Under U.K. patent law, there is a defence to patent infringement in respect of acts that consist of the use, exclusively for the needs of a relevant ship (or plane or lorry), of a product or process in the body of the vehicle or in its machinery or other accessories, where the alleged infringement has temporarily or accidentally entered U.K. territories. This case held that Irish Ferries Limited did not infringe Stena’s patent despite the fact that the Irish ship entered U.K. waters frequently and periodically, staying berthed in the United Kingdom when weather conditions demanded.
Two Stena companies brought a claim, under a European patent entitled "Superstructure for Multi-hull Vessels." The dispute concerned the frequent use of a high-speed catamaran owned by Irish Ferries for their ferry service between Dublin in Ireland and Hollyhead in the United Kingdom. Irish Ferries denied infringement and based their defence upon a relatively obscure section of the U.K. Patents Act 1977, which provides that there is no infringement where a ship has temporarily or accidentally entered U.K. territorial waters. The ferry’s homeport was Dublin in Ireland and, where possible, it berthed there overnight. On each trip it would spend several hours in U.K. territorial waters and, if weather conditions were poor, might stay in U.K. territorial waters overnight. Stena argued that the juxtaposition of the terms "temporarily" and "accidentally" within the relevant section of the U.K. Patents Act was of significance in that the former took meaning from the latter. That is, they argued that "temporarily" did not mean the reverse of "permanently," but it instead meant "on isolated occasions or casually." Clearly on this basis, the defence would not apply to the Irish Ferry, which was regularly, frequently and persistently entering U.K. territorial waters.
In arriving at his decision, the judge examined the travaux preparatoires for the Paris Convention for the Protection of Industrial Property from which the defence derived, and a judgement of the District Court of Hamburg in Rolltraller (GRUR Int. 1973), which indicated that regular and periodic entries into a country were covered by the defence, the purpose of which was to ensure that trade and the carriage of persons between countries was not hindered by patent rights applied to means of transport. The word "temporarily" should be construed in the context of "inter-state passage," its primary purpose being to distinguish between vehicles engaged essentially in internal operations and those travelling between countries. For these reasons questions of regularity, frequency and persistency had little to do with determining whether a vessel was temporarily within U.K. territories. Put simply, "temporarily" meant "for a limited period of time" and nothing more. Accordingly, the judge upheld the defence and Irish Ferries did not infringe.
The decision in this case has implications for any alleged infringer whose business concerns modes of transport between countries, particularly in Europe. Such a transport provider has an option to invoke this defence if the circumstances of the case permit.
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.
