Japanese Grand Panel holds refilled ink cartridges infringed Canon’s patent

On 31 January 2006, a Grand Panel of the Japanese
Intellectual Property High Court held that by recycling (refilling and
reselling) Canon’s inkjet cartridges, Recycle had infringed Canon’s
patent number JP 3278410. Click here for a summary of the case in English.

Take home

The doctrine of exhaustion of patent rights under Japanese
law is by no means simple. In essence:

1. Once a patented product is sold in Japan
by the patentee, it is no longer an infringement to use, assign or lease the

2. If the patentee sells a patented product outside
the patentee may
not enforce patent rights in Japan
unless there is an agreement with the direct assignee not to exploit the
product in Japan.

3. Notwithstanding 1 or 2 (above), it is
an infringement to:

reuse or recycle a patented product after its ordinary life (type 1

b. modify or replace the whole or part of the components that
constitute an essential part of the patented product (type 2 infringement).

(In this case, type 2 infringement
was found since in recycling the cartridges to their former function, Recycle
restored two features of the cartridges which were held to be an essential
part of the product.)


Recycle Assist has bought used inkjet cartridges, recycled
and refilled them and imported them into Japan. Recycle conceded that the cartridges in
question fell within the scope of the claims of the JP ‘410
patent. Recycle argued that
Canon’s rights in the patent had been exhausted on first sale of the
cartridges and cited the Japanese Supreme Court in the BBS Case (Judgment of the Third Petty Bench of the Supreme Court
of 1 July 1997, Minshu Vol. 51, No. 6, 2299).

Canon had brought an action for patent infringement and
lost at first instance, appealing to the Grand Panel of the Intellectual
Property High Court. The Court
reversed the first instance judgment and granted an injunction.


The doctrine of exhaustion of rights in relation to patent
infringement is complicated and varies in sometimes subtle ways from
jurisdiction to jurisdiction. Please
do let me know if you would be
interested in a brief comparative article.

2006 has been a successful year so far for Canon in
enforcing patent rights relating to ink cartridge technology.In March it was confirmed that Canon had
won an appeal to the Higher District Court of Düsseldorfwhich dismissed an appeal by Pelikan Hardcopy Deutschland GMBH and held that Pelikan infringed Canon’s European Patent number EP 0 879 703 in Germany (see Canon’s press release).

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