DLA Piper Intellectual Property and Technology Alert: When Repairing A Patented Product Is Permitted (Schütz v Werit)

On 13 March 2013 the UK Supreme Court handed down its ruling on the question of whether replacing part of a patented product infringes the patent in question[1]. In reaching its decision, the Supreme Court has shifted the balance in favour of those who repair and re-condition products.

The law and facts

Where the invention protected by a patent is a product, the act of making that product without the consent of the patentee infringes the patent[2].

In this case, the product protected by the patent was a container for transporting liquids in bulk, which consisted of a pallet and a plastic bottle within a lattice metal cage. Whilst the patent claim was to the container as whole, the aspect of the container which was considered to be inventive was the particular construction of the lattice bars of the metal cage.

The question at issue was whether the replacement of the old bottles in used containers with new bottles by a third party constituted the "making" of the patented container. The Supreme Court ruled that it did not.

In itself, the decision is not unsurprising. As a policy matter the Supreme Court is entitled to decide that replacing disposable parts or repairing a product should be permitted where this is not taking advantage of the protected invention, and apply the legislation in a way which provides more protection for those activities. However, what has been greeted with more controversy is the approach the Supreme Court took to reach that decision.

The legal approach

Previously, it had been held in a rather undetailed judgment[3], that when deciding whether or not the replacement of a component part amounts to "making" the patented product, one needed to take into account the nature of the invention and what had been done by the defendant.

Following that approach, the Court of Appeal in the Schütz case had held that replacing the bottle did amount to making the patented product; the patented product being the container (the bottle and cage being components of that) which was made by the assembly of the components.

In reaching the opposition conclusion, the Supreme Court took a less clear cut approach than that adopted by the Court of Appeal, considering that the question of "whether a patented product is made" was a matter of fact and degree. Instead of focusing on the end product, and deciding (i) whether that product has been made and (ii) whether that product is within the scope of the claim, the Supreme Court focused on the component being replaced and its relationship to the end product. It essentially asked itself if the replacement of that component involved making a "new" patented product. In deciding this question, the Supreme Court took into account a number of factors which it held affected the assessment of "fact and degree". These included:

  • Whether the bottle included any aspect of the inventive concept of the patent or had any connection to it (it did not)
  • That it would be anticipated that the bottle would need to be replaced during the life of the product as a whole (the evidence being that the bottle would need to be replaced five or six times during the life of the cage) and that end users would expect to be able to replace the bottle
  • That the bottle is a free-standing article, a "relatively subsidiary" part of the overall product and physically easy to replace, and
  • Potentially (although not in this case) the value of the container before and after the replacement of the bottle.

In reaching this decision, the Supreme Court aligned English law in this area more closely to the principles expressed by the German Supreme Court in equivalent cases.

The effect

Those who repair and re-condition products can now do so in the knowledge that their activities are overall less likely to amount to patent infringement, provided that they can convince a court that the multifactorial approach described above results in a balance on the "non-making" side of the line.

However, the approach adopted by the Supreme Court has made it more difficult for both sides to judge where the line falls. While the framework for making the judgment is now perhaps clearer, litigating the issue is likely to be more expensive. The inventive concept can be difficult to identify, as it may depend on what prior art is identified and the parties will need to put forward extensive evidence of what the relevant factual context is to enable the court to decide if the activities in question amount to "making" the patented product.

It is likely that interesting and controversial issues will arise where the invention of the patent resides in or is connected to that part of the overall product which will need to be replaced a number of times over the overall product's lifetime, or where the invention resides in the "combination" of uninventive parts.

Read the decision in full

[1] Schütz (UK) Ltd v Werit (UK) Ltd [2013] UKSC 16
[2] Section 60(1)(a) of the Patents Act 1977
[3] United Wire Ltd v Screen Repair Services (Scotland) Ltd [2000] 4 All ER 353

This information is intended as a general overview and discussion of the subjects dealt with. The information provided here was accurate as of the day it was posted; however, the law may have changed since that date. This information is not intended to be, and should not be used as, a substitute for taking legal advice in any specific situation. DLA Piper is not responsible for any actions taken or not taken on the basis of this information.

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