3D printing and IP

Whilst not a new phenomenon, 3D printing (or “additive manufacturing”) is increasingly being utilised as a key manufacturing tool, and has been adopted into the manufacturing processes of a number of industries, most notably the automotive industry. Examples of its use stretch from parts for F1 racing cars and aeroplanes through to use in medicine and dentistry to consumer items including jewellery. Perhaps more engagingly, it has reached the wider public with toys and make-it kits for children and adults.

During the coronavirus pandemic there has been an exceptional demand for PPE and 3D printing has stepped up to the mark. It has demonstrated its versatility in the face of an unprecedented crisis, being used to make parts for ventilators, face masks and other products. It has been used by major manufacturing companies and research organisations, and by individuals in private households.

3D printing is a broad term covering a very wide range of processes which have a common element – the addition of material in steps to build up an object with the desired overall shape (and structure). There are many ways of achieving this. And it can be used at scales from microscopic to the size of buildings or bridges, as well as ordinary “human” scale.

All of these approaches, however, have some common elements: they are versatile, can be prototyped quickly and lend themselves to product development; and that rapid product development lends itself to obtaining useful intellectual property protection – the more so because where 3D printing provides real opportunities for the innovator, the same features facilitate copying the innovator. Hence the need to consider  IP protection at every stage of the 3D printing process.

The technologies used in 3D printing are still, relatively, in their infancy. There are many opportunities to develop the technology further, and this provides a separate stream of potential innovation – in the processes themselves, in material used in those processes, and in the pre- and post-processing for the materials and products produced. Over the past 10 years to 2017 patent filings for additive manufacturing technology look to have grown exponentially. 3D printing technology is custom made for intellectual property opportunities. Here are a few reasons why:

• fast prototyping enables a rapid development, testing and enhancement cycle, and an opportunity to solve both known problems and ones you did not know you had when you started;
• the output itself – a 3 dimensional article – has features of shape and appearance: these provide a basis for protection as designs, even, in some cases if there is a substantial functional requirement;
• there is plenty of know how to be accumulated in designing a product for optimal production on an additive technology platform.  Understanding how to layer the product, what is strong, weak, what is fracture prone.  Other technologies such as injection moulding have become part of the engineering skill set – for 3D printing there is still a learning curve.
• There are new ways of designing which would not have been possible in other technologies – or very expensive.

Each of these give rise to potential for intellectual property protection – for example - patents on innovative solutions in 3D printing processes including for new and powerful 3D printing tools; through to intellectual property rights which specifically address the shape or appearance of the articles created through a 3D printing process, such as rights in designs (and copyright in drawings and their electronic equivalent); to trade secrets, confidential information, know-how, and very difficult to protect experience and staff skills.

The key to getting the best out of the opportunity is to have (or to develop and implement) an intellectual property strategy.  That is not just to protect anything that moves or run scared from any IP sighted in the distance – but to understand why, when, and how opportunities and risks in relation to intellectual property arise and can be managed in a commercial and proportionate way.

That and the core elements and impact of each of these intellectual property rights, their ownership (for example where third parties such as contractors are involved), and some of the challenges are for a future article.  In the meantime, here is a quick (and not very legal) summary of the most important technical intellectual property rights:

Patents protect inventions of a technical character – that is new products or processes which are “inventive” – not obvious to the engineer in the relevant field.  The invention must be “claimed” in an application to national or regional patent offices.  The application must usually be made before the invention is disclosed.  They are relatively costly to apply for and maintain, and there needs to be a reasonable proportionate commercial justification for seeking patent protection.  Professional advice is essential.

Design rights broadly protect the shape or appearance of an article.  They can arise automatically (in which case they protect against copying); or registered (with national IP offices) in which case, if the design was a new one, making the same or similar design, whether or not it is copied, may infringe.  The requirements differ considerably between countries – for example, whether the design is purely functional, whether it is visible in use, and whether the shape is constrained by other factors may matter; and some countries, like the UK, have several different forms of design protection.  Generally professional advice is desirable for registering a design, and may be helpful for optimising protection from unregistered designs or copyright in design works.

Confidential information is best protected either by keeping the information secret or by using written (confidentiality) agreements – and marking it appropriately.  The level of protection possible will depend on the type of information.  Information or know-how which forms part of the skills and expertise of employees will always be more difficult to protect – and if protection would be worth having, deserves specific attention.

Those can form the substrate for a simple two sentence strategy: Do assess what intellectual property rights you have, make it clear to others that you have rights, and watch what others are doing – with your innovations or what you might find useful; and consider expressly protecting your rights, policing them and enforcing them when appropriate.  A stitch in time saves nine – even in the age of 3D printing.

We recently held the first in our Talking IP webinar series where we discussed 3D printing, particularly in the area of product design. Claire O'Brien, Head of IP Litigation, interviewed consultant Alasdair Poore and guest speaker Hoda Amel from the Manufacturing Technology Centre.