FIRST DECISION OF THE UNIFIED PATENT COURT ON THE DOCTRINE OF EQUIVALENTS

Doctrine of Equivalents Now in the Case Law of the Unified Patent Court (UPC)

With the entry into force of the Unitary Patent system on June 1, 2023, the Unified Patent Court (UPC) became operational. Toward the end of 2024, the UPC delivered its first decision on the doctrine of equivalents.

This decision is highly significant as it established the first precedent in this area, ruling that patent infringement may occur through equivalent elements even in the absence of literal infringement.

What Are the Unitary Patent and the Unified Patent Court (UPC)?

Despite the centralized application system in Europe, patent protection has remained highly fragmented. A patent granted by the European Patent Office (EPO) becomes effective only in the countries where it is validated individually, requiring separate procedures in each country.

The Unitary Patent system, which came into force in 2023, simplifies this process by making the EPO-granted patent valid as a single “unitary” right in participating EU countries. Importantly, the Unitary Patent is optional—applicants may still follow the traditional route and validate their patents individually in each country.

Launched alongside this system, the Unified Patent Court (UPC) serves as a centralized court competent to hear cases involving both Unitary Patents and traditional European patents. As a result, patent infringement or invalidity disputes are no longer handled separately in each national court but are addressed through a centralized structure.

What Is the Doctrine of Equivalents?

The doctrine of equivalents is a fundamental principle in patent law that aims to protect inventions not only in literal terms but also in essence. It prevents patented inventions from being circumvented by minor and insignificant changes, thereby ensuring comprehensive protection for the right holder.

The assessment of equivalence generally relies on three main questions:

Does the relevant product or process perform the same function as the claimed element?
Does it perform this function in the same way?
Does it achieve the same result?

In Turkish law, Article 89(5) of the Industrial Property Code (Law No. 6769) requires that these three questions be considered in equivalence assessments. In EPO practice, even if elements have different physical structures, they may be deemed equivalent if they fulfill the same basic idea and achieve similar technical results. Likewise, U.S. patent law applies the same function–way–result test under MPEP 2186, titled “Relationship to the Doctrine of Equivalents.”

Although these systems share a similar approach, the practical application of these criteria may vary between jurisdictions. Thus, decisions rendered by the UPC provide valuable guidance, particularly on how the doctrine of equivalents is applied within the European framework.

UPC Decision: Plant-e v. Bioo (22 November 2024)

This case was heard before the local division of the UPC in The Hague between Plant-e B.V. and Arkyne Technologies S.L. (Bioo).

Subject of the Dispute:

Plant-e’s patent (EP2137782) covers a system based on plant-microbial fuel cell (P-MFC) technology, which generates electricity via microorganisms present in the root zone of living plants. Bioo claimed that its devices did not contain living plants and operated solely based on soil, thus rejecting the infringement allegation.

Two-Step Approach to Determining the Scope of Protection:

In this case, the UPC evaluated the patent’s scope of protection in two stages:

Literal infringement analysis: Determining whether the patent was directly infringed based on the interpretation of claims.
Equivalence analysis: If no literal infringement is found, assessing whether the technical elements are equivalent.

Four-Step Approach to the Doctrine of Equivalents According to the Unified Patent Court

When assessing the doctrine of equivalents, the UPC followed a four-step approach that goes beyond literal interpretation to include technological equivalence and legal certainty.

Technical Equivalence:

In the first step, the court evaluated whether the allegedly infringing element essentially solved the same problem and fulfilled a similar technical function as the patented invention. The key question was:

Does the variation solve the same problem and perform the same function?

The court found that while Bioo’s products did not include direct contact between plant roots and the anode, they still achieved electricity generation through microbial oxidation. Thus, the court concluded that the system solved the same technical problem in the same way and with the same effect. The court emphasized that equivalence should be evaluated based on the core technical contribution.

Fair Protection for the Patentee:

This step considered whether the patentee was granted protection proportionate to the technical contribution of the invention.

Does the patentee receive fair protection that reflects the technical contribution, including equivalent variations?

Although the claims included the term “living plant,” the court stated that this referred to one implementation of the technical contribution. The core of the invention lay in sustainable energy production via microbial oxidation. Since Bioo’s product achieved this technical contribution, it was considered an equivalent, and protection was deemed fair.

Reasonable Legal Certainty for Third Parties:

This step evaluated whether the scope of the patent was reasonably foreseeable to third parties. Specifically, it examined whether a person skilled in the art could, by reading the claims and the description, understand whether the scope was confined to literal wording or extended to broader technical contributions.

Can a skilled person predict that the patent scope includes more than just literal elements, based on its technical contribution?

The court stated that a skilled person could grasp the core technical contribution of microbial fuel cells and recognize that it was not limited to plant-based implementations. Hence, even if not explicitly stated, it was foreseeable that the scope could extend based on the technical contribution. This assessment requires third parties to make predictions not just on the literal wording but also based on technical understanding.

Novelty and Inventive Step:

In the final step, the court examined whether the equivalent variation was novel and involved an inventive step compared to prior art.

Is the equivalent variation novel and non-obvious over the prior art?

The court concluded that Bioo’s variation was not merely an obvious application of known techniques but presented a new technical solution with an inventive step. This shows that equivalence analysis should also consider the level of technical innovation, not merely functional similarity.

Takeaways

The four-step equivalence test established by the UPC in Plant-e v. Bioo provides a multidimensional framework that goes beyond literal infringement to include equivalence-based infringement. This framework ensures that:

Patentees receive fair and comprehensive protection based on their technical contribution, not just literal claim wording;
Legal certainty and foreseeability for third parties are maintained;
Only genuinely innovative equivalents are protected, while trivial variations are excluded.

The approach adopted by the court aligns with the doctrinal framework previously endorsed by the Court of Appeal in The Hague in the Eli Lilly v. Fresenius Kabi decision (27 October 2020), known as the “Dutch Test.”

This ruling stands as the UPC’s first systematic case law on the doctrine of equivalents and reaffirms the importance of considering equivalent elements when defining the scope of protection in both claim drafting and infringement analysis.

In this respect, Plant-e v. Bioo is not merely the resolution of a technical dispute—it serves as a guiding precedent for the future of European patent law.

References:

Aykan Seper

Turkish Patent Attorney

Mechanical Engineer

FIRST DECISION OF THE UNIFIED PATENT COURT ON THE DOCTRINE OF EQUIVALENTS

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