With an Australian space agency formally announced in the latest Federal Budget, it's time to consider the IP implications for the commercialisation of space.

The Australian Government’s 2018-19 Federal Budget formally announced the establishment of the Australian Space Agency, with initial funding starting at $26 million over the next four years, plus an additional $15 million from 2019-20 to invest in specific international space projects considered beneficial to Australia.

Although the amount of funding is small by world standards, and some of the details of the Agency are still scarce, the announcement recognises and formalises the importance of space-related technology to Australia.

Over the past few decades there has been a shift away from state-owned entities and a move towards private entities conducting activities in space.

The space industry is now estimated to be worth around $400 billion per year, so this shift is likely to accelerate. Some notable Australian companies now operating in this area include Gilmour Space Technology, Saber Astronautics, Neumann Space, Space Fleet and Myriota.

This shift towards private entities means it is important to consider how intellectual property (IP) might be used for commercial gain for space-related technologies.

Below is a brief summary of the issues surrounding the protection of space-related technology, noting that the specific requirements for IP protection are likely to be dependent on a range of factors.

The Outer Space Treaty was established in 1961 and states that international law applies to outer space and celestial bodies.

This means that outer space and celestial bodies are free for exploration and use by all States in conformity with international law and are not subject to national appropriation (ie no one nation may claim ownership of outer space or any celestial body).

There are various Articles in the Outer Space Treaty that need to be considered when protecting space-related technology.

Issues such as the State registration of the object sent to outer space, and where the “control” point of the object is, need to be considered when protecting IP for space-related technology.

These issues are not dissimilar to the “flag of convenience” problems encountered in maritime law, so the approaches taken to protect IP in international waters may be used as a proxy for protecting space-related technology.

One of the main problems with protecting space-related technology is that the founding principles of space law were developed during the Cold War, when lawmakers were focused on major space-faring nations rather than the private sector (ie for the good of all mankind).

Conversely, IP laws aim to protect private property to secure benefits for the rights holder.

Therefore, there is an inherent tension between the principles of space law and IP laws.

For private companies that do not need to rely on third parties to launch or operate their space-related technology, trade secrets may be a useful strategy to protect IP, especially since trade secrets can be protected in perpetuity provided they are not published.

The use of trade secrets also prevents the IP from being published for others to see. However, once a trade secret has been made public, the opportunity to seek patent protection is generally lost.

Additionally, trade secrets may only offer limited protection for companies that need to rely on third parties eg for launching capabilities.

The specific interplay between patent laws and the Outer Space Treaty is complex, but the two main criteria that a patent applicant must consider when looking to protect its space-related technology are:

  1. the jurisdiction(s) in which the technology is used prior to being launched into space; and
  2. the jurisdiction(s) and associated “control” point(s) of the technology.

The protection strategies for 1) would be similar to those conventionally used. For example, when protecting an apparatus, an applicant might typically seek protection in jurisdictions where the apparatus is exported, imported, used, manufactured and licensed.

Due to the “flag of convenience” problems for space-related technologies, the protection strategies for 2) should not be dissimilar to an applicant wishing to exploit a patented technology in international waters.

The key point in considering 2) is working out the control point of the parties involved. The control point comes back to the State of registration for the patentee, and this is related to Article VIII of the Outer Space Treaty.

In short, if a third party is registered or based in a State that is different to the patentee, then the third party may avoid infringement. Given these complexities, the considerations for 2) will need to be assessed on a case-by-case basis.

Generally, the protection strategy for 2) is more complex than 1). The result is that, depending on the technology, a patent applicant for space-related technology may need to formulate a protection strategy that relies on 1) or 2), or a combination of 1) and 2).

The issues related to patent protection in space should similarly apply to Registered Designs/Design Patents.

A major difference between trade marks and patents and designs arises in relation to branding and reputation for specific goods and services.

With trade marks, IP rights can accrue and prevail beyond territorial or jurisdictional limits, and this presents an extra layer of complexity in relation to space-related technology.

Companies such as Virgin Galactic will soon allow for commercial trade in space, so protection strategies for trade marks should be examined by those wishing to exploit such trade.

Although trade mark protection differs to the way patents and designs protect IP, some of the issues discussed in relation to patent protection will likely translate into trade mark protection for space-related technologies.

The intricacies of protecting IP for space-related technologies means an IP protection strategy needs to be created in parallel with a company’s commercial strategy rather than as a reaction to it.

A company’s best commercial strategy and best IP protection strategy may be at odds with one another, so a thorough analysis of both is required before execution of the final IP solution.