Pith and Marrow is Dead… Long Live Pith and Marrow: The Doctrine of Equivalents After Actavis

In Actavis v Eli Lilly, the UK Supreme Court overturned its previous Kirin-Amgen decision, ushered in a new U.K. doctrine of ‘extended protection’, and in so doing, proclaimed that it had finally brought U.K. patent jurisprudence in line with the objectives of Article 69 of the European Patent Convention [EPC]. A considerable amount of commentary leading up to Actavis, as well as the Actavis judgment itself, highlighted how U.K. patent jurisprudence of the post-Article 69 era suffered from a flawed, U.K.-centric tunnel vision, instinctively presuming that Article 69 was simply a reflection of existing U.K. patent practice and, as such, U.K. patent law was already in compliance with EPC obligations. The weight of opinion was that Article 69 was meant to stake out a middle ground of claim scope, between literalistic, peripheral-style claiming, exemplified by traditional U.K. patent jurisprudence, and the non-literalistic, central-style claiming, exemplified by traditional German patent jurisprudence. In extending protection beyond literal claim infringement to cover non-literal equivalents, the UKSC declared that it had finally moved U.K. patent doctrine to the desired middle ground of the Article 69. However, what these commentaries overlook is that movement away from literalism was not the only shift in U.K. patent practice that Article 69 intended to achieve. Rather, a historical and comparative analysis demonstrates that in the lead-up to Article 69, commentators and EPC negotiators held similar apprehensions regarding the U.K. ‘colourable evasion’ doctrine. To these commentators, ‘colourable evasion’ embodied many of the concerns surrounding both literalistic, peripheral claiming and non-literal, central claiming. Similarly to literalism, ‘colourable evasion’ relied almost entirely on judicial interpretation, as opposed to the more fact-based and infringement-focused claim scope doctrines of Continental patent practice. Furthermore, like the non-literalistic approach of central claiming, such as the German ‘general inventive concept’, ‘colourable evasion’ could undermine the notice function of claims by permitting the judicial vitiation of claim elements based entirely on a generalized ‘inventive concept’. Post-Actavis jurisprudence demonstrates that the Actavis test, with its reliance on the inventive concept as the point of departure for non-literal infringement, has re-introduced many of the same concerns associated with both the U.K. ‘colourable evasion’ doctrine and the German ‘general inventive concept’. Accordingly, the Actavis test, in many ways, may be a return of ‘colourable evasion’ and the ‘general inventive concept’ rather than the doctrine of ‘pith and marrow’. The irony is that in pursuit of harmonization, German patent practice abandoned the ‘general inventive concept’ only now to see its return in the form of the U.K.’s Actavis test. In this sense, while Actavis took a critical view of preceding jurisprudence’s narrow, U.K.-centric reluctance to embrace the trans-European harmonization goals of Article 69, Actavis may end up undermining its own objectives of finally breaking free from the cycle of U.K.-centric patent practice.