What a difference a year can make. In 2023, it was widely reported that the UK Government’s fifth auction round for renewables attracted a whopping zero bids for new offshore wind. One could be forgiven for thinking that the offshore wind industry’s ship had sailed. However, just 12 months later, the sixth round of auctions has resulted in 5.3 GW of new offshore projects. It is hard to say what next year’s auction will bring, but with the government aiming for 50GW of offshore wind by 2030, the demand for wind may well accelerate from here.

Another factor that could push demand for offshore wind even higher is the advent of “wind-to-hydrogen” systems, in which a combined wind turbine and electrolyser platform works to produce renewable, or “green”, hydrogen from seawater, thereby “storing” the wind energy. The UK’s first offshore trial of this technology occurred in June of this year in Wales and, if found successful, could lead to a mass-scale roll out to sate future demand for hydrogen.

With this increased demand for offshore wind capacity, it seems there will be plenty of opportunities on the horizon for wind turbine and energy storage manufacturers. That said, competition could be fierce and those hoping to secure future contracts will need to stand out from the crowd. One approach will be to utilise research and development to cut costs and amplify power output/storage capabilities; however, without patent protection in place, the competitive value of these innovations will be diminished. This begs the question, “are patents actually enforceable when it comes to offshore infringement”, or are patent proprietors left all at sea?

First, it is worth considering the ways in which a UK patent can be enforced. Under section 60(1) of the UK Patents Act 1977, ‘direct’ infringement of a patent arises, where the invention is a product, if a person makes, disposes of, offers to dispose of, uses or keeps the product in the UK, or imports it into the UK. In respect of processes, ‘direct’ infringement arises if a person uses the process or offers it for use in the UK where it is known or obvious that to do so would be an infringement.

‘Indirect’ infringement can also arise and is governed by section 60(2) of the UK Patents Act 1977, which protects against the act of supplying means relating to an essential element of an invention. This can be helpful when seeking to enforce claims directed to complex multi-component systems, given that even the supply of a sub-component could infringe the claim. However, for ‘indirect’ infringement to be actionable, a double territorial requirement must be met, whereby both the supply and the end use must occur in the UK. This additional requirement can make it more challenging to prove ‘indirect’ infringement under section 60(2) than ‘direct’ infringement under section 60(1).

So, now that we know the two main types of infringement, how easily can we apply them to offshore wind and energy storage solutions?

Well, as offshore installations are typically located far from the mainland, the answer to that question depends on just what is meant by “the United Kingdom”. Fortunately, the Patents Act 1977 provides a handy answer: “for the purposes of this Act the territorial waters [12 miles from the nearest coast] of the United Kingdom shall be treated as part of the United Kingdom”. Is 12 miles enough to cover offshore wind? Not quite… The Dogger Bank Wind Farm and the proposed Hornsea 3 Wind Farm are both at least 70 miles from the UK coast and fall in the UK’s exclusive economic area, rather than its territorial waters.

For now, the UK courts also appear reluctant to enforce a UK patent against offshore installations located outside of territorial waters. Indeed, in Siemens Gamesa v GE Energy (2022), the High Court held that a claim directed to an assembled wind turbine was not infringed by an offshore installation located outside of the UK’s territorial waters. The High Court also denied an attempt at extending the patent’s geographic reach through use of the Petroleum Act 1988, which, in one clause, extends coverage beyond territorial waters for “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”.  The Court held that anchoring a wind turbine in the seabed did not constitute either the exploration of the bed of waters or the exploitation of its resources.

Given the wording of the Patents Act and the position taken by the High Court, it will certainly be tricky to enforce a UK patent against an offshore installation. Therefore, alternative strategies for protecting offshore wind turbine innovations and co-located energy storage solutions should be considered to maximise the value of these important innovations.

The first port of call in this situation is to ensure that the independent claim is drafted so that it comprises the minimum number of components essential to the innovation. For instance, if the innovation lies in the turbine blade alone, the independent claim should be directed towards the blade, rather than an entire assembled wind turbine comprising such a blade. Crucially, a claim of this kind would be infringed if the blade were, for example, produced in, or imported into, the UK, allowing for protection even where the complete wind turbine is only assembled offshore. Similarly, in situations where it is only the process of forming a component that is patentable, but the component is manufactured abroad, a manufacturing process claim may still be enforced under section 60(1)c of the Patents Act 1977, if the component, as the ‘direct product’ of the claimed process, is imported into the UK.

Even in cases where the invention lies in a synergistic combination of two or more parts (e.g., between the wind turbine hub and the blades), it may still be possible to achieve protection for each part individually by simply referring to the other co-operating part using language such as “connectable to part X” or “for receiving part Y”. Alternatively, a “kit of parts” style claim may be relied on to claim a ‘kit’ which comprises the synergistic parts as separate unconnected integers.

However, if the innovation lies solely in the entire assembly, obtaining useful patent protection becomes trickier in view of the enforcement difficulties mentioned above. An alternative approach is to choose not to file a patent application for the innovation and simply keep it a “trade secret”. Unlike patents, trade secrets do not provide formal protection for innovations and cannot be enforced, but instead rely on hiding innovations from others. This approach is made more viable by the remote and inhospitable location of the installations deterring prying eyes, although the risk of disclosure still exists within the supply chain.

Given the risks involved with trade secrets, obtaining patent protection for complete offshore installations may still be a worthwhile endeavour but requires a particularly careful assessment of patentability as well as the longer-term enforcement potential, with an eye to the specific offshore context. For instance, in the case of the offshore production of hydrogen from seawater, effective claim drafting may allow for useful protection to be obtained against the importation of the produced hydrogen itself, even if the generation occurs outside of territorial waters. In this way, commercially valuable IP can still be obtained for offshore wind turbines and co-located energy storage innovations.

At Carpmaels, our multi-disciplinary Energy team is well-placed to advise on these matters and can assist in gaining broad and enforceable protection for offshore wind turbines and energy storage applications.