Equivalents and scope of protection of patents: the two-step approach confirmed by the Supreme Court

Published on 6 January 2025 categories 

Last March, the Supreme Court of the Netherlands took another step in the equivalence doctrine on the scope of protection of patents. It upheld the two-step approach formulated by the Court of Appeal of The Hague. According to the Supreme Court, this approach does not get in the way of the viewpoint doctrine, as the approach leaves enough room for it. However, this does not mean that the existing approach is no longer possible: both approaches may be applied. This blog discusses how the two-step approach fits into the doctrine of equivalence.


What is covered by the scope of protection?

The scope of protection of a European patent is governed by Article 69 European Patent Convention (hereinafter: EPC). It states that the scope of protection is determined by the patent claims, where the description of the patent and any accompanying drawings may serve to explain the patent claims.

To provide more guidance when assessing the scope of protection of a patent, a protocol for interpreting Article 69 EPC has been developed. It includes two articles:

Article 1: middle ground

Article 1 prescribes that, in interpreting the scope of protection, a middle ground must be found between: (i) on the one hand, a strict interpretation of the patent claims by reference to the literal text, and (ii) on the other hand, a broad interpretation of what the patentee has sought to protect, with the patent claims serving only as a guideline. Thus, a balance must be struck between the fair protection of the patentee and a reasonable degree of legal certainty to third parties.

Article 2: equivalents

It follows from Article 2 of the protocol that elements equivalent to those mentioned in the claims of the patent should also be taken into account when determining the scope of protection: equivalents. Including equivalents in the scope of protection of a patent may protect elements that are not explicitly mentioned in the patent. This can create ambiguities for third parties. Standards have been developed for qualifying equivalents. The following is an overview of those standards.

From viewpoint doctrine to the two-step approach

The viewpoint doctrine was first introduced by the Supreme Court in Ciba Geigy/Oté Optics. This doctrine seeks a balance between the inventive intent of the patentee (what did he want to protect?) and legal certainty of third parties (what does the patent claims say?). Thereby, ambiguities from the patent claims in principle work to the disadvantage of the patentee. It may be assumed that equivalents that are mentioned but not ‘claimed’ are not intended by the patentee to be protected. Decisive for this doctrine is whether the wording of the patent claims leave room for equivalents.

Despite this viewpoint doctrine, the Hague Court of Appeal introduced the two-step approach in the permetrexed case. As the name suggests, two steps must be met before there is patent infringement:

Step 1: literal infringement

First, one must consider whether the infringer’s product or process meets all the features of the patent’s claim. In this step, any equivalents are not yet taken into account. If all the infringer’s features are reflected in the claim, there is infringement. If a feature does not match, one proceeds to step two.

Step 2: equivalent features

In step two, one must assess whether the anomalous characteristic can be qualified as an equivalent. For that qualification, the following four questions should be answered positively:

  • From a technical point of view, is the deviating element equivalent to the feature in the patent claim?
  • Is it appropriate to consider equivalents in the light of equitable protection for the patent holder?
  • Is it appropriate to consider equivalents in the light of third-party legal certainty?
  • Is the equivalent element itself new and inventive in the light of the state of the art?

These questions reflect Article 1 of the discussed protocol: they take into account both the protection of the patentee and the legal certainty of third parties. However, the doctrine of points of view is less clear. Is sufficient space left for this?

Which doctrine should be applied?

The question of which doctrine – the viewpoint doctrine or the two-step approach – should be applied was answered by the Supreme Court in its judgment of 1 March last year. The plaintiff in that case held that the court should not have applied the two-step approach because that approach is contrary to the doctrine of points of view and Article 2 the Protocol on Article 69 EPC. This is because the patentee’s inventive step would not be sufficiently considered. The Supreme Court does not go along with this: the protocol leaves sufficient room for the application of both teachings. Both are aimed at finding the middle, which is central to the protocol. The two-step approach thus resembles an interpretation of how to find the balance in practice.

Conclusion

The scope of protection of the patent extends beyond the literal words of the claims; equivalents can also be protected. Such balancing involves a balance between the inventive intent of the patentee and the legal certainty of third parties. Both the viewpoint doctrine and the two-step approach are aimed at balancing the same interests. As a result, both teachings can coexist.

 

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