Key takeaways
Assessment of the scope of protection in infringement cases in two steps: (i) literal infringement; (ii) infringement by equivalence
The UPCA contains no provision on the infringement by equivalence, however, Art. 2 of the Protocol to Art. 69 EPC makes clear that equivalence must be considered: “For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims.”
Infringement by equivalence
4-step test based on the practice of various national jurisdictions applies:
1.Technical equivalence
Does the variation solve (essentially) the same problem that the patented invention solves and performs (essentially) the same function in this context?
2. Fair protection for the patentee
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)?
3. 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? Is there, in the eyes of the skilled person, a good reason to limit the scope of protection of the claim to a device/method as claimed literally?
4. Is the allegedly infringing product novel and inventive over the prior art? (i.e. no successful Gillette/Formstein defence)
Priority right, Art. 87 EPC
The requirement of “the 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 (“gold standard”), in line with EPO case law and the standard used in several UPCA Contracting Member States.
Added matter
“Gold standard” disclosure applies: Any amendment can only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the application.
Assessment of novelty
An invention lacks novelty if all claims of an invention are disclosed integrally, directly and unambiguously in one single piece of the prior art. “Gold standard” applies.
Inventive step
The Court follows the problem and solution approach as used by the EPO, however, using a realistic starting point in the state of the art. In selecting the starting point, the first consideration is that it must be directed to a similar purpose or similar effect as the invention or at least belong to the same or a closely related technical field as the claimed invention.
Text for recall letters
The Court can impose a text for the recall letters and/or publication on a website to ensure that the measure is effective and to avoid situation in which unclear or confusing messages are spread, Art. 64 UPCA, Art. 10 Enforcement Directive (2004/48/EG).
Division
Local Division The Hague
UPC number
UPC_CFI_239/2023
Type of proceedings
Infringement action, counterclaim for revocation
Parties
Claimants in the infringement proceedings and Defendants in the counterclaim proceedings: Plant-e Knowledge B.V., Plant-e B.V.
Defendant in the infringement proceedings and Claimant in the counterclaim proceedings: Arkyne Technologies S.L.
Patent(s)
EP 2 137 782
Body of legislation / Rules
Art. 69 EPC, Art. 2 of the Protocol to Art. 69 EPC, Art. 87 EPC, Art. 123 (2) EPC, Art. 54 EPC, Art. 56 EPC, Art. 83 EPC, Art. 25 UPCA, Art. 26 UPCA, Art. 63 UPCA, Art. 64 UPCA, Art. 67 UPCA, Art. 68 UPCA, Art. 80 UPCA, R. 354 RoP
