THE ‘TEMPORARY PRESENCE RULE’ UNDER THE PARIS CONVENTION AS AN EXCEPTION TO PATENT INFRINGEMENT FOR VISITING FOREIGN VESSELS IN THE MARITIME INDUSTRY.

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IDORENYIN EKPENYONG

 

 

 

 

 Idorenyin Ekpenyong

The maritime industry refers to all activities relating to the sea, oceans, and waterways. It is one of the oldest and most important industries of our society with ancient linkages. It is responsible for transportation of large volumes of cargo across the world, encompassing various sectors such as shipping, shipbuilding, port operations, marine transportation, offshore oil, and gas exploration and many more.

The patent system has a long tradition, dating back several hundred years in Europe and countries such as the United States and the United Kingdom, and has become more and more standardized globally through international treaties in terms of operating rules and practices. While the societal benefits of the patent system as currently configured remain debated from the perspective of the global south, there is little doubt that legal protection of Intellectual Property (IP) is becoming increasingly important for developers of new technology. Well-established international agreements ensure that worldwide protection can be obtained for an invention, independent of the citizenship or country of residence of the inventor. In addition to acting as an incentive for innovation, this is intended among other things to contribute to a fair global marketplace through ensuring that the returns on investment in technological development are not diminished by counterfeit goods, or that the intellectual capital of developing countries can be protected to avoid unfair exploitation.

These international agreements on intellectual property, signed by practically all industrialised countries, also regulate how national patent rights can be enforced against vessels, vehicles, and aircraft of other countries.

A patent is the right granted to the ‘owner’ of an invention, and it can be anything ranging from products (gadgets and appliances) to services. A patent gives its owner the right to prevent others from making, using, importing, or selling the invention without approval. In other words, patent protects an invention, and grants to the owner the exclusive rights to use his/her invention for a limited period.

Patent rights are national in geographic scope as there is no such thing as a “worldwide patent”, (only international and regional protection procedures) and a patent must be obtained in each country where protection is desired. A patent is valid in the entire territory of the issuing country, which includes both land areas and, (importantly for maritime inventions) territorial waters. Since it provides the patentee with all commercial rights to the invention in the territory of the issuing country a patent would, in theory, be enforceable against any vessel entering or passing through the territorial waters of that country. However, there are international conventions regulating this for foreign ships, which include exemptions from patent infringement in certain situations.

This article discusses the ‘temporary presence’ exception under the Paris Convention for the protection of visiting ships against patent infringement when they accidentally enter territorial waters of foreign countries on the condition that both countries are party to the Paris Convention. It also seeks to discuss extensively on devices used exclusively for the needs of a vessel as contained in article 5ter.

This article is limited in scope to vessels, and devices forming the subject of a ship owner’s patent in the body of the vessel, in the machinery, tackle, gear and other ship accessories.

 

The Temporary Presence Exception for Foreign Ships.

The Paris Convention for the Protection of Industrial Property is an international treaty, first signed in Paris in 1883 by 173 contracting members, including most industrialized countries. The Paris Convention provides an important exception, which is that a patent issued in a member country cannot be enforced against a visiting ship belonging to another member country when that ship is engaged in international transport. There are also similar provisions for aircraft and land vehicles. The actual wording of Article 5ter of the Paris Convention stipulates:

In any country of the union the following shall not be considered as infringement of the rights of a patentee:

  1. the use on board vessels of other countries of the Union of devices forming the subject of his patent in the body of the vessel, in the machinery, tackle, gear and other accessories,
  2. when such vessels temporarily or accidentally enter the waters of the said country, provided that such devices are used there exclusively for the needs of the vessels.

In line with the Paris Convention exception, a few countries have implemented this exception in applicable local laws. For example, the Indian Patent Act provides that:

“Where a vessel owned by a person ordinarily resident in such country comes into India (including the territorial waters thereof) temporarily or accidentally only, the rights conferred by a patent for an invention shall not be deemed to be infringed by the use of the invention,

  • In the body of the vessel or in the machinery, tackle, apparatus or other accessories thereof, so far as the invention is used on board the vessel and for its actual needs only.

The UK patent law provides an exemption from infringement provided that the ship,

consists of the use, exclusively for the needs of a relevant ship, of a product or process in the body of such a ship or in its machinery, tackle, apparatus or other accessories, in a case where the ship has temporarily or accidentally entered the internal or territorial waters of the United Kingdom.”

Another example of implementation can be found in the laws of Ghana. The Ghana Patent Act provides that, the rights under the patent shall-

c) not extend to the use of articles on aircraft, land vehicles or vessels of other countries which temporarily or accidentally enter the airspace, territory or waters of Ghana.
        The Singaporean Patent Act also implemented similar provisions as it provides that,

 An act which, apart from this subsection, would constitute an infringement of a patent for an invention shall not do so if;

 (d) it 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 Singapore (including the air space above it and its territorial waters) or the use of accessories for such a relevant aircraft, hovercraft or vehicle,

A similar implementation is found in the Patent Act of Bangladesh, Botswana, Ghana, India, Jamaica, Kenya, Malawi, and Uganda.

The intention of draftsmen behind this exception is to avoid territorial patent rights from hindering international commerce. Obviously, in the absence of this exception, a shipowner would face different claims of patent infringement in the different ports he visits, as well as potentially subjecting itself to search and seizure of the ship, in furtherance of a national patent owner’s enforcement of patent rights.

Notably, the exception covers only the use of an invention, and it thereby protects shipowners involved in international transport during the normal operation of their fleet. In order to determine the impact of this provision for patent owners, it is necessary to analyse it in more detail and examine case law in which courts have applied this exception. The two main questions that need to be addressed are:

  1. Under what circumstances does a ship temporarily or accidentally enter the waters of another country?
  2. Which components are used exclusively for the needs of the vessel (and which are not)?

How is the descriptive term “temporarily” as used in Article 5ter of the Paris Convention for the Protection of Industrial Property, to be construed?

Defining temporarily as a specific length of time would be very difficult. Closest to a specific definition was proffered by a German court in the Rolltrailer case, in which the court noted that German domestic law relating to motor vehicles considers a stay of up to one year to be temporary. Based on this, the Hamburg District Court went on to state that for a stay to be considered non-temporary it would have to be of “at least several months.”

Most of the courts that have dealt with this problem have, however, adopted a different methodology in defining ‘temporary’, namely, to interpret it in light of the underlying purpose of Article 5ter. That is, a vessel entering a country with a sole purpose of taking part in international commerce, and then to depart immediately thereafter, is considered to enter temporarily. This includes, completing a voyage, turning, and starting a new voyage, but with the purpose of the visit as the key factor, not the specific duration of the stay. Hence, the distinction is between operations that are purely international, and those that involve domestic freight. A vessel involved in the movement of goods between domestic ports, even as part of an international route, would not fall under this definition of temporary.

This definition of ‘temporarily’ allows regular and frequent entries, a fact that is well illustrated by the Stena Rederi AB v. Irish Ferries Ltd case, which concerned the “Jonathan Swift”, a ferry registered in Ireland (a state that is both a member of the World Trade Organization (WTO) and party to the Paris Convention), which sailed between Dublin and Holyhead in Wales four times a day, spending about three hours in UK territorial waters.

The question at issue was therefore whether or not the activities of the vessel were covered by the foreign vessel’s exception to the patent holder’s rights. The patent holder was of the belief that they were not, as they said “temporarily” ought to be understood as meaning “an isolated occasion or casually”.

The English court found that the ferry was involved in interstate travel and that, even though they entered UK waters regularly and several times every day, each visit was temporary. Therefore, the UK patent in question could not be enforced against the vessel or its owners.

In fact, the Court of Appeal upheld the decision of the High Court, finding that the primary purpose of the term “temporarily” was to distinguish between vessels that essentially remained in the territorial waters, and those that left territorial waters to travel to a foreign country (firmly in accordance with the Hague Conference view). The fact that the vessel (a Catamaran) entered UK territorial waters frequently did not alter the fact that the intention was always to leave again and accordingly the activities of the ferry fell within the exception to the patent holder’s rights.

What would constitute an accidental entry has not been discussed much in the existing case law. An accidental entry could be an unplanned visit, such as a ship seeking refuge in a foreign port due to bad weather. Notably, there is no time limitation for an accidental entry, hence a patent holder would in theory not have any rights against such a vessel even if it remained in the country permanently. However, it is clearly not the intention of the Convention to allow vessels to accidentally enter a country and then engage in domestic commerce.

Devices Used Exclusively for the Needs of a Vessel.

It is worthy of note that only devices used exclusively for the needs of the vessel are exempted from patent infringement excluding cargo rather machinery and associated components for vessel propulsion are explicitly mentioned in the convention text. In addition to the machinery and propulsion systems, components whose removal will render the ship not seaworthy, i.e., without which the ship cannot operate safely or cannot operate at all are exempted. Examples of this include safety equipment, navigation systems, provisioning necessities for the crew, etc. Also, it should be noted that what is considered a need in individual cases may differ between ship types. Liquefied natural gas (LGN) tankers will need a cryogenic refrigeration system, whereas a sewage treatment plant may be essential on a cruise ship.

While it seems clear that the exception must apply to anything integral to ship operation, there will be many components for which it is not immediately clear whether they should fall under the exception. Tools for maintenance and repairs are, for example, needed by the vessel, although they are not part of the machinery as such. The same will be the case for computer-based voyage planning or cargo management systems, even though it is not impossible to operate the ship without them. Other components which are used for the needs of the vessel but that are not strictly essential for ship operation may include systems for exhaust gas cleaning. However, considering the broad interpretation of Article 5ter demonstrated in the available case laws, it appears very unlikely that a court would consider such systems to fall outside the exception.

Conclusion and Recommendation.

The intention of the lawmakers is that national patent rights should not hinder international trade or travel, and courts in several countries have interpreted the law from this perspective and have generally not allowed the enforcement of patent rights against foreign ships. In the absence of this exception, a shipowner would likely face different claims of patent infringement in the different ports visited, as well as potentially being subject to search and seizure of the ship, in furtherance of a national patent owner’s enforcement of a relevant patent.

However, courts should carry out proper interpretation of article 5ter of the Paris Convention when dealing with cases of patent infringement in the maritime industry, to avoid shipowners taking advantage of this exception to stay longer than they should on foreign waters when they are on international transport.

There is also a need for the draftsmen to incorporate in the article those “devices used exclusively for the needs of the ship” to avoid conflicting interpretations by different courts of the provision of article 5ter in the Paris Convention text. For instance, there are some inventions that are not used in or needed for the operation of the ship at all but are found in vessels.  For example, is a TV set or a video game in the crew common room used “exclusively for the needs of the ship”? A cruise ship needs to entertain its passengers; does that mean that games, and fitness equipment fall under this exception? Although only devices used exclusively for the needs of the vessel are exempted from patent infringement, in the author’s opinion it appears likely that a court would consider anything except cargo to fall under this definition.

Nigeria has been a contracting party to the Paris Convention since 1963, but is yet to enact a law to domesticate the international treaty and as such, “The Temporary Presence Rule” does not apply in its Marine and Aviation industry. The author recommends the domestication of the Paris Convention for the Protection of Industrial Property to bring the country into compliance with its internationally assumed obligations and to ensure that its IP laws are in step with global practices.

The National Assembly should enact laws incorporating the “Temporary Presence” exception in the Nigerian Maritime industry as this will not only avoid territorial patent rights from hindering international commerce but would also accord the country vessels the opportunity to enjoy the benefits that come with it when they are out on international transportation.

 

 


For further information on this article and area of law,
Please contact Idorenyin Ekpenyong at:
P. A. Ajibade & Co., Lagos by
Telephone (+234.703.8229.780), Fax (+234 1 4605092)
Mobile (+234.815.979.4218, +234.809.488.6972)
Email: iekpenyong@spaajibade.com
www.spaajibade.com

 


 

      1. Idorenyin Sylvester Ekpenyong, NYSC Associate Intellectual Property Department, SPA Ajibade and Co., Lagos, Nigeria.
      2. Mikalsen, P. Harlfinger, A.Roskilly, Patent Protection in the marine industry: International Legal Framework and Strategic Options. Proceedings of the IMechE Journals 1847 (Vol. 225) Part M. available at: https://citeseerx.ist.psu.edu/document?repid=rep1&type=pdf&doi=ed76853dc36f6f147a67d5d1bdfdaf83831528daaccessed 31st August 2023.
      3. See, https://www.linkedin.com/pulse/intellectual-property-rights-maritime-industry-smita-choudhary accessed 18th August 2023.
      4. These include the world wide “PCT route”, which allows patent application covering several countries to be filed in a single procedure, and regional system such as the European Patent Office, which can also examine and grant a bundle of national patents based on a single application. After a patent is granted, any dispute, such as infringement or patent validity questions, are handled individually by national courts. Patent Cooperation Treaty (Done at Washington on June 19, 1970, amended on September 28, 1979, modified on February 3, 1984, and on October 3, 2001).
      5. See,  https://www.wipo.int/export/sites/www/pct/en/docs/texts/pct.pdf accessed 31st August 2023.
      6. Paris Convention for the Protection of Industrial Property, 1883 (as amended on September 28, 1979), available at https://www.wipo.int/treaties/en/ip/paris/ accessed 31st August 2023.
      7. Ibid.
      8. Paris Convention for the Protection of Industrial Property, as last revised at the Stockholm Revision Conference, March 20, 1883. U.S.T.1583; 828 U.N.T.S. 305, available at https://www.wipo.int/treaties/en/ip/paris/ accessed 30th August 2023.
      9. Article 5ter of the 1883 Paris Convention for the Protection of Industrial Property.
      10. Section 49 Indian Patent and Designs Act 1970 (Act No 37, as amended up to Act No. 15 of 2005 1970.
      11. Section 60(5) (d) The United Kingdom Patent law 1977 (as amended) Chapter 37.
      12. Section 30 Ghana Patent and Designs Act, 2003. (Act 675).
      13. Section 66(2)(d) of the Singaporean Patent Act (Act 21 of 1994) Revised Edition 1995.
      14. Section 42 Bangledash Patent and Designs Act 2022 (Act No. V of 2022).
      15. Section 42 Botswana Patent and Designs Act 1996 (Cap.68:03).
      16. Section 30, Ghana Patents and Designs Act 2003 (Act 657).
      17. Section 49, Indian Patent and Designs Act (Cap. 216) 1970.
      18. Section 79(1)(d)(e) Jamaica Patent and Designs Act (No. 1 of 2020).
      19. Section 58(3) Industrial Property Act (No. 3 of 2001) Laws of Kenya.
      20. Section 19, Patents Act of Malawi, 2016 (Act No. 40 of 2016).
      21. Section 12 Patents (Amendment) Act, 2002 (Act 7 of 2002).
      22. Rolltailer. Landgericht Hamburg, GRUR Int., Heft 12, 703,1973.
      23. See, Stena Rederi AB v. Irish Ferries Ltd. R. P. C. 3 (UK Court of Appeal), 2003, National Steel Car, Ltd, v. Canadian Pacific Railway, Ltd. 357 F. 3d 1319) US Federal Circuit), 2004, Cali v. Japan Airlines Inc.
      24. Ibid.
      25. See, Stena Rederi AB v. Irish Ferries Ltd. R. P. C. 3 (UK Court of Appeal), 2003 and National Steel Car, Ltd.
      26. Moffat, M.A. “The St, Lawrence Seaway Review” Canadian Patent Reporter, 1959,31 (27) pp. 28-30, available at https://tc.canada.ca/en/corporate-services/consultations/st-lawrence-seaway-review-what-we-heard accessed 31st  August 2023.

     

     

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