News: UK - Supreme Court upholds the right to remanufacture
In a decision closely watched by remanufacturers in the United Kingdom and Europe, the Supreme Court affirmed the right of companies to remanufacture patented products originally made by another company.
Tuesday, 28th May 2013
The case, Werit (UK) Limited v Schutz (UK) Limited, involved the reconditioning of intermediate bulk containers, used to transport liquids. They consist of a metal cage containing a large plastic bottle that must fit inside the cage as snugly as possible to avoid damage during transport. Often the bottle cannot be reused because it is damaged or contains residues of a toxic liquid; however the metal cage has a much longer life. Schutz was the licensee of a company which had patented a new bulk container in which the bottle fit more snugly into the metal cage and therefore was less prone damage. Werit made new bottles which were then sold to remanufacturers who used them to replace bottles in the bulk containers originally produced by Schutz. At trial the court said that using Werits bottles did not infringe the patent, but the appellate court disagreed and found that infringement had occurred. Werit took the case to the Supreme Court which agreed to hear it. The Supreme Court based its decision on the issue of whether Werit was making the patented product. While the Court recognized an owners right to repair, it was unwilling to base its decision solely on determining whether what was done by Werit and the remanufacturers was repair. Instead, it felt that it had to decide whether in replacing a part of a patented article making occurred. The Court ruled that each case had to be decided on its own facts however it outlined certain guidelines and factors to be considered: - Replacement of adamaged essential element of a product can constitute repair rather than making the product - Replacement of a part which, though essential, was clearly a subsidiary part of the patented product did not involve making - Whether a part was physically easy to replace and in practice relatively perishable - Whether the inventive concept was in the part being replaced - If the used part had no value, i.e. was not a marketable core. After reviewing all those factors, the Court decided that what Werit and the remanufacturers were not making new bulk containers. The UK Supreme Courts decision follows similar logic used by US courts to uphold the right to remanufacture by looking at the facts of each case and deciding that even replacement of a key or dominant element of a patented product does not constitute illegal reconstruction. These decisions are vitally important to the continued development of the remanufacturing and re-use industry.