[Guestpost]: IP implications of 3D printing, a new study

The use, adoption and application of 3D printing has increased rapidly in recent times, particularly in the health sector during the outbreak of the Covid-19 pandemic with schools, universities, organisations and individuals uniting to produce personal protective equipment (PPE), and life-saving respiratory valves. Recognising this growth in 3D printing, the European Commission published specific guidance in April 2020 to enable manufacturers to comply with the applicable EU law. Our Kat friend, Professor Dinusha Mendis, of CIPPM fame provides us with a summary of the conclusions from their timely European Commission study: ‘The Intellectual Property Implications of the Development of Industrial 3D Printing’. 

Here is what Dinusha says about the project: 

I led this project together with a team of experts from UK, Germany, Finland and Austria drawn from the fields of intellectual property, policy, empirical methods and industry. The team included Prof Dr Jan Bernd Nordemann, Associate Professor Rosa Maria Ballardini, Mr Hans Brorsen, Dr Maria Del Carmen Calatrava Moreno, Associate Professor Julie Robson and Professor Phill Dickens. The final report was published in April 2020 and explores 3D printing and intellectual property rights (IPRs), as well as considering trade secrets, contract law and database rights, in the context of the ‘3D printing process’ model: 

The team also interviewed 42 industry stakeholders from across the EU, including large multinational companies and SMEs and conducted an expert round-table and workshop at the European Commission to help fine-tune the conclusions and recommendations.

Conclusions and recommendations 

A summary of the main conclusions and recommendations of the Study are set out below. Some ‘take-away’ findings and conclusions are set out initially, before providing further detail. [A full summary can be found at p.177 of the report].

• Combining the responses of the 42 industries interviewed together with the legal analysis, it is clear that the protection of CAD files and 3D models need further clarity;
• The law surrounding the hardware used for 3D printing is well developed and 3D printing industries can confidently move ahead without worrying about IP laws. On the other hand, the law relating to 3D printing materials, needs further clarification;
• There is some confusion amongst 3D printing industries as to the protection of (design) data although from an IP law perspective, the position is clear (data per se cannot be protected under the 4 main IPRs, unless it comes within database rights, trade secrets or contract); 
• Whist 3D printing at home can come under the ‘private use’ defence, engaging in commercial activity in return for a remuneration will clearly defeat this exception;
• As with other technologies, sharing, hosting, downloading (CAD) files or indeed printing and distributing them without the IP holder’s consent will lead to clear infringement. However, commissioning a bureau service or a public service to 3D print a product is not as clear-cut. For example, 3D printing within a university library for private study is different to commissioning a 3D printing company to print your CAD file. In such cases, the IP rights of both the client and company needs further consideration;
• The good news is that licensing of CAD files has the potential to create new business models reducing the barriers to entry for start-ups and SMEs;
• Blockchain has a role to play in 3D printing although according to our 42 interviewees. it is undeveloped and has some way to go until it can be successfully utilised in industry.

CAD files, 3D model, design data, hardware and materials – can they be protected?

A Computer-Aided Design (CAD) file is the ‘vessel’ that carries the 3D model. Yet, the protection of the CAD file is the most problematic. Whilst it appears ineligible for protection under EU design law and claims are unclear under patent law, its protection under copyright law could potentially be considered a computer program, although this remains controversial. However, under trade mark law, a CAD file can be considered a ‘good’ under Class 9 if it can be downloaded, and – if they are provided as a non-downloadable service - CAD files can be a ‘service’ under Class 41.  

On the other hand, the position in relation to design data [‘numerical representation of how a given model looks and what it consists of’] is very clear, as IP law does not protect data per se. Sui generis database right, trade secrets and contract law, play a role in protecting data and databases, but the interviewees found the protection of design data to be confusing and called for further clarification and awareness.

Separate to the CAD file and design data, is the 3D model where the position remains unclear at present. Whilst under copyright law, the 3D model can be seen as a distinct ‘work’ separate from the resulting physical product, the law in this regard needs further clarification. In patent law, it is also unclear, based on the current practice of the patent offices, whether a 3D model included in a CAD file can be accepted as a digital representation of an invention in the same way as the textual description of a claim. The 3D model should fulfil the requirements for design protection, although there is room for further clarity. Under trade mark laws, the most relevant protection as a three-dimensional mark will be difficult to achieve for most 3D models.

The position in relation to 3D printing hardware, such as 3D printers and 3D scanners, is very clear with patent, design, trade mark and trade secret laws applying to inventions, as well as the appearance of the product and signs. The law in relation to the protection of 3D printing materials, has also been developed over many years and once again current patent, trade mark and trade secret laws apply. However, there is a need for clarity in protecting digital materials, particularly those which transform shape during the printing process whilst there is some controversy in protecting new bio-materials. Under design law, 3D printing materials may be a feature of the appearance of a product or a part of a product thereby leading to design protection.

3D printing at home, in a bureau service or library 

In considering the end users, the team explored implications for IP arising from (a) home 3D printing; (b) printing in a bureau service or public library; and (c) sharing CAD files on online platforms. The team considered various exceptions and limitations, as detailed in the report. The summary below is given from the perspective of private use [which, however, does not apply in the UK]. 

The Study concluded that home 3D printing activities can, in principle, benefit from the EU ‘private use’ exception, particularly under patent law, copyright and designs. However, if a person routinely uses it, for instance, as part of their professional activity or commercial activity in return for a remuneration, then the exception will be defeated. 

How about a 3D CAT File?!
Image: Brian Costelloe

On the contrary, 3D printing or scanning at a bureau or other public service will likely fall outside the private use exception. For example, under patent law, the private and non-commercial use exception cannot be licensed to third parties other than the person engaging in private and non-commercial activities. There is also the question of whether the private use defence can be invoked when commercial or educational services provide the required equipment and materials to enable private users to print (infringing) objects themselves. Under European patent law this does not seem possible as, those who knowingly supply third parties may still be liable for indirect patent infringement. Under copyright and design laws, ‘commissioning’ a bureau service to carry out the printing – in exchange for remuneration – may defeat the exception.

In the context of sharing CAD files, if they are shared with a family member, it’s likely to be private use, although uploading to a publicly accessible website will defeat the exception, as would be the case with any IP protected content. 

Some interviewees highlighted the lack of clarity for users as to when they can rely on exceptions, which impacts the uptake of 3D printing.

3D printing and infringing scenarios 

The Study considers the current legal status of four infringing scenarios; (a) designing a CAD file; (b) sharing a CAD file; (c) printing a CAD file; and (d) ISP liability.

Designing a CAD file from ‘scratch’ will not infringe IP rights.  

Sharing, hosting and downloading a CAD file without the IPR owner’s consent will infringe. It is unclear whether re-creating an existing product through 3D scanning leads to a new IP right or infringes existing IP rights. At present, the reach of IP rights (particularly trade marks) does not extend to non-commercial infringement which nevertheless has the potential to cause substantial commercial damage to IP owners. If such activities lead to market failure in the future, due to unauthorised use of trade marks, then the law might have to be reviewed to close this protection gap.  

Printing and distributing the 3D model (to the public) without the IPR holder’s consent will constitute an infringement.  

Intermediaries will be well placed to effectively stop infringements and prevent new infringements in most cases, where illegal CAD files or illegal 3D prints are disseminated. 

The future – licensing, traceability and new business models

The industry interviews highlighted that licensing of CAD files has the potential to create new business models reducing the barriers to entry for start-ups and SMEs, and affecting diverse types of actors and different types of companies. On the other hand, traceability systems (such as blockchain) were still considered to be underdeveloped with the potential to become more important in future years as 3D printing continues to grow. Until then, SMEs and industries will benefit from clear and affordable technological solutions.