A person infringes a patent for a particular product if he ‘makes’ the product without the consent of the patentee. In Schutz v Werit the relevant ‘making’ involved replacing an old or damaged component vitally important to the function of the patent but not the subject of the patent itself.
At first instance Floyd J held there was no infringement but the Court of Appeal disagreed because once the relevant component (a bottle) was removed, there was little left of the patented invention so what was left enabled a new product to be made.
The Supreme Court gave guidance on the ‘proper approach to the meaning of makes’ and, after identifying eight different approaches to the meaning and decisions in the German courts, decided neither of the courts below had used the correct approach. It concluded that replacing the bottle did not amount to an infringing act of manufacture.
Anyone now considering the market for reconditioned products should carefully consider this decision.
Posted by Peter Ellis, who specialises in commercial litigation or dispute resolution; intellectual property disputes e.g. trade marks, copyright, designs issues; breach of contract and claims through interruptions to trade.
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