Industrial Property Law

In addition to the general principles of interpretation, the courts very often resort to the doctrine of equivalents to interpret claims. This theory is set out in Article 2 of the Protocol on the Interpretation of Article 69 EPC, according to which the determination of the scope of protection conferred by the patent involves taking into account any element which is equivalent to an element specif …

Doctrine of equivalents

In addition to the general principles of interpretation, the courts very often resort to the doctrine of equivalents to interpret claims. This theory is set out in Article 2 of the Protocol on the Interpretation of Article 69 EPC, according to which the determination of the scope of protection conferred by the patent involves taking into account any element which is equivalent to an element specified in the claims . Thanks to the theory of equivalents, the scope of patent protection can extend beyond the strict wording of the claims to include minor differences. It allows infringement to be upheld when the means at issue differ only in detail, and the additions or improvements made to the innovative device of the patent at issue do not amend its structure . Trial courts have the final say on whether a patent claim is infringed by equivalence .

Two techniques are equivalent when, although different in form, they perform the same function with a view to achieving a result of the same nature, if not of the same degree . The doctrine of equivalence therefore requires three cumulative conditions to be met. The means equivalent to the technical means protected by the patent must have a different form, or consist of a substance other than the product invention, or a manner of acting other than the process invention. Secondly, the two technical means in question must fulfill the same function , which is defined as the action of producing, in the application given to it, a first technical effect . This may consist, for example, in ensuring the alternating movement of a carriage , forcing a fabric to follow a sinuous path inside a guide or cylinder  or ensuring the tightness of a stopper . The condition of identical functions presupposes that the reproduced means is protected by the allegedly infringing patent, and in particular that it is new at the time of filing . Finally, the means must produce the same technical effect  , even if the quality or degree of this result differs. Trial courts faced with a claim of infringement by equivalence cannot reject it without examining whether these three conditions have been met .

Art. 2, Protocol on the Interpretation of Article 69 EPC of 5 October 1973, as revised in 2000. 

Cass. com. 31 January 2012, LawLex202200002696JBJ; Cass. com. 8 December 2015, LawLex202200000631JBJ, which rules out infringement on the grounds that the addition made to the disputed product does not constitute a mere accessory, so that the product at issue is not a mere improvement on the patented design. 

Cass. com. 31 January 2012, LawLex202200002696JBJ, which ruled that two head-fasteners had a common effect, namely to hold the helmet on the cyclist's head, the disputed modification being a simple reformulation of this effect; Cass. com. 8 June 2017, LawLex201700001041JBJ, concerning the tight-fitting effect of a screw, distinct from that of the infringing screw. 

Cass. civ. 2e, 2 November 2011, LawLex202200001012JBJ.

Cass. com., 13 February 1990, LawLex202300005110JBJ.

Cass. com. 5 July 2017, LawLex202200002690JBJ; Cass. com. 27 June 2018, LawLex202300001401JBJ; Cass. com. 26 October 1993, LawLex202200002452JBJ; Cass. com. 10 March 1982, LawLex202200003921JBJ; Cass. com. 31 March 2004, LawLex202200002454JBJ; CA Paris 24 October 2007, LawLex202200002116JBJ.

CA Paris, 27 May 2011, LawLex202100004689JBJ; Cass. com, 20 October 1998, LawLex202300005111JBJ.

Cass. com. 6 February 2019, LawLex202300005112JBJ.

Cass. com. 16 January 1996, LawLex202200002453JBJ.

Cass. com. 26 October 1993, LawLex202200002452JBJ.

Cass. com. 15 September 2009, LawLex202200002476JBJ.

Cass. com. 16 April 2013, LawLex202200002111JBJ, concerning a combination of devices with particular shapes not a new function; Cass. com. 26 February 2008, LawLex202200002455JBJ, concerning a function which, on the day the allegedly infringing patent was filed, was referred to in an earlier Japanese patent; Cass. com, 18 June 1996, LawLex202200002475JBJ, concerning a function mentioned in a product leaflet prior to filing; Cass. com. 29 September 2015, LawLex202200001882JBJ; Cass. com. 20 November 2007, LawLex202200000974JBJ.

Industrial Property Law

300. Doctrine of equivalents

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300. Doctrine of equivalents

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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