For the first time, in Eli Lilly v Actavis the UK Supreme Court has introduced a doctrine of equivalence in an effort to move closer to harmonising UK patent laws with those of continental Europe.
Doctrines of equivalence (which extend the scope of a patent beyond the literal interpretation of its claim) are found in many EU Countries, but different countries apply different tests.
This was discussed in a panel at the 2017 Life Sciences IP Summit 2017 held in October 2017 in Munich, click here, with the participation of Claire Bennett, DLA Piper partner in the London office, Bernd Hutter, Vice President, Head of Intellectual Property at MorphoSys AG and myself.
With thoughts from multiple jurisdictions (mainly Italy and Germany in continental Europe and United Kingdom), we discussed the different approaches across Europe and the implications to Life Science businesses.
The most recent developments in Germany are outlined in the link
It is difficult to predict how the standards for the determination of the doctrine of equivalents are concretely applied. For example, in case recently decided by the Italian Court of Cassazione (Cass. 3 December 2016, Drospirenone case) the Court concluded that even if the patent in suit covered a method of manufacturing Drospirenone with one step being oxidation in presence of (non-organic) ruthenium salt as catalyst, and in the description only ruthenium salts where discussed as possible catalysts, the use as catalyst of an organic chemical compound was to be considered equivalent (and therefore infringed the patent under the doctrine if equivalents). In a parallel case on exactly the same between the same parties discussed before the Court of Düsseldorf(Higher Regional Court of Düsseldorf, decision of September 13, 2013 – I-2 U 23/13 - Drospirenon) opposite conclusions were reached.