It is well established that the patent system is territorial in nature. If you have an invention you wish to patent, at some point, you are going to have to pick where to protect the invention by filing a patent application in the national or regional patent offices of your choice. This choice could be based on where the biggest markets for the invention are, where your competitors are based, or simply where you would want to prevent others from commercialising your invention – for example by manufacturing, importing or selling your invention without your permission.
In general, a competitor can only infringe a patent by carrying out infringing acts in a territory where the relevant patent is in force. Manufacturing, using, importing or selling a patented product in a country where no patent exists will ordinarily fall outside the scope of the patentee’s rights. But what happens when the place in which an invention is used lies beyond the territory of any nation, in outer space?
Pragmatic patent filing strategies for protecting innovations in the space sector tend to be focussed on protecting against infringing activity on Earth. For example, a patent may be infringed by the manufacture of products on Earth and subsequently launched into space, or by products that are made in space and effectively ‘imported’ into terrestrial jurisdictions on Earth. As we ponder a future of obtaining patent protection in space, it is worth looking to existing approaches that deal with activities beyond conventional national territories. In this article, we will explore the patent law landscape as it stands and some existing legal frameworks that could be said to relate to space-based patent protection.
Any discussion of patent rights in space must begin with the Outer Space Treaty of 1967, which remains the foundation of international space law. The Treaty states that outer space is for all of humanity (Article I) and that is not subject to national appropriation (Article II). In other words, no state can claim ownership of part of outer space in the same way that it exercises sovereignty over its territory.
The Outer Space Treaty 1967
Article I:
The exploration and use of outer space, including the moon and other celestial bodies, shall be carried out for the benefit and in the interests of all countries, irrespective of their degree of economic or scientific development, and shall be the province of all mankind.
Article II:
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.
This poses a challenge for patent law in space. Since patent rights are territorial, and outer space does not belong to any nation, it is not immediately obvious how conventional patent infringement principles should apply to activities carried out beyond Earth.
That being said, there are existing legal concepts that may provide useful guidance.
We can start by considering what happens when a patented product is exploited by someone else without the patentee’s permission during flight or at sea. According to the UK Patents Act, the territory covered by a UK patent includes the UK itself, the Isle of Man and the territorial waters of the UK which extend twelve nautical miles out from land. When it comes to patent infringement in UK airspace and territorial waters, the UK Patents Act allows a statutory defence to ships or aircraft temporarily in the territorial sea or airspace of the UK.
One might initially wonder whether a potential solution to the issue of patent protection in space could be to extend the scope of airspace protection beyond the Kármán Line, the widely recognised boundary between Earth’s atmosphere and outer space, located 100 kilometres above the Earth’s surface. However, such an approach would sit uneasily with Article II of the Outer Space Treaty, which prevents us from dividing space into territories which can be owned. Further, it would not address activities on extra-terrestrial celestial bodies such as Mars which, if humankind manages to populate it, may one day become a hub of innovation.
Looking at things from another angle, UK courts have also shown a willingness to adopt a practical rather than purely geographical approach to infringement. In the specific case of Illumina v Premaitha [1], certain activities performed abroad did not prevent a finding of infringement as the patented invention was found to be effectively used within the UK.
Turning again to the Outer Space Treaty (1967), Article VIII of the treaty states “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”. Whether this definitively means that a space object registered in the UK is deemed to be “in the UK” for the purposes of the infringement provision of the UK Patents Act is unclear and up for debate. It may be beneficial to enact legislation deeming acts carried out on UK-registered space objects to occur within the UK for patent purposes, as it would be in agreement with the Outer Space Treaty and clarify the situation.
Indeed this is what the US did when it enacted 35 U.S.C. § 105 of the Patents in Space Act of 1990, which 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”. This means space objects can therefore infringe US patents whilst in space and under jurisdiction or control of the US.
Care would have to be taken with this approach to avoid an entity being able to easily avoid infringement by choosing a country not covered by a patent for registration, launch and control of a patented space object. Such a workaround is analogous to the use of “flags of convenience” in shipping – a business practice whereby a ship’s owner may register a ship in a foreign country so as to avoid the regulations of the owner’s country.
Looking elsewhere, the International Space Station (ISS) posed an interesting challenge for patent rights. This is because the ISS is modular with the modules being provided by different nations, each of which remains under the jurisdiction, control and ownership of the respective nation.
Article 21 of the International Space Station Intergovernmental Agreement (IGA) recognises the jurisdiction of each partner’s courts and allows for national laws to be applied in the modules belonging to the partners. This means that the different intellectual property laws of each partner have to coexist. For instance, if an invention is made in a US element of the ISS, then US patent law will be applicable as the invention is deemed to have been devised on US territory. The IGA may therefore provide a useful framework for future international projects with similar challenges.
It seems, at present, that the ability to protect space objects via national or regional patent rights is possible but limited. Despite this, it is possible to optimise patent protection in other ways. Patents can protect the “use” of inventions within nations, for example, a UK patent can protect an element outside the UK via its use within the UK, e.g. the use of the satellite data within the UK. Patents also protect the manufacture of products, so a patentee aware of an infringing object made by a competitor could request an injunction before the infringing object is launched into space. This means it is worthwhile in many cases to protect space objects in a patent. Given that patents last for 20 years after filing, it would also be prudent to seek as much protection as possible in case intellectual property frameworks in space evolve over the coming years.
In our next article, we will ponder whether there is a need for a ‘Martian Patent Office’ and how these existing frameworks could be further developed to protect inventions in Space.
[1] Illumina, Inc v Premaitha Health Plc [2017] EWHC 2930 (Pat)
This article was prepared by Patent Attorney Jess Davis and Patent Director Joe Baumber.
More articles from our world space week series below:
- Patents Beyond Earth: Do we need s Martian Patent Office? Part 2
- Sustainable Technologies in Space: Protecting Innovation for a Greener Frontier
- Feeding Space Travel: The Chemistry of Living in Space
- Materials at the Final Frontier: How Engineering Innovations Are Powering the Future of Space
For more information contact our Transport, Aerospace & Defence team