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Patent Law: What is the Temporary Presence Defense to Claimed Infringement?

By John DiGiacomo

In patent law, there is a rarely-used and little-known defense to a claim of patent infringement called the “temporary presence defense.” The defense has its origins in English law and was recognized here in the United States in a Supreme Court case from 1856. It is now codified in the Patent Act at 35 USC § 272. In essence, the doctrine prevents a US patent holder from suing for patent infringement against a party owning a vessel, aircraft or vehicle that temporarily (or accidentally) enters US territory.

Section 272 provides as follows:

“The use of any invention in any vessel, aircraft or vehicle of any country which affords similar privileges to vessels, aircraft or vehicles of the United States, entering the United States temporarily or accidentally, shall not constitute infringement of any patent, if the invention is used exclusively for the needs of the vessel, aircraft or vehicle and is not offered for sale or sold in or used for the manufacture of anything to be sold in or exported from the United States.”

From this, we can see five legal elements that must be met for the defense to be applicable:

  • Use of patented technology on a vessel, aircraft or vehicle
  • Use of such patented technology “exclusively for the needs” of the vessel, aircraft or vehicle
  • Temporary or accidental presence in the United States
  • Reciprocity — the vessel, aircraft or vehicle must be from a nation that provides a similar defense
  • The invention is not offered for sale or sold or used in or exported from the United States

There have only been a few cases interpreting 35 USC § 272. The main case is National Steel Car, Ltd. v. Canadian Pacific Ry., 357 F. 3d 1319 (Court of Appeals, Federal Cir. 2004). That case involved railway cars owned by Canadian Pacific Railway which traveled to and from the United States transporting cargo and materials. A United States patent holder sued for patent infringement related to a patent for a particular type of railway car used to haul lumber called a depressed center-beam flat car.

In response, Canadian Pacific raised the temporary presence defense with success.

With respect to the first legal element, the patent holder argued the vessel or vehicle at issue was the train, not the rail cars. Further, the patent holder argued that registration of the vessel was key and, since the trains were powered by locomotives owned and operated by United States companies on the United States side of the border, the trains were not “foreign.” Thus, 35 USC § 272 did not apply.

The Court of Appeals rejected the argument. The court held that the train was not the proper focus; rather the railway cars themselves. Further, the railway cars were not cargo and could have independent motion. As such, since the railway cars were owned by Canadian Pacific, the court held that they were clearly foreign-owned vessels or vehicles within the meaning of 35 USC § 272

On the second element, the patent holder argued that “exclusively for the needs” of the vessel was limited to the idea of propulsion or helping the trains function. The court rejected this argument, holding that structural integrity was also essential to – exclusively for the needs of – the railway cars.

On the third element, the patent holder argued that the railway cars were not “temporarily” in the United States because, in practice, each car spent nearly 50% of its life on the United States side of the border. Again, the court rejected the patent holder’s argument. Because the railway cars were intended to enter the United States and then return to Canada, they were “temporarily” present regardless of how much actual time was spent in the United States.

On the fourth element, there was no dispute since Canadian courts recognize a version of the temporary presence doctrine.

On the final element, there was a heated factual dispute about whether the railway cars might be made available for sale in the United States. However, ultimately, the court held that no such actual sales had been offered or consummated. As such, the final element was established. For more information or if you have an invention or design that you want to patent, contact the patent lawyers at Revision Legal at 231-714-0100.

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