This recent patent decision of the Supreme Court provides guidance about when replacing a part might be treated as the infringing act of 'making' a patented product.  This may be relevant when considering repairs, spares and refills, for example.

The case related to industrial containers for transporting liquid in a plastic bottle surrounded by a metal cage on a pallet. The relevant claim in Schütz's patent covered the container as a whole – listing features of the bottle, cage and pallet together – though the inventive aspects were only in the cage. Werit reconditioned containers by removing the used bottles and providing new replacements.  Did this amount to 'making' the patented container?

What did the Supreme Court decide?

The Supreme Court said the patent claim must identify the replacement part as a feature of the patented product and it is also necessary to consider a number of factors, including whether the replaced part:

  • is a freestanding, easily replaceable component of the patented product (if not, that counts in the patent-owner's favour);
  • includes, or has connection with, any aspect of the claimed inventive concept of the patented product (if so, that counts in the patent-owner's favour);
  • is a main or subsidiary part of the patented product (if a main part, that counts in the patent-owner's favour); and
  • has a shorter life expectancy than the product as a whole and its replacement would be anticipated by customers (if not, that counts in the patent-owner's favour).

On the facts, the Supreme Court held that replacing the plastic bottles did not constitute 'making' the patented product.

What is the effect of the decision?

The case shows the difficulty in proving patent infringement against a supplier of unauthorised parts / refills if the patent only covers the product as a whole.  It is therefore prudent to seek separate patent claims for consumable parts / refills as well as for the product as a whole.  The decision may provide encouragement for those making and selling refills or refurbishing patented products.  However, patents are only one form of IP protection.  For consumer goods, other IP claims such as passing off, trade mark infringement or design right infringement may be possible.

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.