United Wire Limited v Screen Repair Services (Scotland) Limited and Another and Others

Infringement by making a patented product depends on whether the defendant has made the product identified in the patent claim, construed with the description and drawings. The label repair is not decisive.

A purchaser may use, dispose of or repair a patented article so far as those acts do not amount to making the patented product. An implied licence or exhaustion following an authorised sale cannot confer a right to make another product. Making and repair are therefore mutually exclusive for the purposes of section 60(1)(a) of the Patents Act 1977.

Where the claimed product is a combination, retaining and reconditioning one durable component may still involve making the patented product anew when the original combination has ceased to exist.

The respondent owned two patents for screen assemblies used to filter drilling fluid. Each claimed a combination of a frame or support member and two differently tensioned meshes bonded to it. The appellants obtained used assemblies, removed the worn meshes and coating, restored the bare metal frames, attached new meshes and sold the resulting screens.

Robert Walker J held that there was an implied licence to repair and was narrowly persuaded that the operations constituted repair. The Court of Appeal reversed that decision. It held that the proper question under section 60(1)(a) of the Patents Act 1977 was whether the appellants had made the patented product, and concluded that they had.

The issue before the House was whether reusing the original frames amounted merely to permissible repair or constituted making the patented screen assemblies.

1. Appeal dismissed unanimously. Lord Hoffmann delivered the principal opinion. Lord Bingham agreed and gave additional reasons. Lord Steyn, Lord Cooke and Lord Hutton agreed with both opinions.

2. Per Lord Hoffmann, an authorised sale may support an implied licence to use or dispose of the patented article. Alternatively, the sale may exhaust the patentee's rights in that article. Neither doctrine permits the purchaser to make another patented product or exhausts the patentee's right to prevent further manufacture.

3. Per Lord Hoffmann, when infringement is alleged by making under section 60(1)(a) of the Patents Act 1977, an implied licence to repair is superfluous and potentially confusing. The statutory question is whether the defendant has made the patented product. Repair, modification and adaptation occupy the territory short of making. Although making and repair may overlap in ordinary language, they are mutually exclusive for the purposes of the statute. The owner's freedom to repair is a residual freedom to do what does not amount to making the product.

4. Per Lord Hoffmann, that question requires correct identification of the patented product. The claimed product here was not the durable frame alone. It was the combination of the frame and two meshes bonded under differential tension. Once the old meshes were removed and the frame stripped to bare metal, that product ceased to exist. The remaining frame was merely a component from which the appellants made a new patented screen.

5. Per Lord Bingham, the central inquiry was whether the appellants' conduct deprived the patentee of the rights conferred by the patent. Categorising conduct as repair was unreliable because repair may range from minor remedial work to substantial reconstruction. The Court of Appeal properly concentrated on the nature of the claimed invention and what the appellants had done.

6. Per Lord Hoffmann, appellate caution concerning evaluations of fact and degree did not prevent intervention. The trial judge had not correctly identified the patented product, having focused on prolonging the life of the frame rather than on whether the claimed screen assembly had been made. The Court of Appeal was therefore entitled to substitute its evaluation.

1. House of Lords: Dismissed the appellants' appeal unanimously and upheld the Court of Appeal's conclusion that the reconditioning operations made the patented screen assemblies.

2. Court of Appeal: Evans, Aldous and Ward LJJ reversed the trial judge. Aldous LJ, with whom the other Lords Justices agreed, held that the appellants had repaired or reconditioned the frames and then used them to make new patented screens.

3. High Court: Robert Walker J followed Solar Thomson Engineering Co Ltd v Barton [1977] RPC 537. He held that there was an implied licence to repair and was narrowly persuaded that the appellants' operations were repairs.