PATENT | UPC’s first decision on infringement by equivalence

The Hague Local Division of the Unified Patent Court recently issued the first decision of the UPC on infringement by equivalence. The patent at issue claimed devices and methods for generating electricity from living plants using microbial fuel cells. The Local Division of the UPC held that Art. 2 of the Protocol on the Interpretation of Article 69 of the European Patent Convention provides that the equivalence shall be taken into account when assessing the scope of protection of a European patent; however, it does not provide any guidance on how to assess the infringement by equivalence. Therefore, based on the case law of various national jurisdictions the Local Division of the UPC proposed a novel four-part test requiring an assessment of whether (a) the variation solves (essentially) the same problem as the patented invention solves and performs (essentially) the same function in this context; (b) the extension of protection is proportionate to fair protection; (c) the skilled person understands from the patent that the scope is broader than what is literally claimed; and (d) the allegedly infringing product is novel and inventive over the prior art. By applying this test, the Local Division of the UPC found that the patent at issue was infringed by equivalence.

Newsletter n. 104 – February 2025