Lauréate du premier concours de dissertation pour étudiants et étudiantes en droit de la Section du droit aérien et spatial

  • 30 juillet 2019

(disponible uniquement en anglais)

Legal and Factual Obstacles to the Enforcement of Patents in Outer Space

Ashley Reid, University of Alberta

The increasing plausibility of natural resource extraction in outer space and its possibly lucrative returns have spurred innovation in space technology. Despite this budding industry’s dependence on innovative technologies, and the rising interest and investment from the private sector, patent law remains relatively unenforceable beyond earth’s atmosphere. The territorial nature of patents binds them to domestic borders and the possibility of extending these borders to vessels in outer space continues to be debated. Without the application of state patent law to outer space, patented inventions used in space are vulnerable to unauthorized exploitation.

Additional obstacles to patent enforcement arise from the inability to detect infringing conduct. To enforce a patent, the patent holder must bring legal action enabled by a domestic statute and establish that the activities in outer space have deprived them, wholly or in part of the full enjoyment of the monopoly conferred through the patent grant.[1] Without total surveillance of the activities occurring aboard a space vessel, patent holders will have difficulty establishing the factual components required for a successful infringement action.

These barriers are part of an outer space legal structure governed predominantly by international law. In the following sections I will explore its role in the extension of patent law to outer space. Furthermore, I will outline obstacles presented by the factual requirements of an infringement action that may inhibit patent enforcement in outer space, even if in the future the law should become more certain.

Sources of Space Law

Much like Antarctica or the high seas on earth, state assertions of sovereignty are not valid in outer space; this means that state-specific law is not applicable to any region or celestial body beyond the earth’s atmosphere. Yet, outer space is not entirely ‘lawless’ because it is subject to the international legal regime, which includes customary principles and treaties. There are five major treaties that specifically address the legal framework in space, and they are known colloquially as the Outer Space Treaty,[2] the Rescue Agreement,[3] the Liability Convention,[4] the Registration Convention,[5], and the Moon Agreement.[6] The Outer Space Treaty was one of the first international efforts to outline a legal structure for space and space activities, with the following treaties expanding upon its principles. The Outer Space Treaty is acknowledged as a reliable source of space law because it is highly ratified.[7] The ratifying states include all space-competent nations, except for North Korea.[8]

The first three articles of the Outer Space Treaty have also been accepted as part of international customary law.[9] They articulate the following principles: outer space is governed by international law; there is freedom in the exploration and use of outer space; and there is no national sovereignty in space or over celestial bodies. A fourth principle, often called the common heritage principle, describes space as a common heritage or a province of mankind and stipulates that outer space is to be used to benefit all people.[10] There has been debate as to whether this principle carries any legal weight or is merely a political and moral tool.  It is uncertain as to whether the common heritage principle has passed into customary law.[11]

There are several patent-related treaties that, as part of international law, may apply to outer space, such as the Patent Law Treaty[12] and the Patent Cooperation Treaty[13]. These treaties promote consistency and make efforts to streamline state patent legislation, but in doing so affirm the territorial nature of patents and present the same issues of space patent enforcement that are created by domestic legislation. For example, while the international patent application process enabled under the Patent Cooperation Treaty allows for an application requesting patent grants from multiple countries at once, the patents granted under this process must still be granted by and enforced within each nation.[14] Some have suggested that the best solution to the issues presented by domestic legislation is to draft a treaty that explicitly projects intellectual property law (including patent law) into outer space, but at present no such instrument has come into force.[15] For the sake of this paper, I will not be exploring such possibilities.

Case law directly pertaining to outer space is extremely rare for a variety of reasons. The number of actors in space at any given time is few, and the legal structure that would allow for space-related jurisprudence continues to develop. However, case law in analogous contexts may be utilized to proactively estimate space law outcomes using customary law principles. As stated previously, the high seas and Antarctica are analogous in that they cannot be appropriated by any state, and that they are governed primarily by international law. Scholars have widely considered maritime law pertaining to the high seas to be a promising source of case law that will provide guidance when considering the legal context of space activity.[16]

There are inherent limitations to governance by international law, particularly in its cooperation and consent model of enforcement. Treaties must be agreed to and ratified by a minimum number of parties before they take effect. While the Outer Space Treaty is widely ratified, procedures under the Registration Convention, which is not as highly ratified, will not be binding on non-signatory nations.[17] As I will present in the following sections of this paper, the Registration Convention plays an important role in the extension of patent law beyond the earth’s atmosphere. Furthermore, customary principles must be acknowledged as customary before they will be readily imported by domestic courts, and even then, a nation may not be bound by them if they consistently object to the principle.[18]

Some nations have adopted domestic legislation that expressly applies to activities in space, such as the ‘inventions in space’ patent provision of the US Code.[19] This legislation is useful when state jurisdiction, a condition precedent, has been established in outer space and the courts are looking to extend specific statutes to the activity taking place there. Domestically, states may also enter into intergovernmental agreements with other states when space activities are occurring jointly, such as that which governs activity aboard the International Space Station.[20] These agreements are binding, but not without limitations.

Issues of Jurisdiction

For a patent to be enforced, it must have been granted pursuant to legislation that enables an infringement action. The state must have the jurisdictional authority over both the people aboard the object and the object itself to establish legally infringing activity. This presents two issues for patent enforcement when considered in the context of outer space: firstly, national jurisdiction must apply to outer space despite the state’s inability to assert sovereignty over any region or celestial body. If outer space is considered outside of state jurisdiction, a patented invention may be exploited by someone who is not the patent holder, despite an active patent having been granted within the infringing actor’s state of citizenship. This would make patented space technologies difficult to protect, as infringement would need to occur on earth. The second issue is that if state jurisdiction can extend to outer space, patent statutes would need to apply to the activity being performed there. This second issue would be much more familiar to the courts as a matter of statutory interpretation.

Extending State Jurisdiction to Outer Space

The Outer Space Treaty expressly extends state jurisdiction to objects and personnel being launched into space. Article VII grants the launching state ‘jurisdiction and control’ over the object and the people on board.[21] The ‘launching state’ is one who either a) launches or procures the launching of a space object, or b) is the state from whose territory or facility a space object is launched.[22]  The object being sent to space must also be registered on the launching state’s domestic registry; after this the launching state will register the item for a second time with the UN international space registry. The Registration Convention further outlines the processes and obligations of registration. It is possible, under the definition of launching state, that a single space object may have multiple launching states; however, the treaties are clear that only one of the multiple launching states may enter the object on their domestic registry, and it is this state that has jurisdiction and control over the object and its personnel. As per Article II of the Registration Convention, in cases where there are multiple launching states it shall be jointly determined which state shall be the registering authority.[23]

Private corporations seeking to launch an object into space must follow the same registration protocol, but there are limitations as to which state they may register with. There is concern is that private corporations will register through nations with relaxed regulation to avoid complying with the stricter standards of their ‘home’ countries.[24] This has generally been termed the ‘flags of convenience’ issue and is prevalent in the international shipping industry, where jurisdictional laws are similar to Article VII of the Outer Space Treaty.[25] In a hypothetical patent law context, a corporation might register with a country that has poor patent protection, or in a country where the patent has not been granted so that the corporation may use that technology without cost.

To be registered on a state’s domestic registry, there must be a ‘genuine link’ shown between the state and the corporation. In the shipping industry, some nations consider compliance with registration regulations to be demonstrative of a ‘genuine link’, but current academic discourse favours a higher standard for space objects. The higher standard would go so far as to suggest piercing the corporate veil to determine where the corporation was established, or to determine whether it has a principal place of business in that territory.[26] I would suggest that in situations where the corporation’s home state lacks launching technology, that state may be considered a launching state that procures the launching of a space object, and it would be from a secondary state’s territory or facility that the object would actually be launched. Subject to an agreement between these two launching states regarding registry and subsequent jurisdiction, the corporation would still be able to circumvent the regulations of their home nation.

Space stations, such as the International Space Station (ISS), present unique challenges regarding jurisdiction. The ISS is made up of a series of space objects that have been registered with different launching nations, so each separate but physical section is governed by a different state’s law.[27] Scientists from multiple nations may be sharing resources such as technology between them and may infringe patents as they move to different sections of the space station. There have been strong arguments for the application of one consistent set of laws to the entire station, which would be achieved either through an intergovernmental agreement of which state’s laws to apply, or through a governing international treaty.[28] Despite these arguments, the ISS continues to be governed compartmentally.

These joint agreements between launching states regarding jurisdiction could cause uncertainty for courts and for patent holders. State registers are not required to be publicly accessible, and while the UN registry has free and open access, many states report their launches six or more months late.[29] This presents significant obstacles for courts and public patent holders in determining which state’s patent protection applies to a space vessel prior to or even post-launch. Inventors may have difficulty discerning which nations they should file a patent application with, and the result may be the need to file for patent protection in all launching states. This would have significant cost. Furthermore, the enforcement of patents is holder-driven, and jurisdictional uncertainty raises ambiguities as to where the infringement action needs to be commenced.

The registration process detailed in the Outer Space Treaty and the Registration Convention mirrors the international customary principle of flag state jurisdiction, which is codified in Articles 5 and 6 of the Convention of the High Seas.[30] Under the flag state jurisdiction principle, ships are subject to the jurisdiction of whichever state’s flag they sail under, or in modern times whichever state they are registered with. A ship must demonstrate a genuine link with their flag state.[31] This jurisdiction applies to activities while sailing upon the high seas. Arguments to extend jurisdiction to space activity could also be made using this customary law principle, should the explicit grant in Article VII of the Outer Space Treaty be unavailable. For the successful use of this principle in infringement actions, it would be necessary to also establish personal jurisdiction over the personnel aboard the space object.

Historically, Canadian courts found that the prohibited use of patented technology on board a Canadian ship outside Canadian waters was not an infringement, and this was determined notwithstanding the flag state jurisdiction doctrine.[32] The cases that establish this significantly predate the current Patent Act[33] but caution may be appropriate when proceeding with arguments under the doctrine.[34] In contrast, in early 2018 the United States Appellate Courts for the Federal Circuit used this principle in their affirmation of the applicability of American patent legislation to ships on high seas in M-I Drilling Fluids UK Ltd v Dynamic Air Ltda.[35]

Extending Patent Legislation to Space Activity

Once state jurisdiction over a space object and its personnel is established, the courts will need to determine whether legislation such as the Patent Act applies to space activity so that a statutory infringement action is available. Statutes may apply to space activity expressly through the text or implicitly through a statutory interpretation analysis. Canada’s Patent Act does not contain express provisions, so an interpretive analysis is necessary to determine whether an extension of the statute’s application would be supported.

If the interpretation of the Patent Act’s text supports its application to outer space activities, that interpretation will then be compared with the statute’s legislative purpose.[36] If the interpretation and the legislative purpose are consistent, the Act will apply, and infringement action will be available. This purposive approach to interpretation tries to achieve a balance between public interest and the rights of the inventor to protect what they have in good faith invented.[37] In Free World Trust v Electro Health Inc., the court articulates one purpose of the Patent Act as endeavouring to achieve fairness and predictability in order to promote research and development.[38] Though there are undoubtedly more purposes underlying the Patent Act, I will use this purpose to test whether the statute should be applicable to activity in space.

Involved in the interpretation of the Patent Act is a presumption against extraterritorial application, which is grounded in the doctrine of territorial sovereignty.[39] This doctrine of territorial sovereignty stipulates that “each state has sovereign power over its own territory but must not intrude on the territory of its equally sovereign neighbours.”[40] There are two reasons that suggest this presumption does not inhibit the extension of the Patent Act to space vessels. Firstly, if state jurisdiction has already been established, either through the Outer Space Treaty or the flag state jurisdiction doctrine, the space vessel could be considered part of the ‘territory’ of Canada and therefore the application would not be ‘extraterritorial’. Secondly, if application of the Patent Act is considered extraterritorial notwithstanding state jurisdiction, the doctrine of territorial sovereignty would not be offended. No state has sovereignty in outer space and as such, the Patent Act would not be intruding upon the territory of sovereign neighbours. There are also public policy arguments against the operation of this presumption: if Canadian patent law does not extend to vessels in outer space it might mean that no patent law does, which would be unfair and provide little relief for patent holders.[41]

The federal Interpretation Act supports this rebuttal.[42] Section 8 states that every statute applies to the whole of Canada, unless a contrary intention is expressed in the enactment. Furthermore, a statute does not operate beyond the territorial limits of jurisdiction within which the legislature functions, and in this case the legislature would be able to function due to the state jurisdiction granted over the space vessel.[43] Assuming that space vessels would be considered part of Canada when entered on our domestic registry, I could find no contrary intention in the Patent Act that would narrow its application. This suggests a space vessel would not be considered extraterritorial. Given section 8 of the Interpretation Act and context involving the ratification of the Outer Space Treaty, I believe that the legislative intent of the Patent Act does not preclude application to space. However, I have only given a superficial analysis, and as this type of interpretation is discretionary in nature the courts may find another result. 

An extension of the Patent Act to space activity also provides the necessary balance between the public interest and patent holder rights, and furthers the legislative purpose identified in Free World Trust. Extension of the Act would reduce uncertainty and the public would have better clarity as to what actions constitute infringement. Space application would also provide better protection for the patent holder by preventing exploitation of the invention in outer space. Guaranteeing this protection would further encourage innovation and fairness, particularly for private sector actors looking to expand into space technology industries.

Not all agree with this position. Some scholars argue that space discoveries and inventions should be a universally and freely accessible resource pursuant to the common heritage principle discussed previously.[44] From this position, patent systems are seen to restrain the abilities of lesser technology-developed nations to access space. Article I of the Outer Space Treaty states that the exploration and use of outer space must be carried out for the benefit and in the interests of all countries regardless of their degree of economic or scientific development. Some question whether ‘the benefit’ that must be shared entails technology transfer. Proponents of the free-resource position would suggest that patent systems inhibit this sharing of benefit.[45]

The free-resource position has been opposed by the view that patent systems are necessary to encourage innovation, which in turn would enable private access to space. The middle approach that is favoured in academic discourse proposes that intellectual property laws apply “as long as the participants in space do not exclude others in access to space activities or put obstacles to the experimentation by other states in a manner that will be illegitimate or criminal […] There can be little contradiction in allowing states and commercial bodies to retain intellectual property rights in space.”[46] Though free-resource arguments have been made, they are largely outweighed by those favouring the imposition of patent systems to space.

Practical Issues of Detection and Resolution

Current patent structure requires the holder of the patent to bear the burden of enforcement, and the practical obstacles presented also inhibit the successful procurement of legal remedy. Infringement is a question of both fact and law; the defendant’s activities must be established in fact while the determination of whether the activity constitutes infringement under the Patent Act is a question of law.[47] In the previous section, I have discussed questions of law in patent enforcement, and I will now examine the practical obstacles that pertain to the factual discovery of infringing activity.

Without total surveillance of the activities aboard a space vessel, an earthbound patent holder will be limited in their ability to establish infringing acts in fact. Their ability to detect such conduct will in part depend on the location where the actual breach occurs. When the infringer possesses the entire patented technology without a license while on earth, action may be brought as possession can constitute ‘use’ and therefore, infringement.[48] Following that precedent, patented technology in possession upon return from outer space can also be indicative of infringement. In short, where there is possession on earth, the burden of establishing infringement in fact is no more onerous than usual. However, where patented technology is assembled in space, or created and used in space without some temporal and terrestrial connection, detection may become more problematic.

Where a party attempts to evade infringement detection by procuring the parts of a patented technology to then assemble in space, the courts may be able to impose liability through indirect infringement of the patent, though there would be difficulty in doing so. Though the Patent Act considers indirect infringement, a definition is not provided in the Act nor the regulations.[49] Case law has dictated that “a person who supplies or induces or procures others to supply all the components of a patented invention, with the intention that such parts shall be made up into such invention, infringes the patent [...] and a person who, knowingly and for personal ends and benefit and to the damage of the patentee, induces or procures another to infringe a patent, also infringes the patent.”[50]

Unfortunately, the test set by Canadian courts for inducement or procurement requires direct infringement to be established in fact. The law would need to shift to allow courts to draw the inference that possession of the components of an invention prior to space launch is indicative of the intent to assemble the technology in space for use.[51] To some extent, current precedent allows for the sale of the components of patented technology, even where the vendor knows that they will be used for infringing activity. The vendor will only be liable if they knowingly induce or procure the infringement.[52] Because of this law, I doubt that the courts would easily impose liability, unless specifically limited to outer space-use contexts.[53] Furthermore, the variability between states’ domestic law pertaining to indirect infringement may be a future source of uncertainty.

It is unlikely that this technology would be abandoned in outer space to avoid detection of patent infringement. Article VIII of the Registration Convention dictates that objects found beyond the jurisdiction of their launching state will be returned to them and suggests a positive duty for the discovering state to ensure the return of the object.[54] Further provisions on the return of space objects are outlined in the Rescue Agreement.[55] As stated previously, should these objects be returned to earth and the launching state identified, the patent holder will have a better chance of detection and establishment of infringement in fact.

Use of less tangible inventions, such as patented computer software or business models in outer space would require other mechanisms of detection in order to be enforced, as they lack terrestrial ties. These types of inventions would pose the greatest difficulty for enforcement by patent holders and reveal significant limitations of the patent holder enforcement model.

Should the patent holder be able to detect infringing activity, they face further difficulty pertaining to the identification of the defendant. Under international agreement, launching states assume all liability for damage caused by their nationals while in outer space. Damage is defined in the Liability Convention as the “loss of life, personal injury or other impairment of health; or loss of or damage to property of States or of persons, natural or juridical, or property of international intergovernmental organizations.”[56] If the infringement of patents constituted “damage to property”, the action may be brought against the state. Should infringement not be found to constitute “damage”, the action would likely be brought against the individual infringing actors, and this would be pursued through usual routes.

The establishment of infringement in fact poses significant difficulty for patent holders, particularly those who do not have the resources to monitor global activities. Issues of jurisdiction, while problematic, have been thoroughly discussed in academia and do not deter to the same degree that they may have in the late 20th century. As the frequency of space venture increases, including private space venture, I suspect that patent issues and intellectual property issues in outer space will become more pressing. Perhaps with future technological development, the monitoring and subsequent identification of infringing conduct will lessen the burden of patent holders to establish infringement in fact.


[1] CED (online), Patents “Infringement: Definition: General” (XIII.2.(a)) at § 650.

[2] Treaty on Principles Governing the Activities of States in the Exploration and Use of Outer Space, including the Moon and Other Celestial Bodies, 27 January 1967, 610 UNTS 205 (entered into force 10 October 1967, 107 ratifying nations and 23 signatories as of 1 January 2018) [Outer Space Treaty].

[3] Agreement on the Rescue of Astronauts, the Return of Astronauts and the Return of Objects Launched into Outer Space, 22 April 1968, 672 UNTS 119 (entered into force 3 December 1968) [Rescue Agreement].

[4] Liability Convention on International Liability for Damage Caused by Space Objects, 29 March 1972, 961 UNTS 187 (entered into force 1 September 1972) [Liability Convention].

[5] Registration Convention on the Registration of Objects Launched into Outer Space, 14 January 1975, 1023 UNTS 15 (entered into force 15 September 1976, 67 ratifying nations and 3 signatories as of 1 January 2018) [Registration Convention].

[6] Agreement Governing the Activities of States on the Moon and Other Celestial Bodies, 18 December 1979, 1363 UNTS 3 (entered into force 11 July 1984).

[7] Outer Space Treaty, supra note 2.

[8] Francis Lyall & Paul B. Larsen, Space Law: A Treatise (Farnham, England: Ashgate Publishing Company, 2009) at 77.

[9] Ibid at 59, 71.

[10] Ibid at 64; Gbenga Oduntan, Sovereignty and Jurisdiction in the Airspace and Outer Space: Legal Criteria for Spatial Delimitation (New York: Routledge, 2012) at 191-206.

[11] Lyall & Larsen, supra note 8 at 62-63; Oduntan supra note 10 at 192-193.

[12] Patent Law Treaty, 1 June 2000, WIPO TRT/PLT/001 (entered into force 28 April 2005).

[13] Patent Cooperation Treaty, 19 June 1970, 1160 UNTS 231 (entered into force 1 July 2015).

[14] Ibid, see e.g. art 4.

[15] See e.g. Oduntan, supra note 10 at 239.

[16] See e.g. Oduntan, supra note 10 at 233; Dan L Burk, "Application of United States Patent Law to Commercial Activity in Outer Space" (1990) 6:2 Santa Clara Comp & High Tech LJ 295.

[17] Registration Convention, supra note 5.

[18] Lyall & Larson, supra note 8 at 78.

[19] 35 USC §105 (1952).

[20] Oduntan, supra at 227; Civil International Space Station Agreement Implementation Act, SC 1999, c 35 was Canada’s domestic implementation of the intergovernmental agreement between Canada and 14 other governments.

[21]Outer Space Treaty, supra note 2 at art VII.

[22] Registration Convention, supra note 5 at art I.

[23] Registration Convention, supra note 5 at arts 1-2, 4.

[24] Lyall & Larsen, supra note 8 at 69, 94.

[25] Ibid at 94-95.

[26] Ibid.

[27] Oduntan, supra note 10 at 225-227.

[28] Oduntan, supra note 10 at 227.

[29] Lyall & Larsen, supra note 8 at 93

[30] Convention on the High Seas, 29 April 1958, 450 UNTS 11, arts 4-7 (entered into force 30 September 1962).

[31] Ibid at art 5.

[32] CED (online) Patents “Infringement: Exceptions to Infringement: Foreign Vessels, Aircraft and Vehicles” (XIII.4.(b)) at § 685.

[33] Patent Act, RSC 1985, c P-4.

[34] Newall v Elliott & Glass (1864), 10 Jur NS 954; VD v Boston Deep Sea Fishing & Ice Co (1934), 52 RPC 303 (CA).

[35] M-I Drilling Fluids UK Ltd v Dynamic Air Ltda, No. 16-1772 (United States Fed. Circ. 2018) [M-I Drilling].

[36] Ruth Sullivan, Statutory Interpretation, 3rd Edition (Toronto: Irwin Law, 2016) at 185.

[37] Robert H Barrigar & Andrew Shaughnessy Canadian Patent Act Annotated, 2nd ed, Release No. 52 (Toronto: Thomson Reuters Canada, 2018) (Westlaw Canada) at 54:70.

[38] Free World Trust v Electro Health Inc, 2000 SCC 66 at para 43 [Free World Trust].

[39] Ruth Sullivan, supra note 36 at 371.

[40] Ibid.

[41] M-I Drilling, supra note 35. Judge Reyna in her concurring decision provides a more fulsome discussion of this argument in the context of US patent law applying to ships on the high seas.

[42] Interpretation Act, RSC 1985, c I-21.

[43] CED (online) Statutes “Operation of Statutes: Territorial Operation” (IV.3) at § 301.

[44] Oduntan, supra note 10 at 232-233.

[45] Ibid.

[46] Ibid.

[47] CED (online) Patents “Infringement: Definition: General” (XIII.2.(a)) at § 649.

[48] Ibid at § 651; Monsanto Canada Inc. v. Schmeiser, 2004 SCC 34 [Monsanto]. 

[49] Patent Act, supra note 33 see e.g. s 4

[50] CED (online) Patents “Infringement: Indirect Activities Constituting Infringement: Aiding, Inducing or Procuring Infringement” (XIII.3.(b)) at § 676.

[51] Ibid at § 677; Dableh v Ontario Hydro, [1996] 3 FC 751.

[52] CED (online) Patents “Infringement: Indirect Activities Constituting Infringement: Aiding, Inducing or Procuring Infringement” (XIII.3.(b)) at § 675-676; e.g. MacLennan v Gilbert Tech, 2008 FCA 35.

[53] Ibid at § 675.

[54] Registration Convention, supra note 5.

[55] Rescue Agreement, supra note 3, see e.g. arts 4-5.

[56] Liability Convention, supra note 4 at art I.