Introduction

Over the past few decades, the world has seen dizzying advancements in technology, none more so than the rapid and accelerating commercialisation of space. Up until the late 1990’s, most space exploration was performed by Government entities, such as the National Aeronautics and Space Administration (NASA). However, there is now a transition away from governments towards commercial entities performing space activities and exploration, with this transition rapidly accelerating. This change has resulted in a dramatic decrease in launch costs which was previously seen as a significant barrier to sending objects into space.

To date, IP has generally been generated within well-defined geographical limitations. As a result, it is usually clear which IP law prevails, how far the jurisdictional boundary extends, and how the IP is enforced. However, the overarching nature of space law may limit the ability of existing IP laws to provide meaningful protection because the commercialisation of space presents a high likelihood of inconsistent overlap between space law and existing laws, including IP law.

Stefan Paterson has previously provided an overview of the interaction of space law and IP laws, which can be found here. But, in summary, of the numerous agreements and legislation governing space law, the most relevant to IP law is Article VIII of the Outer Space Treaty, which defines that the States on whose registry such an object is carried shall retain “jurisdiction and control” over that object, and any personnel thereof. The registration of the State to an object is determined by the 1975 Convention on the Registration of Objects Launched into Outer Space (the “1975 Convention”).

Does the Australian Patents Act 1990 have an effect in outer space?

The effect of Article VIII and the 1975 Convention is that Australian IP laws can, in principle, extend to outer space. However, determining whether the Patents Act extends into outer space requires examination of the extent of its reach.

The Patents Act at section 12 defines its extent to (a) each external Territory, (b) the Australian continental shelf, (c) the waters above the Australian continental shelf, and (d) the airspace above Australia, each external Territory and the Australian continental shelf. Similarly, the Patents Act in section 13 defines that a “patent has effect throughout the patent area”, with the “patent area“ meaning: (a) Australia; and (b) the Australian continental shelf; and (c) the waters above the Australian continental shelf; and (d) the airspace above Australia and the Australian continental shelf.

The definition of the extent and inclusion of the “patent area” has a number of ramifications when determining if the Patents Act extends into outer space. To date, technology has primarily been developed and utilised in areas clearly within geographical and jurisdictional boundaries of Australia, so there has been little need to examine the geographical and jurisdictional reach of the Patents Act. However, for a space object that can retain Australian jurisdiction in outer space, it is important to know whether the Patents Act extends into outer space to cover technology associated with the space object.

For space technology, the definition of the patent area and the extent of the Patents Act presents two issues:

1. whether the “patent area” (and also the Patents Act) is jurisdictional or territorial (geographical) in nature; and
2. defining a limit where “airspace” stops.

Firstly, interpreting the “patent area” as being jurisdictional or territorial in nature presents two very different areas. The Patents Acts defines:

• “Australia” as “includ[ing] each external Territory”;
• “Territory” as “a Territory in which this Act applies or to which this Act extends”; and
• “Australian continental shelf” as “the continental shelf adjacent to the coast of Australia (including the coast of any island forming part of a State or Territory).”

When read together, the definition of the Australian continental shelf and its relationship with a Territory, and how “Australia” includes external Territories, is territorial. This, when combined with definitions (b)-(d) of the patent area, indicates that the definition of the “patent area” appears to relate to an area defined by geographical, territorial boundaries. Judicial review has also found the patent area to be territorial.[1]

[1]: Apotex Pty Ltd v ICOS [No 3] (2018) FCA 1204 at [774]; Apotex v Warner-Lambert [No 2] (2016) FCA 1238 at [298; Aspirating IP Ltd V Vision Systems Ltd (2010) 88 IPR 52 at [163].

The “patent area” is also delimited by “(d) the airspace above Australia and the Australian continental shelf.” The “airspace” must end at some point, so it follows that the patent area should also end where airspace ends (and likely where outer space stars), again at some geographical location. The question then becomes where does “airspace” stop?

There is no definition of what “airspace” means in the Patents Act. One held view is that the Kármán Line delineates the end of airspace above Earth and the beginning or edge of space. The Fédération Aéronautique Internationale defines the Kármán Line as the altitude of 100 kilometres above Earth’s mean sea level, though not all organisations and governments recognise this definition and there are geopolitical reasons why it is advantageous not to define the beginning of outer space. Interestingly, the Australian Space (Launches and Returns) Act 2018 defines a space object as one that “is to go into or come back from an area beyond the distance of 100 km above mean sea level”, suggesting that Australia adopts the Kármán Line, as currently defined, as an appropriate administrative point for the application of the space licensing regime under the legislation. Issues in the definition of “airspace” notwithstanding, the fact that the patent area is limited to airspace, which must stop at some point, further implies a geographical ceiling for the patent area.

Based on the above interpretation, the Patents Act is limited geographically and does not extend into space.

Secret use in outer space

The provisions for secret use provided by section 9 of the Patents Act are limited to the patent area. For example, reasonable trial and experimentation is not to be taken as secret use. However, taking the position that the Patents Act does not extend into outer space, what about reasonable trial and experimentation that occurs in outer space on an Australian registered object? If a space object is outside of the patent area, any reasonable trial and experimentation that occurs in space on an Australian-registered space object arguably falls outside of the secret use exemptions. Given that astronauts on the International Space Station already perform experiments in space on behalf of private enterprise and the soon-to-be expansion of in-orbit R&D capabilities, this issue of secret use in outer space is already here.

Taking this further, what about testing of an Australian-registered space object in outer space that is controlled from mainland Australia – does the secret use fall under s9(a)? Depending on the specifics of the technology and whether testing relates to the object in space or on Earth – think testing of a satellite in outer space or testing of a control system from Earth – it could both fall in and out of the provisions of s9(a).

Similarly, a patentable invention cannot be secretly used in the patent area before the priority date. However, what about an invention secretly used in outer space on, or as part of, an Australian-registered space object before a patent application for the invention subject to the secret use is filed? Does this allow a trade secret to be developed and used in outer space to then become patented in Australia later? If so, this could be seen as an abuse of the patent system by allowing protection double-dipping. Again, given the rapid advances in in-orbit commercial R&D and manufacturing capabilities, it is likely that this issue will rear its head sooner than later. It is also noteworthy that the provisions for prior use defences for infringement are also limited to the patent area.

In the next part, we discuss the ramifications of IP laws not extending into space, and whether IP laws can extend into outer space.