7.2.4.2 Filing the Statement of Grounds and Particulars

The statement of grounds and particulars in an opposition under section 104(4) is governed by reg 5.11.

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”).

Under reg 5.21, the only ground for an opposition under section 104(4) is that the amendment is not allowable under section 102 or reg 10.3.

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.

Under reg 5.11 the opponent in a section 104(4) opposition must file a statement of grounds and particulars in the approved form (available on the IP Australia website) within 1 month from the day the notice of opposition was filed.

The statement of grounds and particulars must be accompanied by a copy of each document mentioned in the statement unless the document is open for public inspection (see “Open for public inspection” below) and relates to a patent or patent application (reg 5.11(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 (see “Open for public inspection” below) 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.)

A document is open for public inspection for the purposes of reg 5.11(2) if, at the time of filing the statement:

• the document was open to public inspection at the patent office in Australia; or
• the document relates to a PCT application designating Australia that had been published by World Intellectual Property Organisation (WIPO).

Unless the document is on the file of a related Australian application and thereby open for public inspection at the patent office in Australia, documents that are not open for public inspection include:

• any overseas patent specification (e.g. US, EP, GB specifications);
• the specification of a patent application filed via the PCT designating Australia, that had not been published by WIPO at the time of filing the statement of grounds and particulars; and
• citations raised in examination and re-examination reports.

Once the opponent complies with the requirements of reg 5.11, the opposition officer will give the applicant or patentee a copy of the statement and any accompanying documents as soon as practicable.

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

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

The provision for dismissal is reg 5.17.

For more information, see 7.7.2 Dismissal of an Opposition.

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 Extensions of Time - Section 223).

Where the particulars of the opposition are deficient, the applicant or 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.

An opponent may make a request 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 provision is reg 5.16.

For more information see 7.4.3 Amending Opposition Documents.