Article by Andy Attfield Reddie
New Space is booming – the global space sector is estimated at half a trillion dollars, with over three quarters of that value in the commercial market[1]. This is a dramatic shift from days of yore when the space sector was not only dominated by, but the exclusive realm of, huge government programs. Rather than acting for politics and patriotism, companies in the New Space sector are, ultimately, trying to make money.
Research by the European Patent Office and the EU Intellectual Property Office shows that SMEs with at least one patent are more than twice as likely to become “High-Growth Firms” than those without[2]. This underlines the value of being able to properly identify and leverage innovation and IP. However, as in most areas, space throws up some interesting and unique challenges when it comes to protecting innovation. In particular, given that patents are territorial (a GB patent prevents others from working the invention in the UK, but not, for example, in Germany), is it possible to protect inventions use in space?
Here we take a look at how UK patent law can (and cannot) be used to protect inventions used in space.
Space Law
The current framework for international space law is based on various UN treaties, the most important of which is known as the Outer Space Treaty signed in 1967. This treaty specifies that space itself (including celestial bodies) does not belong to and are under the control of any nation. Nevertheless, the treaty also specifies that objects launched into space shall remain under the jurisdiction and control of the country in which the object is registered.
Does this mean that if a space object is registered in the UK, then a GB patent will cover that object whilst in space? This is a particularly relevant question now that the UK has set its sights on becoming a launching state.
UK Patent Law
Unfortunately, the answer is not as clear cut as would be hoped. Infringement in the UK is defined by section 60 of the Patents Act 1977. A person infringes a product claim of a patent if, and only if, they make, dispose of, offer to dispose of, use, import, or keep the product, within the United Kingdom (Section 60(1)(a)). This is known as ‘direct infringement’.
Additionally, Section 60(2) of the Patents Act 1977 provides what is known as ‘contributory infringement’. A person is guilty of infringement under Section 60(2) if they supply, or offer to supply, an essential element of the invention, for putting the invention into effect, among other requirements. Importantly, in Section 60(2), there is a double territorial requirement. The supply, or offer to supply, must be within the UK, and it must be for the purposes for putting the invention into effect within the UK.
Considering the different ways that a person may infringe a patent within the UK, there are a number of points that must be taken into consideration when dealing with the protection afforded by patents relating to space-based inventions.
Manufacturing and Importing Space Objects
To start with, it is clear that if a person manufactures an object to be sent into space (such as a satellite) in the UK, and the object is protected by a UK patent, then that person will be infringing the patent if they have not been granted the right to manufacture the space object by the patent proprietor. This is regardless of whether the satellite is subsequently launched into space, or from which country it is launched.
What about the case when a person imports a satellite into the UK, to be launched from the UK? Assuming that the satellite falls within the scope of a UK patent, and the importer does not have permission from the patent proprietor, they would probably be infringing as importing is an act covered by Section 60(1)(a) of the Patents Act. However, an interesting consideration would be Section 60(5)(e) which states:
‘(5) An act which, apart from this subsection, would constitute an infringement of a patent for an invention shall not do so if
…
(e) it consists of the use of a product or process in the body or operation of a relevant aircraft, hovercraft or vehicle which has temporarily or accidentally entered or is crossing the United Kingdom (including the air space above it and its territorial waters) or the use of accessories for such a relevant aircraft, hovercraft or vehicle’
The question would then arise as to whether the satellite may fall under one of the above exclusions, which relate to vehicles which temporarily enter the United Kingdom. It seems quite possible that it would not. For starters, the satellite may not be considered in ‘use’ when it enters the UK, rather it may be considered that it is being imported (to be ‘used’ in space). Further, it is not clear that a satellite would fall within the categories of ‘aircraft, hovercraft, or vehicle’.
The vehicles exempted by the above sections are detailed in Section 62(7) which states that a ‘relevant aircraft, hovercraft, or vehicle’ for the purposes of Section 62(5)(e) is one registered in, or belonging to, any country other than the UK which is a party to the Paris Convention (another patent law treaty). It may be possible that a satellite from a foreign country which is merely using a UK launch site (and thus may have the satellite registered to the foreign country) will be regarded as ‘relevant vehicle’ and be exempted by this section, though it is probably best not to have to rely on such an argument to avoid infringement.
Inventions Implemented in Space
Now we consider the case of an invention that is only implemented in space. For example, consider a patent which claims a system of satellites. The system is only formed once the satellites are in position space, and as such the invention as claimed is not implemented at any point on Earth. Could a UK patent ever protect such a system? There are two important, but linked, aspects that require analysis: what does ‘use’ mean in Section 60(1)(a), and what is regarded as ‘within’ the United Kingdom.
As discussed above, if a satellite is launched in the UK, it will (in most cases) be under the jurisdiction of the UK. However, while UK laws apply, this does not necessarily mean that it is ‘within’ the UK. The Interpretation Act 1978 defines the United Kingdom as being ‘Great Britain and Northern Ireland’ – rather than as being where the UK has jurisdiction. As such, once a satellite has been launched, it is likely outside of the UK. Indeed, the very existence of the Outer Space Treaty implies, and requires, that space is not within the borders of any country.
So, while the network of satellites would probably not be within the UK, even if launched from the UK (perhaps an unsurprising conclusion), could it be that the system would still be used within the UK? It seems that it might be possible to argue this, and thus such actions could be found to infringe a UK patent.
We turn to the case of Menashe Business Mercantile Ltd. & Anor v William Hill Organization Ltd., which dealt with the case of a method being implemented on a server that was outside of the UK, though the end user was within the UK. It was decided at first instance, and upheld at appeal, that each and every element of a computer system need not necessarily be located within the UK.
In the appeal decision, the judge, Aldous LJ, stated that ‘In the age that we live in, it does not matter where the host computer is situated. It could be in the United Kingdom, on a satellite, or even on the border between two countries.’ This would seem to lend weight to the possibility of infringement of a UK patent claiming a system of satellites in space if the end user was in the UK, as, by analogy, the invention would still be used within the UK.
However, the analogy is not perfect. For starters, with a satellite system it does matter where the satellites are located. They must be in space, in their designated orbits. The system would not work if the satellites were simply left together on a launch pad. This is in contrast to the computer server of William Hill, where the server actually could be virtually anywhere.
Furthermore, this analogy requires that there is an end user who is in the UK. This may be simple to establish in the case of something like a satellite phone system, but what about where the patent does not relate to an end user? What if it relates only to communication between satellites for example? Or to a method of in-orbit servicing of refuelling performed by one satellite on another? An end user of this system is then a step removed from the use of the patented invention, so it is not clear that it could still be considered that the invention is used within the UK, potentially barring a finding of infringement.
So, how can inventions be protected?
Taking into account all of the above, the best way to protect an invention that is going to be used in space is to draft the patent so that it will be infringed on Earth.
Space objects should, where possible, be protected at the component level rather than covering systems. This will make prosecuting manufacturers much simpler than if only the whole system is claimed.
Patents should also avoid claiming methods, where possible, but rather focus on the technical adaptions made to the space object to enable a method to be performed. For example, rather than a patent to a method of in-orbit refuelling, a patent covering an arm enabling to docking of the two satellites for refuelling and any other specific adaptions that enable the refuelling would likely be more useful.
It is also important to be mindful that some innovations are best protected using trade secrets. These may be particularly beneficial for ‘backend’ methods that are not accessible or visible to third parties. However, while trade secrets do not need to be registered, it remains important that they are identified within a company and that a strategy is in place to keep the information confidential.
[1] https://www.strategyand.pwc.com/uk/en/insights/expanding-frontiers-down-to-earth-guide-to-investing-in-space.html
[2] https://www.euipo.europa.eu/en/publications/high-growth-firms-and-intellectual-property-rights-ipr-profile-of-high-potential-smes-in-europe
