What constitutes ‘making’? It's not clear cut

By Edward Glass and Michael Stevenson

A patent provides its owner with the right to exclude others from ‘making’ a product falling within its scope. However, the act of making is not well defined. By way of example, performing maintenance and repairs to a complex product such as an aircraft may, when viewed through the eyes of patent law, result in certain instances where a new product has been made, resulting in unexpected patent infringement. This article provides some examples where the court has considered acts that fall close to the line.

The case of United Wire Ltd v Screen Repair Services (Scotland) Ltd concerned patents for a filter screen to remove debris from drilling mud. The filter screen consisted of a metal frame to which a mesh was attached. The frames were durable but the meshes quickly tore in use. The defendant sold reconditioned screens by applying replacement mesh to the patentee’s original frames.

Both the Court of Appeal and the House of Lords concluded that the defendant’s activities fell within the scope of ‘making’. The screen was effectively being re-assembled, not merely repaired, and this re-assembly constituted ‘making’…

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