In a recent UK court decision between Siemens and GE in the renewable energy sector, the UK High Court considered the territorial scope of the Patents Act 1977.

Siemens held a UK patent, which was granted in 2015, directed towards a wind turbine, in which bearings were utilised in the rotor hub to provide structural support. Siemens alleged that this patent was infringed by GE’s Haliade-X turbines which were assembled at Dogger Bank, which is an offshore wind farm located over 130km off the North East coast of the UK. It was argued by Siemens that both the assembly of the Haliade-X turbines and the specific rotor hub part of the Haliade-X turbines infringed their patent.

The UK High Court concluded that Siemens’ patent was invalid due to a lack of an inventive step based on a prior art document. The prior art document in question was a wind turbine design featured in an article published in “Wind Energy” just before the patent’s priority date, which did not form part of the common general knowledge. In the assessment of inventive step, the judge considered whether it would have been obvious to progress the design disclosed in Wind Energy article into actual development. The judge held that the skilled person would have had enough confidence that the disclosed design was a real design rather than just a concept and found that the Siemens invention was therefore obvious in view of the Wind Energy article, as the configuration of the turbine was one of a small number of obvious routes forward from it.

In the UK, for patent infringement to occur the infringing product must comprise all of the features claimed in the patent. In the present case, the judge found that the Haliade-X turbine did not contain all of the claimed features and thus fell outside of the scope of the patent. Therefore, the Haliade-X turbines did not infringe Siemens’ patent based on a normal interpretation.

Siemens submitted further arguments stating that having all of the unassembled components of the Haliade-X turbine at the dock in the UK constituted an infringement through being a ‘kit of parts’. However, the judge declined to rule on this point as it was not necessary to the outcome of this case, as the patent was already found to be invalid.

Interestingly, the judge held that if the patent in question was in fact valid and the Haliade-X turbines did fall within the scope of the patent claims, the assembly of the turbine at Dogger Bank would not infringe Siemens patent as Dogger Bank does not fall into the territorial remit of the Patents Act 1977.

To infringe a UK patent, the infringing act must occur within the UK. The territorial scope of the Patents Act extends to areas designated under the Continental Shelf Act 1964 and the Petroleum Act 1998, which includes Dogger Bank, however only for limited activities as laid out in the Petroleum Act. Specifically, these limited activities are “activities 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”.

In the present case, the judge concluded that the assembly of the Haliade-X turbines at Dogger Bank does not constitute an ‘exploitation’ of the natural resources of the shore or bed of waters or the subsoil beneath it as no natural resources are being exploited; stating that “one can of course understand that taking living or non-living resources like hydrocarbons or seaweed and doing something with them is “exploitation” but drilling out some rock and doing nothing with it is not, in my view”.

This interpretation of the term exploitation has profound implications for patents directed toward offshore technologies, particularly if the components of the patented technology are assembled at an offshore location. To ensure that technologies within this highly complex field are effectively protected it is key to seek expert advice; the attorneys at Secerna are experts in the field of offshore renewable energy and have a wealth of experience in claim drafting in the renewable energy sector. If you would like any further information, please do not hesitate to contact us at docketing@secerna.co.uk.