Practicing Space Patents

Nov 06 2020

NASA was recently granted a US patent for a method for placing a spacecraft into a selected orbit. The patent is intended to assist NASA in its Dark Ages Radio Explorer (DARE) mission which will place the DARE spacecraft into the moon’s orbit for a period of time. Patenting such a method for placing a spacecraft into a specific orbit raises a few questions as to how the patent might actually be practiced or enforced against an infringer.

Patents are inherently territorial. A US patent only protects the patent owner from infringement in the United States and not from actions in say, Germany. The first step in the method claimed by NASA’s patent requires "placing a spacecraft into a selected geosynchronous transfer orbit (GTO), or orbit associated with a plane having a significant inclination relative to the Moon's orbit plane." In other words, the first step of the patent is to have the spacecraft leave any earthly territory and enter an orbit. So what happens when practicing the patent necessarily requires leaving both the country and planet on which the patent is held?

It can be helpful to look at territoriality in other space places, such as the International Space Station (ISS), where there is an international agreement in place to address, among other things, intellectual property rights on the ISS: the International Space Station Intergovernmental Agreement (ISSIA). The ISS is made up of flight elements, provided by each participating country, for example, the Canadarm, which was provided by Canada. The ISSIA states that, for the purpose of IP law, any activity occurring in or on a flight element is deemed to have occurred within the territory of the country that provided that flight element. So a Canadian patent could be infringed when used in or on the Canadarm, but could not be infringed if used on, for example, a flight element provided by the United States.

Conveniently, the US has a statutory provision related to inventions in outer space. 35 USC § 105 states that any invention made, used or sold in outer space on a space object or component under the control of the United States shall be considered to be made, used or sold in the United States, unless it is subject to an international agreement. So NASA’s patent protection can extend beyond just the earthly territory of the United States to include any activity on a US controlled spacecraft, which includes any spacecraft launched from the United States, according to the Convention on Registration of Objects Launched into Outer Space. This provision aligns with those of the ISSIA, both of which provide that US patent law could only be enforced against actions occurring on US provided objects in outer space.

It is interesting to consider what licensee or infringer might be interested in performing the method of NASA’s patent. Notably, by virtue of being invented under a NASA contract and by a US government employee, NASA’s patent can be used by or for the Government or for governmental purposes without the payment of royalties. So, any US government agency, for example, the US Space Force, or a private company under contract with the US government, could use the patent without requiring any payment of royalties and probably would not be subject to a patent infringement action. So it seems that the only entity that could be seen to infringe NASA’s patent is a private entity, acting for its own, non-government purpose who launches its spacecrafts from the United States, for example SpaceX.

It is not clear if the method of placing a spacecraft into a lunar orbit could only be performed by launching from the United States, which suggests that it may be possible to use NASA’s patented method without risk of infringement action simply by moving the launch of the spacecraft to another country. But, in view of the issuance of NASA’s space patent, it may be beneficial going forward to check with an IP professional before launching any objects into outer space to ensure the launch won’t infringe any such space patents.

This article is for information purposes only and does not constitute legal or professional advice.

Author: Erin Stuart

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Tags: Erin Stuart, Patent Infringement, Patents