3D printing – the real story

As the technology continues to develop, and in particular as 3D printing becomes more accessible for individuals, IP right owners will be presented with a wealth of opportunities, thanks to easily scalable production and the ability to reach end customers wherever there is access to a 3D printer. With those opportunities, also comes an increased risk to IP right owners. In this article, we examine some of the challenges to protecting the product designer’s potential patent rights in the context of 3D printing, and how related intellectual property rights may play a key role in the protection of the designer’s creations.

The risks of 3D printing for IP right owners

A particular concern is that more advanced desktop printers will allow individuals to print, rather than buy, new products. At present, even the most expensive desktop 3D printers are limited to printing in one material, most of these being polymers; there are currently no desktop printers capable of printing in metal or printing complicated patterns. However, as the technology develops and becomes more widely accessible, 3D printing will begin to present a greater challenge, and IP right owners should plan now so as to have in place effective strategies for the future.

Three dimensional printing is opening up new possibilities for industry, but is also presenting challenges for IP owners. This article explores some of those challenges and gives practical advice on the state of the law and the steps that can be taken to make the most of your IP.

One commonly cited concern is that 3D printers present a risk to manufacturer’s proprietary rights, in particular there is a concern that more advanced desktop printers will allow individuals to print rather than buy new products. This might be true to an extent, but the complexity of items that can be printed in this way is still very limited. Even the most expensive desktop printers are limited to printing in one material, most of these being polymers. There are no desktop printers capable of printing in metal, for example. And, although it is not beyond the capabilities of currently available desktop printers to produce simple spare parts (an adaptor for a vacuum cleaner for example), they are still too expensive for such activities to become the norm.

More advanced printing capabilities are available from service providers, or ‘bureaus’, which will convert print files into 3D objects for a fee. The service offered by these providers far outstrips the printing technology of domestic devices and is mostly a business to business service for prototype and bespoke parts. However, it is not infeasible that at some point in the future it will be cheaper for an individual to obtain a printed replacement part for their car, say, rather than an OEM part from the dealer.

The costs of instructing a bureau and the limitations of desktop printers have so far prevented 3D printing from significantly encroaching on intellectual property rights, at least as far as individuals are concerned. However, we shouldn’t become complacent, as the technology develops and becomes cheaper, 3D printing will begin to present a greater challenge.

Manufacturers should be wary too of the possible reputational damage that could stem from the unlawful copying and dissemination of 3D print files. For example, should a substandard printed part fail in a public and dangerous way, the resultant media attention is not likely to be forgiving. Take for example the above mentioned scenario of a 3D printed replacement car part. If said part fails and the vehicle is involved in an accident, suspicion will initially be levied at the manufacturer, and headlines made, long before the truth of the failure is revealed. The ensuing litigation and the reputational damage will no doubt absorb the printing studio too, so it’s in everyone’s interest to proceed with care.

So what can be done about this? Traditional forms of IP protection such as copyright, patent and design law exist precisely to prevent passing off and counterfeiting of genuine parts. The problem arises when an individual uses his or her own printer to produce a one off part for themselves. In the UK, both patent and design law offers the defence that if the (otherwise infringing) act is carried out for non-commercial purposes it is not an infringement. So the individual printing parts for themselves is exempt. Although there is no such ‘non-commercial’ defence available for copyright infringement, S.51 of the Copyright, Designs and Patents Act 1988 specifically excludes making an article to a design from infringement, other than for an artistic work.

Patent protection can instead be used to go after file sharers, rather than the individual printing. There are two ways in which a patent can achieve this. The first and most direct approach is to claim the computer signal itself. Such a claim could read ‘an electronic signal carrying computer executable instructions adapted to cause a printer to print product X…’ This could be used against anyone distributing a file to print product X.

A second possibility lies in S.60(2) of the Patents Act 1977, which stipulates that supplying means relating to an essential element of the invention is also an infringement of the product claim. It’s arguable that supplying a CAD file for instructing a 3D printer falls under this definition; although this hasn’t been tested in court[1].

For now at least, we would recommend inserting a claim to an electronic signal as above for any product where it is anticipated that 3D printing is a viable means of manufacture. Be wary though, with the rapid development of printing technology, the scope of what is printable is likely to evolve considerably over a patent’s 20 year term.

The bigger issue today is that of safety critical spare parts being printed by bureaus for aftermarket sales. If the part is protected by a patent, then traditional legal remedies are likely available to the patent proprietor as the ‘non-commercial’ defence is unlikely to apply to a legal entity printing for profit.

However, a large number of 3D printable safety critical parts don’t necessarily attract design or patent protection. To be protectable by a patent, a product must be new and show a technical advance of some kind, while design protection relies upon the appearance of the object being sufficiently different. Plus, there’s a requirement in design law that to be protected it must be visible in normal use.

Continuing then with the example of a car part, there are a number of components that are both safety critical and 3D printable, and not likely to be covered by patent or design law. For example a suspension control arm (that’s the part of a car that connects the wheel to the chassis) would be easily printable, yet it’s unlikely to represent enough of technical advance for patent protection or be different enough in appearance to be covered by a design.

In such a situation the proprietor may call upon copyright as the CAD files themselves will be protected. This makes it possible to go after the file sharers. There is precedent for such action in other file sharing cases, most notably in relation to music streaming. In a landmark U.S. case, A&M Records Inc. v. Napster Inc. a file sharing site was found at fault for providing the tools to download copyright material; while in the U.K the High Court ordered the service providers Sky and Virgin Media to block Pirate Bay, another file sharing site, after the order was requested by the British Phonographic Industry. In both cases, it didn’t seem to matter that the site could be used for sharing of legal content, as both had become synonymous with illegal file sharing[2][3]. In his judgement, Mr Justice Arnold said “the operators of The Pirate Bay do authorise its users’ infringing acts of copying and communication to the public. They go far beyond merely enabling or assisting.”[4]

An entirely different approach to preventing unlawful file sharing would be to adopt the successful models of today’s music streaming services[2]. These services have seriously curtailed illegal music file sharing and could act as a template for future sharing of 3D print files. By cooperating up front, manufacturers and printing studios could act to avoid the expansion of unlawful file sharing sites altogether. Such cooperation can’t come soon enough as self-styled ‘crypto-anarchists’ are already looking to be the next Pirate Bay for 3D printing, see Defcad as an example[5].

In conclusion, care must be taken to prevent unauthorised copying of electronic CAD files, both to protect IP and to prevent a black market in dangerous counterfeit products. IP law can be of assistance. Copyright and patents might an effective stop of illegal file sharing, whilst the commercial reproduction of products is preventable where patent or design protection is in place. In any case, it is important that all stakeholders work together to spot dangerous counterfeits while setting up legitimate channels for file sharing, before the ‘crypto-anarchists’ take the lead.

[1] https://united-kingdom.taylorwessing.com/download/article-unauthorised-3d-printing.html

[2] https://dupress.deloitte.com/dup-us-en/focus/3d-opportunity/3d-printing-intellectual-property-risks.html

[3] https://en.wikipedia.org/wiki/A%26M_Records,_Inc._v._Napster,_Inc.

[4] https://www.theguardian.com/technology/2012/apr/30/british-isps-block-pirate-bay

https://en.wikipedia.org/wiki/File_sharing_in_the_United_Kingdom

[5] http://www.bbc.co.uk/news/technology-21754915