By Samuel Digirolamo, Husch Blackwell LLP
3D printing has rapidly advanced from the prototyping stage to producing finished goods by merely developing an electronic digital blueprint of the product. This digital blueprint can be created from various software applications as well as through the use of known 3D scanners. Once the digital blueprint is created, it is electronically transferred to the 3D printer for starting the printing/manufacturing process.
Although 3D printing will have a beneficial impact on manufacturing, such as eliminating molds and set up tooling, reducing cycle times, reducing shipping and production costs, reducing warehousing costs and the overall logistic footprint of the manufacturer, it will likewise impact the intellectual property protection associated with the printed products. While 3D printing allows manufacturers to tailor and customize products for a particular customer and enables mass customization without constantly redesigning and modifying traditional molds and other tooling, it also enables anyone to recreate any existing product by merely scanning the product and developing a digital blueprint for that particular product. Once a digital blueprint is created, anyone can use that particular digital blueprint to make, use, offer for sale, sell or distribute that product without permission from the manufacturer or the original owner. One of the greatest intellectual property concerns will be the greater ease at which counterfeit goods, replacement parts and infringing products can be reproduced using 3D printing technology.
If your product is covered by an existing patent, who will be the infringer? Certainly, the third party fabricator or whoever 3D prints the product will be a direct infringer of the patent. But what about the person who scans the product and creates the digital blueprint, or the person who takes the digital blueprint and merely distributes it to a third party? Since the creator of the digital blueprint is not actually printing the product, that person is not making, using, offering for sale or selling the product. Depending upon other circumstances such as knowledge of the patent, other non-infringing uses of the digital blueprint, and the intent of the person creating the digital blueprint, to name a few, the person creating the digital blueprint may be an indirect infringer or an inducer, but finding that person and then proving the specific elements for indirect infringement may be difficult.
As a result, although the U.S. Patent laws are equally applicable to 3D printed products, we must now consider alternative ways to structure patent claims so that we cannot only capture the actual third party fabricator of the product but, more importantly, also capture the person creating the digital blueprint which is used in the 3D printer to print the product. As such, we must now consider not only apparatus claims, but method claims directed specifically to the specific 3D printing method used to print the product; scanning claims directed to the scanning steps involved in scanning the product that will ultimately reproduce the product, including the storing, processor and printing instructions; 3D modeling claims; product by process claims; and claims directed specifically to the digital blueprint itself. If the product is easily susceptible to scanning and being reproduced via 3D printing, then our patent claims should likewise be so directed so that we can more easily capture the middle man, namely, the scanner and creator of the digital blueprint, as a direct infringer. Patent claims should build multiple layers of protection for the particular product of concern.
3D printing will also have a major impact on trademark infringement because producing counterfeit goods will become a lot easier. This is particularly true if the manufacturer molds their trademark directly into the product. Companies choose to mold their trademarks directly into their goods for various reasons. For example, some think that this procedure gives the perception of higher quality and actually saves the ongoing cost of printing labels, stickers and other specimens for attaching to the particular goods or the packaging associated therewith. When you mold your mark directly into your goods, the mark inherently becomes a part of the product produced. Although molding your trademark directly into your goods has certain advantages, it also enables a counterfeiter to easily scan your product and then reproduce an almost identical copy of your product, depending upon the type of 3D printer and materials used in the process.
This molding technique now becomes part of the trademark calculous. For example, 3D printing affords the possibility of creating colorful and intricate designs into your trademarks and into your products. 3D printer capabilities can now print multiple colors as well as multiple materials into a single integrated product and this can help create eye-catching trademarks that are homogeneously incorporated into the product itself. As 3D printing techniques advance, it will become easier for counterfeiters to scan and copy your goods. Products with integral trademarks may no longer prove to be a barrier to effective counterfeiting.
3D scanners are already on the market that can scan the physical configuration of your product including intricate designs. The scan can then be used to produce the digital blueprint that will be used to reproduce your product, molded trademark and all, at a very low cost to the counterfeiter. Depending upon the type of 3D printer and materials used by a counterfeiter, exactly duplicating these intricate designs may be difficult and will certainly help to distinguish counterfeit goods from your actual goods. Remember, even though the scanner can capture intricate designs, the right printer and materials must be used to reproduce an identical product.
If the counterfeiter is successful in reproducing a substantially identical product, you now have classic trademark infringement by counterfeiting and if the counterfeiter uses your trademark on the product, you at least have a cause of action against the counterfeiter for trademark infringement. In reality, we now need to be more mindful of the counterfeiting scenario and we need to be more vigilant in the marketplace.
In addition, many companies are now incorporating and embedding specific identification features into their products, such as specific codes, ID markers, nanoparticles, holograms or other devices so that they can easily recognize their products from counterfeit goods. The specific ID markers, if properly embedded into the product, cannot necessarily be scanned and reproduced accurately. If your product is susceptible to 3D printing, this is another area of protection that must be reviewed and evaluated so as to afford the original manufacturer the best possible protection down the road. For example, multiple layers of protection should be evaluated for a specific product such as covering the trade dress or product configuration of the product as well so that if counterfeiting occurs, the manufacturer has multiple weapons at its disposal to go after the counterfeiter.
Copyright issues also play an important role in 3D printing a product. Copyright laws protect artistic works by guaranteeing their authors the right to control how those works are reproduced, distributed, modified and so forth. Many types of works of art may be appropriate for copyright infringement by 3D printers. For example, sculptural works and works that contain intricate ornamental designs are most likely candidates for copyright protection. Using a 3D printer to recreate a copyrighted work or even a derivative of a copyrighted work is textbook copyright infringement. 3D printing has not created new copyright infringement issues, but it has instead allowed for such infringements to occur more easily.
Remember that your original designs, engineering drawings, CAD drawings and files, and the electronic instructions sent to the 3D printer (your product digital blueprint) are all protected by copyright. It is the manufacturer’s/owner’s responsibility to ensure that they own all copyrights and all intellectual property rights to a particular product. This comes into play when the manufacturer contracts to third party vendors to develop specific aspects of a particular product, such as software code, product designs, and other features of the particular product.
All arrangements with third party vendors should be via a written contract and that contract should include terms and conditions whereby the manufacturer/owner of the product will own all intellectual property rights developed by the third party vendor associated with that particular product. In addition, if the product is susceptible to 3D printing, your contract should also include ownership of all 3D printer instructions, or digital blueprints created by the third party vendor for the product. Protecting the 3D printer instructions creates another layer of IP protection.
These simple steps can offer great value down the road if the product is reproduced by a counterfeiter. If these terms and conditions are not set forth in your written agreement with third party vendors, under copyright law, the third party vendor owns all copyrights to the software, engineering drawings, CAD files, sketches and digital blueprints of your product, even though you have paid the third party vendor for its services. Enforcement of copyright violations is relatively straightforward and if you own all rights to the intellectual property associated with your product including the copyright rights, enforcement of such rights is a lot easier.
Remember, a scan of your product and its associated digital blueprint can be transmitted around the world within seconds. In addition, digital blueprints can be uploaded to a wide variety of existing online websites, 3D printing repositories, and databases which offer the downloading of digital blueprints for a wide variety of different types of products. One such website is Shapeways. Once your digital blueprint is electronically transmitted, finding the infringer and enforcing your IP rights becomes extremely difficult, particularly when the infringer is reproducing your product in their basement, garage, or in a small shop operation.
With any new technology, intellectual property protection and enforcement must be reviewed in the context of the new technology and its accessibility to the general public. In the age of 3D printing, the best IP protection strategy will be two fold, namely, (1) multiple layers of protection for the product, and (2) increase vigilance in the marketplace. Multiple layers of IP protection can include the various patent, trademark and copyright protections discussed above including protection for the product configuration of the product, its trade dress, design patents, incorporating trademarks and logos into the product, and structuring patent claims to cover not only the apparatus itself, but the various methods of producing the product including digital blueprints and 3D printing instructions. Although every product will not justify such a vast and stringent IP protection strategy, important and/or money making products may warrant multiple layers of IP protection.
For additional information, please contact Samuel Digirolamo at Husch Blackwell LLP, 314-345-6225, or Samuel.Digirolamo@HuschBlackwell.com.