The IPO has updated two sections of the Patents Manual, which became effective on 1 October 2021:

i) Section 125.17.8 on the “Formstein” defence has been updated to include the decision in Facebook Ireland Ltd v Voxer IP LLC [2021] EWHC 1377 (Pat). The so-called “Formstein” defence, as considered in Technetix BV v Teleste Ltd [2019] EWHC 126 (IPEC), is a principle developed under German patent law in relation to infringement and the doctrine of equivalents (DoE), whereby if an alleged infringer can show that an equivalent is a non-inventive variant of the claimed invention, then the patent’s scope for the purposes of determining any infringement is held to its normal construction. In other words the DoE does not apply. In Facebook Ireland v Voxer IP LLC, Lord Justice Birss made obiter remarks in relation to the use of the Formstein defence in the UK, saying “…if I had to decide the matter I would hold that the correct approach is the Formstein approach so that the conclusion if the equivalent device lacks novelty or is obvious is that the claim scope must be confined to its normal construction in that respect. I would do so for two reasons. If the claim on its normal construction is valid, then it seems harsh to invalidate it on this ground. What else could the patentee do but write their claim in a way which, normally construed, did not cover the prior art. So that approach promotes certainty. Secondly, since it is clear that other EPC countries work that way, this is a reason in itself for this EPC state to take the same approach”; and

ii)Supplementary Protection Certificates for Medicinal and Plant Protection Products: SPM (a discussion of the details of the Medicinal Regulation by Article, including those aspects common to both the Medicinal and Plant Protection Regulations) and SPP (a discussion of the details specific to the Plant Protection Regulation by Article) have been updated to take account of the regulatory effects of the Northern Ireland Protocol following the end of the Brexit transition period in December 2020.

To access the updates, click here.