25/08/2021
Given that many of the developments in the space sector are the result of long and costly research programs, it is natural that companies working in it would look to the patent system to protect their innovation. Patents provide the proprietor with the ability to prevent others from using their invention, and can be sold or licensed to provide a protected means of revenue that would otherwise be at risk from competitors copying their proven design. This allows innovators to maximise the return on their investment.
Nevertheless, things are not quite so straightforward for inventions utilised in space (or on other planets). This is because patents are territorial – they only stop a competitor in a specific jurisdiction. For example, a GB patent can be used to protect against acts performed in the UK, but a separate US patent will be needed to stop a competitor from acting in the US. Given that there is no “space patent”, how useful are patents in the space sector for protecting inventions such as the Ingenuity drone?
In a previous blog I looked at how patent law interacts with this final frontier, with a focus on inventions performed in space itself or aboard space stations such as the International Space Station (ISS). More recently, I considered the satellite broadband industry and the challenges it faces in protecting its innovations, as well as the Perseverance Mars rover and its flying drone Ingenuity. These blogs focused more on how space related inventions can be protected under the current patent system, and as discussed by my colleague here, companies working within the space sector clearly believe that patents are a worthwhile investment. However, the protection provided for space inventions by the patent system isn’t perfect, and so this blog asks “what can’t be protected?”, and considers how the patent system could adapt to even better serve the needs of those working in the final frontier.
The Status Quo of Protection Space Inventions
Currently it’s not possible to stop someone from using an invention in space unless they would also be infringing the invention here on Earth in a territory where the invention is patented (with the exception of objects launched from, or registered in, the US, as discussed further below). For example, if a Mars rover were patented in the UK and another company were to manufacture that rover in the UK, this would infringe the UK patent. However, if only a part of the rover were manufactured in the UK with the other part in Germany, and if these parts were only assembled to form the patented rover once on Mars, then no patent infringement would occur. The patentee would not even be able to rely on what is known as secondary or indirect infringement in the UK, due to the “double territorial requirement”. This is because the component of the patented invention manufactured in the UK was never intended to be used in the UK. This is particularly problematic for inventions that relate to systems and methods, which typically won’t be implemented terrestrially if they are for use in space or on another planet. Practically protecting such systems and methods can, therefore, be a challenge.
Careful patent drafting can maximise the protection available, for example, by claiming individual parts of a system that would be assembled or manufactured on Earth, or by claiming only the part of a method performed on Earth, but often this protection is inadequate at best and sometimes not possible at all. Given that such inventions still require large initial investment to develop, the lack of any dedicated protection for activities performed in space or on another planet will no doubt hold back the commercial exploration and exploitation of space. It could also hamper cooperation between companies, as they are forced to rely on trade secrets to protect their innovations. Patents, on the other hand, allow a company to disclose its invention, allowing collaboration, without losing control over the invention.
The inadequacy of the current international patent regime for the growing space sector has long been recognised, for example see here and the WIPO discussion paper from 1997 (downloadable at the bottom of the linked page). Unfortunately, little progress has been made since. In particular, the US remains the only country whose patent law specifically deals with inventions used in outer space (35 USC §105), and whilst it was suggested in the 1997 WIPO paper that a simple manner to provide patent coverage for most activities in space would be for other countries to adopt similar provisions to those of 35 USC §105, no other country has yet done so.
This is likely due to a lack of immediate need for such patent law, with the US for many years being by far the dominant space faring nation, and with most space ventures government sponsored. However, with a greater spread of countries involved in the space sector, and the growth of private companies placing more of a focus on profitability, this gap in international patent law will only become more and more pronounced. Still, even if such provisions were widely adopted, they would leave open gaps that would need to be addressed.
This is because 35 USC §105 deals with activities that take place on board a spacecraft that is registered in the US. It states that “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”. If each country enacted a similar law to the US, this would cover all activities on board spacecraft (and likely within lunar or Martian bases, for example). Hence, perhaps the biggest area that would need further consideration would be activities that take place outside of a spacecraft, or between multiple spacecraft or extra-terrestrial bases. For example, activities that take place on the surface of another planet, during an EVA or ‘spacewalk’, and methods of communicating between spacecraft.
Such activities would not likely fall within the scope of 35 USC §105, not taking place on a space object under the jurisdiction of the US (or another country with analogous laws). Accordingly, if patent protection is to be afforded to methods and devices used in such activities, further development of the law will be needed. A possible route for providing such protection could be through a mechanism proposed in the Artemis Accords signed last summer.
The Artemis Accords – A Possible Solution?
The Artemis program is a NASA led plan to return people to the moon, and a key part of the long term goal of sending people to Mars, and is named for the twin sister of the Greek god Apollo, after whom the famous Apollo program was named. In NASA’s own words, the Artemis Accords set out “a shared vision for principles, grounded in the Outer Space Treaty of 1967, to create a safe and transparent environment which facilitates exploration, science, and commercial activities for all of humanity to enjoy.” They don’t present a comprehensive set of laws for outer space and celestial bodies, but they do attempt to set out an agreed set of principles by which the signatories will act in developing their space programs and presence in outer space. Of particular interest to the IP world is Section 2(1)(b), which essentially states that agreements between signatories to the Artemis Accords should contain provisions related to “liability, intellectual property, and the transfer of goods and technical data”.
So, while the Artemis Accords don’t provide any actual guidance as to the application or adoption of intellectual property laws in outer space, they do nonetheless recognise that this is an issue that will need to be addressed. Similarly, the Council of the European Union, when drafting their recent “Orientations on the European contribution in establishing key principles for the global space economy”, were also aware of the importance of IP to the space sector, stating that the EU “PROMOTES intellectual property rights policies favouring industrial investment, so that effective management and easier access to intellectual property rights in the area of space strengthens the European space industry success and competitiveness”.
However, both of these statements merely stipulate that bilateral treaties and agreements should contain intellectual property provisions, which while reaffirming the importance of providing an IP framework for space-based activities, does not actually advance said framework. Indeed, this is essentially the status quo, for example the Intergovernmental Agreement – the treaty governing the International Space Station – is a bilateral treaty containing IP provisions that was signed in 1988. So in this aspect, the Artemis Accords are really just reaffirming current good practice.
Nevertheless, future IP provisions will need to be more comprehensive than the Intergovernmental Agreement if they are to adequately address intellectual property rights on other celestial bodies and not just on satellites or space craft. This is because if and when people again land on the moon, or indeed any other extra-terrestrial body, it is unlikely that their activities will be confined to whatever base module is established on the surface of the celestial body. Rather, the astronauts will likely perform experiments and operations outside of their bases, for example during moon walks, and will need to communicate with different bases (perhaps under a different jurisdiction). The provisions in the IGA only deal with activities performed within the space station, and so if similar provisions were adopted without substantive modification in future treaties then they would not necessarily cover activities performed outside on an extra-terrestrial surface or between bases. Furthermore, as the space sector becomes more commercialised, in particular with private companies now setting their sights on the moon and beyond, ownership and enforcement of IP will become ever more important.
However, whilst not providing a complete solution, the Artemis Accords do hint at one possible way in which this problem could be addressed (at least in some cases): through the introduction of “safety zones” (Section 11, paragraphs 6 and 7). These “safety zones” are temporary zones claimed by a signatory of the Artemis Accords in which they are performing experiments or other activities; the idea being that one party should not operate within a safety zone of another so as not to interrupt or disturb their operations.
Could these safety zones be the basis for future IP protection? It would seem that it could be agreed that any activity done within such a safety zone could be deemed to have occurred within the territory of the country that established the safety zone. This would provide a relatively well defined extent of patent protection in space. For example, a US patent could be enforced against activity occurring in a US safety zone, a Chinese patent against activity in a Chinese safety zone, and so on, meaning that methods and systems used within these zones could be protected.
However, one hiccup could be the interaction of such a solution with the Outer Space Treaty – the fundamental basis of all international space law. In particular, Article 2 of the Outer Space Treaty states that “Outer space, including the moon and other celestial bodies, is not subject to national appropriation by claim of sovereignty, by means of use or occupation, or by any other means.” Questions have already been raised as to whether the safety zones established by the Artemis Accords were in breach of this Article, being in effect land grabs in disguise. A. 11(7)(c) of the Artemis Accords states that the safety zones are temporary, to emphasise that they are not in violation of the Outer Space Treaty, but would this be enough to ensure that extending patent rights to safety zones would not conflict with the Outer Space Treaty? No doubt interested parties could argue the case either way. However, whilst it may be argued that considering such safety zones within the territory of any particular state may be “national appropriation” contrary to Article 2 of the Outer Space Treaty, it would appear to be a pragmatic solution to what could otherwise prove to be a tricky problem. Regardless, it will be interesting to watch how patent law around the world reacts to the new developments taking place that are, quite literally, out of this world.
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.
