In the UK, the legal test for determining whether there has been infringement of a patent on the basis of the doctrine of equivalents was set out by the Supreme Court in 2017 in the case of Actavis UK v Eli Lilly. Although that case concerned pharmaceutical patents, the doctrine of equivalents is relevant to patent infringement claims in other sectors too, including the technology sector.
“Clients in all sectors are increasingly interested in this doctrine because it means that patentees may seek to argue a broader inventive concept of their patent to capture alleged infringements,” said Mark Marfé of Pinsent Masons.
Two separate legal tests concerning infringement by equivalence must be satisfied in Germany, while the position is again different in France.
Jules Fabre of Pinsent Masons said: “The French doctrine of equivalents can lead to a very broad scope of protection, very favourable to patentees. However, this is not without risks for them. As there is no bifurcation in France, courts will consider both validity and infringement at the same time. As a result, those defending an infringement claim may be able to raise a so-called squeeze argument when the scope of protection is so broad that it covers variants from the prior art, which would render the patent obvious and invalid.”
“There may also be challenges in enforcing patent rights when relying on the doctrine of equivalents in the context of preliminary proceedings. In France, a preliminary injunction will only be granted if the patent is considered to be valid and infringed from a summary analysis, which requires that there are no serious arguments on either invalidity or non-infringement,” he said.
A separate legal test concerning infringement by equivalence applies in Italy too.
Miriam Cugusi and Lorenzo Stellini of GPBL said: “Under Italian case law, it seems that among the different existing criteria in verifying the applicability of the doctrine of equivalents, the main and most accredited in Italian case law is the so-called ‘triple test’. Under these criteria, the doctrine of equivalents is held to be present when the substituted element performs substantially the same function, in the same way to obtain the same result.”
Portuguese law firm SRS Advogados, Swedish firm Setterwalls and Danish firm Bech-Bruun all told us that the doctrine of equivalents had been considered on multiple occasions by the courts in their jurisdiction too.
Johnny Petersen of Bech-Bruun said: “In 2017, the Danish Maritime and Commercial High Court for the first time, in the Eli Lilly v Fresenius Kabi case, decided to grant a preliminary injunction with reference to patent infringement by equivalents.”
The UK’s exit from EU membership has complicated the way in which European technology companies protect their IP, perhaps most notably in the context of trade marks and design rights.
EU trade marks and Community registered design rights used to apply in the UK automatically until Brexit. Though businesses were able to apply to convert the UK scope of those rights into UK-only equivalent rights until 30 September, Miriam Cugusi and Lorenzo Stellini of GPBL said that Italian businesses would be considering the merits and cost of maintaining both EU and UK rights in the long term.