First published in North American Windpower

Many in the U.S. industry believe that the future of wind energy lies offshore. However, to overcome objections that offshore wind farms will ruin expensive ocean views, wind turbines may have to be installed out of sight several miles from the coast. This raises the question of whether U.S. patents can be enforced against technology used in offshore wind farms—a question of interest whether you are seeking to protect your own intellectual property or want to make sure you do not infringe the intellectual property rights of others. The answer depends on how far offshore the wind farm lies.

The waters offshore are divided into three zones relevant to this conversation: territorial waters, the contiguous zone, and the exclusive economic zone (EEZ).

Territorial Waters

Activity occurring in territorial waters (up to 12 nautical miles from shore) is the easiest to address. The U.S. possesses complete sovereignty over its territorial waters, and accordingly, U.S. patent laws will apply to activity occurring in those first 12 nautical miles just as they do on the mainland United States. In short, if something infringes on U.S. soil, it will also infringe in this zone.

Contiguous Zone

The situation gets trickier in the contiguous zone (12-24 nautical miles from shore). Under international law, the United States may take action in the contiguous zone to "prevent [or punish] infringement of its customs, fiscal, immigration or sanitary laws and regulations within its territory or territorial sea." U.S. courts have not conclusively decided whether U.S. patent laws fall into one of these protected categories. Even so, the United States' right to action in the contiguous zone extends only to preventing or punishing infringement that occurs on land or within 12 nautical miles offshore (i.e., before the contiguous zone).

Therefore, the United States' rights in the contiguous zone are akin to a county sheriff's ability to pull over speeder sheriff's ability to pull over speeders. If the sheriff catches a driver speeding in his county, he can pursue him over the county line (outside his jurisdiction) to catch him. But he can't go outside his jurisdiction to stop speeding that begins outside his jurisdiction. In the same way, the United States could prevent an infringing activity taking place in the contiguous zone from creeping into the territorial waters or onto land.

But U.S. courts could not punish someone for activity occurring exclusively in the contiguous zone, even if that activity would infringe if it took place on land. Accordingly, while U.S. courts have not addressed this issue, the limited ability of the U.S. to enforce its laws in the contiguous zone is largely irrelevant to patents.

Exclusive Economic Zone

It is similarly unlikely that patent owners will be able to enforce U.S. patents against activity occurring in the EEZ (200 nautical miles from shore). In the EEZ, the United States possesses sovereign rights in the economic exploitation of natural resources, along with jurisdiction over marine scientific research. Therefore, the only way these limited rights could potentially allow U.S. courts to enforce patents is if the patented technology relates to the exploitation of natural resources.

However, the one U.S. court that has addressed this issue found that U.S. patent rights do not cover activity occurring in the EEZ even if the patented technology relates to exploitation of natural resources. In WesternGeco LLC v. Ion Geophysical Corp., the patent owner sued several companies for infringement of five patents related to marine seismic streamers, long cables deployed behind ships. The streamers are used to create three-dimensional maps of the subsurface of the ocean floor for use in natural-resource exploration and management. Therefore, the technology related to "exploitation of natural resources."

The defendants used the accused technology at lease holdings located in the Outer Continental Shelf, approximately 100-150 miles off the coast of Alaska, within the EEZ. The patent owner argued that the EEZ was within the United States for purposes of U.S. patent law, and that U.S. patent law therefore prohibited the defendants' activities in the EEZ.

The court disagreed, ruling that U.S. patent rights were not enforceable in the EEZ, even though the patented technology related to the exploitation of natural resources. The court relied on two main points in reaching this decision: 1) When the U.S. established the EEZ, it acknowledged that the EEZ remained outside the territory of the U.S., and 2) U.S. courts have historically been reluctant to extend the geographic reach of U.S. patent rights without clear intent from Congress. While this one court decision is not binding on all U.S. courts, it highlights the unlikelihood that a U.S. patent will stop activity occurring in the EEZ.

Outer Continental Shelf Lands Act

The Outer Continental Shelf Lands Act (OCSLA) provides another avenue for patent owners to enforce their patents offshore. The OCSLA extends U.S. law to artificial islands and installations permanently or temporarily attached to the seabed for the purpose of exploring for, developing, producing or transporting resources from the seabed of the Outer Continental Shelf, such as oil drilling platforms.

However, as currently written, this statute does not cover installations used to capture wind energy, because that resource is not taken from the seabed. This issue is worth monitoring, however, as some have called for the law to be amended to cover any installations over the Outer Continental Shelf, which would extend U.S. patent law to wind turbine installations or other alternative energy installations over the Outer Continental Shelf.

However, hope remains for patent owners seeking to protect their innovations, even when a wind farm lies outside U.S. territorial waters.

One key strategy is to obtain apparatus, or system, claims rather than just method claims.

Apparatus claims are directed to, for example, a device or a system. An apparatus claim is typically directed to a structural feature made up of a number of components. For example, a claim might recite a wind turbine comprising a tower, a generator, a power converter, a pitch mechanism and a control system.

In contrast, method claims are directed to a process made up of a series of steps. For example, a method claim might recite a series of steps for installing a wind turbine offshore.

Generally, patent owners will have an easier time enforcing apparatus claims than method claims. Under U.S. patent law, a patent claim is infringed when one "without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes that patent."

Thus, a patent owner can stop an infringing apparatus from being made or offered for sale in the United States, even if it is not "used" until it is located outside U.S. jurisdiction. In contrast, "methods" are not made or imported, and typically are not sold or offered for sale. This means that the patent owner must typically show that the method is actually performed in the United States, making the method claim format less suited for offshore technologies inside U.S. territory.