If you are a designer of a new aircraft part, and have filed a UK patent application to protect the part domestically, you may wonder if you need to file foreign patent applications to protect the invention abroad.
Patents are territorial. A UK patent to an aircraft part could be used to stop someone, amongst some other acts, making, selling, or using that part in the UK. So, if a competitor is making or selling that part in the UK, or is using it on a UK aircraft, you can use the UK patent to take action against them.
For patents generally, if you would like protection in other territories, you will need to file a patent application in those different territories.
However, aircraft can transit between different countries. Therefore, it raises the question that, if you have a patent granted to an aircraft part in the UK, would it count as UK patent infringement if a foreign registered aircraft used that part and landed in or flew across the UK?
In that way your UK patent could offer you much greater protection, since a foreign aircraft operator may need to take a licence from you if they want to be able to fly to, or traverse, the UK.
If that were the case, you might only need to have a UK patent granted to give you strong protection across multiple countries – potentially saving you the costs associated with applying for foreign patents.
But, is this how the system works?
An Old Question
In fact, this is an old question, which was first considered with respect to ships.
This issue was first brought before a court in 1851 in Caldwell v. Van Vlissingen at the English Court of Chancery. A screw propeller patented in England was used on a Dutch ship which made stops in England. The patent owner requested an injunction against this, arguing that it did not matter that the ship originated from abroad – its presence in English waters was still an infringement on their patent rights.
The Court agreed with the patent owner and found that, under the legislation at the time, the use of the patented screw propellor on a Dutch ship in English waters was an infringement.
However, Parliament felt that such a position could hamper trade, and in response amended the law to provide an exemption to patent infringement for foreign originating vessels.
Such an exemption, in one form or another, has remained in patent law in the UK.
“Temporarily”
So, what requirements do foreign originating vessels or aircraft need to meet in order to benefit from this patent infringement exemption?
The current exemption requires the ship or aircraft to have “temporarily or accidentally” entered or crossed the UK, including its air space and territorial/internal waters.
But this raises the question as to what counts as “temporarily”.
An aircraft simply transiting UK air space would intuitively seem to only be above the UK temporarily.
But, what about, for example, if a US registered aircraft operates a route between the US and UK, such that it is lands in the UK every day – would that count as temporary? And so, if that US registered aircraft had a part which was patented in the UK, would that constitute infringement?
This question has previously been considered for ships in the case of Stena Rederi AB v. Irish Ferries Limited. Here a ferry, which allegedly included a part which would infringe a UK patent, was registered in the Republic of Ireland and sailed between the Republic of Ireland and the UK three or four times a day – spending about three hours in UK waters per visit.
The judge found that, although there were frequent visits, each was only ever “temporary”. Therefore, the ferry was found to be exempt from infringement.
So, it would seem that a foreign registered aircraft would not infringe a UK patent, even if it operated a regular route between the UK and another country.
Conclusion
For aircraft parts, it is therefore important to file patent applications in the UK and any foreign country in which you wish to have protection.
It is not sufficient to simply rely on your UK patent, and hope that it will cover foreign aircraft landing in the UK.
It may also be worthwhile considering applying for patent applications in the territories where your competitors or customers commonly register or own their aircraft.
If you would like assistance with drafting or filing patent applications, in the UK or abroad, please do not hesitate to call us on +44 (0) 1242 691 801 or fill in the contact form below.
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