UPC CFI LD The Hague, 22 November 2024: Four questions for infringement by equivalence

02-12-2024 Print this page
Auteur:
Mzolisi Mtshaulana
IPPT20241122, UPC LD The Hague, Plant-e v Arkyne

Valid priority (Article 87 EPC). Requirement of ‘same invention’ in Article 87 EPC is met if the skilled person can derive the subject-matter of the claim of an invention directly and unambiguously, using common general knowledge, from the previous application as a whole (the so-called ‘gold standard’). 

 

No added matter (Article 123(2) EPC). The “gold standard” disclosure test is also to be applied […].

 

Scope of protection (Article  69 EPC and the Protocol) assessed in two steps as seems to be common ground in most contracting member states (including France, Germany, Italy, Belgium, The Netherlands)

 

In a first step, ‘literal’ infringement of the features of (claim 11 of) the patent in view of the claim construction is evaluated. In case claim 11 of the patent is not judged to be literally infringed, equivalence is assessed in a second step. 

 

Equivalence (Article 2 Protocol) involves assessing whether, in the perception of the skilled person, the claims, read in the light of the description and drawings, leave room for equivalents, given, on the one hand, equitable protection for the patentee and, on the other hand, a reasonable degree of legal certainty for third parties. A variation is equivalent to an element specified in the claim if the following four questions are answered in the affirmative: 

(i) Technical equivalence: does the variation solve (essentially) the same problem that the patented invention solves and performs (essentially) the same function in this context? 

(ii) Is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee: in view of his contribution to the art and is it obvious to the skilled person from the patent publication how to apply the equivalent element (at the time of infringement)? 

(iii) 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? 

(iv) Is the allegedly infringing product novel and inventive over the prior art? (i.e. no successful Gillette/Formstein defence).

 

Fair protection: the patent claims a new category of microbial fuel cells – a fairly broad scope of protection is therefore in line with the contribution of the art. 

 

Legal certainty requirement [...] is met if the skilled person understands that the patent claim leaves room for equivalents because the teaching of the patent is (clearly) broader than the wording of the claim and there is, still in the eyes of the skilled person, no good reason to limit the scope of protection of the claim to a (method using a) device as claimed. 

 

Indirect infringement method claim (Article 26 UPCA). Bioo has also provided Bioo Panels and Bioo Benches to third parties. In that case Bioo indirectly infringes claim 11 because it does not apply the method itself, yet it provides Bioo Panels or Benches, which are an essential part for applying the method of claim 11. 

 

Appropriate measures: the use of a specific text is ordered for a recall letter and/or for publication on a website deemed appropriate to ensure that the measure is effective and to avoid a situation in which unclear or confusing messages are spread (article 64 UPCA, Article 10 Enforcement directive). 

 

IPPT20241122, UPC LD The Hague, Plant-e v Arkyne