Legal Briefing

3D printing: a new dimension for IP?

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Technology, Media and Telecoms | 01 May 2012

3D printing (or additive manufacturing), that is the use of digital files, eg computer-aided design (CAD) models, to produce three-dimensional objects, is becoming increasingly big news. Special software is used to cut the digital model into layers and create a file, which is sent to a printer to ‘print’ a physical object. Instead of ink, other materials, such as molten plastic, or metal in powder form, are built up in layers and fused together at high temperatures to create the product. Exeter University has even used the process with layers of chocolate to create novelty edible products.

Not surprisingly, 3D printing brings with it a host of IP issues. This article looks briefly at the developing 3D printing industry and some of the IP issues it raises. It also offers some guidance to IP owners.

3D printing

Models for 3D printing can be created using design applications, or 3D scanners that transform a series of photographs into a file format that can be read by a 3D printer. Professional designers have access to high-quality files that enable them to produce precision scale models; hobbyists and novices can use free modelling tools, such as Google Sketch Up.

In 2005, early 3D printer hardware included an open source development, called the RepRap (replicating rapid prototype), based on work done at Bath University, and a desktop printer called the ‘Thing-O-Matic’, produced by a US company, MakerBot. MakerBot has recently launched a bigger open source hardware device called ‘Replicator’. Manufacturers at the forefront of commercial technology include Stratasys Inc, 3D Systems Corporation, and Objet Ltd. The price of 3D printers varies from approximately $1,000 for a build-your-own model to over $55,000 for a substantial commercial model.

3D printing is already being used in industry for rapid prototyping (which dramatically cuts development cycle time and costs), and the production of a range of finished goods including: in the medical field, artificial limbs, hip bones and hearing aids; in the transport industry, specialised car, motorbike, and military aircraft parts; and in the consumer goods industry, curtain poles, consumer robotics, glass objects, shoes, clothing and jewellery. Very recently, Stratasys and Optomec Inc combined 3D printing and printed electronic circuitry to create a ‘smart wing’ for an unmanned aerial vehicle model.

Although 3D printing in composite materials may still be some way off, there are rapidly developing techniques that will enable individuals and on-demand manufacturers to both design and create new products and copy and customise existing products. Software companies such as Autodesk and Tinkercad are specialising in the conversion of scanned data into CAD models or digital design files; and developers have begun marketing 3D apps that enable items to be customised by online editing.

Digital files of third parties can be downloaded from the web and used as the basis for 3D printing; for example, Cubify.com, operated by 3D Systems, offers a free online social platform that makes digital files available for download to create and customise products. Makerbot also operates the thingiverse.com website, which enables users to share designs: there are currently 15,000 designs available on the site.

Those without domestic 3D printers can send their customised designs to service companies for printing. One such company, Shapeways, claims a ten-day turnaround, from upload to delivery of the finished product, and offers printing in a range of materials including steel, glass and ceramic. Other businesses such as Kickstarter, Qwirky and Zazzle in the US offer participatory design and demand-led production. Customers can sell the products they have created on both dedicated websites and sites such as eBay and Amazon.

More widespread use of 3D printing technology is currently being held back by the price of printers; the size of printer that is required to produce large objects; printer speeds; and users’ technical knowhow. Printer prices are, however, falling; and as the technology improves further, printing at higher speeds, in thinner layers, with finer detail, in a range of materials, for larger objects will become possible and use will expand. For example, researchers are using the technology with lasers to create solid material within liquid resin for nanotechnology items and intricate structures for medical applications, such as blending living bone cells into ceramic scaffolds for tissue growth.

The advantages of the technology are clear. As software develops further, 3D printing could have a dramatic effect on industry and manufacturing. Apart from continuing reductions in design, development and manufacturing time and cost, personalised products and on-demand production might become commonplace. Business models and practices may change as designers, enthusiasts and businesses try out new ideas, increase their levels of CAD design skills, and share design files. Companies using the technology will realise new possibilities, including making things that could not be made easily before, or making them more cost effectively; printing items to order, stockpiling fewer supplies or spares, reducing tooling and distribution costs and so on. Contemporary designers are already exploiting new possibilities with the technology: an exhibition of imaginative work produced by 3D printing technology was held at the Aram Gallery in Covent Garden earlier this year.

IP issues

These developments bring a whole host of IP issues. From a commercial perspective, designs that build on the work of different contributors and open source material can create difficult questions relating to protection and ownership. From an enforcement perspective, personal use of 3D printing technology may not infringe many IP rights in the UK. For example, a person who copies an article by 3D printing for personal use will not infringe registered or unregistered design rights or patents: such use is private and non-commercial and the subject of exceptions in IP legislation. Similarly, if the copied article bears a trade mark (or embodies a shape that is protected as a trade mark), the copying may not amount to infringement because it will not involve use of the mark ‘in the course of trade’. If the article copied were an artistic work, or a work of artistic craftsmanship, however, the copying may amount to copyright infringement.

If the article were offered for sale, the situation would be very different: in that case, there may well be design, patent or trade mark infringement. Commercial use of the technology is likely to present substantial risk. The ease of copying, reverse engineering, and instant distribution of design files over the internet, which can then be printed anywhere in the world, means the scale of the potential threat from counterfeiting is unprecedented. As well as customising items to add or remove trade marks, or remove other design or copyright-protected features, the technology can be used with ease to reproduce moulds, castings and tooling generally. Large-scale commercial use of the technology by numerous individuals and smaller operators spread across the globe will cause practical difficulties for rights owners with limited resources seeking to enforce their rights. Obvious susceptible industries include toys and merchandising.

The potential threat to IP owners has not gone unnoticed. Earlier this year, the file-sharing site The Pirate Bay announced that it was offering new downloadable 3D files called ‘physibles’, including one of a 3D pirate ship. This development was picked up by the Anti-Counterfeiting Group and the media, with widespread recognition that internet file sharing that enables the printing of physical objects represents a major challenge for IP owners.

Guidance for IP owners

The steps that concerned IP rights owners can take in the short to medium term to minimise the risk include the following.

  • Ensuring that key parts of products are protected by registered IP rights – registered rights are easier to enforce than unregistered rights and registration may deter some copyists.
  • Clarifying and reminding employees of their obligations to keep information confidential.
  • Ensuring that non-disclosure agreements are in place before sharing designs with suppliers, contractors or other third parties.
  • Implementing technical methods to protect relevant design files.

Although it is sensible to exercise control over design information, to minimise it being shared without permission, products can, of course, be reverse engineered and the resulting design files shared instead. Thus, businesses might also look for other ways to tackle the threat, eg lobbying for amendments to legislation to remove the personal and non-commercial use exceptions for certain rights, or seeking to expand the scope of copyright protection. The liability of larger players in the industry, such as those hosting file-sharing web sites, will come under scrutiny as businesses seek to take action against such sites along the same lines as the film and music industry did. Provisions in the Digital Economy Act 2010 for blocking injunctions against such sites can also be relied upon.

Rights holders’ strategies for taking action may also need to change, eg reassessment of the cost-effectiveness of enforcement against multiple smaller infringers, and use of the Patents County Court and proposed IP small claims procedure in straightforward cases to achieve swift resolution and deter other infringers. In PR terms, as rights holders seek increasingly to highlight the cachet inherent in obtaining the genuine article, the quality of products and the power of brands may take on greater significance for consumers.

Alongside the concerns of IP owners, there are, of course, legitimate fears that changes in the law would constrain the use and development of 3D printing technology. Certainly, the industry is likely to resist greater protection for rights holders. How this will be reconciled is an open question. One approach might be for rights holders to get involved with the design communities, follow more closely the developments in the technology, decide what they may be prepared to share themselves, turn customers’ ideas into new products, and enable consumers to customise products in ways that are commercially acceptable. The possibilities for experiment and innovation could give businesses that embrace the technology a valuable advantage. In any event, commercial perspectives will have to evolve because the 3D printing revolution is underway, and bringing with it considerable opportunities for exploitation, legitimate or otherwise.