Topic dossier
Infringement by equivalence in UPC case law
How the UPC's first-instance divisions and the Court of Appeal assess infringement by equivalent means (Art. 69 EPC and the Protocol on its interpretation, Art. 2): framework, same technical function, obviousness, equivalence with orientation to the claim, defences and burden of proof.
- decisions in the dossier
- 23
- of them Court of Appeal
- 1
- steps of the test
- 7
- As of
- 6 Oct 2026
The steps of the test
The dossier orders the decisions by the steps of the legal test. For each step: the question it is about and the number of decisions addressing it.
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1. Framework of the test
Which test does the UPC apply to infringement by equivalence, and how does it relate to literal infringement and national law?
19 decisions
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2. Same technical function / effect
Does the variant perform essentially the same technical function and achieve the same effect?
16 decisions
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3. Obviousness to the skilled person
Was the variant obvious to the skilled person, and at which point in time?
2 decisions
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4. Equivalence oriented to the claim
Would the skilled person regard the variant as an equivalent solution oriented to the claim, or does the claim limit protection to its wording?
7 decisions
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5. Prior art defence (Formstein / Gillette)
Can the defendant argue that the attacked embodiment was anticipated or obvious in view of the prior art?
4 decisions
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6. Prosecution history and disclaimers
Do amendments, disclaimers or statements in grant or opposition proceedings exclude infringement by equivalence?
no decision in the dossier yet
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7. Burden of presentation and proof
Who must present and prove the requirements of equivalence, and when must the argument be raised?
13 decisions
Selected passages
One decision per step – Court of Appeal first, then the most cited, then the newest – with a verbatim quote from the decision. The selection is not a legal assessment.
Step: Framework of the test
“Like the argument of a literal infringement, the equivalence argument, in the case at hand, concerns the extent of protection conferred by the patent at issue under Art. 69(1) European Patent Convention and the Protocol on the Interpretation of the Art. 69(1) EPC.“
Step: Same technical function / effect
“For the assessment of an infringement by equivalent means it is not sufficient to reduce the question of equivalence just to the effect, being to determine whether there is a contact with the ball by the first player. Decisively is how this effect is achieved.“
Step: Obviousness to the skilled person
“It is also obvious to the skilled person how to apply the equivalent element, i.e. by separating the plant with roots from the anode compartment, while ensuring that the leachate/organic material produced in the upper compartment reaches the lower anode compartment as feedstock for the micro-organisms around the anode.“
Step: Equivalence oriented to the claim
“het kenmerk dat de aanslag en het contactoppervlak zich aan de vestibulaire zijde van de tandboog bevinden aan conclusie 1 is toegevoegd om onderscheid te maken met de stand van de techniek, met name US waarbij de “bite pads”, die tussen de tandbogen zitten, het verder sluiten van de mond voorkomen.“
Step: Prior art defence (Formstein / Gillette)
“bedarf daher ebenso wenig einer Entscheidung wie das sich daran anschließende Problem der Behandlung des aus dem deutschen Recht bekannten Formstein-Einwandes (vgl. BGH, GRUR 1986, 803 – Formstein).“
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Quotes are verbatim from the decisions; the version published by the court is authoritative. Not legal advice. Coverage and numbers