This article is the second in a three-part series that explores the adequacies of current Australia IP laws and what effect this has on IP right holders. Part 1 can be seen here.

Ramifications of IP laws not extending into space

An interpretation where the extent of the Patent Act is geographical means it would not extend into space even though Australian jurisdiction can. This means that, for a space object that has technology protected by an Australian patent and that is also registered in Australia under the 1975 Convention, the patent would not protect the technology in outer space; rights conferred by the patent would only apply if the space object came back to be within Australian airspace. Accordingly, in this example, this Australian patent could not be enforced against a third party who uses the patented technology on or with a space object that registered in Australia for any infringement alleged to occur in outer space.

This limitation of the Patents Act restricts the effectiveness of an Australian patent to protect space-related technology, which may provide an avenue for parties to avoid infringement. For example, a space object could be built and launched from outside Australia but still be registered in Australia under the 1975 Convention. Accordingly, a space object built outside of Australia and sent into outer space from outside of Australia but carries Australian registration would avoid infringement of an Australian patent, both on Earth and in outer space. In this situation, a patent in a jurisdiction other than Australia may be used to prevent the manufacture of the space object in a specific jurisdiction, although this would still have its limitations. For example, what if the space object was built in outer space in an outer space manufacturing facility registered in Australia under the 1975 Convention?

In-orbit manufacturing and R&D capabilities would also result in inventions being conceived in space. However, based on the current wording of the Patents Act, it is very likely that an invention could be made in outer space in an R&D facility that is under Australian jurisdiction but not subject to the provisions of the Patents Act. This situation highlights the fact that the issue of the effect of the Patents Act not extending into outer space will only become more problematic as commercial space activity intensifies.

There is an argument that the current situation with the limitation of IP laws regarding outer space is no different from maritime law. However, vessels subject to maritime law will, at some point, be present in the patent area, either during construction, use, or decommissioning, meaning infringement can be dealt with at the time they enter the jurisdiction of the Patents Act. Furthermore, not all space-related technology will be confined to the patent area or be within the bounds of the extent of the Patents Act, for example technology that is built and commissioned (and decommissioned) solely in outer space. Therefore, parallels between maritime law and the limitation of IP laws regarding outer space are limited.

Can IP Laws extend into outer space?

On the basis that the Patents Act does not extend into space, there is nothing in the Outer Space Treaty that would prevent the enactment of jurisdictional laws that have effect in outer space; what the Outer Space Treaty prohibits is the national appropriation of outer space. For example, the UN Committee on the Peaceful Uses of Outer Space (UNCOPUOS), including its annex to the Declaration on International Cooperation in the Exploration and Use of Outer Space, identified IP is a part of a state’s ‘legitimate rights and interests’.

The International Space Station (ISS) is a good case study to explore how IP laws can extend into outer space. The ISS is a space station that resides in low-earth orbit (LEO), with the ISS program being launched by NASA with the participation of European (ESA), Japanese and Canadian space agencies, and later on the Russian Federal Space Agency. The idea of the ISS began in the 1980’s, with commissioning and first flight occurring in 1998.

In an Intergovernmental Agreement (IGA) concluded in 1988 (the “IGA 1988”) that the partner states to the ISS formulate a regime on IP law which attempts to balance the national interests against the interests of the individual users within the framework of international and private law. In the case of the ESA-registered elements of the space station, Article 21(2) of the IGA 1988 provides that any European partner state may deem the activity to have occurred within its territory. This means that any European partner state, without consideration of its financial share in the development, construction, and maintenance of the space element, may deem its IP laws applicable on the European element of the ISS.

When Germany, as a ESA member, ratified the IGA 1988, it did so in such a way that for the purposes of German copyright and industrial patent legislation, an activity occurring in or on an ESA-registered element on the ISS is deemed to occur within German territory. This means that the German Patents Act applies to outer space, but only to the ESA module of the ISS and not broadly to any object in outer space that carries the registration of Germany. It is important to note that the ratification of the IGA 1988 did not result in an amendment of the German Patents Act to specify the extent to which this Act extends into outer space. Accordingly, the extension of the German Patents Act into space is rather limited.

The IGA 1988 was superseded by the Intergovernmental Agreement (IGA) in 1998 (the “IGA 1998”) to allow introduction of Russia to the ISS partnership. The IGA 1998 established the overall cooperative framework for the design, development, operation, and utilization of the ISS. It also addressed several legal topics that were left wanting in the IGA 1988, including civil and criminal jurisdiction, and operational responsibilities of the participating partners. Most importantly for the purposed of this article, Article 21 of the IGA 1998 created national “elements” where an activity occurring in or on a Space Station flight element shall be deemed to have occurred only in the territory of the Partner State of that element’s registry. Accordingly, the IGA 1998 meant that IP laws of e.g. Japan extends to the Japanese module (i.e. the Kibo Laboratory). Accordingly, an invention made in the Kibo Laboratory will be deemed to have occurred in Japan. Thus, the IGA 1998 provides a legal framework in which to deal with IP in space. Article 21 of the IGA 1998 also provides a framework to address the issue of temporary presence in a territory of an IGA Partner State, which may help to provide guidance on how to deal with temporary passage of a vessel as outlined about in Section V.

Although the IGA 1998 provides a framework to extend IP rights into outer space, it was developed for a specific application and situation between Governments. Therefore, extending the framework of the IGA 1998, or an IGA-like agreement, to commercial space activities would first need to be significantly reworked to apply to commercial activities.

The only jurisdiction to explicitly define that their respective patents laws cover an object in outer space is the United States which added 35 U.S.C. 105 to their patents act in November 1990 to cover inventions in outer space. These provisions remove any doubt whether or not a US patent has effect in outer space on a space object rejected in the US. These provisions also make it clear what laws apply to inventorship in outer space, which is an area likely to become more contested as research capabilities increase in outer space. 35 U.S.C. 105 may perhaps be the reason why so many space companies are based in the US, notwithstanding other factors such as ITAR controls.

Australia acknowledges that its laws can extend into outer space. For example, the Australian Telecommunication Act 1997 and Radiocommunications Act 1992 both have provisions that explicitly relate to objections or workings in outer space. It is noteworthy that the Australian Telecommunication Act 1997 uses the terms “atmosphere” and “stratosphere” – which both have clear and agreed upon geographic boundaries – are define a point in Australia, rather than terms such as “airspace”. To remove any doubt, the Telecommunications Act 1997 also defines extra-territorial application both within and outside Australia.

Based on Australian legislation, plus legislation enacted by the USA and Germany, having the extent of the Patents Act extend to outer space, would not be without precedent.