 Statement of grounds and particulars
  • reg 5.17 Dismissal on request
  • reg 5.18 Dismissal on initiative of Commissioner
  • reg 23.36 Amendments made by Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1)

Note: This information applies to oppositions commenced on or after 15 April 2013.  
Where specified, information is also provided for oppositions commenced before 15 April 2013 in which the statement of grounds and particulars was not served before 15 April 2013.

Note: As of 15 April 2013, the statement of grounds and particulars and accompanying documents, the evidence in an opposition and the summaries of submissions for the hearing must be filed electronically with IP Australia by means approved by the Commissioner.

The statement

The statement of grounds and particulars in an opposition under section 75(1) is governed by reg 5.5, or, for oppositions commenced before 15 April 2013, reg 5.4 as in force immediately before 15 April 2013.

The statement of grounds and particulars must set out the grounds the opponent intends to rely on to establish the opposition, and the facts and circumstances (the particulars) forming the basis for the grounds (reg 5.2 “Definitions”).  

An opposition under section 75(1) to the grant of an extension of term of a standard patent must be made on the ground that one or more of the requirements of sections 70 and 71 are not satisfied in relation to the application for the patent term extension.

For more information on the function and content of the statement of grounds and particulars see 7.4.2 The Statement of Grounds and Particulars.

 

Note: Where an opposition commenced before 15 April 2013; and the statement of grounds and particulars is due to be served on a party on or after 15 April 2013; and the statement has not been served before 15 April 2013; the statement must be filed with the Commissioner on or before the due date for service and the opposition officer will give a copy to the other party. 

 

Timing and requirements for filing the statement of grounds and particulars and the documents mentioned in the statement

Oppositions commenced before 15 April 2013

In oppositions commenced before 15 April 2013, the opponent must file the statement of grounds and particulars in the approved form (available on the IP Australia website) within 3 months of filing the notice of opposition.

The relevant provisions are reg 5.4 as in force immediately before 15 April 2013, subject to reg 23.36(2).

Oppositions commenced on or after 15 April 2013

The opponent in an opposition under section 75(1) must file a statement of grounds and particulars with the Commissioner in the approved form (available on the IP Australia website) within 3 months from the day the notice of opposition was filed.  

The statement must be accompanied by a copy of each document mentioned in the statement, unless the document is open for public inspection and relates to a patent or patent application (reg 5.5(2)).  The provision of documents at this stage of the opposition provides all parties with an early indication of the case to be answered.

The approved form of the statement of grounds and particulars (available on the IP Australia website) contains a Schedule in which every document mentioned in the statement must be listed, together with an indication that:

  • the document has been filed with the statement; or
  • the document is open for public inspection and relates to a patent or patent application.  (Where the document is made open for public inspection on the file of a related Australian patent or patent application, the opponent must identify the relevant patent or patent application.)

If required, more information regarding the meaning of open for public inspection for the purposes of reg 5.5(2) can be found at 7.2.1.2 Filing the Statement of Grounds and Particulars under the heading “Open for public inspection”.

Initial processing of the statement

Once the opponent complies with the requirements of reg 5.5(2), or reg 5.4 as in force immediately before 15 April 2013 (subject to reg 23.36(2)), the opposition officer will give the patentee a copy of the statement and accompanying documents as soon as practicable.

Dismissal of the opposition

 

The Commissioner may dismiss the opposition if the prescribed documents are not filed with the statement

For oppositions commenced on or after 15 April 2013, if copies of the required documents are not filed with the statement of grounds and particulars, the Commissioner may dismiss the opposition under reg 5.18.

Other grounds for dismissal

Other grounds for dismissal of an opposition include that the opposition has no reasonable prospects of success.  For more information see 7.7.2 Dismissal of an Opposition.

Requests for dismissal

A patentee may, within 1 month of receiving the statement of grounds and particulars, request the Commissioner to dismiss an opposition.

The provisions governing dismissal are:

  • for oppositions commenced on or after 15 April 2013, reg 5.17; or
  • for oppositions commenced before 15 April 2013, reg 5.5 as in force immediately before15 April 2013.

For more information see 7.7.2 Dismissal of an Opposition.

Extending the time to file a statement of grounds and particulars

In some circumstances, an extension of time to file the statement of grounds and particulars may be available under section 223 (see 7.11.1.1 Relevant Act).  

Deficient particulars - further and better particulars

Where the particulars of the opposition are deficient, the patentee may request the Commissioner to issue a direction for further and better particulars.

For more information on directions for further and better particulars, see 7.3.1.2 Further and Better Particulars.

Amending the statement of grounds and particulars

An opponent may request the Commissioner in writing to amend its statement of grounds and particulars to correct an error or omission in the grounds of opposition, or to amend the facts and circumstances (the particulars) forming the basis for the grounds.

However, the Commissioner has no power to amend the statement where an application for dismissal of the opposition is under consideration.

The relevant provisions are:

  • for oppositions commenced on or after 15 April 2013, reg 5.16; or
  • for oppositions commenced before 15 April 2013, reg 5.9 as in force immediately before 15 April 2013.

For more information see 7.4.3 Amending Opposition Documents.