Special leave granted: Calidad Pty Ltd & Ors v Seiko Epson Corporation & Anor
The High Court granted special leave to appeal in this case in November 2019, but its inclusion in the latest High Court Bulletin serves as a timely reminder that its hearing date will be approaching some time soon.
A key issue is whether a patent owner can control modifications to a patented product after its sale to a purchaser, or is there an implied licence upon sale to use the product in a way that would otherwise infringe? Here, the case is about the importation of modified re-used printer cartridges that are the subject of a patent. The Full Federal Court held that a patentee can control such conduct (as it infringes the patent), by overturning the trial decision that it was permitted.
The potential impact of this case is to affect the patentee’s rights; are those rights exhausted after the first sale of the products into the market? Can purchasers of those products use and modify them in any way they like, or must use be within the limits of the patent? There are two conflicting lines of judicial authority on the point – one from the UK and another from the US. Which should Australia follow?
Anyone who wants to modify a patented product after purchase ought to take a keen interest in this case – its significance will go beyond repurposed printer cartridges.
Link (special leave application transcript)