In Schütz v Werit ([2013] UKSC 16), the UK Supreme
Court issued a decision which will be of significance to the
providers of replacement parts of consumer goods. The
decision centred on what the term "making" means in the
context of patent infringement, a term used in both Irish and UK
patent legislation for infringement purposes. The issue for
the Supreme Court was whether reconditioning a patented product by
replacing a constituent part amounted to "making" the
patented product so as to infringe the patent. While the case
concerned replacement parts consisting of plastic bottles for
patented bulk containers, some principles will apply to replacement
parts for consumables ranging from cars to printers.
Regarding the facts, Schütz was the exclusive licensee for a
patent for a bulk container product consisting of a metal transport
cage and plastic bottle combination for liquids. The bottle
had to fit snugly in the case to ensure its protection. The
defendant, Werit, started to recondition the Schütz bulk
containers by replacing the plastic bottles inside the metal cages
and then selling such containers in competition with the original
Schütz product.
Lord Neuberger gave the judgment of the Court and held, in
overturning the Court of Appeal, that such acts were not an
infringement. The rationale for the decision was that the
inventive concept of the patent, when properly construed in
accordance with the legislative test, centred not around the
plastic bottle but the metal cage, particularly the idea of
flexible weld joints to increase strength and durability. The
patent also acknowledged that the bottle was
"exchangeable", or in other words, replaceable. The
Court held that the infringement term "makes" must be
interpreted contextually and in a practical way. The Court
therefore suggested that it would be useful to consider whether the
alleged infringer is repairing rather than "making" the
article. For this purpose, it was held that repair would
amount to replacing a constituent part of an article. Only
the act of making would constitute a patent infringing act.
In order to determine the dispute, the Supreme Court formed the
question "whether the bottle is such a subsidiary part of
the patented article that its replacement, when required, does not
involve "making" a new article?". The
answer to the question was held to be yes. There were two
principle reasons for this decision:
- the bottle had a significantly lower life expectancy than the cage such that it might be replaced five to six times during the life of the cage and so a purchaser of the patented bulk container could well expect to be able to replace the bottle; and
- the bottle was extraneous to the inventive concept of the patent at issue.
As indicated above, the concept of patent infringement should be determined similarly in Ireland in view of the similar legislative framework for infringement. This decision will no doubt encourage competition between producers of replacement parts for consumables in appropriate circumstances. The decision confirms the right to compete to supply products such as filters and cartridges where no other intellectual property protection exists.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.