Equivalence infringement is a fundamental principle in patent law. The local division in The Hague, in the first instance, has provided its method for defining it by studying the approach of several national jurisdictions across Europe.
On November 22, 2024, the Unified Patent Court (UPC) issued its first decision regarding equivalence infringement. This decision is significant as it formally establishes the doctrine of equivalents in its practice concerning patent infringement. Furthermore, it clarifies the principles of its application.
The judges believe that although the doctrine of equivalents is not explicitly provided for by the UPC’s rules, its use derives from Article 2 of the Protocol to Article 69 of the European Patent Convention (EPC).
As a reminder, according to the doctrine established in France, equivalence infringement is defined as follows:
“A means is considered infringing by equivalence when the means of the product/process covered by the patent is reproduced in a different form, while performing the same function (or presenting the same technical effect), for the same result, this function being new as of the priority date of the patent.”
The European patent EP2137782 (Plant-e Company), whose Figure 1 is reproduced below, claims a device and a process for converting light energy into electrical energy. It is more specifically Claim 11, the main process claim, that is the subject of the dispute concerning infringement.
Claim 11 recites: Process for converting (…) wherein a power charge is introduced into a device that includes (…) an anode compartment (2) and a cathode compartment (3), where the anode compartment includes (…) a living plant (7) or a part thereof (…).
The alleged infringing device (Bioo Panel by Bioo Company) is shown below.
It appears that the Bioo Panel device includes two superimposed compartments, an anode compartment, and above it, a compartment where plant roots are arranged. Thus, the Bioo Panel device does not literally reproduce all the characteristics of Claim 11 of European patent EP2137782. It differs in that the plant does not occupy the anode compartment (lower), but only the upper compartment.
Throughout the decision, the UPC judges develop a doctrine according to which there is equivalence infringement if the following four questions can be answered affirmatively:
- 1Technical equivalence: Does the equivalent element solve (substantially) the same problem as the patented invention and perform (substantially) the same function in this context?
- Fair protection extension: Is the extension of the protection provided by the claims to the equivalent in line with fair protection for the patent holder, given their contribution to the art, and is it clear to a person skilled in the art, based on the publication of the patent, how to use the equivalent element (at the time of the infringement)?
- Reasonable legal certainty for third parties: Can a person skilled in the art, based on the patent, understand that the scope of the claims is broader than the literal claims?
- Novelty and inventiveness: Is the alleged infringing product novel and inventive relative to the prior art? (i.e., would a defense like Gillette/Formstein fail?)
The judges answer all four questions affirmatively. Therefore, the Bioo Panel device is judged to constitute an infringement by equivalence. It should be noted that this decision is subject to appeal.