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.
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.
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.
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...