IPA patent 7.2.1.2-filing-the-statement-of-grounds-and-particulars1 — IP Australia Patent Manual of Practice and Procedure – 7.2.1.2 Filing the Statement of Grounds and Particulars

Also in this Chapter: 7.2.1.1 Commencing the Opposition - Filing a Notice of Opposition ​​​​​​​ 7.2.1.3 Evidence and Evidentiary Periods 7.2.1.4 Finalising the Opposition Key Legislation : Patents Act: s18 Patentable inventions s33 Applications by opponents etc. s40 Specifications s59 Opposition to grant of standard patent s97 Re-examination of complete specifications 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 5.16 Statement of grounds and particulars reg 5.17 Dismissal on request reg 9.5 Completion of re-examination Sch 7 Fees Related Chapters: 7.3.1.2 Further and Better Particulars 7.4.2 The Statement of Grounds and Particulars 7.4.3 Amending Opposition Documents 7.7.2 Dismissal of an Opposition 7.11.1 Extensions of Time - Section 223 Note: It is a requirement that the statement of grounds and particulars and accompanying documents, the evidence in an opposition and the summaries of submissions for the hearing be filed electronically with IP Australia by means approved by the Commissioner. On this Page: The statement Timing and requirements for filing the statement of grounds and particulars and the documents mentioned in the statement Open for public inspection Initial processing of the statement Dismissal of the opposition The Commissioner may dismiss the opposition if the prescribed documents are not filed with the statement Other grounds for dismissal Requests for dismissal Extending the time to file a statement of grounds and particulars Deficient particulars - further and better particulars Amending the statement of grounds and particulars The statement The statement of grounds and particulars in an opposition under section 59 is governed by reg 5.5 . 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” ). The grounds of opposition under section 59 are limited to one or more of the following: that the nominated person is either: not entitled to grant of a patent for the invention (which may result in an application filed under section 33(1) ); or entitled to grant of a patent for the invention but only in conjunction with some other person (which may result in an application filed under section 33(2) ); that the invention is not a patentable invention (i.e. it does not satisfy the requirements of section 18 ); that the specification filed in respect of the complete application does not comply with section 40(2), 40(3) or 40(3A). 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 . Timing and requirements for filing the statement of grounds and particulars and the documents mentioned in the statement The opponent in an opposition under section 59 must file a statement of grounds and particulars in the approved form (available on the IP Australia website), within 3 months 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 5.5(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 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.) Open for public inspection ​​​​​​​A patent document is open for public inspection for the purposes of reg 5.5(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 the World Intellectual Property Organisation (WIPO). However, 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 (eg. 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. Initial processing of the statement Once the opponent complies with the relevant requirements, the opposition officer gives the applicant a copy of the statement and accompanying documents as soon as practicable. The Commissioner may dismiss the opposition if the prescribed documents are not filed with the statement 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 The applicant may, within 1 month of receiving the statement of grounds and particulars, request the Commissioner to dismiss an opposition. However, if the application is re-examined under section 97(1) , the request for dismissal should be made within 1 month from the day re-examination is completed under reg 9.5 . See reg 5.17 . 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 Extensions of Time - Section 223 ). Deficient particulars - 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. 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; update the grounds of opposition to reflect an amendment to the complete specification to which the statement relates; 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, or where an opposition under section 59 has commenced and re-examination of the specification is underway but not yet completed. See reg 5.16 . For more information see 7.4.3 Amending Opposition Documents .