{"id":54306,"date":"2026-06-26T09:34:52","date_gmt":"2026-06-26T07:34:52","guid":{"rendered":"https:\/\/www.studiotorta.com\/?p=54306"},"modified":"2026-06-26T09:37:38","modified_gmt":"2026-06-26T07:37:38","slug":"the-doctrine-of-technical-equivalence-before-the-unified-patent-court","status":"publish","type":"post","link":"https:\/\/www.studiotorta.com\/en\/the-doctrine-of-technical-equivalence-before-the-unified-patent-court\/","title":{"rendered":"The Doctrine of Technical Equivalence before the Unified Patent Court"},"content":{"rendered":"

Towards a Coherent Methodology?<\/strong><\/p>\n

    \n
  1. The context<\/strong><\/li>\n<\/ol>\n

    The doctrine of technical equivalence has traditionally played a pivotal role in European patent law. Rooted in Article 69 EPC and its Protocol, it seeks to strike a delicate balance between the need to ensure fair protection for the patentee and the requirement of legal certainty for third parties. This balance is particularly delicate in cross-border disputes, where national approaches have historically diverged.<\/p>\n

    The creation of the UPC has re-opened this longstanding debate at a supranational level. Significantly, neither the Unified Patent Court Agreement nor the Rules of Procedure provide an explicit definition of equivalence or a codified test for its application. As a consequence, the Court has been required to construct its own doctrine through case law, drawing\u2014implicitly or explicitly\u2014from the traditions of the participating Member States.<\/p>\n

    At the present stage, the most distinctive feature of the UPC system lies in the absence of a unifying precedent. No decision of the Court of Appeal has yet established a binding framework for infringement by equivalence. This institutional gap explains the heterogeneity of solutions adopted by first-instance divisions and the lack of doctrinal consolidation.<\/p>\n

    Cases at the UPC dealing with equivalence.<\/p>\n\n\n\n\n\n\n\n\n\n\n
    Case<\/strong><\/td>\nDivision<\/strong><\/td>\nTest<\/strong><\/td>\n<\/tr>\n<\/thead>\n
    Plant\u2011e (2024)<\/td>\nThe Hague<\/td>\n4-step<\/td>\n<\/tr>\n
    Nelissen (2025)<\/td>\nBrussels<\/td>\nFWR<\/td>\n<\/tr>\n
    Mannheim (2025)<\/td>\nMannheim<\/td>\nFunctional test<\/td>\n<\/tr>\n
    Washtower (2025)<\/td>\nThe Hague<\/td>\n4-step<\/td>\n<\/tr>\n
    Raccords (2025)<\/td>\nParis<\/td>\nHarmonized test<\/td>\n<\/tr>\n
    Helsinki (2026)<\/td>\nHelsinki<\/td>\nDerived test<\/td>\n<\/tr>\n<\/tbody>\n<\/table>\n
      \n
    1. The Normative Framework<\/strong><\/li>\n<\/ol>\n

      The UPC has consistently anchored its reasoning in Article 69 EPC and the Protocol on its interpretation. These sources establish that the claims define the extent of patent protection, while the description and drawings serve as interpretative tools, and that due account must be taken of elements equivalent to those specified in the claims.<\/p>\n

      In line with established European patent law, the UPC has clarified that these interpretative principles apply equally to the assessment of validity and infringement, including infringement by equivalence. This convergence ensures a degree of continuity with pre-existing jurisprudence, notwithstanding the institutional novelty of the Court.<\/p>\n

      Furthermore, the Court of Appeal has emphasised that claim interpretation must achieve a balance between adequate protection for the patentee and sufficient legal certainty for third parties. This dual objective constitutes the normative foundation upon which the emerging doctrine of equivalence is being constructed.<\/p>\n

        \n
      1. The Structural Approach to Infringement<\/strong><\/li>\n<\/ol>\n

        Notwithstanding methodological differences, UPC case law displays a strong degree of convergence at the structural level. Infringement analysis is consistently conducted in two successive stages. The Court first examines whether the allegedly infringing embodiment falls within the literal scope of the claims. Only if this question is answered in the negative does the Court proceed to assess whether the same embodiment may nonetheless infringe by equivalence.<\/p>\n

        This two-step approach, which has been explicitly confirmed in several decisions, reflects a conceptual hierarchy in which equivalence operates as a subsidiary mechanism. It is not an alternative route to the same result, but rather a corrective tool that is activated only when literal infringement cannot be established.<\/p>\n

          \n
        1. Technical-Functional Equivalence as a Core Requirement<\/strong><\/li>\n<\/ol>\n

          Beyond this structural convergence, the most significant substantive point of agreement across UPC decisions concerns the requirement of technical-functional equivalence. All divisions appear to concur that infringement by equivalence presupposes that the variant achieves essentially the same technical function and produces essentially the same technical effect as the claimed invention.<\/p>\n

          This principle has been articulated with particular clarity in the case law of the Mannheim Division, which held that equivalence must be excluded where the modified means do not fulfil substantially the same function in order to achieve substantially the same result. A similar approach can be observed in the Brussels case law, where the absence of functional equivalence was deemed sufficient to rule out infringement, irrespective of the specific test invoked by the parties.<\/p>\n

          It follows that technical-functional equivalence operates as a threshold requirement. Where it is not satisfied, the inquiry necessarily comes to an end. Where it is satisfied, however, further criteria\u2014depending on the methodological framework adopted\u2014may come into play.<\/p>\n

            \n
          1. Divergence of Methodologies<\/strong><\/li>\n<\/ol>\n

            While convergence exists as regards the core requirement of equivalence, significant divergences arise at the methodological level. The various local divisions have adopted different analytical frameworks, often reflecting the traditions of their respective legal systems.<\/p>\n

            The Hague Local Division, in the Plant\u2011e decision, has articulated the most structured approach to date. It formulated a four-step test, requiring an assessment not only of technical equivalence, but also of the fairness of extending protection, the preservation of legal certainty for third parties, and the compatibility of such extension with the prior art. This approach clearly bears the imprint of Dutch jurisprudence and aims to integrate both technical and normative considerations.<\/p>\n

            By contrast, the Paris Local Division has favoured a more flexible and less formalised methodology. In the Raccords case, it emphasised the identity of function and result, without committing to a rigid multi-step test. This approach appears to reflect an attempt to formulate a \u201cEuropean\u201d standard, rather than replicate any specific national doctrine.<\/p>\n

            The Brussels Division has adopted yet another position, recognizing that different doctrinal tests\u2014such as the function\u2011way\u2011result test or the insubstantial differences approach\u2014may be relied upon, but stressing that the decisive issue remains the existence of technical-functional equivalence. This confirms a pluralistic attitude towards methodology, combined with substantive rigidity at the threshold level.<\/p>\n

            The Mannheim Division, finally, has adopted a minimalist stance, focusing on the core requirement of function and effect, without developing a broader doctrinal framework. This approach prioritizes clarity and predictability, albeit at the expense of doctrinal elaboration.<\/p>\n

            The Helsinki Local Division has added a further dimension to this debate by emphasizing the need for consistency in the absence of appellate guidance. It explicitly noted that, where no Court of Appeal precedent exists, divisions should follow existing first-instance approaches unless there are compelling reasons to depart from them. This statement underscores the transitional character of the current jurisprudence.<\/p>\n

              \n
            1. Additional Doctrinal Elements<\/strong><\/li>\n<\/ol>\n

              In addition to these methodological differences, certain complementary elements are beginning to emerge. One of the most significant is the increasing recognition of a prior-art filter, commonly referred to as a Formstein or Gillette defence. According to this principle, equivalence cannot extend patent protection to subject-matter that would itself lack novelty or inventive step. This ensures that the doctrine of equivalents remains anchored within the limits of patentability.<\/p>\n

              Another notable trend concerns the growing interaction between claim interpretation and equivalence. In several cases, courts have effectively resolved disputes at the level of interpretation, without needing to engage in a separate equivalence analysis. This suggests a possible evolution towards a more integrated approach, in which equivalence is absorbed into a broader understanding of claim scope.<\/p>\n

              Finally, some decisions have shown a degree of openness towards taking into account statements made during prosecution, particularly where amendments to the claims reflect intentional limitations. Although the UPC has not embraced a fully developed doctrine of file-wrapper estoppel, this development may introduce an additional constraint on the extension of protection by equivalence.<\/p>\n

                \n
              1. Conclusion<\/strong><\/li>\n<\/ol>\n

                The doctrine of technical equivalence before the UPC is still in a formative stage. While a common core has begun to emerge, centered on the requirement of technical-functional equivalence, significant divergences persist as regards the appropriate methodological framework.<\/p>\n

                The current jurisprudence can therefore be characterised as a phase of controlled pluralism, in which different approaches coexist under a shared normative umbrella. This situation reflects both the diversity of legal traditions within the UPC system and the absence of authoritative guidance from the Court of Appeal.<\/p>\n

                The future development of the doctrine will depend crucially on upcoming appellate decisions. Only once the Court of Appeal has articulated a coherent and binding test will it be possible to speak of a truly unified doctrine of equivalence within the UPC system. Until then, uncertainty will persist, but so too will the strategic opportunities that such uncertainty inevitably creates.<\/p>\n

                 <\/p>\n","protected":false},"excerpt":{"rendered":"

                Towards a Coherent Methodology? The context The doctrine of technical equivalence has traditionally played a pivotal role in European patent […]<\/p>\n","protected":false},"author":1,"featured_media":54302,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[116,891],"tags":[],"class_list":["post-54306","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-news-en","category-up-upc-en"],"_links":{"self":[{"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/posts\/54306","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=54306"}],"version-history":[{"count":2,"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/posts\/54306\/revisions"}],"predecessor-version":[{"id":54308,"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/posts\/54306\/revisions\/54308"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/media\/54302"}],"wp:attachment":[{"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/media?parent=54306"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/categories?post=54306"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/tags?post=54306"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}