Date: 18 January 2022
Low Earth Orbit (LEO) Satellites have been much in the news recently. OneWeb has already launched over 350 LEO satellites and SpaceX has launched over 1700 of its Starlink satellites. Both companies have plans for many more.
Each satellite is packed with innovation, and the question arises “are they beyond the reach of patent infringement?”
The United Kingdom Patents Act 1977, for example, says that a patent is infringed by certain acts done in the UK in relation to the invention without the consent of the proprietor of the patent while the patent is in force. There is an exemption (section 60(5)(e)) for aircraft and for vehicles that temporarily cross the UK, not limited to its airspace, but there is no specific exception for objects in space. So a number of questions arise, including the question of whether it matters if the satellite is geostationary and permanently in orbit over the UK or merely crossing the UK on a regular schedule.
The answer lies not in the Patents Act but in the Outer Space Treaty of 1967, of which 111 nations are signatories. The Treaty was primarily motivated by the desire to ban nuclear weapons in space and provides that the use of outer space shall be carried out for the benefit and in the interests of all countries and shall be the province of all mankind. It provides that outer space is not subject to national appropriation by claim of sovereignty. But these lofty principles do not absolve satellite-launching companies from terrestrial laws. Ownership of objects launched into outer space is not affected by their presence there or by their return to the Earth, and states who are parties to the Treaty must carry on activities in the use of outer space in accordance with international law. In particular, states and their incorporated companies must register the objects they launch into space, and Article 8 of the Treaty provides that a state shall retain jurisdiction and control over an object in outer space if it has registered that object.
First, let us clear up any doubt over what is meant by “outer space”. Outer space is merely space beyond the effect of the Earth’s atmosphere. The term applies to all space above the Kármán line, which is approximately 100 kilometres above sea level. Below the Kármán line, the Earth’s atmosphere acts on an object to slow it down and cause it to fall closer to Earth and enter or re-enter the Earth’s atmosphere. Below the Kármán line, objects can be steered by air deflecting surfaces such as rudders and ailerons. Above the Kármán line, they are in outer space and free from the atmosphere and remain so unless they are caused to move closer to Earth. Above the Kármán line, they are steered by retrorockets.
It is clear, therefore, that when an object is “in outer space” it has left the jurisdiction of any terrestrial nation and no state can claim jurisdiction over it, other than as provided by Article 8 of the Treaty. This is equally true for geostationary satellites. Geostationary satellites occupy orbits even more remote from the Earth than LEO satellites (see diagram). States cannot claim jurisdiction for geostationary satellites based solely on the territory above which they reside in orbit. An attempt in 1976 by certain equatorial countries to assert sovereignty over portions of the Earth’s geostationary orbit that continuously lie over those countries did not receive international support and was abandoned.
Thus, UK courts retain jurisdiction over OneWeb satellites (launched from Russia) that are registered by the UK in the Space Object Register, and US courts retain jurisdiction over Starlink satellites (launched from Florida) that have been registered by the US.
Article 8 does not say that the state of registration has exclusive jurisdiction, although that would seem to be the intention. There are some states (e.g. Iran, Singapore) that do not register their satellites, but we are straying off topic if we ask whether some other state might claim jurisdiction for unregistered space objects.
Although Article 8 of the Treaty provides that the UK retains jurisdiction over a UKregistered satellite, does this mean it is “in the UK” for the purposes of Section 60 of the Patents Act 1977? Does it mean that a person who uses that satellite (anywhere in orbit and indeed anywhere in the world) is doing so “in the UK”?
There are a number of reasons why this would not be the case. First, section 60 applies where an act of infringement occurs in the UK, which, by section 132, extends to the Isle of Man and the territorial waters of the UK but nowhere else. Second, there is the Outer Space Treaty itself, in which Article 1 states that outer space shall be free for use by all states in accordance with international law. Third, there are decided cases in which an act such as a contract to buy and sell goods is executed in the UK and is therefore within the jurisdiction of the UK courts, but in which there is no infringement because the goods themselves changed hands outside the UK (Sabaf v. MFI  UKHL 45). Similarly, an offer to supply goods that is made within the UK is not an infringement if the offer is to supply the goods abroad (Kalman v PCL Packaging  FSR 406).
Just for completeness, the Patents Act itself has its own exclusion from patent infringement for any relevant aircraft, hovercraft or vehicle “temporarily crossing the UK”, and it is worth mentioning this exclusion if only to explain why it is not relevant. “Aircraft” is not applicable to an object above the Kármán line, for reasons set out above, and “vehicle” is not applicable to a satellite that is not conveying a payload, but in any case, both are limited in Section 60(7) to aircraft or vehicles that are registered in or belonging to a country other than the UK. So the exemption does not apply to UK registered satellites.
The same approach applies elsewhere in Europe, with certain exceptions agreed under the International Space Station Intergovernmental Agreement. So, for example, Germany has modified its law such that activity relating to an element registered with the European Space Agency is deemed to have occurred in Germany for the purpose of the protection of industrial property rights (Certain Aspects of Intellectual Property Rights In Outer Space, Isabelle Bouvet, Faculty of Law, Air and Space Law Institute, McGill University, Montreal, November 1999, at page 39.)
Prior to enactment of the US Space Bill of 1990, US patent law did not extend to acts carried out in space (Hughes Aircraft Co. v. United States, 29 Fed. et 197 (1993), Journal of Space Law, 1996, at 18S, which concerned spacecraft launched prior to 1990.) Then 35 USC §105 was added, extending the applicability of US Patent Law to US registered space objects. The added section provides that, with exceptions relating to foreign registered objects: ”any invention made, used or sold in outer space on a space object or component thereof under the jurisdiction or control of the United States shall be considered to be made, used or sold within the United States for the purposes of this title”.
There remains another important way in which use of a satellite might infringe a UK patent, and this lies in how that satellite is used in the UK. Satellites are put into orbit for communications and at some point those communications originate from the Earth or are returned to the Earth. If the use of the satellite is in the UK, such use might be an infringement on the precedent established in Menashe v William Hill  RPC 31, in which a claim to a gaming system for playing an interactive casino game was found to have been infringed by use in the UK even though an element of the claim (a host computer) was located in the West Indies. The Court of Appeal said: . . . “it is pertinent to ask who uses the claimed gaming system. The answer must be the punter. Where does he use it? There can be no doubt that he uses his terminal in the United Kingdom and it is not a misuse of language to say that he uses the host computer in the United Kingdom. It is the input to and output of the host computer that is important to the punter and in a real sense the punter uses the host computer in the United Kingdom even though it is situated in Antigua and operates in Antigua.
A punter who uses the William Hill system will be using the whole system as if it was in the United Kingdom. He will in substance use the host computer in the United Kingdom, it being irrelevant to the punter where it is situated. ”To rely on infringement on this principle of “use in the UK” it is important to have claims that are focussed on the activities in the UK and not, for example, on the satellite. Research In Motion v Motorola  EWHC 118 is a case in which the steps taking place on the server outside the jurisdiction were non-trivial and there was no infringement.
We know of one attempt to bring a case in the US and the UK for infringement in relation to satellite-to-satellite communications, which is TRW v ICO Communications. In the US case, the claim called for launch of a constellation of satellites into a particular orbital shell (between about 10,000 km and about 18,000 km) and certain steps of orienting the satellites and of receiving signals from mobile handsets, with criteria for assignment of calls to or from users within the coverage overlap regions of departing and arriving satellites. The claims, if enforced, would present great difficulty in others deploying communications satellites within the specified orbital shell. The claims of the European patent were to a system that included a terrestrial handset (see European Patent EP0510789B1). The case was settled out of court, so we do not know how the different jurisdictions would have decided the territorial issue.
This brief article concludes that, once launched into space, use of a communications satellite is not “use in the UK” for the purposes of section 60(1) of the Patents Act, unless the claims have been drafted in such a way as to encompass a terrestrial user who perceives the use to be in the UK (under the precedent of Menashe v William Hill). The same applies across Europe but, as is often the case, a US patent can have greater value by its wider reach. This might have implications on choice of state for satellite registration.
We do not attempt to consider all the ways in which a satellite, as a product, might infringe a patent prior to launch and during launch. These questions will increase in importance with the opening of the SaxaVord Spaceport in the Shetland Islands.
As ever, it all boils down to what is claimed. Careful claim drafting with a keen eye on activities on Earth is all-important.