Does the replacement of wear parts constitute a permissible repair or a new manufacture? The Federal Court of Justice (BGH) addressed this question in a ruling handed down on November 8, 2022 (“Scheibenbremse II” – X ZR 10/20).
The case concerned the patent for a disk brake used primarily in motor vehicles. The defendant sells brake pad sets which are suitable as spare parts for these disk brake models. Among the installation accessories supplied are two wear plates. The claimant considers the use of these to constitute a contributory infringement of its patent. This was affirmed by the lower courts. The Federal Court of Justice, however, was of a different opinion. For the federal judges, the key question is whether the technical effect of the spare parts is merely to maintain the service life of the product or whether it goes beyond that. In the case of wear parts that must be replaced over time, they found that there is no unauthorized new manufacture and thus no contributory patent infringement.
“The ruling demonstrates – to patent holders in particular – how important the correct legal form for patent claims is to ensure an optimal scope of protection,” says Dr. Andrea Stomps. “Independently marketable, essential components, like the wear plates in this case, which contribute significantly to the teaching according to the invention, are regularly open to independent protection in independent patent claims.”
>> Download ruling (machine translation)
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