3D Printing and intellectual property: a new challenge for IP owners

3D printing raises a number of issues for intellectual property (IP) owners already facing the challenges of the internet and other digital technologies. Existing IP laws will evolve and reforms may be necessary but it remains to be seen if 3D printing will have the major impact some commentators believe.

What’s the fuss about?

Put simply, 3D printing can be another form of copying and IP laws exist to stop illegal copying. The photocopier copies documents. Digital technologies and the internet have resulted in the copying of films and music. Now with 3D printing, three dimensional objects can be easily copied. And the copies can be mass produced or custom made potentially depriving the IP owner of substantial revenues.

IP rights

Existing IP rights can potentially be invoked where a 3D article is made. A patent is infringed when a functional article is made without the licence of the owner of the patent provided that it comes within the scope of the claims of the patent. A registered design is infringed where an article is made without the licence of the owner of the design provided that the article is identical or substantially similar in overall impression to the registered design. It is also possible to register shapes as trade marks (although the scope for this is limited). So any party engaging in copying using 3D printing is potentially at risk of patent, registered design or trade mark infringement.

But most products will not be protected by such rights. And a check of the patent, registered designs or trade mark registers can be carried out to determine if there is a risk or not.

But copyright raises different issues. There is no system of registration and copyright automatically subsists in original “works” including “artistic works”. Drawings, including engineering drawings depicting articles, are artistic works and can be infringed by making a copy in either two dimensions (i.e. a copy of the drawing itself) or three dimensions (i.e. by making an article in accordance with the drawing). So making a 3D article may infringe copyright in drawings of the article if made without the licence of the copyright owner.

Policy of copyright law

However, it has long been recognised that copyright is not intended to protect or give a monopoly in relation to the copying of products which have been mass manufactured and sold. If a product has novel and inventive functionality, it can be protected by a patent. If the product has a distinctive look, it can be protected by a registered design or even a registered trade mark. But in the absence of such protection, the policy of the law is that IP laws should not be used to prevent copying of mass produced products.

The overlap provisions

So the law has evolved a body of law sometimes known as the “copyright and designs overlap provisions” which are intended to implement the policy of the law. These provisions are complex and have frequently given rise to dispute with copyright owners attempting to enforce copyright in drawings of articles where there is no patent or registered design involved.

The gist of these provisions is that a copyright owner cannot enforce copyright in a drawing of an article where the copyright owner or its licensee has made and sold articles in accordance with the drawing. Further, articles or drawings made during a process of reverse engineering will not infringe copyright. This is a simplification of a complex area of law but generally it implements the policy of the law that copyright is not intended to protect the mass production of products.

Inevitably there are exceptions. Copying a building (i.e. a structure of any kind) is not subject to the defences in the overlap provisions. And more significantly for someone engaging in 3D printing, copying “works of artistic craftsmanship” may still infringe copyright. A work of artistic craftsmanship can include things such as pottery, jewellery and some furniture, and can include functional articles provided that “the work’s expression must be unconstrained by functional considerations”. This is an area of law which will be tested by the growth in 3D printing.

There are other issues which may arise: can suppliers restrict the ability to copy spare parts relying on contractual provisions? Can a copier rely on the overlap provisions where only one article is made and sold by the copyright owner (e.g. a one-off item of machinery).

Given that copyright provides limited remedies to the IP rights owner, there may be an increase in the use of patents, registered designs or trade marks to protect the articles which could otherwise be copied. Indeed, given that a 3D copy may be a slavish copy of the original article (having been digitally scanned from the original) there may be an increase in the numbers of registered designs applied for.

Among others, IP lawyers await developments with interest.

First published in AMT, October 2015, page 77