by Roger A. Gilcrest, Ice Miller LLP
The increased use of three-dimensional (3D) printing for rapid prototyping has required injection molders to be vigilant to guard against unanticipated challenges to manufacture based upon copyrights. Three-dimensional printing not only has made rapid prototyping much more accurate and efficient, but it also has opened the door to production-finished 3D products. Like the explosion in copier technology in the 1970s and computer processing, storage and transmission technology in the 1990s, 3D printing now presents some of the same issues involving intellectual property rights, particularly copyrights and other design-related rights.
3D printing allows for the much more rapid capture of three-dimensional shapes, transmission of the print-guidance data and its final rendering into a polymeric three-dimensional object. And, because the object may be expressed or re-expressed in digital form, it also permits the more rapid and effective combination and supplementation of three-dimensional shapes to produce objects incorporating shapes from different sources of various origins.
Business interests for 3D printing companies are shifting toward the mass production of products for customers unfamiliar to the company. The customer’s competitors may be even more unfamiliar to the company. Accordingly, care should be taken to be sure that the company’s business interests are protected. Protection takes the form of the ability to produce a product free and clear of intellectual property liability.
Intellectual property laws affecting 3D printing
Intellectual property (IP) law covers a relatively complex patchwork of largely invisible, intangible property rights that vary in what they cover and in how each may be created, owned, maintained (or lost), licensed and enforced. Patent rights are granted by the US Department of Commerce through the Patent Office upon application, which must be examined to be sure the invention merits patentability before the rights are granted.
The most common industrial patents are utility patents that can cover (1) a process (which may include computer-driven processes like 3D printing itself or related post-printing finishing, assembly, etc.), (2) machines (such as devices that perform 3D printing, improvements to such machines or other apparatus for post-print processing, (3) articles of manufacture (such as the 3D-printed articles themselves, as originally printed or further finished through some inventive process) and (4) compositions of matter (such as new compositions that may be used in the 3D printing itself or incorporated into the 3D-printed articles, such as blends of additives and reinforcements, surface treatments, etc.).
Another less common patent – but one of potentially great importance to the world of 3D printing – is a design patent, which covers the aesthetic appearance of any useful article; essentially any useful article that presents an original shape that is not primarily functional. Design patents are therefore useful to protect the appearance of any useful article and are best used in situations where the aesthetic appearance of the article enhances desirability and marketability.
Copyrights include a bundle of rights that allow the copyright holder to give permission to have a copyrighted work reproduced, displayed or form the basis of a work based upon it (called a “derivative work”). In the 3D printing context, copyrights can cover any work of art (such as the printed articles themselves, as sculptural works), or any two-dimensional rendering of a three-dimensional shape that is a precursor of the printed article. In addition, because they are written works of authorship, copyright also can protect computer programs and data files that are written to guide or enhance the 3D printing process. The copyright can be very elusive because it is considered to be created immediately once the original work is first made. Registration is not required except to enforce the rights, and copyright rights last for many decades without loss.
Trade secrets are based upon the right to prevent others from taking confidential information of commercial value. Trade secrets can cover almost any type of commercially valuable information, such as customer lists, pricing information, test data, etc., and in the 3D printing world is best applied to these types of information, as well as to programming instructions and data files used in 3D printing and any know-how relating to printing or post-processing or handling. These rights usually don’t affect 3D printing so long as no one along the way has misappropriated proprietary information. The shape of an article itself, once made public, loses trade secret protection.
It is important to recognize that intellectual property rights are not exclusive. Any given process or product can embody or result from any number of these rights (e.g. utility or design patent rights, trade secret rights and copyrights). For instance, a 3D-printed article may be made on a machine patented by one company of a material composition that is patented by another company; but the article is in the shape of a two- or three-dimensional work of art, the copyright of which is owned by still another company.
Finally, trademark rights are symbolic rights that identify a company’s products or services. Most trademarks are words (MICHELIN of tires) or two-dimensional symbols (the NIKE Swoosh), but in some instances include three-dimensional shapes or characters, such as the shape of a Porsche automobile or the Coca Cola bottle. Trademarks also are sometimes difficult to find because trademark rights exist once a mark is put in use and registration at the state or federal level, though beneficial, is not required. Trademarks may be printed or embossed on an article’s surface or may be incorporated into the article itself.
Due diligence for 3D printing
Armed with this background, the injection molder that uses 3D printing as a prototyping tool should be aware that creating a shape from an existing article (or from renderings or computer files) should always start by playing defense. The molder should always ask two questions: Where did the shape or digital information come from? How is it that the customer or other subcontractor has rights to that shape or information? In addition, care should be taken to be sure the shape does not include words or symbols that might be third party trademarks.
Some due diligence can be undertaken if the shape is to become a product in a market where the identities of other intellectual property rights can be anticipated. Patents can be searched by owner, inventor or subject matter. Trademarks can be searched within federal and some state registration systems’ online databases and trademark searching companies can more thoroughly check for unregistered marks.
Responses to proposals and negotiations, especially between previously unfamiliar parties, should go hand-in-hand with diligent investigation of the nature of the technology to be applied, its source and the third parties involved or that might become involved.
If potential intellectual property rights are identified, the injection molder and/or the customer can consider whether it is possible to design around those rights before advancing production. One of the benefits of 3D printing is that redesign efforts can be undertaken (and approved from both a legal and market satisfaction standpoint) with relatively little expense at the prototype before an injection mold is cut and assembled.
The terms and conditions in most contracts deal with the standard nuts-and-bolts aspects of production, schedules, delivery and payment, as well as general warranties and representations. Injection molders need to be sure that representations as to the source of requested shapes and any knowledge of potentially blocking intellectual property rights or related disputes are disclosed. Warranties and hold-harmless clauses or shared defense clauses should be used to apportion risk.
Preserving and protecting intellectual property rights
Once the injection molder has taken steps to avoid infringing the rights of others, the next task is to be sure that the fruits of the molder’s research, development and creativity (and those of the customer) also are preserved and protected. The molder should have employees be aware of confidentiality practices within the company, as well as when other intellectual property rights are created and documented so timely filings can be made to preserve and best obtain and enforce these valuable rights. This helps the molder build a portfolio of rights that may be licensed to others, and even to be able to deal from a position of strength to gain access to the intellectual property rights or markets of others through cross-licensing or co-development joint ventures.
Intellectual property issues concerning the ownership, control, sharing and enforcement of patents, trademarks, copyrights and trade secrets are rarely completely covered in terms and conditions contracts, but these should be included where the molder may benefit from the development and creativity efforts. The molder and the customer can agree to the ownership and future use or licensure of any intellectual property rights that might be of value beyond the first contract.
Because intellectual property rights often may be interwoven within a given product or creative venture, a simple contract for producing a 3D-printed product may be fertile ground for legal conflict without the necessary care and forethought. Ownership or control of intellectual property rights can place the molder in the best position to be compensated for, and potentially to benefit from, future marketing of shaped articles, either through sales or licensing. In some printing scenarios (typically in longer-term relationships), it may be advisable to provide contractual obligations that parties keep each other informed under confidence of on-going development efforts, so that they might cooperate to secure, apportion and license intellectual property rights to plan for their future exploitation.
Understanding the nature of all forms of intellectual property – what they protect and how they are created and secured – allows a company to provide contractual terms and conditions to prevent accidental or intentional loss of rights, to avoid and/or defend infringement of third parties’ rights (and pursuit infringement by third parties) and to preserve the relationship between the parties before unanticipated developments forestall development of profitable ventures. Early due diligence, alertness to possible scenarios where intellectual property rights may be created or infringed and timely involvement of counsel and the design team are keys to the development of best practices for a successful 3D printing venture. Thoughtful standard terms and conditions, as well as more detailed contractual language tailored to specific situations of greater complexity, are the ounce of prevention easily worth a pound of cure.
Roger Gilcrest is a partner with the law firm Ice Miller LLP and focuses his practice on developing worldwide intellectual property portfolios for both start-up and established companies, including formulating patent procurement strategies, obtaining domestic and foreign patents and negotiating technology license and acquisition agreements. Gilcrest represents a wide variety of companies in the injection molding and 3D printing industries. Ice Miller LLP serves the entire Midwest, with offices in Indianapolis, IN; Chicago, IL; DuPage County (suburban Chicago, IL); Columbus, OH; Cleveland, OH and Washington, DC. For more information, call 614.462.1055, email [email protected] or visit www.icemiller.com