K = Na. Is the genie out of the bottle? PART 1

On a dark November evening, this GuestKat travelled into the depths of UCL for what could, possibly, be the patent event of 2017 – the UCL IBIL panel discussion on the doctrine of equivalents following the UK Supreme Court decision in Actavis v Eli Lilly.  There were around 800 patent lawyers, patent attorneys and judges in attendance.  Questions were shared with the panel and audience in advance of the event and can be found here [Merpel: just because you get them in advance doesn't necessarily make them any easier to answer... Kudos to the judges for giving up their time and putting themselves in the firing line.] 

What follows in a series of two parts is a report of some of the key points discussed at the IBIL event.  Part 1 covers judicial approach, the evolution of the DoE in the UK and elsewhere, and the concept of "fairness". Part 2 covers claims with numerical limits, relevance of the file history, harmonisation, and a vote as to whether the decision in Actavis v Eli Lilly has improved the law.  

Sir Robin Jacob, in the chair, introduced a stellar panel to debate the doctrine of equivalence (DoE):

Lord Neuberger of Abbotsbury, President of the Supreme Court of the UK
Lord Sumption, Justice of the Supreme Court of the UK
Professor Dr. Peter Meier-Beck, Presiding Judge of the German Federal Court of Justice
Judge Rian Kalden, Head of the IP Division, Court of Appeal, The Hague
Judge Kate O’Malley, US Court of Appeals for the Federal Circuit

Sir Robin observed that the audience could expect some reticence from the panel at times - all members of the panel have given decisions in the past, and some will do so again in the future.  The point of the event is a debate and an expression of provisional views - there is a big difference between discussing legal principles, and reaching a decision on the facts of contested law.  In summary, "argued law is tough law".

Judicial approach and evolution of DoE

In Kirin-Amgen [2004] UKHL 46, Lord Hoffmann stated that "The determination of the extent of protection conferred by a European patent is an examination in which there is only one compulsory question, namely that set by article 69 and its Protocol: what would a person skilled in the art have understood the patentee to have used the language of the claim to mean? Everything else, including the Protocol questions, is only guidance to a judge trying to answer that question." Sir Robin queried whether that was now wrong?

Lord Neuberger was first to respond. While noting the embarrassment and difficulty in commenting on your own cases, he explained that the difficulty with Kirin Amgen is that it is difficult to reconcile with the approach in Improver Corp v Remington Consumer Products Ltd [1990] FSR 181 - if it really all comes down to a matter of claim interpretation, then you don't need to go into the three Improver questions.  The Supreme Court has taken the view in Actavis v Eli Lilly that there is a law of equivalents - that's what the EPC says, and that must be adopted in English law.  Lord Sumption agreed that if it is simply a matter of construction, then you have no regard to the DoE, but the DoE is what the legislation requires.

The event was moved to the UCL Institute of Education to
accommodate around 800 patent enthusiasts
Sir Robin queried whether the DoE has caused harm in the US.  Judge O' Malley doesn't think it has, but she noted that the US has many exceptions to the DoE, and she does not see many DoE infringement claims today that survive.  The Supreme Court in the UK has recognised that the Actavis decision represents a change in the law but has taken that step for policy reasons.

Judge Kalden noted that the Dutch Courts have a two step test, which is similar to the Actavis approach.  First, you construe the claims (purposive construction in context of specification), and then you adopt a DoE 'function-way-result' test which is borrowed from the US. 

Judge Meier-Beck noted that so much has changed over the past 30 years. Jurisprudence has evolved in the UK, Germany, Netherlands and other member states.  The key point of the Actavis case is article 69 of the EPC and the Protocol on interpretation.  What is the extent of protection determined by the claim? The DoE is not a free-standing doctrine - it is a claim based DoE and the protocol makes that clear.  In Judge Meier-Beck's view, the DoE in Germany is a bit narrower today than it was 30 years ago when the Improver case was decided. 

Sir Robin noted that there was hesitation from the Supreme Court in Actavis to state whether Improver would be decided the same way today.  Why was that?  Lord Neuberger explained that judges are reluctant to overrule/approve decisions that you have not heard argument on at the time, but he expects that would have been decided differently today.  Lord Sumption noted that under Q1 of the Actavis questions,  it would depend whether the rubber rod in Improver worked the same way as the coiled helical spring. Judge Kalden noted that the Dutch Court held that the rubber rod did work the same way, but that like Germany, the DoE has narrowed since then.  Sir Robin also noted that sometimes as a judge you change your mind - to quote a 19th century judge (whose name escaped the author): "it doesn't seem to me now as it seems to have seemed to me then".


Sir Robin then asked whether the Actavis test is "fair", if the patentee could have claimed the equivalent but did not do so? Judge Kalden noted that any assessment necessarily involves the competing interests of the patentee and infringer, and the result will be a compromise.  Lord Sumption noted that the DoE is part of our law - it doesn't matter whether it is fair or not! Although Sir Robin pointed out that the concept of fairness is expressly mentioned in the Protocol on Art 69.  Lord Neuberger noted that fairness is a flexible concept, and it is very difficult to apply in practice.
Part 2 to follow.

Postscript: A film of the event can be found here.
K = Na. Is the genie out of the bottle? PART 1 K = Na. Is the genie out of the bottle? PART 1 Reviewed by Eibhlin Vardy on Wednesday, November 08, 2017 Rating: 5


  1. I have a question that is not on Merpels List. Is it "fair" to confer protection that includes equivalents on incompetent drafters.? Here, the contribution to the art was the use of the pemetrexed ion. But did the drafter disclose it, never mind claim it, in the application as filed. No.
    Is it not more "fair" here, to visit rhe consequences on the drafter rather than the publuc?

  2. Equivalence is part of the law but what is an equivalent is not.

  3. In view of question 25 that was given to the panel, one wonders whether we need a formal system of cancelling previous decisions. Perhaps it would be good to now give a date on which Kirin-Amgen is no longer applicable for determining claim scope so that potential infringers will know which test would be used from what date in any litigation. The England and Wales system of Courts does not allow parallel case laws to exist, and therefore, just as with legislation, it would be important to know what the infringement test is relevant at any given date

  4. Interesting that there is an almost complete dismissal of fairness and legal certainty for third parties (Article 1 of the Protocol of Interpretation of Article 69 EPC) on the basis that Article 2 of the Protocol refers to a doctrine of equivalents. Why does Article 2 trump Article 1?

  5. @Fairly Equivalent

    My thoughts entirely!

    As I recall, the response of the Supreme Court judges to this point was that they felt that "equivalents" were de facto "fair".

    I do not see how one can reach that conclusion from the text of the Protocol. Nevertheless, in practical terms, much will turn on whether or not later case law clarifies that there are only very specific circumstances under which "equivalents" can even be contemplated.

  6. The Supreme Court never got as far as "reasonable degree of legal certainty for third parties", as it is at the end of a long paragraph (Art.1). They jumped straight to the short sentence of Article 2.

    Speaking as a drafter from the pharmaceutical arts, I believe it is abundantly fair to limit the claim to sodium and not to extend to the potassium equivalent. It is fair, because it is a straightforward patent claim to draft. It could not have been more straightforward to define the scope of protection sought if the patentee did not want to be limited. In previous cases, the issue related to functional wording: 'vertical', helical spring', but here 'sodium' defines an absolutely clear form of matter. There is no argument over the scope of the definition, absolutely none, so the literal meaning provides a fair scope of protection.

    Any coverage of equivalents can provide no certainty for 3rd parties in such chemical patents.

    And, how on earth are third parties supposed to determine the answer to question 2 in most cases? This example was too simple - salt change, invention not related to the salt, but the medical activity.

    The Supreme Court have got this wrong in a big way.

  7. @maxdrei - I thought that Sir Robin touched on this in one of his questions.

    As I remember it (though it was an intensive session, with so many questions, and answers from 5 panelists from 4 different jurisdictions, and sound wasn't completely clear), Sir Robin said that if the drafter had been comprehensive, by listing all the salts in the Patent, but the claims had been limited to sodium, then under the DofE the scope would probably have been interpreted as sodium salts (presuming a purposive limitation in comparison to the list of other possible salts provided in the patent). Alternatively, if the drafter can't foresee a future equivalent, because that equivalent capability wasn't known at the time, then it seems fair that it should be covered under the DofE once it is known that the new equivalent works in exactly the same way. But what about a poor drafter, who should know about and be able to list known alternatives/equivalents at the time of drafting, but doesn't? Why should they be rewarded with a broader scope for infringement compared to the more careful and helpful drafter who did include the alternatives and ended up with the same limitations in the claim?

    I don't remember Lord Neuberger fully answering this question. I look forward to listening to the recording of the panel discussion, when it is released (did they say in about 10 days?), so I can check if a) I understood the question correctly, and b) what the answer was. Not least because it could have implications for how an application is amended for conformity with the claims, prior to grant.

    Anyone else remember this bit?


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