Under the doctrine of equivalents a patentee may raise a claim of infringement even though the allegedly infringing product does not literally fulfil all features of the claim. The purpose of the doctrine is to prevent an infringer from stealing the benefit of an invention by changing minor or insubstantial details while retaining the same functionality. Internationally, the criteria for determining equivalents vary. For example, German courts apply a three-step test known as Schneidmesser’s questions. In the UK, the equivalence doctrine was most recently discussed in Eli Lilly v Actavis UK in July 2017. In the US, the function-way-result test is used.
The French Supreme Court specified the rules for the application of the doctrine of equivalence in the assessment of infringement of a process patent, holding that a patented process is considered to be infringed under the doctrine of equivalence when both means have the same function in order to obtain the same result as the…
by Miriam Büttner As promised by my colleague, Rüdiger Pansch (please see his post on “Munich Appellate Court on Making vs. Repair” dated 28 October 2011 and the other earlier Blogs cited therein) we are keeping you updated on what is going on at the IBC-front. The German Federal Supreme Court rendered a judgment on…
The Supreme Court held that the patent claiming a device to be mounted on ovens used to industrially drain pasta was infringed by application of the doctrine of equivalence. A summary of this case will be posted on http://www.KluwerIPCases.com
The Supreme Court revoked claims 1 to 4, and found claim 5 to be novel and inventive but not infringed, because the result of defendant’s machine was not obtained by the claimed means. The court sanctioned the appeal court’s decision that the doctrine of equivalence could not be applied. Click here for the full text of…
The Dutch Supreme Court held that Art. 69 EPC in conjunction with art. 1 Protocol for the application of Art. 69 EPC provides a guideline for the determination of the scope of protection. Other “viewpoints” are the essence of the invention and the inventive idea behind the wording of the claims as opposed to the…
The Italian case law on infringement by equivalent is rather scant and, until very recently, only one decision had been issued on this matter by the Supreme Court: 13 January 2004, no. 257, Lisec v. Forel, which stated that in order to assess infringement by equivalents it is necessary to consider whether the allegedly infringing…
In its decision “Okklusionsvorrichtung” (Aga v. Occlutech), the Federal Court of Justice (FCJ) denied patent infringement by equivalent means since the contested infringing embodiment was disclosed in the description as an alternative to the claimed one. This decision was followed in the decision “Diglycidverbindung”. In a nutshell, the FCJ, in continuation of its decisions “Schneidmesser…
An SPC can only be granted if the product falls within the scope of protection of the basic patent. If the basic patent claims a combination of two known components (i.e. a monoclonal antibody with a neoplastic agent), that combination is the patent’s contribution to the art. An individual component is not equivalent to the…
The extent of protection conferred by a patent in Poland has its legal basis in the Polish Act on Industrial Property Law of 30 June 2000. According to Article 63 section 2 of the Industrial Property Law, the extent of protection conferred by a patent shall be determined by the scope of the patent claims….
According to the decision “Diglycidverbindung”, if the variant does neither fall under the literal scope of the claim nor corresponds to a (non-claimed) example in the description, infringement by equivalent means still seems to be possible under certain circumstances.
