Hogan Lovells Successfully Acts for Werit in Supreme Court Replacement Part Ruling

LONDON, 13 March 2013 - Today the UK Supreme Court has given its decision in the long-awaited Schütz v Werit case, ruling that Werit had not been infringing patent rights by supplying replacing parts.

The court's unanimous decision means that manufacturers are potentially now able to create replacement consumable parts for objects such as cars or ink cartridges for printers without fear of infringing patent rights. Click here for judgment.

The Supreme Court ruled that, if replacing parts, manufacturers would have to take into account a range of factors, including whether the part is expected to be replaced in the normal life of the larger item and whether it forms part of the invention. Significantly, the decision brings English law more closely in line with equivalent German Supreme Court case law.

Background to the case

Schütz holds a patent for a bulk container for liquids that contained a bottle in a metal cage on top of a pallet. Werit's customers may take that product and replace damaged or worn bottles with Werit bottles. Customers then sold those reconditioned bulk containers. The High Court had ruled that Schütz’s patent had not been infringed by Werit’s actions.

The Court of Appeal then decided that the High Court’s test had been incorrect and stated that the patented product should be considered as a whole, of which the cage and the bottle were each parts. By putting a new bottle into the cage, Werit's customers were effectively completing the patented product. In doing so without a licence, they had infringed Schütz’s patent, and so had Werit by its supply.

However today the Supreme Court ruled that replacing a part is not necessarily an act of 'making' and that Werit and its customers had not infringed Schütz’s patent.

Hogan Lovells partner Stephen Bennett, who led the team advising Werit, commented:

"This decision removes an obstacle to reconditioning – it means that manufacturers can now potentially create replacement parts for larger consumable objects without fear of infringing patent rights. It also has the potential to open up the market for consumable parts and allow more competition in the manufacture of consumable parts such as filters and cartridges."

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“Hogan Lovells” or the “firm” is an international legal practice that includes Hogan Lovells US LLP and Hogan Lovells International LLP. For more information, see www.hoganlovells.com.

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