Reconciling Repair and Reconstruction of Patented Articles in the US, UK, Germany and South Africa

• Citation: (2013) IPLJ 86
• Pages: 86-110
• Date: 16 August 2019
• Published date: 16 August 2019

86

RECONCILING REPAIR AND

RECONSTRUCTION OF PATENTED

ARTICLES IN THE US, UK, GERMANY

AND SOUTH AFRICA

sOPHIa czarnOckI

*

Candidate Attor ney, Dessington de Beer Intellectual P roperty Attorneys

1. IntrODuctIOn

It is trite that when a patentee or aut horised licensee sells or dispo ses of a

patented article the pu rchaser is legally permitt ed to use the article for its

intended purpose.1

Over time and with use a rticles experience wear and te ar and are

occasionally partia lly spent or worn out to a point where they can no longer

function as inte nded. Often such wear and tea r only occurs to a single

component of an article which if replaced r enders the article functional agai n.

It has been accepted in Sout h African law that the pu rchaser of a patented

article has a limit ed right to repair or mainta in the article.2 However, t he

extent to which repairs can be effected to an article is uncertain. The difculty

is that repairs may be so ext ensive as effectively to make a second new article

without compensating t he patentee a second time. This would in fringe the

right to exclude others from mak ing3 the invention. The precise point where

repairs become imp ermissible reconstr uction is the subject of the repair and

reconstruction doct rine.

The permissible repai r/impermissible reconst ruction dichotomy is also

implicated in the context of contr ibutory infringement,4 whereby th ird parties

may be guilty of inducing pu rchasers of the patented product to i nfringe the

patent directly by manufa cturing and supplyi ng spare parts to pur chasers to

be used in such art icles.5

This area of the law is also concer ned with the environ ment. The global

trend in manufact uring is moving toward a su stainable industr y that favours

production of recyclable articles over disposable art icles, which result in the

accumulation of waste. This g ives rise to a market for third part ies who recycle

* BSc Chemical Eng ineering; LLB (Cape Town). My thanks go to A ntony Dessington and Pete r

Fahrenhei m. Responsibility for er rors is mine.

1 Patents Act 57 of 1978 s 45(2).

2 Dana Cor poration v Rhobrak e (Pty) Ltd 1992 BP 297 (CP).

3 Section 45(1).

4 The doctrine of co ntributory i nfringemen t was accepted in pr inciple on exception i n Grande

Paroisse SA v Sas ol Ltd 2003 BIP 11 (CP) although t he case did not deal with the doct rine of

repair and reconstruction.

5 See eg Aro Manu facturing Co v Conver tible Top Replacement Co 365 US 336 (1961).

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(2013) IPLJ 86

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used patented ar ticles to create second-hand re-useable art icles. Typically this

process includes replacement of old part s that have become worn with new

parts. Those engage d in such an enterprise would require assu rance that their

conduct rests withi n the realms of permissible repair.6

The patentee also has a n economic interest in knowing what acts con stitute

permissible repair a nd impermissible reconst ruction, as the dist inction

determines t he extent of its monopoly. The patentee would desire that such

monopoly not only include the initial sale of the ar ticle but also as much of the

afterma rket maintenanc e as the law would permit.7

This paper is a compar ative study of the doctrine of repai r and reconstr uction

in the United States of Amer ica (USA), Germany, the United Kingdom (U K)

and South Africa.8

Part II provides an overv iew of the origin, rat ionale and nature of the right

to repair. Part III rev iews foreign case law on the repair and recon struction

doctrine. Par t IV critically analyses t he tests courts have both adopt ed

and rejected. It will be arg ued that no single test is applicable unifor mly

to every set of facts and that t he enquiry necessa rily involves a balance of

considerations. The ambit of this pape r will be limited to apparatus or device

patents protecting a combi nation of unpatented elements maki ng up products

which, when sold, are subject to no special ag reement altering the default

legal position after sale. It will fu rther be limite d to conduct that does not

include mo dication of t he original patented product or, in other words, to

conduct that is purely a repair or r eplacement of an unpatented element. In

part V the only South Af rican case in point, Dana Corporation,9 is analysed.

Included is a critique of the cour t’s reasoning based on the c onclusions drawn

from the previous par t.

2. tHe rIgHt tO rePaIr

The Un ited States Supreme Court establishe d the ‘rs t sale’ or ‘exhaustion

of rights’ doctrine10 in a series of pate nt cases.11 The doctrine holds that the

patentee’s exclusive rights are pa rtially extinguished after the rst lawf ul

and unconditional sale either by t he patentee or by the authorised license e.12

6 See gener ally Seth Jaffe ‘Manufa cturing a syst em of remanufactu ring: how the patent off ice can

facilitate e nvironmentally c onscious product desig n’ (2011) 48 Hous L Rev 919.

7 Niels Holder ‘Contribut ory patent infringe ment and exhaustion in cas e of replaceme nt parts –

comment on a rec ent supreme court de cision in Germany’ (2005) 36 (8) IIC 889 889.

8 There is ve ry limited South A frican case law on th e subject.

9 Dana Corporation v Rhobrake (n 2) .

10 Amber Hatfield Rovner ‘Pr actical guide to a pplication of (or defence again st) product-based

infri ngement immun ities under the doc trines of patent e xhaustion and i mplied license’ (2004) 12

Tex Intell Prop LJ 227 229.

11 Bloomer v McQuewan 55 US 539 (1852); Adams v Burke 84 US 453 (1873); United States v Univi s

Lens Co 316 US 241 (1942).

12 Univis Lens Co 2 50. See also Ioannis Avgoustis ‘Para llel imports and exh austion of trade mark

rights: should steps be take n towards an internation al exhaustion regime?’ (2012) 34(2) EIPR 108

111.

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