3D printing, otherwise known as “Additive Manufacturing”, is set to transform the landscape in which businesses in the manufacturing and design based industries operate.
Just some of the benefits of 3D printing compared to traditional manufacturing techniques include the fact that it allows the manufacture of most objects from prototype to end product in a matter of hours, results in lower shipping and packaging costs related to overseas parts suppliers, requires less human resources and allows the use of cheaper and sometimes more reliable raw materials (as well as reduced wastage of materials in the manufacturing process). 3D printing could ultimately lead to an on-demand manufacturing model, avoiding the need for warehouses filled up with stocks of products.
Weighing against the practical and economical advantages of this new technology however is the potential for loss of sales of genuine products caused by widespread 3D copying.
The impact that this type of copying could potentially have on the manufacturing and design based industries can be compared with the impact on the music and film industries caused by digital copying and digital downloads. Nonetheless, there is probably no need for immediate alarm as:
- 3D printing technology is still relatively expensive and therefore not readily accessible to the consumer market; and
- the marketplace is already dealing with the issue of low volume commercial copying through “small order” cheap manufacturers in, for example, China.
In future however, designers and manufacturers will need to be increasingly vigilant about protecting their intellectual property rights as a result of the challenges presented by 3D printing technology. This article explores some of the intellectual property rights that can be relied on in this sphere, together with practical steps that businesses can take to protect their intellectual property rights.
How does it work?
A 3D printer creates a 3D object using an additive process. This means deconstructing a virtual 3D model into 2D slices and then “printing” the 3D object by laying down layer upon layer of material such as titanium, plastic, powder or polymer. The multiple layers are gradually printed one on top of the other to create the finished item.
3D printing is considered distinct from traditional machining techniques (subtractive processes) which mostly rely on the removal of material by drilling, cutting etc. 3D printers can be used to make an incredibly broad range of items, ranging from static items such as sculptures and toys, items with movable parts such as bicycles, right through to complex industrial items.
Click here to view picture of a bicycle created using 3D printing technology.
The 3D model that is used for the basis of the 3D object to be printed can either be created from scratch using 3D modelling software, scanned into the computer using a 3D scanner, or downloaded from the internet. Sites such as Thingiverse (http://www.thingiverse.com/) and Shapeways (http://www.shapeways.com/) specialise in allowing uploading and sharing of object files. File-sharing sites such as the Pirate Bay are also increasingly offering such files, legitimately or otherwise.
At the present time, a good quality 3D printer costs approximately AUD$20,000 or more, but as 3D printers inevitably become cheaper and enter the mainstream, copying of 3D objects through 3D printing could feasibly become widespread.
We have become accustomed to cases about copying and illegal file sharing of music, videos and software over the internet, and the efforts of both industry bodies and IP owners to control that copying. Those cases focus almost exclusively on copyright as that is the main intellectual property right that exists in those types of works. The sophisticated copying that is possible as a result of 3D printing means that a far broader range of products may be copied, and consequently other areas of intellectual property law such as design rights and patents are likely to be tested in this sphere.
Registered design rights
Registered designs are protected in Australia under the Designs Act 2003 (DA). Registration of an application is straightforward and will occur after a preliminary formalities check.
Before a design registration can be enforced, the registration must be certified. It is at this stage that the validity of the design is tested. The test applied by the Registrar as part of the substantive examination is whether there is a “design” and whether the design is “novel and distinctive” as compared with the prior art base. This prior art base includes designs that have been used in Australia, or published in a document in Australia or overseas including disclosure in a published design application. In practice, this means a design application must be filed before a product is sold or promoted anywhere in the world.
The DA contains robust infringement provisions against designs which are “substantially similar in overall impression” as well as direct imitations. In practice however, relatively slight alterations to the design may be sufficient to avoid infringement, particularly where a number of similar products are already on the market.
The improved strength of registered design protection and the problems with relying on copyright and unfair competition type claims (see below) means that designers and manufacturers should register their designs to protect against digital copying.
However, design registrations only provide protection for 10 years from the date of filing and therefore cannot assist in the protection of older designs.
Click here to view picture of a 3D printed shoe.
While action in relation to illegal downloading and file sharing of music, videos and software over the internet focus almost exclusively on copyright, generally, this protection is not available in relation to industrial designs.
The Copyright Act 1968 (CA) expressly denies protection in relation to corresponding designs which have been industrially applied (generally, where more than 50 articles of the design have been produced) with some limited exceptions in relation to works of artistic craftsmanship.
Whether or not a work is a work of artistic craftsmanship depends on “the extent to which the particular work's artistic expression, in its form, is unconstrained by functional considerations”. The greater the requirements in a design brief to satisfy utilitarian considerations, the less scope to encourage substantial artistic effort. Works of artistic craftsmanship may include less utilitarian items such as jewellery or decorative fabrics, but most functional items won’t fall into this category even if they are attractive in appearance, including yacht hulls1, rabbit-shaped corkscrews2, and mass-produced furniture3.
The exception to copyright protection does not apply to a two-dimensional artistic work applied to a flat surface on a mass-produced article (such as a t-shirt or a wallpaper design) because two dimensional objects do not fall within the definition of “corresponding design” under the CA. This in theory allows certain copyright owners to benefit from dual protection, provided that they are able to secure a design registration, but is of little benefit to designers whose three-dimensional designs could be reproduced through 3D printing.
The result of the exclusion of copyright protection for industrially applied designs under the CA is that manufacturers and designers should always seek Registered Design protection over their designs where such protection is possible, as they risk losing copyright protection over the design as soon as it is industrially applied.
Click here to view picture of a 3D printed full colour model.
The Australian Consumer Law / Passing off
There is no specific unregistered design protection available under Australian law. This is in contrast to the position under English and European law where there is automatic protection for the internal or external shape or configuration of an original design, i.e. its three-dimensional shape.
In addition, copyright protection is not available under Australian law once a design has been industrially applied, other than for works of artistic craftsmanship. This is in contrast to New Zealand, France, and the US, among others, which all provide copyright protection for at least some industrially applied designs.
Furthermore, design protection is not well understood or utilised in Australia, and many designers do not become aware of the need to register designs until their product is already on the market and being copied, when it is too late to do so.
As a result, many designers have looked to the misleading and deceptive conduct provisions of the Australian Consumer Law or the tort of passing off as a fallback means to protect against copying of designs. However, recent attempts to prevent copying of product designs have been unsuccessful, at least where the knockoff products display differentiating brands from the original.
With this in mind, designers should seek registered design protection for any designs before either publication or manufacture that they do not want to leave vulnerable to digital of conventional copying.
A patent is a right that is granted for any device, substance, method or process that is new, inventive, and useful. It gives the patent owner exclusive rights to commercially exploit the invention for the life of the patent (20 years).
As with Registered Designs, patent protection is gained through registration with IP Australia, and the assessment of whether the invention is new, inventive and useful will be made during examination.
In this era of cutting-edge technology, it would be easy to assume that patent protection is only relevant to state of the art products, such as electronics and biotechnology. Given that the focus of 3D printing is the production of plastic and polymer objects, it might therefore seem unlikely that anything created by 3D printing would be likely to infringe a patent.
However, the reality is that a huge number of registered patents relate to simple everyday objects, such as kitchen and DIY gadgets. In addition, it should be borne in mind that a 3D printer may currently be used to replicate simple machines, not just solid objects. As 3D printing technology continues to develop, businesses are likely to become more reliant on patent protection to safeguard their complex products against the risk of copying.
Even if a design does not meet the inventive threshold for a standard patent, it may still be eligible for an innovation patent. This type of patent requires an innovative step (as opposed to an inventive step) to protect an incremental advance on existing technology. An innovative step exists when the invention is different from what is known before and the difference makes a substantial contribution to the working of the invention. An innovation patent is usually granted within a month of filing the complete application and the term of protection is 8 years as opposed to the 20 year protection granted to a standard patent.
We recommend that IP owners such as designers or manufacturers take the following practical steps to avoid their products being copied through 3D printing:
- obtain a Registered Design for the appearance of a product before it is industrially applied or published anywhere in the world;
- if you have a design application overseas, extend that application to Australia within 6 months of filing;
- seek advice on whether patent protection is available;
- ensure non-disclosure agreements are in place before design information is shared;
- incorporate “authentication mechanisms” in products, e.g. make use of trade marks, use security printing on packaging and issue certificates of authenticity where appropriate; and
- educate consumers about the advantages of “the genuine article”.
IP owners may need to revise their enforcement strategies, for example reconsidering the effectiveness of enforcing against multiple smaller infringers. IP owners may also wish to invest more resources in PR and advertising, building up their brand value and emphasising to consumers the importance of obtaining the “genuine article”.