The UK Supreme Court has recently issued its judgement in Schütz v Werit.

The main issue in this case was the extent to which a part of a claimed product can be replaced without this constituting 'making' the product, thus infringing the patent. Specifically, the case involves intermediate bulk containers (IBCs) which consist of a plastic bottle held in a rigid metal frame, on a wooden or metal pallet.

The claim in suit covered the compound construct of a pallet, frame and bottle but the 'inventive concept' behind the patent related only to features of the frame (which has specially welded joints designed to add flexibility without compromising strength).

The bottles (frequently used for toxic substances and liable to damage in use) are often replaced, but the rigid frames supporting them are not. Werit made and sold replacement bottles designed to fit Schütz's cages. Schütz objected that this 'cross-bottling' activity amounted to infringement by 'making' the patented product anew.

At first instance, Floyd J had held that there was no infringement because the action of the alleged infringer in supplying/fitting a new bottle did not affect the inventive concept. This was overturned by the Court of Appeal, however, who held that 'making' meant just that and that hence, placing a new bottle in an existing frame 'made' the claimed product again.

The Supreme Court decision, after noting nine separate factors which affect the meaning of 'make' in the Patents Act 1977, held that both Floyd J and the Court of Appeal had approached the issue incorrectly. They held that the question of whether replacing a part of a patented article constitutes 'making' is a matter of fact and degree. Factors to be considered are:

  1. Whether the replacement part is such a subsidiary part of the patented article that its replacement, when required, does not involve 'making' a new article.
  2. Whether one would expect the part to be replaced during the lifetime of the overall article.
  3. Whether the part includes the inventive concept, or has a function which is closely connected with that concept.
  4. Whether the replacement part is a free-standing item which is capable of existence independent of the remainder of the claimed product.
  5. The nature of the 'replacement' operation (e.g. whether it requires a significant element of demolition of the overall product).
  6. Whether the 'replacement' operation added (or restored) significant value to the product (this point to be treated with extreme caution, but still relevant alongside the others).

Considering the balance of these factors, the Supreme Court held that the defendant did not 'make' the IBCs when they replaced the bottles.

Of particular note is that the factors above mirror those relied on by corresponding decisions of the BGH in Germany, on the same question. Whilst noting that they are not bound by these decisions, the UK Supreme Court stated that "it is sensible for national courts at least to learn from each other and seek to move towards, rather than away from, each other's approaches".