What Constitutes Contributory Infringement of a Patent in the United Kingdom?

In a recent case, the Court of Appeal has considered what constitutes contributory infringement. It has concluded that where the supplier knows that his product can, and probably will be modifed, to infringe, the supplier commits an offence.

Grimme, the patentee of European patent (UK) No. 730399, sued Derek Scott for infringement. The patent claim referred to potato separating machines having elastomeric rollers. The machines of Mr. Scott could be supplied with steel rollers . In Grimme v Scott [2010] EWCA Civ 1110, the Court of Appeal agreed with the court of first instance that the Scott machine did not directly infringe the patent under Section 60(1) of the Patents Act 1977.

"But the machines were designed so that the rollers are interchangeable. Thus those supplied with steel clod rollers can be changed by the ultimate user (or indeed a middleman) over to rubber rollers. Moreover they were marketed on that basis."

The Court of Appeal held that the supply by Mr. Scott of steel-rollered Evolution machines was a contributory infringement contrary to Section 60(2) of the Patents Act 1977.

Section 60(2), in part, states:

a person... 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... 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.

Giving the judgement of the Court of Appeal, Jacob LJ reported that the court had undertaken legal research itself and had asked judicial colleagues in Germany and Holland as to whether they had any relevant case law.

Per Jacob LJ:

"Section 60(2) creates a statutory tort, but it does not spring from any previous notional or common law tort. Its distinctive features, by way of contrast with common law tortious claims, are that the tort is actionable (1) even though what is supplied is capable of perfectly lawful, non-infringing use, (2) even though what is supplied never has been and may never in fact be used in a way directly infringing the patent in suit, (3) without any damage being suffered by the patentee, and (4) at the moment of supply, irrespective of anything that may or may not occur afterwards."

Having considered the...