United States: 3D Printing: Protecting Intellectual Property Rights

3D printing technology has advanced to become more efficient, more accessible, more affordable, and consequently more popular at the consumer level and with some commercial enterprises. Consideration of intellectual property issues in advance of 3D printing will allow users to enjoy the technology without making costly legal mistakes. For manufacturers of articles that can be copied with 3D printers, procuring intellectual property rights to protect those objects will provide a means for curtailing unwanted copying. This article identifies a few of the more common intellectual property issues that 3D printing may present and suggests some strategies for dealing with them.

What is 3D printing?

Additive manufacturing, more commonly known as 3D printing, is a process by which an object can be created by simply uploading a digital blueprint to a machine and "printing" out the three-dimensional article. The printer creates the object by an additive process where layers of material are laid down according to instructions from the blueprint. Objects comprising a number of components can be created by printing each separate component and then assembling them to form the desired object.

A user can independently create a blueprint via a Computer Aided Design (CAD) program, generate a blueprint of an existing object using a 3D scanner, or download a preexisting blueprint from online sources. The ability to easily create or copy physical objects embodied in digital files poses a number of intellectual property issues.

Copyright Protection of Digital Blueprints

Independently created digital blueprints, i.e. those not copied from another's existing object or blueprint, may be eligible for copyright protection and are unlikely to infringe another's intellectual property rights.

On the other hand, using a 3D scanner to generate a blueprint of a copyrighted object or downloading a preexisting copyrighted blueprint without authorization, may constitute infringement. Users should therefore, determine whether any objects copied are in the public domain so that permission to copy the object is not required. Availability of images or specifications on the Internet does not necessarily mean they are in the public domain.

Intellectual Property Protection of Objects

An object can be the subject of copyright, patent or trademark protection. Patent protection includes utility and design protection. A utility patent relates to the function of the object and a design patent protects the appearance. An object may also include protected trademarks, such as a brand or logo, or trade dress providing a unique and identifiable look to the object, for example, a bottle shape. A copyright protects works of authorship and can include works of art, such as sculptures.

1. Original Objects

An object created with a 3D printer that closely resembles an object for which another has copyright protection, does not infringe that copyright if the creator of the article had no knowledge of the copyrighted item, and thus independently created the design.

Patent protection is very different from copyright protection in that no knowledge of the patent, or a device embodying the patented technology, is necessary to infringe patent rights. Once an invention is patented, any unauthorized making, using, selling, offering for sale, or importing of the invention constitutes infringement, regardless of the acting party's knowledge.

Similarly, infringing another's trademark or trade dress rights by printing a 3D object containing a protected mark or look does not require knowledge of their existence.

Therefore, those using 3D printing, can benefit from proactively learning about the patent landscape of the technology field in which they operate. Actions such as conducting trademark clearance investigations or freedom-to-operate searches to identify patents that could be infringed may significantly reduce the risk of subsequent problems.

2. Existing Objects

3D printers can also be used to replicate existing objects. Existing objects are more likely to be protected by copyrights, patents, or trademarks. Although this may pose a greater risk of infringement, it is often easier to ascertain whether copying an existing product will infringe another's intellectual property rights than making that determination for an independently-created item.

An existing item may be marked with one or more patent numbers. A patent marking does not necessarily indicate that copying the article will infringe. The patent may have expired or been abandoned, or the item may not actually be within the scope of the patent. Publically available records in most countries can be reviewed to determine whether a patent is in force. Determining whether a product is covered by a particular patent requires a careful comparison of the article with the claimed invention.

An existing object may also have a copyright notice alerting one of potential rights that could be infringed by copying the object. Changing the cosmetics, such as colors and patterns, of an object created by a 3D printer likely will not avoid copyright infringement, if the general shape and appearance is the same as the copied object. Differences in patterns and colors often will not change the object to the extent necessary to avoid copyright infringement.

A single object can also be protected by both patents and copyrights. Design elements protected by copyright that are incorporated into a product can also be inadvertently copied with a 3D printer. The term of a copyright far exceeds that of a patent. So even if the patent marked on a product has expired, the item should be carefully assessed for the existence of features that could be subject to copyright protection.

Similarly, a trademark emblazoned on an object may include a "TM" or "®" symbol indicating that at least those features of the object should not be copied. Whether the trademark is actually registered can be determined by searching publically available trademark office databases. Note though that lack of a trademark registration does not necessarily mean that copying or using the trademark will not infringe another's rights since trademark users can possess rights to unregistered trademarks.

Lack of a patent marking, trademark symbol or copyright notice does not mean the object is not protected by another party's intellectual property rights. Therefore, adequate searches to identify intellectual property rights should be performed when possible.

3. Replacement parts

3D printing may be used for creating replacement parts for repairing purchased goods. The replacement parts, either portions thereof or the good as a whole, may have intellectual property protection. Whether creation of replacement parts will infringe intellectual property rights will largely be determined by patent law's distinction between permissible "repair" and impermissible "reconstruction". There is no bright line test to make the determination but generally the extent of the repair will be a deciding factor.

Pitfalls When Copying Existing Objects

A careful evaluation must be performed on an existing object before copying it with a 3D printer based on a digital representation generated with a 3D scanner, even if you are sure the item is no longer subject to patent or copyright protection. Keep in mind that every feature of the original article will likely be digitally captured by the scanner and thus also be a characteristic of the copy. Take Lego® blocks for example. The original utility patent covering the blocks has expired. But suppose the piece you are copying has the Lego® trademark on it. A 3D scanner could digitize the trademark if it is embossed on the article, so the copied item would exhibit the mark, and thus, sale of the new object could infringe The Lego Group's intellectual property.

Suppose you have collected souvenirs of famous sculptures that are no longer subject to copyrights and you would like to make copies and offer them for sale. You have for example, a model of Michael Angelo's bust of Brutus, the original of which was created in the 1500s, and thus not subject to copyright protection. Are you free to copy the entire souvenir? Not necessarily so. The manufacturer of the souvenir could have stamped its trademark into the bottom of the bust so a digital representation created by a 3D scanner could include the manufacturer's trademark. If that digital representation is used to create the object with a 3D scanner, the trademark would likely be present on the copy. A sale of such a copy could infringe the souvenir manufacturer's intellectual property rights. Therefore, care should be taken even if you are copying an object that was not created by the original copyright owner and is no longer subject to copyright protection.

Suppose you want to copy razors that had initially been covered by The Gillette Company's United States Design Patent No. 305,805, which has expired. An object covered by an expired design patent can be freely copied, correct? Not necessarily. The digital representation of the razor used to produce a copy on a 3D printer could include the Gillette logo, depending on nature of the logo, and how the digital representation was made, and thus, the copy generated could include the trademark. You are free to copy the design of the razor covered by the expired patent, but not necessarily a trademark that may be present on the template you are using.

Protecting Your IP

Intellectual property rights-holders should evaluate protection strategies and procedures in light of the emergence of readily available and affordable 3D printing devices. Particularly, manufacturers of objects that readily lend themselves to 3D printing should evaluate whether they are adequately protecting those items and policing the market for infringers.

1. Patents, Trademarks and Copyrights

All forms of intellectual property protection should be considered for any manufactured object. It may be possible to obtain more than one type of protection for a single object. Factors to consider when choosing how to protect your objects of manufacture include for example, cost, duration of protection, and time required to obtain a registered right.

2. Licensing

An entity may wish to license its rights to, or sell its designs for, protected objects, which may add an attractive revenue stream. In this manner, companies can profit from the tide of 3D printing, allowing users to print legally obtained products on their own.

3. Takedown Requests

Entities exist that host online repositories where users can upload and share digital blueprints. Under the Digital Millennium Copyright Act (DMCA), copyright holders can notify an online service provider of an infringement claim and endeavor to stop continued infringement. Companies can employ this tactic to stop the spread of digital blueprints that infringe their protected works.

4. Monitoring Policies

Companies should implement monitoring policies directed to policing activity that may infringe its intellectual property rights. Existing policies should be reviewed to ensure they are effective with respect to 3D printing. For example, companies should implement procedures for monitoring non-traditional forums such as online blueprint repositories.

With proper consideration of intellectual property rights, 3D printing can be used to enhance manufacturing. By adequately protecting articles of manufacture, companies can readily address infringement of their rights.

Originally published in The Philadelphia Business Journal

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.

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