Doctrine of equivalents

In accordance with paragraph 2 of Article 1354 of the Russian Federation Civil Code, “Protection of intellectual rights to an invention or utility model is granted based on a patent to the extent determined by the claims contained in the patent or utility model, respectively. The description and drawings, as well as three-dimensional models of the invention and utility model in electronic form, may be used to interpret the claims and utility model claims (Item 2 of Article 1375 and Clause 2 of Article 1376)".

According to paragraph 3 of Article 1358 of the Russian Federation Civil Code “An invention is recognized as used in a product or method if the product contains, and the method uses each feature of the invention given in the independent clause of the claims contained in the patent, or a feature equivalent to it and which has become known as such in prior art prior to the priority date of the invention.

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When establishing the use of an invention or utility model, the interpretation of the claims of the invention or utility model is carried out in accordance with paragraph 2 of Article 1354 of this Code."

In accordance with paragraph 4 of Article 1358 of the Russian Federation Civil Code “If, when using an invention or utility model, each feature is also used, which is given in an independent clause of the claims contained in the patent of another invention, or a feature equivalent to it and which has become known as such in the given field of technology before the date priority of another invention, or each feature given in an independent claim contained in the patent formula of another utility model, and when using an industrial design, each essential feature of another industrial design or a combination of features of another industrial design that produces the same general impression on an informed consumer as an industrial design a sample, provided that the products have a similar purpose, another invention, another utility model or another industrial design is also recognized as being used."

Thus, from the norms of paragraphs 3 and 4 of Article 1358 of the Russian Federation Civil Code, it follows that in order to establish the use of the invention, it is necessary to compare each feature of the invention given in the independent clause of the formula contained in the patent, or equivalent to it and which has become known as such in the given field of technology, with signs of the product of the alleged infringer.

Despite the use of the term "equivalent feature" in patent law, its definition is not fixed anywhere. At the same time, both in domestic and foreign scientific literature, a considerable number of publications and articles are devoted to this issue.

To define the concept of “equivalent feature”, law enforcement practice and methodological approaches are applied based on the provisions of paragraph 24 of the “Instructions on the procedure for paying remuneration for discoveries, inventions and rationalization proposals” of the State Committee of the Council of Ministers of the USSR for Inventions and Discoveries (Decree of January 15, 1974 ): “ The invention is also recognized as used in those cases when it is allowed to replace one or more features of the invention with other interchangeable elements (equivalents). The replacement of the feature or features specified in the claims is considered equivalent, if the essence of this invention does not change, the same result is achieved, and the means of execution are replaced with equivalent ones known in the field."

At the same time, the essence of the invention as a technical solution is expressed in the totality of essential features sufficient to achieve the technical result provided by the invention. Signs are significant if they affect the possibility of obtaining a technical result, i.e. are in a causal relationship with the specified result.

The technical result is a characteristic of the technical effect, phenomenon, properties, etc., objectively manifested in the implementation of the method or in the manufacture or use of the product, including the use of the product obtained directly by the method embodying the invention.

Previously, prior to the recognition on the basis of the Order of Rospatent dated February 14, 2002 No. 25 “On the invalidation of departmental regulatory legal acts” of the Instructions for State Scientific and Technical Examination of Inventions (EZ-2-74) not valid on the territory of the Russian Federation, approved by the Chairman of the State Committee of the Council Ministers of the USSR for inventions and discoveries December 13, 1973, in paragraph 4.13. the following was stated:

"4.13" Conclusion on the equivalence of the technical solutions used in the object to the features of the claims "the following conditions for the application of the doctrine of equivalents are given:

4.13.1. The conclusion is drawn up only in those cases when, when using the invention, one or more features indicated in the claims are replaced by other interchangeable elements (equivalents).

4.13.2. An equivalent replacement of the features specified in the claims with other technical solutions, and elements is recognized only if the following conditions are met:

a) if the replacement of features with equivalents does not change the essence of the invention;

b) if the same result is achieved by replacing the features of the invention with other elements (equivalents);

c) if the means of execution are replaced by equivalent ones (equivalents);

d) if the technical solutions (elements) that replace the features of the invention are known in the field. (Instruction 10, paragraph 24)”.

The question of the equivalence of features is a matter of law; accordingly, the court must resolve this issue on the basis of the actual circumstances of the case.

I propose to turn to judicial practice in order to analyze how Russian courts now interpret the term "equivalent feature" taking into account specific factual circumstances.

Amazing analytical work was carried out by the Court of Appeal in case No. А56-71544/2015. Thus, the decision of the Thirteenth Arbitration Court of Appeal dated March 20, 2020, states the following: “As follows from the materials of the case, based on the results of the patent examination conducted in the court of the first instance, the expert came to the following conclusion: Without exception, all the features in the independent formulas of clause 1 and clause 4 of patent No. 2646553 in the inspected object (hangar gate lifting mechanism of the Nevskiye Masters company) was not used, namely, features Nos. 1-8 were used as they are included in the claims, and features Nos. 9 and 10 were changed.

While maintaining the composition of the main structural elements (cable, rod, support arms, limit switch), the kinematic diagram of the interaction of the cable, rod, and support arms, one of which has a limit switch, has been changed. In the object being inspected (the lifting mechanism of the hangar gates of Nevskiye Masters LLC), a feature known in the field of lifting equipment until the priority date of the current patent for an invention according to application No., which at their first ends are rotatably attached to the structural components of the vertically lifted door, and the specified element (52) is a rod, which is attached with its ends to the ends of the support arms, allowing the bearing component to pass along the rod between the support arms (50a, 50b ), and which is designed to move from the first position to the second position by turning around the pivot pin (54) under its own gravity.

The expert came to the conclusion that equivalent features do not change the essence of the invention while achieving the same result, and the means of replacement are equivalent: the movement under the action of gravity of the supporting arms is replaced by their movement under the action of stretched springs.

At the same time, it is not seen from the study whether not the “movement” itself, but the reason for such a “movement” in one case “under the action of the own gravity of the supporting arms” in the other “under the action of stretched springs” is equivalent and equivalent.".

The Court of Appeal, in its decision on the said case, also noted that “ Equivalent replacement of the features indicated in the claims with other technical solutions is recognized only if the following conditions are met:

a) if the replacement of features with equivalents does not change the essence of the invention;

b) if the same result is achieved by replacing the features of the invention with other elements (equivalents);

c) if the means of execution are replaced by equivalent ones (equivalents);

d) if the technical solutions (elements) that replace the features of the invention are known in the art.

Thus, when analyzing equivalence, it is necessary to determine the function of the feature used in the patented invention and the function of the feature used in the Product, and the fulfillment of the above conditions is also revealed".

The said decision of the Thirteenth Arbitration Court of Appeal in case No. А56-71544/2015 dated 03/20/2020 was upheld by the decision of the Intellectual Property Rights Court dated 08/05/2020.

In case No. A41-70419/2014, the courts established the following (see the ruling of the Intellectual Property Rights Court dated February 1, 2017): two signs indicated in table No. 4 of the conclusion under numbers 7 and 8, which are replaced by equivalent ones, namely:

1) feature number 7 “as a target additive for fluidity, it contains an ionic-lattice mineral with complex anionic groups of the gross formula [A l 2 O 3] 0.5-7.5 • [SiO 2] 40-50 • [ Na 2 O • K 2 O ]4.5-11.4•[Р 2O5]0.5-1.5•[ СаO ]5-9.1•[Fe2O3]12-20•[ FeO ]8-12•[ТiO3]7-11 and/or phosphorite flour with true with densities of at least 2.8 g/cm 3 "(hereinafter - feature 1) is replaced by the feature" as a target additive for fluidity, the fire extinguishing agent contains at least one substance from the series: neferelin concentrate, phlogopite, muscovite, labasin, perlite; predominantly nepheline concentrate” (hereinafter referred to as feature 1A);

2) feature number 8 "as a water-repellent organosilicon liquid, it contains methylhydridesiloxane with an active hydrogen content of 1.6-1.7 wt .% or a mixture of methylhydridesiloxane as the basis of the water-repellent agent and curing catalyst - aminoethylaminopropyltrimethoxysilane in the ratio (5-70): 1, at the same time, the modifier - organosilicon water- repellent liquid is taken in the form of a 10-70% solution in an organochlorine solvent" (hereinafter - feature 2) is replaced by the feature " as hydrophobizing organosilicon liquid, it contains at least one substance from the series: polymethylhydrosiloxane liquid, alkyl halosilanes, sodium organyl siliconate, in an amount of not more than 1% by weight of the target additive for fluidity "(hereinafter - feature 2A). ".

In No. A40-48304/2016, the courts came to the following conclusions (see the ruling of the Intellectual Property Rights Court dated December 05, 2017): according to the patent of the Russian Federation No. 2289391 when providing medical services in connection with the use of a device other than one needle with a lock, as required by the company's patent for the invention, considers it necessary to note the following. The Court of Appeal, within the framework of checking the arguments of the appeal of the company, summoned and questioned at the hearing the experts Pasynka M.S. and Agasarova L.G., who conducted the forensic examination appointed by the court of the first instance. Based on the results of their explanations, the Court of Appeal came to the conclusion that the sign according to the patent “needle” and the sign specified in the protocol for securing evidence dated December 25, 2015: “the device consists of two thin rods soldered together with round fixed tips at the top parts” should be recognized as equivalent, and the method of fixing the needle is not significant, since both used needles are the same in their function (affect acupuncture points ) and the result achieved. the same needle during the entire period of therapy, and acting immediately on a group of acupuncture (auricular) points. ".

In the “fresh” case No. A40-29590-2020, the Court of Appeal, in its decision of 03/24/2022, came to the following conclusions: “ The replacement of a feature is considered equivalent if the essence of this invention does not change, the same result is achieved during the replacement, and the means for performing the replacement are equivalent, while the elements that replace the features of the invention are known in the art. According to the conclusion of the forensic expert Ermakova E.A. this analysis was carried out by the expert only in relation to the feature "transfer by the buyer's mobile device of a one-time unique code, a unique identification number of the mobile device to the payment system" of independent clause 1 of the patent claims. At the same time, the expert omitted the need to take into account the features “parallel” and “[transfer by the buyer’s mobile device] of the unique identifier of the seller’s cash system and their own payment data [to the payment system] through the second communication channel,” which are included in feature 9 of independent claim 1 according to A patent found to have been fully exploited in the Defendants' device by virtue of the doctrine of equivalence. Moreover, the analysis carried out by the expert recognizes "the transfer of a unique code (that is, one parameter) from the payment system to the merchant's mobile device" as equivalent to "the transfer from a mobile device to the payment system (that is, vice versa) of a unique code and a unique mobile device number" ( i.e. two parameters). The expert does not provide any justification for such a conclusion, indicating only that the purpose of the invention under the Patent (namely, the distribution of information flows) is fulfilled. In addition, the expert also does not provide any explanation for the lack of analysis of the remaining parts of feature 9 of the independent claim 1 of the patent claims. The expert also, in principle, does not provide a separate analysis of equivalence with respect to features 10 and 12 of the independent clause 1 of the patent claims, which are also recognized as used in the controversial device. In connection with the foregoing, the Conclusion of the forensic expert Ermakova E.A., obviously, cannot unconditionally testify to the use of features equivalent to features 9, 10, and 12 of independent clause 1 of the claims under the Patent and, accordingly, the proven fact of using all the features of the Patent in the investigated device. At the same time, the panel of judges takes into account that the above analysis of the equivalence of the features of the device under study to features 9, 10, and 12 of the independent clause 1 of the claims under the Patent was not carried out, which actually indicates that the court of the first instance incorrectly applied the substantive law provisions of clause 3 of Article 1358 of the Civil Code of the Russian Federation, since The patent is recognized as used, despite the fact that not every feature of the invention according to the Patent is used in the operation of the disputed device.

The judicial practice discussed above allows us to conclude with a certain degree of clarity that the absence of a definition of the term “equivalent feature” does not affect the quality of justice. Moreover, if earlier there were grounds to assert that in judicial acts the issue of the equivalence of signs, as a rule, was not independently considered by the courts, now it can be argued that the courts began to independently determine the boundaries of the exclusive right of the patent owner.