Late last year Siemens Gamesa Renewable Energy A/S was unsuccessful in asserting infringement of one of its European patents against General Electrical Co in the UK.
The patent concerns the mounting of a bearing within the rotor hub of a wind turbine and was asserted by Siemens against GE’s Haliade-X wind turbine (which had, in fact, already been barred from sale in the US on the basis of infringement of a related patent).
Ultimately, the Court found that the patent was not valid and, even if it were, the Haliade-X did not fall within the scope of the claims. Of particular interest, however, is that the Court found that even if the patent were valid and even if the Haliade-X was found to fall within the scope of the claims, there would still not have been infringement under the Patents Act 1977, because the alleged infringing activity would not be within the territorial scope of the Act.
Background
GE’s Haliade-X wind turbine is an offshore wind turbine. Offshore wind turbines are typically bigger than their land-based cousins and the Haliade-X is no exception – each one of its three blades is over 100 metres long. This is great for energy conversion generation, but not so great for ease of installation. The size of offshore wind turbines means that it is often more efficient to transport the wind turbine as separate parts which are assembled on site. This is the case with the Haliade X.
Siemen’s case was solely concerned with proposed installations of Haliade-X wind turbines at the Dogger Bank wind farm, which is off the northeast coast of the UK, about halfway between the UK and Denmark. Patents are, of course, territorial. Given the main claim of the patent is to a fully assembled wind turbine and given the Haliade-X wind turbines would only be fully assembled on site at Dogger Bank, it had to be considered whether Dogger Bank fell within the territorial scope of UK patent law.
What is the law?
Section 60 of the Act set out that a UK Patent is only infringed if an infringing act occurs in the United Kingdom. Section 132 of the Act, fortunately, expands upon this; the “United Kingdom” includes the territorial waters of the UK and the Isle of Man. This section also provides that some specific activities in some specific areas (specified by the Continental Shelf Act 1964 and the Petroleum Act 1998), even though outside of the UK, can infringe a UK patent.
Dogger Bank is not in the Isle of Man, nor is it in the territorial waters of the UK (those terminate 12 nautical miles off the coast and Dogger Bank is over 50 nautical miles off the UK coastline). The question was whether the installation at Dogger Bank would fall into the final category mentioned above.
Exploration or exploitation of natural resources
It was uncontested that Dogger Bank was within a region designated under the Continental Shelf Act 1964 – the “area” requirement was met. The question was therefore whether it was an activity falling within section 11(2)(a) of the Petroleum Act 1998. In particular, an activity:
“connected with the exploration of, or the exploitation of the natural resources of, the shore or bed of waters to which this section applies or the subsoil beneath it;” (emphasis added)
The Court found it was not. There was no question that installation and operation of a wind turbine is not exploration, but more consideration was needed to determine whether fixing a wind turbine to the seabed is exploitation of the natural resources of the seabed. The Court’s ultimate finding was that using the mere existence of the seabed (i.e. as a fixing point) does not amount to exploiting its natural resources. So, even if the Haliade-X had been found to fall within the scope of the main claim, and even if the main claim were found to be valid, there would still not have been infringement by GE.
Final thoughts
While the main claim of the patent had territorial problems, by following good claim drafting practice, Siemens did have other options in case this became a real issue. In addition to the main claim, Siemen’s patent includes a further independent claim to the rotor hub itself. Unlike the fully assembled wind turbine (which will only come into existence outside of the UK), the rotor hub of the Haliade-X will exist within the UK and its territorial waters.
This serves as a great reminder to those drafting patent applications, particularly inventions in the context of an offshore environment. It is vital to think about where the invention might ultimately be used, in what form it might be imported or sold, and where it might be assembled. Then, within that context, it is imperative that the claims are drafted to capture direct infringement, where possible. Contributory (or indirect) infringement cannot be relied upon as a backup in circumstances where assembly occurs offshore, because of the “double territory” requirement: for contributory infringement to be found, both the supply and the putting of the invention into effect must be in the UK.
What do you do, however, if you can’t claim the invention in a way that would capture direct infringement in the UK (and its territorial waters)? For example, what if the invention relates to a method of installing an offshore wind turbine or operation of an offshore wind turbine? In those cases, the most appropriate path may be not to file a patent application at all, and instead rely on the invention remaining a trade secret.
In short, the territorial issue of offshore inventions adds another aspect that should be thought about in terms of patent strategy and should be thought about early on in the process. While this might seem like a unique problem now, it’s only going to increase in importance as new technologies (such as floating offshore wind) allow offshore power generation to move further out to sea and out of the patent jurisdiction of any particular country.
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