IP lawyer: Maximising IP value in a 3D printed world

As manufacturing changes due to the proliferation of 3D printing, patent filing strategies must change with it

Three-dimensional (3D) printing has been available for many years, but only recently has it become a viable alternative to traditional manufacturing methods. The proliferation of 3D printing is set to continue as the cost of 3D printers and raw materials falls and a wider range of materials become available. While 3D printing provides inventors with a tool for greater innovation, it also poses a threat to more traditional manufacturers. For instance, 3D scanners now allow products to be easily scanned to produce 3D computer-aided design files, which can be used to print knock-off products at the touch of a button. If IP protection in place in traditional manufacturing outfits cannot prevent such copying, then the value of the company may suffer alongside the value of its IP portfolio.

Registered rights such as patents and designs provide important tools for protecting innovation and maximising return on R&D investment. As the jurisdiction of a patent or design is limited to the country that issues it, traditional filing strategies tend to focus on obtaining registrations in countries where manufacturing is likely to take place or in the main market economies. This can be effective where mass manufacture means that products are likely to be centrally produced in a single area (eg, China) and then shipped around the world. However, 3D printing allows decentralised manufacturing in any location with a suitable 3D printer, with the capital investment in multiple manufacturing locations being offset by large savings in shipping costs. This means that traditional IP filing strategies may no longer be as effective in protecting innovators’ R&D investment.

As 3D printing is likely to be more prevalent in more technically advanced jurisdictions, filing strategies for 3D printable products should focus more on these countries. In this regard, once it comes into force, the European unitary patent will allow patentees to obtain cost-effective protection across 25 European countries and help to protect innovation in Europe in a decentralised manufacturing scenario.

“Only by ensuring that IP protection is not limited to traditionally manufactured products can the protective function of registered IP rights be maximised

The value of intellectual property depends on its enforceability, regardless of whether the patentee wishes to enforce its rights directly or to monetise them through licencing or sale. As the music industry has learned to its cost, traditional enforcement methods are not ideally suited for pursuing the distribution of digital files to private consumers. It has been reported that the widespread copying of music and film has significantly affected the value of intellectual property in these sectors.

The rise of 3D printing is likely to result in a similar scenario for products, where electronic design files for 3D printing may be easily distributed to end users who can then print infringing products, whether for sale or private use. Pursuing individuals can be costly and quickly becomes unwieldy. In addition, the large degree of negative publicity associated with pursuing private individuals for such acts is likely to discourage enforcement attempts. There are a number of ways of fashioning IP protection so as to reduce the risks involved in this regard. While the finer points of this are beyond the scope of this article, it seems clear that – much as was the case following the advent of the Internet – best practice in the IP profession may need to be rethought in light of these technological advances to ensure that IP protection does its job in securing the value in innovations.

This is of importance not only for products which are to be printed, but also for products which are to be manufactured in a traditional manner but which could still be printed by others. Given the rapid pace of technological development, the only safe assumption to make is that within the possible lifetime of a new patent, most tangible products will be 3D printable – even if they are not known to be so at the time of filing. Only by ensuring that IP protection is not limited to traditionally manufactured products can the protective function of registered IP rights be maximised. 3D printing allows multi-component products to be printed in assembled form. Features that would be considered as essential – say, for assembly – in traditionally drafted patents may therefore not be present in a 3D printed product. Accordingly, it is possible that such intellectual property may not cover an equivalent method of manufacture via 3D printing. Where competitors find it easy to work around IP rights, these are inherently less valuable than intellectual property that is drafted on the basis of a deep understanding of the possibilities offered by 3D printing.

3D printing allows cheap knock-off copies of products to be produced at the touch of a button. Rights holders should be aware of the issues associated with developments in 3D printing technology and seek professional advice to ensure that they maximise the value of their IP portfolio and mitigate against the risks posed by this developing field.

Matthew Jefferies is an associate and Thomas Prock is a partner at Marks & Clerk, London, United Kingdom

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