PhD Research Proposal - MOHAN RAJ.

S
TOPIC - Patents in the field of outer space -International intellectual property
law concern

Abstract: The potential for private technological expansion into space raises
questions of how to protect intellectual property rights of inventions that are
both brought into space and made in space. While there are international treaties
governing space law, none of these treaties discuss how to designate or enforce
patent rights in space. The International Space Station has implemented a
solution of quasi-territoriality to establish patent rights. This proposal suggests,
however, that this solution will be deficient when private entities venture further
into space exploration. Moreover it explores the possibility of a universal
approach to patent law in space through two proposed solutions for the creation
and enforcement of a universal space patent law, arguing that the best approach
may be a combination of the two solutions.
RATIONALE AND SIGNIFICANCE OF THE STUDY
As the International Space Station nears completion, the issue of patentability
of space-related inventions is becoming increasingly important. 1 Although the
final frontier is still out of reach for most individuals and corporations,
technological progress is bringing the mystery of space ever closer. 2Companies
like SpaceX are developing private technology to send to space.Technological
growth, however, is not sustainable on its own; such technological progress
requires the law to progress in kind.In particular, laws surrounding intellectual
property (IP) in space are necessary to promote private businesses to continue
to develop technologies for, and in, space.3
My research will project the current gaps in space law as it pertains to patents.It
then analyzes several proposed solutions, which attempt to solve the current
problems in space patent law through changes in both statutes and policy. I
assure that my research will concludes and provides the best solution so as to
create a unified patent jurisdiction under the governance of the World
Intellectual Property Organization (WIPO)

1 See Patent and space related inventions, European space agency,

http://www.esa.int/About_Us/Law_at_ESA/Intellectual_Property_Rights/Patents_and_space-
2 See Patenting inventions in the space (3rd Jan,2019) https://www.reddie.co.uk/2019/01/03/patenting-inventions-

in-space/
3 World Intellectual Prop. Org. [WIPO], Intellectual Property and Space Activities, at 21–22 (Apr. 2004),
www.wipo.int/patent-law/en/developments/pdf/ip_space.pdf.
SURVEY OF WORK DONE IN RESEARCH
WHAT IS SPACE LAW?

Space law can be described as the body of law governing space-related

activities.4Space law is based upon a series of international treaties, agreements,
and UN resolutions governing the use and exploration of outer space. The
treaties work to prevent the militarization of space; prohibit claims of sovereignty
over celestial objects, and outline the liabilities of space-faring entities for
damages to the surface of the Earth as well as to other objects in outer space.5
Whereas current international space law treaties do not, however, consider
intellectual property rights in space.

Current International Space Law Illustrates

The Treaty on Principles Governing the Activities of States in the Exploration and
Use of Outer Space (“Outer Space Treaty”) enumerates in broad terms the rights
and limitations pertaining to exploration and real property in space.One of the most
important results of this convention is allowing for free exploration and use of
space including a non-appropriation clause to ensure that all nations are able to
have the same access to spaceresources.Subsequent international treaties on
space law include the Agreement on the Rescue of Astronauts, the Return of
Astronauts, and the Return of Objects Launched into Outer Space, which describes
procedures for the rescue of astronauts and the return of space objects to the
launching state.Five years later, the Convention on International Liability for
Damage Caused by Space Objects (“Liability Convention”) proposed solutions to
allocate responsibility and demand compensation when a country’s property was
damaged in space.In particular, the treaty assigns liability to the launching state
for damage in space based on fault and absolute liability for damage on the Earth. 6
Finally, five United Nations General Assembly resolutions address space law,
but none of the resolutions consider IP rights in space. Private agreements have
attempted to address isolated cases, such as the use of the International Space
Station (ISS) or satellites, but these agreements do not extend into general terms.
Overall, international authorities have not expanded international IP laws to
address conflicts that would arise in space, nor have they modified space law on
an international scale since1980.

4 Space Law Def,UNITED NATIONS, office for outer space offairs https://www.unoosa.org/oosa/index.html
5 See Space law bibliography, https://www.nasa.gov/centers/hq/library/find/bibliographies/space_law
6 U.N. Treaty on Principles Governing the Activities of States in the Exploration and Use of Outer Space, including

the Moon and Other Celestial Bodies, art. 2, Jan. 26, 1967, 610 U.N.T.S. 8843
United States Patent Law in Space
In the United States, there has been limited progress developing patent law in
space. The only space patent law in the United States is the Patents in Space
Act. The Patents in Space Act extends United States patent law to apply to
inventions created on space objects registered with the United States. 7 Enacted
the act in 1990 to encourage private investment in space projects and to extend
extra-terrestrial protections to United States-owned spacecraft. 8 The act does
not, however, discuss international enforcement, and, presumably, it applies
exclusively to domestic disputes. With such a narrow scope and in the absence
of pertinent case law, the determination of whether this act will provide any real
benefit remains open.

NEED FOR MORE RESEARCH

Terrestrial International Patent Law
There is substantial international law relating to various forms of IP, and to
patents in particular. WIPO first convened in 1967 to govern general
international IP laws and enforcement and define evolving IP rights. Additionally,
the Patent Cooperation Treaty added to the body of international literature on
patent law by creating an international patent that would provide protection in
all of the signing states. The Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS) also established international guidelines for patent
enforcement. TRIPS applies the “most-favored nation treatment,” which is a non-
discrimination clause based on the country in which a patent was created.
Although none of these treaties directly apply to space, the TRIPS non-
discrimination clause may extend to space by requiring that national space
patent laws uphold the non-discrimination clause for space patents.9

AIMS AND OBJECTIVES

DEFINING “PATENT LAW IN SPACE”
Clarifying law in space would allow for invention and exploration to increase by
protecting the rights of inventors and creating incentives to continue their
work.Because of the significant financial investment required to break into the

7 The USA Patent Act (re. 35 U.S.C. § 105(2003)) states that any invention made, used or sold in outer space on
board a spacecraft that is under the jurisdiction or control of the USA is considered to be made, used or sold on US
territory, except where an international agreement has been concluded that states otherwise.
8 See A brief history of patent of law in united States, Mathew Asbell, https://ladas.com/education-center/a-brief-

history-of-the-patent-law-of-the-united-states-2/
9 See Agreement on trade – related aspects of intellectual property rights, Article 7,Most – favoured nation

treatment.
market, inventors need to know their legal rights in space.In particular,
establishing space patent jurisdiction, liability, and duty to enforce would
provide certainty and encourage exploration.Establishing patent law in space
would prevent space companies from gaining an advantage simply based on their
country of registration
Inventions Developed in Space
The possibility of private companies venturing into space exploration opens an
opportunity to develop patentable inventions in laboratories on spaceships.The
current standard for determining jurisdiction over a patent, however, is through
the country of registration of the space object on which the invention is
developed.Thus, for an invention developed in space, successful patent
enforcement currently requires obtaining a patent for the invention in every
country that has the ability to send an object into space. Otherwise, a company
could infringe on the patent with no repercussions simply by registering its space
object in a country in which the invention has not been patented.The country of
registration method also requires each country to have a comprehensive set of
space patent protections. Moreover if a country does not explicitly extend its
patent law to space, the applicability of its patent law to space remains
doubtful.Moreover, differences in patent law between countries can lead to gaps
in enforcement.10
Private agreements may attempt to resolve the issue of patent rights through
their own methods.The primary example is the Intergovernmental Agreement
(IGA), which governs the use of the ISS, including allocating patent rights.11 On
the ISS, patent rights are governed using quasi-territoriality, where a country’s
jurisdiction extends over all activities performed on its registered portion of the
ISS.This approach is not, however, binding on any countries that are not part of
the IGA, thereby allowing those countries to encroach on patent rights, which
were originally obtained on the ISS, on their own spaceobjects. 12
Inventions Brought to Space
As with inventions developed in space, patent protections for inventions brought
into space remain uncertain. 13 Because there is no international space patent
law, it is not clear whether inventions patented on Earth and brought into space
will be protected against international infringement.Further, current
international patent law does not extend protection to patented inventions in
space.In the absence of a defined patent law in space, companies considering

10 See Intellectual Property and Space Activities, https://www.wipo.int › ip_space

11 For example, in Russian patent law, a licensee has a right by law to sublicense and a licensing contract cannot
stipulate otherwise, whereas in United States law, sublicensing is a right that must be granted by the licensing
contract.
12 IGA defines legal rights and obligations for the operation of the International Space Station).
13 Uncertain in “Intellectual property and space activities”
venturing into space face high levels of uncertainty about their rights and
protections.14

RESEARCH QUESTIONS
The question then logically arises: how does one stop someone using their
invention in space? Is it possible to obtain a ‘space patent’? While it is not
possible to get a ‘space patent’, properly drafted patents can provide
protection for inventions that are to be used in space.15

The question arises as to whether the territorial jurisdiction under

intellectual property law permits the extension of each national (or
regional) law to the objects which the respective country has registered and
launched into outer space

While recognizing the importance of intellectual property for the

exploration of outer space and the further development of science and
technology, questions have been raised as to whether the protection and
enforcement of intellectual property rights may conflict with the said
fundamental principles in terms of access to knowledge and information
derived from space activities and in terms of the freedom of exploration
and use of outer space.

Another issue relates to the interpretation of Article 5ter of the Paris

Convention for the Protection of Industrial Property, which provides for
certain limitations of the exclusive rights conferred by a patent in the
public interest in order to guarantee the freedom of transport (doctrine of
temporary presence). The question is then whether the doctrine of
temporary presence also applies to space objects, for example, in the case
of the transport of patented articles to or from a Space Station through a
launching site in a foreign country.16

14 See Space. The final frontier for patents? https://www.barkerbrettell.co.uk/space-the-final-frontier-for-patents/

15 See Patenting Inventions In Space,Advanced Engineering,https://www.reddie.co.uk/category/ip-news/

16 See patent expert issues, Inventions in space, https://www.wipo.int/patents/en/topics/outer_space.html

METHODOLOGIES AND TECHNIQUES TO BE ADOPTED TO ACHIEVE
PROPOSED SOLUTIONS
The quasi-territoriality approach of the IGA will be insufficient when more private
companies venture into space because it will allow companies to strategically
register their space objects to circumvent patent protections, thereby reducing
incentives to develop innovative space technology.Both the diversity of national
patent law and the opportunity for companies to infringe on patents without any
repercussions necessitate a clear method for granting and enforcing space
patents.One solution is to create an international method for governing patents
in space, thus eliminating quasi-territoriality.Two ways to establish a unified
method for granting and enforcing patents in space are, first, to establish a
universal space territory that would include a space patent jurisdiction, and,
second, to create a universal space patent that would be governed by a United
Nations subcommittee.

Establishing a Universal Patent Law

WIPO proposes a universal patent law and a corresponding space patent
jurisdiction. This method would establish space as its own territory for the
purpose of patent rights with a separate jurisdiction to create and enforce
patents. Inventors would file one patent application that would be universally
enforceable and protectable throughout space.

Although WIPO has not yet identified a governing body for this system, the
primary advantage is that this system provides greater protections to inventors
by creating uniform rules and closing the loophole that allows companies to
infringe on patents simply by virtue of their country of registration.Furthermore,
a uniform system simplifies and clarifies the patenting process by requiring
inventors to file only one patent application, instead of a separate application for
each country in which they want to enforce their rights.A significant obstacle to
the creation of a space patent jurisdiction, however, is the traditional
unwillingness of countries to part with their sovereignty in order to give power
to an international governing organization.
A Governing Body for Patents in Space
A second proposed solution calls for a new subdivision of the United Nations
Committee on Peaceful Uses of Outer Space (COPUOS).This solution proposes a
Subcommittee on Patents in Outer Space responsible for granting and enforcing
space patents. The subcommittee would have authorization to define the scope
of space patents and methods to handle infringement claims. This solution also
proposes a universal jurisdiction for patent enforcement, but it goes a step
further than WIPO’s proposal to outline an actual possibility for implementation
and suggests a governing body.
One advantage of this proposal is that COPUOS has extensive experience in
space law and will likely be an appropriate governing body for space patents.
Much like the WIPO solution, this solution would also allow for the
standardization and regulation of patent law in space. This could clarify and
improve the patent application process, thus enabling exploration and
international collaboration. Although this solution would be extensive, the
feasibility of implementing it remains low. Some countries may not want to give
up their space patent rights or may not want to allocate them to a United Nations
committee.

CONCLUSION EXPECTED

The current status of international space law lacks patent protections in space.
One proposed solution, from WIPO, is creating a single patent application and
jurisdiction that a governing organization will enforce universally for all patents
in space. A second proposal goes further by proposing to create a new
subcommittee within the United Nations COPUOS that would regulate and
enforce patent protections in space. Both of these proposals reject the division
of patents in space by territory, as is currently the rule on the ISS. Instead, the
best approach is to take the notion of a space territory from the WIPO proposal
and combine it with the detailed description of the implementation of a space
patent from the COPUOS proposal.

Bibliography
Rosario Avveduto, Comment, Past, Present, and Future of Intellectual Property
in Space: Old Answers to New Questions, 29 Wash. L. Rev. 203 (2019).Available
at: https://digitalcommons.law.uw.edu/wilj/vol29/iss1/7
U.N. Treaty on Principles Governing the Activities of States in the Exploration
and Use of Outer Space, including the Moon and Other Celestial Bodies, art. 2,
Jan. 26, 1967, 610 U.N.T.S. 8843
http://www.unoosa.org/oosa/en/ourwork/spacelaw/index.html
(definingspace law as rules, principles, and standards of international law).
 SPACE CHRONOLOGY, http://spacechronology.com/ (featuring a timeline of
technical innovations related to space).
International Bureau of World Intellectual Property Organization, International
Property and Space Activities, at 4 (2004),
https://www.wipo.int/export/sites/www/patentlaw/en/developments/pdf/ip_
space.pdf (explaining how space technology is at the forefront of technical
advancement and, as such, is the fruit of intellectual creations).

THOMAS J. BIERSTEKER & CYNTHIA WEBER, STATE SOVEREIGNTY AS

SOCIAL CONSTRUCT, at 14 (Cambridge Studies in International Relations),
Cambridge University Press (1996).
Haris Durrani, Is Spaceflight Colonialism?, THE NATION (July 19, 2019),
https://www.thenation.com/article/apollo-space-lunar-rockets-colonialism/;

Haskins, Private Space Companies No Longer Have To Follow The Law, THE
OUTLINE, https://theoutline.com/post/4469/outer-space-treaty-commerce-
free-enterprise-bill-spacex-blue-Origin-boeing-lockheed-
martin?zd=2&zi=yhzwuys2;
The Colonization of Space, THE WEEK(Nov. 26, 2018),
https://theweek.com/articles/808840/colonization-space.
Matthew Thornburg, Are the Non-Appropriation Principle and The Current
RegulatoryRegime Governing Geostationary Orbit Equitable for All of Earth’s
States?, 40 MICH. J. INT’L L. (2019),http://www.mjilonline.org/are-the-non-
appropriation-principle-and-the-current-regulatory-regime-governing-
geostationary-orbit-equitable-for-all-of-earths-states/ (last visited Aug. 31,
2019).
ARTICLE- Patent infringement in outer space 35 U.S.C. § 105:FOLLOWING THE
WHITE RABBIT DOWN THE RABBIT LOOPHOLE THEODORE U. RO*MATTHEW
J. KLEIMAN KURT G. HAMMERLE***
https://www.wipo.int/export/sites/www/patent-
law/en/developments/pdf/inventions_space.pdf
http://portal.unesco.org/pv_obj_cache/pv_obj_id_FC954921FB5D28C49204F3
813E1A097E4D1E0400/filename/DraftPolicyDocument4.pdf
Treaty on Principles Governing the Activities of States in the Exploration and Use
of Outer Space
Abeyratne, R.I.R. Frontiers of Aerospace Law. Aldershot, UK: Ashgate, 2002.
KZD1145 .A23 2002 BOOKSTACKS

Colloquium on the Law of Outer Space. Proceedings of the Forty-Eighth Colloquium

on the Law of Outer Space, 17-21 October 2005, Fukuoka, Japan. Reston, VA:
American Institute of Aeronautics and Astronautics, 2006.
KZD 1024 .I48 2005 BOOKSTACKS
The library holds the 1958-2005 colloquiums.

Dietrich, George B. Extending the Principle of the Common Heritage of Mankind to

Outer Space. Thesis (LL.M.)--Institute of Air and Space Law, McGill University,
2002.KZD1390 .D54 2002 BOOKSTACKS
Doyle, Stephen E. The Origins of Space Law and the International Institute of
Space Law of the International Astronautical Federation. San Diego, CA: Univelt,
2002.KZD1024 .D69 2002 BOOKSTACKS
Dunk, Frans G. von der (ed.) Handbook of Space Law. Cheltenham, England:
Edward Elgar Publishing, [2015]
KZD1145 .H36 2015 BOOKSTACKS
Kayser, Valéry. Launching Space Objects: Issues of Liability and Future Prospects.
Boston : Kluwer Academic Publishers, 2001.
KZD4030 .K39 2001 BOOKSTACKS
Kleiman, Matthew J.; Jenifer Lamie, Maria-Vittoria Carminati Weil, and
American Bar Association, Section of Science & Technology Law. The Laws of
Spaceflight: A Guidebook for New Space Lawyers. Chicago: American Bar
Association, Section of Science & Technology Law, 2012.
KZD1146 .U6 K58 2012 BOOKSTACKS
Malinowska, Katarzyna. Space Insurance: International Legal Aspects. Alphen
aan den Rijn, The Netherlands: Kluwer Law International B.V., [2017]
KZD4055 .M35 2017 BOOKSTACKS