In a recent decision (UPC_CFI_471/2023), the Mannheim Local Division suggested that previously-established principles regarding applicable law should apply to the doctrine of equivalents. However, the decision does not provide much insight into exactly how the doctrine of equivalents will be applied at the UPC, beyond confirming that "technical-functional equivalence" is a first requirement.
Background
Under the doctrine of equivalents, a product or method may be considered to infringe a patent where it falls outside of the literal scope of the claims of the patent, but is "equivalent" to what is specified in the claims. The Protocol on the Interpretation of Article 69 EPC, Article 2, sets out that "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". However, the exact manner by which infringement by equivalence is assessed varies between countries within Europe.
Applicable doctrine for pre- and post-UPCA infringing acts
In earlier decisions (UPC_CFI_159/2024,UPC_CFI_162/2024,UPC_CFI_365/2025), the Mannheim Local Division has decided that the applicable law (i.e. substantive national law or substantive UPCA law) depends on when the allegedly-infringing acts took place relative to the entry into force of the UPCA on 1 June 2023.
In the present decision (UPC_CFI_471/2023), the Mannheim Local Division ("the Court") suggested that this applies to the doctrine of equivalents.
Thus, for acts to which the substantive national law of a state is applicable (e.g. for acts that occurred before the entry into force of the UPCA), the UPC will apply the doctrine of equivalents of that state in the same way as a national court of the state would apply it. For acts to which the substantive law of the UPCA applies (e.g. for acts initiated and/or ongoing after the entry into force of the UPCA), the UPC will apply its own doctrine of equivalents.
With regard to the UPC developing and applying its own doctrine of equivalents for assessing post-UPCA acts, the Court drew parallels to the fact that the UPC is already applying its own principles of claim interpretation for the assessment of literal infringement. A primary aim of the UPC is to eliminate the fragmented market for patent disputes in Europe, and the Court noted that a uniform approach to determining the scope of protection – including where the scope extends to equivalents – is necessary for achieving this aim.
UPC equivalents test
The doctrine of equivalents has already been considered by UPC local divisions.
In UPC_CFI_239/2023, The Hague Local Division applied a four-step test for the assessment of infringement by equivalence, which was derived from a ruling of the Dutch Court of Appeal. The first step amounts to a "technical-functional equivalence" requirement, which was characterised by The Hague Local Division to be a requirement that, for a finding of infringement to be possible, a substitute/variant means in an allegedly-infringing product/method must (i) solve (essentially) the same problem that the patented invention solves and (ii) perform (essentially) the same function as in the patented invention.
Applying the four-step test in UPC_CFI_239/2023, The Hague Local Division held that the defendant's product did infringe the patent-in-suit by way of equivalence (see our News Item).
In UPC_CFI_376/2023 the Brussels Local Division considered the "Function-Way-Result" (FWR) and "Insubstantial Differences" tests often applied by US courts, but held that, whichever test is applied, it is first necessary to assess technical-functional equivalence. On the facts of this particular case, the Brussels Local Division held that, while the defendant's product performed a similar function to the claimed device, it did so in a fundamentally different way, and so the technical-functional equivalence requirement was not satisfied.
Court again declines to suggest equivalence test
In the present case (UPC_CFI_471/2023), the Court noted that all equivalence tests of the UPC member states involve a technical-functional equivalence requirement. The technical-functional equivalence requirement was characterised by the Court as below (taken from an English translation of Headnote 1).
This follows the decision of the Brussels Local Division mentioned above (UPC_CFI_376/2023).
Considering the facts of the present case, the Court found that the technical-functional equivalence requirement was not satisfied. Consequently, the Court was able to come to a finding of non-infringement without first suggesting a specific equivalents test to be applied. Thus, this decision does not provide much insight into how the doctrine of equivalents will be applied at the UPC, beyond confirming that technical-functional equivalence is a first requirement.
Interestingly, in the Court's opinion, the main differences between the equivalents tests of the UPC member states only concern the weight and importance to be attached to the claim and the description in determining the scope of protection. This may be considered by some to be an oversimplification in view of differences between the questions to be asked when assessing infringement by equivalence across the national courts of the UPC member states.
UPC doctrine of equivalents still uncertain
So, the approach to the assessment of infringement by equivalence at the UPC remains unclear. It is likely that a ruling of the Court of Appeal will be needed before there is any certainty on this issue
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