LSPN Europe 2017: Lack of consistency on doctrine of equivalents

The UK Supreme Court’s approach in Actavis v Eli Lilly brought the country closer to harmonisation with other European nations, but there’s still not a wholly consistent view on the doctrine of equivalents across Europe.

In July, the Supreme Court reformulated the three questions that should be asked when testing for equivalent patent infringement.

In reworking the test for equivalent infringement, the Supreme Court updated the Improver questions, which stemmed from the 1990 case of Improver Corp v Remington Consumer Products.

Under the doctrine of equivalents, patent infringement can be found even though the infringing device does not fall into the patent claim’s literal scope, but is equivalent to the claimed invention.

Hazel Ford, partner at Finnegan, Henderson, Farabow, Garrett & Dunner, outlined the Supreme Court’s holding and whether other courts across Europe had interpreted it in the same way, at the Life Sciences Patent Network (LSPN) Europe conference today, December 6.

“At the least, the UK is not out on its own … but we still don’t have a consistent view across Europe and we still have countries coming up with different answers to the issues based on their interpretations,” noted Ford.

Eli Lilly won a patent dispute over its cancer drug Alimta (pemetrexed disodium), with the court finding that Actavis's generic versions of the drug had directly infringed the patents.

The Supreme Court found direct infringement in the UK, Italy, Spain and France, while in related cases elsewhere in Europe, courts in Switzerland and the Netherlands have also found direct infringement.

In Germany, the situation is less clear but, according to Ford, infringement has not been “ruled out”. On the other hand, Italy has found no infringement in a related case with different parties.

She expects that the Unified Patent Court (UPC) will help in terms of producing a single decision that covers all the countries signed up to the UPC Agreement.

Although it will produce a single consistent approach, uncertainty remains on how the court will decide these issues.

For more information on the reworked questions in the Actavis case, please click here.

LSPN Europe is being hosted by Life Sciences IP Review.

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