The Doctrine of Equivalents in Patent Law: The Impact of Actavis v Eli Lilly
| Date | 01 January 2019 |
| Author |
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e Doctrine of Equivalents in Patent Law: e
Impact of Actavis v Eli Lilly
VALENTYNA CHEKANSKA*
Introduction
is article examines the law on patent infringement, in particular the doctrine
of equivalents, in light of the recent UK Supreme Court judgment in Actavis UK
Limited and others v Eli Lilly and Company.1 e aim of the article is to review
the crucial change in the law resulting from the recognition of the doctrine of
equivalents in UK law. e article also provides a comparative analysis of the recent
UK law with the German approach, and explores whether, and if so, how, the Irish
courts should account for the change in UK law.
is seminal Supreme Court judgment is likely to have the eect of widening the
scope of protection conferred by a patent in the UK. Moving forward, it is possible
to say that it will be easier to protect patents, as courts will be taking a broader
approach to infringement, no longer relying solely on the language within a claim.
e purposive construction approach, which had previously prevailed in the UK,
was considered by the court in Actavis to be out of sync with the full protection of
patent rights, as required by the European Patent Convention (the ‘EPC’). is
long-awaited decision introduces a doctrine of equivalents into UK patent law,
thus potentially bringing the UK law in line with the EPC approach.
A patent protects an invention by granting the patentee certain rights, including a
monopoly for twenty years, which Waelde has suggested ‘is arguably the strongest
within intellectual property law’.2 One of the main justications for patent
protection is to provide a reward for the work performed, which in turn provides
an incentive for others to invent.3 When it comes to infringement, the scope of
patent protection is very important as the courts need to strike a balance between
eective protection for patent holders and certainty for third parties,4 as required
by article 1 of the Protocol on the Interpretation of Article 69 of the European
Patent Convention (the ‘Protocol’) for EPC signatories.
* B.C.L. (UCD), LL.M. (UCD), Trainee Solicitor at Arthur Cox.
1 Actavis v Eli Lilly [2017] UKSC 48 (‘Actavis’).
2 Charlotte Waelde, Abbe Brown, Smita Kheria, and Jane Cornwell, Contemporary Intellectual
Property: Law and Policy (4th edition, Oxford University Press 2016) 409.
3 Margaret Llewelyn ‘Schrodinger ’s Cat: An Observation on Modern Patent Law’ in Peter Drahos
(ed) Death of Patents (Lawtexts 2005) 11. is has been conrmed, for example, by Clarke J in the
Irish case of Ranbaxy Laboratories Ltd v Warner Lambert Company [2007] IEHC 256 [3.2].
4 David Langwallner ‘e S cope of Patent Infringement in Irish Law aer Ranbaxy’ (2008) 2(4) Irish
Business Law uarterly 20, 20.
e Doctrine of Equivalents in Patent Law 69
ere are several forms of infringement that might arise in patent law. ese include
the following: literal infringement, purposive infringement and infringement
by equivalents. Literal infringement is relatively straightforward and involves a
situation where a product or process complained of falls within the language of the
claim. Purposive infringement, the approach taken in England pre-Actavis, views
the question of infringement from the eyes of a person skilled in the art, a concept
further discussed below. Infringement by equivalents involves replacing part of an
invention with ‘objects which are equal, but not identical’.5 Put simply, a typical
infringement by equivalents involves a defendant replacing an ingredient of a
patented product with an equivalent variant to produce the same result. Although
the doctrine of equivalents is used in many countries, including for instance the
United States6 and Germany,7 questions still remain as to whether there are
internationally recognised principles for the doctrine.8
e dierence between a literal approach and a purposive approach is that with
the former the courts adhere to the strict dictionary meaning of the words in the
claim and if employing the latter, courts will examine the context of the claim when
interpreting the meaning of the words used. e problem with the literal approach,
as argued by Langwallner, is that patent holders will not be given eective
protection, as competitors could simply use equivalents to achieve the same result
without infringement.9 Generally speaking, while the literal approach provides
greater certainty for competitors who would have a clear idea on whether they are
infringing, the purposive approach favours patentees by prohibiting competitors
from making a slight amendment to a patented product and claiming it as their
own invention. It has been suggested that one of the practical eects of the literal
approach is that it acts as a ‘public notice’,10 which allows competitors ‘to tailor
their inventive and commercial activities accordingly so that they do not infringe
the protected subject matter under the patent’.11 e doctrine of equivalents, on
the other hand, extends the scope of protection aorded by a patent to equivalent
ingredients of that patent.
is article will address the doctrine of equivalents in three parts. e rst part will
cover the position on equivalents in the UK. It will deal with the position in the
UK prior to Actavis, followed by an analysis of Lord Neuberger P’s judgment in the
5 Are Stenvik, ‘Protection for Equivalents under Patent Law – eories and Practice’ (2001) 32
International Review of Intellectual Property and Competition Law 1, 3.
6 Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950).
7 Schneidmesser I (2002) 33 IIC 873.
8 Stenvik (n 5) 3.
9 Langwallner (n 4) 20.
10 Canamould Extrusions Ltd v Driangle Inc, (2004) 30 CPR (4th) 129 (FCA) [32] as cited by Eugene
C. Lim ‘Opening the “Pandora’s Box” of Patent Claim Construction: Purposive Interpretation,
Central Claiming and the Doctrine of Equivalents in Comparative Perspective’ (2016) 16 Asper
Review of International Business and Trade Law 155, 165.
11 Lim (n 10) 165.
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