PATENT LAW IN SPACE MARIE WEISFEILER *

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1 PATENT LAW IN SPACE MARIE WEISFEILER * 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 essay suggests, however, that this solution will be deficient when private entities venture further into space exploration. This essay then 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. INTRODUCTION Although the final frontier is still out of reach for most individuals and corporations, technological progress is bringing the mystery of space ever closer. 1 Companies like SpaceX are developing private technology to send to space. 2 Technological growth, however, is not sustainable on its own; such technological progress requires the law to progress in kind. 3 In particular, laws surrounding intellectual property (IP) in space are necessary to promote private businesses to continue to develop technologies for, and in, space. 4 This essay discusses the current gaps in space law as it pertains to patents. 5 It then analyzes several proposed solutions, which attempt to solve the current problems in space patent law through changes in both statutes and policy. 6 This essay concludes that the best solution is to create a unified patent jurisdiction under the governance of the World Intellectual Property Organization (WIPO). 7 Copyright Boston College Intellectual Property & Technology Forum, Marie Weisfeiler * J.D. Candidate, Boston College Law School (expected 2021); B.A., Physics, University of California, Berkeley (2018). 1 See Joshua F. Cheslow, The Future of the Law, 283-AUG N.J. LAW. 35, 36 (2013) (predicting that space travel will allow for more scientific advancements and private business opportunities). 2 3 See id. at 37 (predicting that greater space exploration will lead to more development of space law). 4 World Intellectual Prop. Org. [WIPO], Intellectual Property and Space Activities, at (Apr. 2004), 5 See infra notes and accompanying text. 6 See infra notes and accompanying text. 7 See infra notes and accompanying text. 1

2 2 Boston College Intellectual Property & Technology Forum [BC IPTF I. WHAT IS SPACE LAW? Space law is comprised of international and national treaties and laws that govern the use of space. 8 Its goal is regulation of national activities in space such as exploration, liability for damages, and dispute resolution. 9 Current international space law treaties do not, however, consider intellectual property rights in space. 10 A. Current International Space Law The Cold War served as a backdrop for the first international treaty on space law, the Treaty on Principles Governing the Activities of States in the Exploration and Use of Outer Space ( Outer Space Treaty ). 11 As the most general international treaty on space activity, it enumerates in broad terms the rights and limitations pertaining to exploration and real property in space. 12 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 space resources. 13 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 14 to the launching state. 15 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. 16 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. 17 The space powers 18 last signed an international convention on space law in 1975, called the 8 Skip Smith, A Space Law Primer for Colorado Lawyers, 47-MAR COLO. LAW. 48, 49 (2018) Juan Felipe Jiménez, Patents in Outer Space: An Approach to the Legal Framework of Future Inventions, 98 J. PAT. & TRADEMARK OFF. SOC Y 447, 456 (2016). 11 Treaty on Principles Governing the Activities of States in the Exploration and Use of Outer Space, Jan. 27, 1967, 18 U.S.T. 2410, 610 U.N.T.S. 205; Smith, supra note 8, at Smith, supra note 8, at 50; see Treaty on Principles Governing the Activities of States in the Exploration and Use of Outer Space, supra note 11 (stating the provisions of the treaty); Intellectual Property and Space Activities, supra note 4, at 7 8 (describing the provisions of the Outer Space Treaty). 13 Smith, supra note 8, at 51, A space object is defined as any object launched into space, including its component parts and its launch vehicle. Convention on International Liability for Damage Caused by Space Objects, Mar. 29, 1972, 24 U.S.T. 2389, 961 U.N.T.S Agreement on the Rescue of Astronauts, the Return of Astronauts and the Return of Objects Launched into Outer Space, Dec. 19, 1967, 19 U.S.T. 7570, 672 U.N.T.S. 119; Smith, supra note 8, at Convention on International Liability for Damage Caused by Space Objects, supra note ; Andre G. DeBusschere, Liability for Damage Caused by Space Objects, 3 J. INT L L. & PRAC. 97, (1994). 18 The space powers are countries that have the capabilities to send objects into space. They include the United States, Russia, China, Europe, India, and Japan. Smith, supra note 8, at 50.

3 2018] Patent Law in Space 3 Convention on Registration of Objects Launched into Outer Space, to establish standardized registries for space objects and to require registration of all space objects. 19 Finally, five United Nations General Assembly resolutions address space law, but none of the resolutions consider IP rights in space. 20 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. 21 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 since B. United States Patent Law in Space In the United States, there has been limited progress developing patent law in space. 23 The only space patent law in the United States is the Patents in Space Act. 24 The Patents in Space Act extends United States patent law to apply to inventions created on space objects registered with the United States. 25 Congress enacted the act in 1990 to encourage private investment in space projects and to extend extraterrestrial protections to United States-owned spacecraft. 26 The act does not, however, discuss international enforcement, and, presumably, it applies exclusively to domestic disputes. 27 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 Convention on Registration of Objects Launched into Outer Space, Nov. 12, 1974, 28 U.S.T. 695, 1023 U.N.T.S. 15; Smith, supra note 8, at See G.A. Res. 51/122 (Dec. 13, 1996) (enumerating principles governing international cooperation in the exploration and use of space); G.A. Res. 47/68 (Dec. 14, 1992) (enumerating legal principles governing the use of nuclear power sources in space); G.A. Res. 41/65 (Dec. 3, 1986) (enumerating legal principles governing the use of remote sensing); G.A. Res. 37/92 (Dec. 10, 1982) (enumerating legal principles guiding the use of satellites to broadcast television); G.A. Res (XVIII) (Dec. 13, 1963) (enumerating legal principles behind the exploration and use of space); Smith, supra note 8, at 54 (listing five UN resolutions that do not address IP laws for space). 21 See Smith, supra note 8, at 55 (citing agreements that apply only to certain situations such as ISS governance). 22 See Jiménez, supra note 10, at 456 (noting that no international IP laws have been extended to space). 23 Jocelyn H. Shoemaker, Note, The Patents in Space Act: Jedi Mind Trick or Real Protection for American Inventors on the International Space Station?, 6 J. INTELL. PROP. L. 395, 397, (1999). 24 Patents in Space Act, 35 U.S.C. 105 (2012) ; Matthew J. Kleiman, Patent Rights and Flags of Convenience in Outer Space, 23 No. 3 AIR & SPACE LAW 4, 4 5 (2011). 26 Hughes Aircraft Co. v. United States, 29 Fed. Cl. 197, 230 n.41 (Fed. Cl. 1993); S. Rep. No. 266, 101st Cong., 2d. Sess. (1990). 27 Hughes Aircraft Co., 29 Fed. Cl. at 230 n.41; Kleiman, supra note 25, at 4 5; Shoemaker, supra note 23, at ; see 105 (stating the provisions of the act). 28 See Rachel B. Trinder, Recent Developments in Litigation, 5 J.L. & TECH. 45, (1990) (predicting that there will be a rise in space related litigation in future years due to technological expansion into space).

4 4 Boston College Intellectual Property & Technology Forum [BC IPTF C. Terrestrial International Patent Law There is substantial international law relating to various forms of IP, and to patents in particular. 29 WIPO first convened in 1967 to govern general international IP laws and enforcement and define evolving IP rights. 30 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. 31 The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) also established international guidelines for patent enforcement. 32 TRIPS applies the most-favored nation treatment, which is a non-discrimination clause based on the country in which a patent was created. 33 Although none of these treaties directly apply to space, the TRIPS nondiscrimination clause may extend to space by requiring that national space patent laws uphold the non-discrimination clause for space patents. 34 II. DEFINING PATENT LAW IN SPACE Clarifying patent law in space would allow for invention and exploration to increase by protecting the rights of inventors and creating incentives to continue their work. 35 Because of the significant financial investment required to break into the market, inventors need to know their legal rights in space. 36 In particular, establishing space patent jurisdiction, liability, and duty to enforce would provide certainty and encourage exploration. 37 Establishing patent law in space would prevent space companies from gaining an advantage simply based on their country of registration See Intellectual Property and Space Activities, supra note 4, at 5 7 (describing some of the international treaties pertaining to patent law on Earth). 30 at Patent Cooperation Treaty, June 19, 1970, 28 U.S.T. 7813, T.I.A.S. No. 8733; Leo B. Malagar & Marlo Apalisok Magdoza-Malagar, International Law of Outer Space and the Protection of Intellectual Property Rights, 17 B.U. INT L L.J. 311, 350 (1999); Christopher Miles, Comment, Assessing the Need for an International Patent Regime for Inventions in Outer Space, 11 TUL. J. TECH. & INTELL. PROP. 59, 68 (2008). 32 Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 4, 1994, 1869 U.N.T.S. 299, 33 I.L.M. 1197; Intellectual Property and Space Activities, supra note 4, at Intellectual Property and Space Activities, supra note 4, at at 11 n See id. at (proposing that intellectual property protection is a key factor in supporting space business developments). 36 See id. at 21 (noting that legal certainty would promote business interests in space); Kleiman, supra note 25, at 6 (citing that space technology innovation would be disincentivized because of the lack of meaningful patent protection). 37 See Miles, supra note 26, at 70 (stating that an international patent protection agreement would be necessary to incentivize research and development in space). 38 Kleiman, supra note 25, at 5.

5 2018] Patent Law in Space 5 A. Inventions Developed in Space The possibility of private companies venturing into space exploration opens an opportunity to develop patentable inventions in laboratories on spaceships. 39 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. 40 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. 41 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. 42 The country of registration method also requires each country to have a comprehensive set of space patent protections. 43 If a country does not explicitly extend its patent law to space, the applicability of its patent law to space remains doubtful. 44 Moreover, differences in patent law between countries can lead to gaps in enforcement. 45 Private agreements may attempt to resolve the issue of patent rights through their own methods. 46 The primary example is the Intergovernmental Agreement (IGA), which governs the use of the ISS, including allocating patent rights. 47 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. 48 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 space objects See Intellectual Property and Space Activities, supra note 4, at 4 (noting that private entities are becoming increasingly involved in space-related research and development). 40 Kleiman, supra note 25, at ; William C. Pannell, Note, Pirate Battles in Outer Space: Preventing Patent Infringement on the 8th Sea, 46 U. MEM. L. REV. 733, (2016). 43 Intellectual Property and Space Activities, supra note 4, at See id. at 13 (explaining that quasi-territorial principles could highlight differences among national intellectual property laws in space). 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. Fed. Labs., Inc. v. Comm r of Internal Revenue, 8 T.C. 1150, 1157 (1947); R. Page Heller, Russian Patent Law Considerations for Business, 47 les Nouvelles 219, 220 (2012); H. H. Henry, Annotation, Assignability of licensee s rights under patent licensing contract, 66 A.L.R.2d 606, 7 (1959). 46 See David C. Stewart, Note, Resolution of Legal Issues Confronting the International Space Station Project: A Step Forward in the Development of Space Law, 29 VA. J. INT L L. 745, 746 (1989) (noting that an intergovernmental agreement established legal principles for the establishment of a permanent space station). 47 See id. at (stating that the IGA defines legal rights and obligations for the operation of the International Space Station). 48 Intellectual Property and Space Activities, supra note 4, at 12 13; Stewart, supra note 46, at See Stewart, supra note 46, at 747 (explaining that the IGA applies to participating parties).

6 6 Boston College Intellectual Property & Technology Forum [BC IPTF B. Inventions Brought to Space As with inventions developed in space, patent protections for inventions brought into space remain uncertain. 50 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. 51 Further, current international patent law does not extend protection to patented inventions in space. 52 In the absence of a defined patent law in space, companies considering venturing into space face high levels of uncertainty about their rights and protections. 53 III. 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. 54 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. 55 One solution is to create an international method for governing patents in space, thus eliminating quasi-territoriality. 56 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. 57 A. Establishing a Universal Patent Law WIPO proposes a universal patent law and a corresponding space patent jurisdiction. 58 This method would establish space as its own territory for the purpose of patent rights with a separate jurisdiction to create and enforce patents. 59 Inventors would file one patent application that would be universally enforceable and protectable throughout space Intellectual Property and Space Activities, supra note 4, at See id. at 13, 14 (stating that in the absence of international space patent law, patent enforcement depends on jurisdictional questions and varying national policies). 52 See id. at 11, 14 (stating that application of terrestrial laws to space is unclear in an absence of explicit provisions extending them to space, and that no widely accepted international agreement governing international enforcement of patents exists). 53 See id. at (arguing that defined patent protections are essential for the development of space businesses). 54 See Kleiman, supra note 25, at 6 (explaining that lack of patent protection reduces incentive for space innovations and creates a race to the bottom ) Pannell, supra note 42, at See infra notes and accompanying text. 58 Intellectual Property and Space Activities, supra note 4, at

7 2018] Patent Law in Space 7 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. 61 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. 62 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. 63 B. 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). 64 This solution proposes a Subcommittee on Patents in Outer Space responsible for granting and enforcing space patents. 65 The subcommittee would have authorization to define the scope of space patents and methods to handle infringement claims. 66 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. 67 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. 68 Much like the WIPO solution, this solution would also allow for the standardization and regulation of patent law in space. 69 This could clarify and improve the patent application process, thus enabling exploration and international collaboration. 70 Although this solution would be extensive, the feasibility of implementing it remains low. 71 Some countries may not want to give up their space patent rights or may not want to allocate them to a United Nations committee. 72 Furthermore, the existence of organizations such as WIPO and the World Trade Organization (WTO), which may be more appropriate forums for 61 ; Kleiman, supra note 25, at Intellectual Property and Space Activities, supra note 4, at Kleiman, supra note 25, at Jiménez, supra note 10, at at See id. at 459 (explaining how a COPUOS subcommittee could base its substantive law on current international agreements). 68 at See id. (explaining the benefits of the proposed approach). 70 See Intellectual Property and Space Activities, supra note 4, at 22 (explaining how its proposal ensures legal certainties); Jiménez, supra note 10, at (claiming that a subcommittee granted with space IP authority could eliminate deficiencies in current international agreements); Kleiman, supra note 25, at 6 (encouraging the idea of a multinational patent jurisdiction in space to remove obstacles to developing a space economy). 71 Jiménez, supra note 10, at See id. (noting that most countries would push for their own patent laws to apply in space rather than submitting to an international authority).

8 8 Boston College Intellectual Property & Technology Forum [BC IPTF space patent regulation and implementation due to their current extensive work with patents, reduces motivation to form a new body. 73 C. Implementation The two proposals described above have the same goal of creating a unified jurisdiction over patents in space. 74 Thus, the two solutions are not mutually exclusive. 75 In fact, the best approach is to combine the two proposals. 76 Because the WIPO solution proposes establishing space as its own territory, it is broader in scope and will be more able to adapt to changes as space law develops. 77 In contrast, the COPUOS solution is more limited in both breadth and room for development because it establishes a universal patent rather than a new territory. 78 This distinction is important because it determines the way in which other fields of space law could be regulated. 79 Establishing space as its own territory leaves significantly more room for other territorial laws. 80 With a universal space patent, however, there is little room for growth in other areas of space law. 81 The COPUOS solution is more developed. 82 The United Nations might not, however, be the best body to create and enforce space patent laws. 83 Because WIPO s mission is to govern international IP law, it might be a better forum for governing space patent law. 84 WIPO, because of its extensive work to protect innovators, will likely be better able to understand and meet the concerns of 73 See id. at 466 (stating that WIPO offers an alternate regulating body). 74 See Intellectual Property and Space Activities, supra note 4, at (advocating for a harmonization of patent law in space on an international level); Jiménez, supra note 10, at 458 (claiming that the appropriate solution for deficiencies in space patent law is a universal patent law). 75 See Intellectual Property and Space Activities, supra note 4, at 22 (advocating for universal enforcement of space patent law); Jiménez, supra note 10, at 459 (describing a proposal for a universal space patent). 76 See Intellectual Property and Space Activities, supra note 4, at 22 (establishing a framework for a space territory); Jiménez, supra note 10, at 459 (supplying the details for implementation of a universal space patent). 77 See Intellectual Property and Space Activities, supra note 4, at 22 (advocating for the establishment of space as a new territory with its own laws and enforcement body). 78 See Jiménez, supra note 10, at 458 (describing a proposal for a space patent with its own enforcement body). 79 See id. at 463 (proposing a narrow modification to space law by modifying the Outer Space Treaty to include IP protections). 80 See Intellectual Property and Space Activities, supra note 4, at 22 (describing a broad proposal for a space territory, not limited to creating IP protections). 81 See Jiménez, supra note 10, at 459 (describing the power of the proposed subcommittee as limited to space patents). 82 See Intellectual Property and Space Activities, supra note 4, at 22 (describing a general goal of establishing a space territory); Jiménez, supra note 10, at (describing the detailed process for obtaining a space patent). 83 See Jiménez, supra note 10, at 466 (stating criticisms about the choice of enforcement body). 84 See Intellectual Property and Space Activities, supra note 4, at 1 (describing the activities and purpose of WIPO).

9 2018] Patent Law in Space 9 innovators in space. 85 Moreover, allowing WIPO to govern space patent law would be more straightforward because it would simply require an adaptation of an existing organization, rather than the creation of an entirely new committee. 86 CONCLUSION 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. Recommended Citation: Marie Weisfeiler, Patent Law in Space, B.C. INTELL. PROP. & TECH. F. (Mar. 1, 2019), 85 See Jiménez, supra note 10, at 466 (stating criticisms that WIPO may represent inventors better than COPUOS). 86 See Intellectual Property and Space Activities, supra note 4, at 1 (describing WIPO s extensive work in regulating international patent law).