As provided for in Article 69(1) EPC, “the extent of the protection conferred by a European patent […] shall be determined by the claims.”
The Protocol on the Interpretation of Article 69 CBE specifies in Article 2 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.”
On this basis, national case law has been developed to clarify the concept of equivalence and establish the rules to be satisfied in order to justify infringement by equivalence. For example, in France, infringement by equivalence will be recognized if the substitute means, although different in its form from the claimed means, fulfills the same function with a view to achieving the same result, the function being new (see, for example, French Supreme Court, no. 08‑14741 of September 15, 2009).
Article 69 EPC and the Protocol on the Interpretation of Article 69 CBE also apply to the Unified Patent Court (UPC). However, the Agreement on a Unified Patent Court (UPC Agreement) is silent on the concept of equivalent, so it is case law that will define the test to be applied to determine whether infringement by equivalence can be recognized or not.
The Local Division of The Hague was the first to recognize infringement by equivalence in a case between Plant-e and Arkyne (UPC_CFI_239/2023, November 22, 2024). As pointed out in this decision, infringement is analyzed in two times.
i. In a first time, “literal” infringement must be assessed on the basis of the features of the patent claims in light of the interpretation that has been made of those features.
ii. If there is no literal infringement, infringement by equivalence must be assessed in a second time (provided that it has been invoked by the parties).
In this decision, literal infringement was not recognized and infringement by equivalence was therefore assessed on the basis of a test comprising the following four questions:
- Technical equivalence: does the variation solve (essentially) the same problem that the patented invention solves and perform (essentially) the same function in this context?
- Fair protection for patentee: is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee?
[The question “is it obvious to the skilled person from the patent publication how to apply the equivalent element (at the time of infringement)?” is also mentioned in the decision but not in the headnotes.] - Reasonable legal certainty for third parties: does the skilled person understand from the patent that the scope of the invention is broader than what is claimed literally?
- Defence Gillette / Formstein: is the allegedly infringing product novel and inventive over the prior art?
According to the decision, this test is the result of a proposal by both parties in light of the national doctrine of various UPC Member States. However, it appears that this test mainly corresponds to the Dutch practice, which can be easily explained by the Dutch nationality of the patent holder Plant-e.
Following this first decision, Local Divisions of Brussels, Mannheim, and Paris also had to rule on a question of infringement by equivalence, all concluding that there was no infringement by equivalence in their respective cases (UPC_CFI_376/2023, January 17, 2025; UPC_CFI_471/2023, June 6, 2025; UPC_CFI_363/2024, August 1, 2025).
In these three decisions, it is emphasized that, in all the doctrines of the UPC Member States on equivalence, infringement by equivalence necessarily implies the existence of functional equivalence, i.e., the substitute means must perform essentially the same function to achieve essentially the same effect as the claimed and non-reproduced means.
Consequently, if the substitute means does not perform the same function as the claimed means, infringement by equivalence cannot be recognized.
Since the substitute means did not perform the same function as the claimed means in these three cases, it was not necessary to discuss equivalence further, and no test was therefore proposed for assessing infringement by equivalence, as the parties did not necessarily agree on the test to be applied.
In a recent order by the Local Division of The Hague (UPC_CFI_479/2025, September 11, 2025), infringement by equivalence was considered more likely than not. The same test as in the Plant-e v. Arkyne decision was used to assess infringement by equivalence, as the parties agreed to use this test. However, it is interesting to note that the judges took care to justify the relevance of each of the four questions asked in this test.
Thus, question 1) is justified by the fact that, regardless of the doctrine considered, the substitute means must always perform essentially the same function as the claimed means, to achieve essentially the same result. The same applies to question 4) concerning the novelty and inventive step of the substitute subject matter.
With regard to questions 2) and 3) concerning fair protection for the patentee and legal certainty for third parties, the judges pointed out that these principles are set out in Article 1 of the Protocol on the Interpretation of Article 69 CBE:
In summary, to date, first instance decisions on infringement by equivalence have been consistent.
- To conclude that there is no infringement by equivalence, it is sufficient to verify that the substitute means does not essentially fulfil the same function to achieve essentially the same effect as the claimed and non-reproduced means.
- To conclude that there is infringement by equivalence, the four questions in the above test must be answered in the affirmative.
A ruling from the Court of Appeals is now awaited to confirm or overturn the case law that has been developed in the area of infringement by equivalence.
Cited decisions:
[1] French Supreme Court, no. 08-14741, 15 September 2009
[2] UPC, Local Division The Hague, 22 November 2024, UPC_CFI_239/2023
[3] UPC, Local Division Brussels, 17 January 2025, UPC_CFI_376/2023
[4] UPC, Local Division Mannheim, 6 June 2025, UPC_CFI_471/2023
[5] UPC, Local Division Paris, 1 August 2025, UPC_CFI_363/2024
[6] UPC, Local Division The Hague, 11 September 2025, UPC_CFI_479/2025