A recent decision issued by IP Australia, Fonterra Co-Operative Group Limited v Leprino Foods Company  APO 24, illustrates the importance of the Statement of Grounds and Particulars (“SG&P”), which is filed early in an Opposition Proceeding. This decision highlights the importance of fully particularising each Ground of Opposition to be argued and confirms that unsupported Grounds may be dismissed before the evidentiary stages even begin.
Brief Background of the Case
In this Patent Office decision, Fonterra opposed the acceptance of Leprino’s Patent Application directed to a method of making powdered dairy compositions and filed a SG&P. Leprino requested dismissal of the Opposition, relying on Regulation 5.17 of the Patent Regulations 1991, which gives the Commissioner the discretion to dismiss an Opposition.
Fonterra’s SG&P included ten (10) Grounds of Opposition. However, the Particulars of five (5) of the Grounds relied simply on allegations made in the negative and furthermore, stated that the full details of the allegations “will only become apparent after the Patent is reviewed by the Opponent’s expert witness.”
The delegate considered that Particulars of a Ground that are not clearly and adequately stated to a degree that would enable the Patent Applicant to identify the nature of the case to be defended may have no reasonable prospect of success.
The delegate also considered that material facts were needed to establish a prima facie case and supported the view that more than a mere allegation was required.
Dismissal of 50% of Opposition Grounds
The delegate dismissed five (5) of the Grounds as having inadequate particulars (i.e., with no material facts provided) and gave Fonterra the opportunity to provide better Particulars on the remaining Grounds, where materials facts were given, but where those Grounds were unclear and inadequately described the case to be defended. As a result, Fonterra can now only progress its Opposition with the remaining Grounds of Opposition, provided that better Particulars are submitted.
Take home Lessons
Patent Attorneys should ensure that each Ground to be relied upon in an Opposition is supported with Particulars that are clear and that adequately describe the nature of the case to be defended, with materials facts to support any assertions made. Otherwise, fewer Grounds under which to pursue an Opposition may remain, thereby gifting the Applicant with a greater chance in which to prevail.