The 3D printing debate and considerations for patent owners
3D printing is big news at the moment. Predictions of how it will change our lives are everywhere and it is fair to say that they are not all in agreement.
Below we summarize some aspects of the debate and what the future impacts of the technology might be for patent owners.
The fundamentals
3D printing is a technology that allows objects to be “printed” using a so-called 3D printer. The specifics of how the object is printed vary significantly depending on the printer being used, but the process generally involves using a printing head to apply layers of material, one after the other, to build a three-dimensional shape and structure. This shape and structure is read by the printer from a digital file, which is created beforehand using design software or by scanning a pre-existing object using a 3D scanner.
The technology is already common in industry and it has been hypothesized that migration of 3D printers into our homes will mean that, in future, we print rather than buy many of the items that we use in our everyday lives.
The obvious implication of this would be that we would no longer need manufacturers to produce these items for us. But for extensive home printing to become reality, sufficiently sophisticated 3D printers (and printing materials) will need to be produced at a cost that makes them economically attractive to a home user. Some feel that development of the current technology will soon make this a realistic possibility, whilst others argue that the inherent technical and cost constraints of 3D printing mean that it will remain principally for industrial use(1).
Where we are now
It is clear that 3D printing technology is already being adopted across manufacturing and design businesses. As many readers will be aware, industrial printers are available which print in a wide range of materials including ceramics and metals. A recent report(2) by PwC stated that 67% of surveyed manufacturers are using 3D printing technology to some degree, most commonly for experimentation and prototyping.
The bias towards experimentation and prototyping tallies with our own experience of the use of 3D printing by our clients. But it is also true that 3D printing techniques are being used by some businesses to produce final products. The evidence suggests that, if a manufacturer feels that a printer can produce the material characteristics that are needed for a final product, the manufacturer will seriously consider using the printer instead of conventional manufacturing techniques(3). Whether the current generation of printers is up to the task will of course depend very much on the nature of the product.
Historically a concern for manufacturers has been whether 3D printed products can be produced to the same quality as those manufactured using conventional means. However with large operators such as GE and EADS known to be investing in the technology for the quality-critical aerospace industry(4), it appears reasonable to believe that this concern will recede with time. Other concerns include the slow speed at which current printers operate and potential problems with product regulation, as highlighted in the PwC report.
Solutions to these issues will probably need to be found before 3D printers can replace tried and tested industrial manufacturing techniques. Nevertheless, it is widely thought that industry use of 3D printers will only increase in the short to medium term, with the analyst firm Canalys predicting that the market will expand from $2.5bn in 2013 to $16.2bn in 2018 – at a growth rate of 46% a year(5).
As far as home printers go, the usage is currently small and mainly recreational. Generally speaking, printers intended for home use print in plastics and are relatively limited in their ability to print complex items. For the predictions of everyday use to come true, the sophistication of home printers will probably need to grow significantly without the printers becoming unjustifiably expensive.
This will be a major challenge, but it is clear that investors are keen. Back in April of this year, M3D’s Micro 3D printer raised $400,000 in 11 minutes on crowd-funding site Kickstarter and went on to be backed by further investments to the tune of over $3.4m(6). Other 3D printers have also achieved impressive levels of investment on Kickstarter(7).
What could widespread 3D printing mean for patent owners?
In the discussion above we have split 3D printing into two separate scenarios – industrial use and home use. It is convenient to maintain this divide when we think about patent protection and particularly how best to prevent unauthorized copying of a patented product. Whilst industrial copying using a 3D printer would be similar to a large-scale copying scenario using any other manufacturing technique, a proliferation of sophisticated home printers could create a different type of threat for a patent owner.
It is normal for a patent to contain independent claims in various categories. For example, if the patented invention is a product then one might expect the patent to contain an independent claim directed to the product itself and potentially further independent claims directed to the apparatus and/or method used to produce the product.
If a third party were to use a 3D printer to manufacture the patented product on an industrial scale without a licence under the patent, then that party could be pursued for patent infringement on the basis of at least the independent product claim. Although the use of the 3D printer as an alternative means of manufacturing would have the potential to avoid the independent apparatus and method claims, the product claim would still be directly infringed by the industrial manufacturer. An injunction would stop the copies from being manufactured and distributed, giving the patent owner a good result.
A less conventional scenario, however, is one in which a large number of third parties each create one or two unauthorized copies of the patented product using printers in their homes. For example, if a legitimate (e.g. purchased) example of the product were used to make a digital printing file using a 3D scanner, the printing file might be shared over the Internet in a manner akin to unauthorized sharing of music files. In this scenario the direct infringers of the independent product claim would be the large number of home users rather than a single industrial manufacturer.
Since pursuing each individual home user for patent infringement would be expensive and impractical, the patent owner would need to look for alternative ways of preventing further copying and/or obtaining damages. One option might be to pursue the party responsible for sharing the digital file in the first place, but since the file-sharer would not have actually manufactured or handled the product he or she might not directly infringe any of the independent product, apparatus or method claims referred to above. With a normal claim set, the patent owner would need to rely on a less than ideal “indirect” infringement action against the file-sharer on the basis that he or she was indirectly involved in the production of the unauthorized copies on the home printers.
The patent owner’s position against the file-sharer would be improved if the patent contained a claim directly infringed by the file-sharer, such as a claim covering possession or creation of the printing file itself. A possible example is a claim to a computer-readable memory storing the printing file. Another example is a claim to a signal carrying the printing file. Patent claims of this type would encompass the memory of the sharer’s computer, or actions within the sharer’s computer, and so should allow for the sharer to be pursued for direct infringement.
Although the exact claim formats may need to vary depending on the country in which the patent is held, the existence of claims covering the direct actions of a potential file-sharer could prove a valuable asset if we see significant advances in 3D printers intended for home use. If you are concerned that your inventions might be susceptible to 3D printing, and particularly to printing on a home printer, please contact me or your usual Venner Shipley attorney to discuss your position.
(1) http://www.zdnet.com/debate/3d-printing-revolution-or-hype/10138319/
(3) http://www.bbc.co.uk/news/business-29114744
(4) http://www.technologyreview.com/news/423950/ge-and-eads-to-print-parts-for-airplanes/
(5) http://www.canalys.com/newsroom/3d-printing-market-grow-us162-billion-2018
(6) https://www.kickstarter.com/projects/m3d/the-micro-the-first-truly-consumer-3d-printer
(7) https://www.kickstarter.com/projects/formlabs/form-1-an-affordable-professional-3d-printer
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