“Schütz”

• 1. A person infringes a patent for a product if that person “makes” the product, as claimed in the patent concerned.

• 2. The word “makes” must be interpreted contextually. It must be given a meaning, which it can reasonably bear. It is not a term of art, not having a precise meaning. It will inevitably be a matter of fact and degree in many cases whether an activity involves “making” an article, or whether it falls short of that. “Making” must be interpreted in a practical way, by reference to the facts of the particular case. There is, however, need for clarity and certainty. “Making” applies to patents for all sorts of products. The need to protect the patentee’s monopoly while not stifling reasonable competition must be borne in mind. It must be interpreted bearing in mind that the precise scope of a claim may be a matter almost of happenstance in the context of the question whether the alleged infringer “makes” the claimed product. Where there is a decision of the House of Lords or Supreme Court on the meaning of the word, it cannot be departed from save for very good reasons. It should be interpreted bearing in mind that it is included in a provision which is intended to be part of a scheme which applies in many other jurisdictions.

• 3. One must avoid basing a decision by simply contrasting the two concepts of making and repairing, not least because the notions of making and repair may well overlap.

• 4. The mere fact that an activity involves replacing a constituent part of an article does not mean that the activity involves “making” of a new article rather than constituting a repair of the original article. Repair of an item frequently involves replacement of one or some of its constituents.

• 5. When an article includes a component which is physically easily replaceable and in practice relatively perishable, those features must constitute a factor (which may be outweighed by others) in favour of concluding that the replacement of that component does not fall foul of Sec. 60(1)(a).

• 6. The extent to which a component of an article is a subsidiary part, so that its replacement is more likely to involve repairing than “making” the article, must be a matter of degree. It therefore seems to me that it must be legitimate, in the context of addressing the question whether a person “makes” the patented article by replacing a worn out part, to consider whether that part includes the inventive concept, or has a function which is closely connected with that concept.

• 7. If an article has no value when it has been used and before it is worked on, and has substantial value after it has been worked on, that could fairly be said to be a factor in favour of the work resulting in the “making” of a new article, amounting to more than repair. However, that would be just one factor.

• 8. Where a licensee successfully claims damages or an account for infringement of a patent, it cannot recover its costs in so far as they are attributable to the claim for damages or an account in respect of infringements pre-dating the registration of the licence, but it can recover costs attributable to such relief in respect of infringements post-dating the registration.