Washtower v BEGA
A recent order from the UPC gives further insight into how the UPC will apply the doctrine of equivalents. In Washtower v BEGA (UPC_CFI_479/2025), the UPC has issued a preliminary injunction based on their assessment that it is more likely than not that the patent will be found to be infringed under the doctrine of equivalents. The patent requires “an L-shaped metal strip”, while the Defendant’s cabinets have strips made of plastic.
Tests for equivalence
Interestingly, both parties based their arguments on the test for equivalence set out last year in in Plant-e v. Arkyne (UPC_CFI_239/2023). The court also followed that test in their order, noting that “a harmonised approach within the UPC is desirable” and “in the absence of a decision by the Court of Appeal and given that both parties referred to this test without proposing or even debating an alternative, the Court sees no reason to deviate from the test it applied in Plant-e v. Arkyne”. While this case applied the Plant-e v. Arkyne equivalence test (which was based on practice from the Netherlands and was issued by the same Local Division, in The Hague), the broader question of what equivalence test to apply is not yet settled. As this decision notes, the Court of Appeal are yet to provide a judgement based on equivalence. Other tests have been considered by the Brussels Local Division (UPC_CFI_376/2023), for example. A judgement from the Mannheim Local Division in Dish v Aylo (UPC_CFI_471/2023) has suggested that for acts carried out after the UPC came into force (1 June 2023) the UPC “will have to develop its own doctrine of equivalence, possibly with recourse to the traditions of the UPC Member States”.
Conclusions
In such an important area of law for patentees and defendants alike, the case law on the test for equivalence seems likely to evolve quickly. There does at least seem to be a common view (from the Mannheim and The Hague Local Divisions at least) that there must be technical-functional equivalence for infringement by equivalence to be found.
At least, the Washtower case illustrates the UPC’s willingness to order preliminary injunctions based on infringement by equivalence.
