Abstract of glass building

Supreme Court clarifies what constitutes 'making' a patented product

25 March 2013. Published by Louise Morgan, Senior Associate

On 13 March 2013 the Supreme Court issued its weighty decision in the long-running case of Schütz v Werit([2013] UKSC 16).

The decision is of particular importance to the producers of replacement parts for consumer goods (eg, printer cartridges, replacement coffee pods for coffee machines and car parts). It also illustrated the delicate (and blurred) line between making a patented article (which amounts to infringement) and simply repairing a product (which does not).


The case concerned a patent for an intermediate bulk container (a transport cage/bottle combination for liquids). Schütz was the exclusive licensee of the patent and the producer of the container, which consisted of a metal frame and a plastic container that fitted into the frame. Werit 'reconditioned' old Schütz-produced containers by replacing the internal plastic containers with home-produced bottles and put the reconditioned containers back on the market to sell (and therefore to compete with the original Schütz products).

The question came down to whether the reconditioning by replacement of the plastic bottle amounted to 'making' the patented article. At first instance the court held that it was the cage which embodied the whole inventive concept of the claim and, therefore, putting a new bottle into the cage did not constitute 'making' the patented article. The Court of Appeal overturned this decision, finding that the patented product consisted of both the metal frame and the plastic bottle, so that the container ceased to exist when the bottle was removed and was made into a new product when the bottle was replaced.

The Supreme Court overturned the Court of Appeal decision, finding in Werit's favour and holding that the replacement of bottles was not sufficient to amount to 'making' a new product. Factors which played a part in the Supreme Court's decision were that the bottle:

  • was a replaceable, independent component of the patented product;
  • did not amount to the inventive concept of the patent;
  • had a much shorter lifespan than the cage, which was the inventive concept; and
  • was not the main component of the product as a whole, but was rather a subsidiary element.

Furthermore, consumers of the containers expected the bottles to be replaced during the lifespan of the product.

Takeaway points

The following key points can be taken from the case:

  • The decision reverses the Court of Appeal view and brings UK law more closely in line with EU law (in particular, the German Federal Court of Justice decision in Palettenbehälter II).
  • Establishing that the replacement of a part of a product does not amount to making a product means that producers of replacement parts for consumables can continue with a clear view of what will and will not infringe.
  • The decision may encourage production of – and therefore competition between – producers of replacement parts for consumables.
  • The question of whether an action constitutes 'making' or 'repair' will always turn closely on the facts involved.