For many, space is the final, and most exciting, frontier. From a legal standpoint, where that frontier actually begins is frustratingly hazy. As commercial entities and private citizens begin frequently visiting and operating in space, this legal haze threatens to spill over into the mainstream and constrain growth of the new space-based industries. Fortunately, there are at least three approaches to clarifying the legal definition of the edge of space!

Stephen Murphey and I have put together the above video discussing where space begins. The video details the three approaches taken in attempting to create an international (or national) definition of where space begins. The three approaches are: physical, functional, and definition by fiat. The physical approach is the most widely used in the popular press, but unfortunately, FOX and CNN are not government lawmakers!

For those of you interested in a longer, more detailed explanation, I previously wrote a two part series on the subject of where space begins. Check it out here and here!

Please take a second to watch the video and comment! Hopefully, it provides some clarity. Stephen did a great job on putting it together!

Happy creating!

Under NASA’s COTS, CCDev and CCiCap programs, unmanned space freighters and astronaut-carrying space taxis are currently under development by several innovative companies. Substantial development has been done by these companies which are valuable from the perspective of working with NASA, but potentially more valuable in the commercial sector. The use of Space Act Agreements and providing a clear path to returning ownership of intellectual property to the companies doing the development has played a pivotal role in making these programs successful from NASA’s standpoint and from a commercial standpoint. Let’s take a look at the structure of these agreements and how they are being implemented.

The Commercial Crew integrated Capability (CCiCap) program is the third round of NASA’s program to spur the development of a private space taxi capable of ferrying astronauts to and from the International Space Station. Over a billion dollars in funding has been awarded via Space Act Agreement (SAA) to three companies, SNC, SpaceX, and Boeing, which will supplement private development monies. New spacecraft using new technologies will most likely emerge from this program over the next several years, providing new options for getting people to both private and public space destinations.

Because new technologies and vehicles are being developed by NASA’s private partners, the type of work being performed under CCiCap is “inventive.” Typically, NASA requires the private partner to establish invention reporting procedures which ensure that all patent rights are preserved during development. NASA also automatically takes ownership of inventions made under SAA where inventive work is performed.

Under the SAAs used to carry out the CCiCap program, NASA lays out a clear path to keeping IP rights in the hands of participating companies. Article 13 of SpaceX’s CCiCap SAA states:

“…the interest of the United States would be served by waiving to SpaceX, in accordance with … the provisions of 14 C.F.R. Part 1245, Subpart 1, rights to any inventions or class of inventions made by SpaceX in the performance of work under this Agreement. Therefore, upon petition submitted by SpaceX … NASA will waive such rights to SpaceX.”

This clause lays out a path for keeping IP rights with the participating company. The participating company may simply apply for an advance waiver of NASA’s rights to inventions developed under a CCiCap agreement.

Importantly, 14 CFR Part 1245 does not exempt SpaceX, or any other CCiCap company from the invention reporting requirement of the SAA. Even if SpaceX, SNC, or Boeing receives an advance waiver, they must identify and notify NASA of inventions made under their CCiCap agreement.

Happy creating!

Examples of remote sensing images collected by satellites. Image credit:NOAA.

Every satellite–from school bus-sized communications behemoths, to super-secret spy satellites, to tiny CubeSats–has to make it through a gauntlet of documentation and approvals before they ever fly. This is understandable since even something as small as a 1 kilogram CubeSat can pack a mighty wallop after it is accelerated to an orbital velocity of 17,000+ mph!

Satellites and other spacecraft have to be registered under the Registration Convention, launch range safety approvals have to be wrangled, and FAA licensure must be addressed.

Depending on the type of satellite being launched, the National Oceanic and Atmospheric Administration gets in on the game, too! Earth gazing and other remote sensing satellites, including CubeSats observing the earth, must pass a NOAA licensing process. The good news for CubeSat developers is that NOAA often goes out of its way to accommodate the needs of private satellite developers and operators.

CubeSats are satellites made of one or more 10 cm-a-side units with a mass of a few kilograms. Typically, CubeSats are placed in a low earth orbit and do not have on-board propulsion systems, resulting in an operational life of a few years or less.

CubeSats are becoming more and more prevalent. As Stephen Murphey recently pointed out, you can build one for the price of a nice BMW and build and launch one for the price of a low end Bentley. Sure, not many of us are in the market for a Bentley, but with more than 7,000 copies of Britain’s finest autos sold in 2011, perhaps a few people will forego adding another luxobarge to their automotive stable, opting instead for their own personal satellite!

Who needs a license?

If, as a private U.S. CubeSat operator, you intend to observe or sense the Earth’s surface or the oceans, you need a NOAA license to operate your CubeSat or CubeSat constellation! This includes: providing imaging data to mapping companies, sharing real-time video of the Earth with schools or businesses, taking visible, IR, or UV pictures of the Earth, passive observation of the Earth’s oceans, or actively emitting an electromagnetic signal and recording the reflected signal after it interacts with the Earth. If you are merely doing atmospheric profiling, you might not need a license from NOAA, however, do you due diligence before proceeding without one!

What does the license require?

A NOAA remote sensing satellite operator’s license requires that the satellite and any ground-based operations systems and facilities be operated in a way which preserves national security.

License holders are required to create and follow a Data Protection Plan (DPP) which will prevent sensitive remote sensing data (e.g., high-resolution pictures of military bases) from falling into the wrong hands. License holders must keep NOAA informed of foreign entities that have received remote sensing data.

NOAA may require that the DPP gives them the ability to exercise “shutter control.” Along NOAA has never exercised this ability, shutter control would allow NOAA or another government agency to prevent a satellite from imaging a sensitive area or force the satellite operator to withhold images from the public for a specified time.

NOAA takes a “trust but verify” approach with its license holders. They conduct audits and on-site inspections at least once a year to ensure that the license conditions are being complied with and any deviations or satellite anomalies are reported.

License holders must also make the remote sensing data they collect available to the Department of the Interior for the National Archive.

NOAA has become increasingly concerned with space debris mitigation. In an effort to avoid the Kessler Syndrome, NOAA must receive and approve a deorbiting plan. Because many CubeSats do not have on-board propulsions systems, this license requirement is of special concern. Depending on the orbit the CubeSat is placed in, it becomes another piece of space junk or it burns up in the atmosphere at the end of its operational life.

How do I get a license?

Current CubeSat operators licensed by NOAA (October 2012). Image Credit: NOAA/Alan Robinsion.

The first step in getting a license is submitting an Initial Contact Form (ICF). NOAA will then determine if you even need a license. To date, NOAA has received 12 ICFs and found that 7 submitters did not need a license!

If a license is required, the applicant must submit detailed information on their corporate structure, financial information, plans for launch, satellite design and capabilities, and ground operations. Creation of a DPP and deorbiting plan is also required. There is no licensing fee!

NOAA must approve or deny a license application within 120 days, therefore determining one’s need for a license and preparing the application should occur well before a satellite’s planned launch! NOAA has licensed four CubeSat operators and will make an effort to complete the license review process within a shorter timeframe when needed.

Have questions or comments? Shoot me an email or sound off in the comments below!

Happy creating!

Special thanks to Matt Kleiman, co-author of The Laws of Spaceflight, for his assistance with this post.

Photo credit: Pavel Novak.

Last week, we discussed the pros and cons of doing your own patent search and what goes into the different parts of a patent application. This week, let’s get into the journey a patent application makes once it is filed.

How fast do you want a patent? The slow road, the main road, and the highway.

Once your application is drawn up, we begin the long hike up patent mountain in earnest. We can take three different paths. The path chosen will determine how quickly your patent application is evaluated (or “examined” in patent speak) by the patent office, which ultimately determines how quickly your patent issues. If you know a little about patent law, this post may be very boring to you and you may be thinking “why does it matter how quickly my patent issues? Don’t patents last for 20-21 years from the date I file?” Yes, yes they do, but there are several reasons why you may want to consider clawing your way to patent issuance with haste.

First, with a notable, narrow exception, a patent application has no legal force until it is issued. That is, if someone copies your invention, you can’t do anything about it until your patent issues! Second, compared to issued patents, patent applications–even awesomely written ones–are significantly more difficult to license, sell, or otherwise monetize. Finally, an issued patent may cover less of your business than the patent application and the earlier you know that, the sooner you can explore additional options to protect your company such as licensing, additional patent protection, and the like.

On the other hand, there are very compelling reasons to take a more sedate path to patent issuance. If your invention will not be ready to enter the market for a few years, immediate patent protection may have little value to you if no one knows of your invention and it is simply being refined in your lab. This may be the case if your invention is, say, a cancer fighting drug, which you believe will have extraordinary value for decades after it hits the market, but still needs to go through a lengthy FDA approval process.

The most commonly used filing path—the main road—is the traditional non-provisional filing. For most emerging companies, the fee is currently $625. The main road is a slow road—the average time to patent issuance is 33 months! There is hope however; the patent office is making great strides to clear their backlog. The patent office estimates that applications filed today will get through in almost a third less time. Still, that’s more than a year later!

If waiting two or three years seems like forever, there is a highway to patent issuance: TrackOne Examination! For a fee of $2,400, the patent office will fast track your application, aiming to complete examination within 12 months! In some circumstances, like where an inventor is over 65, an application may be fast tracked free of charge, as well!

Finally, there is the slow road: filing a provisional application first. Provisional applications do not require claims to be filed with the patent office and are never examined. Instead, you have one year to convert the provisional application into a non-provisional, then the examination clock starts running. In some cases, a converted provisional application will not be examined for more than four years after the provisional was filed! On the other hand, the initial filing fee is only $125, drafting a provisional application is cheaper than a full patent application, and you as the inventor have up to a year to test market/develop your invention and decide if it is worth further investment!

Office Actions—they’re a rite of passage not a setback

Between 3 and 23+ months (depending on which path you chose) after your non-provisional patent application is filed, a patent examiner takes up your application. The patent examiner studies your application and the relevant technology areas and writes an Office Action. An Office Action contains an initial determination of your invention’s patent eligibility. For a variety of reasons, including the examiners being incentivized to reject every application at least once, something like 90-95% of patent applications are rejected at least once, therefore Office Actions are more like a rite of passage, instead of a setback. At this point, you, as the inventor (and your patent counsel), have 3 months to respond to the Office Action and argue for why your patent application should be allowed to issue as a patent! If you would like to take more time to flesh out your arguments, you can extend the reply deadline to 6 months, but that costs over $1,000 in fees! This phase is a lot like a negotiation and ultimately 50-70% of patent applications issue as a patent!

Office actions typically take 1-3 weeks to prepare and, depending on complexity, range between $1,000 and $2,000+.

Patent approval! But don’t forget your issue fee.

Once you and your patent counsel have given the examiner what for negotiated an allowance of your patent, you have reached the summit of Patent Mountain! Your patent will issue on a Tuesday or a Thursday and you’ll be given a shiny US patent number starting with an 8. But first, you have to pay the patent office an issue fee and the issue fee must be paid promptly. Currently, issue fees are $1,170. Some patent practitioners charge a small fee to assist in paying this fee.

Finally, while your patent is in force, maintenance fees are also due to the patent office. They are due at 3.5, 7.5, and 11.5 years after the patent issues and range from $565 to $2,365. Maintenance fees help defray the cost of patent examination and other patent office functions. Often times, inventors inadvertently forget to pay the maintenance fee, or decide the patent is not worth the additional fees, so the patent expires early. In fact, less than half of issued patents pay their 11.5 year maintenance fee!

Conclusion

As you can see, the patent process can involve a bit more than handing a hastily scribbled bar napkin drawing to your favorite patent counsel. And there’s more than I’ve outlined here—if you have additional questions, shoot me an email or sound off in the comments!

Happy creating!

In April, Jacksonville will be hosting the first ever One Spark event and I think every New Space company and New Space enthusiast should come! Why? Because One Spark is set to become a huge event where creative people and companies can exhibit their innovations and receive funding from a $250,000 crowdfund! If you can’t come, check out their Kickstarter!

One Spark will be a five-day event in downtown Jacksonville. It will be spread throughout local buildings, businesses, parks, and parking lots so attendees not only get to see awesome, creative exhibitors, they get to meet Jacksonville as well! One Spark founder Elton Rivas says the event will be “Kickstarter live meets South by Southwest meets something like an ArtPrize atmosphere with the entrants and the venues piled together.”

One Spark is inviting inventors, entrepreneurs, emerging technology companies, technologists, to come present their most amazing, innovative ideas at the April 17-21, 2013 event. Registration opens November 1^st at beonespark.com. Are you a musician, chef, artist, or other creator? You should sign up too!

In conclusion, sign up to present at/come to One Spark in April 2013 where you can meet creative people from around the world and have a shot at receiving funding from both a $250,000 crowdfund and tens of thousands of attendees. It should be a blast! Can’t make it? Help support this event by donating to their Kickstarter!

Happy creating!

Photo credit: Pavel Novak.

For many inventors, engineers, and emerging technology companies, condensing a flash of genius into a new invention or engineering a solution to a problem is the easiest, most familiar step in the patenting process. The climb up the US Patent Mountain, as it were, can be a long, treacherous one. Or it can be a quick sprint, if you’re willing to pay the Patent Office extra fees. With that in mind, let me be your patent Sherpa, explaining the process and walking you through the general steps.

The patent process extends from before an application is filed until the patent expires. We can think of the patenting process as a mountain climb where the patent issues once we reach the summit. But just like an Everest climb, where most deaths occur on the way down the mountain, more than 50% of issued patents expire before the end of their 20 year term. What does the rest of the journey look like? Read on!

A prior art search: your map up Patent Mountain

First you invent, then we search! A prior art search is an examination of publicly available patents, patent applications, and other information which may be relevant to your invention. Typically, the inventor fills out an information disclosure form which describes the invention and a searcher operates off the information provided.

The objective of the search is to figure out what the lay of the land in your particular area of technology is. We look to see if someone has already invented your invention (sometimes called “anticipation”) and to see if it would have been legally obvious to others in your field to make your invention.

A word of caution, here: something almost always comes up that is vaguely related. We’re not going to be able to patent rocket flight. But we might be able to patent your new monopropellant or fusion-powered turbopump and its uses in rocket flight!

Like some travelers who simply set out on a trek with no particular destination in mind, you too can skip the prior art search and go straight to patent drafting but it leaves you blind until at least a year later when your patent is examined. Just like hiking with a map, having a prior art search in hand is an invaluable tool in later creating a strong, informed patent application which covers your invention and nothing else.

You can do some searching on your own. In fact, it’s probably a great idea to! Many of my clients have been inspired to go down a different development path because of what they’ve found in old patents.

Having a more complete search done and an opinion given by a professional ensures a better understanding of how strong any issued patent may be. The search can be done on a budget of under $2,000, depending on the complexity of the technology. This may go up or down, depending on the scope of the search and the technology involved. The search and opinion can take 2-4 weeks to have performed once the searcher receives information about your invention.

No searcher can guarantee that they have found all the relevant technologies because patent applications do not publish for 18 months from filing. The key here is, where possible, identifying similar technologies so that your application clearly describes how to make and use your invention!

Drafting and filing the patent application: the good, the bad, and the ugly

What drafting patent applications for The Empire might look like.

Patent applications are the most visible portion of the patenting process. They usually represent the single biggest expense for an inventor, are eventually published for all the world to see, and (hopefully) end up as part of an issued patent!

A patent application can be broadly broken into two different parts: the specification and the claims. The specification is essentially a technical paper describing what the invention does, how it does it, and how to make the invention (if not apparent to people in the field). The specification also includes pictures! On the other hand, the claims are essentially a legal document, precisely defining what the inventor considers his invention. Terms in the claims are defined via their usage in the specification and their meanings are parsed very finely by the patent office, patent attorneys, litigators, and technology blogs the world over. In the claims, there are very real, sometimes costly, differences between the words “having”, “comprising”, and “consisting”.

Patents are required to be written so that other people having similar skill in your field can make and use your invention, based on the patent. Notably (consumer electronics press, take note!), this does not mean that laymen have to be able to understand the patent. That would be pretty difficult for some advanced technologies like robotics and medical devices—imagine having to include enough material to teach a high school student enough electrical engineering to build a self-driving car! Rather, much like a technical paper, patents (and patent applications) are written by technically-minded people for a technically-minded audience.

As the inventor, you can draft your own patent application, though this is not recommended. If you have a patent agent/attorney draft your application, they will likely have a preferred way of learning about your invention and drafting the application. Personally, I like to have inventors fill out an information disclosure form and then talk it through with them, if possible. After I draft the application it is reviewed by the inventor and any required changes are made before it is filed.

I can’t speak to all patent practitioners but, depending on how busy things are, it typically takes 2-6 weeks for me to draft a full patent application. Based on the complexity of the technology, a patent application costs between $6,000 and $12,000 (excluding patent office fees, see below). Personally, I prefer to set a flat fee initially, though some clients (and a lot of lawyers) prefer to “roll the dice” with hourly billing.

Click here for the conclusion of “The Lay of the US Patent Land” where we’ll discuss what happens after you file, how long it takes, and the life of a patent after it issues!

Happy creating!

Orbits may be part of a valid patent where the patent discloses and claims some new, useful, and non-obvious process or device, like a method for global telecommunications!

Patentable subject matter includes “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” That’s the patent law way of saying essentially anything new under the sun made by the hand of man is potentially patentable! There are, of course limits to what can be patented. Laws of nature (E=mc²), physical phenomena (ice is less dense than liquid water), and abstract ideas (let’s go to Venus on a spaceship!) are not patentable. Applications of these patent ineligible areas may receive a patent. For example, patented technologies used in GPS satellites would not operate without utilizing Special and General Relativity.

Orbits may be, at a minimum, part of a process for accomplishing a task. Patentable subject matter includes processes! So new orbits/orbital maneuvers can be patent-eligible if used for some useful purpose. It is important to keep in mind however that the orbits themselves aren’t patented, technological solutions for providing telecommunications which utilize equipment in those orbits are patent eligible.

Because the United States specifically applies its patent laws to space objects (e.g., spacecraft or satellites) under the jurisdiction of the US, US patents on orbiting telecommunications systems are relevant to the commercial space industry! This has been long recognized in the satellite industry. Companies like TRW, Motorola, Thales Alenia Space, Globalstar and others have being filing for and receiving patents for more than three decades. There are even expired patents now on methods of storing spare satellites in orbit in order to replace others as they grow old or break!

Some satellite orbit related patents, like US Patent No. 5,410,728, issued in 1995, describe a system of satellites working together in specific orbits in order to perform some task, like providing worldwide telecommunications to consumers. Here, an orbit such as a highly inclined orbit is necessary for the equipment disclosed, but the patent doesn’t cover anything and everything in those orbits. Rather, only a satellite constellation including all the elements listed in a claim is covered by the patent.

But in order to get a patent you, or people in the industry, have to actually be able to reach the orbit!

In much the same way that I cannot patent a Star Trek-style phaser, I cannot patent a fundamentally new orbit if the technology doesn’t exist to achieve such an orbit. Simply because I can imagine a new technology does not necessarily entitle me to a patent on that technology.

In 1945, Arthur C. Clarke, author of Childhood’s End and 2001: A Space Odyssey, described a communications network utilizing GEO satellites. At the time this was pure science fiction because no one possessed the technology to build and launch such satellites.

Arthur C Clarke’s geostationary orbit description is a great example. In 1945, Clarke described a global communications system comprising three satellites in geostationary orbit. He did not patent it, therefore his designs became a part of the public domain. In fact, Clarke could not patent global communications using GEO satellites because the technology to put satellites into such orbits did not exist yet!

In order to receive a patent, you much describe your invention with sufficient detail for people having skill in the relevant fields to understand and build your invention at the time you file for patent protection. In the case of Clarke’s description of a global communications system, he didn’t describe how to build a rocket to get to GEO nor, at that time, did people skilled in the relevant fields possess the knowledge to place satellites into GEO.

Once the rocket and other relevant space faring technologies had been developed, someone else likely could not have come along and received a patent for Clarke’s global communications system either because Clarke’s disclosures combined with the new technology would render a GEO communications as described by Clark obvious!

Happy creating!

The first FAA licensed rocket launch was a Starfire rocket, similar to the one pictured above. NASA photo courtesy of Joel Powell.

Developing new aerospace vehicles is an expensive proposition in terms of both time and money. Boeing has spent an estimated $32 billion developing the 787.  Rockets are no different: NASA’s Space Launch System has an estimated development cost north of $30 billion. Even lean SpaceX spent around $300 million to develop its Falcon 9 rocket. Despite the fact that NASA estimated it would have spent more than a billion dollars to develop Falcon 9 in a traditional manner, $300 million is still nothing to sneeze at!

The time and money spent developing a new launch vehicle is not spent exclusively on engineering, machining, and testing new parts, however. Some of that money and a significant amount of time are spent going through the FAA launch license process. Traditionally, the FAA currently has restricted the types of launch vehicles which are eligible for licensing, making it difficult for some small launch vehicle operators to fly NASA-sponsored and other payloads. Recently, the FAA proposed loosening these restrictions in a manner that will allow many emerging aerospace companies to voluntarily apply for licensing. Specifically, the FAA will begin allowing operators of Class III amateur rockets to apply for launch licenses.

An amateur Class III rocket is ”an unmanned rocket…having a combined total impulse of [between 40,960 Newton-seconds (9,208 pound-seconds) and] 889,600 Newton-seconds (200,000 pound-seconds)”and “launching no higher than 150 kilometers….”

So why is voluntary licensing of Class III rocket operations a big deal?

Despite the name, these rockets are extremely capable, lucrative launch vehicles and licensing opens more commercial opportunities. For example, UP Aerospace’s Spaceloft family of vehicles are Class III rockets, however they have the capability of flying higher than 150 km. Since 2006, UP Aerospace has conducted six launches on this class of vehicle, servicing over fifty customers under waivers.

Clearly, there is a market for commercial suborbital flight. Suborbital flights to 100+ km offer access to microgravity environments, provide test beds for satellite hardware, and carry novelty items to space. Suborbital rockets may also carry x-ray telescopes and enable atmospheric science experiments.

NASA’s Flight Opportunities Program (FOP), a major purchaser of suborbital flights, requires launch vehicle operators to be licensed. Until the FAA proposed relaxing license restrictions, Class III rockets fell outside the scope of the FAA’s licensing regulations which impaired the ability of otherwise capable spaceflight companies to compete for NASA FOP business and other commercial payloads.

In addition to providing commercial flight services, Class III rockets may serve as a stepping stone in the development cycles of many emerging aerospace companies. Both Masten Space Systems and Armadillo Aerospace developed and operated several Class III rockets during the course of their development cycles. These vehicles are still in use today!

Allowing operators of Class III rockets to voluntarily apply for and receive launch licenses smooths the licensing path of commercial spaceflight because emerging companies may become acquainted with the licensing process earlier in the development cycle, they can potentially remain under the same license by upgrading their Class III rockets to more powerful platforms while staying in the same “family of vehicles”, and they may more easily carry payloads for paying customers.

Applying early for a launch license ensures the regulatory folks don’t have to hit the red button when everyone else is ready to go.

Earlier, voluntary access to the FAA licensing process helps companies ensure that the paperwork is ready at the same time the rocket is ready. Obtaining a launch license is a six-step process which can last up to six months after a complete application is filed. Preparing a complete application is no walk in the park either. Some emerging space companies have taken a year or more to implement procedures, compile hardware specifications, and conform the necessary documents for a complete launch license application. The FAA estimates that rocket operators will spend between $80,000 and $200,000 a year securing and maintaining their launch licenses.

The FAA is charged with “promot[ing] economic growth and entrepreneurial activity” in space and “encourage[ing] the United States private sector to provide launch vehicles” and services. Allowing emerging companies operating smaller rockets to apply for licenses enables the commercialization of rockets which service underserved markets like suborbital research and cubesat delivery. This is a step in the right direction and an example of the FAA promoting the growth of commercial spaceflight.

Happy creating!

A special thanks to Dave Masten for sharing his feedback on this licensing change with me!

For the better part of a decade, people throughout the software industry have been predicting that these patent thickets will destroy some, if not all, of their industry in a blaze of litigation.

Many people fear that the commercial space industry will be condemned to the same “innovation-choking” state of affairs as our sector matures. If history is any guide, however, neither the software industry nor the future booming commercial space industry will be necessarily bogged down in perpetual patent wars.

Innovation will be encouraged rather than stymied when those in leadership positions recognize the greater innovation potential of intellectual property cooperation. The great sewing machine patent wars and the intellectual property battles at the birth of heavier than air flight peacefully ended when leaders realized profits, growth, and innovation can be greater for everyone involved if technologies were licensed on a fair and open basis.

The first great patent war and its peaceful end

The sewing machine was an essential technology for enabling the industrial revolution in agrarian 19^th century America. For almost a century before the first sewing machines were produced, efforts to develop a mechanical sewing device failed. Ultimately, sewing machines incorporated more than ten elements. These elements were invented by different people. In the early 1850s, practical sewing machines were finally developed which could sew 250 stiches a minute, significantly faster than hand stitching! However, major players in the industry like Singer, Howe (a 19^th century patent troll, never having produced a working sewing machine), and Grover & Baker were at war, suing each other to protect their R&D developments. Sewing machines were virtually impossible to make without the patents held by these companies and individuals.

The Sewing Machine War effectively ended in 1856. It was not brought to an end by regulations or new federal laws. Rather, the businesses and individuals involved created The Sewing Machine Combination. The Sewing Machine Combination licensed all the necessary technology to produce a working sewing machine to anyone willing to pay $15 a machine. The Sewing Machine Combination operated successfully until 1877, when its last patent expired, providing an easy path for the licensing of a then-emerging technology: the sewing machine.

The airplane patent wars

In 1906, the Wright brothers received US Patent No. 821,393 for their method of heavier-than-air flight. Aviation pioneer Glenn Curtiss developed ailerons to control his planes in flight however. Both the Wrights and Curtiss developed and patented a plethora of technologies related to flight. Bad blood between the Wrights and Curtiss resulted in significant lawsuits (the Wrights focused so much on suing people that their designs lagged behind their competition) and effectively blocked construction of new airplanes in the US.

In 1917, the US government ended this deadlock via the creation of another patent pool: the Manufacturers Aircraft Association. All patent litigation cases ceased automatically and manufacturers were given unrestrained use of airplane-related patents in order to support US efforts in fighting WWI. Royalties of one percent were paid to patent holders. As holders of many airplane-related patents, the Wrights and Curtiss received a significant portion of these royalties.

An end in sight for modern patent wars?

Via FRAND licensing for standards like 802.11 WiFi, 3G, and MPEG, the software industry is inching toward large scale cooperation. The emerging commercial space industry is in a unique position to avoid a repeat of the patent battles occurring in the software sector via the early establishment of patent pools and fair licensing organizations.

Cooperation is essential

The development of commercial sewing machines and the early days of heavier than air flight show that, as with any other aspect of business, when people choose to cooperate rather than self-righteously attempting to sue the pants off one another, cooperatives like patent pools and FRAND licensing standards can be established. These cooperatives facilitate access to industry enabling technologies, rather than preventing access. This gives the creatives among us more time and resources to do what they do best: innovate.

Happy creating!

SNC is developing the Dream Chaser under Space Act Agreements with NASA. Image credit: NASA/SNC.

Aladdin’s genie had “Phenomenal cosmic powers! Itty-bitty living space!” Space Act Agreements (SAAs) are very similar. They give NASA considerable flexibility to partner with private entities. NASA can start from essentially a blank slate in order to create an agreement aimed toward a specific goal like using the International Space Station as a national laboratory or developing robotic vehicles capable of delivering supplies to low earth orbit. On the other hand, SAAs may not be used in many circumstances. For example, funded SAAs are typically used only where a NASA objective cannot be achieved through the use of traditional contracts. When SAAs are used, The Chiles Act may force NASA to take ownership of any intellectual property developed under the SAA. However, there are ways to avoid the title taking action. Even when NASA does take title to the IP, many SAAs provide a clear path to returning ownership of patents and other IP that is developed under the SAA to the private developer.

Space Act Agreements are formed between NASA and a private entity, like a company or university, in order to carry out specific objectives. The agreements establish how NASA resources like personnel, equipment, and testing facilities may be used to achieve the specific goal defined in the SAA.

SAAs generally come in three flavors: reimbursable, nonreimbursable, and funded.

Nonreimbursable agreements are typically created where NASA and a private company are working together toward a common goal. NASA and the partner company work together in a limited manner, but no funds are exchanged.

Reimbursable agreements provide more flexibility, but at a cost to the private entity. The private entity may use NASA’s resources (e.g., wind tunnels) for the entity’s own purposes, but must reimburse NASA for that use.

Funded agreements, darlings of the commercial space race, are used “only sparingly”, when traditional funding methods are inappropriate. NASA provides funds, expertise, and other assistance to the private entity to achieve a goal, such as developing a private space ferry to the International Space Station.

Under the laws which created NASA, inventions made under NASA contracts, including Space Act Agreements, are the property of the federal government. Traditionally, this has discouraged may innovative companies from working with NASA, for fear that the company will have no control over technologies they conceive of or first construct under contract with NASA. At a 2006 symposium on space law and intellectual property rights, NASA IP counsel Gary Borda stated that this structure “has worked with traditional contractors such as Boeing and Lockheed” but “ [NASA does] not get the innovative ideas from the smaller companies” because they don’t want to lose rights to their technological data.

If the SAA directs the private party to perform work of an inventive type for NASA, NASA generally automatically owns the patent rights to inventions made that SAA. Many funded SAAs involve inventive-type work, such as the COTS program.

Under these SAAs, the private party must establish invention reporting procedures which ensure that both NASA’s rights and the private party’s inventive rights are preserved. New technologies must generally be reported within six months of conception or production via the NASA New Technology Reporting System.

Even where NASA is set to automatically take title to patent rights on inventions developed under an SAA, NASA may waive rights to all technology developed under the SAA, either in advance or on a case-by-case basis. NASA “liberally grants waivers to SAA Partners for the purpose of commercializing the waived invention”, but the partner has to ask for the waiver and report newly developed technologies! In any event, NASA is entitled to a government purpose license of the technology.

As previously mentioned, NASA must take title where inventive work is being performed for NASA by the private party. Generally, work performed under a nonreimbursable SAA or a reimbursable SAA is not inventive work performed for NASA. Technologies developed solely by the private party are generally not subject to ownership by NASA.

Inventions jointly developed by NASA and the private party under an un-funded SAA must be reported to NASA and the two entities may decide how to assign the inventive rights.

Space Act Agreements are powerful tools which allow NASA to advance its objectives and the objectives of the commercial sector. SAAs may still be subject to laws such as the Chiles Act which requires NASA to take title to inventions developed at its direction. Companies entering into SAAs should be aware of reporting and invention assignment requirements before entering into SAAs and should consider alternative development arrangements and funding sources where appropriate. Armed with this knowledge, companies make take advantage of the “phenomenal cosmic power” a Space Act Agreement can hold!

Happy creating!