Growing Judicial Support for a ‘formstein’ Defence in English Patent Litigation

Document Cited authorities (2) Cited in Related
DOI10.1093/jiplp/jpab154
Date17 December 2021
Pages1163-1164
Year2021
Published ByOxford University Press
Legal context

The UK courts’ approach to the doctrine of equivalents has evolved significantly over the past four years. Following the landmark decision of the Supreme Court in Actavis v Eli Lilly ([2017] UKSC 48), it is now clear that the doctrine has a place in English patent law and there are three well-established questions that guide its application. However, it is unclear whether a particular embodiment could still infringe a patent as an equivalent if it is part of the prior art.

In this regard, there is increasing attention upon whether a Formstein-type defence applies in English patent law. Devised by the German courts in the homonymous case as an extension to the Gillette defence, the Formstein defence states that if an equivalent would have lacked novelty or inventive step over the prior art at the priority date, then it is deemed to fall outside the scope of the claim and, therefore, is non-infringing.

Although his comments were technically obiter, since they did not form a part of the rationale behind his ultimate decision at trial, Lord Justice Birss noted in this case that there was certainly a place for the Formstein defence in English patents law.

Facts

Facebook brought revocation proceedings against Voxer in relation to European Patent (UK) No. 2 393 259 directed to a novel form of communication, which allows a user to seamlessly transition between both a ‘live’ and a ‘time-shifted’ mode of communication in multiple conversations at the same time, archive messages and review them at a later time.

Facebook argued that the patent was invalid due to lack of novelty and inventive step over cited items of prior art, and on...

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