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11 Apr 2021 - News

How is patent counterfeiting assessed in the case of ships, aircraft, etc.?

It is common knowledge that patents have a territorial connotation; that is, they protect the owner from counterfeiting within the borders of the State where the patent was filed.

It is therefore legitimate to ask what happens if the patent concerns a device intended to be installed on vehicles, such as ships or aircraft, or a device necessary for their operation, which then move and are not uniquely associated with a single State.

Each State specifically answers this question and establishes specific laws for the identification of counterfeiting on board vehicles such as aircraft, ships or the like.

The World Intellectual Property Organization (WIPO) summarises the positions and laws of the individual member countries at the following link:

http://www.wipo.int/scp/en/exceptions/

The page has a table listing the Member States and their position on exceptions and limitations to patent rights, with particular reference to section 6 which includes vehicles such as ships, aircraft or the like.

Most Member States have declared that the objectives in defining laws regulating exceptions and limitations must ensure that international transport is not hampered by exclusive rights deriving from patents.

That is why these States recognise Article 5-ter of the Paris Convention as valid.

Specifically addressing the free introduction of patented objects forming part of locomotive instruments, the article states as follows.

In each of the countries of the Union, the following shall not be considered infringements of the rights of the patent holder:

1) The use on board ships of other countries of the Union, of means which are the subject of its patent, in the body of the ship, in the machines, tools, apparatuses and other accessories, when said ships will temporarily or accidentally enter the waters of the country, as long as these means are used exclusively for the needs of the ship;

2) The use of patented means in the construction or operation of air or land locomotion instruments of other countries of the Union or of the accessories of such instruments, when they temporarily or accidentally enter the country.

Each Member State specifically interprets this article, but it can be confirmed that the principle underlying the rule is that the “free transit” of patent subject matter should not be impeded.

Thus, in general,

most of the provisions applicable in the Member States confirm that the effect of a patent does not extend to the use of patented inventions on the body of foreign ships and to the use of patented inventions in the construction or operation of aircraft and land vehicles, temporarily or accidentally entering a territory, as long as such inventions are used exclusively for the needs of those transport means.

The terms “temporarily or accidentally” are interpreted by the Member States in the literary sense: they therefore include all entries into the State which are limited in time, up to a maximum of a few weeks, and have no permanent basis.

In particolare negli Stati Uniti la Corte ha interpretato il termine “temporaneamente” come un “ingresso all’interno dello Stato per un periodo di tempo limitato, con lo scopo esclusivo di intraprendere un commercio internazionale”.

In particular, in the United States, the Court interpreted the term “temporarily” as “entry into the State for a limited period of time, with the sole purpose of engaging in international trade”.

In summary, in most States the devices and methods functional to the operation and management of vehicles temporarily in transit cannot be considered infringements of patents filed within the State of transit. In some Member States this interpretation also relates to spare parts, in the sense that the spare parts necessary for the operation and management of vehicles in transit can be imported into a Member State without infringing any patents filed within that State.

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