Equivalents: K = Na. Is the genie out of the bottle?

Equivalents: K = Na. Is the genie out of the bottle?

On 1st November 2017, UCL Faculty of Laws Institute of Brand and Innovation Law brought together an unrivalled panel of European judges to discuss the Actavis UK Ltd v. Eli Lilly & Co [2017] UKSC 48 judgment from a range of perspectives.

Speakers included:

• Professor Sir Robin Jacob, Sir Hugh Laddie Chair of Intellectual Property Law, UCL Faculty of Laws (Chair)
• Lord Neuberger of Abbotsbury, President of the Supreme Court of the UK
• Lord Sumption, Justice of the Supreme Court of the UK
• Professor Dr. Peter Meier-Beck, Presiding Judge of the German Federal Court of Justice
• Judge Rian Kalden, Head of the IP Division, Court of Appeal, The Hague.
• Judge Kathleen O’Malley

Watch the Video of this event

About the event

The Protocol on the Interpretation of article 69 EPC identifies that the extent of protection conferred by a European Patent is to be interpreted in a manner “which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties, taking “due account” of “any element which is equivalent to an element specified in the claim.”

Much ink has been spilt debating how this ‘via media’ is best achieved, with courts across European reaching differing conclusions. Ever since the landmark ruling of Kirin-Amgen v. Hoechst [2004] UKHL 46, UK courts have approached this challenge by answering a single question: “what would the skilled person understand the patentee to mean by the language used in the claim?”

In July’s ruling, Actavis UK Ltd v. Eli Lilly & Co [2017] UKSC 48, the UK Supreme Court has now said that this approach is “wrong in principle.” By erring too much on the side of legal certainty, it permits competitors to “take the essence of the invention but avoid infringement by reason of a minor variation.” This denies the patentee fair protection.

The Supreme Court has replaced the single Kirin-Amgen question with two. Firstly, does the variant infringe as a matter of normal interpretation? Secondly, should the variant infringe nonetheless because its variance is immaterial? But when will a variant be ‘immaterial’? Here the Court proffers three ‘improved’ Improver questions as guidance. This reframing shifts the emphasis of the enquiry away from the language used and towards the essence of the invention. But is the approach now too liberal and too pro-patentee?

This ruling has come as a surprise for those active in the patent field, and many questions have been raised already as to its impact on those engaged in drafting and enforcing patents, as well as those providing freedom to operate advice. The Supreme Court was clearly influenced by the approaches in other European countries, suggesting that practices in jurisdictions, such as Germany and the Netherlands, which have already embraced a doctrine of equivalents might be influential when lower courts seek to apply the new law in future cases.

Learning Outcomes

This event allowed participants to understand this key ruling from a number of perspectives, specifically:

• How the case has changed the approach to claim interpretation and the scope of protection.
• When will a patentee still be held to the literal meaning of their claims?
• What knock-on effect will the decision have in terms of e.g. validity, trial procedure, expert evidence?
• Has the Protocol has, at last, succeeded in harmonising the scope of protection across Europe?
• To what extent has the decision introduced file wrapper estoppel into UK law?
• What impact will the decision have on pan-European litigation strategies?