THE AUTHORS:
Laura Denise Jaroslavsky Consoli, Deputy Counsel for the Swiss-Italian team in the International Chamber of Commerce (ICC)
Panagiotis Chalkias, Associate at White & Case
This article was written as part of the Switzerland VYAP Mentoring Program
In our previous post Space-Related Disputes Part 1 we provided an overview of the existing landscape and typology of space-related disputes.
A relatively unexplored but interesting issue are the specific intellectual property aspects that arise in space-related disputes. This second part discusses the potential of space-related disputes arising out of intellectual property infringements and provides an overall conclusion on what lies ahead for space-related disputes.
Specific Aspects for Intellectual Property Space-Related Disputes
Intellectual property disputes with a space-related component may grow as a natural consequence of the increase of commercial activities in space (WIPO, ‘Patent Expert Issues: Inventions in Space’).
Several intellectual property aspects arising in the context of space disputes can be identified, but the following two stand out:
- First, the protection of space transmissions. For instance, property rights violations may arise out of unauthorized interception and use of satellite transmissions (van Traa-Engelman).
- Second, the potential impact of space-related experiments on the pharmaceutical industry (ESA, ‘Patents and Space-Related Inventions’). By way of example, the research for the development of COVID-19 vaccines was conducted in outer space, as the research could benefit from microgravity effects in the International Space Station (ISS) (See also Jashari & Stojchevska).
For both cases, patent-related disputes may arise.
However, the main difficulty for patent-related disputes in space is the need to reconcile the territorial nature of patent law (in principle patents are enforceable within the territorial boundaries where the patent has been registered) and the non-territorial nature of space law (by contrast, outer space is not subject to any national laws and is not subject to appropriation, as per Art. 2 of the Outer Space Treaty).
In fact, there is a gap in the regulation since neither national laws nor international space law would be applicable. Therefore, it is unclear which law would be applicable for such inventions, or for the use or protection of patents (ESA, ‘Patents and Space-Related Inventions’).
On this topic, the World Intellectual Property Organization (WIPO) pointed out that under several international agreements concluded with respect to international space projects, registered space objects are treated as quasi-territory for the purposes of intellectual property (WIPO, ‘Patent Expert Issues: Inventions in Space’).
Among national legislations, the extraterritorial jurisdiction approach taken by the United States stands out. It provides that any invention made, used, or sold in outer space on board of a spacecraft that is under its jurisdiction or control shall be considered to be made, used or sold on its territory, except where an international agreement has been concluded that states otherwise (USA Patent Act (re. 35 U.S.C.§ 105(2003)). Germany took a similar de facto approach. Other national laws do not contain any provision in this regard.
Such a solution is particularly relevant for the United States since it is one of the few countries (Canada and the Philippines also use such an approach, see van Traa-Engelman) that apply a “first-to-invent” approach as opposed to a “first-to-file” approach generally adopted, thus calling for determining when and more importantly where the invention was made.
As regards the ISS, Article 21, paragraph 2, of the 1998 Intergovernmental Agreement for the Regulation of the International Space Station (IGA) provides that activities occurring in the ISS shall be deemed to have occurred in the territory of the State’s registry in which the activity occurred. This means that if an invention occurs in the USA module, the USA Patent Act would be applicable. For other types of space stations, the situation is unclear.
Another potential area of disputes relating to intellectual property rights is the interpretation of Article 5ter of the Paris Convention for the Protection of Industrial Property, which provides for limitations of the exclusive rights of a patent in the public interest to guarantee the freedom of transport (following the doctrine of temporary presence) (WIPO, ‘Patent Expert Issues: Inventions in Space’). In essence, this doctrine prevents a patent holder from claiming patent infringement against a party using a patented device on board of a vessel, aircraft or vehicle that temporarily or accidentally enters the other State’s territory, provided that such patent is being used exclusively for the needs of the vessel (Article 5ter, Paris Convention for the Protection of Industrial Property). Consequently, the question of whether such doctrine also applies to space objects may arise when patented articles are being transported to or from a Space station through a launching site in a foreign country (WIPO, ‘Patent Expert Issues: Inventions in Space’).
Finally, another potential source of disputes is the disclosure of remote-sensing images that may be subject to the protection of intellectual property rights, especially where there is no rule under international law (van Traa-Engelman).
Overall, WIPO seems to be well-placed to offer services for solving complex intellectual property disputes in the space industry. In fact, its Arbitration and Mediation Center has proved to be efficient in other fields, such as the Internet domain-name field, through the Uniform Domain Name Dispute Resolution Policy, which resolves disputes without the need to resort to court litigation. Additionally, WIPO is constantly monitoring novel intellectual property issues, and has already shown interest in the space industry and their intellectual property implications (Hertzfeld, Staats, & Leaua).
Overall Conclusion
The space sector will continue to give rise to disputes as the number of (private) actors increases and the size of the market expands. It is also expected that private parties will get more involved in the space sector, rendering intellectual property essential for the further development of space activities.
Given the potential risks in space, stakeholders should carefully consider reviewing their contracts, including their dispute resolution clauses, and opt for the most efficient and effective means tailored to their specific situation to allow them to navigate through the legal and regulatory landscapes of the space industry and the challenges that they entail.
ABOUT THE AUTHORS
Laura Denise Jaroslavsky Consoli is currently a Deputy Counsel for the Swiss-Italian team in the International Chamber of Commerce. She is an Argentinian qualified lawyer (Universidad de Buenos Aires) and a graduate of the Geneva LL.M. in International Dispute Settlement. She also holds a specialization in International Contracts and Judicial Litigation (Universidad Austral) and a postgraduate course in Energy Law (Universidad Católica Argentina).
Panagiotis Chalkias is an associate in White & Case’s International Arbitration Practice and is based in Geneva, Switzerland. He is a Greek qualified lawyer and registered with the Geneva Bar (foreign lawyers’ section). His practice includes advising and representing clients in complex, high-value cross-border disputes in a variety of industries under all major arbitration rules and governed by various substantive laws, both common law and civil law. Panagiotis is currently co-chair of Young AFSA (Arbitration Foundation of Southern Africa) and has been recognized as Future Arbitration Leader by Lexology (formerly Who’s Who Legal) 2021-2025.
*The views and opinions expressed by authors are theirs and do not necessarily reflect those of their organizations, employers, or Daily Jus, Jus Mundi, or Jus Connect.
