In the second decision on the doctrine of equivalence before the Local Division The Hague (Washtower v. Defendants, Order delivered on 11. September 2025, UPC_CFI_479/2025) the chamber reiterated the standard it had developed – or rather transplanted – and applied in Plant-e v. Bioo (UPC_CFI_239/2023).
By taking its stance in line with case law in the Netherlands, the judges have planted their flag, leaving a clear line in the sand opposing those that still march to the German tune of equivalence or even those demanding a new standard for the UPC be developed. Inevitably, a showdown at the Court of Appeal is brewing. Until a decision is rendered by the Court of Appeal, uncertainty remains regarding which standard for equivalence will prevail.
So what happened?
In its decision of 22 November 2024, UPC_CFI_239/2023 (Plant-e v Bioo), the Local Chamber in The Hague was the first panel of the Unified Patent Court to implement a standard for reviewing equivalent patent infringement.
According to this standard, a four-step test must be carried out (paragraph 86 et seq., in particular paragraph 88, of the cited decision), which includes the following steps:
- Technical equivalence: Does the variant (essentially) solve the same problem as the patented invention and does it (essentially) perform the same function in this context?
- Is the extension of the protection of the claim to the equivalent proportionate in terms of providing adequate protection for the patent holder: considering its contribution to the art, and is it apparent to a person skilled in the art from the patent publication how the equivalent element is to be applied (at the time of the infringement)?
- Reasonable legal certainty for third parties: Does the skilled person understand from the patent that the invention goes beyond what is claimed in the wording?
- Is the allegedly infringing product new and inventive in relation to the prior art? (i.e. no successful Gillette/Formstein objection)
This is in line with Dutch case law. For direct comparison: according to established German case law, the inclusion of an embodiment that deviates from the literal meaning of the patent claim regarding the scope of protection requires three things, according to the principles known from the BGH’s Schneidmesser decision (judgment of 12 March 2002, X ZR 168/00 – Schneidmesser I):
- The problem underlying the invention must be solved by means that are modified but objectively equivalent.
- Their technical knowledge must enable the person skilled in the arts to find the modified means as equivalent.
- The considerations that the person skilled in the arts must make in this regard must be oriented towards the meaning of the technical teaching protected in the patent claims in such a way that the person skilled in the arts considers the different design with its modified means to be an equivalent solution to that covered by the patent.
This results in a three-step rather than a four-step test of the contested embodiment to determine equivalence. In short, the main difference to the Dutch approach is the absence of the criterion of adequate or fair protection for the patent holder, which also includes the aspect of ‘obviousness’ as a second sub-criterion. According to the German (and possibly other) approaches, the only thing that matters is how the contested embodiment relates to the prior art – not the extent to which the patent holder is worthy of protection in this regard.
Now, before the Court of Appeals could rightly raise any doubts as to whether the Dutch standard is the correct one to be applied, both parties in Washtower v. Defendants unanimously referred to the standard applied in the Plant-e v. Bioo decision. The Local Division The Hague consequently doubled down in its preliminary injunctive order delivered on 11. September 2025, stating on pg. 23 f. that
- a harmonized approach to equivalence is desirable,
- the bottom line is that a finding of equivalent patent infringement is excluded where there is no technical-functional equivalence,
- the same applies to the assumption that protection cannot extend to what is not new or inventive over the prior art,
- legal certainty for third parties and a fair protection for the patentee are mentioned in Art. 1 of the Protocol on the interpretation of Art. 69 EPC and usually return in the doctrines of equivalence in some way or form as developed in the case law of the UPC Contracting Member States.
In light of the above and in the absence of a decision by the Court of Appeal (and because the parties applied the test unanimously), the Local Division the Court saw no reason to deviate from the Dutch test it applied in Plant-e v. Bioo.
Conversely, in June of 2025 the Local Division Mannheim demanded in its decision in DISH v. AYLO (Decision from the 6 June 2025, UPC_CFI_471/2023) that the UPC should develop its own test for equivalency. It slammed the Local Division The Hague’s approach in Plant-e v. Bioo (and subsequently Washtower v. Defendants), where it applied Dutch standards without explaining its reasoning (see paragraph 88, of the cited decision).
The LD Mannheim argued that for actions for which the national material law of Contracting Member States must be applied, the equivalence test of that Contracting Member State must consequently also be applied. For actions for which the material law of the UPCA is to be applied, the UPC should establish its own standard for determining infringement by equivalents, if need be, by recalling the legal traditions of the member states – as it has already established its own standards for direct infringement in line with the UPCA. Without such a uniform approach, the idea of the UPC as a one-stop-shop to combat economically harmful territorial fragmentation of enforcement would be incomplete. This goes for infringement according to the wording as well as infringement by equivalents (see DISH v. AYLO, LD Mannheim, Decision from the 6 June 2025, UPC_CFI_471/2023, mn. 164 ff.)
This approach was now apparently rejected by the LD The Hague in Washtower v. Defendants, though The Hague agrees with the sentiment of harmonization in principle, while other Local Divisions, namely Brussels (Decision from 17 January 2025, UPC_CFI_376/2023, in Dutch) and Mannheim struggle to find and develop a UPC-specific approach to equivalence.
Until a decision is rendered by the CoA and either confirms the Dutch approach or develops its own standard, uncertainty will remain.
