9 April 2020
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As discussed in a previous blog, the UK Government has the power to authorise (either in advance, or retrospectively) acts that would otherwise infringe a patent, where the purpose is for “services of the Crown”. The provision is similar to a compulsory license, and the Government must compensate the patent proprietor for losses incurred by enabling third parties to carry out the authorised acts. However, because there are fewer restrictions around, for example, the timing and the steps that must be taken prior to allowing Crown Use, it can be more applicable to emergency situations than compulsory licensing.

In light of the COVID-19 pandemic, the Government could invoke Crown Use, for example to ensure supply of medicines, vaccines, or medical equipment.

How Crown Use can be implemented in practice was clarified in a recent High Court decision, where the defendants were successful in a Crown Use defence. 

The case

The case ([2020] EWHC 132 (Pat)) focused around the defendant’s (Vodafone) alleged infringement of the claimant’s (IPCom) patent EP(UK) 2,579,666 B1 “Allocation of access rights for a telecommunications channel to subscriber stations of a telecommunications network” in implementing the Mobile Telecommunication Privileged Access Scheme (MTPAS). MTPAS is a framework that enables certain SIM cards (such as those of members of the emergency services) to have privileged access to a mobile network in the event of a major incident being declared. This can help ensure that, even if the network is congested, designated handsets can still place calls. The patent in question relates to authorising access to a communication network for a privileged user class.

Vodafone argued that the alleged infringing acts were permitted under Crown Use, and the argument was ultimately accepted by the presiding judge, Justice Douglas Campbell QC. In assessing this argument, Justice Campbell QC considered a number of points of interpretation of the legislation, and summarised and clarified how the relevant sections 55-59 of the Patents Act 1977 are to be understood.

The Patents Act 

Section 55 states that “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”.

Section 56 clarifies that “‘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”.

Section 59 defines further provisions regarding Crown Use during a period of emergency, and includes a longer list of purposes for which Crown Use may be used. A period of emergency is one that has been declared by Order in Council.

Crown Use 

Justice Campbell QC first addressed a number of (as he described them) “easier” points around the scope of Crown Use authorisation:

  • There has to be evidence in writing that the act (or acts) have been authorised by a government department;
  • The words “for services of the Crown” are not limited to uses that benefit the Crown directly, but also include use by members of Crown services (such as the armed services);
  • The concept use for the Crown’s own benefit is itself broadly applicable.

He then moved on to assess three further questions.

1) Does s. 56(2) provide an exhaustive list of "for the services of the Crown"?

IPCom had argued that the longer list of permitted acts in s. 59 (that can be carried out under a state of emergency) pointed to s. 56(2) being an exhaustive list of the permitted acts outside of a period of emergency. Justice Campbell QC disagreed. The use of the word “includes” in the Act, he concluded, indicates that the examples are intended to be non-exhaustive.

2) What form must the written authorisation take? Does it need to be express authorisation to infringe a specific patent, or does authorisation to do a specific act thereby imply an authorisation to infringe a specific patent?

Vodafone had established that they had authorisation to implement MTPAS protocols within their network. The authorisation made no reference to any particular patent. Justice Campbell QC considered different interpretations of the requirement of written authorisation, including express authorisation to work a specific patent, authorisation to carry out an act which is not possible without infringing the specific patent, or simply written authorisation to carry out an act even when a requirement to infringe the patent has not been established. He concluded that the third of these was the most applicable, due to the challenges of establishing that it is necessary to infringe a specific patent in carrying out a certain act. Therefore, Vodafone’s authorisation was sufficient.

3) Does Crown Use extend to acts such as testing, even if these acts are not themselves for the services of the Crown?

In the circumstances, there was no suggestion that Vodafone’s testing was excessive, carried out in bad faith, or as a cover for other activities. Justice Campbell QC concluded that, where acts such as testing are necessary to enable the alleged infringer to carry out the infringing act when required by the relevant government department, such acts can also fall within the Crown Use exclusion.  

Conclusion 

Crown Use enables government departments to permit acts that would otherwise infringe a patent or patents under a wide range of circumstances. In light of the COVID-19 pandemic, this clarifies that medical devices, for example, though not falling within the category of “specified drugs and medicines” could still be manufactured or imported under Crown Use provisions.

Authorisation to carry out the act itself is sufficient to imply authorisation to infringe the patent, even without establishing that infringing the patent is necessary to carry out the act. Again, where an apparatus is protected by multiple patents, this enables the Government to provide authorisation without requiring specific knowledge of each potentially infringed patent.

Related acts such as testing, or to keep equipment capable of performing an infringing act, though not specifically for the services of the Crown, may still be permissible, in particular if it is to ensure that the act can be carried out when required by the relevant government department. Provided that the authorised party does not act in bad faith, therefore, authorisation under Crown Use can enable ancillary acts which may also infringe, in addition to acts required directly for the specific authorised purpose.

While it remains to be seen whether the Government will consider the present circumstances around COVID-19 necessitate invoking Crown Use, it is nonetheless interesting to see an example of how this might be done, and interpretation by a judge of the relevant legislation.

Richard is a part-qualified patent attorney and member of the Engineering and ICT practice group. He has three years of experience in drafting and prosecuting patent applications in a wide variety of technical fields, working with both multinational corporations, and UK and internationally based SMEs. Richard has an MSci in Physics from the University of Bristol, and a PhD in Electrical Engineering from the University of Cambridge. His PhD research focused on solution processing of graphene and related 2D materials to produce functional inks and composite materials for electronics and photonics. Prior to joining Mewburn Ellis, Richard was a co-founder and director of a spin-out seeking to further develop and commercialise the graphene technology he developed during his PhD research.
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