IP: TRW - should the PTO allow orbits to be patented? [LONG - but

[David Farber <farber () central cis upenn edu>]

From: Gregory Aharonian <srctran () world std com>
To: patents () world std com


!19950929  TRW: should the PTO allow orbits to be patented?


    One of my readers is an expert in outer/aerospace patent law, which
because of the communications industry and satellites, is not a trivial
legal area.  He has graciously written an article for the patent news
service, which follows below. Please direct any questions by email to him.


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              TRW SATELLITE CONSTELLATION CLAIM


                Some Space Law Considerations


                        Sa'id Mosteshar


Few  people involved in patent issues can be unaware of  the
unusual  history of the TRW patent Claim.  TRW asserts  that
its  patent has in effect reserved to it the exclusive right
to  use  the  medium earth orbit, MEO, for mobile  satellite
communication systems.  This would inhibit and  prevent  the
development of competing MEO systems.


The question that arises is whether the United Stares Patent
Office,  PTO,  can exercise its jurisdiction in a  way  that
grants a monopoly over certain uses of the relevant part  of
outer space.


The  TRW patent Claim relates to the provision of satellite-
based communications between low-powered handsets with omni-
directional antennae, using as a gateway a satellite forming
part  of a constellation. TRW claims that its patent is  not
limited  to any individual element or step involved  in  the
formation   or   the  operation  of  the  constellation   of
satellites.  The Claim involves:


1    Launch  of  a  constellation of satellites  to  between
     5,600 and 10,000 nautical miles above the earth;


2    At  least one satellite to have a reduced antenna field
     of view, FOV, less than full earth coverage;


3    The  satellites  to  be  oriented  in  a  plurality  of
     predetermined orbital planes;


4    Receiving  radio  frequency signals  by  at  least  one
     satellite from a plurality of mobile handsets with omni-
     directional antennae;


5    Overlapping  of a portion of the coverage region  of  a
     departing  satellite  with a portion  of  the  coverage
     region of an arriving satellite;


6    Predetermined criteria for the assignment of  calls  to
     or from users within the coverage overlap region from a
     departing satellite to an arriving satellite (call hand-
     over).


Clearly,   TRW   could  secure  a  patent  in   respect   of
implementation of some individual steps, if they  are  novel
and  unobvious.  There is much prior art in relation to many
of these elements.


But TRW asserts that the use of the MEO for mobile satellite
communications  requires  that  the  system  have  all   the
characteristics outlined in the Claim.  An essential element
of   the  TRW  patent  is  the  location  of  the  satellite
constellation  at MEO of between 5,600 and  10,000  nautical
miles.  The attraction of the MEO is the reduced  number  of
(admittedly more powerful) satellites necessary  for  global
communications.  The patent granted to TRW is in  reality  a
narrow  one  for a particular use of the MEO.  However,  TRW
asserts that it has achieved its broader objective.








United States Patent Law Extension to Objects in Outer Space


The United States amended its patent legislation in 1990  to
extend its jurisdiction to objects in outer space.  Acts  on
a  "space object or component thereof under the jurisdiction
or control of the United States" are treated as taking place
within the United States.




Under  this part of the legislation it is necessary to  show
an  act  on a specific space object, such as a satellite  or
the  Space Shuttle which is carried on the registry  of  the
United  States.  An example of such an act would be carrying
out  a  patented manufacturing process within  the  Shuttle.
However,  the legislation does not purport to and  does  not
have the effect of extending the patent jurisdiction of  the
United  States to any part of outer space per se, merely  to
the space object itself.






United States Patent Infringement Provisions


Even   prior  to  1990,  United  States  patent  legislation
provided that in some circumstances, a person arranging  for
implementation outside the territory or jurisdiction of  the
United  States, of certain actions specified in a US patent,
that person is infringing the US patent.


Even  though  the  relevant actions take place  outside  the
United  States, infringement is deemed to occur  inside  the
United  States.   It  is  therefore  arguable  that  if  the
satellites for an MEO system are made in the United  States,
but  the launch takes place elsewhere, the provider  of  the
satellites  has  infringed  the TRW  patent  in  the  United
States.  An  attempt by someone other than TRW to circumvent
the patent by launching a US-made cluster of satellites from
another country would fail under these provisions.






Implications of the TRW Claim


Communications  is  still the most significant  activity  in
outer space.  Mobile satellite communications is growing  in
significance more rapidly than any other single use of outer
space.  Even at this early stage of the game there are three
systems  designed  for  operation  in  MEO  and  13  systems
intending  to  use  LEO.   There are certain  technical  and
economic features that make MEO systems more desirable  [See
"Big and Small", Aerospace America, September 1995].


If  the  grant has the effect claimed  by TRW, the  PTO  has
made  the MEO substantially unavailable for use by any other
entity.   To  the  extent that most of the capital  and  the
satellites  for such systems will originate  in  the  United
States,  the  TRW  patent  would preclude  MEO  use  by  the
majority  of other countries that might desire to  establish
MEO systems






International Law of Outer Space


The United States is Party to the Outer Space Treaty 1967  ,
OST.  Two fundamental principles of Outer Space Law are:


     "Outer  space,  including the moon and other  celestial
     bodies, shall be free for ... use by all States without
     discrimination of any kind ... ", and


     that   "Outer  space,  including  the  moon  and  other
     celestial   bodies,   is  not   subject   to   national
     appropriation by claims of sovereignty, by means of use
     or occupation, or by any other means".


If  the  TRW assertion is correct, by its grant the PTO  has
appropriated to the United States' patent sovereignty a part
of  outer space, in breach of the United States' obligations
under  the OST.  Such an exercise of sovereignty by the  PTO
is  clearly beyond what the United States recognizes as  the
limits  of  its patent jurisdiction, as permitted under  the
OST, and evidenced in the 1990 amendment.


Furthermore,  the TRW patent would de facto  preclude  other
States  from free use of a part of outer space, contrary  to
the  OST.  This also contravenes the principle that "the ...
use  of  outer  space  ...  shall be  the  province  of  all
mankind".






Conclusion


This   is   a  much  abbreviated  argument  based   on   the
international law obligations of the United States  and  its
impact on patents relating to the use of parts of the  outer
space.   Nevertheless, it should be apparent that there  are
serious issues that need to be addressed.  If the PTO  grant
has  the  effect asserted by TRW, then the PTO has  exceeded
its  jurisdiction in granting the Claim of TRW as it relates
to the MEO.




Professor  Mosteshar  is  a  practicing  Communications  and
Intellectual Property Lawyer and past Chairman of the  Outer
Space Committee of the International Bar Association.


c Sa'id Mosteshar  1995
London and San Diego
smostesh () weber ucsd edu






                              ====================






Greg Aharonian
Internet Patent News Service
P.O. Box 404, Belmont, MA, 02178
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