'Patents and Equivalents: Words Aren't Walls - A Modest Defence of Taking the Pith' - Matt Fisher: CIPIL Seminar

Dr Matt Fisher (UCL) spoke on the topic of "Patents and Equivalents: Words Aren't Walls - A Modest Defence of Taking the Pith" at a seminar on 14 November 2019. The Supreme Court’s 2017 decision in Actavis v Eli Lilly ushered in a new era in patent claim interpretation. It marked an explicitly radical expansion of the patent’s reach through the doctrine of equivalents: a doctrine that extends protection outside of the language chosen by the patentee when claiming their invention to also cover immaterial variants therefrom. This change has provided a platform for disamalgamating (although not disconnecting) the interpretation of claim language from the scope of a patent’s monopoly. By moving away from the entrenched position, a position in which the claims formed an impermeable membrane through which questions of scope could not pass, one of the last bastions of Lord Hoffmann’s influence in the field of documentary interpretation has been stormed and laid open to the elements. Purposive construction as we knew it is dead. The era in which context was King and decisions could be reached based on a common sense understanding of language and its effects, where equivalents could only be taken into account as part of the background knowledge of the person skilled in the art, has been replaced (for now at least) with a different regime. To say that this new approach is contentious is an understatement. To its opponents, it explicitly extends protection outside of linguistic boundaries and into a no-man’s-land of uncertainties: uncontained by language, a Pandora’s Box of possibilities awaits. How then to distinguish what is protected from what is public: what is inside from what is outside the patentee’s monopoly? The Supreme Court’s solution, their guide to equivalency, was to refine and reconfigure a test with solid pedigree in the field of purposive construction itself: an improved set of Improver questions therefore now sets the scene for extension outside of the claim. In this talk Dr Fisher explains why accepting the concept of equivalency need not herald uncertainty, but nevertheless why the Supreme Court’s approach to the question leaves much to be desired. For more information see the CIPIL website at http://www.cipil.law.cam.ac.uk