Tilman Pfrang, LL.M. | 29th November 2024
1. Infringement Based on the Doctrine of Equivalence at the UPC
On November 22, 2024, the UPC’s Local Division in The Hague ruled on European Patent EP2137782, owned by Plant-e Knowledge B.V. The court found that the defendant’s devices, while not literally infringing, did so under the doctrine of equivalence. The court applied a four-step test to determine equivalence, assessing technical equivalence, fair protection for the patentee, reasonable legal certainty for third parties, and the novelty and inventiveness of the allegedly infringing product over prior art. This approach aligns closely with German and Dutch practice, indicating a harmonized application of the doctrine across jurisdictions.
2. The Court of Appeal Unlocks the Door for Patents Previously Excluded by the Helsinki Division
On November 12, 2024, the UPC’s Court of Appeal clarified the application of Article 83 of the UPC Agreement (UPCA). The case involved the withdrawal of an opt-out for a patent during the UPC’s transitional period. The Court of Appeal determined that the term ‘action’ in Article 83 UPCA includes all actions within the UPC’s jurisdiction, not just infringement and revocation actions. Importantly, the court specified that only actions initiated during the transitional period restrict the withdrawal of an opt-out, thereby allowing certain patents to fall under the UPC’s competence despite prior national proceedings.
3. The Central Division Paris – Review of All Granted Claims if Attacked and if Potential Claim Amendments Are Not Allowed
On November 5, 2024, the Central Division of the UPC in Paris addressed European Patent EP 3 498 115 B1. The court emphasized its authority under Article 65(3) UPCA to limit or partially revoke patents independently of amendment applications by the patent owner. It underscored that litigation is directed by the parties’ requests, which shape the court’s review process. The court is required to examine each granted claim individually if challenged, aligning with the standard practice of the German Federal Patent Court. Additionally, the court reiterated that claim interpretation is a question of law that it can address at any stage of the proceedings.
4. The Local Division Düsseldorf – Importance of the “Characterized in That” Clause
In a decision concerning European Patent EP 1 793 917, the Local Division Düsseldorf provided insights into patent claim interpretation. The court highlighted that the scope of a patent claim should not be strictly limited to specific embodiments depicted in the patent drawings. Instead, claims should be interpreted based on the understanding of a skilled person, considering the entire patent description and drawings. The court also noted that prior art should not unduly constrain claim interpretation unless the patent itself makes specific distinctions from the prior art. Furthermore, the court discussed publication rights, stating that publishing a decision should be reserved for instances where other legal measures do not sufficiently protect the claimant.