UPDATE

The Unified Patent Court (UPC) recently issued a landmark decision for the case UPC_CFI_239/2023, providing significant clarity on the application of the doctrine of equivalents in patent infringement cases. Delivered by the Local Division in The Hague on 22 November 2024, the decision not only upheld the validity of European Patent No. EP2137782 but also found infringement based on equivalence – setting a precedent for future cases under the new UPC framework.

A Two-Step Approach to Patent Infringement

The general methodology in assessing patent infringement involves a two-step process:

1. Literal Infringement: The Unified Patent Court first evaluates whether all the claim features of a patent are directly and literally implemented in the alleged infringing product or process.

2. Infringement by Equivalence: If literal infringement is not established, the Unified Patent Court considers whether variations in the accused product or process nonetheless achieve the same result in substantially the same way, thus infringing by equivalence.

This dual approach aligns with Article 69 of the European Patent Convention (EPC) and its accompanying Protocol, ensuring a fair balance between providing robust protection for patentees and maintaining legal certainty for third parties. While the doctrine of equivalents is not explicitly provided for in the Articles and Rules of the UPC, it is a concept familiar in many European jurisdictions. The UPC has now provided its own interpretation of this fundamental doctrine.

The Case at Hand: Plant-e vs. Bioo (Arkyne Technologies)

The dispute revolved around a method for converting light energy into electrical energy using a Plant-Microbial Fuel Cell (P-MFC). The method patented by Plant-e, claimed in EP2137782, involves integrating living plants as a continuous source of organic material in microbial fuel cells. The alleged infringer, Bioo, marketed a similar technology but argued that its product did not literally implement all claimed features of the patent.

The UPC found no literal infringement but determined that Bioo's technology infringed by equivalence. Notably, Bioo's variation met the core functionality of the patented invention – using living plants to generate energy – thereby satisfying the four criteria for equivalence.

Key Elements of the Doctrine of Equivalents

In this case, the Unified Patent Court articulated a clear framework for equivalence, posing four key questions:

1. Technical Equivalence: Does the variation solve the same problem and perform the same function as the patented invention?

2. Fair Protection: Is extending protection to the equivalent variation proportionate to the patentee's rights?

3. Legal Certainty: Would a skilled person understand from the patent that the scope of the invention extends beyond the literal wording of the claims, providing a broader interpretation of the invention's protection?

4. Novelty and Inventiveness: Is the allegedly infringing product or process itself novel and inventive over prior art?

While items 1 and 4 focus on technical aspects, items 2 and 3 introduce a level of subjectivity that could lead to considerable uncertainty. Item 2, assessing "fair protection," and item 3, evaluating "reasonable legal certainty," are inherently subjective and might vary significantly depending on the context and perspective of the decision-maker.

Item 4, concerning novelty and inventiveness, while also subjective to an extent, could be rendered more objective by proactive measures. In the light of this specific aspect, companies should envisage and implement defense strategies in advance, such as filing patent applications with claims that literally cover the product intended for market entry. These applications should be examined and searched by a third-party authority, such as the European Patent Office (EPO) or an equivalent patent authority. The results of such searches could serve as a robust basis for objectively addressing item 4, providing clarity on whether the product is novel and inventive over prior art.

Implications for UPC Jurisprudence

This decision underscores the UPC's commitment to harmonizing patent law across Europe while drawing from established national precedents. By explicitly outlining the factors for assessing equivalence, the UPC offers clarity to stakeholders in the new system.

Key takeaways for patentees and practitioners include:

• Strategic Claim and Description Drafting: Ensure claims and description are robust enough to capture foreseeable variations.

• Litigation Readiness: Prepare to argue both literal and equivalence-based infringement.

• Third-Party Risks: Innovators should evaluate potential exposure to equivalence claims during product development and consider filing a patent application to trigger a search report from EPO or EPO-like institution.

A Precedent in Action

This ruling sets an important precedent, particularly for industries reliant on incremental innovations, such as life sciences, energy, and telecommunications. The UPC's structured approach to equivalence provides valuable guidance, offering patentees broader protection while safeguarding third-party interests.

Conclusion

The UPC's decision in UPC_CFI_239/2023 represents a pivotal moment in European patent law. It exemplifies the Unified Patent Court's role in shaping a balanced, predictable framework for assessing patent infringement under the doctrine of equivalents. Notably, companies should start implementing policies in advance to address item 4 of the equivalence test as objectively as possible. This includes carrying out patent searches before third-party institutions, such as the European Patent Office (EPO) or EPO-like authorities, based on filed patent applications. Such searches provide an independent assessment of novelty and inventiveness, equipping companies with robust defenses and clearer strategies to mitigate risks of infringement claims.

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