Germany jurisdiction report: The difference between repair and remake

This right also entitles the buyer to repair and maintain the product in order to ensure that it can still be used. However, in some cases the boundaries between repairing and maintaining a product and remanufacturing it (which constitutes patent infringement) seem to blur.

The differentiation is especially important in cases when patented products are used by the buyer and third parties then try to commercialise refilled or recycled products in which the used parts are substituted with new ones. One example is printer cartridges, which are the subject matter of a decision rendered by Germany’s Federal Supreme Court in October 2017, Drum Unit (Trommeleinheit). The plaintiff asserted claims based on direct infringement of claim 1 of the patent through the distribution of recycled printer cartridges for laser printers.

The case

Claim 1 covers a photosensitive drum unit, and further independent claims of the same patent cover a cartridge and an electrophotographic image-forming apparatus which both encompass a drum unit. The defendants distribute recycled printer cartridges which may be used instead of the cartridges manufactured and distributed by the plaintiff. The defendants substituted, inter alia, a new picture drum for the used picture drum (which is part of the drum unit) in the original product manufactured by the plaintiff.

The Düsseldorf District Court had found patent infringement. On appeal, the Düsseldorf Court of Appeal affirmed this. The Court of Appeal said that the substitution of the picture drum was an act of remanufacturing the drum unit covered by claim 1. One main argument was that, according to the relevant consumer, approximately 70% of the value of the drum unit could be attributed to the picture drum, ie, to the part that was substituted by the defendants.