United Kingdom: A new approach to patent infringement

August 24, 2017

In a landmark decision on patent infringement (Actavis UK Limited v Eli Lilly & Company [2017] UKSC 48), the Supreme Court has confirmed that UK law does provide for a doctrine of equivalents when determining the scope of patent protection.

Prior to this decision, determining the issue of infringement in the UK required a "purposive" construction of the patent claims. In any purposive construction, the courts would establish the meaning of the claim language in the eyes of the skilled person, before deciding whether any alleged infringement fell within the scope of this meaning. If an alleged infringement was outside of this scope, there would be no infringement.

In other words, the language of the patent was considered to be of critical importance and, if the language of a claim could not be construed to extend to an equivalent, this equivalent did not represent an infringement. However, in the approach established by this recent decision, infringement may now arise even when the specific language of a claim would not be understood as extending to the alleged equivalent.

The Supreme Court judgment helpfully sets out guidance for determining whether there is infringement in such circumstances. In simple terms, for an equivalent to represent an infringement, the equivalent must obviously achieve the same result in the same way as the invention in the eyes of the skilled person when viewed at the priority date. Additionally, the skilled person must conclude there was no requirement for strict compliance with the literal meaning of the relevant claims. If these conditions are satisfied, the equivalent will represent an infringement.

While this most recent decision in July 2017 represents a new approach for the UK courts, this refreshed approach to equivalents is closely aligned with that taken by the German and Dutch courts. Accordingly, this decision can certainly be viewed as an attempt to align the interpretation of infringement across Europe before the first cases at the new Unified Patent Court.