Germany
- Repair & Reproduction Distinction
According
to Section 9 of the German Patent Act, no one is allowed without
consent of the patent holder to produce, offer, bring into circulation
or use a patented product. However, if someone buys a patented
product from the patent holder or another person licensed by the
patent holder, the patent is exhausted. This means the buyer
is allowed to use this product without infringing the patent.
The question arises as to what is covered by this right to legally
use the patented product. In RG GRUR(1939) case it was contemplated
that the normal legal use of a patented product covers replacing
such parts of minor importance to the invention which are subject
to wear and which usually are replaced within the normal life time
of the patented product once or several times. Against this
background it is difficult to distinguish when the replacement of
a wearing part of a patented product shall be considered to be a
repair and when it shall be considered as a reproduction that was
according to Section 9, an infringement of the patent. In
such a situation, the courts have pointed out that this distinction
has to be made according to the common perception. However,
the Federal Supreme Court has continuously decided that a repair
shall be deemed to be a reproduction if the repair is economically
equal to a reproduction.
The aim
of patent law is to balance the interest of the inventor to get
a fair remuneration for his invention on the one hand and the interest
of the public in free and unlimited use of the invention on the
other hand. The Federal Supreme Court held that the replacement
of a wearing parts that are normally replaced several times during
the lifetime of the patented product is usually an admissible use
of the product. However, exemptions can only be made if the
technical and economic advantage of the invention with respect to
the prior art appears explicitly in the replacement, then the replacement
shall be regarded as a reproduction of the patented product that
is not covered by patent exhaustion. For example, an impeller
to measure the consumption of , say water, was according to the
patented invention designed in such a way that it was in the event
of calcination easily possible to replace the inner part of the
unit without cracking the wall. The advantage of that invention
reappeared every time the impeller was calcified and needed to be
replaced.
Contributory
infringement:
Same principle
applies to contributory infringement which is excluded for ordinary
staple-ware unless the supplier encourages the purchaser to use
it for the production, offer, sale or use of that patented product.
However, in cases where the replacement of a wearing part reflects
the technical and economic advantage of the invention, the offer
or supply of that wearing part shall be regarded as a contributory
infringement according to Section 10 of the Patent Act. Further,
the Higher Regional Court of Dresden found in its judgment that
contributory infringement can also be the case if the design of
the wearing part incorporates the essential idea behind the patented
invention. For example, rail vehicle wheels. These wear
because of friction with the rail and therefore need to be renewed
after certain periods. The technical aim of the patent in
that case was to provide a rail vehicle wheel that is more elastic
in radial direction and has more stiffness in axial direction.
However,
a legal appeal against the second instance decision is pending and
it is expected that the Federal Supreme Court will reason its decision
to give for future cases a more precise distinction between admissible
repair and inadmissible reproduction of a patented product.
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