UK: Intellectual Property Rights And 3D Printing: A Threat Or An Opportunity?

Last Updated: 27 October 2014
Article by Caroline Allen and John Brunner

The latest developments in 3D printing and the implications for IP protection.

The UK has a long tradition of granting exclusive rights to inventors for their work. The earliest patent was granted by Henry VI in 1449, giving John of Utynam a monopoly for a method of making the stained glass installed in the windows of Eton College. IP laws in the UK have since grown and developed to protect the rights of inventors as the rate of technological change has increased. In this briefing note, we explore how developments in 3D printing technology interact with the current laws that protect and encourage innovation.

The decentralisation of manufacturing

3D printers are increasingly affordable to individuals and small companies. Traditionally, manufacture occurs at central locations with goods being distributed out to points of sale. 3D printing has the potential to decentralise manufacture and to shift the making of goods from central locations into homes and offices.

Decentralisation poses additional challenges for IP enforcement. Firstly, the overall number of manufacturers may be increased, making it a greater operation to identify and stop all sources of illegal goods. Secondly, it may become more difficult to identify who is making the goods, especially if they are being made in a home and sold online. Although each seller may be making a relatively small number of units, together the total number of units may amount to a sizeable loss of business to the rights owner.

The impact of 3D printing will of course vary between industries; the industries which will feel the impact first are expected to be those whose products are relatively easy to make and require the use of minimal materials. The toy industry, for example, may be particularly susceptible to the impact of 3D printing. According to Samantha Loveday, editor of ToyNews, some industry insiders fear that 3D printing could "do to the toy industry what illegal downloading did to the music industry".

Home use of 3D printers

In the UK Patents Act, there is a defence to infringement for acts which are done privately and for purposes which are non-commercial. Would this defence extend to protect individuals who own a 3D printer in their home and who download and print products without the right owner's permission?

To date, there is no case law on this point in the UK. The cost of bringing legal proceedings is not insignificant and if an individual is making a small number of products for their own home use then currently it is unlikely to be worthwhile bringing an action against individuals themselves. However, if, as is expected with increasing use of 3D printing, the number of individuals making products at home is significant and affects the overall market for the products, then IP cases against individuals may become ever more prevalent.

In the mid-2000s, the Recording Industry Association of America (RIAA) sued more than 18,000 people for illegally sharing music. Most of those cases were settled out of court or dismissed. However, the RIAA adjusted its anti-piracy strategy in 2008 and stopped suing individuals. According to Christopher Jon Sprigman, co-author of the Knockoff Economy, "The record companies basically bought themselves a huge amount of bad publicity, a few settlements and no real impact on file sharing."

Could manufacturers of 3D printers be held to account for providing the means which permit rights to be infringed in the home? In the 1980s, Amstrad made a cassette machine which allowed recording onto blank tapes. Proceedings were brought against Amstrad by CBS Songs Ltd and others who alleged that the manufacturing, advertising and offering for sale of such equipment amounted to copyright infringement as it authorised the public to infringe their copyright. However, Amstrad were considered to have conferred the power to copy but not to have granted the right to copy, and they were not considered to have authorised the infringement.

Illegal file sharing

Some experts fear that design files for 3D printers could be made available illegally on the internet on a large scale, as has been the case with films and music. Printed objects may be protected by design, copyright, patent and/or trademark laws but do IP rights protect against the offering of the files? Who would be held liable for infringement?

Computer code is often protected by copyright, but difficulties can arise in enforcing the rights if the code is shared online without permission of the rights owner. The music industry was turned on its head in 1999 by the creation of Napster, a program written by US teenager Shawn Fanning, which allowed copying and exchanging of music online. The RIAA sued Napster within months of the service launching and, after two years of legal fighting, Napster was shut down. However, the damage had been done and many other illegal file sharing websites are now present online. In 2012 it is estimated that around 347 million songs were downloaded illegally in the UK, representing a cost of around £250 million to the music industry. Could 3D printing result in similar losses to other industries?

Exhaustion of rights

Exhaustion of rights often limits the extent to which patent holders can control patented products after an authorised sale. In other words, the patent rights can often be exhausted within a particular territory once the products have been sold by or with the consent of the patent owner and generally the patent rights cannot then be used to control the secondary market for that product within the territory. With 3D printing, 3D printing instructions are often provided to purchasers. Could the instructions themselves be legally resold by the purchaser under exhaustion of rights principles? Rights owners should seek legal advice on how they offer their files for sale and contracts may need to be drawn up before any instructions are made available.

Parallel imports

Although progress is being made towards a unitary European patent, there is currently no European patent system which gives a patentee a unitary patent right in all countries of the European Union. The present system results in multiple patent rights in selected countries of the European Union (and other countries). The cost of patent protection naturally increases with the number of countries which a patentee selects for protection.

Imagine a scenario in which a patentee has patent rights in the UK and France, but does not have patent rights in Germany. If a third party manufactures goods in Germany which fall within the scope of the patent rights, and the patentee has not consented to the manufacture of these goods, then the patentee can use his patents in the UK and France to stop importation of these goods from Germany. However, if the patentee consents to the marketing of goods in Germany which fall within the scope of the patent rights then he cannot use his patents in the UK and France to stop the importation of these goods from Germany.

The files to make 3D products are likely be sold and traded over the internet. It is harder to restrict such sales geographically and 3D printing files are likely to be legally provided to third parties in countries in which the rights owner has no patent. Rights owners may therefore see an increase in imports to countries in which they do have patent protection from countries in which they do not have patent protection. Increased competition may make it harder for rights owners to capitalise fully on their monopoly rights.

What can you do to increase protection for your product?

With the advent of 3D printing, inventors and designers are likely to be in a stronger position if they have registered rights which protect their products, such as patents, registered designs and trademarks. Registration results in a monopoly right and provides proof of ownership.

Registered designs may be increasingly important as a registered design protects the appearance of a product and can be used to stop others making a design as shown in the registration. So, if design files for a 3D product are made available illegally on a website, then the monopoly right of the rights owner could be used against the unauthorised sale of products made according to the design.

European and UK law also provides unregistered design rights in the appearance of products. These rights arise automatically and, although they are more difficult to enforce than registered rights, they may still be of value in preventing third parties from copying and making goods.

The internet provides an easy mode of selling goods for individuals and small companies. Websites offering a portal for sales often have software in place to allow rights owners to stop the sale of infringing goods, but website owners normally require proof of ownership of the rights before such rights can be enforced. In these circumstances, it can be more difficult to prove ownership of and enforce unregistered rights such as copyright and unregistered design right, and independent creation can be used as a defence to infringement of unregistered rights. Designers and inventors are therefore advised to apply for registered rights wherever possible to have the most robust protection for their innovations.

Conclusion

The Paris Convention for the Protection of Industrial Property was originally agreed in 1883, and since then the pace of technological change has increased dramatically, but the convention still forms the basis for intellectual property rights globally, and the rights themselves have developed and adapted to take into account many changes. The expectation must be that the same will happen for 3D printing. As a significant advance in technology, the facility to free individuals to design and manufacture their own quality products on a large scale must be celebrated. Ultimately, the designers of tomorrow utilising 3D printing will want their own products protected, and this must be encouraged through an effective legal framework. Whilst the law takes time to adapt, in the interim, inventors and designers should be encouraged to obtain the best protection possible for their products. There should be no reason why the existing legal framework for intellectual property rights should not work to encourage design and innovation, rather than hinder it.

Need advice?

Carpmaels & Ransford LLP is a leading firm of European patent attorneys based in London. For more information about our firm and our practice, please visit our website at www.carpmaels.com.

Originally published July 2014

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.