3D printing poses a challenge to manufacturers by providing a means by which products or spare parts can be easily manufactured by competitors or customers. Generally, the law of copyright does not assist manufacturers because the making of a copy product does not infringe copyright where the copyright owner or a licensee has already made and sold the original product. There are exceptions (e.g. where the product is a work of artistic craftsmanship) but most manufacturers will not be able to rely on copyright protection.
In the absence of copyright protection, manufacturers will need to look elsewhere among the other intellectual property (IP) regimes and other areas of law to devise a strategy which reduces the risks posed by 3D printing. There are no easy answers but a customized IP strategy can make a difference.
Patents: the benefits of an innovation patent
A patent gives the owner a monopoly in relation to a product or process as claimed in the patent. Generally, any product is capable of being subject to patent protection provided it meets the requirements of novelty and inventive or innovative step in light of the prior art. In Australia there are two types of patent: a standard patent where the requirements are novelty and inventive step and which lasts for 20 years; and an innovation patent where the requirements are novelty and innovative step and which last for 8 years. There are detailed rules as to what is inventive or innovative but it is easier to meet the requirements to obtain an innovation patent.
Further, the procedures for applying for an innovation patent are quicker, easier and less expensive than the procedures involved in applying for a standard patent. This means that it is more commercially attractive for a manufacturer to consider patent protection. Small changes in the product can be sufficient to meet the innovative step requirement and the costs are much more manageable. Usually the reduced term of 8 years is not a problem because the commercial lifespan of the product is less than this.
In recent years, owners of innovation patents have had some significant success in enforcing them in the Australian courts.
A registered design protects the look or appearance of a product and is infringed where a product is made which is identical to, or substantially similar in overall impression to, the registered design without the licence of the owner. So a slavish copy of a product is likely to infringe a registered design. If the original product is scanned and a copy made by a process of 3D printing, it is likely to infringe the registered design covering the original product.
In the past, the registered design regime has been criticized because it has been relatively easy to avoid infringement by making minor changes to the product being made. But the process of scanning and 3D printing produces identical copies which are caught by the infringement test. So there may well be a increase in the use of the registered design system to protect against 3D printing.
Where a person makes an unauthorised copy of a product that person cannot sell that product using the trade mark of the original product owner. Ideally, the original product owner wants the customer to purchase only the genuine trade marked product and this gives the owner a commercial advantage. Ensuring that relevant product names are registered as trade marks makes it easier for them to be enforced.
But there are limitations as to what trade marks can achieve. It is not infringement for a trader to make a copy part and say that the part is “suitable for use with” or “compatible with” products sold under the trade mark. Thus, for example, a trader making coffee pods can say that the pods “are suitable for use with Nespresso coffee machines” but can not say they are “Nespresso coffee pods”.
The law of misleading or deceptive conduct can also be relied on where a trader makes misleading statements as to the origin of products. There is also scope for arguing that consumers are likely to be misled if, for example, representations are made as to the quality or source of products which are not true. Generally, the law relating to misleading or deceptive conduct is very wide ranging and may provide a remedy where copy products are being sold using dubious practices.
Another way in which a manufacturer can seek to control the manufacture of products or spare parts is by having appropriate restrictions in its contacts with customers. Obviously, this does not stop others in the market place who may choose to copy a product on the open market. But, for example, a restriction on a customer manufacturing its own spare parts, or procuring those parts from a third party, may preserve a valuable market. Care must be taken that any contractual provisions do not amount to an illegal restraint of trade or a breach of competition laws.
In summary, there are a number of options open to manufacturers to protect against loss of business which may result from the manufacture of copy products or spare parts whether by 3D printing or traditional means. Most proactively, by applying for innovation patents and registered designs a manufacturer can seek to keep the copiers at bay and preserve its market.
First published in AMT Magazine, Apr/May 2016