Patent filing strategy for inventions used in outer space

Patent filing strategy for inventions used in outer space

R Saha (raghav.saha@gmail.com)

This article looks at some important principles and practical tips for drafting patent applications in respect of inventions related to outer space, with the primary consideration of enforcing patents. Outer space is outside the purview of jurisdiction of any country, hence applicability of jurisdictional principles followed on earth for ownership of property do not apply. For example, can patents be enforced against spacecraft in orbit and what steps should patent holders take to maximize enforcement options on Earth? The journey of space exploration or space missions starts from the earth, inventions are majorly made and implemented on earth using terrestrial resources. One must make the best use of the challenges posed by complexities presented by the combination of terrestrial jurisdictions and extra-terrestrial regions (jurisdictions?).

It is important to make sure that any patent claims, as far as possible, cover the technology in a non-operational (i.e. pre-launch) state, so that the patent can be enforced against parties dealing with the spacecraft before it is launched. Some technologies which are only used in outer space would be spin stabilization of a satellite, momentum wheels, pseudo geostationary orbits, frequency sharing between LEO and GEO satellites and unfolding of solar panels and antennas. An infringement action may be taken when the spacecraft is sitting on the launch pad rather than relying on infringement beginning in outer space.

A spacecraft (satellite) may reconfigure itself in space, say, by deploying solar panels and antennae while in orbit, then the claims should specify the structural configuration of the spacecraft before launch. Based on the claims, it would be easier to identify infringement and take appropriate action.  In this case one can file both product claims for solar cells, motors to deploy cells and method claims for deploying solar cells by using appropriate software and hardware combination. A satellite intending to deploy its solar cells using the protected method might then infringe both product claims off the assembly line and on the launch pad.

Similarly, the components of the satellite, which would almost certainly be manufactured separately, could individually infringe certain claims of the patent. The control circuitry, for example, might infringe the CRM claim as soon as the instructions are loaded onto it, possibly before ever reaching the rest of the satellite.

Every space technology will have a system to interact with ground stations or terrestrial customers. It is advisable to include claims for ground-based technology including product and method claims. As far as possible these claims should set out only the steps performed on the earth-side, to avoid having to rely on partial infringement of the claims

When it comes to filing strategy, careful consideration should be given to which jurisdictions to seek patent protection in, to maximize the options for its enforcement. A filing strategy will pay in the long run. It is important to consider where infringing spacecraft and its components are manufactured. Semiconductors and software play a critical role in space technology; hence this area needs special attention.  Evidently, applications in this area must be filed in countries like Taiwan, South Korea, Japan and USA.

Patent applicants can consider prioritizing patent application filings in the following order: (1) file patent applications in spacefaring countries because of the ability to use these countries as a launching State; (2) file patent applications in technologically advanced countries and countries in ideal launch locations because of the potential ability to use these countries as a launching States; and (3) file patent applications in developing countries and countries outside ideal launch locations.

Consideration should be given to where an infringing spacecraft might be launched from, to maximize options for enforcing the patent against the spacecraft before it is launched. At present, the most active commercial spaceports are in the US (SpaceX, ULA and others), India (Sriharikota), China (CALT), Kazakhstan (Roscosmos), and French Guiana (Arianespace) – a department of France (and therefore covered by patents having effect in France). However, it is anticipated that new players in the space launch facilities market will make available launches from other countries around the world, particularly for servicing the small payload market. Perhaps closest to market is Electron, operating from New Zealand, but there are plans for Spaceports in several European countries where it is anticipated that Andaya Space (Norway), Esrange Space Centre (Sweden) and Spaceport Cornwall (UK) will provide satellite launch services within the next few years.

It may also be possible to enforce patents against spacecraft in orbit, according to the state in which they are registered (although a difficult area). Therefore, consideration should be given to where any potentially infringing spacecraft may be registered once it is operational, which is usually the state where the owner and/or operator of the spacecraft is based.

The costs involved in filing patent applications in multiple jurisdictions may be high, but these would be a micro percentage of costs of launch vehicle and satellites. For long-term gains, patent applications should be filed in all possible jurisdictions.