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Written by: Hanna Fleisher

Have you ever thought that by recharging a printer cartridge yourself, you are violating someone’s rights? Hardly ever. If you bought something, you can do whatever you want with the item purchased. From the buyer standpoint, everything is correct, but manufacturers think otherwise.

In the USA, a so-called patent exhaustion doctrine is in force. When a patentee sells a patented product, they can no longer control that item through the patent laws, namely their patent rights are considered exhausted, and they no longer has the right to prohibit the further sale / repair of this particular product.

What did the patent holders do in this case before?

They imposed an “aftermarket restriction”, i.e., tried to limit the use of a patented item by its intended purpose only.

What does this mean in practice?

If you purchased an original printer cartridge and the instructions or label say something like “By opening the printer cartridge, you agree to return the empty cartridge to the company X for recycling”, then by not returning the empty cartridge, you violated the patent owner’s rights to this cartridge. It is clear that the manufacturer will not sue each individual buyer. However they can definetly sue another company that buys up, refills, and resells utilised cartridges.

From this point of view, prominent is the decision in the Impression Products vs. Lexamark case.

Lexmark designs, manufactures and sells printer cartridges worldwide. The company owns a number of patents on the components of these cartridges and methods of their use. In an attempt to prevent the further use of its cartridges after the toner runs out, Lexmark tried to encourage customers to return cartridges used. To do this, the company created “Return Program” that allows buying a cartridge at a discount of approximately 20%. A customer who buys under the return program still owns the cartridge, but in exchange for a lower price, signs a contract agreeing to use it only once and refrain from giving the empty cartridge to anyone other than Lexmark.

Impression Products, on the contrary, bought up cartridges used, including Lexmark products, chipped them, refilled, and resold at a lower price. As a result, the company received a lawsuit from Lexmark.

Ultimately, the court ruled that an authorized sale by the patentee exhausted all patent rights to the product sold, whether the product was sold domestically or internationally. Exhaustion also prohibits the patent owner from applying post-sale restrictions through patent infringement claims. Thus, Impression Products, that has resold used original cartridges, has every right to continue its business, and the buyer has the right to resell / modify the purchased patented product.

The decision made will expand the rights of the companies such as Impression Products, but will further limit the rights of the patent holders and force them to look for new ways to protect the rights to their products after the authorized sale.

Or, the adopted changes will force the use of more highly qualified patent specialists, who will be able to formulate the claims more skillfully and ensure that all or part of the patent rights are retained even after the authorized sale of the patented product. The scientific and patent department of Intectica will help to plan the protection of your ideas and ensure the protection in all countries of the World. We introduce new products to the market and conduct direct prosecution in the EU countries, Bulgaria, Ukraine, Russia, Azerbaijan, Armenia, Belarus, Uzbekistan, Georgia, Kazakhstan. More details can be found on our website.

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