November 19, 2018
Originally posted 2018-07-12 5:32:31
By Irina Pomestchenko and Shandice Sluch | www.amdlawgroup.com
In an era where human space exploration is imminently upon us, advancements in space technology not only challenge gravitational boundaries but also established laws.
On October 10, 1967, the Outer Space Treaty was created. The treaty governs international space law. This treaty prohibits any claims of national sovereignty, yet permits all states to freely explore the outer space.
Traditionally, outer space was a governmental domain. As a result, space programs were devoted to exploratory or military operations. However, as space programs have developed, the commercial aspect of outer space has emerged.
In early 2004, President George W. Bush gave NASA a new vision for space exploration. In this new vision, he explained his desire.
. . .build new ships to carry humans forward into the universe, to gain a new foothold on the moon and to prepare for new journeys to worlds beyond our own. ~ George W. Bush
The primary objective of the vision was to advance scientific, security and economic interests of the United States. To make this objective a reality, it was recommended that NASA aggressively use its contractual authority to involve commercial and non-profit organizations in future space missions. In addition to NASA involvement, Congress also provided incentives for entrepreneurs. They ensured business owners that any investment in the development of space-related technologies would receive monetary awards and adequate intellectual property protection.
In 2015, President Barack Obama further encouraged the idea of a commercial outer space with the passage of the Spurring Private Aerospace Competitiveness and Entrepreneurship (SPACE) Act. The SPACE Act was designed to streamline space regulations and foster growth of the commercial space industry in areas, such as mining and tourism. Although a step in the direction of commercialization, experts debate if claiming the ownership of resources in space violates the Outer Space Treaty.
The efforts to commercialize outer space have been successful. Today, private enterprises enter the space exploration arena with plentiful financial resources invaluable technical expertise. In fact, many of the recent space developments have been created by them. Space technologies like remote sensing, direct broadcasting from space, and research on micro-gravity environments were created by private companies.
Companies like Boeing, SpaceX, and Lockheed Martin are leading the practice of developing and investing in commercialized outer space. Their efforts have contributed to the current construction of a spacecraft capable of commercial space travel to Mars.
However, these developments are not without help from government agencies. State-owned agencies and private companies often collaborate through licensing contracts to acquire the best technical and financial resources. Despite this conglomerate of resources, private entities are more reluctant to engage in research and development investments. They need to ensure that the investment can be recovered in the future through the protection of the intellectual property that is developed. As a result, participation is dependent on this protection.
In order to receive IP protection, companies should seek patent protection for space-related inventions in countries and regions that have registered space objects (e.g., space station modules, space shuttles, or spacecraft) [35 USC, Section 105; Outer Space Treaty 1967, Article 8].
Under traditional patent law, an invention is entitled to monopoly protection for 20 years. This protection allows the inventor to prevent others from using, selling, or making the invention. In order to qualify for this monopoly, an invention must be novel, nonobvious, and useful. Novelty is defined as being new. Novelty can be defeated if there is prior art, such as the invention is previously revealed in a publication, or if it was shown to a public before the patent was registered. To be nonobvious, an invention must have an inventive step that makes it different from similar previously registered inventions. And, of course, the invention must be useful to those that utilize the invention.
Once all of these requirements are satisfied, the invention is granted protection within the territory the patent was registered. This limited geographical protection is called the principle of territoriality. For example, under traditional U.S. patent law, the United States government grants a monopoly over the invention in U.S. territory only. If an inventor wishes to obtain exclusive rights to an invention outside of the United States, they must file a separate patent application in each country where protection is sought. Organizations such as the World Intellectual Property Organization (WIPO), the World Trade Organization (WTO) and the European Patent Organization (EPO) have undertaken numerous efforts to harmonize international patent laws. The Patent Cooperation Treaty is an example of an effort to streamline the international patent application process.
However, the principle of territoriality is not as clear in space as it is on Earth. Under the Outer Space Treaty, there is no designated allotment of jurisdiction and ownership in space. So despite these harmonization efforts, the application of national laws in outer space leaves an unsolved problem.
To solve this problem, the International Space Station created the Intergovernmental Agreement (IGA) on September 29, 1988. The parties to this agreement were Canada, Japan, the United States, and ten other Member states.
The International Space Station serves as a platform for scientific research and discoveries in space since 1998. It is composed of several modules that are operated by the space agencies of different countries. Each of these modules, controlled by Member countries would have exclusive patent jurisdiction over the activities conducted in their respective space station modules. For example, a European country or court may have patent jurisdiction over activities conducted in an International Space Station module that is registered to the European Space Agency.
According to the Registration Convention that entered into force on September 15, 1976, the launching country should register the space object with an appropriate registry. The Article 21 of IGA later emphasized that each Member state maintains jurisdiction over its own registered element, under the Outer Space Treaty and the Registration Convention. Despite this clarification, some confusion still exists regarding the data transmitted back to Earth and processed/compiled on the ground as well as experiments transported to the terrestrial facility for further research.
Under the U.S. patent law owners are entitled to 20 years of protection for their invention, on the other side, space law grants them only five years. So the question becomes if data from space are compiled and processed on Earth which law governs?
Zero Gravity Solutions Inc., company that is conducting microgravity planting research, has been faced with this question. Under terrestrial law, Zero Gravity would have rights to their plant patents for 20 years. However, according to space law, Zero Gravity Solutions is only allowed 5 years of protection. The possibility of this dramatic change in patent protection may impede capital investments devoted to space research and development.
There is now a push for commercial companies to own exclusive rights to their discoveries. NASA proposes to solve this problem by creating legislation that provides commercial companies exclusive rights to their patents. At the moment, Section 305 of the Space Act limits ownership of intellectual property to NASA. Under Section 305(a), NASA and the government, the “title-taking agency”, owns all inventions made under NASA contracts.
Fortunately, not all contracts are subject to the Section 305(a) limitation of the Space Act. NASA has the ability to assign the patent rights back to the inventive entity. Despite the transfer of ownership, the government would still retain a license in the invention.
Additionally, there is another exception to Section 305(a), the Centennial Challenge. This initiative, created by NASA, stimulates space innovations by awarding monetary prizes to innovations that can potentially be used in future NASA missions. The ownership limitation of 305(a) does not apply to the Challenge– and contestants retain the rights to their inventions. This is possible because NASA does not provide funds for the research initiative and awards are only made to successful teams when the challenges are met. If NASA were to fund an R&D initiative to achieve specific results, 305(a) would require that NASA retains the ownership.
Aside from the Centennial Challenge, NASA has created numerous initiatives to encourage commercial entities to participate in space research and development. Commercial Orbital Transportation Services (COTS) is another initiative that allows for the 305(a) exception on a case-by-case basis. There is a requirement, however, that the private entity promptly report the invention to NASA and file the patent application within the certain time frame. And although ownership remains vested in the inventor, the government retains a license. The upside is NASA must refrain from exercising the license for a certain period of time.
These two initiatives show that NASA strives to cure commercial entity concern regarding patent ownership.
Even with the implementation of NASA programs, there is still opposition to NASA being involved in intellectual property rights. As businesses have become more involved in the research and development of space technology, there has been a large shift away from any government involvement in the human exploration of space. For the first time, exploration by the government is not the main objective—commercial space exploration is. Private companies, like Boeing and SpaceX will own and operate the vehicles capable of sending American astronauts into orbit. It’s part of a growing movement to privatize space travel.
Whether space technology is developed by the government or private companies, the new age of space exploration is here. Government standards are becoming less relevant as private companies create their own path into space. With the shift between government and commercial ownership, extraterrestrial patent infringement claims and commercial space patent litigation will become inevitable in the future.
As the possibility of commercial space travel on the horizon becomes a reality, the international community will be forced to create a legal system capable of protecting the new discoveries and innovations. Our future depends on it.
At the beginning of May 2016, NASA issued a press release announcing a newly established searchable public database of NASA’s expired patents. These patents cover thousands of technologies which are already in the public domain, but NASA has made it much easier to examine its patents by operating its own portal. Also announced was the release of 56 formerly-patented technologies to the public domain so that they can be used by commercial enterprises prior to their expiration.