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Managing IP issues is a challenge for manufacturers in the age of 3D printing, says expert

FOCUS: 3D printing technology gives manufacturers the opportunity to revolutionise their existing business model provided that intellectual property (IP) rights challenges are met.20 Jun 2016

Rather than design and then make the products themselves before selling them on to retailers, 3D printing technology enables manufacturers to license the use of their designs to others, placing the task of 'making' the products with licensees that have access to the necessary materials and 3D printers.

However, regardless of the business model manufacturers adopt, it is important they know how to manage, and if necessary enforce, their IP rights.

3D printing is one of a number of digital technologies that will draw attention during London Technology Week this week, and the topic will be discussed further by experts at the Financial Times Future of Manufacturing 2016 event in October, where Pinsent Masons, the law firm behind Out-Law.com, is event partner.

What is 3D printing?

3D printers use designated materials which are printed out layer upon layer to display a finished 3D object. The printers can be programmed to accommodate different designs.

The 3D printing process can be distinguished from traditional subtractive manufacturing processes where raw material is cut and shaped until the desired object remains.

In this context, 3D printing has the potential to reduce waste and energy consumption in manufacturing, as well as cut labour and raw materials costs.

The use of 3D printing

3D printing technology is advancing at such a rate that it can now be used to create, or reproduce, virtually any 3D object. For example, the media reported that a smuggled toucan which was found with a part of its beak broken off had been given a new 3D-printed beak.

3D-printed prosthetics for use by people have also been commonly reported, as health care professionals have pushed the technology's boundaries to create custom-fit medical devices for patients. 3D-printing is revolutionising health care as engineers and physicians are together able to develop prosthetics fully customised to the wearer.

An example of 3D-printed prosthetics was highlighted with the news that Open Robotics had won the James Dyson Award, a prestigious engineering prize. Open Robotics creates personalised 3D-printed robotic limbs for amputees and claims to be able to do so faster and cheaper than can be produced using conventional manufacturing methods.

In August 2015, the US Food and Drug Administration in the US gave a pharmaceutical company regulatory clearance to produce a new drug using 3D printing technology for the first time, further highlighting the potential of the technology radically to alter manufacturing.

Major brands have also been exploring the opportunities of 3D printing. Amazon, for example, has applied for patent protection for the use of mobile 3D printers which would allow it to print products at the point of, or en-route to, delivery, potentially transforming how it manages stock and other logistics.

Similarly Lego has obtained a patent that may prevent others from 3D printing Lego bricks without its consent. The patent gives the company the opportunity to offer consumers the chance to print their own Lego bricks in future under a new licensing model.

There has already been a push towards greater "servitisation" in manufacturing – where manufacturers offer services to complement the goods they produce – and this has allowed manufacturers to personalise the products they make for customers. With 3D printing, manufacturers can provide customers with personalised designs to print themselves. Nokia announced in 2013 that it was making 3D printable files available to allow consumers to create their own phone cover designs and print them off on 3D printers. Following a similar model requires manufacturers to think about licensing and how they control and, if necessary, enforce their IP rights.

IP issues in 3D printing

A wide range of IP rights apply in the context of 3D printing.

Copyright can exist, for example, in images and designs that are printed on the surface of products, or in the software used to operate 3D printers or to create CAD designs.

Copyright might also exist in the blueprints used for creating 3D objects and in some 3D products themselves, which are regarded as sculptures or works of artistic craftsmanship. Copyright will not protect the design of functional objects, however.

Copyright law broadly provides protection against unauthorised copying, distribution or adaptation of copyright works. In the 3D printing context, third party printing services will need a licence to use copyright-protected blueprints to print and distribute 3D objects, or to copy and make available to the public 3D objects that have copyrighted images or designs on them.

3D printing also raises potential design rights issues. Many everyday items are protected by registered or unregistered designs, but the increasing affordability of 3D scanners and 3D printers has increased the potential for off-the-shelf products to be copied and reproduced. This has the potential to infringe either registered or unregistered design rights of designers, as well as their copyright in those designs.

The commercial reproduction of products or objects by 3D printing could well amount to design right infringement. Private copying of designs for non-commercial purposes is permitted, but if those people then sell those printed items to others this is an act of infringement. Design rights might also be infringed where spare parts for products are created using 3D printing.

Patent protection can apply to both 3D printers and 3D printed products. A major reason why 3D printing is on the rise is because the cost of 3D printing is falling, and this can be traced to the expiration of the first batch of patents covering 3D printers. There are a new generation of patent applications now being filed aimed both at broader usage of 3D printing, for example Amazon's mobile 3D printer delivery vehicles, and at the protection of the 3D printing of products, such as Lego's patent for the 3D printing of plastic on Lego block bases, which have already been moulded.

Replacement parts are particularly susceptible to production by 3D printing and can, on their own or when combined with other parts to make up a product, be patent protected. In some cases, however, replacement of a part of a patented product will qualify as a 'repair' of that product and so 3D printing that replacement part would not constitute an act of patent infringement.

Many activities do qualify as patent infringement, however. Patents can be infringed by selling, importing, using, offering for disposal or disposal of and even storing a patented product, any of which might apply in the context of 3D printing.

Scanning products with a trade mark on it could also amount to trade mark infringement, as will going on to 3D print a product with that trade mark on it. Additionally shape or 3D trade marks may be registered to protect the shape of products where such shape has acquired distinctive character so long as the shape does not relate to a technical solution or functional characteristic. The 3D printing of such products may amount to trade mark infringement.

Equally, businesses that 3D print products that are associated with other businesses and which have acquired goodwill, could be liable for passing off.

Those who produce 3D printers and sell them might also find themselves in trouble.  Facilitating IP infringement can itself be an act of infringement. 3D printer manufacturers that issue disclaimers discouraging the use of their machines for infringing purposes might have a defence to infringement.

Manufacturers, designers, other owners of IP rights and those involved with 3D printing need to be aware of the way IP rights are created, protected and infringed, and what remedies are available when they are enforced. Due to the global nature of manufacturing, different legal frameworks and therefore rules and remedies could apply.

However, it is also clear that many manufacturers are embracing the many benefits the 3D printing revolution is bringing and are developing new business models which allow others the freedom to 3D print their products, whilst returning revenue through appropriate licensing models. Those who are able to adapt and change their business models in this way are likely to benefit from the increasing revenues available from the licensing of their IP rights.   

Cerys Wyn Davies is an expert in intellectual property law and manufacturing at Pinsent Masons, the law firm behind Out-Law.com. Experts from Pinsent Masons will be discussing these issues and more at the Financial Times Future of Manufacturing 2016 event in October.