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In many jurisdictions, the scope of protection afforded by a patent is defined by the claims of the patent as read either literally or under doctrine of equivalents.  Infringement based on the doctrine of equivalents is generally not based on any statutory law but rather has been established via case law (e.g. Court decisions).  The purpose of the doctrine of equivalents is to promote fair patent coverage so that trivial departures (e.g., variants) from the claim language cannot be used to avoid infringement. 

This is the second post in our series examining the law governing the doctrine of equivalents in several European countries.  Our first post examined the law governing the doctrine of equivalents in Spain and can be found here:  Doctrine of Equivalents – Spain.

Doctrine of Equivalents in the Netherlands


Although the Netherlands is small country with a population of around 17 million, it is a popular venue for patent litigation.  In particular, the Dutch market is important for many multinationals as an entry gate to Europe through which products are often distributed to other countries.  Under the appropriate circumstances, obtaining an injunction in the Netherlands can effectively block distribution of infringing products in Europe.

The Netherlands is also a good venue for patent litigation because it has a specialized patent court in The Hague, which has exclusive jurisdiction to decide patent infringement and validity actions.  Additionally, Dutch judges tend to be highly experienced, with the majority having started their careers in private practice as intellectual property litigators / attorneys.  Several have technical backgrounds or were experienced patent litigators or attorneys before joining the bench.

Claim Construction

The scope of protection of a patent in the Netherlands is determined in accordance with Article 69 of the European Patent Convention (EPC) and the Interpretation Protocol.  Specifically, Article 69(1) of the EPC states that “[T]he extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.” Thus, the scope of the claims is assessed by determining how a person killed in the art, using his/her general knowledge, would interpret the claims as of the priority/filing date of the application. 

Despite the wording of Article 69(1), Dutch courts have been reluctant to move away from the standard articulated by the Supreme Court in Philips v. Tasseron (1930/1217 (20 June 1930)) which held that the scope of protection of a patent must be based on the “essence of the invention”.  This standard changed slightly in a decision by the Supreme Court in Ciba-Geigy v. Ole Optics NJ (1995/391 (13 January 1995)), which stated that the following four factors must be assessed when assessing the scope of protection of a patent:

  1. When interpreting the terms in the claims, the court must determine the essence of the invention, namely, it must consider the “inventive concept” behind the wording of the claims;
  2. The interpretation of the claims must be adjusted to give a reasonable degree of certainty to third parties (but in certain instances, such interpretation may justify a restricted, literal interpretation of the wording of the claims);
  3. A skilled person may, with restraint, use the prosecution history of the patent at issue for the purpose of interpreting the claims; and
  4. All other circumstances of the case must be taken into account, such as, for example: (a) the possible breakthrough nature of the invention (thus justifying a broader interpretation of the scope of the claims); and (b) the poor drafting of the patent (such as when considering factors 2 and 3), which shall be construed to the disadvantage of the patentee.

Furthermore, in 2014, the Supreme Court clarified that the “essence of the invention” is a “viewpoint” rather than the “starting point” by which the scope of the claims is determined (See, Medinol v. Abbott, 13/00522 (4 April 2014)).  Essentially, what this means is that Dutch courts are able to take the essence of the invention into consideration; however, it is not the decisive factor when it comes to claim construction and determining the scope of protection.

With respect to the prosecution history, according to Dutch case law, consideration of the prosecution history is permitted when such history contains information that is unfavorable to the patentee.  The prosecution history is particularly relevant if it contains information demonstrating that the patentee argued a narrow interpretation of its claims in order to obtain allowance, and/or if the patentee limited its claims during prosecution in view of patentability objections (e.g., novelty and/or inventive step).  However, if the prosecution history contains information that can be used to support a broader interpretation of the scope of the claims then that justified by reading the claims in view of the description and drawings, courts will generally exercise restraint when using such the prosecution history.

Finally, Dutch courts apply the rule that what is “disclosed but not claimed is disclaimed”, which in practice means that if an application discloses a particular product or feature as a possible variant, it should also be claimed.

Doctrine of Equivalents

In the Netherlands, the doctrine of equivalents has been applied in two ways.

  1. Using the function-way-result test.  This test involves determining whether the non-literal variant fulfils the same function as the patented element, by using similar means, leading to a similar result.
  2. Using the insubstantial differences test.  This test, often used in connection with chemical and biotech inventions, involves determining whether the alleged infringing product or process is substantially different or material from what is patented. 

When determining whether protection should be granted based on the doctrine of equivalents, a distinction must be made between “foreseeable” and “unforeseeable” equivalents.  Specifically, Article 2 of the Interpretation Protocol for Article 69 states that “[F]or the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims.”  Thus, because Article 2 of the Interpretation Protocol specifies that when determining the extent of protection of an European patent that consideration must be given to equivalents, Dutch courts must first determine whether a person skilled in the art would find that the claims, in view of the description and drawings, should be construed in such a way that any equivalents that were foreseeable on the filing (priority) date, are considered to fall within the scope of protection.  The answer to this question is determined based on what a person skilled in the art, using his/her general knowledge, knew on the filing (priority) date of the application as well as what the patent contributed to the state of the art.  Other relevant factors also taken into consideration include the contents of the description, the essence of the invention, the state of the art, the purpose of the patented product or method, the advantages of the invention, knowledge about the existing product or method, the relation among existing products/methods and the degree to which existing products/methods may also lead to the intended result. 

What about protection for equivalents that were not foreseeable at the filing (priority) date, such as new variants which did not exist at the timing of filing?  Such new variants can only be protected under the doctrine of equivalents if such new elements were not obvious to a person skilled in the art as of the priority/filing date of the application.  Additionally, when determining whether an unforeseeable equivalent also constitutes an equivalent element, a skilled person’s knowledge on the date of the alleged infringement may also be taken into consideration.

Examples of some cases in the life science area involving the doctrine of equivalents are:   Bayer/Sandoz, 5 NJ 2016/496 (February 2016) involving two patents for the method of preparing drospirenone and Eli Lilly/Fresenius involving the use of pemetrexed disodium in combination with vitamin B12 for inhibiting tumor growth

This post was written by Lisa Mueller and Judith Krens of Taylor Wessing.

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