Crown use defence successful in telecom patent infringement case

In its ruling of  28 January 2020 (2020) EWHC 132 (Pat) (read here), Justice Douglas Campbell QC of the High Court of Justice of England and Wales  ruled in favor of the crown use defence in a  case of alleged infringement of patent EP (UK) 2,579,666 B1, entitled “Allocation of access rights for a telecommunications channel to subscriber stations of telecommunications network,” filed by IPCom GMBH against Vodafone Group PLC. The patent was one of a group belonging to IPCom that concern a 3G (UMTS) mobile phone standard. IPCom alleged infringement by Vodafone’s 3G systems of this patent as well as   patent EP 2 378 735.

it is all about finding the right Crown use...

The issues  before the Court concerned the construction and allowability of both unconditionally and conditionally amended claims.  However, what makes this case interesting was Vodafone’s reliance on an unusual line of defence, namely Crown use pursuant to s 55 of the Patents Act of 1977.

Vodafone used (and allegedly infringed) IPCOm’s patent under the framework of the Mobile Telecommunications Privileged Access Scheme (“MTPAS”), a system that provides privileged access  for  mobile phone networks to organisations involved in responding to an “Emergency” as defined in the Civil Contingencies Act 1994. The MTPAS system is activated by means of a request sent to a mobile phone network by or on behalf of the senior police officer in charge of the emergency response.

The general scheme of the Crown use defence is provided in ss. 55-59 of the Patents Act. Section 55 states that—

 “…notwithstanding anything in this Act, any government department and any person authorized 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”.

The Crown use exception thus gives  to the government the possibility, under appropriate circumstances,  to use, make, import, sell or offer to sell a patent without the consent of the patent holder.

Section 56 (2) provides that the “services of the Crown include: a) the supply of anything for purposes of foreign defence; b) the production of 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 (3) further provides that the “period of emergency” during which Crown use will be employed, will be any period beginning with such date as may be declared by the Order in Council to 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”. 

The court, interpreting the Crown use exception, had to first consider certain matters  that are characterized in the ruling as “easier points”. These were:

i)              There has to be written evidence of authorization by a government department.

ii)            The words “services of the Crown” do not necessarily mean that the use has to benefit the Crown itself directly.

iii)           The concept of the use for the Crown’s own benefit is a broad  concept.

Then followed  three more difficult question regarding Crown use:

Does s 56(2) provide an exhaustive list of “for the services of the Crown”?

The answer of the Court is “no”. Not only does  s 56  employ  the word  “include” before the three examples that are provided,  but  a broad interpretation also followed from  the term “Crown use” in s 59.

Does express authorization to do a specific act (or to perform a specific process) thereby imply an authorization to infringe a specific patent?

In the case at hand, Vodafone was authorized in writing by a government department to provide priority access to their network  in an emergency situation, but the authorization did not provide anything specific about patent rights.   Moreover, the MTPAS scheme did not grant an express permission to infringe this, or any other, patent.   The Court ruled that a specific mention to patent rights that may be infringed as a result of the emergency procedure is not necessary in order to invoke Crown use. Placing such a requirement on the government would be too demanding,  in particular with regards to telecoms, where the same emergency procedure might infringe several patents at the same time.

Furthermore, the court ruled that it was not necessary for Vodafone to show that it was necessary for them to infringe the patent. Although the Court ruled that the use of patents made by Vodafore under the MTPAS scheme is not a “public non-commercial use”, it further stated that  patent rights of a third party could not stand in the way of the government protecting its  citizens in an emergency.

Would the use in an emergency also cover testing the emergency system?

The question here was whether Crown use could also be invoked  with regards to Vodafone’s testing of the emergency system. Taking into consideration that Vodafone did not engage in excessive or in bad faith testing, nor did it engage in testing in connection with other activities, the Crown use defence  was also applied to MTPA testing.

In times where various  acute emergencies place a considerable burden on governmental authorities worldwide, providing a system where patent infringement is not a risk for those required to participate in such emergency schemes is obviously important. It is also obvious that in such situations where time (and secrecy) are crucial, making use of compulsory licenses (see Article 31 TRIPS) is not a feasible alternative.