Keyword:
Disc brake II
Law applied:
Patent Law Sec. 10 (1), Sec. 9 sentence 2 No. 1
Summary:
a. In order for the technical effects of an invention to be reflected in certain parts and their incorporation to lead to a new production displacing the exhaustion effect, these must be designed in a special manner adapted to the invention in order to be able to fulfill the function assigned to them, for example through a special design (Federal Supreme Court (BGH), judgment of May 4, 2004 - X ZR 48/03, BGHZ 159, 76, 92 f. - Flügelradzähler; judgment of May 3, 2006 - X ZR 45/05, GRUR 2006, 837 para. 22 - Laufkranz).
b. These requirements are not met if the relevant effect of the parts to be assessed is solely that they wear out.
Federal Supreme Court (BGH), Judgment dated November 8, 2022 - X ZR 10/20–
Comment C&F:
In the decision "Disc Brake II" (X ZR 10/20), the BGH deals with the question of whether the replacement of wear parts constitutes a permissible repair or a new production. According to the BGH, the decisive factor for the assessment is whether the technical effect of the replacement parts is merely to maintain the service life of the product or goes beyond this. From the patent owner's point of view, the decision underlines the need to find the right legal form of the patent claims in order to obtain an optimal scope of protection. Independently tradable, essential components, such as the wear plates here, which contribute significantly to the teaching of the invention, are regularly amenable to independent protection in independent patent claims.
Picture credits: EdNurg_AdobeStock.com
Our commentary on the above judgment serves the purpose of making it easily accessible. Simplifications and incompleteness are due to this purpose. For a complete understanding, please refer to the original German version of the publication of the judgment.