Extraterrestrial Law: Protecting Patents in Outer Space and on Celestial Bodies

The commercialization of space flight and space exploration has given rise to many inventions being deployed into outer space and onto celestial bodies. Inventors seeking to enforce their patent rights are challenged by the territorial nature of intellectual property laws. The current treaties do not protect the inventors’ rights against infringement.

Foundations of Space Law

The foundation for Space Law is based on a series of International Treaties beginning in 1967. Four additional international treaties have received multinational agreement or ratification. These treaties are known as the “Big Five”.

The “Outer Space Treaty“, Treaty on Principles Governing the Activities of States in the Exploration and Use of Outer Space, including the Moon and Other Celestial Bodies, entered into force on October 10, 1967. The treaty declared Outer Space, the Moon, and other celestial bodies res communes, that is, “things common to all; things that cannot be owned or appropriated, such as light, air, and the sea.” The treaty declared that outer space and the celestial bodies shall be used for peaceful purposes. It makes States responsible for the Outer Space activities of government agencies and non-government entities within their territorial jurisdiction. Article VIII states that the State party launching an object into Outer Space retains jurisdiction and control over that object.

The “Rescue Agreement“, Agreement on the Rescue of Astronauts, the Return of Astronauts and Return of Objects Launched into Outer Space, entered into force on  December 3, 1968. The treaty affords special status to Astronauts and Cosmonauts. Parties are required to render assistance to astronauts making an emergency landing due to accidents or other exigent circumstances. It assures prompt and safe return of astronauts and other objects launched into outer space.

The “Liability Convention“, Convention on International Liability for Damage Caused by Space Objects, entered into force on September 1, 1972. The treaty imposes absolute liability on “launching States” for any damage on the surface of the Earth caused by “space objects” launched by or from that State. Liability for damage not on the surface of the Earth is fault based.

The “Registration Convention“, Convention on Registration of Objects Launched into Outer Space, entered into force on September 15, 1976. The treaty requires “launching States” to maintain a registry of objects launched and report the same to the Secretary General of the United Nations.

The “Moon Agreement“, Agreement Governing the Activities of States on the Moon and Other Celestial Bodies, entered into force on July 11, 1984. This treaty contains similar provisions as the Outer Space Treaty. It enhances those provisions by including environmental protections for celestial bodies. It included international inspection privileges of any bases established on a celestial body.

What Space and the High Seas Have in Common

The article To Explore Outer Space: The Intellectual Property Frontier for Patents, noted the commonality in the language of the preambles of both the Outer Space Treaty and the Convention on the High Seas. International treaties govern the use of both Outer Space and the High Seas. The treaties have common language declaring res communes as the overarching legal principle for the government of activities and usage of the same.

The Convention on the High Seas states in Article I that “[t]he high seas being open to all nations, no state may validly purport to subject any part of them to its sovereignty.” The principle of res communes governs navigation and use of the high seas. Likewise, Articles I and II of The Outer Space Treaty state that no country may claim sovereignty over celestial bodies.

Flags of Convenience

A concept that followed from the Convention on the High Seas is “Flags of Convenience.” This concept allowed owners of seagoing vessels to register ships in countries other than the country of legal residence of the owner, thereby taking advantage of more favorable laws, regulation, and taxes. Flags of Convenience are a product of the 1920s and the Eighteenth Amendment to the U.S. Constitution, known as Prohibition. When passenger and cargo ships registered in the United States were unable to sell alcoholic beverages due to Prohibition, the owners registered their vessels in countries that had no such restrictions. The practice continued after Prohibition was repealed. Owners continue to register their vessels in countries where the terms are more favorable. Flags of Convenience also affect Space Law and can prove advantageous to owners of Space Objects.

Territorial Law and Extraterritorial Jurisdiction Dilemma

Laws of sovereign nations are territorial. The law of a nation applies to its citizens and sojourners within the territorial boundaries of the nation.

The United States Congress has the power to grant patents. The U.S. Supreme Court was reluctant to extend patent protection beyond the boundaries of the United States. In Brown (1856), the Court held that use of a U.S. patented invention outside the territory was not an infringement. The Court held that it lacked personal jurisdiction over a foreign vessel on the high seas or in res communes.

In Dowagiac Mfg. Co. (1915), the Supreme Court again refused to extend patent protection beyond the territory. The Court held that a patented article used in Canada did not infringe the U.S. patent even though the article was produced in the United States.

Congress passed the U.S. Patent Act of 1952 (Patent Act) codifying the holdings in Brown. The Patent Act added provisions for temporary presence in the United States. Any aircraft, vessel, or vehicle entering the United States temporarily does not infringe a U.S. patent if that item is an integral part of the aircraft, vessel, or vehicle.

In 1972, the Supreme Court remained unwilling to extend extraterritorial reach of U.S. Patent Law in the Deepsouth decision. The Court held that exporting a disassembled patented machine for assembly offshore did not infringe. Congress overturned this holding in 35 U.S.C. § 271(f), when it made this practice an infringement of a U.S. Patent.

The U.S. Patent and Trademark Office (USPTO) Board of Appeals first mentioned extraterritorial enforcement of U.S. Patent Law in Ex parte McKay (200 U.S.P.Q. 324). In McKay, the Court refers to the res communes principle of the Outer Space Treaty, Article VIII. The Court held that a U.S. patented object carried to the Moon on a U.S. Flag carrier and subject to a U.S. patent can be infringed on the Moon. The decision is not without criticism. However, the decision remains good law.

The Supreme Court took another step into extraterritorial reach of U.S. Patent Law in Decca Ltd. (1976). In finding that U.S. patents had been infringed, the Decca Court established a three-prong test: 1) whether the patented article was owned by the United States, 2) whether the patented article was controlled from within the United States, and 3) whether the patented article was operated solely for the benefit of the United States.

Registration of Space Objects

The Registration Convention requires each launching State to maintain a registry of objects launched into outer space and report to the Secretary General of the United Nations. Flags of Convenience are pertinent to Space Law. Flags of Convenience allow registration of space objects in countries other than that of legal residence of the owner. The owner of the space object can thereby avoid territorial laws. This practice can limit the inventors’ ability to bring infringement claims. A space object manufacturer can avoid an infringement claim by manufacturing in a country that does not honor U.S. Patents and registering in a country that does not honor U.S. Patents. This is the essence of the Flag of Convenience Loophole. The country registering a Space Object retains jurisdiction over that object while it is in outer space or on a celestial body. When a State is operating in compliance with the Outer Space Treaty, Article VIII allows that State to retain jurisdiction over those space objects.

Inventions in Outer Space Act

The Inventions in Outer Space Act attempted to close the Flags of Convenience Loophole but provides little protection for the patent owner. The exceptions in the Inventions in Outer Space Act preclude the United States from applying Patent Law when infringement occurs on a spacecraft registered in another country. International treaties also supersede statute, leaving the act with little or no effect on international use in outer space.

European Unitary Patent and the Unified Patent Court

There is a ray of hope for the inventor. The Unified Patent Court (UPC) is live in Europe as of June 1, 2023. The UPC hears cases involving Unitary Patents and classic European Patents. Twenty-four European Union (EU) states have signed the Agreement on a Unified Patent Court (UPCA), and 17 states have ratified the UPCA.

Unitary Patents are issued by the European Patent Office (EPO) under the rules of the European Patent Commission (EPC). Unitary Patents provide protection for patent owners in the 17 states that have ratified the UPCA. Unitary Patents have the potential to provide protection in all 39 EPO member states.

What Can an Inventor Do to Maximize Patent Protection in Outer Space?

Except for international agreements governing the International Space Station, protection of intellectual property in outer space has received minimal attention. Many questions and issues have yet to be resolved in the courts across the world. Little legal precedent exists to predict how courts might rule on infringement claims.

U.S. Inventors can maximize protection by completing several protective measures. First, a U.S. patent will provide the protection available under Decca for extraterritorial enforcement. If a U.S. patented space object is owned (or registered) in the United States , controlled within the United States, and for the benefit of the United States, then it satisfies the three-prong Decca test and falls within the jurisdiction of the U.S. courts. Further, the Registration Convention also allows for space objects registered in the United States to remain within U.S. jurisdiction.

Second, obtain patent protection of a Unitary Patent. The Unitary Patent affords patent protection in the 24 member nations through one patent. By completing this step, the patent owner gains the right to claim infringement by citizens of the UPCA member States as well as over space objects launched under the control of the member States. The Registration Convention also applies by retaining jurisdiction of space objects to the country from which it was launched.

Third, obtain patent protection in China. China is a major spacefaring nation. By obtaining a China patent, the inventor is afforded protection from infringement that would not otherwise be available.

Completing these actions will provide a broad footprint of patent protection in most of the spacefaring nations. To obtain protection in other potential spacefaring nations, the patent owner can consider licensing the patent to parties within those nations.

To maximize protection, U.S. inventors should manufacture and register space objects in the United States. Space objects should be launched from a United States-owned spaceport. By so doing, the inventor is protected by U.S. Patent Law and under the provisions of the international treaties enumerated above. Protections extend even if the invention is manufactured or assembled in space. Even the use of three?dimensional printing in space does not bypass protections, provided the capability is launched from a United States spaceport.

Progress Needed

Without an international agreement, complete patent protection remains elusive. The Flags of Convenience Loophole allows infringement with impunity. The U.S. patent owner has no protection in this scenario. Commentators and scholars have suggested the United Nations close this loophole by developing an international agreement on intellectual property protection in Outer Space. To date, the United Nations has made minimal progress on this issue.

Image Source: Deposit Photos
Author: Alexmit
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