Government Powers To Use Third Party IP Rights

In these times of extraordinary government measures, we thought it would be interesting to discuss a recent case that addresses "Crown use" - the government's ability to use or permit others to use a third party's IP rights without prior consent from the patentee. We also review the government's powers to use third party IP rights without compensating the owner in times of emergency.

Crown use

Under sections 55 to 58 of the Patents Act 1977 ("PA 1977"), the government has powers to use a third party's patent without first seeking permission from the patentee. These powers are not all-encompassing - a patentee has the same right to sue the government for patent infringement as it does to sue any other party if the government's use of the patent falls outside these Patents Act provisions - but in certain circumstances they allow the government to use or permit others to use a third party's patent quickly, without first needing to enter into protracted discussions with the patentee.

Section 55 PA 1977 provides that a government department or person authorised in writing by a government department may do several acts in relation to a product or process protected by a third party's patent that would normally constitute infringement, for the services of the Crown. These acts include making, using or importing a product, and even selling it in restricted circumstances, and using a patented process. The government authorisation can be given before or after the act in question takes place.

While the government does not need to seek permission from the patentee prior to using his patent, the relevant government department is required to notify the patentee as soon as practicable after the use has begun, and, under normal circumstances, must also pay the patentee a royalty for such use.

IPCom GmbH & Co KG v Vodafone Group Plc

The recent case of IPCom GmbH & Co KG v Vodafone Group Plc, [2020] EWHC 132 (Pat) addressed Crown use as a defence to patent infringement. The case looked in detail at what exact act the government department in question must authorise in writing to rely on the defence, as well as the scope of the phrase "for the services of the Crown" under sections 55 and 56 PA 1977. It also considered whether running tests that involve the third party's patented technology could fall within the government's authorisation, and therefore constitute Crown use for the purpose of this defence.

In this case, it was alleged that Vodafone had...