JUB – Toward a Harmonized Approach to Assessing Counterfeiting by Equivalence?

In practice, an analysis of infringement by equivalence applies when the product or process at issue does not strictly correspond to the features set forth in the patent claims, such that no “literal” infringement can be established. This would be the case, for example, if a patent claims a device comprising a coil spring providing a return function, while a competitor uses a spring plate producing the same return effect.

While this principle is recognized under European law and in several national legal systems, its application continues to be shaped by differing judicial approaches. The entry into force of the Unified Patent Court (UPC) in 2023 thus raises the question of the gradual emergence of a harmonized European standard regarding infringement by equivalence.

The scope of protection conferred by a European patent is governed by Article 69 of the European Patent Convention (EPC) and by Article 2 of its Interpretative Protocol. This framework constitutes the legal basis for infringement by equivalence in Europe. On this basis, each Member State has gradually developed its own case law to define the concept of equivalence and identify the conditions under which infringement can be established.

Under French law, infringement by equivalence is generally recognized when a feature of the product or process alleged to infringe reproduces, in a different form, a claimed feature, while performing the same function to achieve a result of the same nature. Furthermore, the function must be novel.

Article 24 of the Agreement on a Unified Patent Court (UPCA) provides that the UPC shall apply, inter alia, the EPC as a source of substantive law. However, the Agreement does not contain an explicit definition of the concept of equivalence. It is therefore up to the case law of the UPC to clarify the applicable test for infringement by equivalence.

In a decision issued on November 22, 2024 (UPC_CFI_239/2023)—the first decision by the Unified Patent Court explicitly addressing the issue of infringement by equivalence—the Local Division in The Hague examined this issue using a test inspired by Dutch case law, a choice explained in particular by the patent holder’s Dutch nationality.

This test is based on the following four questions:

• Technical equivalence: Does the substitute solution (essentially) address the same technical problem and (substantially) fulfill the same function in this context?
• Fair protection for the patent holder: Is the extension of protection to equivalents proportionate to the patent holder’s technical contribution, and was the implementation of the substituted means obvious to a person skilled in the art based on the patent publication at the time of the alleged infringement?
• Legal certainty for third parties: Can a person skilled in the art understand, upon reading the patent, that the scope of protection extends beyond the literal wording of the claims?
• The Gillette/Formstein defense: Is the product or process alleged to infringe itself novel and inventive in light of the prior art? This requirement is intended to prevent protection by equivalence from extending the patent monopoly to solutions that are already known or obvious in light of the prior art.

Subsequent decisions handed down by the local divisions in Brussels, Mannheim, and Paris (UPC_CFI_376/2023, January 17, 2025; UPC_CFI_471/2023, June 6, 2025; UPC_CFI_363/2024, August 1, 2025) reveal a notable point of convergence among the various national systems: infringement by equivalence necessarily presupposes the existence of functional equivalence. In other words, the substituted means must substantially perform the same function and produce substantially the same technical effect as the claimed means. Failing that, any infringement by equivalence must be ruled out, regardless of the test applied. In these cases, the courts found that the substituted means performed functions different from those taught by the patents at issue. It was therefore unnecessary to examine the other criteria of equivalence, especially since the parties did not always agree on the applicable test.

In an order issued on September 11, 2025 (UPC_CFI_479/2025), in the context of interim measures, the Hague Local Division again applied this four-part test, finding that infringement by equivalence appeared “more likely than not.”

At this stage, the case law of the JUB thus appears to be gradually converging toward a common analytical framework. Two main lessons can be drawn:

• To rule out infringement by equivalence, it is generally sufficient to demonstrate that the equivalent means does not essentially perform the same function or produce the same effect as the claimed means;
• To identify counterfeiting by equivalence, the decisions handed down to date suggest that an approach structured around the four questions identified by the Hague Local Division may be appropriate; however, it is not yet clear whether this test definitively constitutes the standard adopted by the JUB.

While case law at the trial court level currently shows a certain degree of consistency, the upcoming ruling by the JUB Court of Appeal will be decisive. It could confirm this analytical framework or clarify its parameters, thereby contributing to the emergence of a genuine European standard for infringement by equivalence.