3D printing and IP law
By Elsa Malaty, Lawyer, Associate in the law firm Hughes Hubbard & Reed LLP, and Guilda Rostama, Doctor in Private Law, Paris, France
3D printing technology emerged in the 1980s largely for industrial application. However, the expiry of patent rights over m�any of these early technologies has prompted renewed interest in its potential to transform manufacturing supply chains. The availability of low-cost, high-performance 3D printers has put the technology within reach of consumers, fueling huge expectations about what it can achieve. But what are the implications of the expanding use of this rapidly evolving and potentially transformative technology for intellectual property (IP)?
3D printing in a nutshell
The 3D printing process starts either with a digital file in which the object to be printed is digitally formatted using either 3D print software, or a 3D scanner. The file is then exported to a 3D printer using dedicated software, which transforms the digital model into a physical object through a process in which molten material is built up layer upon layer until the finished object emerges. This process is also referred to as additive manufacturing.
The 3D printers available today use a variety of materials ranging from plastics to ceramics, and from metals to hybrid materials. The technology is evolving at a breathtaking pace. For example, MIT’s Computer Science and Artificial Intelligence Laboratory recently developed a 3D printing technique to print both solid and liquid materials at the same time using a modified off-the-shelf printer, opening up a huge range of possible future applications.
3D printing technology is evolving at a breathtaking pace, with applications in areas ranging from food and fashion to regenerative medicine and prosthetics.
The expanding range of materials used for 3D printing means that the technology’s application is having an impact on a whole range of industries, fostering new opportunities for innovation and business development.
Within the medical field, for example, researchers at the National University of Singapore have found a way to print customizable tablets that combine multiple drugs in a single tablet, so that doses of medicines are perfectly adapted to the needs of individual patients. 3D printing is also making its mark in the fashion industry, as evidenced by the unveiling at New York Fashion Week in September 2016 of “Oscillation”, a multi-colored 3D-printed dress by threeASFOUR and New York-based designer Travis Finch. Even the agro-food industry is exploring the potential of 3D printing for customized food products.
Advantages of 3D printing
The potential advantages of 3D printing are numerous for innovation-intensive companies. In particular, 3D printing allows them to reduce their overheads when developing, designing and testing new products or improving existing ones. They no longer have to pay for costly prototypes but can rapidly and cheaply undertake multiple iterations of complex elements in-house using 3D printers.
Fostering the development of 3D printing
Recognizing the transformative potential of 3D printing, many countries have already adopted, albeit unevenly, different strategies to create an economic and technological ecosystem that favors its development. The European Commission, for example, has identified 3D printing as a priority area for action with significant economic potential, especially for innovative small businesses.
Lawyers in many countries are considering the capacity of existing legal provisions to orient this new technology, particularly with respect to intellectual property (IP). 3D printing technology affects virtually all areas of IP law: copyright, patent law, design law, and even geographical indications. The question is, can IP laws in their current form embrace such an all-encompassing technology or do they need to be reformed? Does existing IP law ensure adequate protection for those involved in 3D printing processes and the products they make? Or would it make sense to consider creating a sui generis right for 3D printing to address emerging challenges, along the lines of arrangements in place in some jurisdictions for the protection of databases?
How current IP law handles 3D printing
One of the main concerns about 3D printing is that its use makes it technically possible to copy almost any object, with or without the authorization of those who hold rights in that object. How does current IP law address this?
Protecting an object from being printed in 3D without authorization does not raise any specific IP issues as such. Copyright will protect the originality of a work and the creator’s right to reproduce it. This means that if copies of an original object are 3D printed without authorization, the creator can obtain relief under copyright law. Similarly, industrial design rights protect an object’s ornamental and aesthetic appearance – its shape and form – while a patent protects its technical function, and a three-dimensional trademark allows creators to distinguish their products from those of their competitors (and allows consumers to identify its source).
Many commentators believe that a 3D digital file may also be protected under copyright law in the same way that software is. The justification for such protection is that “the author of a 3D file must make a personalized intellectual effort so that the object conceived by the author of the original prototype can result in a printed object,” notes French lawyer Naima Alahyane Rogeon. With this approach, the author of a digital file that is reproduced without authorization could claim a moral right in the work if their authorship is called into question. Article 6bis of the Berne Convention for the Protection of Literary and Artistic Works, which establishes minimum international standards of protection in the field of copyright, states that the author has “the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation.”
If the printed object is protected by a patent, certain national laws, for example the Intellectual Property Code of France (Article L 613-4), prohibit supplying or offering to supply the means to use an invention without authorization. Following this approach, patent owners should be able to seek redress from third parties for supplying or offering to supply 3D print files on the grounds that these are an “essential element of the invention covered by the patent”.
What is the situation for hobbyists?
But what is the situation with respect to hobbyists who print objects in the privacy of their own home? Are they at risk of being sued for infringement?
The standard exceptions and limitations that exist in IP law also naturally apply to 3D printing. For example, Article 6 of the Agreement on Trade-Related Aspects of Intellectual Property (TRIPS), which has been transposed into EU law (EU Directive 2008/95/CE, Article 5), limits trademark protection to use “in the course of trade”. Similarly, with respect to patent law Article 30 of the TRIPS Agreement states that member countries “may provide limited exceptions to the exclusive rights conferred by a patent”. Some national laws consider that the rights of the patent holder do not include acts performed in private for non-commercial purposes. In other words, when an object that is protected by a trademark or a patent is printed for purely private use, it is not considered an infringement of IP rights.
In the area of copyright, the rights granted to authors can be limited according to the so-called three-step test. Article 13 of the TRIPS Agreement states that “members shall confine limitations or exceptions to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder.” Accordingly, some countries have established a “right to private copying” authorizing a person to reproduce a work for private use. Countries often then levy a fee on storage devices to compensate any losses incurred by the rights holder; some countries are exploring the idea of levying a fee to offset private 3D copying. However, some lawmakers consider it premature to extend such a fee to 3D printing, as this would constitute “an inadequate response or even a negative message for companies” and would put a brake on the development and uptake of 3D printing.
Gaps in the law
IP law in its current form, therefore, appears sufficient to effectively protect both 3D files and those using 3D printing technologies for non-commercial purposes. That said, the specificities of the 3D printing process mean that there are a number of questions that the courts will inevitably need to address. For example, who owns an object when it is first conceived by one individual, digitally modeled by another, and printed by a third? Can the person who designed the work and the person who digitally modeled it be considered co-authors of a collaborative work under copyright law? And if the object qualifies for patent protection, would these same individuals be considered co-inventors?
Other important questions include the type of protection that should be available to owners of 3D printers. Since their financial investment enables the creation of an object, might they qualify for the same type of related rights protection as that enjoyed by music producers whose investment enables the creation of sound recordings? And is the digitization of a pre-existing object considered an act of infringement simply because it is printed or its base file is loaded onto an online sharing platform for downloading? These issues still need to be ironed out.
Measures to curb unauthorized use
In the meantime, to curb unauthorized use, if the object is protected by copyright, rights holders can make use of technological protection measures, the circumvention of which is expressly forbidden under the WIPO Copyright Treaty (Article 11). These measures make it possible, for example, to mark an object and its associated 3D print file with a unique identifier to monitor use.
Close collaboration between rights holders and 3D printer manufacturers in applying these measures to models intended for 3D printers could be beneficial. Similarly, partnerships with sharing platforms that make 3D files publicly available could help curb unauthorized use.
With such measures in place, it would be possible to set up a legal offering of downloadable 3D print files or 3D-printed objects. While online 3D printing services such as i.materialise are now readily available, one can imagine that their future evolution will follow that of online music delivery with the emergence of subscription models that allow users to download 3D print files in return for a monthly fee. Indeed, these are already available for 3D printing software, for example through Fusion 360, Autodesk’s cloud-based product innovation platform.
The experience of online music streaming platforms suggests that such arrangements could have a positive impact on infringement levels. The 2016 Australian Consumer survey on Online Copyright Infringement, for example, showed a 26 percent decrease in the number of Australian internet users accessing unlawful content online and a marked increase in the uptake of streaming services.
3D printing technologies have many life-enhancing, even revolutionary, applications, from regenerative medicine to prosthetics and from complex airplane components to food and fashion. As the use and application of this exciting technology gathers pace and digital transformation continues to gain momentum, 3D printing is likely to become deeply embedded in our daily lives. Beyond the IP-related questions outlined above, the use of 3D printing raises other important legal questions, for example in relation to quality assurance, legal liability and public order. All of these issues still need to be resolved and they can be.
But as the potential of this fascinating technology continues to unfold, the real challenge will be to fully understand the implications of its uptake and use on manufacturing processes across the economy and its impact on our daily lives.