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I came upon a curiously exorbitant statute, Inventions in outer space (35 USC 105). To summarize my question, what was the story and the rationale behind this law?

The section reads, in part:

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, except with respect to any space object or component thereof that is specifically identified and otherwise provided for by an international agreement to which the United States is a party, or with respect to any space object or component thereof that is carried on the registry of a foreign state in accordance with the Convention on Registration of Objects Launched into Outer Space.

It made me even more curious that this section was alone by itself added by the bill S. 459/HR. 2946 (Public Law 101-580, 104 Stat. 2863) in 1990.

As far as I know (I well may be wrong), (1) there are no special provisions in the 35 USC, the patent law, about inventions on a vessel under the US flag, and (2) the flag jurisdiction generally applies to outer space vessels, according to the Outer Space Treaty of 1967 (see this and this answers; 18 USC 7 establishes US maritime criminal jurisdiction over US space vessels; I cannot readily provide same for civil jurisdiction but I believe it also exists).

So why is there a specific statute for inventions made on a US vessel in outer space, while there is apparently none for such a vessel in international waters or airspace? My understanding is that the patent law applies to the latter, so why did the former require a specific act of Congress?

The date of the law, 1990, falls “nicely” between the President Reagan's announcement of the plans for the ISS in his State of the Union address in 1984 and the launch of its first module in 1998, but many events would fit no less nicely in a 14-year time span. But still, my guess is that the act was somehow prompted by a huge international space operation, and I can think of no other matching development at the time.

  • The record of actions on the Senate bill can be seen here. I found the Congressional Record from Feb 28, 1989, when it was introduced, and you can see speeches by Senators Al Gore and Fritz Hollings in support of the bill. Maybe that will provide some explanation? – Nate Eldredge Aug 25 '18 at 5:35
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    It does appear that it was prompted by international negotiations and planning for the ISS. – Nate Eldredge Aug 25 '18 at 5:37
  • Skylab had also been in operation from 1973-1979, and Mir was launched in 1986 and was still operational at this time. ISS still seems like the most likely impetus, but it's not like we were lacking in reasons to think that "inventions" would occur, or already had occurred, in space, and that establishing clear legal rules was necessary to prevent foreseeable problems. – zibadawa timmy Aug 25 '18 at 7:13
  • @zibadawatimmy, It's hard to disagree, but there is a but. I have no proof, but given how many people are at the high seas at a time, I would not be surprised an invention would have claimed by them, and still we did not have a law specific to this; in fact, it seems hard to contest that an American making an invention while on an US-flagged vessel would not have a priority. What is so special about outer space_ that a statute was required? Was there a court case challenging a priority of a space-borne invention that prompted the Congress to act? The codification seems trivial, really. – kkm Aug 25 '18 at 10:36
  • @NateEldredge, thanks for the pointers. I'll study their reasoning.I just (1) somebody has already researched this piece of legislative history ans (2) worrying I could misled my self as sometimes real motives are not really easy to unambiguously deduce from the actual language of political speech in Congress. – kkm Aug 25 '18 at 10:42
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For purposes of determining inventorship, the location the invention was made in is irrelevant. Before the AIA, the location of a publication or other public knowledge was relevant (in the U.S. vs outside the U.S.) The AIA did away with that distinction. Pre AIA 35 USC 102 had two reference to "in this country". Post AIA there is no distinction made as to where the prior art was known or used or on-sale. I think this makes the provisions you are looking at moot, at least in terms of patentability. Before AIA, adding in the space provision would make a use in space a use in the U.S. and therefore potentially prior art. Now it is potentially prior art without any issue of having happened in the U.S.

PRE AIA 102

A person shall be entitled to a patent unless —

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

POST AIA 102

[a] person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

  • Thank you, but could you please elaborate on the connection the AIA has with my question? The AIA carries on, with more or less substantial changes, after two (or three?) previous bills that did not make it each in a previous respective Congress; to my knowledge, in its spirit it ultimately traces back to the Promote Innovation etc. FTC report of 2003. But it's not obvious to me how the AIA is related to the bill of 1990 that I mentioned in the question. (I am only researching history, so may easily be missing something obvious to someone who is in the field). – kkm Aug 28 '18 at 0:05
  • Thanks for the update George, I'll try to absorb this in the next couple days! – kkm Aug 29 '18 at 8:16

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