3D printing is now being used to create everything from personalized body parts to personalized bobbleheads. While the potential applications of 3D printing are immense, these applications also raise many legal questions, and create several challenges as organizations adapt to this new technology, particularly challenges related to the protection of intellectual property (IP).

3D printing, also known as “additive manufacturing”, is a process of creating a three-dimensional object from a digital model by successively “adding” together layers of material in the shape of a desired object. 3D printing is in contrast to traditional machining processes which are “subtractive” and rely on the removal of material.

Although having hallmarks of science fiction, 3D printing is actually based on technology developed as early as the late 1970s. The first patents for 3D printing as we currently know it were filed in the early 1980s. However, due to its cost and its industrial origins, 3D printing has only recently become an accessible technology. One traditional use of 3D printing has been in rapid prototyping, which allows a computer-aided design (CAD) file to be transformed, in short order, into a prototype of the actual object being designed. An obvious advantage of 3D printing is the ability to iterate during the design process by quickly creating a realistic model, making changes, and successively perfecting the design before investing in the actual manufacturing equipment.

More recently, due to increased availability and quality, along with a decrease in cost, 3D printing has caught the attention of hobbyists and consumers alike. The prominence of 3D printing has, in large part, been driven by this hobbyist market. Consequently, the hobbyist’s desire to create quirky objects like personalized bobblehead dolls or superhero action figures, or replicate commercial objects, could very well be driving a revolution in manufacturing, distribution, and inventory control.

Many believe that 3D printing will drastically change the way things are manufactured. Since 3D printing allows objects to be printed from a scan of the original or a CAD model of the design, manufacturing could become even more distributed with 3D printers being placed wherever a product is sold, with local demand being met by simply printing more when needed. If goods are being produced closer to where they are purchased, this could affect the countries in which one seeks IP protection. Depending on how distributed the manufacturing is, this could amount to either a more straightforward, or a more complex, IP strategy.

Along with distributed manufacturing are aspects of just-in-time production, customization, and replacement. It is not only conceivable that manufacturers will be able to print their products at the point of sale, but also be able to personalize the product to create a unique customer experience. Replacement parts could also become available in short order and in remote locations. For example, imagine being able to 3D print a critical part on an off-shore oil rig and mitigate costly downtime.

New business models may also be possible. Similar to digital music, we may face a world where only the IP is sold and distributed. For example, IP rights holders may be able to sell a licence to make their invention (i.e., the instructions) rather than have to invest in costly manufacturing and distribution. This could decrease the cost of entry for individuals and small or mid-sized entities. At the other end of the design cycle, parts for older or discontinued models could be “archived” by saving the digital file rather than the parts themselves.

Rapid prototyping, short design cycles, distributed production, customization and personalization will undoubtedly allow products to come to market much quicker than in the past. These benefits will also be more widely felt as 3D printing technology becomes cheaper, more accessible and faster. The IP system will need to keep up with these rapid developments.

If 3D printing proves to be this disruptive, many questions are left unanswered, such as how the use of 3D printing will be regulated, and whether current IP laws are sufficient to protect IP rights holders. The current IP framework is designed to control activity at key points in the traditional manufacturing and supply chains. Any time a disruptive technology comes onto the scene, the application of IP laws is challenged. This has been the case with the photocopier, the VCR, and, most recently, peer-to-peer file sharing over the Internet. Most of those technologies have presented the strongest challenge to copyright laws, and it is no different in the case of 3D printing.

COPYRIGHT

The Copyright Act (Canada) expressly states that, subject to certain exceptions, it is not an infringement to reproduce the design of an article which has a utilitarian function by making a copy of that article (or a drawing of that article) where the original article was reproduced in a quantity greater than 50. Essentially, the Copyright Act denies protection to designs which have been industrially applied.

From a practical perspective, most consumer products are captured by this exception to infringement. However, the exception does not extend to artistic works or those products which are produced in a quantity less than 50. So, for example, a local artisan who makes “one of a kind” jewelry or pottery could enjoin the reproduction of her designs. By contrast, a large manufacturer of cookware might not.

Copyright would, subject to the usual conditions, subsist in blueprints or other plans of a manufacturer related to an article. Accordingly, a rights holder could enjoin the reproduction and distribution of such plans.

We are accustomed to situations related to copying and illegal sharing of music, video, and software files over the Internet, as well as the efforts of rights holders and industry bodies to curtail or stop those activities. Those cases focused almost exclusively on copyright, and related rights, as the main IP existing in those classes of works. However, the type of reproduction which is possible as a result of 3D printing means that a broader range of products may be copied. As a result, other IP rights could come into play.

PATENTS

There is often some confusion between the impact of patents for 3D printing itself, i.e., how 3D printing works, and the impact of 3D printing on patented objects. These are very different considerations.

First, as discussed above, 3D printing is not exactly new. The first meaningful developments were in the late 1970s and early 1980s and any potentially dominating patents have expired. Even a second wave of patented improvements from the early 1990s is set to expire in the next year or two. Therefore, the impact of 3D printing patents will be different than comparable “replication” technologies such as photocopying and instant film where the technology remained expensive until the initial patents expired. In other words, patents should not slow down the evolution of 3D printing itself.

Instead, recent advances and a more competitive market have made 3D printing cheaper and more accessible. There could still be opportunities to secure valuable patent protection, but not necessarily in the dominating sense. When it comes to patents, 3D printing is thus more comparable to desktop publishing or digital music. Consequently, patents for 3D printing technology should not have the same impact as the ability to 3D print patented objects.

3D printing has created the ability to print a part or object using digital CAD files or even by scanning the desired object. This ability is the biggest threat to patent protection. If something is patented, and capable of being 3D printed, presumably anyone can make their own copy and infringe that patent. Many feel that this would allow the consumer to conveniently reproduce patented objects, in the same way consumers can download, burn, rip, and share digital music.

Similar to what happened in the music industry, some fear that this means that a patentee will need to sue potential customers, i.e., the consumers. Perhaps patentees will need to protect the way in which objects are 3D printed, such as the software instructions. If these instructions are being distributed to the consumer, the patentee could then enforce its patent against the distributor of the software. The issue is that the patent system does not currently contemplate this type of protection. Will a new form of patent protection be needed? At the very least, the impact of 3D printing on an invention should be considered when drafting a patent application.

With the ability to scan and 3D print an object, another consideration is how the IP system will deal with personal copies. For example, should a company be able to make an emergency back-up part for critical machinery? Similarly, should a consumer be able to make a copy of a hand tool to have a spare in the car? Perhaps a personal copy provision will need to be considered for patented objects, similar to copyright.

3D printing, at least for the consumer, is currently limited to relatively simple objects. Therefore, perhaps the threat is not as severe as sometimes proclaimed. Also, does the average consumer have access to the necessary material to make a legitimate copy of a patented object? The thought of being up on a 40-foot ladder that was 3D printed in the garage earlier that day is not exactly comforting.

INDUSTRIAL DESIGNS

Design protection could very well be the way to protect against infringements facilitated by 3D printing. Designs generally protect the “look and feel” of an object, such as its shape, pattern, ornamentation, and configuration. Since 3D printing enables 3D objects to be reproduced, assuming the reproduction has the same design, a design patent or industrial design registration could be the most cost-effective way to obtain IP protection for a physical product. Companies that do not traditionally use design protection, most notably when the aesthetics of the object are not important, should be giving design protection a closer look. There is no specific unregistered design protection available under Canadian law.

Designs also have limitations that should be carefully considered. The protection provided in a design is typically quite rigid in that for infringement to occur, the infringing object must be substantially the same in its look and feel as the protected design. One of the major benefits of 3D printing is its ability to customize the design to suit a particular user, for example, a hand tool that fits to a particular consumer’s hand. This benefit is a potential threat to design protection since customization could change the design just enough to avoid infringement. Consequently, variants shown in the design and what portions of the object are protected, should be more carefully considered. For example, by envisioning how the design could change when customized, a design application can be tailored to either capture suitable variants or protect the portions of the object that are unlikely to change with the customization.

TRADE-MARKS

As previously mentioned, there is no specific protection under Canadian law for unregistered designs. However, in the minds of consumers, designs often become source identifiers and may serve a trade-mark function. Accordingly, if a rights holder is able to demonstrate that a particular design enjoys sufficient reputation as to warrant common law trade-mark protection, it might be in a position to enjoin the sale or offering for sale of articles which are confusingly similar to the original article on the basis of passing off.

Designs can also be the subject of a Canadian trade-mark registration. However, to register a three-dimensional design of an object, the Canadian Intellectual Property Office requires that an applicant establish that the design has acquired distinctiveness (or secondary meaning) in Canada. This is typically accomplished by providing evidence of significant sales, and advertising, of products bearing that design.

Obviously, to the extent that a 3D printed article displays the trade-mark of another, for example, embedded in or embossed on the article, the sale or offering for sale of that article would violate the rights of the trade-mark owner or its licensees. However, to the extent the product is printed by the ultimate user, enforcement may require legal proceedings against individual (and prospective) customers.

REALITY CHECK

Disruptive technologies have threatened IP rights before but many have found ways to flourish within a new environment created by the disruptive technologies. The same should hold for 3D printing, as long as the IP system can provide the adequate protection needed.

For now, 3D printing really only affects the producers of simple objects and therefore the idea that anything can be 3D printed may be premature. For these relatively simple but patentable objects, it is worth considering how the object is made, not just how it looks or how it operates. Designs should also be given additional consideration, even for products and parts that normally would not warrant a consideration of design protection. Producers may also want to educate consumers on the advantages of the “genuine” article and incorporate mechanisms to identify “authentic” articles, for example, embossing a trade-mark into the product where appropriate.