The UK Supreme Court has overturned existing case law to, for the first time, formally recognise a “doctrine of equivalents”, resulting in a broader scope of patent protection under UK law. This new approach is more patentee-friendly and brings the UK into closer alignment with courts elsewhere in Europe and in the US.
Historically the English courts have held that the wording of the claim is decisive when determining whether a patent is infringed, resulting in a relatively narrow scope of protection. The Supreme Court held that this approach placed too much weight on the words of the claim and did not provide fair protection for patent holders.
Fair protection requires a broader scope of protection, extending beyond the wording of the patent claims to also cover products which are technically equivalent. In the case at hand, the Supreme Court held that Eli Lilly’s patent claims covering “pemetrexed disodium” would be infringed by Actavis’ products containing various alternative forms of pemetrexed, which did not fall within the wording of the claims, properly interpreted, but were nonetheless technically equivalent.
For a more detailed discussion of this decision and its impact, see our advisory.