Post-publication amendment of judicial rulings: Schutz v Werit revisited

In Schutz (UK) Ltd v Werit (UK) Ltd [2013] UKSC 16,, decided by the UK Supreme Court on 13 March 2013 (and noted here on PatLit) laid out some important guidance on when the provision of spare or replacement parts for a patented product might or might not infringe the patent. However, almost as much attention is now being paid to the fact that, after the ruling was published, it has been amended. The original version of the decision, at paragraphs 38 and 39, reads as follows:

"38 The House of Lords and this court have emphasised on a number of occasions the desirability of national courts following the established approach to infringement of the Technical Board of Appeal of the European Patent Office ("the EPO"), and the German Bundesgerichtshof ("the BGH") have taken the same view - see, most recently, Human Genome Sciences Inc v Eli Lilly & Co [2011] UKSC 51, [2012] 1 All ER 1154, paras 84-87, and Case Xa ZR 130/07.

39 The parties in this case have not referred to any relevant decision of the EPO, but we have been referred to four decisions of the BGH which consider what activities constitute "making" a patented article ..."

The version of the decision that appears on BAILII now reads:

"38. The House of Lords and this court have emphasised on a number of occasions the desirability of national courts following the established approach to validity of the Technical Board of Appeal of the European Patent Office ("the EPO"), and the German Bundesgerichtshof ("the BGH") have taken the same view - see, most recently, Human Genome Sciences Inc v Eli Lilly & Co [2011] UKSC 51, [2012] 1 All ER 1154, paras 84-87, and Case Xa ZR 130/07.

39 The parties in this case have not referred to any relevant decision of the EPO, as we are here concerned with infringement. However, it is worth addressing four decisions of the BGH which consider what activities constitute "making" a patented article.

Naturally there was no relevant decision of the EPO which the parties could have referred to the Supreme Court, since the EPO does not deal with patent infringement ..."

The issue that has troubled several patent practitioners is that there is no clear sign that the current version of the decision is not the same as the original.  The entry for the case on BAILII lists it as Schutz (UK) Ltd v Werit (UK) Ltd (Rev 1) [2013] UKSC 16, so presumably "(Rev 1)" indicates that the version online is the first revision of the text.  However, there is nothing at the top of the judgment to state that it has been amended, which means that anyone who reaches it via a direct hyperlink will not even see the "(Rev 1)".  A separate version of the ruling can be found on the Supreme Court's website, here, and that doesn't even have a "(Rev 1)".

In this particular instance it doesn't much matter, since the correction relates to an error that has no effect on the law itself, but it would be good to know when a ruling that has been delivered to the parties and subsequently published has been changed -- if only to ensure that lawyers don't make fools of themselves and disadvantage their clients by citing passages that have been amended or even removed.

Thanks go to Gary Moss (EIP) for forwarding the two versions of the ruling, though he modestly says that his colleague Darren Smyth spotted it first.