The Doctrine of Equivalence at the UPC: A New Test for Patent Infringement

The Unified Patent Court (UPC) has issued its first landmark decision on patent infringement by equivalence, introducing a new four-step test that could reshape patent enforcement across Europe. This ruling clarifies when a variation of a patented invention may still fall within the scope of protection, even if it does not literally infringe a claim.

In UPC_CFI_239/2023, the court found that the patent in question (EP2137782) was not literally infringed, prompting an assessment under the doctrine of equivalence. The UPC’s new test, while drawing from existing national case law, introduces distinct elements that could influence future patent litigation strategy across multiple jurisdictions.

For patent owners, this decision expands enforcement opportunities, while defendants must carefully assess their risk exposure. In this article, we break down the UPC’s test, its implications for businesses, and strategic considerations for navigating this evolving legal framework.

The UPC’s Four-Step Test for Equivalence

For a variation to be considered equivalent to an element of a patent claim, the following four conditions must be met:

1️⃣ Technical Equivalence – Does the variation solve the same problem and perform the same function as the patented invention?
2️⃣ Fair Protection for the Patentee – Would extending the patent’s scope to cover the variation still provide fair protection for the patent owner?
3️⃣ Legal Certainty for Third Parties – Would a skilled person reading the patent understand that the invention extends beyond its literal claims?
4️⃣ Novelty & Inventiveness – Is the allegedly infringing product novel and inventive over prior art?

The UPC’s approach appears patentee-friendly, setting a relatively low bar for establishing equivalence compared to some national courts. However, the third step—legal certainty for third parties—raises potential conflicts with the European Patent Office’s (EPO) examination standards, particularly regarding claim scope limitations during prosecution.

What This Means for Patent Owners & Defendants

Greater Scope for Patent Enforcement – The UPC’s test makes it easier for patentees to argue infringement by equivalence across multiple jurisdictions.
Legal Certainty Challenges – The third step of the test may create uncertainty for third parties if patent descriptions have been amended to match the granted claims.
Uncertain Future Precedent – Since UPC case law is nonbinding, future cases may modify or refine this test, making ongoing monitoring essential.

Strategic Considerations for Businesses & IP Owners

Businesses holding European patents should consider prosecution and litigation strategies in light of this decision. Companies facing potential infringement claims should:

✔ Assess patent portfolios for litigation risks under the new equivalence standard.
✔ Review UPC case developments to anticipate how the test will evolve in future rulings.
✔ Develop stronger patent prosecution strategies to avoid scope limitations that may weaken infringement claims.

How I Can Help

I provide expert legal guidance on:
✔ Patent enforcement & infringement defence before the UPC and national courts.
✔ Strategic IP portfolio management to align with the doctrine of equivalence.
✔ Litigation risk assessments for businesses involved in cross-border patent disputes.
✔ Regulatory compliance with EPO standards, ensuring patents are prosecuted effectively to avoid litigation pitfalls.

📩 Contact me today to ensure your patent strategy aligns with UPC case law developments and protects your innovations in Europe.

David Orchard | Lawyer

+44 743 789 4552