The 3D revolution: IP issues arising from the proliferation of 3D printing
3D printing is an exciting technology that is revolutionizing new ways of doing business and bringing products to the market, but it is catching the eyes of lawyers and regulators as IP issues arise.
3D printing is any of various techniques used to make a three-dimensional object, which can be of almost any shape or geometry and is produced from a blueprint. A user can independently create the blueprint with a computer added design (CAD) program running on a computer or with a 3D scanner by scanning an existing object. The blueprint can be widely distributed just like any other computer file to others via e-mails or websites. People not only can use 3D printing to create new objects, such as new toys and new tools, but also can replicate existing objects.
Some 3D printers are now being sold for only hundreds of dollars, and more key 3D manufacturing components and materials are now readily available. The open-source community has also embraced 3D printing technology. In light of these developments and the unique capability of 3D printing in easily creating objects, it is inevitable that 3D printing will result in the next great wave of innovation and bring up exciting opportunities; however, 3D printing also raises complex intellectual property issues, in particular copyright and patents issues.
One main IP challenge with 3D printing and IP protection is the difficulty to enforce IP rights in connection with widespread personal manufacturing of copyrighted or patented objects in the privacy of the individuals’ own homes without authorization from the patent or copyright owners. It will be extremely difficult to monitor home use of 3D printers and IP infringement may go widely unnoticed. For example, an individual may be able to use a 3D scanner to scan a patented or copyrighted object being sold on the market, create a blueprint using her personal computer, and then make the patented or copyrighted object in her own home.
Also, as a result of some blueprint file sharing websites, the capability to generate wide-scale IP infringement by 3D printing is exponentially increased. The same thing that happened with peer-to-peer music file sharing may happen with designs for 3D objects that are shared electronically and printed at home. It is difficult to monitor this type of IP infringement and take action against the infringers.
Another challenge is the determination of who owns the IP right in connection with 3D printing. Is it the designer of the design, the drafter who creates the blueprint based on the design, or the operator who operates the 3D printer in making the final object based on the blueprint? It is very possible that for complex 3D-printed objects, the designer, drafter, and operator may all have some rights on the work. So it is advisable to have an express work-for-hire agreement or similar contract dictating who owns which property right, and who owns the ultimate object.
Companies should evaluate protection strategies and procedures in light of the emergence of 3D printing devices. All forms of intellectual property protection, including trademark, trade dress, and trade secret (e.g., with regard to CAD designs) that are not discussed above, should be considered for objects made via 3D printing, taking into account cost, duration of protection, and specific industry. Companies should periodically review existing policies to ensure that they are effective with respect to 3D printing, and police activity that may infringe their IP rights by monitoring online blueprint repositories, for example. Just like what happened in the past with regard to new technologies in areas such as personal computers, internet, and VCR, the laws will necessarily evolve to adapt to the nuanced issues raised by 3D printing through legislations and judicial interpretations. Companies and IP owners should also be ready to adapt and flourish in these new environments.
This post was written by Enshan Hong, partner at VLP and a member of the firm’s Intellectual Property Practice Group. He counsels a diverse group of clients ranging from start-ups to multinational corporations. Hong currently focuses his practice on preparation of opinions on patent validity and infringement issues; conducting IP due diligence investigations; counseling clients on issues related to the Hatch-Waxman Act; prosecuting patent applications; and representing clients in various post grant patent procedures including re-examination, reissue, inter partes review, and post grant review.
