Imagination and technology concept

Refill, re-use, recycle: new High Court decision implicitly embraces sustainability in much anticipated decision concerning a fundamental doctrine impacting on the Patents Act

Malcolm Campbell ||

The High Court has recently clarified that the law on exhaustion of IP rights after sale in Australia is in line with the US.

In summary, Seiko (collectively) commenced proceedings in the Federal Court of Australia alleging that Calidad had infringed its patent rights in printer cartridges. In particular, it said, to put it plainly, taking used Epson printer cartridges, drilling a hole in the side and refilling them with ink (and in some cases providing a modified chip for communication with the printer) was an infringement of the patentee’s rights.

Calidad ultimately appealed and asked that the High Court hold that, in cases of this kind, a doctrine that a patentee’s monopoly rights of use and sale with respect to a product arising from statute are exhausted upon the first sale of that product (the “exhaustion doctrine”) should be applied instead of the existing ‘implied licence’ doctrine.

The practical question for the court was whether the drilling and refilling modifications made to the product to enable its re-use amounted to a making of a new product and thereby infringed the patentee’s exclusive rights on that basis.

The High Court found that the modifications to the original Epson cartridges did not amount to an impermissible making of a new product and that the exhaustion doctrine should be accepted which throws out a decades old ‘doctrine of implied licence’. The refilled and restored cartridges were merely modified versions of the products sold by Seiko. The modifications were within the scope of the rights of an owner of a chattel to prolong the life of a product and make it more useful.

What this means in practice

What this means is that it should not be an infringement to repair or modify a product in future – to date that has been somewhat of a grey area. There is likely many other uses for existing products that could not be reimagined commercially due to the risk of infringement of patent rights. While the High Court is unlikely to have been cognisant of nor motivated by the sustainability angle, the acknowledgement of the court to apply a doctrine of exhaustion will provide an avenue for innovation of existing products that may have the ultimate impact of helping reduce waste.

If you have a query relating to any of the information in this blog, please do not hesitate to contact a member of Coleman Greig’s Intellectual Property Team, who would be more than happy to assist you today.

Share:

Send an enquiry

Any personal information you provide is collected pursuant to our Privacy Policy.

Categories
Archives
Author

More posts

Employers should exercise caution when dismissing during probationary period

Can you dismiss an employee during the probationary period? Yes, but a recent case is a lesson in caution. The recent Federal Court decision of ‘Dabboussy v Australian Federation of Islamic Councils’ is a warning to employers to consider the importance of timing if dismissing an employee during probation.

The business impacts from the Government’s new cyber security laws

Cybercrime ‘is a multibillion-dollar industry that threatens the wellbeing and security of every Australian’. In an effort to combat the impact on businesses and individuals, the Australian Government has introduced cyber security legislative reforms into the Parliament.

A guide to intrafamily adoption

Adoption is the process where a parent’s legal rights for their child are transferred to another person. The formal adoption of a stepchild or close relative is known as intrafamily adoption.

Passenger movement and visa data-matching by the ATO

Heading overseas for work or a holiday? Taxation issues, including tax residency, should be on front of mind when departing from or arriving to Australia. Why? Because the Australian Taxation Office (ATO) can follow your footprints and, if you’re not careful, spring unexpected taxes on you.

Is it really necessary for my executor to have so many powers?

People often question why the executor of their estate needs to have so many powers. Simply put – if your executor isn’t given any additional powers by your Will, then they are limited to what is set out in the Trustee Act. One area that this can lead to issues in, is the family home – particularly if beneficiaries aren’t in agreement.

Essential terms of a commercial lease

A commercial lease is a contract that details the rights and obligations of a tenant and landlord. So, what are the necessary terms of a commercial lease?

Responding to data breaches

In the final part of our four-part series on your business’ responsibilities related to cyber attacks and data breaches, Special Counsel John Bennett how businesses should respond to data breaches, including application and requirements of the Notifiable Data Breaches Scheme.

Security of personal information

Part 3 of a four-part series on your business’ responsibilities related to cyber attacks and data breaches where Special Counsel, John Bennett provides an overview of some court decisions and proceedings where ‘security’ of personal information has come into issue.

Parental alienation in Family Law

The concept, Parental Alienation Syndrome, was initially brought about by American psychiatrist Richard Gardner in 1985. The term parental alienation is used to describe a situation where one parent is involved in psychologically manipulating their child to turn against the other parent.

Are you liable for labour hire workers if they are injured?

Many employers (host employers) engage employees of labour hire companies, particularly in the building and construction, hospitality and manufacturing industries. However, what happens when one of these employees gets injured at the host employer’s work site? Who is liable for the injuries?

© 2024 Coleman Greig Lawyers  |  Sitemap  |  Liability limited by a scheme approved under Professional Standards Legislation. ABN 73 125 176 230