DOI: 10.14457/tu.the.2015.444
title: Patent exhaustion in cases of recycling and repair of goods

description: In this era of global environmental problems, reducing natural resources consumption by recycling used goods into new goods and repairing damaged goods to be correctly re-workable is the essential resolution.  Moreover, doing so is economically advantageous to consumers.According to the exhaustion doctrine, a legitimate transfer of a title in patented goods generally consumes exclusive rights conferred by a patent in the goods.  To use or resell the said goods transferred, purchasers or others obtaining them do not need to request any permission from a patentee. The exhaustion, however, is not absolute. Among all exclusive rights conferred by a patent, only the rights which are of an exclusively commercial nature involve the exhaustion as a consequence of the sale, whereas, other rights concerning manufacturing or physical product handling, e.g., producing, reconstructing, etc., are not exhausted.The nature of recycling used patented goods, without reducing it into ingredients, into recycled goods serving its initial utility, e.g., recycled ink cartridges, and repairing damaged patented fall in the realm between permissibility under patent exhaustion and infringement of patent protection. Some sorts of these acts are permissible while the others are deemed as reconstruction.  Unsurprisingly, purchasers or proprietors of patented goods and recycling businesses may be liable for patent infringement.  Conversely, such activities may decrease the interest of a patentee, negatively affecting the incentives for inventors to develop new technologies. Therefore, appropriate concrete provisions of law to distinguish between permissible repair/recycling and infringing reconstruction are required to deal with such problems so as to ensure the rights of all said persons exercised over patented goods.Additionally, a patentee may create post-sale restrictions, with adhesion contracts, on using goods covered by his patent to avoid exhaustion of patent rights. The enforceability of such restrictions, perhaps, hinders purchasers, proprietors and recycling businesses from using goods under normal social convention. Thus, the provisions of law are required to deal with this issue to preclude overexpansion of patent rights.The study of foreign patent laws and court’s decisions demonstrates that case laws in the U.S. and the court’s decisions in Japan are highly persuasive for interpretations of patent law governing the issues of distinguishing between permissible repair/recycling and infringing reconstruction under patent exhaustion, and the enforceability of post-sale restriction on the use of patented goods in respect of patent field. Due to the lack of minimum standards set by TRIPs, each Member state has been allowed to determine the scope of patent exhaustion for its national enforcement. The implementation of patent exhaustion in these matters in the U.S. and Japan are individual difference.As to Thai Patent law, the exhaustion provision under Section 36 paragraph two (7) of Thai patent Act deprived of such standard of distinction between permissible repair/recycling and infringing reproduction. The uncertainty of admission of post-sale restrictions in patent field remains insufficient to ensure the rights of purchasers, recycling businesses and patentees. Therefore, it is essential to advances Thai patent law to catch up with the growth of the awareness of environment and sustainability.