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. In reaching its decision, the Supreme
Court has shifted the balance in favour of those who repair and re-condition
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.
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, 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
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
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
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
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
 Schütz (UK) Ltd v Werit (UK) Ltd  UKSC 16
 Section 60(1)(a) of the Patents Act 1977
 United Wire Ltd v Screen Repair Services (Scotland)
Ltd  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
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