3D printing: manufacturing 4.0 – adapting IP strategies

Industrial three-dimensional (3D) printing is at the tipping point of becoming mainstream. The manufacturing industry is predicted to go through revolutionary changes when 3D printing becomes commonplace. Additive manufacturing techniques create products by adding materials layer by layer. The technology has moved from prototyping, rapid tooling, trinkets and toys to creating durable and safe products for customers in moderate to large quantities, thereby affecting the economies of scale in the automotive, aerospace, dental, biomedical implant, healthcare, pharmaceutical and many other industries.

However, R&D in these industries is facing a number of IP-related challenges. Factors to consider include the following:

• Not all 3D-printed products will be covered by patents drafted in line with traditional manufacturing techniques.
• Where customers own 3D printers or where third parties provide 3D-printed products on behalf of customers, policing and enforcement will be more difficult as product printing requires computer-aided design (CAD) files.
• If someone designs a CAD model of a product, it will be difficult to prohibit others from making amendments to and patenting the existing design.
• As a dynamic and flexible manufacturing process, 3D printing can be adopted in any country. Therefore, synchronised IP protection strategies will be necessary for greater protection across multiple jurisdictions.
• As 3D printing requires CAD files, model designers should protect their designs by prohibiting buyers from circulating their files.
• The digitisation process ‒ scanning a product to create complete CAD and computer-aided manufacturing solutions ‒ will present additional challenges to managing copyright infringement.
• A 3D printer can be installed near the point of sale, allowing products to be manufactured on site. This decreases the number of physical products crossing international borders, as the stereolithography (STL) files can be transferred via the Internet (which will require effective monitoring).
• When a design is manufactured using an improper, incorrectly calibrated or defective printer, the end user could question whether to claim damages from the design owner or the manufacturer; these aspects will need early clarification.
• While 3D-printed counterfeit goods may have the same specifications as their genuine counterparts, this does not mean that they have the same functionality. There may be differences in the use of materials and manufacturing processes.

Existing IP laws apply to 3D-printed products which are manufactured and sold, either as whole products or sub-parts of products. However, these laws do not offer protection when customers print products using their own 3D printers or have them printed by a third-party. Cases that demonstrate how existing IP policies and enforcement for 3D printing require drastic changes are discussed below.

Sony Corp of America v Universal City Studios, Inc
Sony argued that its Betamax video tape recorders (VTRs) were being used by customers to record copyrighted shows broadcast on television. However, the court ruled that making individual copies of complete television shows for purposes of time shifting does not constitute copyright infringement, but is fair use.

The case could apply to additive manufacturing. For complete digitisation solutions, where it is possible to obtain the CAD model of a product by scanning it, customers would be able to copy the entire product themselves. In this scenario, the 3D printer and scanner manufacturers cannot be sued for the production of copyrighted material by end users.

A&M Records Inc v Napster Inc
Napster might be a motivational case for IP owners. It involved Napster’s alleged infringement of copyrighted music by providing a peer-to-peer music transfer service. While the courts found Napster at fault for providing this peer-to-peer music transfer service, end users were the real culprits in this case. However, suing a vast number of anonymous users for sharing music was impractical. This case can be applied to 3D models and 3D scanning of physical products (3D scanning devices can be used to manufacture copyrighted products).

The new manufacturing era has challenged the ability to protect IP rights appropriately in the domain of 3D technology. A concrete framework for appropriate IP strategies is required to address these protection challenges head on.

Some possible solutions to these challenges include:

• Utility patents and design patents ‒ manufacturers have a broad range of IP protection regimes to protect their products and designs. Companies are investing significantly to protect their ideas through utility patents, design patents, copyrights, trademarks, trade secrets and IP agreements. Companies should review their IP strategies to make effective use of utility or design patents. While design patents are fairly easy to obtain, utility patents require significant investment and time. Therefore, companies should not seek utility patents if the patent will be granted after the technology becomes obsolete. A clear distinction on the basis of use and type of protection is needed to support the current patenting ecosystem.
• Copyright and data structure conversion ‒ concise and straightforward definitions for copyright protection are required in order to avoid multiple infringement cases being brought in the future. The legal consequences of evolving data structures require special attention. For example, in the music industry, changing the format of a music file does not affect the copyright eligibility of the stored music. Therefore, copyright protection of a design after its conversion from a CAD model to an STL file should be considered.
• Data theft and reverse engineering ‒ to prevent data theft, manufacturers and designers should avoid sharing their sensitive data online. Developing encryption techniques for STL and CAD files can lead to better protection for sensitive data. This will require cooperation between software companies, manufacturers and internet service providers, which in turn requires well-defined contractual agreements. Reverse engineering can be prevented by applying anti-counterfeiting tags to 3D-printed objects.

3D printing is set to revolutionise the way that the manufacturing industry operates. While the technology is easy to use and delivers accurate results, a balance must be struck between technology and intellectual property in order to protect IP rights appropriately and prevent the misuse of STL file redistribution. Stronger frameworks that can support changes to existing IP laws are required to cope with fast-paced developments in 3D printing.