1 December 2010Jurisdiction reportsSebastian Moore and Daniel Pearce

Indirect infringement of patents

This provision—which originates from article 26 of the Community Patent Convention and therefore should be interpreted consistently across its signatory states—was recently given a broad interpretation by the Court of Appeal in Grimme Maschinenfabrik GmbH & Co KG v. Derek Scott (t/a Scotts Potato Machinery).

S60(2) PA77 allows patentees to take action against suppliers of goods that are not themselves infringing, but that are used to infringe a patent, either in modified form or in conjunction with other goods. It says:

“Subject to the following provisions of this section, a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom.”

Scott, the defendant, sold two variants of a potato-sorting machine: one with elastomeric rollers and one with steel rollers. The version with elastomeric rollers was held to infringe Grimme’s patent directly; however, the version with steel rollers did not.

“In considering this, the court suggested that, in most cases, a normal in junction (i.e. simply restraining the defend ant from infringing the patent) would be granted and that it is for the defend ant to work out how to stop infringing use.”

Nevertheless, because end users of the machine with steel rollers were able to exchange them for elastomeric rollers (the machines were marketed by Scott on this basis), Grimme asserted that Scott’s supply of these machines fitted with steel rollers indirectly infringed the patent; that is, the machines were “means…for putting the invention into effect”. Having found the patent valid, the Court of Appeal examined the origins of S60(2) PA77 in the light of existing UK and Dutch cases, and in particular a number of German cases. The court concluded as follows regarding the knowledge and intention requirements of S60(2):

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