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With no DOE provisions in the UPCA and differing approaches among its Member States, the first UPC decision on infringement by equivalence was eagerly awaited. On November 22, 2024, the Local Division The Hague issued its first decision on the DOE—but does it bring clarity, or do uncertainties remain? According to the Local Division The Hague, a 4-step test must be applied for the assessment of infringement under the DOE. This test closely follows the DOE approach in the Netherlands and has certain commonalities with the German test. Here are the four steps:
1. The first requirement is technical equivalence. So, the key question is whether the variation solves (essentially) the same problem that the patented invention solves and performs (essentially) the same function in this context. This requirement is known in the DOE case law of the different UPCA Member States including Germany, the Netherlands, France, and Italy, with slight differences.
2. The second requirement according to the Local Division The Hague is fair protection for the patentee. This requirement is met if extending the protection of the claim to the equivalent is proportionate to a fair protection for the patentee. In this regard, the Local Division The Hague considered the contribution to the art, and that it is obvious to the skilled person from the patent publication how to apply the equivalent element at the time of infringement. Regarding this requirement, the difference between the DOE approach of the Local Division The Hague, which followed national Dutch approach, and the German DOE test is the relevant point in time for assessing obviousness. In Germany, the priority date is decisive.
3. The third requirement is the reasonable legal certainty for third parties. This requirement is met if the skilled person understands from the patent that the scope of the invention is broader than what is claimed literally and there is, in the eyes of the skilled person, no good reason to limit the scope of protection of the claim to a device/method as claimed literally. However, the specific scope of this requirement is not sufficiently clear, in particular whether file wrapper known from the Dutch approach will be considered at the UPC and whether there are any differences to the third requirement under the German DOE test.
4. Now to the final question: is the allegedly infringing product novel and inventive over the prior art? This requirement is known in Germany as Formstein defense and as Gilette defense in the Netherlands. While this decision provides an initial framework, further guidance and clarity is needed on the second and third requirements for the DOE as established by The Hague. It will also be exciting to see whether the other Local Divisions will follow the approach of The Hague and how the Court of Appeal will decide on DOE cases.
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