Intellectual property

No contributory patent infringement by offering mere wear parts, says German Federal Court

Published on 27th Jan 2023

The last decision of the German Federal Court of Justice (Bundesgerichtshof, BGH) on the delimitation of a permissible “intended use” from an impermissible “new manufacture” under patent law already dates back more than five years. Now, in its decision Scheibenbremse II (Judgement of 8 November 2022, ref. X ZR 10/20), the German Federal Court of Justice has further differentiated this question of delimitation and thus overturned the judgement of the lower court (Higher Regional Court Dusseldorf, Judgement of 23 January 2020, ref. 2 U 13/19).

From a patent law perspective, the decision has a considerable impact on the trade in wear parts and ensures more competition there. At the same time, the requirements for contributory patent infringement are increased.

People in a meeting and close up of a gavel

Merits on the case

The patent in suit protects a disc brake consisting, inter alia, of a brake carrier and wear plates of a certain type. According to the claim wording of the patent, the wear plate is provided for the interchangeability.

The defendant sells brake pad sets as spare parts which are suitable for the plaintiff's disc brake models. Components of the delivered set are, among others, two wear plates.
The plaintiff considers this to be a contributory patent infringement. The lower instance affirmed such contributory patent infringement. Now the German Federal Court of Justice has a different opinion.

The grounds for the decision

The legal basis for the decision is the so-called principle of exhaustion. This is based on a balancing of interests in which the patent holder's interest in the economic exploitation of the invention is weighed against the general interests in the unrestricted use of a product previously placed on the market with the consent of the patent holder - in the present case the disc brakes.
In this context, according to the case law, an act can usually only be equal to a new manufacture if the technical effects of the invention are reflected precisely in the replaced part, because then the technical or economic advantage of the invention is realised again.

The German Federal Court of Justice has now clarified this and ruled that the technical effects of an invention are only reflected in certain parts and their installation leads to a new manufacture displacing the exhaustion effect if these parts are designed in a specific way adapted to the invention in order to be able to fulfil their function. This can be achieved, for example, by a specific design of the part to be replaced.

However, according to the German Federal Court of Justice, the requirements are not met if the decisive effect of the parts to be assessed consists solely in the fact that they wear out. No technical function would be added to the product concerned by replacing a component that was designed as a wearing part (and which is limited to this). It would merely re-create the conditions for the product to achieve the intended lifetime. However, this preservation of the lifetime was one of the acts which a lawful purchaser and his successors were in principle entitled to perform. A different assessment would only be possible if the invention had further effects and at least one of these effects was reflected in the replaced part. 

The rule/exception ratio developed by the German Federal Court of Justice would be turned into its opposite if the patent holder would also reserved the right to replace a mere wearing part; this would lead to an excessive impairment of the legitimate interests of the (lawful) users.


The decision is to be agreed with in its outcome. With convincing arguments, the German Federal Court of Justice denies a “new manufacture” under patent law because the wear plates to be replaced are mere wear parts that have to be replaced in the course of time (even according to the teaching of the patent). Therefore, the German Federal Court of Justice correctly attributed the replacement of the wear plates to the “intended use” of the disc brakes according to the patent, which is why the purchasers of the disc brake are still "entitled" within the meaning of Section 10 (1) of the German Patent Act (Patentgesetz, PatG). 

The decision can be described as a landmark decision for wear parts. For this reason, it is also correctly  designated for the collection of decisions of the German Federal Court of Justice (BGHZ). This decision will increase competition in the wear parts trade.

Due to the requirement of an additional technical function, the German Federal Court of Justice establishes a kind of step-by-step examination within the legal assessment of contributory patent infringement. The requirements for contributory patent infringement are thus increased.

Our expert in patent law, Dr Stephan Reisner, comments on the decision in the journal GRUR (Gewerblicher Rechtsschutz und Urheberrecht). Therefore, you can find a more detailed analysis of the judgment in Reisner, GRUR 2023, 137 ff. - Verschleißteile im Kontext einer mittelbaren Patentverletzung und des Erschöpfungsgrundsatzes. Zugleich Besprechung von BGH „Scheibenbremse II“.


* This article is current as of the date of its publication and does not necessarily reflect the present state of the law or relevant regulation.

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