The Doctrine of Equivalents current status in UK Fordham IP - PowerPoint PPT Presentation

The Doctrine of Equivalents – current status in UK Fordham IP Conference April 26, 2019

Case list Kirin-Amgen v Hoechst Marion Roussel [2005] RPC 9 Actavis UK v Eli Lilly [2017] UKSC 48, [2017] RPC 21 Icescape v Ice-World [2018] EWCA Civ 2219 Regen Lab v Estar Medical [2019] EWHC 63 (Pat) (HHJ Hacon) Technetix v Teleste [2019] EWHC 126 (IPEC) (HHJ Hacon) Marflow Engineering v Cassellie [2019] EWHC 410 (IPEC) (HHJ Hacon) Emson v Hozelock [2019] EWHC 991 (Pat)) (Nugee J) WilmerHale 2

The Actavis test for equivalents 1) notwithstanding that it was not within the normal, meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention; 2) would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it did so in substantially the same way as the invention; 3) would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention. WilmerHale 3

Doctrine of Equivalents Thank you! WilmerHale 4