How to deal with complex intellectual property issues in European technology mergers and acquisitions

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In the UK, the legal test for determining whether a patent has been infringed on the basis of the doctrine of equivalents was established by the Supreme Court in 2017 in Actavis UK v Eli Lilly. Although this case concerned pharmaceutical patents, the doctrine of equivalents is also relevant to patent infringement claims in other sectors, including the technology sector.

“Customers from all industries are increasingly interested in this doctrine, as it means that patent holders can seek to assert a broader inventive concept of their patent to capture alleged infringements,” said Mark Marfé by Pinsent Masons.

Two separate legal tests concerning counterfeiting by equivalence must be satisfied in Germany, while the situation is still different in France.

Jules Fabre de Pinsent Masons declared: “The French doctrine of equivalents can lead to a very wide field of protection, very favorable to patentees. However, this is not without risks for them. As there is no fork in France, the courts will examine both validity and infringement. Accordingly, those defending an infringement action may be able to invoke a so-called compression argument when the scope of protection is so broad that it covers variations of the prior art, which would make the patent obvious and invalid.

“It can also be difficult to enforce patent rights when relying on the doctrine of equivalents in preliminary proceedings. In France, a preliminary injunction will only be granted if the patent is considered valid and infringed on the basis of a summary analysis, which requires that there be no serious arguments on invalidity or non-infringement. “, did he declare.

A separate legal test regarding counterfeiting by equivalence also applies in Italy.

Miriam Cugusi and Lorenzo Stellini of GPBL said: “Under Italian case law, it seems that among the different existing criteria to verify the applicability of the doctrine of equivalents, the main and most accredited in Italian case law is the” triple test ”. ‘. According to these criteria, the doctrine of equivalents is held to be present when the substituted element fulfills substantially the same function, in the same way to obtain the same result.

Portuguese law firm SRS Advogados, Swedish firm Setterwalls and Danish firm Bech-Bruun have all told us that the doctrine of equivalents has also been reviewed on several occasions by courts in their jurisdiction.

Johnny Petersen of Bech-Bruun said: “In 2017, the Danish High Maritime and Commercial Court, for the first time, in the case of Eli Lilly v Fresenius Kabi, decided to grant a preliminary injunction with reference to the infringement of patent by equivalents.

Trademark protection

The UK’s exit from EU membership has complicated the way European tech companies protect their intellectual property, perhaps more particularly in the context of trademark and design rights.

EU trademarks and registered Community design rights applied automatically in the UK until Brexit. Although the companies were able to apply for the conversion of the UK scope of these rights to equivalent rights only in the UK until September 30, GPBL’s Miriam Cugusi and Lorenzo Stellini said Italian companies would examine the benefits and cost of the long-term maintenance of EU and UK rights.


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