Patents at sea

Patents are a territorial right. A UK patent provides you with a monopoly right for your claimed invention, but only in the UK. A UK patent will not, for example, allow you to stop people copying your invention in the US – you would need a US patent to achieve that. In most cases, the territorial nature of a patent is relatively straightforward; if someone is making, selling or even keeping a copy of your patented widget on UK soil (or if they import the product onto UK soil), it is within the territorial coverage of a UK patent. 

What happens, though, if that widget is a component of a ship that is off the coast of the UK? Maybe the ship enters UK territorial waters, but only briefly – can you use a UK patent to stop that ship using the patented widget? 

What is the law?

The Patents Act 1977 provides that a UK Patent is only infringed if an infringing act occurs in the United Kingdom. The Act, helpfully, also provides that the “United Kingdom” includes the territorial waters of the UK and the Isle of Man. Additionally, some specific activities (mostly concerned with oil and gas) can be an infringement even in some particular areas that are outside of the UK, its territorial waters and the Isle of Man.

The territorial waters of the UK is a region of the sea that extends 12 nautical miles from the “baseline” (essentially the low-water line). There is, then, a contiguous zone that extends a further 12 nautical miles, and an exclusive economic zone (EEZ) that extends 200 nautical miles from the baseline. While the UK is entitled to exercise its sovereign rights so as to extend patent protection to the EEZ and contiguous zone, it has not elected to do so. Hence, except in relation to some specific activities, acts that occur beyond the territorial waters (i.e. more than 12 nm out at sea), will not be at risk of patent infringement under UK law.

What about ships?

The law may therefore appear to provide a relatively simple answer to the question posed above regarding infringement of a patented component on a ship. If the ship comes into the UK territorial waters, then it is in the “UK” in patent terms, and there is an infringing act. It is, of course, not as simple as this.

The Patents Act provides express exemption from patent infringement for some ships (and their machinery, tackle, apparatus or other accessories) where such a ship temporarily or accidentally enters the territorial waters of the UK (or indeed internal waters, such as rivers). The purpose of this legislation (and for equivalent exemptions for hovercraft and airplanes) is to prevent national patents having an overly restrictive effect on international trade. 

The exemption applies only to ships that are registered outside of the UK, in a country that is a member of the World Trade Organisation or a party to the Paris Convention. This represents most countries in the world, but there are notable exceptions in the context of shipping. The Marshall Islands, for example, is neither a member of the WTO or party to the Paris Convention, but is the third largest ship registry in the world (by deadweight tonnage). As an aside, the reason the Marshall Islands – a chain of islands in the Pacific with a population of about 40,000 people – has so many registered ships is because it is a so-called “flag of convenience”. A flag of convenience is where a ship owner registers a ship in another country (i.e. a country other than the country of actual ownership), in order to be bound by more favourable regulations, at least from a commercial perspective.

What is temporary?

Still, most ships entering UK territorial waters temporarily will fall under the exemption provided under the Patents Act. The question, of course, is what does temporarily mean? Helpfully, that was tested in Stena Rederi AB v Irish Ferries Ltd, which concerned the “Jonathan Swift”, a ferry registered in Ireland (a state that is both a WTO member and party to the Paris Convention), which sailed between Dublin and Holyhead in Wales four times a day, each time spending about three hours in UK territorial waters. 

The court found that “temporarily”, as used in the Patents Act, means “transient” or “for a limited period of time”. The frequency of the Jonathan Swift’s trips were deemed irrelevant - all that mattered was that each of those trips did not result in a permanent stay. The repeated, but transient, entry of the Jonathan Swift into UK territorial waters was therefore found to fall within the exception to patent infringement. 

Final thoughts

Where a vessel is registered outside of the UK (as is common) and enters UK territorial waters on a temporary basis (regardless of how often that occurs) it is likely to be exempted from infringement of a UK patent. In fact, this provision stems from the Paris Convention, which means it is a relatively consistent part of patent law across the world. 

How, then, does one protect an invention that forms part of a ship that is used, for example, in international trade or as a ferry between two countries? One option might be to file a patent in those jurisdictions that are popular registries (remember, the exception tends not to apply to the registered country). The issue with that is that at least some of those jurisdictions have IP systems that are still developing and that are relatively untested. Instead, a better approach may be to target manufacturers (or importers) of a component, through claims to the product itself, and by filing your patent applications in countries where such manufacturing is likely to take place.

The optimal approach will ultimately depend on factors such as the nature of the invention, how and where it is likely to be used and where it might be manufactured and/or imported. The overarching advice is, therefore, to be aware that inventions at sea present a unique problem in terms of patent coverage and to think very carefully about this at the very early stages of seeking patent protection.