A guide to the UPC and the UP - Flipbook - Page 169
tension created by, on the one hand trying to provide a patentee with protection against
competitors who make an immaterial variation to the patentee’s invention and, on the other,
providing certainty to third parties as to the boundaries of the patentee’s legitimate monopoly.
10-93 National courts in Germany, France, Italy, Spain and the Netherlands all provide a degree of
protection for infringement by way of an element which falls outside the meaning of a claim
feature, but is considered by the national court to be “equivalent” to that feature, i.e. a “nonliteral infringement”. However, until very recently, courts in the UK had taken a different
approach and provided protection for equivalents based solely on the court’s approach to claim
construction. In particular the UK courts would consider when construing the claim whether the
skilled person in the art would, at the priority date, have understood the patentee to have
intended for the claim element to extend to cover the alleged infringement. Most of the time
these different approaches lead to the same outcome, but in certain specific circumstances
there had been a real difference in application, leading to diverging infringement/noninfringement decisions in different jurisdictions. 65
10-94 The UK court’s sole focus on claim construction to protect equivalents was brought to an end by
the decision of the UK Supreme Court in Actavis v Eli Lilly. 66 The UK Supreme Court held that an
item which did not infringe a claim as a matter of normal interpretation may nonetheless
infringe because it varies from the invention in a way which is immaterial, and the UK Supreme
Court then provided guidance as to the circumstances in which a variation will be considered
“immaterial”. In reaching its decision the UK Supreme Court also summarised the approaches
adopted by a number of other EPC contracting states. 67
10-95 The Court will of course have to pick its own course in order to implement a uniform approach
to infringement. Given that the differences between the UK and other EPC contracting states
appear to have recently narrowed, it may be less of a challenge for the Court to identify
common principles in existing national approaches than had previously been the case.
10-96 In determining whether there is infringement by way of equivalence, it has become traditional
to formulate three questions. The UK Supreme Court has reformulated these questions for the
UK and these now are: 68
– Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent,
does the variant achieve substantially the same result in substantially the same way as the
invention, i.e., the inventive concept revealed by the patent?
– Would it be obvious to the person skilled in the art, reading the patent at the priority date,
but knowing that the variant achieves substantially the same result as the invention, that it
does so in substantially the same way as the invention?
– Would such a reader of the patent have concluded that the patentee nonetheless intended
that strict compliance with the literal meaning of the relevant claim(s) of the patent was an
essential requirement of the invention?
10-97 Meanwhile the questions that the German courts apply are: 69
– Whether the variant solves the problem underlying the invention with modified but
objectively equivalent means?
65
66
67
68
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Perhaps the best known, are the Epilady v Remington cases in the 1990s. Courts in Austria, France and the UK held that the
patent was not infringed whereas the courts in Belgium, Germany, Italy and the Netherlands held that infringement took
place. See Mejer M and Pottelsberghe de la Poterie B “Economic Incongruities in the European Patent System”, ECARES
Université Liber de Bruxelles available at https://ideas.repec.org/p/eca/wpaper/2009_003.html [Accessed 14 April 2023].
Actavis UK Limited v Eli Lilly [2017] UKSC 48.
Actavis UK Limited v Eli Lilly [2017] UKSC 48 at [44] to [52].
Actavis UK Limited v Eli Lilly [2017] UKSC 48 at [66].
Schneidmesser I, Case No X ZR 168/00 at [30].
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 159
