Boegli-Gravures SA v Darsail-ASP Ltd EWHC 2690 Pat (2009): Test Purchases

The High Court in the case of Boegli-Gravures SA (‘BG SA’) v Darsail-ASP Ltd (‘D Ltd’) EWHC 2690 has held that a test purchase of an essential element of a patented invention carried out by a private investigator on behalf of the patentee is not itself an infringement, but is evidence of a threat to infringe.

BG SA (using a private investigator) procured a test purchase from D Ltd prior to commencing patent infringement proceedings against D Ltd. BG SA owned a patent relating to the embossing of packaging foils by use of rollers with pyramidal or conical teeth. BG SA’s claims were against D Ltd for supplying rollers which BG SA considered to be an essential element of the invention.

Section 60(2) of the Patents Act 1977 provides:

“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.”

The part of the section in issue was whether the supply to the private investigator was the supply “to a person other than a licensee or other person entitled to work the invention”. However the High Court held that BG SA failed to prove that supply to the private investigator was a supply to someone “other than a licensee.”

However, the High Court did consider D Ltd’s activities as evidence of a threat to infringe because D Ltd had no idea whether the investigator was entitled to work the invention or not and made no enquiries as to this.

Further, BG SA argued that D Ltd’s website contained an offer to supply infringing rollers to the United Kingdom, whereas D Ltd argued that the website was an offer to supply the world at large and was not directed at the UK market. The High Court agreed with D Ltd in this regard.

Lastly, BG SA sued a director of D Ltd arguing that he was a joint tortfeasor with D Ltd. The High Court upheld this part of BG SA’s claim because the director’s dealings with the private investigator had gone beyond merely performing his constitutional role in the company to the extent that he was personally involved in committing the infringing act.

This case highlights:

– The law relating to test purchases;

– The locations to which websites are directed where there is no specific country identified; and

– The liability of directors.

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