Disclaimer: This is article is for educational purposes only and is not legal advice. Please consult a licensed attorney to discuss your particular needs.
If you’re building a spacecraft just for fun, do you still have to worry about patents? The answer is – it depends. For a better answer, I spoke with Andrew Rush of IP in Space. Andrew is a highly qualified patent attorney who researches and blogs about the aerospace industry. So he’s exactly the right person to bring this question to.
The Open Source Hardware Community
Many people in the Maker and Space communities are building really cool stuff with the idea that they'll figure it out, build it, and then release the plans to the general public so that others can duplicate their designs. The important thing to note about open source is that just because you open source something, doesn't mean that it is not infringing on a valid patent. If you design and build an infringing device, and then release the plans on the internet, all those people building those devices are also potentially infringing. This is called "secondarily liable" for patent infringement and you can be liable for inducing
someone else to infringe (even if you had no idea it was patented). To put it another way, you may be liable for not only what you do in your garage…but what others do in theirs. This is an important fact because lawyers tend to get involved once there is a lot of money on the table. If the Open Source Hardware movement get’s big enough and is built off of patent infringement, it is entirely possible that legal issues will put a serious damper on an otherwise healthy movement.
Ensuring Your Design Remains Open Source
Occasionally, a patent will be awarded for an invention by mistake. While the patent office does it’s best to ensure this doesn’t happen…it does. Imagine this scenario: Person A invents something, discloses it, gets written up in a small unknown journal or written up in a thesis and gets filed in a library somewhere. Five years later person B invents the same thing and files for a patent. After a thorough search the patent is awarded because they couldn’t find the small journal or thesis sitting on a dusty shelf somewhere. While it is technically invalid because it was actually invented 5 years earlier by person A. Why is this an issue? Pretend your person A and you’re using the technology that YOU INVENTED. Person B comes along and threatens to sue you because you’re “infringing”. Except you invented it. The only way for person A to invalidate it is through the court system. The really expensive court system (Check out this post
to get an idea of costs). An issued patent has a presumption of validity and it is difficult (and expensive) to overcome that presumption even if you have the proof. Long story short – if you invent something and want it to remain Open Source, publish it as publicly as is legally possible so the Patent Office cannot possibly miss it. Establish prior art.
Creating Patents off of Patented or Open Source Hardware
There are currently over 8 million issued US patents and the vast majority of those (95 percent) are not pioneer technologies. A pioneering patent would be the world first patent on 3D printing or the Wright brothers patent on powered flight. Most are just incremental improvements to already existing technologies. They're a slightly more efficient aileron for a plane, or a 3D printer that prints a little more efficiently. Most of them are just tiny improvements. If there's an open-sourced rocket engine design, and you come along and invent an improvement for that rocket engine design you can patent it. This is where licensing becomes important. When you release a hardware design to the public, you can use a license to stipulate how the technology is used and whether incremental improvements can patented. For example you can use a license that requires all technology built using your design to be released under the same license…effectively halting the ability for someone to patent an incremental improvement based off your design. Lady Ada has a great resource on Open Source Hardware licenses
. Also, by publicly disclosing your design, this also keeps anyone else from being able to file a patent on it.
Officially You Need to Worry About Patents
On the legal front in the United States, if there is a valid patent on an invention and you reproduce that invention without permission from the owner, you have committed infringement. In the US, there are no “fair-use” exceptions (like satire for copyright protected material) to patent infringement. So “technically” from a strictly legal standpoint, any copying or reproduction is considered infringement. That means in theory the owner could sue and collect “reasonable royalty” which is the penalty for infringement. Damages get worse (3 times worse) if you’re found to be “willfully infringing” on the patent…ie you knew about the patent and deliberately violated it.
The Reality of Patent Infringement
Does that mean that the patent owner would come after you? This is where it gets tricky, even assuming they know you are violating a patent. Because of the high cost associated with patent litigation, the patent owner (often a business) needs to decide if it’s worth the cost to take you to court. Defending even the smallest of infringement cases can cost hundreds of thousands of dollars in legal fees. And the bigger the case, the more expensive it gets. Remember the Apple and Samsung battle? There are provisions in the law to collect legal fees if you willfully infringe, but most hobbyists and small businesses don’t have hundreds of thousands of dollars sitting around. So there’s often no point in trying to collect. However, they have another option…one used extensively by the RIAA, which is to send letters to alleged infringers requiring them to pay a fee in order to avoid a legal battle. At the moment though, this option is rarely exercised in the patent arena. Though patent trolls have been known to use it with organizations and not individuals. Because again, individuals tend not to have stacks of cash sitting around. So even if you are infringing, from a business perspective there are several reasons why nothing will happen. Consider it a sort of “Russian Roulette” for patents.
When to File a Patent
The United States has what is called a novelty requirement. To get a patent, your device has to be new. The word "new" in the patent world means something different from the word "new" everywhere else. Basically it means that if you invent something, you can't get a patent if it's been invented before, and you can't get a patent if you publicly disclose it and then don't file a patent application for more than a year. You have a one-year grace period from your first public disclosure to enforce your patent rights. If you go to a conference and present your rocket engine design but don't file a patent application on it within a year, that disclosure becomes public. Before March 16th, 2013 the US was a first-to-invent jurisdiction. How it works: Inventor A invents a widget and 6 months later Inventor B invents the exact same widget. Inventor A weights 11 months to file the patent while Inventor B files the patent immediately after creating it (thereby filing 5 months BEFORE inventor A). In a legal situation, Inventor A would be considered the inventor of the patent. This is an oversimplification of the process but you get the point. This “first-to-invent” process while nice in practice led to some serious legal headaches because it often became a court battle to prove who had the first “Aha” moment. The rest of the world took a different approach: “first to file”. Basically in the above scenario Inventor A would be out of luck because they waited too long to file. This simplifies the patent process (and the legal issues) but it also tends to favor well-funded organizations who have the money and the patent attorneys to apply early and often. This could squeeze out the smaller independent inventor who wants to be absolutely sure this widget is worth patenting before paying the expense of filing a patent.
Patents as a Learning Tool
Patents can serve as a great learning tool for building hardware. Essentially, it's a blueprint to building a “non obvious” invention with the inventor receiving legal protection for disclosing the invention. A patent is written from the perspective that a person having ordinary skill in that technical field is able to read it and then build, make and use that invention without any undue experimentation. A propulsion engineer should be able to pick up one of Boeing’s patents about their propulsion technology, build and use it without having to invent a bunch of stuff to successfully do so. That's very powerful because patents only last 20 years from the date the application was filed. After 20 years, that technology becomes public domain. Anybody can use it and exploit it however they wish. If you want to build an Apollo F-1 engine you can do that, all the patents have expired (assuming you have the money). While patents are dry and boring, so is every other instruction manual.
Patents in Space
US Patent law actually extends to outer space thanks to the Patents and Space Act (35 USC 105) and is the only law of it’s kind. The Act states that US Patent Law applies to any object in space that the United States has jurisdiction over under the terms of the Outer Space Treaty or any other relevant treaty or law or agreement. That means portions of the International Space Station that are controlled by the United States, US Patent Law still applies.
Where to look for expired patents
The first place that you can look is Google Patents. They periodically comb the United States Patent and Trademark Office database for issued patents and for published applications. They also do the same thing for the European Patent Office. Finding expired patents is relatively simple, you can constrain the results it will give you based on the issue date or filing date. For example, patents issued 20 years ago or more from today’s date. There is one caveat though and it’s called a Patent Term Extension. If the issuing Patent Office dragged their feet on the application, the Patent Office will determine how much longer they took then was necessary and add that onto the time limit. If they took 6 months longer than deemed necessary, the patent would expire 20 years and 6 months past the date it was filed.
Finding NASA Patents
The organization that put men on the moon has invented some really cool hardware. But how do you find it? Just type in “National Aeronautics and Space Administration” in Google Patents along with any other relevant filters (filing date, filing status, type).
Prematurely Expired Patents
When a patent is issued, you have to pay a nominal issue fee but there are maintenance fees at 3.5 years, 7.5 years and 11.5 years. The fees start at $500 and go up every year depending on the size of your organization. If you don’t pay them, the patent expires and the technology becomes public domain. One of the most famous expired patents in the space industry is the Canfield Joint. It was issued in the 90’s and should still be a valid patent, but the patent holder didn’t pay the maintenance fee and it became public domain.
US Patent Office Search
The patent office has a system that's called the Public PAIR (Patent Application Information Retrieval) that will tell you the history of the patent. It will tell you whether or not it has expired or if it's in force, or if it's an application, if it's still pending, or if it's been abandoned. New patents and published applications are released every Tuesday and Thursday. Unfortunately, Google only checks periodically so if you want the most up-to-date listing of patents you have to go directly to USPTO.gov. It's not as intuitive as Google Patents, and it's harder to get PDFs of an interesting patent out of the system but it is the most up-to-date source.