Directors liable for infringing patent!

Boegli-Gravures SA v (1) Darsail-Asp Ltd (2) Andrei Ivanovich Pyzhov [2009] EWHC 2690

This case is a warning for all directors and shareholders of a company which may be infringing a third party’s intellectual property rights.

This case concerned a patent for embossing foil for packaging. The claimant brought a claim against the company and a director/shareholder of the company on a joint liability basis.

The patent was held to be infringed and that because the director had taken a personal involvement in the act of infringement, outside of his role as a director, that he was jointly liable with the company.

In this case the Defendant had negotiated with the Claimant on a personal level and took the decision to supply the infringing products.

There are two important points to note here:

1) all directors should undertake negotiations on behalf of the company and take important decisions at board level;

2) conversely if bringing infringement action against a company with no assets it may be worth pursuing the directors if they are acting in person and not within the powers given to them by the company.