3D print­ing — Top 10 IP challenges

In brief

3D scan­ning and print­ing tech­nol­o­gy has the poten­tial to rev­o­lu­tionise man­u­fac­tur­ing, like the rise of the per­son­al com­put­er chal­lenged the ortho­doxy of the tra­di­tion­al world of com­put­ing. As the avail­abil­i­ty and ease of use 3D print­ing tech­nol­o­gy increas­es, and the price drops, the tech­nol­o­gy will gain wider use, and the prospects of dis­rup­tion will increase. This pos­es a num­ber of chal­lenges for every­body in the man­u­fac­tur­ing and dis­tri­b­u­tion chain, and cre­ates oppor­tu­ni­ties for new entrants. How we react to those chal­lenges and oppor­tu­ni­ties will be crit­i­cal to suc­cess or failure!

1. What is 3D printing?

3D print­ing is a process of mak­ing a three-dimen­sion­al sol­id object of vir­tu­al­ly any shape from a dig­i­tal mod­el. The process uses an addi­tive process, where suc­ces­sive lay­ers of mate­r­i­al are laid down in dif­fer­ent shapes, accord­ing to a dig­i­tal blue­print, gen­er­at­ed by com­put­er aid­ed design (CAD) or ani­ma­tion mod­el­ling soft­ware. By ​“slic­ing” the blue­print into dig­i­tal cross-sec­tions, the print­er deposits the man­u­fac­tur­ing mate­r­i­al (liq­uid, pow­der, or sheet mate­r­i­al) grad­u­al­ly build­ing up lay­ers, until com­plete. The vir­tu­al mod­el and the phys­i­cal arti­cle are almost identical. 

The process allows for rapid pro­to­typ­ing, rapid man­u­fac­tur­ing and mass cus­tomi­sa­tion of prod­ucts or com­po­nents, and can reduce sig­nif­i­cant­ly new prod­uct devel­op­ment time, test­ing and costs. The tech­nol­o­gy has been used in the man­u­fac­ture of jew­ellery, footwear, fur­ni­ture, weapons, spare parts, and even food, as well as in archi­tec­ture, civ­il engi­neer­ing, con­struc­tion and motor vehi­cle, air­craft and aero­space and den­tal and med­ical industries.

Its appli­ca­tion is unlim­it­ed except by our imaginations.

2. What does this mean for man­u­fac­tur­ers and rights holders?

The abil­i­ty of some­one to eas­i­ly, quick­ly and cheap­ly make an iden­ti­cal repli­ca of any object has sig­nif­i­cant ram­i­fi­ca­tions for all, espe­cial­ly IP rights own­ers. This is par­tic­u­lar­ly so for those involved in man­u­fac­ture, dis­tri­b­u­tion or sale of objects that have few, if any, mov­ing parts, or that are sim­ple in design or oper­a­tion, like spare parts, jew­ellery, sport­ing goods or toys.

We have already seen 3D print­ed shoes, foot­ball cleats, jew­ellery, fash­ion, fur­ni­ture and iPhone adapters.

As the tech­nol­o­gy con­tin­ues to devel­op, and inno­va­tors and entre­pre­neurs find more uses for the tech­nol­o­gy, the impacts will be felt through­out every indus­try, and at all points of the sup­ply and dis­tri­b­u­tion chain.

Those busi­ness­es or indus­tries that plan now will be best placed to respond to the challenges.

3. Do cur­rent IP laws deal with the chal­lenges faced by this new technology?

The short answer is no!

Our cur­rent IP frame­work seeks to con­trol activ­i­ty at key points in the tra­di­tion­al man­u­fac­tur­ing and sup­ply chains. As seen with the intro­duc­tion of oth­er dis­rup­tive tech­nolo­gies that put greater con­trol in the hands of con­sumers (the pho­to­copi­er, the video recorder and peer-to peer file shar­ing tech­nol­o­gy), IP laws strug­gle to keep up with dra­mat­ic shifts in process or dis­rup­tion to the sup­ply chain. 

Over time, the law was able to respond to these chal­lenges, but the response was not imme­di­ate, and in some cas­es (for exam­ple the Dig­i­tal Mil­len­ni­um Copy­right Act) indus­try and rights hold­ers lob­bied hard for new laws. 

In Feb­ru­ary 2013, a group of intel­lec­tu­al prop­er­ty spe­cial­ists with­in the world­wide Mer­i­tas net­work con­vened a pan­el dis­cus­sion, look­ing at the IP regimes in the US, the UK, South Africa and Aus­tralia.

4. Will patent law pro­tect my products?

If your prod­uct is pro­tect­ed by a grant­ed patent, such as a new form of patent­ed mouse­trap, patent law may be able to stop the dis­tri­b­u­tion of unau­tho­rised 3D print­ed repli­cas or the process to make them. How­ev­er, patents pro­tect inven­tions, not prod­ucts as such, and they are not applic­a­ble to the vast major­i­ty of con­sumer goods.

5. Will copy­right pro­tect my products?

Accord­ing to the pan­el, copy­right pro­tec­tion is prob­lem­at­ic in all four coun­tries and will only assist in lim­it­ed cir­cum­stances, par­tic­u­lar­ly where arti­cles them­selves are scanned and copied.

Copy­right will apply if the prod­uct is a work of artis­tic crafts­man­ship, such as dec­o­ra­tive iron gates. How­ev­er, many arti­cles that are like­ly to be copied will not qual­i­fy, and there are issues where the arti­cle or parts of it are pure­ly func­tion­al or util­i­tar­i­an in nature.

A design draw­ing for a prod­uct may also be a copy­right work and the cre­ation of dig­i­tal blue­prints may infringe that copy­right. But in the UK, for exam­ple, it is not an infringe­ment of any copy­right in a design doc­u­ment (for any­thing oth­er than an artis­tic work) to make an arti­cle to the design or to copy an arti­cle made to the design. Sim­i­lar rules apply in Australia.

As a gen­er­al rule, unless you have reg­is­tered your design (or it is a work of artis­tic crafts­man­ship), you will not be able to pre­vent any­one from copy­ing it, using a 3D dig­i­tal blue­print, and sell­ing it. You will also not be able to pre­vent any­one from mak­ing avail­able a dig­i­tal blue­print of the prod­uct, unless that blue­print is itself a copy of your dig­i­tal blue­print, or devel­oped from a plan. Cre­ation and dis­tri­b­u­tion of dig­i­tal blue­prints made from scan­ning your prod­uct will not be an infringe­ment of copy­right in the prod­uct (or your plans).

6. Will indus­tri­al design pro­tec­tion assist?

In all four juris­dic­tions, some form of pro­tec­tion for nov­el design fea­tures is avail­able, (with sig­nif­i­cant dif­fer­ences between the types of rights and terms of protection).

The sale of 3D print­ed copies of exist­ing arti­cles may infringe design rights, but repro­duc­ing a pro­tect­ed arti­cle is only an infringe­ment if done com­mer­cial­ly. Home users dupli­cat­ing prod­ucts for pri­vate use will not infringe design rights. Even when the activ­i­ty is com­mer­cial, there are exemp­tions which allow for the law­ful pro­duc­tion and sale of spare and replace­ment parts.

In Aus­tralia, whilst the pro­vi­sion of a ​“kit” that allows a per­son to make a prod­uct embody­ing a reg­is­tered design is an infringe­ment, a dig­i­tal blue­print is not a ​“kit” and so the pro­vi­sion of that blue­print (which embod­ies a dig­i­tal copy of the arti­cle but is not an arti­cle made by the blue­print provider) is not an infringement.

7. Are 3D prod­ucts counterfeit?

If a reg­is­tered trade mark is applied to goods with­out the per­mis­sion of the own­er of that trade mark, the goods will be coun­ter­feit, and the trade mark will be infringed. A dif­fi­cul­ty with 3D print­ing is that if a con­sumer prints the prod­uct, uses it per­son­al­ly, and does not seek to sell it, even if the dig­i­tal blue­print repro­duces a trade mark on the prod­uct, that is not trade mark use. The issue is more com­pli­cat­ed if a per­son cre­ates and makes avail­able a dig­i­tal blue­print that includes a reg­is­tered trade mark reg­is­tered for the goods. Whilst inclu­sion of the mark may be trade mark use, the issue is whether the mark (as a dig­i­tal image and part of a dig­i­tal file that can be used to make the goods) is use on or in con­nec­tion with the reg­is­tered goods.

If the repro­duced goods do not dis­play or use the orig­i­nal manufacturer’s marks, then the repro­duc­tion like­ly is not a counterfeit.

Use of a reg­is­tered trade mark on clear­ly marked ​“repli­ca” goods (for exam­ple, a ​“repli­ca Eames chair”) may pro­duce dif­fer­ent results in the coun­tries con­sid­ered by the panel.

8. Are 3D print­er man­u­fac­tur­ers liable if the machines are used to make copies?

Each juris­dic­tion does make any per­son who ​“autho­ris­es” infringe­ment by anoth­er. How­ev­er, there are dif­fi­cul­ties with this as the lia­bil­i­ty requires an act of direct infringe­ment. Even if an act of direct infringe­ment can be found it is unlike­ly that print­er man­u­fac­tur­ers will be liable for copy­ing done by indi­vid­ual users giv­en that the machines have legit­i­mate applications.

9. Will the law be changed?

Man­u­fac­tur­ers of prod­ucts whose busi­ness are threat­ened by 3D print­ing will no doubt wish to see the removal of the ​“non-com­mer­cial” use exemp­tions in design law and increased rights under copy­right. How­ev­er, there are no changes cur­rent­ly planned to the non-com­mer­cial use exemp­tions in any juris­dic­tion. In Aus­tralia, giv­en the expe­ri­ence with attempts by the fur­ni­ture design indus­try to get greater pro­tec­tion from ​“knock-off” repli­ca prod­ucts, it is high­ly unlike­ly that the copy­right exclu­sion will be removed. 

It is unlike­ly that a levy on 3D print­ers will be intro­duced to com­pen­sate those whose prod­ucts are duplicated. 

As aware­ness increas­es, we are like­ly to see a strong push from rights hold­ers for indus­try spe­cif­ic spe­cial exemp­tions from the rules and prin­ci­ples that make copy­right pro­tec­tion for 3D print­ing of goods gen­er­al­ly dif­fi­cult to obtain under the cur­rent law.

Any push for change will require exten­sive work to bring the mat­ter to the atten­tion of the gov­ern­ments and to argue per­sua­sive­ly for the nec­es­sary changes.

10. How can we pre­pare for our prod­ucts or mar­ket being threat­ened by 3D printing?

Ignor­ing the threat is unlike­ly to pro­duce any sig­nif­i­cant com­mer­cial benefit.

Some brands are embrac­ing 3D man­u­fac­tur­ing of sim­ple acces­sories for their prod­ucts, as Nokia are doing with 3D print­ed phone cov­ers. This can be used to dri­ve up inter­est in sales for the smart phone itself. How­ev­er, clear­ly that mod­el will be less effec­tive when 3D print­ers reach the lev­el of sophis­ti­ca­tion required to recre­ate the com­plex prod­uct itself. Some busi­ness­es, how­ev­er, may ful­ly embrace the tech­nol­o­gy and include, as part of their busi­ness mod­el, autho­rised blue­prints that allow users to repli­cate autho­rised copies of their products.

Oth­er com­pa­nies may focus more on the val­ue of the brand and the ser­vices pro­vid­ed along­side the orig­i­nal prod­uct, encour­ag­ing con­sumers to appre­ci­ate the cache and man­u­fac­tur­er sup­port that goes with own­ing an ​“orig­i­nal” rather than a 3D print­ed facsimile.

Under­stand­ing the prac­ti­cal real­i­ty of how infringe­ment may occur, who may be infring­ing, and what types of prod­ucts or mar­kets are most like­ly to be threat­ened will serve you well. Edu­ca­tion will help in the for­mu­la­tion of prac­ti­cal strate­gies to deal with the intel­lec­tu­al prop­er­ty issues bet­ter at this point than spe­cif­ic legal and enforce­ment strate­gies.

For fur­ther infor­ma­tion on how 3D print­ing may affect your busi­ness, please con­tact Swaab Attor­neys on +61 2 9233 5544.

Authored by M Hall.