How Does 3D Printing Impact the IP Ecosystem? The Challenges and Risk Mitigation Strategies

How Does 3D Printing Impact the IP Ecosystem? Challenges and Risk Mitigation

The advent of 3D printing promises the rapid and inexpensive creation of objects and prototypes. It also holds the potential to disrupt the intellectual property (IP) frameworks that govern key activities in supply chains and traditional manufacturing. As with other disruptive technologies that offer greater control to consumers (the photocopier, the video recorder and peer-to-peer file sharing technology), IP laws struggle to keep pace with the rapid changes that 3D printing enables. Will 3D printing be disruptive to established manufacturing processes and supply chains?

A decent precedent for what's in store due to the advent of 3D printing is the impact of digital media in the music and software industry. With the rise in the availability of low-cost copying equipment, it was inevitable that people would start making personal copies of copyrighted products for use in homes and offices. IP lawyers believe that 3D printing would be the epicenter of the next tech thermonuclear war, much like the ubiquitous smartphone wars.

The 3D-printing revolution raises legal issues in the areas of IP, product liability with respect to infringement, and data protection

The IP Challenges Related to 3D Printing

A copyright owner has the exclusive right to copy or reproduce copyright-protected work. The process of scanning a copyright-protected 3D object involves scanning (or its equivalent) in order to make unauthorized copies of the work.

This may raise copyright infringement concerns and may subject the infringer to significant legal liability. Copyright protection is applicable to objects copied using 3D printers that are design-oriented. Useful articles are ineligible for copyright protection. For example, a chair is a useful article and is not copyright protectable. However, the ornamental design on the back of the chair is. When consumers turn manufacturers, monitoring of consumer-oriented home-based printers for infringement becomes difficult, leaving many such cases undetected.

While copyright law protects the original works of authorship, trademark law protects logos, symbols, brand names, and designs. If a consumer uses a digital blueprint to print a product, deploys such product for personal use, and does not intend to sell it, it is not considered trademark infringement. However, if a design file that includes a registered trademark for goods is made available online, it is considered an instance of trademark infringement. Scanning a trademark-protected 3D object and making unauthorized copies of the protected work paves the way to piracy and is a sure instance of trademark infringement. This may subject the infringer to substantial legal liability. However, it is difficult to track an infringer who prints a product (intending to commercialize the product) using a digital file that contains trademark of the product.

Brand piracy does not end here.

If an object printed by a consumer does not carry a brand, it may still be protected by a trade dress. Trademark law also protects trade dress, which shelters the design, color, appearance, shape, and packaging of a product. If a consumer prints a 3D object that might be mistaken for a trade-dress-protected product, the owner of the latter may successfully claim trade-dress infringement. Furthermore, a trademark might protect the shape of an object if it is non-functional and is synonymous with the brand itself. For example, the Coca-Cola Company sought and obtained federal trademark registration for the shape of Coca-Cola bottle, which safeguards the bottle design indefinitely for the company.

Patent law protects inventions that are novel and non-obvious. If 3D printing forms a crucial part of a patented manufacturing process, digital copying of the design files of such processes amounts to infringement. Consider these examples: General Electric owns the patent for a jet engine fuel nozzle produced by the additive manufacturing process (3D printing); Nike has patented a manufacturing process for shoes, in which a layer of material is printed on a substrate. A design file is integral to the manufacturing process for such items and anyone who sells the design file would commit contributory infringement, even if the infringer were to create the file independently.

In the patent world, the expiry of the first patent of a particular technology is not enough to develop and sell such a product on the market without legal constraints. Although several basic patents related to 3D printing have expired, low-cost printers may be limited by new patents, which are often filed for improvements to an expired patented technology. While 3D printers are generally covered by hardware patents (filaments, printer head, platform, circuitry, etc.), software associated with the 3D printer could also be covered by some patents. 3D Systems filed a lawsuit against Formlabs and Kickstarter for infringement of the former’s Stereolithography (SLA) patent. The original SLA patent expired years ago, but 3D Systems filed a lawsuit claiming an improved method over the original version. Often newer technologies enter into issues with patents broader in scope (those covering a few, but not all, aspects of a printer or patents with altered linguistics). Therefore, lawsuits involving such patents are expected to become commonplace as the industry grows.

Who is Liable for IP Infringement in 3D Printing?

Patent infringement can take two forms: direct and indirect.

Direct infringement refers to the manufacture, sale and/or offer of sale, use, or import of a patent invention in the US. Indirect infringement can be further subdivided into induced infringement and contributory infringement. Induced infringement is the process of encouraging others to infringe. Contributory infringement refers to the sale or offer of sale of a component of a patented invention combination or composition, or material or apparatus for use in a patented process.

Consider a hypothetical scenario involving five entities: W sells a 3D printer; X sells a scanner; Y scans a patented object and posts the design file online; Z (a consumer) uses the design file to print the patented object; and T is the host for the design files. In this scenario, Z (the consumer) directly infringes on the patent, and Y and T are liable for indirect infringement.

In the case of copyrights, any person or company can be held responsible for direct infringement for unauthorized copying and distribution of copyright-protected objects, and indirect infringement if they enable a third party to directly infringe on copyrights.

For example, a party that distributes a hardware device or software that enables infringement can be held liable, in spite of its lawful uses. Online platforms offering peer-to-peer sharing of 3D design files may be guilty of contributory copyright infringement. Contributory copyright infringement is generally decided on by the degree of infringing and non-infringing use.

What Can Industries and Consumers Do to Overcome Patent Infringement Challenges in 3D Printing?

Technology companies should be aware of amendments to IP laws and technology changes that could make old laws obsolete; due diligence on account of 3D printing should be no different.

Copyright Infringements

Possible solutions to mitigate copyright infringement risks include licensing and encryption.

Objects and designs can be distributed with permissive licenses, such as those provided by Creative Commons. An example is the open source license released by Youmagine in 2015, based on the idea that each 3D printing design file uploaded under 3DPL remains the uploader’s intellectual property. 3DPL allows the uploader to decide the conditions under which others will be allowed to use the design.

Counterfeiting and copyright infringement can also be addressed by using preventive measures such as identification and encryption software. Digital encryption or watermarking schemes such as Digital Rights Management (DRM) can help restrict the unauthorized distribution of 3D printing blueprints.

Trademark and Trade Dress Infringements

Stratasys filed for a trademark on FDM in 1992 with regard to a “computer-driven machine for making a physical embodiment of a graphic design by a material deposition process”. Thus, no one else can sell a machine with the above definition as an FDM printer in the US.

Furthermore, Stratasys has been trying to expand the scope of its FDM protection by filing more trademarks. 3D printer manufacturers should, therefore, ascertain the scope of this protection.

The trade dress protects the packaging as well as the design of a product, where the packaging or design signifies the source of the product to a consumer. For such trade dress protection, the packaging or design must be naturally distinctive or have developed a secondary meaning (used in the marketplace for at least five years), which allows the consumer to identify the source of the product. One possible solution for protecting the design in the initial few years is to use design patents along with trade dress protection. The owner of a 3D design may first secure a design patent. The 15 years of design patent protection can be used for developing the secondary meaning for trade dress protection of the design.

Patented Design Infringements

When a consumer purchases a patented 3D printer device, the rights and license to use the purchased 3D printer is granted under the patent law. The license may limit the printer for personal use only. However, some consumers may try to print and sell products covered by patent/copyright protection.

In such cases, 3D printer manufacturers can embed functionality in the printer to refuse printing if digital rights do not evidence appropriate payment by the user. Design patents protect the way an object or article looks and are valid for 15 years from the grant date. Businesses that sell ornamental or unique designs can consider filing design patents to avoid infringements by 3D printers.