It didn’t make the 10 o’clock news but on 12 July 2017, with some irony, the UK courts took a decisive step towards Europe in changing the test for finding patent infringement. The decision will be seen as a victory for patentees, however it provides uncertainty for third parties who sail close to the wind of their competitors’ IP. Previous freedom to operate opinions may need to be revised as a result.
Briefly, the previous test for finding infringement was to interpret a patent claim by asking what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. The question was then asked whether the allegedly infringing product or process fell within the scope of the claim as interpreted. If it did not then direct infringement could not have occurred.
As a signatory to the European Patent Convention (EPC), the UK is bound to comply with the “Protocol of Interpretation” of Article 69 EPC. This states that “For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims”.
UK courts had previously decided that their approach of asking what the patentee would have been using the language of the claims to mean provided enough leeway to account for equivalents that do not fall within a purely literal interpretation of the claims. The process of accounting for equivalents was merged with the process of claim interpretation. A broader interpretation of the claim language, beyond its normal meaning, could therefore be reached. This changed on 12 July 2017 following the judgment in Eli Lilly v Actavis UK .
From now on, when deciding upon patent infringement, the first stage will be to apply a normal interpretation of the claims through the eyes of the notional addressee. If the allegedly infringing product or process does not fall within the claims under that normal interpretation then, as a second stage, a series of questions may be asked in order to decide if the claims are nevertheless infringed. This methodology brings the UK closer to the approaches taken in the United States and Germany regarding “equivalents”.
In the case in suit, the application of these questions led to a surprising outcome. The granted claim unambiguously required the presence of a sodium-based salt. Actavis’ products did not include this salt and so did not fall within a normal or literal interpretation of this claim. However when the second stage of the new approach was applied, it was decided that the presence of this molecule was not crucial to the inventive concept and could be overlooked in the present case. Actavis were hence found to directly infringe the claim. This overturned the outcome from the High Court and the Court of Appeal, where the products did not directly infringe according to the old test for infringement.
The judgment brings the approach taken by the UK courts towards that taken by their European counterparts. Although not related in law, it is interesting that this decision should come at a time when the UK is in the midst of its Brexit negotiations and when one might otherwise expect the UK to go it alone.
The outcome will come as jarring to many third parties as the extent of protection provided by the claims has now become more loosely defined. The judges took the view however that this was simply a matter of striking the right balance between providing a fair level of protection for the patent proprietor and a reasonable degree of legal certainty for third parties, as is required by the EPC.
In most cases it is unlikely that this change of law will affect whether or not a product or process is found to infringe a patent claim as the requirements imposed for finding infringement are not easily met. However, in some closely called cases this change in practice may be enough to swing the outcome. Third parties who are relying on existing freedom to operate opinions in such cases should therefore consider having these opinions reviewed. Similarly, some patentees should feel emboldened by this decision and may wish to take action against their competitors where previously they did not feel able.
The decision may lead to an increase in the number of patent infringement cases that will be brought in the UK courts. As a decision from the Supreme Court, all of the lower UK courts are bound to follow this ruling. We will have to wait and see how the lower courts grapple with the effects of this decision.
If you would like to speak with us regarding how this decision may impact upon your business or your IP strategy, please get in touch.