How much detail? – Patent Opposition pleadings in New Zealand

Three interlocutory decisions of the Commissioner of Patents have recently issued dealing with the level of detail required in pleadings during opposition proceedings under the Patents Act 1953. Unfortunately two of those decisions, dealing with the requirements of a counterstatement, appear to be contradictory.

The decision of Assistant Commissioner Glover in Resmed Limited v Fisher & Paykel Healthcare Limited [2018] NZIPOPAT 13 (Resmed) found that a high level of detail is required under the Patents Act 1953. In contrast, the decision of Assistant Commissioner Casey in Nine IP Limited v Proline Products (NZ) Limited [2018] NZIPOPAT 14 (Nine IP), appears to have required less detail in the pleadings (although as the decision itself is less detailed, it is difficult to tell).

Interestingly, these decisions both refer to the same case: Marshall’s Application [1969] RPC 83 and even quote some of the same passages. However, whereas Nine IP emphasises portions such as:

“… It is, of course, always open to the applicant to deny each ground and contention of fact specifically dealt with in the statement and put the opponent to proof.”

Resmed emphasises sections such as:

“The matter contained in a counterstatement must, to some extent, depend on the manner in which the opponent's case is set out in the statement and, in general, it is to be expected that a full and detailed statement will be answered by a counterstatement in greater detail than will be the case where the statement is vague and general in its terms.”

It is possible that the two cases can be reconciled on the grounds of the latter quote (although it was not specifically referred to in Nine IP. There is a suggestion in Nine IP that the Assistant Commissioner found certain particulars in the statement of case less than clear, perhaps leading to the suggestion that less detail in the counterstatement could be acceptable.

However, the two cases appear to deal with the “particulars” of the counterstatement quite differently. The Resmed decision states that where the statement of case provides details of the reasons for the ground, then the applicant must provide particulars in response. In contrast, Nine IP notes that each of the allegations are dealt with and the request of the opponent in that case might be characterised as requiring “better particulars”. The Assistant Commissioner in Nine IP went on to state:

“The substance of Proline’s objection appears to be more in the nature that Nine IP ought to have explained its reasoning more fully. This is beyond the requirements of pleadings, although as discussed at the hearing (and as confirmed in Marshall’s Application), if matters have been denied that ought on any reasonable basis to have been admitted, this may be reflected in costs.”

Thus on the one hand, Nine IP appears to consider ‘particulars’, although desirable, to be beyond the requirements of the counterstatement. Whereas Resmed appears to require that particulars responding to the Statement of Case are required.

From a purely statutory interpretation stand point, the approach in Nine IP appears more tenable. The Patents Regulations 1954 require:

• A Notice of Opposition which “shall state the ground or grounds on which the opponent intends to oppose the grant”

• A statement of case which sets out “fully the nature of the opponent’s interest, the facts upon which he relies, and the relief which he seeks” and

• A counterstatement which sets “out fully the grounds upon which the opposition is contested”

Thus while the statement of case is required to set out the facts on which the opponent relies, the counterstatement is only required to set out the “grounds” on which the opposition is contested. Thus it is perhaps correct to say that no particulars are required in the counterstatement and that it is sufficient to deny each ground and put the opponent to proof (subject to implications of costs).

On the other hand, it is now reasonably well established in the area of trade mark oppositions that although IPONZ is an administrative body, the High Court standard for pleadings should apply. Indeed Assistant Commissioner Glover did find the High Court rules to be persuasive in in the third case, Resmed Limited v Fisher & Paykel Healthcare Limited [2018] NZIPOPAT 12 (10 July 2018), which dealt with the level of detail necessary in the Statement of Case (as opposed to the Counterstatement). Thus it may be that at least the decisions of Assistant Commissioner Glover highlight a move towards a higher standard of pleadings in line with the High Court rules.


Notwithstanding the decision in Nine IP it does seem likely that patents oppositions are heading, like trade mark proceedings have already done, towards a higher standard of pleadings more in line with High Court Rules. The consequence of these higher standards on the one hand is more definite proceedings, allowing for evidence which particularly addresses the pleadings of the other party. On the other hand, it results in an increase in costs to both parties in the proceedings, taking what was intended to be a relatively low cost (when compared to proceedings before the High Court) into a much more complicated proceeding.

Applicability to the Patents Act 2013

The decisions above were made under the Patents Act 1953. The new Patents Act 2013 provides for a similar process of pre-grant opposition. However, interestingly the wording surrounding the requirements for a statement of case and counterstatement differ.

Rather than requiring the statement of case set out “fully…the facts upon which he relies” (Patents Regulations 1954 r 48), regulation 92 of the Patents Regulations 2014, simply requires a “…statement of case that sets out the facts on which the opponent relies…” without requiring the word fully. This would seem to imply a lower stander that that under the Patents Regulations 1954.

Similarly, with regard to the counterstatement, regulation 49 of the Patents Regulations 1954 require “a counterstatement setting out fully the grounds upon which the opposition is contested”, whereas the Patents Regulations 2014 merely requires the counter-statement “set out the grounds on which the opposition is contested”, again omitting the word fully. It will be interesting to see if this change in language leads to a change in approach.

David Nowak - August 2018

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