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:

  1. 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
  2. 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.