An English Partnership can Oppose a European Patent

Author:Mr Eamon Connolly
Profession:Herbert Smith
 
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Summary

In what is believed to be the first case of its

kind, Herbert Smith has successfully opposed the grant of a European

Patent in the European Patent Office ("EPO") in its own name and on behalf

of an undisclosed client. This case establishes that an English

partnership is able to oppose a patent in the name of the partnership.

Background

Under Article 99 of the European Patent

Convention, "any person" can oppose the grant of a European Patent.

The guidelines from the EPO state that the meaning of "any person"

is to be construed in accordance with Article 58 of the European Patent

Convention. This provides that "a European Patent may be filed by any

natural or legal person, or anybody equivalent to a legal person by virtue

of the law governing it".

It was argued by the patentee that as an English partnership (which by

virtue of the Partnership Act 1890 is not a legal person), Herbert Smith

was not entitled to oppose the patent. Reliance was placed on guidelines

contained in the UK Patent Office Practice Manual. These state that a

partnership itself cannot apply for a patent although it is open to the

individual partners to do so. By applying the provisions of Articles 99

and 58 of the European Patent Convention, the patentee argued that Herbert

Smith could not hold a patent or oppose a patent.

Decision

The Opposition Division of the EPO rejected the

submissions made by the patentee. The fact that an English partnership is

not a legal entity does not bar the partners who make up that partnership

from filing an opposition. Partners may act in the name of the firm in

English legal proceedings and, in the opinion of the Opposition Division,

they should also be entitled to do so in oppositions in the EPO.

Comment

The decision of the Opposition Division is a

sensible one having regard to the different legal status of partnerships

throughout Europe. In other jurisdictions (Scotland, for example) a

partnership is a legal person. If the Opposition Division had held that

Herbert Smith was not...

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