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If you are an in-house legal practitioner and have not yet connected with 3D printing technology, now is the time. It offers significant business opportunities, though not without legal risk—particularly in the area of intellectual property law. This article will address some of the notable opportunities and risks that in-house counsel need to be aware of.

What Is 3D Printing?

The term “3D printing” refers to the additive process (the laying down of successive layers of materials) by which three-dimensional objects are created from a digital or virtual file (also referred to as “CAD files,” or computer-aided design files). When we say materials, forget about ink. The materials that can be used in 3D printing include plastics, polymers, glass, metal, wax, edible food and even human tissue. These materials are dispensed by layers: either (a) from a printer onto a moving/rotating platform, or (b) from a moving nozzle onto a platform in order to create a three-dimensional object. The process of dispensing materials layer by layer is typically referred to as “additive manufacturing.” Unlike traditional printing, the 3D process doesn’t cover flat paper surfaces with a single layer of dots. It builds multiple layers one on top of the other to create a 3D object.

While the technology was first invented in the 1980s by an American named Chuck Hull, 3D printing is just now beginning to explode in popularity, thanks to declining costs . As a result, 3D printing technology has become truly disruptive to a wide range of industries and businesses. The applications include nearly anything you can imagine, from household items, such as plastic containers and figurines, to athletic shoes, organs and body parts (by layering living cells deposited on a gel medium).

What Does the Future Hold?

Everything and anything. Imagine waking up and printing yourself a breakfast with a customized nutritional profile based on your activity needs for the day. Forget about lining up at a store for a chance to buy the latest pair of sneakers. Imagine downloading a CAD file from a sneaker manufacturer’s website so that you can print the latest pair in your own living room. Tired of painful headsets or earbuds falling out of your ears? You can already walk into a store in New York City and purchase a pair of custom 3D-printed earbuds. How about going in for surgery knowing that a 3D printer in the operating room is set up so that doctors can print customized body parts during your hip replacement procedure?

What Are the Legal Risks?

The ease by which 3D objects can now be printed can allow for easy replacement of parts. However, the ability to print on demand can also bring a variety of legal issues, particularly in the area of intellectual property.

Generally, the principles of copyright infringement apply to 3D printing in the same manner that they apply to any other copyrighted material. However, not all copyright laws are clear about the degree to which 3D designs are protectable, and which acts may constitute infringement. And the owner of the copyright may not be the same for the physical object and the 3D design. Nevertheless, it is best to proceed with the assumption that copying and distributing a 3D-printed copy of a copyrighted object, Computer-Aided Design (CAD) file or software could result in infringement.

The fair use doctrine protects third-party use of material otherwise protected. In the context of 3D printing, it may be anticipated that transformative uses are more likely to be found fair and noninfringing if the original work is not simply copied but is transformed into a new creative work, particularly one that comments on some aspect of the original source work.

Similarly, 3D printing has implications for trademarks, if the 3D design file includes a representation of any traditional trademark affixed to an object, such as a company logo. Whenever a trademark exists on a three-dimensional object and the object is reproduced by 3D printing along with the trademark, there may be a risk to the producer of the 3D printed object, especially if the reproduced object is for resale. Generally, a commercial copy of trademark is an infringement, unless there is a license to reproduce the trademark.

Although many patents are directed to complex inventions with many components, there are some simple patented products/inventions that can be reproduced by 3D. In general, when products are produced at home for private, noncommercial personal use, patent infringement may not be a concern because there is no monetary gain.

However, printing a 3D product for commercial use can result in patent infringement. Someone may create a design for the 3D printing of a patented item, for example, then share that design through a website that allows users to print or purchase copies of the item. Under U.S. patent law covering both utility and design patents, printing or disseminating copied products for monetary gain is an infringement. This scenario creates three distinct areas of infringement:

—Direct infringement, which involves individuals or companies that “make, use, offer to sell or sell any patented invention”;

—Inducement, which targets individuals or companies that “actively induce infringement of a patent”; and

—Contributory infringement, which focuses on individuals or companies that “offer to sell or sell a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention.”

In addition to the 3D printer, the CAD file-hosting websites could be vulnerable to litigation for hosting infringing software. It should be noted, however, that inducement infringement and contributory infringement require the existence of the knowledge of the infringement by the website.

What Should In-House Counsel Do?

To ensure that you are well-positioned to leverage this new technology while minimizing legal risks, you should consider the following strategy:

Stay current with 3D printing technology. Have regular discussions with your R&D department to understand whether 3D printers are being used in the design or manufacturing process within your company. Make sure that you are protecting your own IP as well as being aware of third-party intellectual property.

Stay current with case law involving 3D printing technology. Copying objects becomes incredibly easy with 3D printers. A similar situation occurred when VHS machines and Betamax recorders made violating copyright laws extremely easy and extremely private. The law is still catching up with technology when it comes to 3D printing and violations of IP rights.

Consider Potential Legal and Business Benefits

Some companies have hundreds of patents related to 3D printing and have aggressively leveraged their IP to become market leaders.

Instead of having to commit to a critical mass of products to justify the cost of a new mold or tooling, 3D printing can ensure that setup costs no longer factor into your business equations.

Printing inventory on an as-needed basis saves your company from tying up capital and expensive warehousing liabilities and costs. Combine these savings with localized manufacturing based on digital fabrication, and realize significant savings on logistics and distribution costs.

The Future Has Arrived

The TV franchise “Star Trek” featured the “replicator,” a device that was able to instantly produce nearly any object, food or medicine on demand. Imagine how such a technology could change the way we live, the food we eat and the medicine we need. Thanks to 3D printing, we may not be that far away from inventing a real replicator.

The innovations that 3D printing offers across multiple industries and applications will continue to challenge IP law and other legal areas. It remains to be seen how business and the legal system will address these challenges. The extent of their success will determine whether 3D printing can achieve its full potential. In the meantime, as in-house counsel, it is important for you to recognize the potential issues to minimize your company’s legal risk.

 

Copyright Corporate Counsel. All rights reserved. This material may not be published, broadcast, rewritten, or redistributed.

If you are an in-house legal practitioner and have not yet connected with 3D printing technology, now is the time. It offers significant business opportunities, though not without legal risk—particularly in the area of intellectual property law. This article will address some of the notable opportunities and risks that in-house counsel need to be aware of.

What Is 3D Printing?

The term “3D printing” refers to the additive process (the laying down of successive layers of materials) by which three-dimensional objects are created from a digital or virtual file (also referred to as “CAD files,” or computer-aided design files). When we say materials, forget about ink. The materials that can be used in 3D printing include plastics, polymers, glass, metal, wax, edible food and even human tissue. These materials are dispensed by layers: either (a) from a printer onto a moving/rotating platform, or (b) from a moving nozzle onto a platform in order to create a three-dimensional object. The process of dispensing materials layer by layer is typically referred to as “additive manufacturing.” Unlike traditional printing, the 3D process doesn’t cover flat paper surfaces with a single layer of dots. It builds multiple layers one on top of the other to create a 3D object.

While the technology was first invented in the 1980s by an American named Chuck Hull, 3D printing is just now beginning to explode in popularity, thanks to declining costs . As a result, 3D printing technology has become truly disruptive to a wide range of industries and businesses. The applications include nearly anything you can imagine, from household items, such as plastic containers and figurines, to athletic shoes, organs and body parts (by layering living cells deposited on a gel medium).

What Does the Future Hold?

Everything and anything. Imagine waking up and printing yourself a breakfast with a customized nutritional profile based on your activity needs for the day. Forget about lining up at a store for a chance to buy the latest pair of sneakers. Imagine downloading a CAD file from a sneaker manufacturer’s website so that you can print the latest pair in your own living room. Tired of painful headsets or earbuds falling out of your ears? You can already walk into a store in New York City and purchase a pair of custom 3D-printed earbuds. How about going in for surgery knowing that a 3D printer in the operating room is set up so that doctors can print customized body parts during your hip replacement procedure?

What Are the Legal Risks?

The ease by which 3D objects can now be printed can allow for easy replacement of parts. However, the ability to print on demand can also bring a variety of legal issues, particularly in the area of intellectual property.

Generally, the principles of copyright infringement apply to 3D printing in the same manner that they apply to any other copyrighted material. However, not all copyright laws are clear about the degree to which 3D designs are protectable, and which acts may constitute infringement. And the owner of the copyright may not be the same for the physical object and the 3D design. Nevertheless, it is best to proceed with the assumption that copying and distributing a 3D-printed copy of a copyrighted object, Computer-Aided Design (CAD) file or software could result in infringement.

The fair use doctrine protects third-party use of material otherwise protected. In the context of 3D printing, it may be anticipated that transformative uses are more likely to be found fair and noninfringing if the original work is not simply copied but is transformed into a new creative work, particularly one that comments on some aspect of the original source work.

Similarly, 3D printing has implications for trademarks, if the 3D design file includes a representation of any traditional trademark affixed to an object, such as a company logo. Whenever a trademark exists on a three-dimensional object and the object is reproduced by 3D printing along with the trademark, there may be a risk to the producer of the 3D printed object, especially if the reproduced object is for resale. Generally, a commercial copy of trademark is an infringement, unless there is a license to reproduce the trademark.

Although many patents are directed to complex inventions with many components, there are some simple patented products/inventions that can be reproduced by 3D. In general, when products are produced at home for private, noncommercial personal use, patent infringement may not be a concern because there is no monetary gain.

However, printing a 3D product for commercial use can result in patent infringement. Someone may create a design for the 3D printing of a patented item, for example, then share that design through a website that allows users to print or purchase copies of the item. Under U.S. patent law covering both utility and design patents, printing or disseminating copied products for monetary gain is an infringement. This scenario creates three distinct areas of infringement:

—Direct infringement, which involves individuals or companies that “make, use, offer to sell or sell any patented invention”;

—Inducement, which targets individuals or companies that “actively induce infringement of a patent”; and

—Contributory infringement, which focuses on individuals or companies that “offer to sell or sell a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention.”

In addition to the 3D printer, the CAD file-hosting websites could be vulnerable to litigation for hosting infringing software. It should be noted, however, that inducement infringement and contributory infringement require the existence of the knowledge of the infringement by the website.

What Should In-House Counsel Do?

To ensure that you are well-positioned to leverage this new technology while minimizing legal risks, you should consider the following strategy:

Stay current with 3D printing technology. Have regular discussions with your R&D department to understand whether 3D printers are being used in the design or manufacturing process within your company. Make sure that you are protecting your own IP as well as being aware of third-party intellectual property.

Stay current with case law involving 3D printing technology. Copying objects becomes incredibly easy with 3D printers. A similar situation occurred when VHS machines and Betamax recorders made violating copyright laws extremely easy and extremely private. The law is still catching up with technology when it comes to 3D printing and violations of IP rights.

Consider Potential Legal and Business Benefits

Some companies have hundreds of patents related to 3D printing and have aggressively leveraged their IP to become market leaders.

Instead of having to commit to a critical mass of products to justify the cost of a new mold or tooling, 3D printing can ensure that setup costs no longer factor into your business equations.

Printing inventory on an as-needed basis saves your company from tying up capital and expensive warehousing liabilities and costs. Combine these savings with localized manufacturing based on digital fabrication, and realize significant savings on logistics and distribution costs.

The Future Has Arrived

The TV franchise “Star Trek” featured the “replicator,” a device that was able to instantly produce nearly any object, food or medicine on demand. Imagine how such a technology could change the way we live, the food we eat and the medicine we need. Thanks to 3D printing, we may not be that far away from inventing a real replicator.

The innovations that 3D printing offers across multiple industries and applications will continue to challenge IP law and other legal areas. It remains to be seen how business and the legal system will address these challenges. The extent of their success will determine whether 3D printing can achieve its full potential. In the meantime, as in-house counsel, it is important for you to recognize the potential issues to minimize your company’s legal risk.

 

Copyright Corporate Counsel. All rights reserved. This material may not be published, broadcast, rewritten, or redistributed.