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 entitled to oppose the patent, this would have led to an inconsistent approach throughout Europe. Whether a partnership was entitled to oppose a patent would depend upon its legal status.
The decision is also a logical extension of the recent case law from the EPO allowing "straw man" oppositions, given that the majority of such oppositions are likely to be filed by solicitors or patent agents on behalf of their clients.
© Herbert Smith 2002
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