Some 18 months since opening, the Unified Patent Court (UPC) has recently issued an infringement order decision on the interpretation of equivalents. The decision was issued by the local division (LD) of The Hague.
The decision follows the interpretative approach previously taken by the Court of Appeal in The Hague in an Eli Lilly case. However, as the decision specifically says, it also aligns with the approach taken in “several national jurisdictions”, e.g., Germany and France.
The case involved a dispute between Plant-e and Arkyne. The dispute concerned Plant-e’s Patent Number EP 2 137 782 B1 relating to microbial fuel cells (MFCs), and electricity generation from light energy utilising living plants.
Plant-e asserted the Patent against Arkyne on the basis that Arkyne’s Bioo Panel infringed the Patent both literally and by equivalence. Arkyne challenged the infringement claim and counter-claimed for revocation of the Patent.
In the decision, the LD found the Patent to be valid and infringed by equivalence. The decision set out a two-step test, based on Article 69 EPC and its associated Protocol.
The first-step is to consider whether there is infringement of the claims on a literal interpretation of the claim language. If the answer to this is “no” then part-two of the test should be considered, i.e., whether there is infringement on the basis of equivalence.
The second-step of the test sets out four questions – all of which need to be answered “yes” for there to be infringement. The four questions are:
- Technical equivalence: does the variation solve (essentially) the same problem that the patented invention solves and perform (essentially) the same function in this context?
- Fair protection for the patentee: is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee?
- Reasonable legal certainty for third parties: does the skilled person understand from the patent that the scope of the invention is broader than what is claimed literally?
- Is the alleged infringement novel and inventive over the prior art?
We will have to wait and see if other LD’s of the UPC adopt the same two-step test. Of course, whichever test is to be generally adopted will be determined in the long-term by the UPC Court of Appeal. In the meantime, this decision provides an initial and useful reference point.
As European Patent Attorneys, we represent clients before both the EPO and the UPC. If you require any information or advice on any aspect of European patent law and practice, then please contact us at: mail@morelandip.com
