Washington International Law Journal


Scott M. Tobias


In its decision in Canon v. Recycle Assist, the Japanese Intellectual Property High Court held that Recycle Assist had infringed on Canon’s patent for a printer ink cartridge by importing used Canon cartridges that had been cleaned and refilled with ink by a third party. The court found that the third party had modified essential elements of Canon’s patented ink cartridge, and therefore the modifications constituted not permissible repair, but infringing and impermissible remanufacture. The court defined essential elements as those intended to solve the technical problems present in similar, prior inventions. Unfortunately, the court failed to define clearly how to identify the technical problems that an invention is intended to overcome. This lack of clarity will have a chilling effect on businesses that recycle used ink cartridges. Such companies will now have no way of knowing for certain whether a Japanese court will find they have infringed on the patents of original equipment manufacturers. Because the availability of recycled cartridges benefits consumers by lowering cartridge prices and benefits the environment by promoting reuse, the court should revisit its decision and reformulate its rule for repair in order to encourage cartridge recycling. The court should modify its rule for permissible repair by removing the technical problem test entirely and adopting the broader United States standard that allows repair so long as the useful lifetime of the patented product has not expired. If the court retains the essential element test, it should create an exception and permit repair when the essential element modified is a staple good. Alternatively, the court could adopt the United States patent misuse doctrine, giving an accused infringer a defense when it can show that the patent holder unfairly tied its patented product to an unpatented, staple good in order to gain a market advantage.

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