Dr Cristina Penine and Peter Finnie, from law firm Gill Jennings & Every, discuss the emerging patent issues surrounding 3D printing
The range of applications for 3D printing technologies is fascinating and growing at an ever increasing rate. From existing applications in the medical industry to 3D printed pizza, there is even potential for a 3D printed lunar base as envisaged by NASA.
3D printing, or ‘additive printing’, relates to objects built from successive layers of materials positioned on top of each other. The process allows for the production of more complex shapes, in a faster and cheaper way than traditional manufacturing technologies.
Being dubbed by enthusiasts as ‘the third industrial revolution’, 3D printing is expected to impact technologies across the board, not least within the optics and photonics industry. The optics and photonics industry finds itself in a unique position in relation to 3D printing, since it not only provides new manufacturing solutions for the optics and photonics industry, but also relies on developments in that industry. For example, 3D printed micro-optics using transparent additive materials and optical fibres are already under way. At the same time, 3D printing technology inherently depends on photonics systems such as lasers, infrared sources and optics.
3D printers are becoming increasingly affordable to individuals and small companies alike, so the technology has the potential to decentralise manufacturing, with 3D printers representing small factories at their fingertips. The uptake of 3D printing is also fuelled by a dynamic open source movement and emergence of online 3D printing platforms sharing computer-aided design (CAD) files, which creates a scenario analogous to illegal online music file sharing. Since the act of using a 3D printer may be considered an infringement of intellectual property (IP) rights, the uptake of 3D printing is inevitably expected to impact the IP rights of innovators.
A question of awarding IP rights equitably arises in the midst of ongoing debates between open-source advocates on one hand and innovators seeking to protect their investment on the other. Some may regard this question as academic; however, the reality is that IP rights represent pieces of property that play an important part in the business plan of innovators and their investors.
In general, IP rights may be categorised as:
- Unregistered rights, including copyright and unregistered design rights; and
- Registered rights, including patents registered designs and trademarks.
Unregistered rights arise automatically, so there are no associated registration costs. In contrast, registered rights require an application and examination before the registration is allowed, which can be particularly extensive in the case of patents. Registered rights, however, provide more effective protection against infringement than unregistered rights.
In the UK, for example, the upload of a design file to a 3D printing platform may constitute an act of ‘indirect infringement’ of a patented product, once the end user makes the product. Proving indirect infringement, however, requires the patent owner to demonstrate that various legal requirements are met, which is not always easy. While the end user is considered to be a ‘direct infringer’, it is usually undesirable (and impractical) for IP owners to pursue individual end users of the infringing products. After all, the end users are often customers of the patent owner.
A more desirable alternative would be for the person uploading the design file to be regarded as a direct infringer. Under the current patent law system, this would be possible if the patent application included claims that protected the design file itself. Although it is not possible to alter existing patent applications to include such claims, it is worthwhile considering the inclusion of such claims in new applications. Your IP advisor should be able to help on how to best define the scope of such claims.
To conclude, the use of 3D printing is expected to grow, with market analysis projecting global revenues of $8.6 billion by 2020. This brings exciting opportunities in the applications of 3D printings across many industries – including the optics and photonics industry – but also raises issues in relation to IP rights of innovators and their investors. As always, businesses are likely to be in a stronger position if they have registered IP rights, including patents. It is important, therefore, to adopt strategies that consider the emerging issues around 3D printing before filing any future patent applications.
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Gill Jennings & Every is a specialist intellectual property law firm based in London. The firm’s patent and trade mark attorneys provide commercially focused advice on legal protection for innovations and brands to companies ranging from start-ups to multinationals. It has a team of patent attorneys, with backgrounds in physics and engineering, who specialise in advising clients in the photonics sector.
