The UK Court of Appeal recently applied the new(ish) ‘Actavis test’ for determining whether a patent has been infringed.

In the Actavis test the Court assesses whether the alleged infringement falls within the meaning of the claim wording. If it does not, the Court then asks whether the alleged infringement is an ‘equivalent’ which should nevertheless infringe the patent.

In this case the inventive features of the claim were found to be flexible joints which allowed a mobile ice rink to be folded. The alleged infringement had these flexible joints but lacked other claimed features which were deemed to be less technically important to the foldability. Although the alleged infringement lacked those claimed features, the features which it did posess were held to be equivalent. Infringement was therefore found. No infringement was found at first instance under the old law.

A secondary point of interest was that, as in L’Oréal, the prosecution history was held to be of no assistance in determining the scope of the claims.

This decision is confirmation that UK Courts have become more patentee friendly. It will be interesting to see how the ‘equivalents’ test is applied to features which themselves are found to give the core benefit of the invention.


Nick Bennett

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