Hand holding abstract lamp on blurry polygonal background. Imagination and technology concept. 3D Rendering

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.


Send an enquiry

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


More posts

Understanding roles in the strata scheme

A strata scheme is a building or group of buildings that have been divided into lots which can be apartments, villas, offices, units or townhouses. This will be articulated in the strata plan.

Can i put my home on Airbnb?

Airbnb is a form of short-term rental accommodation. To add your property to Airbnb in NSW, you are required to meet several laws and regulations governing short-term rentals.

When are liquidators required to seek approval to retain legal counsel?

When does a liquidator (or the company he or she is appointed to) need court, creditor, or committee approval to validly retain a solicitor to act in a liquidation matter which is likely to extend for longer than three months?  The answer to this question has only recently been settled.

Proposed changes to building and construction law in NSW

The Building Bill 2022 (the Bill) is the key avenue through which the NSW Government has proposed to reshape the culture of the building and construction industry by eliminating poor performance and improving the quality of building statewide.

Can you dismiss an employee who fails to return to the office?

Slowly but surely, most employers are requiring employees to return to the office for at least a portion of their working week. Some employers continue to struggle with employees resistant to returning to the office or those who have an expectation that they can continue to work from home whenever it suits them.

New powers to combat phoenixing in construction

The rise of phoenixing in the building and construction industry in Australia in recent years has proved a significant challenge to regulators. Mismanagement of time or cashflow can quickly propel businesses into insolvency.

The NSW Building Commission’s extraordinary powers

In late 2023, the NSW Government passed the Building Legislation Amendment Bill 2023 (Amendment Bill). The Amendment Bill established the NSW Building Commission and granted it extraordinary powers to enter construction sites, inspect work and take away information and materials.

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