IP Review Winter 2019/20

12 IP review winter 2019/20 Out of this world thinking: innovative filing strategies In order to be an effective commercial tool, it is important for companies making use of patents to employ an effective and carefully considered filing strategy. This applies to companies reaching for the stars as well as those which are more down to earth. It is important to realise that there is not a “one size fits all” approach when it comes to filing strategies, and while in some cases it may be sufficient to file exclusively where your key markets are, there may be some benefit in thinking outside the box a little. Being relatively innovative when devising the filing strategy is likely to involve taking into account the desired outcomes and priorities of the company itself. Due consideration may also need to be applied to the industry as a whole, the relative size of different markets and/or the practices of competitors. For example, say a competitor is operating in a large number of territories, you may wish to look at where the competitor manufactures their products – even if this state is not a key territory for your business, your position may be significantly strengthened by hampering the competitor at the source. Another clever example is that of an industry involving large, heavy vehicles or machinery which are generally shipped by sea. In this case, it may be sufficient to seek protection only in countries having deep water ports that must be passed through in order for the products to reach their final destination. A competitor will then be unable to import products covered by the patent scope via these deep water ports without infringing the rights. Ultimately this manoeuvre may block the competitor from reaching key markets. Of course, in this case consideration must also be given to manufacturing locations and alternative transportation means or routes for delivering the products. A further area illustrating the importance of a carefully considered filing strategy is the space industry. By way of background, in 1967 the major space powers created the Outer Space Treaty, and whilst this is chiefly concerned with military matters, it does provide us with some hints as to how patents apply off-planet. In short, the treaty recites that an object launched into space remains under the jurisdiction of the state to which it is registered. Accordingly, it can be assumed that the intellectual property law of the nation state to which a space object is registered applies to any inventions made, used or sold on or in that object. It should be noted that presently, the US is the only country whose patent act actually states this explicitly. Those familiar with maritime law will recognise this as a somewhat modernised version of ‘the law of the flag’ which governs the legal status of activities taking place on ships in international waters. One possible complication comes to light when considering an existing international agreement that governs the transport of patented products. Article 5ter of the Paris Convention (known as the doctrine of temporary presence) limits the application of national rights to certain products as they move through national waters and airspace (without making port). The question remains as to whether or not this guaranteed freedom of transport applies to objects travelling through space, or to the transportation of patented articles to an off-planet location via a launchpad in a foreign state. This is therefore certainly something to consider when selecting countries to file in – is it worth seeking protection where infringing articles are manufactured, instead of (or in addition to) where they will be launched? A further question exists when one considers the Outer Space Treaty with more scepticism. If an object in space is considered to form part of the territory of the state in which it is registered, a private company could in theory avoid infringement by registering their object in some minor state in which no intellectual property rights have been registered. As such, it is possible that an infringing third party satellite could supply data to US consumers, whilst being immune to a US infringement action. One can only assume this issue will be patched by updates to the law as the space industry continues to develop. In the meantime, solutions that have been proposed include the prohibition of data being received from such objects in the country in which patent protection has been obtained, analogous to the maritime equivalent whereby an infringing object is stopped at customs. However, again this question prompts one to look