3D printing or additive manufacturing processes in general, offer not only a wide range of new possibilities for designing products, but also for revolutionizing their distribution channels. The German Railway Company "Deutsche Bahn" uses 3D printing to digitally supply spare parts to various maintenance sites. As the required spare parts are produced on site directly by 3D printers, transport routes and delivery times are eliminated. Just-in-time delivery becomes just-in-time production.
3D printers for home use are now available for less than USD 1,000, thus allowing private individuals to produce their own 3D objects. These techniques are especially attractive for generating spare parts e.g. for restauration of an old car. All a private individual needs is a CAD file including all the design details of the part to be printed. The CAD file can be created manually in a CAD program, or by scanning an object
in three dimensions. Whilst 3D scanners have yet to find their way into the living room, Sony has recently introduced a new smartphone that can perform a 3D scan with its camera and generate a respective CAD file. The easiest way to create spare parts with a home 3D printer, however, is to download a preexisting CAD file from a website like www.thinkiverse.com.
This new digital distribution scheme cause some issues for proprietors of IP rights like patents, trademarks and designs. On the one hand, the German codes for patent, trademark and design law include a privilege for noncommercial use of an IP-protected product, meaning that a private individual who uses a 3D printer to create a patent protected product for their own needs, cannot be held responsible for patent infringement. On the other hand, the distributor of CAD files, e.g. the provider of a website offering the CAD files for download, does not commit a direct patent infringement, since the protected subject matter is not the CAD data file but the final resultant product. It is even not clear from existing German case law, whether a website provider offering CAD files is responsible for an indirect patent infringement. Indirect infringement would require that the website provider offer means that refer to an essential element of the invention; to date, the German Federal Court of Justice ("Bundesgerichtshof" BGH) holds that such a means must be a physical component, which a CAD file is not.
With regard to registered designs, the BGH dealt in a judgment of April 7th, 2011 (docket no.: I ZR 56/09) with the question of whether a two-dimensional representation of a registered threedimensional design constitutes a direct infringement. In the underlying case, the German railway company "Deutsche Bahn" owned a registered design for its InterCityExpress (ICE) train. An engineering office distributed brochures, in which they offered R&D services for the railway industry thereby citing a picture of the protected ICE train. The BGH concluded that such a representation of the protected design is a use of the design, which is only allowed with the consent of the design holder. As Deutsche Bahn had not permitted the use of the design, the engineering office committed a direct infringement.
Websites offering CAD files for download usually also show a twodimensional representation of the content of the CAD file, which in turn is a representation of the product to be printed. Following the above case law, such a representation itself would seem to constitute a direct design infringement and thus provides a better route for companies to effectively protect their innovations.
When it comes to design protection strategies for spare parts, an important difference between European and German design law should be considered. The European Community Design Regulation includes a so-called Repair Clause (Art. 110 CDR). Accordingly, a Community Design shall not exist for a design which constitutes a component part (e.g. a side mirror) of a complex product (e.g. a car), if the purpose of this design is the repair of that complex product so as to restore its original appearance (must-match). In other words: a Community design protecting the side mirror, is not enforceable against a third party offering the identical mirror for the purpose of repairing the car in order to restore the car's original appearance.
It is important to know, however, that such a repair clause does not exist in German design law. A registered German design thus should allow for companies that develop and sell complex products and spare parts for these products, to act against distributors of CAD files representing the spare parts. This is a clear incentive to file for a national German design registration instead of, or at least in addition to, a European Community Design; in particular, in view of the continuing improvement of 3D printing technology. Innovative companies should not only protect their products by patents, but also file for registered German national designs, which according to the present case law are easier to enforce against internet distribution of CAD files.