The "Right to Repair": Potential impacts of EU Directive (EU) 2024/1799 on industrial property rights

The Repair Directive at a glance 

On 10 July 2024, the new European Directive (EU) 2024/1799 on the "Right to Repair" was published in the Official Journal of the EU (hereinafter referred to as the "Repair Directive"). It aims to guarantee consumers easier, faster and more transparent access to the repair of goods. The aim can be summarised as "repair instead of replacement". This is in line with the EU's long-term plan as part of the "Green Deal" to make Europe's future more sustainable and to reduce waste. 

What does the Repair Directive contain?

Free choice of repair service provider: The new Repair Directive obliges the manufacturer, for example in Art. 5, to provide comprehensive repair services at the request of a consumer. However, it is not only the (original) manufacturer who should or may carry out repair services. Art. 5 (8) makes it clear that consumers can also turn to "any repairer of their choice", irrespective of the manufacturer's repair obligation. The Repair Directive especially aims to promote competition between repairers. 

Use of refurbished goods: "Refurbished goods" shall also be used for repairs. Although this term is not defined in the Repair Directive, it is generally understood to mean remanufactured or “overhauled” used goods. According to the Repair Directive, such refurbished goods could also be provided as temporary replacement goods in the form of a loan for the duration of the repair or (at the consumer's request) may also constitute the final replacement good itself (see Art. 16 No. 4 c) and recital 42). 

Online platform as a source of information: According to Art. 7 (1) of the Repair Directive, a European online platform shall be created as a source of information in order to “find repairers and, where applicable, sellers of refurbished goods, purchasers of defective goods for refurbishment or community-led repair initiatives”. According to recital 31, the latter should include, for example, so-called repair cafes. 

Which products are covered by the Repair Directive?

The scope of application of the Repair Directive is limited. Household appliances, so-called "white goods", are primarily covered (e.g. washing machines, dryers, dishwashers, hoovers, refrigerators), but popular electronic goods are also covered (electronic displays, servers and data storage products, mobile phones, goods containing batteries for light means of transport). Welding equipment is also included. However, all of these are products whose components may be legally protected (e.g.

Legal challenges: Tension with IP rights

Although the EU's new concept is very welcome in principle, especially from a sustainability perspective, there are legal implications, particularly with regard to repair by third parties. One of these issues is the question as to how the "right to repair" can affect existing industrial property rights. While it is true that the consumer who turns to external repairers is not acting commercially, the situation is different for repairers themselves or for companies that remanufacture goods ("refurbished goods" within the meaning of the Repair Directive). These companies act commercially and can thus potentially infringe intellectual property rights. Therefore, there is a possible tension between the aim of the Repair Directive, on the one hand, to promote repairs (by external repairers not licensed by the manufacturer or IP right holder and/or using "refurbished" goods) instead of new purchases and, on the other hand, the IP rights of third parties regarding the goods to be repaired or components (to be repaired) therein.

This article does not claim to be a complete legal analysis. Due to the date of the Repair Directive, the fact that it has not yet been transposed into national law and the lack of specific case law, it is too early for this. However, this article aims to sensitise readers to the tension outlined above. It will focus in particular on possible consequences under patent law. Though the underlying problem can be generalised and transferred to other intellectual property rights, e.g. trademark and design rights (for a general overview of remanufacturing in connection with intellectual property rights, see here and specifically on patents here).

The principle of exhaustion as a starting point for assessing the repair

The principle of exhaustion, which also applies to patent law, is fundamental to the permissibility of repairs with regard to the protection of intellectual property. If a protected product is placed on the market by the patent holder himself or by a third party with his consent, the respective exclusive rights to this specific object also end (so-called exhaustion). In this case, the general public can use the product as intended (so-called intended use). However, the intended use must be distinguished from unauthorised new manufacture, which is not covered by exhaustion and remains with the patent owner.

Measures relating to the commissioning, maintenance and repair of the item are generally covered by the intended use of an item, which is why "simple repairs" should usually not pose a problem when implementing the Repair Directive. However, in individual cases, it can be difficult to distinguish between this and an infringing new manufacture of the patented item. 

In this context, at least since the Flügelradzähler (impeller counter) decision (German Federal Court of Justice, judgement of 4 May 2004 - X ZR 48/03), the German Federal Court of Justice (Bundesgerichtshof, BGH) has focused on whether the repair still preserves the "identity of the specific patented product already placed on the market" or whether a new product corresponding to the invention is created. According to the German Federal Court of Justice, such act is equal to new manufacture if the technical effects of the invention are reflected precisely in the replaced part, because the technical or economic advantage of the invention is realised again. This definition issue is highly dependent on individual assessment and largely usually always depends on the individual case. However, if this case-by-case assessment is made in favour of new manufacture under patent law, the repair company or the remanufacturing company risks being warned and possibly sued for patent infringement for "refurbished" goods.

Effects of the Repair Directive on intellectual property rights

This current legal situation is therefore in tension with the purpose of the Repair Directive and could place considerable legal limits on the expansion of the repair market desired by the EU. On the one hand, repair (possibly with refurbished goods) or replacement with refurbished goods is to be promoted in the internal market, while on the other hand patent holders could prevent precisely this in appropriate cases. This could also create a de facto monopoly position for patent holders for repairs and refurbishments, as the risk of patent infringement is perceived to be too big. The hoped-for increase in competition for repair services could thus fail to materialise or at least be diminished.

In the future, the question will arise as to how industrial property rights and the Repair Directive will interact and what concrete effects the Repair Directive will have on the prevailing case law. The European legislator has not yet provided a concrete answer to this question. Although intellectual property rights are mentioned in the Repair Directive, more detailed explanations on this, in particular on the above-mentioned tension, have not been provided. In fact, there is much to suggest that this is deliberately left to national legislators and national case law. Art. 5 (6) of the Repair Directive, for example, states that 

”Manufacturers shall not use any contractual clauses, hardware or software techniques that impede the repair of goods covered by Union legal acts listed in Annex II unless justified by legitimate and objective factors including the protection of intellectual property rights under Union and national law. Manufacturers shall, in particular, not impede the use of original or second-hand spare parts, compatible spare parts and spare parts issued from 3D-printing, by independent repairers when those spare parts are in conformity with requirements under Union or national law such as requirements on product safety or in compliance with intellectual property. This paragraph is without prejudice to the specific requirements of Union legal acts listed in Annex II and without prejudice to Union and national law providing for the protection of intellectual property rights.”

Recital 18 of the Repair Directive continues:

"[...] unless they are justified by legitimate and objective factors, including to prevent or restrict the unauthorised use of works and other subject matters protected by intellectual property rights under Union and national legal acts, in particular Directives 2001/29/EC (12), 2004/48/EC (13) and (EU) 2019/790 (14) of the European Parliament and of the Council."

These excerpts suggest that the European legislator wants to promote sustainable repairs at a favourable price, but does not take into account the concrete effects and interactions with regard to industrial property rights and would rather leave this to the Member States.

Conclusion and possible options for handling at national level

Overall, the Repair Directive therefore brings together different interests: (i) the interests of service providers to prospectively offer repairs or remanufacturing without significant restrictions, (ii) the interest of the EU and consumers in a far-reaching repair market and (iii) the interest of the IP right holder in the widest possible protection of his creative work. It remains to be seen whether and how the German or other EU legislator will resolve this interaction in the transposition of the Directive.

Patent protection lapses for environmentally relevant products: In principle, it seems possible that patent protection for certain, particularly environmentally relevant products that have been placed on the market with the patent holder's consent could be lapsed or that the patent holder's consent to repair (or, to be precise in terms of patent law, to new manufacture) could be assumed. However, it is highly questionable whether the legislator will choose this option. 

Balance of interests in the individual case by taking into account the Directive: It is also conceivable that, in future, national case law will also include aspects and considerations of the Repair Directive when balancing interests in context of the assessment of a new manufacture under patent law and that the tension will tend to be decided by the courts in favour of free repair. However, the latter would not contribute to resolving the original conflict, but would only shift it from the legislative level to the level of a judicial dispute. 

Everything remains the same: Last but not least, it is of course also possible that everything will remain as it is and patents will continue to take precedence over the EU's objectives under the "Green Deal" in individual cases. In this case, it remains to be seen whether this would result in a future strengthening of the patent holders' repair monopoly, because the repair of goods would continue to be promoted. If so, the "right to repair" would be more a kind of "right to patent-free repair".