3D printing has been heralded as a disruptive technology, driving creativity and innovation. 3D printing has also potentially made counterfeiting of products much easier. The full impact on industry is perhaps only beginning to be felt as the cost of 3D printers has dropped and they have become more prevalent.
But does your IP adequately protect your products or inventions from reproductions made using 3D printing technology? Would you infringe someone else’s IP rights by 3D printing an object?
3D printers rely on instructions from a software file (CAD file) to readily create objects from polymers, alloys or ceramic. Suitable software files may be developed independently, obtained from a third party or generated by scanning an existing object. This has different implications depending on the IP rights you have.
An Australian patent provides the Patentee with an exclusive right during the term of the patent to prevent others from exploiting the invention protected by the patent in Australia.
Thus, if the invention is a product, the Patentee has the exclusive right to prevent unauthorised making of the product, using a 3D printer or otherwise. This means that an unauthorised third party 3D printing the product will directly infringe the patent. Despite the fact that direct infringement of the patentee’s patent rights may be occurring, it is necessary to actually identify the infringers. This may be difficult, for example, if they are creating the products from the comfort of their own home. Furthermore, the infringers may also be the Patentee’s existing or potential customers.
If the use of a CAD file to 3D print a product would infringe a patent (i.e. because the product is protected by the patent), the unauthorised supply of the CAD file may also be an infringement of the patent by the supplier of the CAD file. This is relevant in situations where the CAD files for creating the product were obtained from a third party, such as from an Internet website. In such a situation, it is possible that the third party supplier would be considered to infringe the patent indirectly by supplying the CAD files that allow the product to be made by the direct infringer. This is likely to be a much more appealing situation for the Patentee as it is much more likely that the third party is supplying the software files to multiple direct infringers, amounting to multiple instances of indirect infringement.
It should be borne in mind, that there are some exemptions from infringement. For example, unauthorised 3D printing of a patented product would not be deemed an infringement of a patent if it is printed for experimental purposes or if it was being printed before the patent application was filed. However (and unlike the situation in the UK) there is no private use exemption to infringement in Australia.
An Australian registered design provides the design owner with exclusive rights over the design of a product in Australia. One of these rights provides the design owner with the right to prevent an unauthorised person from making a product embodying the design. 3D printing of your product may therefore infringe a registered design.
Registered designs provide protection from either direct or indirect copying. Someone could infringe if they 3D print a protected product from: their own CAD file, a CAD file produced from directly scanning the product, or a CAD file that has been copied. However, as discussed above, these infringers may be difficult to identify or the design owner may not be willing to pursue them if they are also their customers. Furthermore, design protection may not provide direct protection of the drawings or the CAD file related to the product and it is unclear if supplying CAD files for the product would be an infringement. Therefore, someone who 3D scans a product and merely provides or sells the CAD file may not be infringing the registered design.
There is also a limited defence available in Australia where repairing a product embodying your design may not constitute an infringement of your registered design.
Relevantly for 3D printing, copyright can exist in an artistic work which includes 3D CAD files, design drawings and the 3D object itself. Subject to certain fair dealing exemptions, copyright protection provides the copyright owner with the right to prevent unauthorised copying of the artistic work. This means that someone could be infringing copyright by: scanning a product to produce a 2D drawing (3D to 2D copying) as well as copying drawings (2D to 2D), or scanning then 3D printing (3D to 3D). Evidence of copying needs to be prepared and filed. This can be expensive and difficult to prove in practice.
There is a notable exception from infringement by 3D printing if the artistic work has been ‘industrially applied’. However, this is not an exception to infringing copyright in a CAD file or 2D drawing, nor does it apply if the product can be considered a work of artistic craftsmanship.
Registered trade mark protection provides the owner with the right to prevent un-authorised use of trade marks which includes 3D shapes as well as 2D marks and words. Someone 3D printing a trade mark may well be infringing the trademark. The classic example of a shape trade mark is the Coca-Cola® contour bottle.
If you have any questions relating to 3D printing, our attorneys would be happy to discuss them with you.
Additionally, the Australian Copyright Council provides a handy guide to copyright in 3D printing here: http://www.copyright.org.au/acc_prod/ACC/Information_Sheets/3D_Printing___Copyright.aspx.
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