3D Printing is Wreaking Havoc on Patent Protection

 

The innovation of 3D Printing has and will continue to redefine the way business is conducted. Much as the color copier and digital music changed the way we do business and listen to music, the 3D Printing industry has the capability to turn patent protection on its head.

Through advancements in 3D printing technology, it is becoming easier and more affordable for the average person to explore the possibilities of creating their own 3D objects at home. The basic principle of 3D printing involves printing an object from a simple scan or a digital blueprint. Countless digital blueprints for objects can be found from a quick Internet search which makes 3D printing easy.

When a digital blueprint is created to be used as a design for duplicating a product, that blueprint itself is not patentable subject matter. The blueprint is not the actual product itself so possessing it, creating it, and selling it would not be an actual infringement of the patented product. Not only is it not an infringement, but the party that created the blueprint would own the copyright in that design, not the patent holder.

However, just because you have 3D printed something yourself, does it mean that you own the intellectual property rights? Or does the inventor or creator of the digital blueprint have intellectual property patent rights or copyrights in that object? What if the creator of the digital blueprint was unaware that the object was patent protected?

In answering these questions, it helps to have a basic understanding of what rights are granted to a patent holder. A patent gives the inventor a right to stop others from selling, using, or manufacturing an invention. The object itself is the patentable material, not the idea from which it has arisen.

Patent infringement can occur when a patent-protected product is manufactured, sold or used. In the typical patent infringement lawsuit, the patent holder would pursue the manufacturers of the infringing goods, and attempt to halt their production at their physical location. Remedies for infringement can include the ability to seize inventory, obtain financial or transactional records, and otherwise attempt to quantify the money damages. This can mean calculation of lost sales or erosion of sale price.

However, in the context of a casual 3D Printer infringer, there is a limited ability to sue for several reasons. The two most prominent being that, first, unless the user is producing and distributing a large quantity of the infringing product, the patent holder will likely never discover the infringement. Secondly, it is cost-prohibitive to pursue a “one-off” infringer, given that actual damages are too small to justify the expense of lawsuit.

Ironically, the most liberating aspect of 3D Printing, the ability for decentralized manufacturing which allows everyday people to create objects at home, is also the attribute that poses the greatest problems for patent owners. Imagine if each household was capable of being its own mini manufacturing floor, and individuals could create a limited supply of an exact replica of a patented object. This could mean millions and potentially billions of dollars in lost royalties, similar to what has occurred in the music recording industry.

The future of the 3D printing industry may more closely mimic the arc of the music-sharing revolution in the early 2000s. For those who remember the file-sharing site Napster, the 3D Printing situation is very similar. Perhaps the answer to this patent problem on the horizon is similar to the strategy employed by the music industry. That is to target the middle-men.

The music industry targeted the “inducers” of copyright infringement, i.e. the music sharing sites that facilitated the downloads. These were larger, more prominent, and more easily identifiable than individual users. This strategy had mixed results, as new sites and actors sprang up to take their place, and the larger industry was experiencing consumer behavior changes.

The middle-men of the 3D printing world would seem to be websites and online forums that allow for dissemination of product designs. Similar to copyright law, U.S. patent law recognizes a claim for "indirect" infringement” also known as "contributory infringement.” One type of indirect infringement is “active inducement of infringement.” By providing a platform for the distribution of these designs, it could be argued that the website owners, or even the original blueprint creators, are engaging in indirect infringement. However, yet again it may prove difficult to pursue individual direct infringements as a result of the exponential and decentralized growth of the Internet.

Another layer of complexity in enforcement of patent rights is found in the many smart phones which allow users to capture 360 degree images of objects. It is easy to foresee how the next step of this technology will allow users to create 3D designs based upon images uploaded from a smartphone and shared via social media to ultimately be used with a 3D Printer. Would that make Facebook or Twitter inducers of infringement?

Patent holders may soon find themselves in a redux of the music file-sharing problem. Unfortunately, the law frequently lags behind the pace of innovation. It remains to be seen how the law will evolve in order to confront this challenge, and whether patent holders will be able to develop a market-based solution so as to remain profitable in the age of consumer 3D Printers.

Vincent LoTempio and Justin Kloss are Business and Intellectual Property law attorneys at the law firm of Kloss, Stenger & LoTempio. Connect@Klosslaw.com

This article was published in the Buffalo Law Journal of Buffalo Business First on 1/26/16.