On 26 June 2013 Field Fisher Waterhouse held an excellent afternoon seminar on “Developments in UK and EU patent law”. David Knight’s session on 3D printing (“3D Printing – A licence to infringe IP rights?”) was particularly interesting as it looked at the implications for intellectual property rights owners arising from the developing field of 3D printing.
In this post we provide a (hopefully accurate!) recap of David’s talk and a look at the world of 3D printing.
3D printing is an additive process of printing material to create a three dimensional object. The process has the potential to make it as economical to produce a single item as it is to make thousands of items. With the price of 3D printers falling all the time, printing can often occur locally or even at home. Complex parts that would be difficult to make via traditional manufacturing techniques can be constructed via 3D printing. This can allow a given object to be made with a reduction of raw material thereby leading to weight and costs savings. 3D printing requires a 3D printer, suitable additive material from printing and a design data file from which the 3D printer can create the object to be printed.
3D printing touches on all areas of IP: patents, designs, copyright and even trade marks. However, as discussed below the position with respect to potential infringement of those rights can be surprising.
According to section 60 if the Patents Act 1977, it is an infringement of a patent for an invention to manufacture that invention (s. 60(1) PA 1977). So, on the face of it, since 3D printing of an object equals manufacture then 3D printing could potentially infringe a patent.
However, if an act is done privately and for non-commercial purposes then it shall not constitute infringement according to s. 60(5) PA 1977.
Therefore, home printing for your own use (i.e. non-commercial) will not be patent infringement.
A similar argument can apply to contributory infringement under s. 60(2) PA 1977 if the supply of an essential element is done for private non-commercial purposes.
An interesting aside was made as to the status of the design data file with respect of patent infringement. Would the data file be considered as part of a kit of parts (printer, printing materials and the data file) or would it be considered just as a description of the product in much the same way as a patent document is a description of an invention? If it is the former case then the data file could be considered as an “essential element of the invention” as required by s. 60(2) PA 1977 which might have implications for commercial printing.
The data file
As noted above, 3D printing requires a data file for the printer to use. Apart from purchasing the file from the designer or creating the file yourself the data file may also be obtained either by copying the original CAD file or by scanning the original product (= copying the design).
It is noted that copying the original file will constitute copyright infringement unless this was done with authorisation. However, making an article to that design will not be copyright infringement under s. 51 of the Copyright, Designs and Patents Act 1988 (CDPA 1988).
Copying the design itself may bring both registered design rights and unregistered design rights into play.
For registered designs it is noted that the rights conferred on the holder of the design right prevent the design being made but that design rights are not applicable for designs dictated by function. Further, the design needs to be visible in normal use and there is a must-fit exception. It is further noted that there is no infringement for private, non-commercial purposes or repair of a complex product to restore its appearance.
Unregistered design right is covered in the CDPA 1988. Infringement requires there to be reproduction for commercial purposes (s. 226). Unregistered design rights are not applicable for methods/principles of construction and there are must-fit and must-match exceptions. It is noted again that there is no infringement if reproduction is done for non-commercial purposes.
If a trade mark appears on a product (e.g. the Lego trade mark appears on Lego bricks) then the copying of the product risks infringing those trade marks. However, as discussed above in relation to design law, the needs to be a commercial use of the trade mark (used “in the course of trade”) for there to be infringement. If a product which incorporates a registered trade mark is printed at home then it is unlikely that they will infringe the trade mark.
3D printing examples
The practical effect of the above review of the law was illustrated in the talk with reference to two examples in which a design is reproduced. In the first example this is done by scanning the design with a 3D scanner (in other words the original CAD data file is not available) and in the second example this is done using the original CAD file.
- scanning the product to create a 3D data file is not regarded as an infringement of any of the rights in the design (if done for non-commercial purposes)
- posting the scanned data file online is not an infringement
- third party copying of the uploaded data file is not an infringement
- printing a 3D product from the scanned/uploaded data file is not an infringement if done for private, non-commercial purposes.
So, in the example of a private individual operating non-commercially, none of the above described IP rights are infringed in this example.
However, if the 3D product is printed from the scanned/uploaded data file for commercial purposes then this will infringe the design rights in the original design.
- copying the original CAD file – copyright infringement
- posting the copied CAD file online – copyright infringement
- copying of the CAD file by third parties – copyright infringement
- 3D printing the product for commercial purposes is infringement of the design rights in the design. Again, non-commercial printing would not be an infringement.
As can be seen from the above examples, under certain circumstances (e.g. printing at home), the 3D printing of a design may not infringe any of the IP rights mentioned above. This may cause difficulties in pursuing 3D printing done for private purposes. This is an interesting area of law with a number of complex issues that are likely to be developed over time by the Courts.
Mark Richardson 30 July 2013