How Are Space-Based Technologies Affected by Patent Enforceability?
Guest Post By Kyri Tsircou, Patent Attorney & Founder of Tsircou Law and Venture Partner, Syndicate 708
Do Regular Patent Laws Apply to Space-Based Technologies?
The concept of territoriality is fundamental to patent law — generally, patent laws do not extend beyond national borders. As a result, certain space-based technologies are out of the reach of United States patent law. Although objects in space are generally outside of the jurisdiction of any country, the law has carved out certain “floating islands” where a country may enforce its patent laws. In particular, the United States has jurisdiction over space-based technologies launched or registered in this country. This rule is subject to several exceptions that may preclude a finding of infringement of a U.S. patent. This guide explains the reach of United States patent law into space, and suggests strategies to protect space-based technologies.
The Territoriality of Patent Law
Territoriality is an important principle in patent law. In the United States, the Patent Act (35 U.S.C. § 271) limits patent infringement to “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent.” Patent law in other countries has analogous territorial limitations. As a result, U.S. patents generally cannot be enforced to prevent infringing activity beyond our borders, and patents granted in other countries cannot be enforced within the United States. This general principal is limited by statutes, treaties, and case law extending protection beyond territorial boundaries for a limited range of activity in extra-territorial locations such as outer space.
U.S. Patent Law and Space-Based Technologies
In the United States, the Patent Act limits infringing activity to that done “within the United States.” Generally, 35 U.S.C. § 271 extends to any product made, used, or sold in the United States, even if it eventually winds up in space. This is limited by the “temporary presence doctrine.”
Establishing Infringement in the United States under Section 271
For global or space-based technologies, establishing a sufficient nexus to the United States can be difficult. In the event an infringed space-based technology was made completely in the United States, it is straightforward to establish that infringement occurred in this country. The launch of an object from the United States is considered “use” in the United States by courts. It is also possible to establish that an invention was made or used in the United States if some components are housed outside of the United States, but it is primarily controlled and situated in this country.
The Temporary Presence Doctrine
Both domestically and in international law, use in a given country is not infringing if the use is “temporary.” This “temporary presence doctrine” has limited applicability to spacecraft or components launched from the United States.
35 U.S.C. § 272
In the United States, 35 U.S.C. § 272 establishes an exception precluding patent infringement if any “vessel, aircraft, or vehicle” of a country “which affords similar privileges to vessels, aircraft, or vehicles of the United States” enters this country “temporarily or accidentally.” The exception applies as long as the invention is “used exclusively for the needs of the vessel, aircraft, or vehicle and is not sold or used for the manufacture of anything to be sold in or exported from the United States.” The main elements of the exception are that it applies to a “vessel, aircraft, or vehicle,” the use must be “temporary,” and the exception only applies to vessels, aircrafts, or vehicles from countries with similar protections available to objects of the United States.
Defining “Vessel, Aircraft, or Vehicle”
51 U.S.C. § 20135 (formerly 42 U.S.C. § 2457) establishes what qualifies as a “vehicle” under 35 U.S.C. § 272: “any object intended for launch, launched, or assembled in outer space shall be considered a vehicle for the purpose of section 272 of title 35.” This is a broad definition, and would include objects such as satellites and space shuttle components launched as cargo. The statute was enacted in 1981, and for objects launched prior to its applicability, courts have construed “vehicle” more narrowly.
In Hughes Aircraft v. United States (1993), the court declined to extend the statutory definition of “vehicle” to space-based technologies launched before 42 U.S.C. § 2457 was enacted. Instead, “such spacecraft would properly be deemed cargo brought to this country for use (i.e., launch), not a vehicle or vessel within the contemplation of the temporary presence doctrine.” In the event something was launched into space as “cargo” prior to 1981, the temporary presence doctrine does not apply.
Defining “Temporarily or Accidentally”
The courts have broadly interpreted the meaning of “temporarily or accidentally” in deciding what activity is covered by the temporary presence doctrine. In Cali v. Japan Airlines, Inc., the plaintiff had a patent related to jet engines. The plaintiff alleged this patent was infringed by several international airlines when their planes regularly entered the United States, using the engine technology. The airplanes entered the United States regularly, “of very considerable extent, long continued, and supported by ground service, marketing facilities, etc.” The court rejected the plaintiff’s argument that such use is more than “temporary” under 35 U.S.C. § 272 — “temporarily . . . could not sensibly mean any less than entering for the purpose of completing a voyage, turning about, and continuing or commencing a new voyage.” The court reasoned that defining “temporarily” so narrowly as to “cover only trivia” would render Section 272 meaningless.
The temporary presence doctrine also extends to objects launched into space from the United States after 1981. In Hughes Aircraft Co. v. U.S., a European spacecraft incorporating patented technologies was launched from the United States, which would normally constitute an infringing use. However, the court deemed the launch a “temporary” presence in this country, barring a finding of infringement.
The Paris Convention
Under the Paris Convention for the Protection of Industrial Property (“Paris Convention”), use of a patented device in any member country does not constitute infringement “when . . . vessels temporarily or accidentally enter the waters of said country” or “when . . . aircraft or land vehicles temporarily enter the said country.”
This has two consequences. First, given that 35 U.S.C. § 272 only extends to vehicles of countries that provide similar protection to U.S. vehicles, section 272 applies to vehicles belonging to any member of the Paris Convention. Second, it applies to any United States vehicle temporarily entering a Paris Convention Country.
The Paris Convention has 175 member parties including the United States, the Russian Federation, China, and Japan. A full list of members is available here.
The “Outer Space Treaty”
The Treaty on Principles Governing the Activities of States in the Exploration and Use of Outer Space, including the Moon and Other Celestial Bodies, commonly referred to as “The Outer Space Treaty,” guides international space law. It was enacted in 1967 by the United Nations Office for Outer Space Affairs. The treaty first established that outer space “shall be free for exploration and use by all States without discrimination of any kind.” This principle is limited when a State has registered an object launched into space:
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 Earth.
Registry is controlled by the UN Convention on Registration of Objects Launched into Outer Space. Any member State launching an object into earth orbit or beyond must register the object “in an appropriate registry which it shall maintain,” and inform the UN of this registry. The UN in turn maintains a master registry, and should be furnished with the details on each object, including registration number, launching State(s), and the date and location of launch.
Currently, 102 States are Parties to The Outer Space Treaty, including the United States, the Russian Federation, the United Kingdom of Great Britain and Northern Ireland, Canada, China, Korea, Germany, France, and Japan. A full list of member countries is available here.
Although The Outer Space Treaty allocates jurisdiction and control over objects on a State’s registry to that State, individual States’ laws do not necessarily extend patent protection into space. The United States has a statute that does so, but few other countries have enacted statutes explicitly extending patent protection to objects in outer space.
35 U.S.C. § 105
In the United States, 35 U.S.C. § 105(a) extends patent protection to “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.” This protection does not extend to (i) “any space object or component thereof that is specifically identified . . . by an international agreement to which the United States is a party,” or (ii) “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.”
The “Flags of Convenience” Exception
Section 105(a) carves out two exceptions to United States’ reach over activity in space. The second exception, for space objects on the registry of foreign states, creates a large loophole for would-be infringers. By registering an object in another State, one could escape liability in the United States. This is analogous to the “flags of convenience” used by merchants — by registering a ship in another country, a merchant can avoid U.S. regulations and taxes.
On a practical level, this means that a party could register a space object or component in any of the 102 countries party to the Outer Space Treaty. Then, even if the product is launched or controlled from the United States, a United States patent holder would be unable to enforce the patent because the flags of convenience exception puts the space object under the sole jurisdiction of the country of registration. Therefore, the only way to completely cover a patent made or used in outer space is to obtain registration in all Outer Space Treaty Member States.
Strategies
United States patent law generally provides protection for space-based technologies launched or registered within the United States. However, this protection is subject to exceptions, in particular the temporary presence doctrine and the flags of convenience exception. As a result, filing a patent solely in the United States may provide inadequate protection for space-based technologies.
Objects launched from the United States are generally covered by domestic patent law. However, the temporary presence doctrine exempts spacecraft or components under the primary jurisdiction and control of other countries with only a temporary presence in the United States. If it is at all unclear which country maintains primary jurisdiction and control, it is important to obtain patent protection in all possible countries. Otherwise, under the temporary presence doctrine, mere launch from the United States may not be enough to establish the enforceability of U.S. patent law. The temporary presence exception extends to all members of the Paris Convention.
Under the Outer Space Act, the country of registration generally maintains jurisdiction over a space object. Would-be infringers can take advantage of this law by registering an object in a country with undeveloped space law, barring United States jurisdiction over infringing activity. To overcome the flags of convenience exception, it is wise to obtain patent protection in any country with the capability to launch an object into space.
The flags of convenience exception does not seem to have been tested in the courts, and commentators have expressed concern about its implications and suggested revisions eliminating the loophole. The true relevance of this exception remains to be seen.
A final caveat—many countries do not have statutes analogous to Section 105 of the U.S. Patent Act explicitly extending patent enforceability to space objects within the jurisdiction of that country. Judge-made rules may apply, but in the absence of either a de jure or de facto extension of domestic law, a space-based technology patented in some countries may be unenforceable.
