20/12/2013
We’ve all heard the song (too?) many times, but what would happen if Santa entered the UK on his sleigh which included an invention protected by a granted patent in force only in the UK? Would you be able to stop him?
Firstly, you would have to try to catch Santa and his sleigh to obtain evidence of the infringement, which might not be too easy!
Secondly, Santa would probably escape infringement since the UK Patents Act 1977 provides an exception to infringement if the infringing act is one done privately and for purposes which are not commercial.
Thirdly, a further exception to infringement is provided when the infringing act consists of the use of a product or process in the body or operation of a relevant aircraft, hovercraft or vehicle which has temporarily or accidentally entered or is crossing the United Kingdom (including the air space above it and its territorial waters).
Surely Santa’s visit cannot be regarded as “accidental” but will it be regarded as “temporary” and will his sleigh be a “relevant” aircraft or vehicle?
Relevant aircraft and so on are those registered in, or belonging to, any country, other than the United Kingdom, which is a member of the Paris Union established by the Paris Convention of 1883 or to any member of the World Trade Organisation, other than the UK. In practice, a relevant aircraft or vehicle etc will be one registered in, or belonging to almost all countries outside the UK, although there are exceptions to this, and the North Pole is one of them!
Regarding whether Santa’s acts of delivering presents might be regarded as temporary, in Stena v Irish Ferries [2002] E.P.C. 50, 990 and [2003] R.P.C. 36, 668, a ferry operating between its home port of Dublin and Holyhead was deemed to only ever be temporarily in UK waters and therefore should fall within this exception for infringement.
Therefore, assuming Santa’s sleigh is registered in a relevant country and provided that his visit is temporary, then he would surely avoid infringement. And quite right too.
Of course, the above Gedankenexperiment relates a very specific set of facts. Nevertheless, it does serve to illustrate that patents have limited territorial effect, and that it is important to obtain granted patents in jurisdictions where potential infringers have their registered offices or place of business.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.
