United Wire Ltd v Screen Repair Services (Scotland) Ltd

The House of Lords holds that, for the purposes of a product patent, acts which amount to "making" the patented product infringe despite prior sale of a product. Repair and making are distinct legal concepts for section 60(1)(a) of the Patents Act 1977. An implied licence or exhaustion of rights does not authorise the making of a new patented product from components recovered from an earlier authorised sale. Whether conduct is making or repair is a question of fact and degree assessed by reference to the nature of the patented product and what was done.

The appeals concerned two United Kingdom patents for double-mesh sifting screens used in vibratory sifting machines. The defendants reconditioned worn screens by stripping plaintiffs' metal frames and attaching new bonded meshes. The patentee sued for patent infringement. The trial judge found the defendants were "narrowly" performing repairs and relied in part on an implied licence. The Court of Appeal held the defendants had made the patented product and reversed. The House of Lords was asked to resolve whether the defendants' reconditioning constituted making the patented product or lawful repair, and whether implied licence or exhaustion principles aided the defence.

1. Outcome: The House of Lords dismissed the appeal and affirmed the Court of Appeal's conclusion that the defendants had made the patented product.
2. Leading reasoning (per Lord Hoffmann): For a product patent the relevant inquiry under Patents Act 1977 section 60(1)(a) is whether the defendant "made" the protected product. The proper question is not whether the activity can be labelled "repair" but whether the defendant's acts in substance produced the patented product. Repair and making are mutually exclusive legal concepts for the statute even though ordinary language may allow overlap.
3. Implied licence and exhaustion: The doctrines of implied licence or exhaustion explain why an acquirer of a legitimately sold article may use or resell it. They do not, however, permit someone to make a new instance of the patented product. Where the allegation is that the defendant has "made" the patented article, those doctrines are irrelevant.
4. Application to the facts: The patented screen was a combination of frame and two bonded meshes at differential tensions. Stripping the meshes from the frame and restoring a new bonded double mesh produced a new instance of the patented product. The frame alone was an important component but, once stripped to bare metal, it was merely a chassis from which a new screen could be made. On the facts the defendants' operations amounted to making.
5. On appellate standard: The Court of Appeal was entitled to substitute its evaluation of whether the acts amounted to making because the trial judge had misidentified the patented product and concentrated on prolongation of the frame's life.
6. Authority and guidance: The House of Lords approved reliance on earlier authorities distinguishing repair from making (including Sirdar Rubber and the approach of Lord Halsbury) and treated Solar Thomson as addressing the same factual boundary; it preferred direct analysis under section 60(1)(a) to resorting to implied licence. The decision gives practical guidance: courts should identify the patented product and then assess whether the defendant's acts produced that product.
7. Disposition: Appeal dismissed. Costs and incidental orders were not materially altered by the House of Lords' judgment.

• Court of Appeal: Appeal upheld that defendants had made the patented product (transcript reported in the judgment; Court of Appeal reasons summarised).
• Chancery Division (Patents Court), trial judge: Found that the defendants' activity might be treated as repair and relied on implied licence; judgment reversed on appeal.