Doctrine under discussion

The Plenary Session for Doctrine of Equivalents, held yesterday morning, addressed issues that had not been previously discussed in Q175 and Q229.

The Doctrine allows a court to hold a party liable for patent infringement even though the infringing device or process does not fall within the literal scope of a patent claim, but nevertheless is equivalent to the claimed invention.

The role of equivalents was addressed by AIPPI in Resolution Q175, The role of equivalents and prosecution history in defining the scope of patent protection, in 2003.

Following this, in 2012, AIPPI addressed this topic with Q229, The use of prosecution history in post-grant patent proceedings.

In yesterday’s Plenary Session, Johanna Flythstrom, AIPPI’s Assistant Reporter General, introduced proceedings by explaining: “One of the objectives of this Study Question this year is to examine the need for refinements, amendments or changes to the rationale of Q175 approved in 2003.”

“In particular, the Study Question focuses on the following two issues, the lack of symmetry between infringement and validity and patentability, and whether unclaimed alternative embodiments disclosed in the specification should be excluded.”

Flythstrom noted: “Since the previous resolutions, there have been notable developments in approach in relation to the Doctrine of Equivalents in some jurisdictions.”

Examples include a shift in the UK’s approach to claim construction, as seen in the Supreme Court’s ruling in Actavis v Lilly in 2017.

“The questions raised by these developments is whether the additional complexity introduced by the divergence between the scope of claims and the scope of protection is warranted, or whether there would be a simpler approach that would be less expensive to litigate and provide more legal certainty,” explained Flythstrom.

Wendela Hårdemark, Chair of the Study Question, emphasised: “The Study Question relates to two important questions. First, how the Doctrine of Equivalents should be applied in infringement cases. Second, if a patent could be invalidated on the basis of an equivalent scope of protection. It's really important to harmonise this question, since we don't want different positions in different countries.”

Is Q175 sufficient?

The Reporter General Team received 42 Reports from National Groups, which have been combined into a summary. The summary revealed a clear majority of the responding groups believe that there is a continued need for such a doctrine.

In particular, the current Doctrine of Equivalents is the preferred choice for addressing the material issues.

These issues include shortcomings in claim drafting, which the Groups said should be covered by the doctrine.

The focus of the Study Question was whether Q175 remains sufficient given the time that has passed and National Groups responded that it required amendments.

UK and Germany/US debate

There were two contentious paragraphs in the Draft Resolution, one related to whether the potential equivalent scope of protection of similar inventions related to a granted claim should affect the claims validity assessment.

The approved version of the section concluded with “the Doctrine of Equivalents shall not be applied in the assessment of validity of a granted claim by a competent authority”.

The second contentious paragraph looked at whether the potential equivalent scope of protection of a granted claim can’t be successfully enforced by the patentee if the claim isn’t valid under that interpretation.

The UK and Germany put forward proposals with amendments from the US. This heavily debated paragraph eventually saw the Germany/US proposal being approved by achieving 65.3% of the vote and the UK proposal to replace this being rejected.

The paragraph as a whole was approved by 79.2% and the Resolution as a whole was approved by 87.5%.