IP challenges in 3D printing
A particular threat to intellectual property rights is posed by 3D printing technology. This article explains how it operates and why enforcement of rights is likely to be difficult.
The UK Intellectual Property Office (“UKIPO”) recently published its third report titled 3D printing and intellectual futures. The report builds on previous research by the UKIPO, and from the calls in the industry to monitor the disruptive technology.
This article will provide a snapshot of the UKIPO report and its findings, the issues with the current intellectual property rights and enforcement in 3D printing, and comment on the conclusions reached on whether the system is working.
Referred to as additive manufacturing, 3D printing was originally developed in the 1980s, but only recently has become more mainstream, due to decreased prices, expiring patents and increased quality of the printers.
The 3D printing process starts with either a 3D scan of an object in real life, or with the creation of a digital representation of such an object in a “computer aided design” (“CAD”) software package. Thereafter, a computer controlled process prints from a designated material, layer by layer, to create a three dimensional object. In comparison, a traditional manufacturing process involves the material being cut and manipulated into the required item.
The 3D printing technology has been acknowledged by the World Intellectual Property Organisation (“WIPO”) to be one of the “frontier technologies”, along with nanotechnology and robotics, which has the potential to boost future economic growth. Some fascinating breakthroughs have been reported. 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.
Indeed, one of the expectations is that 3D technology becomes more common and affordable, allowing people to create most products in their own home. Indeed, some basic printers can now be obtained for a little over £100. In addition, small 3D printing shops and marketplaces have emerged for those without a home printer. Examples of iMakr and FabLabs in the US and UK are enabling manufacture of small or one-off item runs in shops locally close to the general public, rather than in large faraway factories.
There are some obvious advantages of 3D printing. It provides flexibility and customisation of products to suit every customer’s needs, such as have never been achieved on such scale or without a significant price tag. This could be particularly important for industries such as the personalised medicine industry, for example prosthetics and hearing aids. Other industries can also benefit such as aerospace, automotive, medical, construction, and jewellery. Facilitation of flat packs has seen the ability for house prices to be significantly reduced and quality increased. Additionally, people will become creators of things, similarly to the way personal computers have allowed them to become creators of music, movies and articles. However, the technology is not yet under mass adoption, and arguably quality of materials and printing accuracy still need to be improved. This could be easily facilitated by creation of certifications or standardisation of the processes.
Intellectual property law
On the legal side, 3D printing has highlighted the risk of an increasing number of people directly creating and modifying objects without being aware that they might be violating exclusive IP rights. The ease and access to CAD files available online means reproduction of any designs comes at the touch of a button. The UKIPO acknowledged that 3D printing in the home environment, combined with online repositories which have limited regulation and accountability, could represent a difficult challenge for policy makers: a veritable “Pandora’s box”, as the Office described it.
To tackle this, let's look at the current legal protection available to designers, creators and manufacturers. Indeed, the shape of an object and its digital representation in a 3D design file may be protectable under multiple intellectual property rights. Although some protection is clear, there is still dubiety over how some parts of the 3D printing process will be protected.
The main right that can be used in this context is copyright. Copyright will protect the underlying software and the graphic design contained within a CAD file, as it is likely to constitute literary or artistic work. Literary work seems most fitting, as it includes computer programs and “the preparatory design material” for a computer program. (Support for this view can be sought from Autospin (Oil Seals) Ltd v Beehive Spinning  RPC 683, where Laddie J references, albeit obiter, that “a literary work consisting of computer code represents the three dimensional article”.) As such, 3D representations of 2D items protected by copyright may potentially infringe copyright. However, the CAD file could also constitute a “design document”. Making an article from a design document does not constitute copyright infringement, but it is possible to infringe copyright in the making of a design document.
In addition, it has been argued that if some of these objects may lack the creativity or originality to attract copyright protection, then the CAD file produced is also unlikely in itself to attract copyright protection.
Registered and unregistered design rights protect the shape and appearance of products, therefore would be able to protect the whole or part of the product resulting from features such as shape, contours, lines, colours, texture and materials. However, there are arguments that many products would not be protected as registered designs, because products whose features are solely dictated by “technical function” are excluded from protection, along the “must fit” exception that covers spare parts which need to be of a particular design to “fit” with another product. As such, 3D printed spare parts are very likely to fall within these exceptions. In addition, any home made objects will not infringe products if they are printed for private non-commercial purposes.
Also, an object that will fall within literary or artistic work under copyright might give rise to copyright and design rights existing in the same object. This is dealt with by removing any infringement of a design right if there is already an infringement of copyright.
Trade marks focus on protecting brands, via distinctive logos, words, signs etc, and might be ancillary in protecting 3D works. If an item with a distinctive logo is reprinted and sold, even informally, then this would infringe the trade mark if found to be a “use in commerce”. However, 3D printing at home something containing a trade mark should not fall into that scope.
More claims may be brought for the common law right of passing off, especially when a trader’s goodwill is comprised in the distinctive shape of goods. However, that will rely on the public being misled as to the origin of the product, and if that is not established, no passing off will be found.
Patents, which protect novel inventions capable of being applied industrially, can cover items produced by 3D printers. If the item was novel enough to be patentable, the creation of a CAD file of the patented product will breach patented rights. Furthermore, the production of any replicas of the patented item and their use would also constitute a breach. Again, personal use is excluded from infringing patented works. In addition, if the CAD file was provided by a third party for home use, the patent will be infringed if the file is classified as an “essential element” of the invention. Agilent v Waters Corp  EWCA Civ 987 found that an instruction manual with directions to use a machine was not essential means. However, a CAD file is certainly of greater importance, as it is necessary to print the object.
In addition to the above commonly discussed rights, there has been some discussion of the effect of 3D printing on trade secrets. As 3D printers are able to scan a real life object and essentially “reverse engineer” the item and print it, this therefore identifies any trade secrets involved in making the original product. In such circumstances, trade secret owners may have to use contracts to protect their rights by requiring purchasers to agree not to reverse engineer parts. I wonder if our beloved secret Irn-Bru recipe could end up being discovered in someone’s kitchen?
Most of these issues have not been tested in the courts, therefore the arguments remain theoretical and speculative.
It certainly seems that 3D printing will not lack protection from IP rights, albeit it might give rise to confusion over which rights are applied. There is recourse against any infringing acts; however, from the counterfeiting perspective, 3D printing technology currently allows easy replication of items. Especially, the low cost of the technology allows easy manufacture in any jurisdiction without the need to export and import, thus removing the ability to seize infringing goods at customs. Also the ability of printers to scan objects to reverse-engineer digital files is likely to cause concern for right holders. The source of infringing products will be more difficult to uncover, limiting enforcement opportunities. Additionally, in most cases, private consumer non-commercial use of 3D printing will not constitute copyright (except for copying of “artistic works”), trade mark, design or patent infringement.
Enforcement is a common issue among IP rights generally. The enforcement opportunities fail when considering how the internet has influenced the mass amount of peer-to-peer file sharing. Depending on the control the website operator may have over the infringing content, it might be difficult to find recourse. The use of CAD files increases the potential for this to cause as many problems for industries using 3D printing as it already causes for the music and film industries. To tackle this, UKIPO proposed the use of application programming interface (API) to enable a “pay per print” model, whereby instead of sending the data file to the consumer, the instructions are instead sent directly to the printer.
The main recourse that IP right holders could use is against the 3D print shops, which if found to be infringing IP rights, will not be able to use private and non-commercial defences. To avoid such liability and rely on the “hosting defence” afforded to website operators, 3D print shops should put in place “notice and take-down” policies, where infringing content is removed on receiving a prescribed notice.
Fostering innovation for the future
UKIPO found no current need to transform the existing IP rights in light of the issues exposed by 3D printing. It did recommend legal clarification of existing theoretical IP issues, for example, the subsistence of IP rights, and identifying activities which would constitute infringement, especially secondary infringement, and how some exceptions to infringement would operate. Other questions need to be answered as who owns an object when it is first conceived by one individual, digitally modelled by another, and printed by a third; and whether any protection should be given to owners of 3D printers – could they qualify for a similar type of related rights to those enjoyed by music producers whose investment enables the creation of sound recordings? The UKIPO recognised that due to the limited litigation so far on 3D printing, these topics remain in need of clarification.
This “wait and see” approach by UKIPO is understandable. It found no urgency from industry representatives, and there is always a balancing act involved by offering IP protection and consequently hindering innovation. UKIPO notes that the adoption of 3D printing technology has been relatively slow, and as such the perception of disruptive technology has not matched the current reality.
This approach can allow the industry to explore the opportunities of such technology, without requiring to pay costly licence fees or fearing they might be infringing IP rights. It does seem convenient that the uptake of 3D printing has begun at a similar time to the expiry of some of the old patents in relation to the printing technology. However, the law always plays catch-up and sometimes the change can be just round the corner.
It will be interesting to see, once 3D printing reaches mass adoption, whether a review of all IP rights would be more beneficial to determine whether they are fit for this century. In July 2018, the European Parliament adopted a new regulatory framework for 3D printing, produced by Joelle Bergeron, who previously had been calling for more tailoring of the existing law and a more comprehensive framework. We shall wait and see if that results in any action from the European Commission, and whether the UK will need to take notice at all.
Agne Zasinaite is a trainee solicitor with Harper Macleod LLP