“Making” and repairing

Last week, we bought an intermediate bulk carrier, or IBC as they are affectionately known. It comprises a plastic container, suitable for holding fluids, within a metal cage which makes it a good deal more rigid and durable than would otherwise be the case. You can stack them on top of one another - though we won't be doing that, as it is only needed to hold water for the horses.

The very next day, the Supreme Court gave judgment in Schütz (UK) Ltd v Werit (UK) Ltd (Rev 1) [2013] UKSC 16 (13 March 2013). The case arose from the activities of a company which replaced the plastic bottles (if "bottle" is an apt word for something that contains 1,000 litres) when they reached the end of their useful lives. Did this amount to "making" IBCs, which would infringe the patent, or was it permitted as repairing?

The Supremes decided that replacing the plastic container does not amount to infringement of the patent for the whole article, reversing the Court of Appeal (a late Jacob judgment, if I remember correctly).

Although the court was careful not to get too deeply into the distinction, observing that there might be an overlap between making and repairing, it nevertheless gives us useful guidance on the difference between making and repair, which has not occupied judicial minds much since United Wire Ltd v Screen Repair Services (Scotland) Ltd, [2000] 4 All ER 353, [2001] RPC 24 (was that really so long ago?) and before that the Solar Thompson case: was the bottle a subsidiary part of the IBC, such that its replacement did not involve making a new article?

Obiter, the Supreme Court also talked about the interpretation of section 68 on the effect on infringement actions of non-registration of transactions with a patent which section 33 says must be recorded.