Divergence in scope of UK patents for purposes of Infringement and Validity?

We reported in July on Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48, the most significant UK court decision on patents for decades. This introduced equivalents firmly into UK law for the determination of patent infringement. That decision left unclear whether equivalents should also be considered when assessing the validity of patents; is the new test for determining the scope of a patent claim for use in assessing both infringement and validity or is it only a test for assessing infringement?

Based on another recent decision, Mylan v Yeda and Teva [2017] EWHC 2629 (Pat), and opinions given by commentators (for example at the recent debate “K = Na. Is the genie out of the bottle?“ held by UCL Institute of Brand and Innovation Law on 1 November), it seems it is the latter. Thus for now, at least, in the UK we have a situation where a claim will be considered to be broader for the purposes of assessing infringement than it is for assessing validity. This could potentially lead to absurd results, such as a patent covering something that was in the public domain before the patent was filed, and there is no existing UK law to cope with and deal with such issues. In due course UK case law will evolve to address these issues, but exactly how is more difficult to predict. In the meantime there is scope for considerable uncertainty.

A significant number of other countries (e.g. the USA, Germany, the Netherlands) have established law on the subject of equivalents and how to deal with some of these potentially absurd results; however the approaches are all different. One common theme seems to be that the availability and effects of equivalents are being diminished in those countries. It has been suggested by some that equivalents, i.e. the Actavis decision, may rarely have a practical effect in the UK. If that proves to be true it would be rather unfortunate given that the decision will introduce considerable additional complexity and uncertainty, and hence possibly extra costs for businesses, into the assessment of patent disputes in the UK.

Authored by Tom Faulkner