When is someone "authorised" to use a patented invention for the services of the Crown and therefore immune from patent infringement?

By Katharine Stephens

02-2021

Katharine Stephens considers the Court of Appeal's decision in IPCom GmbH & Co KG v Vodafone Group plc & others (19 February 2021). The court overturned the decision at first instance and held that Vodafone did not have a defence of Crown use in relation to acts done when responding to an emergency request as part of a scheme known as the Mobile Telecommunications Privileged Access Scheme ("MTPAS") or during testing for this purpose.  

Background

Cases in relation to Crown use are rare and this is the first such case in relation to mobile phone network infrastructure equipment.  More commonly, the issue arises in relation defence contracting and therefore it was no surprise that the Secretary of State of Defence ("SSD") intervened in the appeal.  

Crown use provides a defence where a person is authorised in writing by a government department to do any act for the services of the Crown which would otherwise be an infringement of a patent[1]. The patent owner is still compensated for such use, but the government department concerned is responsible for doing so.  Similar provisions apply in relation to designs.
 
In this case, IPCom's patent related to controlling mobile phones’ access to a random access radio channel between the mobile and the base station.  It combined two different access regimes: a bypass mechanism available to a group of privileged users only; and access based on random assignment for the remainder. This allowed the group of privileged users to gain access in preference to the non-privileged users. 

Vodafone were authorised by the Cabinet Office to operate MTPAS, a mechanism for the government to gain privileged access to mobile phone networks for organisations involved in responding to an "emergency" as defined in the Civil Contingencies Act 1994.  IPCom claimed that this mechanism infringed their patent.  In defence, Vodafone claimed that they had immunity under the Crown use provisions to operate MTPAS because they were "authorised in writing by a government department".  

The rival interpretations

Under section 55 of the Patents Act 1977, a defendant to a patent infringement action can only take advantage of the Crown use defence if the written "authorisation" has been given "in relation to a patented invention".  There were three possible interpretations canvassed before the judge as to what this phrase meant:

  1. It required an express authorisation to work the patent in question;
  2. It required either an express authorisation to work the patent or an authorisation to do a particular act in circumstances where that act necessarily infringed the patent;  
  3. It extended to an authorisation to do a particular act even if that act did not necessarily involve infringing the patent.

On the facts, it was technically possible to comply with MTPAS requests without infringing IPCom's patent.  Therefore, Vodafone could only succeed if the third interpretation was correct and, at first instance, the judge held that this was indeed the correct interpretation.

Decision of the Court of Appeal

Lord Justice Arnold, giving judgment for the court, held that the third interpretation was wrong and, although it was not strictly necessary for him to decide, he thought the second interpretation was to be preferred.

He gave 13 reasons for coming to this conclusion.  His first reason was that the language of section 55 of the Patents Act 1977 required that the authorisation

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