The patentees had two patents relating to parts of oil rigs, coming into play to clean drill bits of cuttings on retraction. The defendants sold re-conditioned frames for this process.
Held: Where the apparent exercise of a right of repair went in fact to the creation of a new product, then the patent underlying the mechanism was infringed. A business which operated on the basis of receiving in items for repair, but which then supplied refurbished and renewed items which need not be the original part returned, went beyond exercising a proper right of repair.
Lord Hoffmann said that: ‘Aldous LJ, with whom the other Lords Justices agreed, said that in this case the defendants had made the product. They had repaired or reconditioned the frame and then used the frame to make a screen in exactly the same way as if they had bought the frames as components from a third party.
My Lords, the point is a very short one and in my opinion the Court of Appeal was right.’
Lord Bingham of Cornhill, Lord Steyn, Lord Hoffmann, Lord Cooke of Thorndon, Lord Hutton
Times 21-Jul-2000, [2000] UKHL 42, [2000] 4 All ER 353, [2001] RPC 439, [2001] FSR 365, [2000] IP and T 1038, [2000] All ER (D) 1025
House of Lords, House of Lords, Bailii
Patents Act 1977 60(1)(a)
England and Wales
Cited by:
Distinguished – Schutz (UK) Ltd v Werit UK Ltd and Another PatC 31-Mar-2010
The claimant said that the defendant had infringed its patents regarding containers for the transport of liquids in bulk. The patent provided for a steel cage surrounding a large bottle. The defendant supplied refurbished or replacement bottles. The . .
Cited – Schutz (UK) Ltd v Werit (UK) Ltd SC 13-Mar-2013
The parties disputed whether there had been an infringement of the claimant’s patent in respect for ‘intermediate bulk containers’ designed for the safe transport of liquids in bulk. They were a cage holding a plastic bottle. The defendant had a . .
Explained – Schutz (UK) Ltd v Werit (UK) Ltd CA 29-Mar-2011
. .
Cited – Schutz (UK) Ltd v Werit UK Ltd and Another CA 22-Nov-2011
. .
Cited – Schutz (UK) Ltd v Werit UK Ltd and Another CA 29-Jul-2011
. .
Lists of cited by and citing cases may be incomplete.
Updated: 22 August 2021; Ref: scu.90080 br>