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April 01, 2024 Feature

The Space Maze: Navigating International Law and Protecting Patents in Low-Earth Orbit and Beyond

Austin R. Bauersmith

©2024. Published in Landslide, Vol. 16, No. 3, March/April 2024, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

NASA describes “low-Earth orbit” (LEO) as “the area in Earth orbit near enough to Earth for convenient transportation, communication, observation and resupply.” Anything orbiting Earth with an altitude of 1,200 miles or less is considered to be in LEO. NASA is partnering with several private companies for the purpose of establishing a “robust LEO economy.” Projects that sound like they were pulled from a sci-fi novel are now at the forefront for world governments and private actors alike. As exploratory and commercial plans will necessitate the development of new technologies, it is important to consider issues and current law pertaining to intellectual property protection in space.

Commercializing Space

As NASA transitions from the International Space Station, state partnerships with private entities will be important for maintaining U.S. presence in LEO. At the same time, a growing number of private companies are demonstrating that they have the technology to launch their own missions.

SpaceX, for instance, is a private company that operates in partnership with NASA. The company often utilizes NASA’s Kennedy Space Center in Florida for launches and in-flight testing, and it depends heavily on NASA’s infrastructure and knowledge. The two organizations have entered into agreements related to several projects, including two missions to the Moon under NASA’s Artemis program by the end of the decade. NASA’s Artemis program is specifically focused on exploring the Moon and other celestial bodies, including Mars.

On June 15, 2023, NASA announced the second Collaboration for Commercial Space Capabilities-2 (CCSC-2), a partnership with seven U.S. companies designed to promote the “development of capabilities that can be crucial to development of a robust low Earth orbit economy.” CCSC-2 and other LEO projects involving NASA and commercial groups are subject to NASA’s commercial use policy.

On the topic of intellectual property, NASA notes that rights in inventions and data depend on the terms of any applicable agreements and contracts. NASA also says it “takes steps to ensure that its contractors and partners retain the maximum rights permitted by law, unless NASA has identified a specific need for it to obtain rights in intellectual property for its own purposes as part of an agreement.” NASA’s mission to “seek and encourage the fullest commercial use of space” is best served when its “contractors and partners are able to leverage investment.”

As is the case with the international agreements discussed below, NASA’s policy recites more of a goal than a clear structure. More than anything, the policy highlights the need for international consensus as it pertains to intellectual property acquisition and enforcement. This is especially important given the recent interest and emphasis on promoting commercial activity in LEO and beyond. Without international cooperation, U.S. and foreign stakeholders will be truly left to navigate unknown territory.

International Law in Space

In 1967, the General Assembly of the United Nations enacted the Treaty on Principles Governing the Activities of States in the Exploration and Use of Outer Space, including the Moon and Other Celestial Bodies (Outer Space Treaty). The treaty reaffirms “the importance of international cooperation in the field of activities in the peaceful exploration and use of outer space, including the Moon and other celestial bodies, and the importance of developing the rule of law” to deal with space exploration. The reference to “other celestial bodies” seems to anticipate exploratory missions to Mars and other celestial bodies beyond the Moon.

Article I declares that outer space “shall be free for exploration and use by all States without discrimination of any kind, . . . and there shall be free access to all areas of celestial bodies.” Further, Article I states that “[t]here shall be freedom of scientific investigation in outer space, . . . and States shall facilitate and encourage international co-operation in such investigation.” Article II states that space and celestial bodies are “not subject to national appropriation by claim of sovereignty, by means of use or occupation, or by any other means.”

The Outer Space Treaty does not specifically mention intellectual property rights, but it does contain provisions about jurisdiction that are relevant for the purposes of infringement. Importantly, Article VIII states that a party to the treaty retains jurisdiction over objects on its registry that it launches into outer space.

The registry referred to in the Outer Space Treaty was implemented through the Convention on Registration of Objects Launched into Outer Space (Registration Convention). The agreement requires each signing party to maintain a registry identifying every space object launched from its territory. The Registration Convention and Article VIII of the Outer Space Treaty are particularly important for private entities that launch objects into space as a part of LEO activities and outer space exploration. In planning space-related projects, private entities should carefully consider the protections afforded by the patent laws of the country that launches their respective objects.

The 2020 Artemis Accords represent a recent attempt at international cooperation, but the provisions merely signal the need for an international framework to govern intellectual property rights. The accords were signed by eight nations and reaffirm several principles recognized in the Outer Space Treaty and the Registration Convention. They are intended to apply to missions beyond the Moon and specifically reference activities on Mars and asteroids.

Section 2 calls attention to the need for international cooperation with respect to intellectual property. It acknowledges that the signing parties are free to implement their activities through “appropriate instruments” and that these instruments are “expected to contain other provisions necessary to conduct such cooperation,” including those pertaining to intellectual property and data sharing. On the issue of data sharing, Section 8 provides an exemption for private activities “unless such operations are being conducted on behalf of a Signatory to the Accords.”

Overall, the Artemis Accords echo the same principles recited in the Outer Space Treaty, but they do not add to the topic of intellectual property rights other than recognizing the need for an international framework.

U.S. Patent Law in Space

The extraterritorial reach of U.S. patent law was addressed in Decca Ltd. v. United States. The U.S. Court of Claims ruled that a radio navigation system, Omega, was located in the U.S. for the purposes of patent infringement. The “home territory,” the court stated, is where the “‘master’ station or stations” are located. Because the “master” Omega station was in the U.S., it did not matter that the infringing system operated in more than one country. The invention was still within the reach of U.S. patent law.

In 2005, the Decca decision was narrowed by the Federal Circuit’s holding in NTP, Inc. v. Research in Motion, Ltd. In that case, the court limited the relevant considerations, stating that use of a claimed system occurs where the system is controlled and beneficial use of the system is obtained. For process patents, “a process cannot be used ‘within’ the United States . . . unless each of the steps is performed within this country.”

Although limited to patent infringement under U.S. law, the Decca and NTP cases call attention to important considerations for American companies. Through a development program to support commercial destinations, NASA has awarded three contracts for developing commercial space stations. All of the companies are based in the U.S., but the stations that result from the projects would become platforms for transportation of objects and information from foreign entities and countries. The answer to the question of jurisdiction will not be as clear as more private entities become involved.

Often overlooked, 35 U.S.C. § 105 addresses outer space jurisdiction with respect to inventions in the U.S. Subsection (a) provides that if an invention is “made, used or sold in outer space on a space object or component thereof under the jurisdiction or control of the United States,” it is considered to be made, used, or sold within the U.S. Importantly, the statute does not apply to (1) space objects that are subject to an international agreement to which the U.S. is a party and (2) space objects carried on the registry of a foreign state in accordance with the Registration Convention.

The second exception means that an invention made, used, or sold on a space object registered in a foreign country is under the jurisdiction of that foreign country. The statute only applies to inventions considered to be within the U.S., so it is limited in its reach. This is another signal that the governance of inventions made, used, or sold in space necessitates multijurisdictional cooperation.

Patent Considerations for U.S. Inventors

For private entities, inventions in outer space accompany several questions that will need to be resolved via international agreements specifically addressing intellectual property. In the meantime, it is worth looking at how U.S. law applies to extraterrestrial inventions and activities.

Home Territory

As it relates to patent infringement, jurisdiction is one of the primary concerns for inventions in LEO and beyond. Consider a situation like the one in Decca, where the infringing Omega system included a station in Norway for transmitting signals. The U.S. stations monitored all signals from the Norwegian station and maintained control over the synchronization of all transmissions. The ownership of the equipment, control of the system from the U.S., and actual beneficial use within the U.S. were the primary factors in the decision.

What if the infringing system was controlled by a foreign entity from a privately built space station communicating with stations in the U.S. and foreign countries? Under Decca, the reach of U.S. patent law would depend on the location of the “home territory.” Both Decca and NTP suggest this is where control of the equipment or system occurs. If operation of the system occurs in LEO on a private space station, jurisdiction would depend on the state that launched the equipment to build and maintain that station.

Outside of the Decca and NTP standards, the state that launched the particular space object would be considered the home territory under 35 U.S.C. § 105, which provides that inventions made, used, or sold on U.S. space objects are considered to be made, used, or sold within the U.S. Therefore, if a private entity utilizes a U.S. space object in its activities, any inventions made, used, or sold on that space object would bring the entity within reach of U.S. patent law. If the entity instead registers its space object on another country’s registry, § 105 does not apply. If the private entity’s space object is registered with a party to the Outer Space Treaty, that party retains jurisdiction.

For the purposes of infringement, activities performed on a registered space object are likewise considered to occur within the jurisdiction of the launching state. A foreign entity could argue that its activities are not governed by U.S. patent law under the § 105 foreign registration exception because it registered with a foreign country. A private entity could similarly argue that its space objects were launched from a foreign country and are therefore not within the reach of U.S. patent law.

Utility and Enablement in Space

Other patent-specific issues that are raised by the influx of private entities developing commercial applications in LEO and beyond include the utility and enablement requirements under U.S. patent law. The decision in Ex parte McKay is relevant to the question of jurisdiction, but the case also provides some guidance on the patentability of inventions involving extraterrestrial use or application. The U.S. Patent and Trademark Office Board of Appeals (now the Patent Trial and Appeal Board) did not sustain the examiner’s rejections of three claims as lacking utility. The patent application at issue related to a method for obtaining oxygen and water from extraterrestrial materials, namely, lunar surface material.

The examiner argued that the material required to carry out the claimed process was not available and the recited method was useful “only in an extraterrestrial environment.” The board disagreed, stating that the material was brought back to Earth by Apollo XI and XII and was therefore available for the purposes of patentability. Specifically, the material brought back by the Apollo missions was “made available to selected scientific centers and institutions for evaluation and experimentation.” The board noted that “although practical considerations would dictate against its commercial exploitation on earth,” that “is not a standard by which the statutory requirement of utility is to be measured.”

On the issue of enablement, the board reasoned that the environmental differences existing on the Moon were not significant because humans are aware of those differences and “known engineering principles can manifestly be applied and utilized in establishing an operative system on the moon.”

The case is important for outer space explorations to celestial bodies, including the Moon and Mars. SpaceX and NASA will soon launch a mission to the Moon, an activity that could become a frequent occurrence involving more private parties. While inventors will still need to navigate the web of international agreements, it can be assumed that the U.S. standard for patentability will still require a showing of utility and enablement. This begs the question: At what point does the geographic location influence patentability? More specifically, if an invention can only be made or used in space or on a celestial body, can an applicant show usefulness and enablement for the purposes of patent protection?

The decision in McKay suggests that the utility requirement for certain space-related methods is satisfied where the materials necessary to carry out the claimed method were made available by being transported from the Moon to Earth. What if a private entity sought a U.S. patent for an invention involving material that is not made available on Earth? One can imagine a situation involving a similar invention for extracting material from the surface of a celestial body not transported back to Earth. If the materials required to carry out the invention are never transported to Earth, can the invention be enabled? Does the invention have utility if it has no use outside of its use on a celestial body?

These and other patentability questions will need to be considered by each signatory to an international agreement on intellectual property. Without a consensus, patent examinations for space-related inventions may vary greatly in outcome. In the end, patent laws are territorial, and that factor alone is becoming increasingly difficult to recognize.

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    Austin R. Bauersmith

    Ryder, Mazzeo & Konieczny LLC

    Austin R. Bauersmith is an associate patent attorney at Ryder, Mazzeo & Konieczny LLC, a boutique intellectual property law firm in Montgomery County, Pennsylvania. He focuses on patent and trademark prosecution and litigation and has research and work experience in the biotechnology and artificial intelligence spaces.