IP Insights: Doctrine of equivalents (2024)

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Welcome to our IP Insights on the question: “How will the UPC decide cases under the doctrine of equivalents?”
For the time being, the UPC has not yet issued a single decision in which the claimant had asserted claims under the doctrine of equivalents. But no crystal ball is needed - the next case will soon come. Julia, is there any clarity on how the UPC would decide such a case?
Tobias, definitely not. Neither the Agreement on a Unified Patent Court nor the Rules of Procedure provides for a clear legal framework as to how the UPC shall adjudicate such cases.
This is true. And the same holds true for the case law of the Member States of the UPC. Different national DOE approaches exist that are sometimes even applied in parallel by the national courts. However, there are also many commonalities in the national approaches.
Yes, and these commonalities suggest that three factors will play a decisive role in the soon-to-be rendered DOE case law of the UPC which could ultimately lead to a 3-step DOE test being applied by the UPC.
The first factor is the technical equivalence of the variant.
The second is the obviousness of the variant starting from the technical teaching of the patent.
And the third factor is the legal equivalence of the variant.
Yes, that makes sense. German courts apply a similar 3-step test, and the Dutch courts do, too. Also, the UK has approximated its case law to such a 3-step test which tries to strike a fair balance between legal certainty for third parties and a fair reward for the patentee.
However, French and Belgian courts use the “Function-Way-Result”-test known from the US, and Italian courts apply various DOE approaches in parallel. So, there is still some inconsistency.
Yes, indeed. But the UPC will align these inconsistencies. Also, the “Pemetrexed” decisions of the Member States of the UPC have led to a great deal of harmonization, in particular with a view to the relevance of the file wrapper for the DOE.
Claim amendments made during prosecution in response to novelty or obviousness objections qualify as a waiver of the scope of protection, whereas claim amendments which are made to overcome formality objections are irrelevant.
Finally, most UPC Member States rightly accept the concepts of the “Formstein” and the “Gilette” defenses, since there is simply no valid reason to extend the scope of protection into the ambit of the prior art.