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The latest word on replacement parts – where does repairing stop and making start?


19th Mar 2013

Last week, in Schutz v Werit, the UK Supreme Court decided that placing a new, third party, “bottle” in the frame of a patented Intermediate Bulk Container (IBC) was not “making” the patented IBC and hence was not patent infringement. That the case should have reached the highest courts in the UK and Germany highlights the value of the reconditioning / replacement market in this and other fields.

Usefully in this case, the technology is easy to understand. An IBC is the combination of a metal cage which surrounds and protects a plastic bottle, albeit on a pallet-sized scale. The bottles typically have a much shorter life span than the cages, in many cases being single use items, and it is easy to see why a third party would want to buy up used IBCs, replace the original bottle with a new bottle, and sell on the “new” IBC. The issue then amounts to whether replacing the original bottle with a new, third party bottle is “making” the patented IBC. Put another way, where does repairing stop and making start?

Of course, the case is not quite that simple. The claims include both the bottle and the frame but identify the inventive concept in the particulars of the weld joints on the frame. The patent (EP0734967) description acknowledges that the bottle is exchangeable. The UK Supreme Court took eight general principles (see paragraphs 26 to 28 of the judgment) into account to reach the decision which is summarised in the press release as follows:

“This case represents a classic example of identifying the various factors which apply on the particular facts, and, after weighing them all up, reaching a conclusion on infringement. Given that (a) the bottle (i) is a freestanding, replaceable component of the patented article, (ii) has no connection with the claimed inventive concept, (iii) has a much shorter life expectancy than the other, inventive, component, (iv) cannot be described as the main component of the article, and (b) apart from replacing it, [the alleged infringer] does no additional work to the article beyond routine repairs, [the alleged infringer] does not “make” the patented article.”

Detailed analysis aside, it would appear that commonsense has prevailed in both the UK and German patent decisions. The UK court was very careful to decide the case on its facts and found “it is a matter of degree, to be assessed in each case, whether replacing a worn or damaged part of a patented article amounts to “making” the patented article” and “in this case, it appears [ ] that it is a classic example of identifying the various factors which apply on the particular facts, and, after weighing them up, concluding, as a matter of judgement, whether the alleged infringer does or does not “make” the patented article”.

It is clear from the judgment then that context is very important, and whilst a party wanting to recondition a patented product can usefully look to the judgment for pointers on how the UK courts will assess whether a particular replacement is permissible repair, the decision is so entwined with the case particulars that it does not give would-be reconditioners a free rein. This case is unlikely to be the last word on replacement parts but it is certainly a judgment to consider in detail if you are in the business of reconditioning and repair!

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.

Author
Julie Richardson
Partner
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Would you like to know more? You can talk to Julie Richardson who will be able to help. Call +44 (0)20 7242 0901

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