3D print technology has been used for complex engineering design by specialist companies for over 15 years. Greater availability and affordability of 3D printing has sparked a revolution, the implications of which are said by some to be limitless as all that is needed to produce a product is a printer, software, raw materials and a design.
This shift in control of production means that designers, owners and those that carry out 3D printing need to be aware of the way in which intellectual property rights will be created, how these should be protected, when they might be infringed and what remedies are available.
Intellectual property (IP) rights affected will include:
Design rights can be registered and unregistered and protect the shape and configuration of products. Typically, these are not “artistic” enough to be protected by copyright. Design right will protect the external features of a product.
Unregistered design rights last for several years (in the UK) and arise automatically so long as the design is original and not purely functional;
Both forms of design rights have exceptions to allow for the manufacture of spare parts and accessories where these “must fit” or allow a “technical function” to be performed.
Copyright protects literary, artistic, musical and dramatic work in 2D. This is relevant for the protection of images/designs which someone might want to print onto the surface of an article using 3D manufacturing techniques. Copyright also protects some 3D works, such as sculptures. A loophole in the law exploited by certain markets - mobile phone covers being a good example - has now been closed and images used in this way are now fully protected by copyright.
Copyright will also protect the underlying software used to create the computer-aided design (CAD) and to operate the 3D printing machine.
There has been a growing use of trade marks to protect a recognisable manufacturer’s brand. They may be words or symbols and distinctive shapes can also be protected as trade marks.
A patent will protect the workings of an invention. The reality of 3D printing on a mass scale is such that printing a mechanism with gears and other components that could infringe a patent, is not yet a large-scale problem.
Printing and infringement
Risk areas in 3D printing are various, the ease with which design CAD files are made available via the internet for file sharing means that the owner’s IP rights can easily be abused, particularly at the consumer end of 3D printing. 3D printer operators, sometimes known as print bureaux, may find they are exposed to joint liability and claims for secondary infringement if they print products in breach of a valid intellectual property right.
At the consumer end where the inherent low value of 3D printing infringement claims may be a deterrent to doing anything about it, the small claims track of the Patent County Court in the UK is designed to avoid high legal costs and the value at which claims can be brought through this was increased to £10,000 on 1 April 2013.
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How changes in design law might affect 3D printing
The Intellectual Property Bill was announced in the Queen’s speech on 8 May 2013 and aims to clarify and simplify design law. Some of the key features of the Bill are:
- Redefinition of Unregistered Design Right to prevent claims being based on very small parts of articles.
- Clarification of the concept of a “commonplace” design to a specific geographical area.
- Changing the rule concerning first ownership so that the designer, rather than the commissioner, is the first owner of design rights. Contracts must contain the appropriate clauses.
- Linking defence to an infringement of copyright in an artistic work with relevant registered community designs.
- Introduction of a limited defence to infringement of registered design where a third party acts in good faith in the use of a design that is subsequently registered by another.
- Introducing criminal sanctions for deliberate copying of UK or Community Registered Designs including a right of forfeiture.
There may be further amendments needed, specifically in response to the issues which arise from the new framework. We will have a better idea of what direction this might take once a claim for infringement of IP rights via 3D printing has been brought in the English Courts. This will surely only be a matter of time.
Kim Walker (pictured) is a partner at law firm Thomas Eggar.