How Broad Is the Crown Use Defence?

IPCOM GMBH AND CO. KG VS VODAFONE GROUP PLC AND OTHERS [2020] EWHC 132 (PAT)

Crown Use is a little used provision of patent law. However, a recent decision has considered its breadth and might inform its use in the current fight against the Covid-19 Coronavirus pandemic.

How Broad Is the Crown Use Defence?

"Crown Use", by which the government can order the infringement of the patent under particular circumstances, is a provision of the UK Patents Act 1977 that is seldom used. However, in the case of IPCom vs Vodafone, this seldom used provision has been bought to the fore and the defence of Crown Use has been successfully used for what would otherwise be infringing acts.

The Crown Use provisions of the UK Patents Act are appended to this article for completeness. To summarise: under section 55 a government department or any other person authorised in writing by a government department can infringe a patent without the proprietor's consent for the purposes of the Crown. Section 56 lists three circumstances which are considered to be Crown Use: foreign defence purposes; the production or supply of specified drugs and medicines; and the production of, use of, or research into atomic energy. Also, section 59 lists further special provisions whereby Crown Use can be invoked during an emergency.

IPCom vs Vodafone is one of the few cases to decide on the interpretation of these provisions of the patents act.

Covid-19 Coronavirus Pandemic

These provisions of the patent act are given new relevance and new urgency by the current Covid-19 coronavirus pandemic. As reported in the media, the prime minister and the health secretary appear to be on track to place Britain's industry on a " war footing "in order to meet the likely demand for material for meeting the challenge of treating a large number of people with severe coronavirus infections. In particular, the manufacture of ventilators and, potentially, production of antiviral medications and/or immunisations. These materials and equipment are normally the result of concentrated research and development by individuals and companies and valuable intellectual property is produced and assiduously protected. However, the current circumstances mean that it is likely that the clinically relevant embodiments of these technologies will be required with an urgency and on a scale that the IP owners had no way of expecting and have no way of servicing. This is reflected in the government's recent plan to repurpose the production lines of major companies to produce ventilators for treating those severely affected by Covid-19.

The mechanism by which the government can override the rights of the owners of intellectual properties in order to exploit them for the greater good are the Crown Use provisions outlined above. It appears likely that these will be bought into play and that companies will produce apparatus that would normally infringe intellectual property rights under the aegis of the Crown Use provisions.

IPCom vs Vodafone

Turning briefly back to the technology underlying the IPCom vs Vodafone decision, IPCom's patent relates to a method for controlling the authorisation of a particular mobile device to be given access to a telecommunications channel at a particular time. This is important because all mobile devices have a class number associated with their SIM card. Ordinary consumer-commercial devices are randomly assigned a class between 0 and 9. However, further classes numbered 11 - 15 exist and these classes related to devices for particular groups of users. For example, class 14 relates to devices which belong to the emergency services and class 12 related to devices which related to the security services. The present case concerns devices which belong to the emergency services.

Thus, the method of the patent enables the network to broadcast an authorising bit that differentiates between the special device classes of the emergency services and the mobile devices of normal consumers. This difference allows the network base station to authorise only devices in the special group to access the channel immediately and thus give them priority access. In this way, the emergency services are guaranteed access to the telecommunications system and unfettered communication. The remaining bandwidth is still available to normal consumers but the base station effectively conducts a lottery to determine whether or not the consumers will be able to access it. Thus, in an emergency situation, those who need to communicate most reliably and most quickly are given priority access. With this in mind, in the UK, the government created the Mobile Telecommunications Privileged Accessed Scheme ("MTPAS") to enable such a system for emergency situations in the UK. Enabling this system requires that a senior person, e.g. a senior police officer, sends a request to the network providers, such as Vodafone, that emergency access is required.

During the legal proceedings, the judge found that an amended set of claims were both valid and essential for operation of this technology.

In their defence, Vodafone successfully pleaded that its using the relevant long term evolution (LTE) access control mechanism under the MTPAS system followed by a request by an authorised person was covered by the defence of Crown Use.

While it was common ground between IPCom and Vodafone that Vodafone had written authorisation from the Crown to provide access to its network under the MTPAS system there were three main points of dispute:

1. The interpretation of the provision "for services of the Crown" and whether using the claimed invention in response to an MTPAS request were such services;

2. Whether possessing and testing the allegedly infringing equipment that was required to respond to an MTPAS request is an infringement beyond fair use for servicing an MTPAS request; and

3. Whether an authorisation under Crown Use to carry out a specific act implied an authorisation to infringe a patent that is not mentioned in the authorisation in order to complete that specific act.

Regarding Point 1:

IPCom asserted that section 56(2) sets out an exhaustive list of the activities which constitute "for the services of the Crown". They further argued that if this was not an exhaustive list, there was little utility in the further list in section 59. However, both Vodafone and the comptroller of the UKIPO argued that the use of the word "includes" in the statute meant that the list under section 56 was open-ended. The judge agreed with this and further found that the list at section 59 did not imply the limit of section 56. The judge gave an even broader interpretation that it did not follow that Crown Use had to be directly for the benefit of the Crown but that use by or for the protection of the Crown services such as the armed forces, in the course of their duties was sufficient. Thus the use of the MTPAS system constituted use "for the services of the Crown" because it is triggered by a request from a senior police officer operating under Cabinet Office authority in connection with allowing emergency service responders to better operate and serve the public.

Regarding Point 2:

Within the aegis of this need it follows that possessing and testing the equipment for catering to a MPTAS request were ancillary acts and therefore also fell within the scope of the Crown Use defence because it would be illogical to exclude them.

Regarding Point 3:

Regarding whether the authorisation to provide priority access to a mobile network under MTPAS amounted to an authorisation for Vodafone to infringe IPCom's patent, even though the authorisation did not identify any particular IP rights, it was noted that section 55 of the UK Patents Act does not define how the authorisation should operate. Following a review of the case law, the judge found that there was not binding legal judicial opinion and therefore it was open to him to choose between the positions that the parties argued.

Thus the judge held that where a written authorisation identified a specific act, then there is an implied right for the recipient of that authorisation to infringe any given patent in the course of conducting that act. Furthermore, this authorisation is irrespective of whether or not it is possible to do the authorised act without infringing that patent. In addition, the judge considered that as a point of policy, the burden for deciding to infringe the patent should fall on the person authorising the infringing acts, rather than the person carrying out those acts. The judge considered that this interpretation was a more natural reading of section 55 and did not require consideration of "a raft of secondary questions as to whether it was also 'necessary' to infringe "Patent X". Difficulties arising from such questions were simply obviated by the judge's broad interpretation of section 55.

Conclusion

Thus, the provisions from Crown Use have been rarely considered and are now interpreted broadly and with a focus on achieving the act authorised by the Crown.

Such a broad interpretation would appear to match the "emergency" nature of some of the Crown Use provisions. Such an interpretation not only lends itself to emergency situations but also the need for concerted and rapid technological development in spite of competing intellectual property rights.

It appears that we might find ourselves in such a situation now. As I write, there are approximately 35 different companies attempting to produce a vaccine for the Covid-19 coronavirus. Not all will be successful but most will make progress and will necessarily generate IP rights. Cooperation may not always be possible between competitors but the overriding need for such a vaccination might trigger the Crown Use provisions in order to reach a goal that is urgently required for the common good. Thus the decision of IPCom vs Vodafone, though it relates to a completely different area of technology and a very different type of emergency, appears prescient in regard to the potential for Crown Use's involvement in the present emergency.

Crown Use Provisions

Section 55: Use of patented inventions for services of the Crown

(1) Notwithstanding anything in this Act, any government department and any person authorised in writing by a government department may, for the services of the Crown and in accordance with this section, do any of the following acts in the United Kingdom in relation to a patented invention without the consent of the proprietor of the patent, that is to say;

· (a) where the invention is a product, may;

(i) make, use, import or keep the product, or sell or offer to sell it where to do so would be 42 incidental or ancillary to making, using, importing or keeping it; or

(ii) in any event, sell or offer to sell it for foreign defence purposes or for the production or supply of specified drugs and medicines, or dispose or offer to dispose of it (otherwise than by selling it) for any purpose whatever;

· (b) where the invention is a process, may use it or do in relation to any product obtained directly by means of the process anything mentioned in paragraph (a) above;

· (c) without prejudice to the foregoing, where the invention or any product obtained directly by means of the invention is a specified drug or medicine, may sell or offer to sell the drug or medicine;

· (d) may supply or offer to supply to any person any of the means, relating to an essential element of the invention, for putting the invention into effect;

· (e) may dispose or offer to dispose of anything which was made, used, imported or kept in the exercise of the powers conferred by this section and which is no longer required for the purpose for which it was made, used, imported or kept (as the case may be), and anything done by virtue of this subsection shall not amount to an infringement of the patent concerned.

(2) Any act done in relation to an invention by virtue of this section is in the following provisions of this section referred to as use of the invention; and "use", in relation to an invention, in sections 56 to 58 below shall be construed accordingly.

(3) So far as the invention has before its priority date been duly recorded by or tried by or on behalf of a government department or the United Kingdom Atomic Energy Authority otherwise than in consequence of a relevant communication made in confidence, any use of the invention by virtue of this section may be made free of any royalty or other payment to the proprietor.

(4) So far as the invention has not been so recorded or tried, any use of it made by virtue of this section at any time either;

· (a) after the publication of the application for the patent for the invention; or

· (b) without prejudice to paragraph (a) above, in consequence of a relevant communication made after the priority date of the invention otherwise than in confidence; shall be made on such terms as may be agreed either before or after the use by the government department and the proprietor of the patent with the approval of the Treasury or as may in default of agreement be determined by the court on a reference under section 58 below.

(5) Where an invention is used by virtue of this section at any time after publication of an application for a patent for the invention but before such a patent is granted, and the terms for its use agreed or determined as mentioned in subsection (4) above include terms as to payment for the use, then (notwithstanding anything in those terms) any such payment shall be recoverable only;

· (a) after such a patent is granted; and

· (b) if (apart from this section) the use would, if the patent had been granted on the date of the publication of the application, have infringed not only the patent but also the claims (as interpreted by the description and any drawings referred to in the description or claims) in the form in which they were contained in the application immediately before the preparations for its publication were completed by the Patent Office.

(6) The authority of a government department in respect of an invention may be given under this section either before or after the patent is granted and either before or after the use in respect of which the authority is given is made, and may be given to any person whether or not he is authorised directly or indirectly by the proprietor of the patent to do anything in relation to the invention.

(7) Where any use of an invention is made by or with the authority of a government department under this section, then, unless it appears to the department that it would be contrary to the public interest to do so, the department shall notify the proprietor of the patent as soon as practicable after the second of the following events, that is to say, the use is begun and the patent is granted, and furnish him with such information as to the extent of the use as he may from time to time require.

(8) A person acquiring anything disposed of in the exercise of powers conferred by this section, and any person claiming through him, may deal with it in the same manner as if the patent were held on behalf of the Crown.

(9) In this section "relevant communication", in relation to an invention, means a communication of the invention directly or indirectly by the proprietor of the patent or any person from whom he derives title.

(10) Subsection (4) above is without prejudice to any rule of law relating to the confidentiality of information.

(11) In the application of this section to Northern Ireland, the reference in subsection (4) above to the Treasury shall, where the government department referred to in that subsection is a department of the Government of Northern Ireland, be construed as a reference to the Department of Finance for Northern Ireland.

Section 56: Interpretation, etc., of provisions about Crown use

(1) Any reference in section 55 above to a patented invention, in relation to any time, is a reference to an invention for which a patent has before that time been, or is subsequently, granted.

(2) In this Act, except so far as the context otherwise requires, "the services of the Crown" includes -

· (a) the supply of anything for foreign defence purposes;

· (b) the production or supply of specified drugs and medicines; and

· (c) such purposes relating to the production or use of atomic energy or research into matters connected therewith as the Secretary of State thinks necessary or expedient; and "use for the services of the Crown" shall be construed accordingly.

(3) In section 55(1)(a) above and subsection (2)(a) above, references to a sale or supply of anything for foreign defence purposes are references to a sale or supply of the thing;

· (a) to the government of any country outside the United Kingdom, in pursuance of an agreement or arrangement between Her Majesty's Government in the United Kingdom and the government of that country, where the thing is required for the defence of that country or of any other country whose government is party to any agreement or arrangement with Her Majesty's Government in respect of defence matters; or

· (b) to the United Nations, or to the government of any country belonging to that organisation, in pursuance of an agreement or arrangement between Her Majesty's Government and that organisation or government, where the thing is required for any armed forces operating in pursuance of a resolution of that organisation or any organ of that organisation.

(4) For the purposes of section 55(1)(a) and (c) above and subsection (2)(b) above, specified drugs and medicines are drugs and medicines which are both;

· (a) required for the provision of;

(ai) primary medical services under the National Health Service Act 2006, the National Health Service (Wales) Act 2006, part I of the National Health Service (Scotland) Act 1978 or any corresponding provisions of the law in force in Northern Ireland or the Isle of Man or primary dental services under the National Health Service Act 2006, the National Health Service (Wales) Act 2006, or any corresponding provisions of the law in force in Northern Ireland or the Isle of Man, or

(i) pharmaceutical services, general medical services or general dental services under Chapter 1 of Part 7 of the National Health Service Act 2006 or Chapter 1 of Part 7 of the National Health Service (Wales) Act 2006 (in the case of pharmaceutical services), Part II of the National Health Service (Scotland) Act 1978 (in the case of pharmaceutical services or general dental services), or the corresponding provisions of the law in force in Northern Ireland or the Isle of Man, or

(ii) personal medical services or personal dental services provided in accordance with arrangements made under section 17C of the 1978 Act (in the case of personal dental services), or the corresponding provisions of the law in force in Northern Ireland or the Isle of Man, or

(iii) local pharmaceutical services provided under a pilot scheme established under section 134 of the National Health Service Act 2006, or section 92 of the National Health Service (Wales) Act 2006, or an LPS scheme established under Schedule 12 to the National Health Service Act 2006, or Schedule 7 to the National Health Service (Wales) Act 2006, or under any corresponding provision of the law in force in the Isle of Man, and

· (b) specified for the purposes of this subsection in regulations made by the Secretary of State.

Section 57: Rights of third parties in respect of Crown use

Section 57A: Compensation for loss of profit

Section 58: References of disputes as to Crown use

Section 59: Special provisions as to Crown use during emergency

(1) During any period of emergency within the meaning of this section the powers exercisable in relation to an invention by a government department or a person authorised by a government department under section 55 above shall include power to use the invention for any purpose which appears to the department necessary or expedient;

  • (a) for the efficient prosecution of any war in which Her Majesty may be engaged;
  • (b) for the maintenance of supplies and services essential to the life of the community;
  • (c) for securing a sufficiency of supplies and services essential to the well-being of the community;
  • (d) for promoting the productivity of industry, commerce and agriculture;
  • (e) for fostering and directing exports and reducing imports, or imports of any classes, from all or any countries and for redressing the balance of trade;
  • (f) generally for ensuring that the whole resources of the community are available for use, and are used, in a manner best calculated to serve the interests of the community; or
  • (g) for assisting the relief of suffering and the restoration and distribution of essential supplies and services in any country or territory outside the United Kingdom which is in grave distress as the result of war; and any reference in this Act to the services of the Crown shall, as respects any period of emergency, include a reference to those purposes.

(2) In this section the use of an invention includes, in addition to any act constituting such use by virtue of section 55 above, any act which would, apart from that section and this section, amount to an infringement of the patent concerned or, as the case may be, give rise to a right under section 69 below to bring proceedings in respect of the application concerned, and any reference in this Act to "use for the services of the Crown" shall, as respects any period of emergency, be construed accordingly.

(3) In this section "period of emergency" means any period beginning with such date as may be declared by Order in Council to be the commencement, and ending with such date as may be so declared to be the termination, of a period of emergency for the purposes of this section.

(4) A draft of an Order under this section shall not be submitted to Her Majesty unless it has been laid before, and approved by resolution of, each House of Parliament.

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