Addressing infringement in the new 3D environment

As 3D printing goes mainstream, so does the risk of protected works being copied. However, an existing IP right – industrial design – could prove key to fighting infringement

Few recent innovations have the potential to shake up the IP world as much as the 3D printer. As several key patents expire and the technology goes mainstream, experts anticipate that within a decade it will be common to find a 3D printer in most households.

The process of 3D printing or additive manufacturing can be illustrated with a classic example. In order to form a hole, the regular – substracting – procedure is to drill a particular area. However, in additive manufacturing, the process is completely the opposite: material is built up around a cylindrical space to form the hole. In this sense, additive manufacturing is the process of transforming a 3D design into an actual physical reproduction of it by adding successive layers of a specific material in accordance with the design, which is likely to specify forms, material, shapes and other characteristics.

This innovative process is likely to have extremely useful social aspects. For example, a heart surgeon who needed a certain valve with specific dimensions and characteristics for a particular patient could use a 3D printer to produce the exact valve straight away, instead of searching for and purchasing the valve and then waiting for it to arrive.

3D printing could also be used to address the issue of spare parts for household appliances and automobiles. Currently, mechanics have to search for and order spare parts online. Shipping alone can take several weeks, if the correct part can be located at all. However, using 3D printing, spare parts can be manufactured swiftly and at a reasonable cost.

From an industrial point of view, 3D printing opens several exciting new frontiers. Reducing the cost of producing prototypes creates opportunities for customising new products or making limited runs available.

It looks as though 3D printing is here to stay. However, not everyone is delighted with this new technology; some rights holders are extremely worried. Rather than burying their heads in the sand, they might be better advised to adjust to and prepare for the new technology.

In order to start thinking about preventing the abuse and illegal reproduction of intellectual property through 3D printing, it is useful to remember the starting point for any complex structure produced by a 3D printer – the design – and then work out how best to protect this.

Industrial designs and 3D printing

Designs that are used to create 3D products can be infringed in two ways. The first is where a protected design is illegally reproduced by an unauthorised user through negative additive manufacturing. The second is the illegal reproduction of a newly created 3D design by means of positive additive manufacturing. Both forms of infringement require stringent new safeguards.

An example of negative additive manufacturing might be a father who intended to buy the latest fashionable doll for his daughter for Christmas, but failed to do so in time. He asks his neighbour – who had bought the toy in good time – to borrow the doll and reproduces it through additive manufacturing. He presents the resulting product to his daughter on Christmas Day, at the expense of illegally reproducing the article and infringing its copyright.

By saying that design is key, we are not ignoring that this example also potentially involves:

  • copyright infringement – the doll might be a character from the latest animated movie;
  • trademark infringement – the toy will likely be marketed exclusively through a specific toy trademark; and
  • patent infringement – the doll may have certain characteristics or functions that are protected by valid utility patents.

An industrial design covers the ornamental or aesthetic aspects of an article and is thus seldom protected with the same zeal as a utility patent. However, if the doll in this example has a well-protected industrial design, this could prove crucial to protecting all of the other IP rights involved.

Let us imagine that the original toy has a valid utility patent that enables it to perform a unique function (eg, reproduce certain movements and repeat particular trademarked phrases). If the doll is reproduced by 3D printing without the patent features, the father could argue that no patent violation had taken place. Nevertheless, the doll has been reproduced, the child is probably happy – although aware that her doll does not have the same functionality as her neighbour’s – and an original product will not have been sold.

The same can be argued in a trademark or copyright infringement scenario. The father could deliberately choose not to reproduce the doll’s trademark and other characteristics in order to argue that he is not actually infringing any rights.

However, if the article’s industrial design is carefully and adequately protected, it will be necessary to prove only that the protected design has been reproduced for the father to qualify as an infringer.

Advantages of industrial design protection

The traditional view is that utility patents are more important than industrial designs, as functionality matters more than appearance. However, in the brave new world of 3D printing, adequately protecting the features of an article should also protect its functionality, as this will prevent it from being illegally copied through 3D printing.

There are several advantages in protecting intellectual property through an industrial design. First, the timeframe for protection is usually similar to that of a utility patent. Protection lasts from 15 to 25 years, depending on the applicable national law. Additionally, the procedure is less complicated and shorter than that for utility patents, as there is no need to prove functionality.

By no means are we saying that industrial design protection should replace utility patent, trademark or copyright protection. Rather, industrial design protection should be considered as complementary to other IP rights. In addition, when it comes to infringements resulting from 3D printing, industrial designs could save the day in court.

Owners, users and enforcers of IP rights need to realise that industrial designs are no longer merely a tool for protecting watches, jewellery, fashion items, vehicles or furniture, but can provide protection for practically any article that can be reproduced by a 3D printer.

Achieving global industrial design protection

An industrial design must meet the requirements of novelty – just as a utility patent must – and originality in order to qualify for registration.

Although the definitions of ‘novelty’ and ‘originality’ vary between countries, the key aspect is that the design can be picked out from other designs in such a way that it can be shown to be different and unique.

After a relatively short procedure – this might be only a few days in non-examining jurisdictions, such as the European Union and under the Hague System, compared to the long and uncertain wait faced by applicants for utility patents – a registration certificate will be issued, usually with a protection term of five years, although this can be renewed up to a maximum of 25 years in some jurisdictions. Therefore, if both utility patent protection and industrial design protection are applied for simultaneously, the design will be effective long before the utility patent, meaning that the rights holder has the option of taking legal action against an infringer that copies an article using 3D printing immediately.

In certain countries, industrial design and copyright protection can be cumulative, as the design can also be considered – and therefore protected – as a work of art. In others, these types of protection are mutually exclusive, meaning that the owner must choose between them. In the first case, it is obvious that the rights holder should file for both options. Where these are mutually exclusive, the nature of the article will determine whether copyright or industrial design protection is preferable.

One advantage in filing for industrial design protection over copyright protection is that it can obtain international coverage in this way. As business transactions become increasingly globalised and technological innovation more constant, IP systems must react quickly in order to protect research and development. One response to this is the international harmonisation of IP systems.

This is becoming a reality as more and more countries sign up to IP treaties designed to provide unifying criteria, requirements and procedures in order to shorten the timeframe and simplify the process for international registration.

The most significant IP treaties include:

  • the Madrid Protocol concerning the international registration of trademarks;
  • the Nice Agreement for the international classification of goods and services;
  • the Patent Cooperation Treaty; and
  • the Hague Agreement for the international registration of industrial designs.

The Hague System is administered by the World Intellectual Property Organisation (WIPO) and comprised up to 62 contracting parties as of 2013. All signatories have simplified their procedures by making it possible for applicants to obtain protection for up to 100 industrial designs for products belonging to the same class in multiple jurisdictions by filing a single application with WIPO’s International Bureau. It also simplifies the management of these registrations, making it possible to record changes or renew registrations through a single procedural step (for further information visit www.wipo.int/hague/en/).

We strongly believe that industrial designs are the best form of IP protection to help rights holders to face the challenges introduced by 3D printing

We strongly believe that industrial designs are the best form of IP protection to help rights holders to face the challenges introduced by 3D printing, and that the Hague System is the perfect route to extend registrations around the world rapidly and at a low cost.

As previously stated, industrial design filing is not as common as trademark and patent filings through the Madrid System and the Patent Cooperation Treaty. According to the WIPO International Bureau Hague Yearly Review, 14,400 designs were filed internationally under the Hague System in 2014. Although this represented a 12% increase on the figure for 2013, is still too small given the rise of 3D printing.

We believe that Paris Convention signatories should consider joining the Hague System, while national IP offices should start warning rights holders of the dangers posed by negative additive manufacturing. They should promote the registration of industrial designs as a way of preventing the illegal use of designs by 3D printing and point out that the Hague System is a fast, efficient and relatively inexpensive way of achieving worldwide registrations.

The international filing of industrial designs will not only help rights holders to deal with the unauthorised use of their designs, but also provide the creators of new 3D designs and prototypes with the protection they need.

12%

Rise in designs filed under the Hague System in 2014

Conclusion

Although 3D printing opens the door for the potential unauthorised use, reproduction and commercialisation of any IP rights – including trademarks, patents, copyrights and designs – the process inevitably requires the reproduction of a 3D design. Thus, adequate protection for an industrial design will also protect other IP rights.

Rights holders, administrators and enforcers should promote the protection of industrial designs for existing products. The outcome of authorised or original additive manufacturing should also be protected through industrial design and other complementary IP protection.

The Hague System is an excellent tool for the rapid, simplified and low-cost protection of industrial designs worldwide. Signatories to the Paris Convention should promote – through their national IP offices and with the support of the private sector – awareness of the potential problems that 3D printing poses to IP rights.

In addition, signatories to the Paris Convention that are not yet part of the Hague System should seriously consider joining as soon as they can in order to facilitate the worldwide protection of industrial designs and thus help rights holders, users and enforcers to block illegal reproduction by means of the widespread use of 3D printing.

Rodrigo Estrada is a partner at IP Law Peru [email protected]

Get unlimited access to all WTR content