Australian Treasury Opens Griffith University Law Centre miragenews.com - get the latest breaking news, showbiz & celebrity photos, sport news & rumours, viral videos and top stories from miragenews.com Daily Mail and Mail on Sunday newspapers.
Seiko), manufactured and sold printer cartridges under the brand name ‘Epson’ (
Epson cartridges). The patented Epson cartridges were a single-use product, meaning that once the ink in the cartridge was depleted, it was necessary to dispose of, and replace, the entire cartridge.
Ninestar Image (Malaysia) SDN BHD obtained empty Epson cartridges and modified them to enable the cartridges to be refilled. The Appellant, Calidad Pty Ltd (
Calidad) then purchased the modified cartridges and imported those cartridges into Australia for public sale.
Calidad relied on the ‘implied licence’ doctrine to argue that they had not in fact breached Calidad’s patent, as an implied licence to use, maintain, import, export, resell or otherwise dispose of the Epson cartridges was applied to the product upon its first sale.
Many years ago, the great philosopher Plutarch raised the following scenario:
The ship wherein Theseus and the youth of Athens returned from Crete had thirty oars, and was preserved by the Athenians down even to the time of Demetrius Phalereus, for they took away the old planks as they decayed, putting in new and stronger timber in their places, insomuch that this ship became a standing example among the philosophers, for the logical question of things that grow; one side holding that the ship remained the same, and the other contending that it was not the same. (Plutarch, Theseus, 75AD)
To print this article, all you need is to be registered or login on Mondaq.com.
For the first time, the High Court adopted the doctrine of “patent exhaustion” to determine the nature and extent of monopoly rights of patent owners and departed from the “implied licence” theory, which had been used in Australia for more than a 100 years. Calidad Pty Ltd, distributor of refurbished printer cartridges, won a long-standing battle with Seiko Epson Corporation in its final appeal to the High Court. This decision has significant implications for both patent owners and businesses operating in industries in connection with the repair, refurbishment and recycling of goods and possibly, parallel importers.