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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 third 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 our second post examined the law in the Netherlands.  These posts can be viewed here:  Doctrine of Equivalents – Spain and Doctrine of Equivalents – the Netherlands.

Doctrine of Equivalents in Germany


Almost two-thirds of patent infringement cases brought in Europe are filed in Germany. In fact, Germany handles about 1,200 patent infringement year, the most of any European country, putting it third in the world (behind the U.S. and China) in terms of the number of patent cases handled per year (See,

Germany has a bifurcated patent litigation system wherein patent infringement and invalidity (i.e., revocation) actions are tried in different courts.  Twelve District Courts (Landgerichte) have exclusive jurisdiction over patent infringement actions whereas the German Federal Patent Court has exclusive jurisdiction over invalidity actions.  A large number of the patent litigation cases filed in Germany are filed in the court in Düsseldorf.

German procedural law does not provide for jury trial.  Cases are decided by judges, who tend to be very sophisticated.  Also, unlike most jurisdictions, injunctions are generally awarded as a matter of right in Germany.  Finally, the losing party is required to cover the winning party’s costs and fees (up to a statutory defined limit).

Claim Construction

According to Article 69 European Patent Convention (EPC) the extent (“the scope”) of the protection conferred by a European patent or application is determined by the claims.  Nonetheless, the description (i.e., specification) and drawings are also considered when interpreting the claims.  Specifically, the claims are construed as a notional (i.e., ordinary) person skilled in the art would understand them. The applicable standard is the technical meaning associated with the recited features, bearing in mind the problem and solution achieved by the invention. Furthermore, if a patent provides or requires a specific definition for a claim term, such definition will control over the standard or traditional definition. In fact, the Bundesgerichtshof (German Federal Court of Justice, FCJ (or “BGH” in German)), has made it clear that patentees are entitled to act as their own “lexicographer” (FCJ “Spannschraube”, X ZR 85/96, GRUR 1999, 909). As a result, this can affect the breadth of the technical interpretation of a claim.

Statements made by the patentee during examination (i.e., prosecution) are generally not relevant to claim construction. The content of the description of the patent itself remains the essential guide for determining the meaning of the claims. Although statements made by the patentee (or, by the examiner) during prosecution can have some relevance as an indication of what a skilled person would have considered encompassed by the scope of the technical teaching (FCJ X ZR 29/15 “Pemetrexed”), there is essentially no doctrine of file or prosecution history estoppel in Germany.

Patent Infringement

The protocol on the interpretation of Article 69 EPC, which is an integral part of the EPC according to Article 164(1) EPC states:

Article 1 – General principles

Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes, which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.

Article 2 – Equivalents

For 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.

The protocol on the interpretation of Article 69 EPC is applicable to granted European patents validated in Germany. However, according Article 64(3) EPC, the question of infringement of a European patent is dealt with under national, e.g. German, law. The same is true for other EPC member states.

Similar to Article 69 EPC, section 14 of the German Patent Act (GPA) stipulates that:

The extent of the protection conferred by the patent and the patent application shall be determined by the patent claims. Nevertheless, the description and the drawings shall be used to interpret the patent claims.

Section 9 of the GPA defines what acts are not to be performed by third parties, i.e., what acts can potentially constitute infringement:

The patent shall have the effect that the proprietor of the patent alone shall be entitled to use the patented invention within the scope of the law in force. In the absence of the consent of the proprietor of the patent, any third party shall be prohibited from

1. producing, offering, putting on the market or using a product which is the subject-matter of the patent, or from either importing or possessing such a product for the purposes referred to;

2. using a process which is the subject-matter of the patent or, if the third party knows or if it is obvious from the circumstances that use of the process is prohibited in the absence of the consent of the proprietor of the patent, from offering the process for use within the territorial scope of this Act;

3. offering, placing on the market or using a product which is produced directly by a process which is the subject-matter of the patent, or from either importing or possessing such a product for the purposes referred to.

There are two major types of patent infringement in Germany: 1) literal infringement; and 2) infringement under the doctrine of equivalents. In order to assess whether infringement has occurred it is first necessary to interpret the terms used in the claims as discussed previously herein.  Once the meaning of the claims has been construed, a determination is made whether the claims have been literally infringed, before moving on to determine whether the claims have been infringed by equivalence.  Of course, an assessment of infringement under the doctrine of equivalents is only made when literal infringement has not been found.

Literal infringement

In Germany, literal infringement (“wortsinngemäße Verletzung”) requires that each and every feature of a claim also be present in the embodiment being analyzed. Specifically, one must analyze whether an embodiment realizes all of the features recited in a claim in light of its technical meaning.  As apparent from the use of the term “literal” infringement, mere philological congruence of the embodiment with the features of a claim is not the appropriate standard but rather the technical meaning associated with the recited features (as discussed above in connection with claim construction).

Infringement under the Doctrine of Equivalents

Embodiments that do not make literal use of the teaching of a patent may nevertheless fall within the scope of protection based on equivalence. In Germany, three requirements must be examined to determine whether a “deviating embodiment” infringes a patent under the doctrine of equivalents:

1) Same effect (“Gleichwirkung”);

2) Obviousness (“Naheliegen”); and

3) Whether a skilled person interpreting the claim would recognize the deviating means as an equally valid way of achieving the technical effect (“Gleichwertigkeit”).

Equivalent infringement is only possible in Germany if a deviating embodiment cumulatively satisfies each of the above three requirements. These three requirements have their basis in German case law as the three “Schneidmesser” questions that were developed in five FCJ decisions in 2002 (see, FCJ X ZR 43/01 “Kunststoffrohrteil”; FCJ X ZR 168/00 “Schneidmesser I”; FCJ X ZR 135/01 “Schneidmesser II”; FCJ X ZR 12/00 “Custodiol I”; FCJ X ZR 73/01 “Custodiol II”). More specifically, these three requirements may be phrased as three questions:

Question 1: Has the problem underlying the invention been solved with a deviating means that objectively has the same effect as the claim according to its literal meaning?

Question 2: Would it have been possible for the skilled person as of the priority date of the claimed invention to arrive at the deviating means without having to apply any inventive activity?

Question 3: Are the considerations to be made by the skilled person in order to arrive at the deviating means still orientated to the patent claim, so that the deviating means can be recognized as an equally valid way of achieving the technical effect?

Only if the answer to all three of these questions is “yes” is there a likelihood that a German court will find equivalent infringement.

Same effect (“Gleichwirkung”)

Question 1In order for this first requirement to be satisfied, the allegedly infringing embodiment comprising the modified means (or “deviating means”) must objectively be able to achieve the same effect as the technical teaching of the patent.

In order to answer the question of whether the embodiment comprising the deviating means achieves the same effect, one cannot exclusively compare the deviating means to the replaced feature.  Instead, one must consider the entire deviating embodiment as a whole. Thus, the important consideration as far as the corresponding effect is concerned is not what effect(s) the feature in question is supposed to achieve when examined in isolation, but rather, what effect(s) the feature is supposed to achieve within the overall context of the invention.  Therefore, it is essential that (1) despite the modification or deviation from the literal meaning of the claim that the overall effect sought by the teaching of the patent still be achieved; and (2) the advantages of the invention still be achieved despite the replacement of the literal means for obtaining those advantages.

Obviousness (“Naheliegen”)

Question 2In order for the second requirement to be fulfilled, it must be shown that it would have been possible for the skilled person to have arrived at the “deviating means” as of the priority date of the application without any inventive considerations based on his/her expert knowledge. Under this requirement, it is necessary to distinguish whether the deviating means was obvious to the skilled person or whether its discovery itself involved an inventive step.  It is essential when assessing obviousness under this requirement that reference be made to a skilled person as of the priority date (the level of expert knowledge at the priority date of the application must be used as a basis for making this assessment).  Any inadmissible “ex post” assessment must be avoided. Not only is the state of the art recited in the patent itself relevant for the assessment of obviousness, but also all other prior art known as of the priority date (i.e., the entire state of the art). This second requirement, and any infringement under the doctrine of equivalents, cannot be satisfied if inventive step must be applied when transitioning from the literal feature recited in the claim to the deviating means in the deviating embodiment.

Skilled person interpreting the claim would recognize the deviating means as an equally valid way of achieving the technical effect (“Gleichwertigkeit”, “Anspruchsorientierung“)

Question 3 – In order for the third requirement to be satisfied, the skilled person must consider the deviating means of the deviating embodiment as an equally valid way of achieving the technical effect of the invention.  This requirement is assessed based on the overall teaching of the patent.  In other words, a deviating means is considered to provide an equally valid way of achieving the technical effect if a skilled person, after reading the entire patent, would understand the deviating embodiment to have equivalent utility (meaning is “as good”) in providing the solution(s) suggested in the patent.  Again, this determination cannot be made by considering the deviating embodiment in isolation, but rather, in its entirety. 

The deviating means does not provide an equally valid way to achieve the technical effect:

  • if the “deviating means” of a deviating embodiment is a technical means that the invention expressly states that it wishes to avoid; or
  • in the event of a disclaimer.

The patentee is deemed to have “disclaimed” a specific embodiment when that embodiment is disclosed as one of several options or alternatives in the description, but not recited in the claims. In such cases, the FCJ (see, FCJ X ZR 16/01 “Okklusionsvorrichtung”, FCJ X ZR 69/10 “Diglycidverbindung”) has held that the patentee intentionally made a “selection decision” specifically excluding everything which did not make its way from the description into the claims. Hence, the patentee was deemed to have disclaimed those specific embodiments.

The FCJ relied on the disclaimer case law in three decisions in 2016 (see FCJ XZR 114/13 “Wärmetauscher”, FCJ X ZR 29/15 “Pemetrexed”, FCJ X ZR 76/14 “V-förmige Führungsanordnung”), of which the decision “Pemetrexed” of June 2016 is the most recent decision and a good example of a case in the life science area involving equivalence in Germany (the corresponding case to “Pemetrexed” in Great Britain is Eli Lilly v. Actavis of July 2017).

However, the situation is different when a “deviating means” is not disclosed in the description and the claimed embodiment is a special implementation (e.g., “pemetrexed disodium”) of an overall principle, which enables a skilled person to arrive at a further (deviating) embodiment that also implements the overall principle (e.g., “pemetrexed dipotassium”) of the invention.  Thus, in Pemetrexed, the FCJ found the third requirement to be met, and denied a disclaimer”, because “pemetrexed dipotassium” was not disclosed in the description as a valid alternative and, as a result, could not have been consciously waived by the patentee from the scope of the claims. Therefore, the FCJ found equivalent infringement.

This post was written by Lisa Mueller of Casimir Jones and Ralf D. Kirsch, Steven M. Zeman and Sebastian Ochs of Grünecker Patent- und Rechtsanwälte PartG mbB, Munich, Germany.

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