Our last post talked about 3D printing technology, what it is, and its relation with copyright laws. In this post, we continue the examination of the application of other IP laws interlocked with 3D printing.
Patents:
Patents are exclusive rights granted to the inventor of a novel, non-obvious, and industrially useful invention. Patent law is designed to protect such inventors from someone using, modifying, distributing, or selling the invention without the authorization of the patent holder. The ease with which 3D printing enables us to create a product poses both as both an opportunity as well as a challenge for inventors.
Patents in the field of 3D printing mostly relate to three main aspects:
1. Materials used for printing – for example, 3D Systems’ (the first company to patent a 3D printing technology) patent for a “Non-Isocyanate Polyurethane Inks for 3D Printing” which allow for a more ecologically friendly printing material as well as improved chemical and thermal resistance and water absorption[1];
2. Processes used in the printing of a 3D object – for example, IBM’s patent for “Methods and Systems for Verifying and Modifying a 3D Printing Process”[2]; or Amazon’s “Method of 3D Printing with Finishing Tool”[3].
3.The printed object itself – there have been various patents granted for implantable devices, prosthetics, as well as objects to be used by the aerospace, automotive, and construction industry.
However, if an invention, whether it be created through traditional means or printed through 3D printing technology, is protected by a patent, the patent holder can institute a suit for infringement should a person attempt to 3D print the patented object without permission or a license.
In India, the Patents Act, 1970 protects any invention registered as a patent from infringement if it is made, used, offered for sale, sold or imported without the permission of the patent holder under Section 48 of the Act. Under Section 108(1) of the Act, the court can grant relief for a violation or infringement of the patent including passing an injunction, an order for damages, or ordering for the seizure or destruction of any goods infringing upon the patent.
The European Union grants patents for all inventions which are new, involve an inventive step, and have an industrial application. While aesthetic creations are expressly excluded from the grant of patents through Article 52 (2)(b) of the European Patent Convention, the law allows for the protection of 3D printing technology which fulfills the above three conditions for patentability (i.e., the invention is new, involves an inventive step and has industrial application).
In March of this year, there arose an interesting case of possible patent infringement. When the Coronavirus pandemic had just gripped Italy in all its gore, two engineers decided to 3D print a vitally essential valve used in breathing devices for critical coronavirus patients. They managed to make over 100 valves in just a day. However, the invention was patented and the original holder of the patent refused to share the design file to be fed into the 3D printer. Thus, the two engineers in this case reverse-engineered the product. Despite this, no suit of infringement was instituted against the two engineers.[4]
Designs:
Design rights protect the shape, aesthetics, and ornamental aspects of a good, either wholly or in part. The Statue of Liberty in New York and Apple’s iPhone are famous examples of registered designs. It would, thus, come as no surprise that an object printed with the help of 3D printing can also be protected under design law, especially when 3D printing allows us to develop highly complex structures with fairly simple steps.
However, should the product protected as a registered design be released to the market or created and sold by any person, there would lie an action for design infringement of the 3D printed object. Infringement can also take place if the CAD file, which would contain the specific details of how to recreate the product, is released into the public or if it is acquired illegally by any person. Should the infringement prove successful, however, it can lead to markets being flooded with the infringing product as 3D printing allows for unlimited copies of the goods to be made.
It must be noted, though, that the private use or creation of a registered design would not infringe any design rights. The same stands true in the case of a copyright infringement allegation. Non-commercial use is not an infringement of these two rights. However, the EU Court of Justice has held that to escape any liability, the person who has obtained a copy of the copyrighted material must have obtained the same from a lawful source.[5]
In the EU, Directive 98/71/EC or the Design Directive governs design legislation. Design rights in EU not only protect the shape of the object, but also the lines, contours, colors, and texture of the product. A ‘product’, as defined in the Directive, expressly excludes computer programmes under its definition, thus also excluding a CAD file from being registered as a design. Protection can, however, be extended to products derived from utilizing the CAD file for 3D printing.
Trademarks:
A trademark is a mark on goods or services distinguishing one individual/company’s goods or services from another’s. It can be granted for words, phrases, slogans as well as images and shapes. The most famous shape mark registered as a trademark is that of Coca Cola for the shape of its bottles.
3D printing presents more of an issue rather than an opportunity for trademark owners. For one, 3D printing allows one to mass-produce the good which contains the registered trademark and sell it on a large scale. Secondly, it also allows for the recreation of the registered shape mark. Additionally, if a product’s CAD file is available online, consumers would prefer using this file and printing the good for themselves in any quantity they wish to rather than buy it from a lawful source.
As noted by one IP lawyer, 3D printing would undermine one of the key functions of a trademark – that of indicating the origin of the good or service.[6] If consumers would have access to a product’s CAD files, the ‘origin’ of the product would lie within the four walls within which their 3D printer is placed.
In India, the Trade Marks Act, 1999 does not deal with a situation of the creation of a trademark. However, the Act more than sufficiently deals with the infringement of trademarks. Section 29 of the Act deals with a situation of infringement of trademark in the course of trade by a person not authorized to use such a mark or who uses a mark deceptively similar to the registered mark. The words ‘in the course of trade’ clears the fact that using the mark for non-commercial, personal use is not a violation of the trademark.
There lies a similar position with respect to trademark laws globally. While 3D printed products are not protected expressly in any legislation, trademark law has developed the world over to sufficiently protect trademarks and prevent their infringement by the use of this modern technology.
Conclusion
Currently, the IP regime the world over seems to be able to have embraced the technology of 3D printing and can be said to be sufficient to battle the intricacies of the use or misuse of such technology. While 3D printing worries us to the possibility of markets being flooded with counterfeit goods infringing upon or passing off goods with registered designs, patents, or inherent copyright, presently investment in the technology can prove expensive for individuals and smaller companies, thereby reducing the chances of us seeing a prevalence of counterfeit 3D printed goods. As such, 3D printing is a relatively smaller phenomenon, yet it is only expected to grow in the future. Thus, while cases of infringement through 3D printing technology are not highly prevalent today, this and other related issues are bound to rise with time. At the same time, our current IP regime offers a wide scope of protection for those adopting 3D printing technology.
[1] Bo Wu, Jeffery Banning, Pingyong Xu, Non-Isocyanate Polyurethane Inks for 3D Printing, US20170260418A1, United States Patent.
[2] David B. Lection, Sarbajit K. Rakshit, John D. Wilson, Methods and Systems for Verifying and Modifying a 3D Printing Process, 20180059644, United States Patent.
[3] Barnet, Aaron Takayanagi, Liang, Nancy Yi, Method of 3D printing with finishing tool, 10195666, United States Patent.
[4] Jason Rantanen, 3D Printing, Patent Infringement, and the Coronavirus, PATENTLYO (March 19, 2020), https://patentlyo.com/patent/2020/03/printing-infringement-coronavirus.html.
[5] CJEU Case C-435/12, ACI Adam BV and Others, ECLI: EU: C: 2014: 254.
[6] Yashvardhan Rana, Trademark issues regarding 3D printing: A new dimension of IP infringement, The Trademark Lawyer, Issue 4 (2020).
