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7.4.2 The Statement of Grounds and Particulars

Date Published

Key Legislation:

Patents Act:

  • s40 Specifications
  • s59 Opposition to grant of standard patent  
  • s75 Opposition to grant of extension  
  • s101M Opposition to innovation patent  
  • s102 What amendments are not allowable?  
  • s104 Amendments by applicants and patentees
  • s114 Priority date of claims of certain amended specifications
  • s223 Extensions of time  
  • chapter 9 Re-examination of standard patents
  • chapter 9A Examination, re-examination and opposition-innovation patents

Patents Regulations:

  • reg 5.5 Statement of grounds and particulars--standard patent opposition
  • reg 5.16 Statement of grounds and particulars
  • reg 5.17 Dismissal on request
  • reg 5.18 Dismissal on initiative of Commissioner
  • reg 22.21 Protection or compensation of certain persons

Note: This information applies to oppositions commenced on or after 15 April 2013.

The statement of grounds and particulars sets out the basis of the opposition.  

Timing and requirements for filing a statement of grounds and particulars

The statement of grounds and particulars must be filed in the approved form (available on the IP Australia website).  

As of 15 April 2013, at the time of filing, 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 and relates to a patent or patent application (reg 5.5(2)).  

For more information on the timing and requirements for filing the statement of grounds and particulars in the various substantive and procedural opposition proceedings see the section “Filing the Statement of Grounds and Particulars” for the relevant opposition under 7.2 Oppositions, Disputes and Other Proceedings - Procedural Summaries​​​​​​​, or for oppositions under section 101M see 7.2.2 Section 101M - Opposition to an Innovation Patent​​​​​​​


The function and consequence of the statement

The function of the statement of grounds and particulars is to give the applicant fair notice of the case to be met, and to define the issues of the opposition.  The opponent is bound by the statement of grounds and particulars, and its case is confined to the issues raised in that statement, unless it is amended under reg 5.16.  

The statement may also provide the basis for re-examination under chapter 9 or 9A (see 5.6.13 Re-examination) or summary dismissal of the opposition (see 7.7.2 Dismissal of an Opposition).

Any evidence adduced by the opponent which is not related to matters encompassed by the statement of grounds and particulars, will not be considered as forming part of the evidence for the purposes of the opposition proceedings.  Nevertheless, the Commissioner may have regard to any relevant document provided in evidence but not included in the statement of grounds and particulars, which may, for example, provide a basis for re-examining the application.

The particulars in the statement must be substantiated by the evidence.  There may be instances where a particular does not require supporting evidence and can be argued on the basis of the specification without resort to evidence - for example section 40 matters.  However, grounds such as novelty and inventive step require a citation and/or evidence of the common general knowledge.  If the document relied on is not in evidence before the Commissioner, the opponent will be unable to argue their case with reference to the citation, nor rely on the availability of the citation in the Patent Office.  See, e.g. Coal Corporation of Victoria v Hinkley & Anor [1993] APO 56.



The grounds of opposition

The statement of grounds should clearly identify the particular ground(s) of opposition available under the Act on which the opponent relies to establish the opposition.  

The grounds for oppositions under sections 59, 75, 101M and 104 are clearly set out in the Act.  Note that section 59(b) and (c) and section 104(5) make reference to other sections of the Act, importing these as the grounds of opposition  That is, for oppositions under section 59, 59(b) provides three grounds of opposition - manner of manufacture (18(1)(a)), novelty (18(1)(b)(i)) and inventive step (18(1)(b)(ii)).  Similarly, grounds of opposition to amendments under section 104 include those individually set out in 102(1), 102(2)(a), and 102(2)(b).  See Fujisawa Pharmaceutical Co Ltd v Banyu Pharmaceutical Co Ltd [1994] APO 52.

For oppositions under section 223(6) the available grounds are that the application does not satisfy the requirements of section 223(2) or 223(2A).  For oppositions under reg 22.21(4) the grounds of opposition are that the applicant for a licence does not satisfy the requirements for grant of a licence under the provisions of reg 22.21.



The particulars of opposition

The statement of grounds and particulars must include a corresponding statement of particulars for each ground of opposition.  A statement of grounds that is not supported by a statement of particulars is open to dismissal under reg 5.18.

The statement of particulars should be in summary form, and be as brief as the nature of the opposition permits.  However, it is essential that the particulars set out the material facts on which each ground of opposition is based.  A material fact is a fact which is necessary for the purpose of formulating a complete ground of opposition.  The opponent is not required to state the legal effect of the facts on which they rely; they are only required to state the facts themselves.

The particulars do not need to refer to the evidence by which those facts are proved.  However, where a ground of objection is dependent upon a document (e.g. a citation in an opposition to grant), the particulars should clearly, specifically and unambiguously, identify that document.

Where a ground of opposition relates to deficiencies in the specification or other documents, the particulars should identify those deficiencies.

Whatever the generality adopted in the statement, it must be consistent with the purpose of the statement of grounds and particulars.  Although a statement of particulars may bring in all the facts necessary to establish a ground of opposition, it will be defective if it is of such generality that it is insufficient to properly inform the applicant of the case it has to meet.

When the statement of particulars is deficient, the Commissioner may make directions requiring the opponent to file further and better particulars (see Further and Better Particulars).

A ground can be dismissed where none of the particulars provide material facts.

Information required in the particulars

Examples of the type of information needed in a statement of grounds and particulars include:

  • for documents, where the number cited exceeds 7 to 10, the relevance of the reference to the ground together with page and line references to direct the reader to the specific part of the document that is to be relied on.  Also, where patent documents have been published in more than one version, then the version being relied on should be identified and if reference is made to patent family members then material facts relevant to the family member should also be clearly identified;
  • for common general knowledge, a brief description of the technological nature of the particular aspect of common general knowledge relied on;
  • for manner of manufacture, a brief description of the particular type of manner of manufacture, e.g. a mere mixture of known ingredients, together with brief details of material facts to establish a prima facie case;
  • for matters such as prior knowledge, sale, prior use, a brief description of their relevance to the ground together with brief details of the material facts to support a prima facie case, for example, (a) the date and place of any use, (b) the person or persons to whom the invention was allegedly disclosed or sold;
  • for trade marks or trade names, a brief description of the nature of the material together with a description of its relevance to the opponent's case.  Of themselves, references to trade marks or trade names are meaningless particulars; it is quite possible for the constituents of a product to be changed and for the product to continue to be sold under the same trade mark or trade name;
  • for section 40 matters, a brief description of the specific subject matter causing section 40 not to be satisfied, a clear statement of the specific statutory requirement and identification of the deficient part of the specification (by reference to page and line and/or claim numbers);  
  • where the opposition is dependant upon the operation of section 114 (i.e. on a finding of a priority date later than the filing date of the application), the facts relevant to establishing that late priority date.  See Fujisawa Pharmaceutical Co Ltd v Banyu Pharmaceutical Co Ltd [1994] APO 52.

More than 10 documents particularised

Where the statement of grounds and particulars particularises more than 10 documents for any one ground, the statement is required to briefly and generally identify what information in each of these documents is relied upon in relation to the particular ground of opposition (Imperial Chemical Industries plc v Irenco Inc 26 IPR 154).

Where a statement of grounds and particulars particularises a huge number of documents by reference to a document number or non-patent literature reference only for any ground of opposition - for example, a list of more than about 70 to 100 (although with large and complex documents the number may be less), it may be reasonable to infer that:

  • nothing has been 'particularised' as the applicant will have no idea whatsoever of the case they have to defend;
  • the opponent has served speculative particulars and is not undertaking a serious opposition; and
  • the ground of opposition would open for dismissal.



Amending the statement of grounds and particulars

Under reg 5.16, an opponent may request amendment of the statement of grounds and particulars.  For further information see 7.4.3 Amending Opposition Documents.



Requests for further and better particulars

Where the particulars of the opposition are deficient, the applicant may request the Commissioner to issue a direction for further and better particulars (see Further and Better Particulars).  



Requests for dismissal of the opposition

Under reg 5.17 an applicant may, within 1 month of the receipt of the statement of grounds and particulars, request the Commissioner to dismiss an opposition.  See 7.7.2 Dismissal of an Opposition.


Amended Reasons

Amended Reason Date Amended
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