Archive: December 4, 2017

1
Recycling or Remaking – Exhaustion of Patent Rights
2
EU: Report of the European Commission on the Enforcement of Intellectual Property Rights

Recycling or Remaking – Exhaustion of Patent Rights

In the case Seiko Epson Corporation v Calidad Pty Ltd [2017] FCA 1403 (29 November 2017), Seiko sold various Epson inkjet printer cartridges for use with its printers.  Ninestar collected used cartridges in Malaysia, made modifications to facilitate their reuse, and refilled them with ink.  Calidad purchased the cartridges in Malaysia from Ninestar, then imported and sold them in Australia.

Seiko sued Calidad for infringement of two patents for printer cartridges.  Calidad defended the claim on the basis that an implied licence ran with the cartridges, alternatively Seiko’s patent rights had been exhausted when Seiko first put the cartridges on the market.

Ninestar modified some cartridges more than others in order to make them suitable for re-use.  Justice Burley found that the defence was available in some cases but not others.  It was a question of degree, but the Judge considered that in some cases Ninestar so materially altered the cartridges that “the licence implied by a sale without restriction of the original Epson cartridge does not apply”.

Read More

EU: Report of the European Commission on the Enforcement of Intellectual Property Rights

Thanks to increased inspection efforts, there has been an uptick in the number of counterfeit goods stopped at the external borders of the European Union. In 2014, the figure was 35.5 million items of a value of EUR 617 million; in 2015, it was 40 million items of a value of EUR 642 million, while it was 41 million items of a value of EUR 672 million in 2016.

Read More

Copyright © 2018, K&L Gates LLP. All Rights Reserved.