VODAFONE GROUP PLC Crown use
Under sections 55 to 58 of the Patents Act 1977 ("PA 1977"), the government has powers to use or permit others to use a third party's patent without first seeking permission from the patentee, provided such acts are authorised in writing by a government department. These powers are not all-encompassing - a patentee may sue for infringement if the use of their patent falls outside these provisions - but in certain circumstances they allow the government to use a third party's patent quickly, without first obtaining consent.
The recent case of
It was alleged that Vodafone had infringed IPCom's patented 3G technology by using it to provide access to Vodafone's network for emergency responders under the Mobile Telecommunications Privileged Access Scheme (MTPAS).
Vodafone relied on Crown use as a defence to infringement, and succeeded for the following reasons:
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Vodafone was authorised in writing by a government department to provide priority access to its network in an emergency situation. The authorisation did not explicitly permit Vodafone to use technologies covered by third party patents, or name IPCom's patent, but it was still held to be sufficient to invoke Crown use. The court held that there was no need for the authorisation specifically to mention any patent rights that may be infringed, because this would place a heavy burden on the relevant government department, particularly when an authorised act may infringe several patents at once.
- Vodafone did not need to prove that it was necessary to practise IPCom's patent specifically to do the authorised act, because otherwise this defence could not be relied upon if it is possible to implement two different patents to produce the desired effect.
The case also addressed the meaning of "for the services of the crown", a requirement under s.55 PA 1977 for Crown use to be made out. It was held that the statutory list of "crown services" under s.56(2) PA 1977 is not exhaustive, so other acts could also fall into that category, including Vodafone's use in response to emergencies.
Finally, the case addressed whether Vodafone's use of IPCom's technology to run tests on its response to MTPAS requests, and its keeping of equipment that infringed IPCom's patent, could also constitute Crown use, i.e. whether these acts fell under the "use in an emergency" for which Vodafone was authorised to infringe. It was held that they were also Crown use, because Vodafone's testing was not excessive or in bad faith, and it should be allowed to keep the infringing equipment for so long as the MTPAS scheme was in operation.
Comment
While not widely relied upon, the Crown use provisions for patents form an important part of the government's arsenal to respond quickly and effectively to situations that require use of a third party's proprietary IP.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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