{"id":49841,"date":"2025-02-03T16:54:50","date_gmt":"2025-02-03T15:54:50","guid":{"rendered":"https:\/\/www.studiotorta.com\/?p=49841"},"modified":"2025-02-03T17:07:41","modified_gmt":"2025-02-03T16:07:41","slug":"the-upc-has-issued-the-first-decision-on-infringement-by-equivalence","status":"publish","type":"post","link":"https:\/\/www.studiotorta.com\/en\/the-upc-has-issued-the-first-decision-on-infringement-by-equivalence\/","title":{"rendered":"The UPC has issued the first decision on infringement by equivalence"},"content":{"rendered":"
The Court of First Instance of the Hague Local Division has adopted a four-step test and found infringement by equivalence of the European Patent EP2137782 in the Plant-e Knowledge vs <\/span>Arkyne<\/span> Technologies case<\/span> (UPC_CFI_239\/2023)<\/span>.<\/span><\/h6>\n

The patent in suit describes a method of generating electricity using a\u202fplant-microbial fuel cell (PMFC) that leverages compounds released by the roots of a plant as fuel. On the contrary, prior art microbial fuel cells rely on feedstock fuels such as glucose.<\/span> The Court of First Instance has confirmed validity of the patent and assessed infringement. As a side note, it is interesting to note that the Court has used the problem-solution approach, typical of the European Patent Office, for assessing inventive step of the patent in suit.<\/span>\u00a0<\/span><\/p>\n

Regarding infringement, the Court has excluded literal infringement since the alleged infringed product of the defendant differed from the patented invention in the position of the roots of the plant.<\/span>\u00a0<\/span><\/p>\n

Then, the Court moved to the evaluation of infringement by equivalence. In this regard, the Court adopted a four-step test formed by the following questions:<\/span>\u00a0<\/span><\/p>\n

    \n
  1. Technical equivalence<\/span><\/b>: does\u202fthe variation solve (essentially) the same problem that the patented invention solves and performs (essentially) the same\u202ffunction\u202fin this context?<\/span>\u00a0<\/span><\/li>\n
  2. Is\u202fextending the protection of the claim to the equivalent proportionate to\u202f<\/span>a fair protection for the patentee<\/span><\/b> in\u202fview 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)?<\/span>\u00a0<\/span><\/li>\n
  3. Reasonable legal certainty for third parties<\/span><\/b>: does the skilled person understand from the patent that the scope of the invention is broader than what is claimed literally?<\/span>\u00a0<\/span><\/li>\n
  4. Is the allegedly infringing product\u202f<\/span>novel and inventive<\/span><\/b>\u202fover the prior art? <\/span>(i.e. no successful Gillette\/Formstein defence).<\/span>\u00a0<\/span><\/li>\n<\/ol>\n

    The Court has answered affirmatively to all the four questions and therefore found infringement by equivalence of the patent in suit.<\/span> In using this four-step test, the Court commented that in absence of guidance on the specific test to be used, the applied test is based on \u201cvarious national jurisdictions<\/span>\u201d.<\/span> However, the test used by the Court <\/span>largely mirrors<\/span> the test adopted by a Dutch national Court of Appeal in the \u201cEli Lilly\/Fresenius\u201d case and no details are provided <\/span>regarding<\/span> the approaches of other <\/span>jurisdictions<\/span>.<\/span><\/span><\/p>\n

    While recognizing that other local divisions may explore alternative approaches to evaluate infringement by equivalence, this first decision serves as a foundation for the evolving body of case law on this complex issue within the Unified Patent Court.<\/span><\/span><\/p>\n","protected":false},"excerpt":{"rendered":"

    The Court of First Instance of the Hague Local Division has adopted a four-step test and found infringement by equivalence […]<\/p>\n","protected":false},"author":1,"featured_media":49836,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[593,891],"tags":[],"class_list":["post-49841","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-insights","category-up-upc-en"],"_links":{"self":[{"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/posts\/49841","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/comments?post=49841"}],"version-history":[{"count":2,"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/posts\/49841\/revisions"}],"predecessor-version":[{"id":49843,"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/posts\/49841\/revisions\/49843"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/media\/49836"}],"wp:attachment":[{"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/media?parent=49841"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/categories?post=49841"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/tags?post=49841"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}