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Equivalent ways to infringe a patent (Eli Lilly v. Actavis) (Brands & IP Newsnotes - issue 6))

12 October 2017

The Supreme Court has had to determine to what extent courts should depart from the literal wording of a patent claim and consider whether equivalent means to those literally specified in the claim would infringe a patent.

Actavis UK Limited and others v Eli Lilly and Company [2017] UKSC 48

Actavis intended to market a medicine containing pharmaceuticals which did not literally infringe the claims of Eli Lily’s patent. However, the compound differed only in a minor way to the compound claimed in the patent. Under the European Patent Convention, courts are required to interpret patent claims to include equivalents. The Supreme Court had to grapple with the issue of what constitutes an equivalent.

Assuming that there is no literal infringement, the Supreme Court formulated the following three questions to determine whether the variant was material (non-infringing) or immaterial (infringing):

  1. Notwithstanding that it is not within the literal 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, i.e. the inventive concept revealed by the patent?
  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 does so in substantially the same way as the invention?
  3. Would such a reader of the patent have concluded that the patentee nonetheless intended strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?

To establish infringement, the first two questions should be answered “yes” and the third “no”.

The Court held that the patent was infringed in this case. The decision will be welcomed by patentees as slightly broadening the scope of patent claims, but we wait to see how the decision in applied by the courts in practice.

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