IP protection for 3D printed inventions

3D printing, known in industry as “additive manufacturing”, has emerged as one of the most revolutionary technologies in the digital economy. 3D printing has the potential to alter manufacturing, business and society in general. The World Intellectual Property Organisation (WIPO) has acknowledged 3D printing technology as a breakthrough technology with the capacity to significantly boost future economic growth.

The European Patent Office (EPO) recently reported that 3D printing patent applications grew at an average yearly growth rate of 36% between 2015 and 2018 - more than ten times faster than the average yearly growth rate of all patent applications at the EPO in the same period. Innovation in 3D printing is still steadily on the rise.

Recent advancements in 3D printing technology indicate that 3D printing has the ability to transform the automotive, aerospace, prosthetics and drugs industries amongst others. Recent advancements have also allowed the price of 3D printers and printing materials to be reduced, bringing 3D printing into the mainstream. However, with the rise of 3D printing comes an increased risk of IP rights being infringed.

IP challenges in 3D printing

Making a patented product using traditional manufacturing methods is actually quite difficult. Traditional manufacturing methods require a significant amount of manufacturing skill and forming the manufacturing tools to make a particular part often requires considerable time and money.

The 3D printing process starts with a digital model of the desired object. The digital model, usually a computer aided design (CAD) file, is translated using 3D printing software and then printed as a three-dimensional object by a 3D printer. All the information required to build the object can be contained in the digital model, so that considerably fewer manufacturing skills are required for a user to print an object on a 3D printer. The ease and access to CAD files online means reproduction of any designs comes at the touch of a button. Furthermore, the CAD file, being digital, can be shared across borders without any checks. 3D printed parts can be made in any jurisdiction without the need to export and import, thereby removing the possibility of seizing infringing goods at customs posts.

We look at why inventors of 3D printed inventions should consider applying multiple forms of IP rights in order to best protect their inventions.

Protecting the 3D digital model

Copyright

Copyright gives authors the ability to control the copying and reproduction of their works. Copyright will protect the underlying software and the graphic design contained within the digital model as it is likely to constitute literary or artistic work. Anyone who copies, issues copies, rents or lends, communicates or adapts a copyright protected work without permission will be considered to infringe. ‘Reproduction’ includes reproduction in any material form, including making a copy in 2D of a 3D work. Thus, copying a 3D protected work by scanning it and creating a digital model from that scan will be considered an infringement.

UK copyright comes into existence automatically when the relevant work is created, making it a powerful right since no formal steps are needed before it is relied on, and it lasts for 70 years after the death of the creator. Copyright protection will be particularly suitable for the fashion and aesthetic industries which have recently been harnessing 3D printing's abilities to create shapes, textures and complex geometries that can't be created with other technologies. However, it should be noted that copyright is unlikely to protect functional objects.

Copyright law has been relied on by the music and film industries following the increase in unauthorised online sharing of digital music and film files in the 90s and 00s. In the Emi Records v British Sky Broadcasting & Others case, copyright owners were able to obtain court orders requiring ISPs to block access to a number of file sharing websites without having to take action against the site operator or their users. The English courts have also been willing to find website operators which enable unauthorised online sharing of copyright protected files liable for copyright infringement. In the Twentieth Century Fox Film Corporation & Others v Newzbin Limited case, Newzbin Limited was found to have authorised infringing copying of films; procured, encouraged and entered into a common design with users to infringe and communicated copyright protected works to the public; as a result, Newzbin Limited was found liable for infringement of copyright.

It is predicted that owners of copyright protected digital models for 3D printing will be able to obtain similar remedies to prevent their copyright material being shared online without their consent. Copyright owners should use the technological protection measures that exist today that enable marking an object and its associated digital model file with a unique identifier in order to monitor use. Circumvention of these measures is expressly forbidden under the WIPO Copyright Treaty (Article 11).

Patents

Patents will be used to protect the 3D printed parts (described further below). However, a particular case of patent infringement called “indirect infringement” may provide patent rights owners with means to prevent unauthorised supply of the digital model of a patented object. Patents protect inventions, including functional objects. They could therefore be used to protect objects which do not qualify for copyright protection.

In UK patent law, “indirect infringement” prohibits the supply of or the offer to supply means relating to an “essential element” of a patented invention. It is likely that the digital model file would be considered an “essential element” of the invention, so that its unauthorised distribution would be an indirect infringement of the patent. For “indirect infringement” to apply in the UK, the alleged infringer must have knowledge that the “essential element” is suitable and intended for putting the invention into effect or it must be obvious that the “essential element” is suitable and intended for putting the invention into effect. Right holders should therefore clearly indicate on their digital model files if the resulting printed object is patent protected.

A number of countries, including the US and several in the EU, include similar patent indirect infringement conditions which consider inducement to infringe or the (offer to) supply of an essential element of the invention as a form of infringement. Indirect infringement would allow patent owners to prevent third parties such as 3D printing centres to (offer to) supply digital models or 3D CAD files for unauthorised printing of their patent protected parts.

Protecting the 3D printed part

Designs

Design rights protect the shape and appearance of products and can protect the whole or part of the product. Given the fast pace at which 3D printers can change their product configurations, inventors should consider design protection for portions of a product as well as the whole product. An unauthorised reproduction using 3D printers by a third party is an infringement. Whether or not the alleged infringer intends to or knows that its actions amount to infringement is inconsequential to the finding of infringement.

Products can be covered by unregistered and registered design rights. No formal steps are needed for unregistered design rights to come into existence, meaning right owners can readily take action if they find an unauthorised third party making copies of their design.

Registered design rights do require registration but the process from application to registration is often complete within weeks, allowing registered design rights to come into force while the product is still at the height of its popularity. Registered designs stop third parties using the design irrespective of whether they copied it, allowing right owners to take action against potential infringers even if they come up with the design independently. Registered designs also extend to similar designs which do not produce a substantially different impression on the informed user.

Design rights do not cover products whose features are solely dictated by 'technical function'. Such features may be more suitably covered by patent protection. Furthermore, design rights do not cover features that fall within the “must fit” exception. This covers spare parts which need to be of a particular design to fit with another part. Where 3D printers are used to produce spare parts for articles, these will likely fall within the exception. The exception will also allow a third party to copy the features of a protected design that enables their own design to be connected to the protected design.

Design laws include private, non-commercial use defences meaning private individuals printing home-made objects for non-commercial purposes will not be considered to infringe.

Patents

Patents protect novel inventions capable of being applied industrially. They generally cover how something works, what it does, how it does it, how it is made and what it is made from. Patents are well-suited for protecting 3D printed parts that have a function and therefore may not qualify for design or copyright protection.

Patents can cover 3D printed parts with highly complex shapes but also simple items where the invention might lie in the interaction between two elements that can only be 3D printed. Patents are also suitable for protecting 4D printed inventions in which a 3D printed object printed with specialised materials is capable of changing shape post-production in response to a trigger such as water, heat or wind.

Patents will usually be the best form of protection for any novel 3D printer, 3D scanner, as well as new 3D printing materials.

Unauthorised commercial production of patented products by 3D printing constitutes an infringement. Using, keeping, disposing, offering to dispose and importing the patented products also constitute infringements.

Patents include a private use defence where acts that would otherwise infringe do not when carried out for private non-commercial purposes. This defence will likely apply to patented products that are printed at home for personal use.

Trade Marks

Trade marks are a means of indicating the origin of goods or services in the market-place and allow creators to distinguish their products from those of their competitors. A trade mark can be a logo, a word, a sign etc. A trade mark registration gives the proprietor the exclusive right to use the registered trade mark on those goods or services for which it is registered. Where a trade mark appears on an object that has been copied using a 3D printer, the copier runs the risk of infringing those trade marks.

For there to be an infringement, the trade mark must be used 'in the course of trade'.

It is likely that commercial 3D printing centres which print objects containing trade marks will be considered to be using those trade marks in the course of trade and may therefore infringe. Unwittingly or unknowingly using a registered trade mark is not a defence to infringement. 3D printing at home by private individuals of objects which include a registered trade mark is unlikely to be considered 'in the course of trade'.

Trade marks can, in certain circumstances, be registered for the shape of products. However, this form of trade mark protection has so far been difficult to obtain. Thus, registering trade marks could be less useful for protecting the actual 3D printed parts.

The law of “passing off” (which applies in common law countries such as the UK, Australia and New Zealand) allows a trader's goodwill to be comprised in the distinctive shape of goods. “Passing off” prevents a trader from misrepresenting goods as being the goods of another and does not require registration. Where a trader can show that unauthorised reproductions of 3D printed parts are misleading the public as to the origin of the products, they may be justified in bringing a claim under “passing off”.

Applying multiple layers of IP rights

It is clear that 3D printing technology does not lack protection from IP rights. However, with the development of this new technology comes the need to devise a new IP strategy.

Traditionally, inventors usually relied on a single main form of IP right to protect their work. With 3D printing inventions, inventors will want to apply several layers of IP rights to best protect their creations. A combination of patent and design protection for 3D printing inventions provides a robust strategy. As an idea is conceived and developed, patent protection should be used to protect the idea. Once the product developed from the idea is finalised, design protection should be used to protect the shape and appearance of the product.

Inventors will also want to re-consider the jurisdictions in which they wish to seek protection. In traditional manufacturing, where parts are manufactured in large quantities at centralised factories, IP protection is generally sought for in the countries which represent the main markets, the country where the invention is manufactured and the country where the invention was devised. This centralised manufacturing model results in relatively manageable “fringe markets”. With 3D printing de-centralising manufacturing, "fringe markets" could represent a much bigger risk and cost to businesses. Registered designs are considerably cheaper (and quicker) to obtain than patents, making it more feasible for inventors and businesses to cover a wider range of countries. Registered Community Designs, which cover all EU countries in a single application, will be particularly useful in covering a greater geographical area for 3D printed inventions. To ensure robust protection, patent rights should still be obtained in the main markets.

While most IP rights include private and non-commercial use defences, it is foreseen that such defences will mainly benefit hobbyists. For the defences to apply, no element of commercial purpose can be involved. Should an individual go on to sell an at-home printed part or use the printed part for remuneration, the defences will not apply. Any 3D printed medical device or high-end customised consumer product will more likely be printed by a 3D printing centre better placed at providing the high quality printers required to print such items. These 3D printing centres will not be able to use the private, non-commercial use defences.

For businesses where at-home 3D printing represents a bigger risk and loss of sales, controlling the dissemination of the 3D digital model files seems to be the best solution. With appropriate application of copyright laws, the 3D printing industry could follow the online music delivery model where a monthly subscription would allow users to download 3D digital model files. If applied correctly, such a model could provide a balance between offering suitable IP protection without hindering innovation.

This blog was written by Tara Fitz Gerald.