03/01/2019
Space is becoming more and more accessible. Companies such as SpaceX and Blue Origin have been leading the way, demonstrating their impressive technologies, such as their reusable, vertical landing rockets, and SpaceX recently announced their first private space tourist, who has signed up to fly to the moon and back in 2023.
As these private companies begin to invest more and more time and money into research for space-based equipment and systems, they will no doubt seek to protect their investments and the resulting intellectual property. In particular, they may seek patent protection for their inventions. Our earlier article introduced some of the problems encountered when trying to protect inventions in space. Given that the sector was valued at around $300 billion in 2013, and is expected to reach up to $700 billion by 2030, it seems time for a more in depth review.
Patenting space technologies presents some complications that are not so often encountered in more terrestrial areas of technology. In particular, patents for a system or a method that would be implemented in space can end up being of limited use when it comes to enforcement. The reason for this is that patents confer national rights. In other words, a UK patent allows the proprietor to stop any one else implementing their invention in the UK, a US patent allows the proprietor to stop any one else implementing their invention in the US, and so forth.
The question then logically arises: how does one stop someone using their invention in space? Is it possible to obtain a ‘space patent’? While it is not possible to get a ‘space patent’, properly drafted patents can provide protection for inventions that are to be used in space.
FRAMEWORK FOR INTELLECTUAL PROPERTY LAW IN OUTER SPACE
The fundamental basis for international space law is the series of treaties negotiated and created by the United Nation’s Committee on the Peaceful Uses of Outer Space (COPUOS). The primary treaty is the Treaty on Principles Governing the Activities of States in the Exploration and Use of Outer Space, including the Moon and Other Celestial Bodies, signed in 1967. This is known as the Outer Space Treaty for short. Another important COPUOS treaty that has implications for intellectual property rights in space is the 1975 Convention on Registration of Objects Launched into Outer Space – the Registration Convention.
However, many international agreements regarding objects used in space are in the form of bilateral or multilateral treaties. Perhaps the most important of these is the Agreement among the Government of Canada, Governments of Member States of the European Space Agency, the Government of Japan, the Government of the Russian Federation, and the Government of the United States of America concerning Cooperation on the Civil International Space Station first signed (without the Russian Federation) in 1988, generally referred to as the Intergovernmental Agreement, or IGA.
PATENT PROTECTION FOR AN INVENTION MADE IN SPACE
Patent law around the world is not specifically concerned with where an invention was made – a fact arising from the requirement of national treatment in the Paris Convention. As such, an invention made in space should not be treated any differently to one made terrestrially. Complications only arise in relation to having multiple parties conducting joint research, or a country’s national security provisions requiring nationals to file in their own countries first. However, these problems also arise on Earth, and do not present an insurmountable problem to obtaining patent protection for an invention.
INFRINGEMENT OF PATENTED INVENTIONS IN SPACE
But what about inventions used in space? Patents are inherently territorial rights, allowing the proprietor to stop third parties from implementing the invention within the country in which they have a patent. This leads to the natural question of whether it is possible to prevent a third party from using a patented invention in space? As will be seen, the answer depends on multiple factors.
- Jurisdiction in Outer Space
The first task for answering the above question is determining what laws apply in outer space – that is, who has jurisdiction. This point is addressed in the Outer Space Treaty, which reads, at Article VIII:
‘A State Party to the Treaty on whose registry an object launched into outer space is carried shall retain jurisdiction and control over such object, and over any personnel thereof, while in outer space or on a celestial body. Ownership of objects launched into outer space, including objects landed or constructed on a celestial body, and of their component parts, is not affected by their presence in outer space or on a celestial body or by their return to the Earth. Such objects or component parts found beyond the limits of the State Party to the Treaty on whose registry they are carried shall be returned to that State Party, which shall, upon request, furnish identifying data prior to their return.’
Taking this in combination with Articles I and II of the Registration Convention, which define a launching state and then specify that the launching state must keep a register of the objects it has launched into space, it can be seen that whoever launches an object into space maintains jurisdiction over that object. In other words, the laws of the country that launches an object into space apply to that object.
It is therefore a relatively simple matter to establish under which set of laws an object in space falls under, but what does this mean regarding the extent of patent protection? If an object falls within the scope of a patent that is valid in the country that launched it, does it infringe that patent?
- United States of America
The only country that has a law that specifically states that such an object would infringe is the United States. The appropriate law is 35 US Code 105, which states:
‘(a) Any invention made, used or sold in outer space on a space object or component thereof under the jurisdiction or control of the United States shall be considered to be made, used or sold within the United States for the purposes of this title, except with respect to any space object or component thereof that is specifically identified and otherwise provided for by an international agreement to which the United States is a party, or with respect to any space object or component thereof that is carried on the registry of a foreign state in accordance with the Convention on Registration of Objects Launched into Outer Space.
(b) Any invention made, used or sold in outer space on a space object or component thereof that is carried on the registry of a foreign state in accordance with the Convention on Registration of Objects Launched into Outer Space, shall be considered to be made, used or sold within the United States for the purposes of this title if specifically so agreed in an international agreement between the United States and the state of registry.’
Therefore, if an object is launched from the United States, which then, for example, performs a patented process, the object will be deemed to have performed the process within the United States, and would thus be liable for patent infringement. Essentially, for the purposes of patent infringement, an object in space launched from the US is treated as if it were still in the US.
- United Kingdom of Great Britain and Northern Ireland
However, the answer is not as clear cut regarding UK patent law. Infringement in the UK is defined by section 60 of the Patents Act 1977. In particular, a person infringes a product claim of a patent if, and only if, they make, dispose of, offer to dispose of, use, import, or keep the product, within the United Kingdom (Section 60(1)(a)). This is known as ‘direct infringement’.
Additionally, Section 60(2) of the Patents Act 1977 provides what is known as ‘contributory infringement’. A person is guilty of infringement under Section 60(2) if they supply, or offer to supply, an essential element of the invention, for putting the invention into effect, among other requirements. Importantly, in Section 60(2), there is a double territorial requirement. The supply, or offer to supply, must be within the UK, and it must be for the purposes for putting the invention into effect within the UK.
Considering the different ways that a person may infringe a patent within the UK, there are a number of points that must be taken into consideration when dealing with the protection afforded by patents relating to space based inventions.
Manufacturing and Importing Space Objects
To start with, it is clear that if a person manufactures an object to be sent into space (such as a satellite) in the UK, and the object is protected by a UK patent, then that person will be infringing the patent if they have not been granted the right to manufacture the satellite by the patent proprietor. This is regardless of whether the satellite is subsequently launched into space, or which country launches it.
What about the case when a person imports a satellite into the UK, to be launched from the UK? Assuming that the satellite falls within the scope of a UK patent, and the importer does not have permission from the patent proprietor, they would probably be found guilty of infringement as importing is an act covered by Section 60(1)(a) of the Patents Act. However, an interesting consideration would be Section 60(5)(e) which states:
‘(5) An act which, apart from this subsection, would constitute an infringement of a patent for an invention shall not do so if
…
(e) it consists of the use of a product or process in the body or operation of a relevant aircraft, hovercraft or vehicle which has temporarily or accidentally entered or is crossing the United Kingdom (including the air space above it and its territorial waters) or the use of accessories for such a relevant aircraft, hovercraft or vehicle’
The question would then arise as to whether the satellite may fall under one of the above exclusions, which relate to vehicles which temporarily enter the United Kingdom. It seems unlikely that it would. For starters, the satellite may not be considered in ‘use’ when it enters the UK, rather it may be considered that it is being imported (to be ‘used’ in space). Further, it is not clear that a satellite would fall within the categories of aircraft, hovercraft, or vehicle.
The vehicles exempted by the above sections are detailed in Section 62(7) which states that a ‘relevant aircraft, hovercraft, or vehicle’ for the purposes of Section 62(5)(e) is one registered in, or belonging to, any country other than the UK which is a party to the Paris Convention. It may be possible that a satellite from a foreign country which is merely using a UK launch site (and thus may have the satellite registered to the foreign country) will be regarded as ‘relevant vehicle’ and be exempted by this section, though it is probably best not to have to rely on such an argument to avoid infringement.
Inventions Implemented in Space
Now we consider the case of an invention that is only implemented in space. For example, consider a patent which claimed a network of satellites. The network of satellites is only completed when the satellites are in space, and as such the invention as claimed is not implemented until this time. Could a UK patent ever protect such a system? There are two important, but linked, aspects that require analysis: what does ‘use’ mean in Section 60(1)(a), and what is regarded as within the United Kingdom.
As discussed above, if a satellite was launched in the UK, it will (in most cases) be under the jurisdiction of the UK. However, while UK laws apply, this does not necessarily mean that it is within the UK. The Interpretation Act 1978 defines the United Kingdom as being ‘Great Britain and Northern Ireland’ – rather than as being where the UK has jurisdiction. As such, once a satellite has been launched, it is likely outside of the UK. Indeed, the very existence of the Outer Space Treaty implies, and requires, that space is not within the borders of any country. (While the lower edge of outer space is not well defined, it would likely be a futile task trying to argue that a satellite was not in space – in particular as this would then require one to admit it was entering the airspace of other countries as it passes over them.)
However, one caveat is with regards to the International Space Station (ISS). The Intergovernmental Agreement introduced at the beginning contains specific considerations relating to intellectual property (IP) and the matter of infringement of IP rights aboard the space station. In particular Article 21(2) reads:
‘Subject to the provisions of this Article, for purposes of intellectual property law, an activity occurring in or on a Space Station flight element shall be deemed to have occurred only in the territory of the Partner State of that element’s registry, except that for ESA-registered elements any European Partner State may deem the activity to have occurred within its territory.’
Therefore, a UK patent could be infringed if it were used in an ESA registered element of the ISS (leaving aside the slight complications relating to the plurality of European Partner States introduced in the last clause of the Article). It is not inconceivable that it could be argued that this principle should apply to other space objects. Indeed, WIPO have stated, in an issue paper entitled ‘Intellectual Properties and Space Activities’ from 2004, that provided any IP infringed in outer space was treated as if it were in the territory of the country with jurisdiction, then enforcement procedure is simply that of the country and would be relatively simple.
So, while the network of satellites would probably not be within the UK, even if launched from the UK (perhaps an unsurprising conclusion), could it be that the system would still be used within the UK? It seems that it might be possible to argue this, and thus such actions could be found to infringe a UK patent.
We turn to the case of Menashe Business Mercantile Ltd. & Anor v William Hill Organization Ltd., which dealt with the case of a method being implemented on a server that was outside of the UK, though the end user was within the UK. It was decided at first instance, and upheld at appeal, that each and every element of a computer system need not necessarily be located within the UK.
Indeed, one of the arguments put forward at first instance, and quoted by Jacob J in his decision, was:
‘Take the case of a someone who installs and sells a telecommunications apparatus which straddles the French-German border. Suppose the patent claim calls for integers A + B. Both are essential integers. But A is in France and B is in Germany. If WH are right, no infringement. We respectfully submit it obviously would be infringement – else it would offend common sense. That cannot be what the framers of the Convention intended. It is not purposive construction. We could give many other examples, and of great commercial and industrial importance. For instance, a constellation of satellites, not all passing over the UK at once, and a downlink here.’
However, while Aldous LJ agreed with the outcome of the first instance judgement, he disagreed with Jacob J’s reasoning. Thus it is not clear how much weight the above argument would carry. Instead, Aldous LJ states that ‘In the age that we live in, it does not matter where the host computer is situated. It could be in the United Kingdom, on a satellite, or even on the border between two countries.’ This would seem to lend weight to the possibility of infringement of a UK patent claiming a system of satellites in space if the end user was in the UK, as, by analogy, the invention would still be used within the UK. This is also the view put forward in the WIPO issue paper mentioned earlier, provided that the satellite is a ‘conduit for Earth-based receivers’.
However, the analogy is not perfect. For starters, with a satellite system it does matter where the satellites are located. They must be in space, in their designated orbits. The system would not work if the satellites were simply left together on a launch pad. This is in contrast to the computer server of William Hill, where the server actually could be virtually anywhere.
Furthermore, this analogy requires that there is an end user who is in the UK. This may be simple to establish in the case of something like a satellite phone system, but what about where the patent does not relate to an end user, what if it relates only to communication between satellites for example? An end user of this system is then a step removed from the use of the patented invention, so it is not clear that it would still be considered that the invention is used within the UK, potentially barring a finding of infringement.
Taking into account all of the discussion above, the best way to protect an invention that is going to be used in space is to try and draft claims that will be infringed on Earth. For example, as discussed above in relation to manufacturing a space object, if a claim of a patent is to an object, rather than how it is used in space, the patent may be infringed as normal assuming the object is assembled on Earth. If the invention is a system, claims should, to the greatest extent possible, cover the individual elements separately, in addition to any claims for the whole system. This will make prosecuting manufacturers much simpler than if only the whole system is claimed.
Here at Reddie & Grose LLP we have great experience with such drafting techniques, ensuring that our clients are provided with high quality patents, which adequately protect their inventions. If you have a space based invention, or would like more information, please contact one of our team.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
