UK: UK Supreme Court Decides When Making Spare Parts Amounts To Patent Infringement, And The Consequences For Failing To Register A Patent Licence

Last Updated: 27 March 2013
Article by Jonathan Radcliffe

Keywords: patentees, spare part manufacturers, patent infringement, patent licence

Summary and implications

The UK Supreme Court has unanimously ruled on an important commercial activity for patentees and spare part manufacturers, namely when supplying replacement parts constitutes patent infringement.1 The decision also deals with the consequences of failing to register a patent licence.

  • The decision has potentially significant strategic implications for both patent litigation and the question of infringement, and for commercial transactions that require recordal of patent licences and the consequences of failing to do so.
  • The Supreme Court's decision means that patentees are now potentially unable to prevent competitors making replacement consumable parts, as these types of activity will not be patent infringements. It will potentially increase competition in the market for consumable replacement parts such as printer ink cartridges, and certain types of spare parts in the car and domestic appliance sectors (amongst others).
  • The legitimacy of spare parts will depend on a range of factors, including whether the spare part is such a subsidiary part of the patented article that its replacement (when required) does not involve "making" a new article. The Supreme Court laid down a nuanced set of criteria to determine this question.
  • This decision on spare parts follows the trend over recent years of the convergence of the patent law jurisprudence of the English and German Supreme Courts.
  • A failure to register a transaction, instrument or event affecting rights in or under patents at the Patent Office will have adverse consequences in any subsequent litigation. The successful patent licensee (in this instance) cannot recover its legal costs attributable to the period before the licence was actually registered. This will also potentially have an impact on due diligence exercises in corporate and commercial transactions.


Schütz is the UK licensee of a patent for intermediate bulk containers ("IBC") for liquids comprising a plastic bottle in a metal cage. Often, the bottle cannot be reused because it contains residues of a toxic liquid or because it has been physically damaged.

The inventive concept of the patent lies in the idea of flexible weld joints to the metal cage to increase its strength and durability. However, the patent's description specifically acknowledges that the plastic bottle can be replaced. The metal cage has a life expectancy of five or six times longer than a bottle, leading to "reconditioners" such as Werit engaging in re-bottling (fitting a new Schütz bottle) or cross-bottling (replacing the bottle with a bottle made by a third party). The reconditioned product is then offered to users in competition with Schütz's original products, and those of other reconditioners.

At trial the Patent Court (Floyd J) held that these cross-bottling activities did not constitute making the patented product, on the basis that the patent's inventive concept is wholly embodied in the Schütz cage. The Court of Appeal (Jacob LJ) considered it inappropriate to determine this issue by reference to the inventive concept. The patented product had to be considered as a whole, comprising the cage and the bottle.

It held that these cross-bottling activities amounted to making the patented product. Its reasoning was that the Schütz IBC ceased to exist on removal of the Schütz bottle, and all that remained at that stage was merely an important component from which a new IBC could be made. Adding a new bottle to the cage was effectively completing the patented product, and therefore constituted an infringement.

The decision – the meaning of "making"

The Supreme Court ruled that replacing a worn out part is not necessarily an act of "making", with the result that Werit had not infringed the patent. It unanimously overturned the Court of Appeal's decision.

The central issue in the appeal concerned the correct meaning of the infringing act of "making", specifically what is meant by the word "makes" in section 60(1)(a) of the Patents Act 1977. This provides that a person infringes a patent for a particular product if that person "makes" the product without the patentee's consent. The key factual question was whether the defendant "makes" a patented article when it removes a damaged Schütz bottle from a Schütz cage and replaces its own bottle.

The Supreme Court held that it is both legitimate and helpful to consider the question of 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 correct approach was a nuanced question of fact and degree, bearing in mind the need for certainty on the boundaries of public monopolies and the need to give a proper balance to the different interests of patentees and their competitors.

In determining that question the Supreme Court held that the following factors will be significant.

  • Does the replacement part have a significantly lower life expectancy than the article as a whole? In this case the bottle would, on average, be replaced five or six times during the life of the cage. The fact that one would expect such regular replacement reinforced the notion that it is a subsidiary part.
  • Does the replacement part include any aspect of the inventive concept of the patent? The extent to which a component of an article is a subsidiary part, so that its replacement is more "repairing" than "making" the article, is a matter of degree. It is therefore legitimate to consider whether that part includes the inventive concept, or has a function which is closely connected with that concept.

The Supreme Court held that there was no "making", and hence no infringement, because the bottle is a freestanding, replaceable component of the patented article that has no connection with the claimed inventive concept, and has a much shorter life expectancy than the other, inventive, component (the metal cage). The bottle cannot be described as the main component of the patented article, and apart from replacing it the defendant did no additional work to the patented article beyond routine repair.

The decision – the consequences of failing to register a recordable transaction, instrument or event

Schütz sued in its capacity as the exclusive licensee of the patent, but did not register its licence until more than 14 years after it had been granted, and then only just before it commenced this litigation.

Section 33 of the Patents Act 1977 provides that "transactions, instruments or events affecting rights in or under patents" should be registered on the Register of Patents.

Under section 68 a failure to register carries the sanction (save in certain circumstances) that the proprietor or exclusive licensee of the patent will not be able to recover legal costs or expenses in infringement litigation. The intent behind section 68 is making those who own monopolies get on the register so that the correct position is publicly known.

The Supreme Court determined2 that the correct interpretation of section 68 is that where a licensee wins on the issue of infringement of a patent in circumstances where its licence has not been registered, then – the licensee cannot recover its costs in so far as they are attributable to the claim for damages or an account of profits in respect of infringements pre-dating the registration of the licence, but it can recover costs attributable to such relief in respect of infringements post-dating the registration.

The lesson for potential litigants is a simple one. They should always register their interests, and be alert to whether amendments to licences (for example) amount to the grant of a fresh licence which needs to be registered separately. This point was raised before the Supreme Court, but expressly not ruled upon because it had not been fully argued by the parties. Prudence suggests that additional registration of such a licence would be the correct course of action, not least because the Register is a register of transactions not of parties.

This case will also potentially have an impact upon due diligence exercises in corporate and commercial transactions. Attention should now be paid not just to whether all relevant transactions, instruments or events affecting patent rights have been properly registered, but to whether or not there is any relevant infringement of the patent, given that this will trigger the adverse legal costs sanctions under section 68.

Patentees and licensees should not be deterred from registering through concerns about the world at large finding out the terms of their commercial arrangements. The register only records the date of the licence and the name of the licensee. Whilst the public has a right to inspect the register, those who do so have no right to see, or to be told of the terms of, any licence.

Originally published 19 March 2013


1 Schütz (UK) Limited v. Werit (UK) Limited [2013] UKSC 16, 13 March 2013.

2 Strictly, this aspect of the Supreme Court's judgment is obiter dicta given that it had ruled against Schütz on the question of infringement, with the result that the question of disentitlement to legal costs did not formally arise.

Learn more about our Intellectual Property and Life Sciences practices.

Visit us at

Mayer Brown is a global legal services provider comprising legal practices that are separate entities (the "Mayer Brown Practices"). The Mayer Brown Practices are: Mayer Brown LLP and Mayer Brown Europe – Brussels LLP, both limited liability partnerships established in Illinois USA; Mayer Brown International LLP, a limited liability partnership incorporated in England and Wales (authorized and regulated by the Solicitors Regulation Authority and registered in England and Wales number OC 303359); Mayer Brown, a SELAS established in France; Mayer Brown JSM, a Hong Kong partnership and its associated entities in Asia; and Tauil & Chequer Advogados, a Brazilian law partnership with which Mayer Brown is associated. "Mayer Brown" and the Mayer Brown logo are the trademarks of the Mayer Brown Practices in their respective jurisdictions.

© Copyright 2013. The Mayer Brown Practices. All rights reserved.

This Mayer Brown article provides information and comments on legal issues and developments of interest. The foregoing is not a comprehensive treatment of the subject matter covered and is not intended to provide legal advice. Readers should seek specific legal advice before taking any action with respect to the matters discussed herein.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions