The Doctrine of Equivalents in France

Il y a un an, Sandrine Bouvier-Ravon et François Jonquères, Avocats associés chez Plasseraud IP Avocats, ont corédigé le chapitre « The Doctrine of Equivalents in France », intégré à l’article « The Doctrine of Equivalents and its First Appearance Before the UPC » de Christian Holtz, Avocat allemand au sein du cabinet BONABRY, publié dans le dernier numéro de la revue EPLP.

Pour accéder à la revue en ligne : The Doctrine of Equivalents and its First Appearance Before the UPC (réservé aux abonnés)

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The Doctrine of Equivalents in France

In France, the doctrine of equivalents is not set by law, but was first defined by authors’ opinion, and is now frequently applied by case law.

1. Standards for determining infringement by equivalence

a) A clear and ancient standard

According to French practice, judges consider infringement by equivalence only when not all the essential features of the opposed claims are literally reproduced. Under French case law,²⁴ infringement by equivalence occurs when

• a means is reproduced in a different form,
• while fulfilling the same function (which must be understood as the production of the same primary technical effect produced by the implementation of this means, to achieve the industrial result),
• for a similar result or of the same nature,
• and the said function must not be known from the prior art.

The result is traditionally defined as “the succession of technical, economic or aesthetic advantages, which derive from the primary technical effect, produced directly and immediately by the implementation of the means”.²⁵

As in most of the other jurisdictions, the function is key to applying the doctrine of equivalents correctly:

• when the claims cover in broad terms the means implementing said function, infringement by equivalence may be considered;
• when the claims solely cover very specific means used for obtaining said function, infringement by equivalence should not apply since the protection is limited to said very specific means.

French case law has frequently applied this reasoning, and most of the time, the notion of similar function (or result), as well as the known or unknown nature of the identical function, has been discussed before the judges.

In other words, French judges sometimes consider whether the essential means is reproduced and rule out infringement by equivalence if it is not. To do so, they examine whether this means existed or not in prior art.²⁶

It should be noted that in French law, the approach to infringement by equivalence is objective, so that the judges do not have to subjectively determine whether the replacement of the means was obvious to the skilled person.²⁷

b) A sign of an evolving standard?

French case law may evolve in the next years; indeed, in the saga of the Pemetrexed case, the First Instance Court of Paris rendered, on 20 October 2023, an interesting judgment, for the first reason that the judges wrote, concerning infringement by equivalence, that:

“The interest in a convergent interpretation of European and national texts with the same purpose (Cass. Com., 30 August 2023, no 20-15.480) calls for a convergent approach with the practice of courts in other states party to the Convention.”
The Court recalled the content of English and German law regarding infringement by equivalence, and wrote:

“In English law, equivalence is accepted when (i) the variant achieves substantially the same result in a way that is substantially identical to the invention (i.e. the inventive concept disclosed by the patent), (ii) it would be obvious to a person skilled in the art, reading the patent at the priority date, knowing that the variant achieves the same result, that it does so in the same way, and (iii) that the person skilled in the art would not have concluded that the patentee intended strict adherence to the literal meaning of the claim to be an essential element of the invention (UK Supreme Court, July 12, 2017, Actavis and others v. [D] [R], paragraph 66, Exhibit [R] No. 12).

This reasoning differs from that of the French courts in that it is more flexible in its analysis of the way in which the result is achieved (it does not limit it to a function defined as ‘the first technical effect’ and does not explicitly impose a novelty requirement), but does take into account the understanding of the person skilled in the art at the priority date as to the equivalence of the variant and the intention of the applicant’s intention.

Similarly, German law (cited in the same British decision) takes into account the understanding of the person skilled in the art” (§ 102).

In summary, the Paris Judiciary Court decided that the use of a drug containing a derivative of pemetrexed (pemetrexed diarginine) combined with vitamin B12 constitutes an infringement by equivalence of the use of a drug containing pemetrexed disodium combined with vitamin B12.

To reach this conclusion the Court first noted that a combination of means can be protected by equivalence if the combination itself has a new function. Here, the Court decided that this combination undeniably has a function, enabling the technical result of the invention, and this novel function is distinct from the sum of the functions of pemetrexed disodium and B12 considered separately. For the Court, it has exactly the same therapeutic effect as pemetrexed disodium, and is used in combination with vitamin B12 acts in the same way in the body, to achieve the same result, i.e. reduced toxicity but maintained efficacy compared with the use of pemetrexed diarginine alone. Such identity of function is, moreover, substantial with its authorization as a generic drug.

The Court’s conclusion is that the “the scope thus given to the patent does not exceed what is new and inventive in the invention. The examination procedure does not and is therefore irrelevant”.

It would be hasty to conclude that this wording (with a reference to inventive step) is a sign of a real change in French case law of the Paris Judiciary Court, to align more closely with the jurisprudence of other member states regarding infringement by equivalence, but it could signal a potential future change.
It can be observed, however that the Paris Court did not use the English and German criteria set out above.

c) What could be the influence of the UPC case law?

At most, we can now say that UPC judges (The Hague Local Division) seem to have a much narrower conception of infringement under the doctrine of equivalents since the UPC stated that the test applied to the assessment of infringement by equivalence is based on the case law in various national jurisdictions, and that a variation is equivalent to an element specified in a claim if the following four questions are answered in the affirmative:

1. Technical equivalence: does the variation solve (essentially) the same problem that the patented invention solves and perform (essentially) the same function in this context?
2. Fair protection for patentee: Is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee?
3. 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?
4. Is the allegedly infringing product novel and inventive over the prior art? This UPC test with the four questions is clearly not, at this stage, the test currently applicable to French case law but we may face some adaptations shortly to stick to the UPC approach for consistency and legal certainty for third parties.

This UPC test with the four questions is clearly not, at this stage, the test currently applicable to French case law but we may face some adaptations shortly to stick to the UPC approach for consistency and legal certainty for third parties.

 

2. Safeguards and/or defences to limit the scope of equivalence

a) Procedural aspects

Preliminary injunctions are, in general, not granted by the Paris Judiciary Court by reference to infringement by equivalence since the discussion related to the function is not straightforward and should be decided on the merits of the case. However, it should first be pointed out that French case law is (again) evolving, with a recent decision by the Paris Court of Appeal in which a PI was granted by reference to infringement by equivalence.²⁸

Another recent PI expressly ruled that “it is irrelevant whether the alleged infringement refers to a literal reproduction of the claims or to a reproduction by an equivalent of the same claims. All that matters is that the infringement of the patentee’s rights be shown to be likely, even if this is by means of a reproduction of
the claims of the patent invoked by equivalence.”²⁹

It means that defences to limit the scope of equivalence have to be seriously balanced by a potential infringer.

Then, even if France does not yet implement protective letters, a way to anticipate an infringement by equivalence action could be to start a declaratory judgement of non-infringement (DJ) through a letter sent to the patent owner or its licensee (when possible) in which the claimant explains why the function covered by the patent is not novel or why the different means implemented by the claimant have a different function.

It could be a way to prevent further preliminary injunction requests, assuming said written demonstration is well-grounded.

b) Other aspects

First, even if the Paris courts are somehow reluctant to apply the prosecution history estoppel, it has to be taken into consideration because the patentee may have acknowledged in the course of the prosecution before the EPO (or in foreign proceedings) that the function was already known in the art or that its patent solely covers very specific means and not means generally defined for implementing a novel function.

When the risk of infringement by equivalence is identified by the potential infringer, it is then strongly recommended, assuming that an opposition is still possible (period of nine months following the grant of a European patent), to challenge the validity of the patent at stake before the EPO.

Patent attorneys, in charge of said opposition, and patent litigators, selected for potential subsequent litigation, may work closely together at this early stage to further anticipate the infringement by equivalence’s risk. In addition, the prosecution may also be a good starting point to define a design around, when the option exists, by reference to the interpretation and the scope given by the patentee before the EPO.

In such a case, legal certainty for third parties should be considered by the Paris courts, notably when said third party was the opponent before the EPO (or in foreign proceedings). Second, proportionality must be balanced between the fair protection of the patentee and the reasonable legal certainty for third parties. Even if the Paris courts do not consider systematically said proportionality, one may anticipate that the UPC test may impact the reasoning of the French judges in the coming years, with the consequences to fill in the gap and move to a more common approach.

3. Closing remarks

In conclusion, the doctrine of equivalents is well-known and its use is very well-established before the Paris courts and has proven to be a very effective legal tool. We anticipate that new positive considerations such as fair protection will likely be introduced at some point before the Paris courts with the objective to move to a more global approach to infringement by equivalence, even if the French judges will probably stick to their well-known, tried and tested standard.

 

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²⁴ E.g. FR-Supreme Court (“Cour de Cassation“), 6 February 2019 – n° 17-21.585; 28 June 2023 – n° 22-10.124.

²⁵ P. Mathely, “Le nouveau droit des brevets d’invention“, Librairie du Journal des notaires et des avocats,1991, page 60.

²⁶ E.g. FR-Supreme Court (“Cour de Cassation“), 6 April 6 2012 – n° 10-21.084.

²⁷ E.g. FR-Supreme Court (“Cour de Cassation“), 16 April 2013 – n° 11-24.679.

²⁸ FR-Paris Court of Appeal, 9 November 2021 – 185/2021 – Zentiva v Eli Lilly.

²⁹ FR-TJ Paris, 28 March 2024 – RG24/51632 – Bayer v Zentiva.