This article is written by Gokul Krishnan, pursuing a Certificate Course in Trademark Licensing, Prosecution and Litigation from LawSikho.
Table of Contents
Introduction
Printed food, Printed heart, Printed ears, if these sound something straight out of sci-fi movies, it is not. 3D Printing has made these a reality, and with advances in technology all these could be possible soon industrially. 3D printing or additive manufacturing is a process of making three dimensional solid objects from a digital file. The object to be printed is digitally formatted in the digital file using 3D printed software or a 3D scanner. The digital file is typically called computer-aided design (CAD) file. The CAD file is then exported to a 3D printer using dedicated software, which transforms the digital model into a physical object. The technology can be used to make human tissues, part of spacecraft, and, more controversially, functioning guns. 3D Printing is not a new technology. It came up during the 1980s, but at that time the technology was used for the production of functional or aesthetic prototypes. However, with the expiry of patent rights over many of the early technologies, there was a sudden surge in research and investment into this technology. This has made the technology cheaper and accessible. Additive manufacturing is now significantly cheaper than forging, moulding and sculpting. 3D Printing is projected to be a 100 billion dollar industry by 2028. Many views that this technology would pioneer the 4th industrial revolution with goods being produced in low quantities closer to the point of consumption. 3D Printing could make it as cheap to create a single item as it is to produce thousands; this could seriously undermine the economics of scale.
Applications of 3D Printing
3D Printing has numerous medical, manufacturing, industrial and socio-cultural applications. Some of the important applications of the technology are discussed below:-
3D Printing marketplace
3D printing marketplace is a place where users could upload 3D print models of various goods, like, gadgets, jewellery, spare parts etc. Other users could download this for free or for a price. There are numerous such marketplaces out there. Some of the prominent players in this space are Myminifactory (see here), AstroPrint (see here), Sculpeto (see here), Thingverse (see here).
Mass customization
There has always been a demand for customized consumer products. Nevertheless, those products were usually too expensive as it is difficult to customize products in the traditional mass manufacturing method. However, with 3D Printing mass customization could be done in an inexpensive manner. Mass customization is now increasingly used in the consumer goods and medical industries.
In the consumer industry, this could mean customized shoes, jewellery, eyewear, etc. In the medical industry, this could be useful for the custom manufacture of prosthetics and even medicines.
Bio-printing
Currently, organ transplantation is one of the most expensive medical procedures. Moreover, there is a chronic shortage of human organs available for transplant. There is also the additional burden of finding a donor who is a tissue match. All these issues can be solved by bioprinting of these organs using cells taken from the organ transplant patient’s own body to build a replacement organ. Even though bio-printing is still in its infancy, researchers were able to create a knee meniscus, heart valve, spinal disk, other types of cartilage and bone, and an artificial ear using 3D Printers.
Aero-space industry
The aero-space industry has been using 3D printing technology from the 1990s. The Aero-space industry is extensively using 3D Printing technology for the creation of parts that are stronger and lighter than parts made using traditional manufacturing. The ability to print onsite tools rather than carrying heavy tools would help carry out long-duration space missions. Currently, NASA is experimenting with 3D Printing tools in the International Space Station.
3D Printing and IPR
3D Printing has the potential to disrupt traditional supply chains. It will allow users to bypass the manufacturer and 3D print a physical part created on a computer, or 3D scanned. 3D Printing can allow users to print nearly anything, even patented and copyrighted designs. If 3D Printing becomes more accessible, it could create a large number of different types of supply chains. This could lead to the theft of intellectual property, and if not outright theft, at least a loss of control of the traditional manufacturer over that property.
Industrial 3D Printing could be manageable with the current IP Laws. However, 3D Printing by individuals in their residence could pose a threat to the IP System. 3D Printing is still not used widely in residential settings due to the size of the machine, the cost of the machine, the time needed to make the product and the lack of finish. Most residential users are hobbyist printers. However, with the advancements in technology, 3D Printers could become more accessible to the common man in the future. Many legal scholars believe that if residential 3D Printing becomes ubiquitous, it could lead to a similar disruption in the IP regime as the advent of P2P networks for music and media. The effects of 3D Printing on IPR are discussed below:
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Copyright
The 3D printing process starts with either a 3D scan of a real-world object or with the creation of a digital representation of such an object in a “computer aided design” (CAD) software package. CAD software is then used to deconstruct the CAD file into coordinates and dimensions, which is sent through computer code to the printer.The printer’s software reads the file which contains the formatting instructions. Then, each layer of material is deposited in specific patterns, formed on top of the previous one, until a 3D item is created. Thus the CAD files and the software are important components in 3D Printing. CAD files and CAD software are copyrightable and that copyright could even be used to prevent 3d reproduction of the images in the file. However, there exists confusion regarding the copyright protection of CAD files. Some of the major concerns regarding the copyrightability of CAD files are discussed below:
Idea-expression dichotomy
Copyright law does not recognize rights in ideas but only in the expression of the idea in a tangible medium. CAD files could create a challenge in relation to the idea-expression dichotomy. CAD file contains the design component and set of instructions to the printer. If the doctrine of merger is to be followed, if the ideas and expressions are intrinsically connected, and the expression is to be distinguishable from the idea, copyright protection cannot be granted. Thus If the non-copyrightable code embodies the purpose of the CAD file, then the design drawing component of a CAD file will have merged to the extent that it creates the code used to produce the 3D-printed object.
Originality
The other issue is whether the CAD files satisfy the criteria of originality. Under Indian law only original works are copyrightable. The standard of originality in the Indian scenario is not as low as the modicum of creativity standard in England or as high as the modicum of creativity standard in USA. In the case of Eastern Co v. DB Modak, (see here) the court held that not every effort, expending of skill results in copyright, but only those works that are somewhat different in character, involve some intellectual effort and involve some degree of creativity. Using this standard, a CAD file designed using the software could have copyright but merely taking a scan or picture of a work may not be sufficiently original of a process to attract copyright in itself.
Categorization
There is a debate on whether it should be classified as literary work or as an artistic work. Section 2(o) of the Indian Copyright Act (see here) defines literary work to include computer programs, tables and compilations, including computer databases. Section 2(c) of the Copyright Act (see here) defines artistic work as to include diagram, map, chart or plan, an engraving, photograph, a work of architecture; and any other work of artistic craftsmanship. Section 13 of Indian Copyright Act (see here) confers protection to these literary works and artistic works. Those who argue in favour of classifying it as a literary work state that, CAD file is essentially a set of instructions to be provided to a printer of how to build each layer of design and thus should be afforded protection similar to that of a set of code in a computer program. However, the issue with classifying it as a literary work is that CAD itself is only a set of data. Copyright does not protect ‘arrangement, system, scheme or method for doing a particular thing or process. Those who argue in favour of classifying it as an artistic work makes a comparison of the CAD file with a blueprint or a technical drawing as the designs held with the CAD files do not control how the printer operates but provide instructions that the printer’s software follows.
Patent
The proliferation of cheap 3D Printers would make it easier for people to duplicate even patented products. People with personal 3D printers could easily download even patented products as CAD files from online marketplaces. This could mean numerous infringements of patent rights. From a practical perspective, it would be challenging for the patent owner to enforce the rights against these many people, especially if these people are in a foreign jurisdiction. Thus the personal 3D printing industry could come to the same crossroads that other digital industries – from software and web development to the music and movie industries – have reached in the past.
Direct or indirect infringement
It would also be difficult to determine liability in case of patent infringement using personal 3D printers. In the USA, there is an exception to a patent for private non-commercial use. However, no such exceptions exist in India or the UK. Infringement in this scenario can be of two types direct, Indirect. Direct infringement occurs when a product that is substantially close to a patented product or invention is marketed, sold, or used commercially without the permission of the owner of the patent. Indirect infringement is understood to be either deceitful or accidental infringement. When a person knowingly aids the infringement of a patent, he may be held liable for indirect infringement.
In this personal 3D printing scenario, a person “R” could design a CAD design file that infringes a known patent and uploads that file in an online marketplace like Thingverse. Subsequently, a person “Q” could download the file from Thingiverse and print the object. In this scenario, it would be difficult to hold “R” liable as he has not sold or offered to sell or use the patented invention. In the future patent claims could be crafted as to allow the patentee to pursue the owner of CAD file for direct infringement. It could be indirect infringement, if “R”‘s design is the same as the patented invention or if “R”‘s design permitted “Q” to print replacement parts for reconstruction, rather than repair. The intermediary who hosts the files may also be liable for indirect infringement if they do not remove the infringing file after receiving “actual knowledge” of such infringement. However, it is possible that patentes would face several challenges for proving indirect infringement like:
- Identifying the person who uploaded the CAD file.
- Proving that the person who uploaded the CAD knew that the object was patented.
- Proving that the file was actually used by someone. Some files may just be viewed and not used.
- In case of providing a component that infringes a patent. It would be difficult to establish that digital representation of a device (i.e. the CAD file) actually constitutes a component of the device that is infringed.
Design rights
A 3D printer essentially operates by means of a “design” (usually called a computer aided design or a “CAD file”) that is created by specialized software or by means of 3D scanners. Thus Design rights could be used to protect the non-functional designs made using a 3D Printer. However, designs created using a 3D Printer may not come under the legal definition of a design under Section 2(d) of the Designs Act 2000 (see here). Section 2(d) of the Designs Act defines designs to mean shape, configuration, pattern etc. by any industrial process. However, printing an object using a personal 3D Printer will not be considered as an “industrial process” as an “industrial process” is interpreted by the court to imply a process carried in a large scale.
Trademarks
3D Printing could increase, like in the case of patents, the probability of Trademark infringement. However, using a Trademark for personal use or non-commercial purposes will not be considered as being “use in commerce” and thus cannot be prosecuted as Trademark infringement. With the advent of 3D Printing, it is highly likely that the term “use in commerce” aspect of Trademark gets a relook. It would also be interesting to see if the use of Trademark by a person in a non-commercial manner could still be prevented under the head of the dilution of Trademark.
Conclusion
3D Printing technology has been recognized by many as one that has the potential to propel the next Industrial revolution. IPR needs to adapt itself to the challenges posed by technology. IPR would face the most significant challenges from the personal 3D Printing market. However, personal 3d Printing is still in its nascent stages. Personal printers are still expensive, bulky and time-consuming. Thus Legislators have time to update IPR laws in line with the challenges posed to it by 3D Printing. The legislators should try to learn lessons from the chaotic legal battles that ensued with the advent of platforms like Napster and Grokster and take measures to prevent such a chaotic scenario from occurring with the advent of personal 3d Printing.
Legislative and Technical solutions have been suggested to tackle the IPR issues caused by 3d Printing. A Patent for a 3D printer that assesses whether a 3D Design file has an authorization code for Printing was filed in USPTO in 2012. Companies are also exploring various labelling techniques to identify unauthorized reproductions. There has also been a suggestion that companies should try to benefit from the disintegration of value chain caused by 3D technologies by specializing in designing their products and marketing them under their brand while outsourcing the actual production of the product to specialized 3D printing farms or to service providers located close to the consumer. In this model, the Trademark would become the most critical asset of the company and not patent. Legislative solutions like the introduction of a private printing exception to infringement have been suggested by scholars like Desai and Magliocca. Doherty, in his paper, suggests that a takedown system similar to the one under the Digital Millennium Copyright Act be introduced to take down infringing CAD files online. It is debatable whether a Legislative intervention is needed at this stage as the industry is still in it’s nascent stages. However, the legislators must act proactively to keep up with the technology rather than law playing catching up after the technology has evolved.
References
- Stefan Bechtold, 3D Printing and the Intellectual Property System, WIPO, https://www.wipo.int/publications/en/details.jsp?id=3999&plang=EN
- Shardha Rajam & Adya Jha,3d Printing – An Analysis Of Liabilities And Potential Benefits Within The Indian Legal Framework, NUJS Law Review(2018), http://nujslawreview.org/2018/12/01/3d-printing-an-analysis-of-liabilities-and-potential-benefits-within-the-indian-legal-framework/
- Davis Doherty, Downloading Infringement: Patent Law As A Roadblock To The 3d Printing Revolution, 26 HarvJLTech(2012), http://jolt.law.harvard.edu/articles/pdf/v26/26HarvJLTech353.pdf
- Lucas S Osborn, Reevaluating Intellectual Property Law in a 3D Printing Era, 47 The Bridge 18, https://core.ac.uk/download/pdf/232785505.pdf
- Dr Thomas Birtchnell, Dr Angela Daly & Dr Thierry Rayana, 3D Printing and Intellectual Property Futures, UK Intellectual Property Office, https://www.gov.uk/government/publications/3d-printing-and-intellectual-property-futures
- Michael K Henry, How 3D Printing Challenges Existing Intellectual Property Law, Henry Patent Law Firm, https://henry.law/blog/3d-printing-challenges-patent-law/#:~:text=But%20the%20proliferation%20of%203D,take%20legal%20action%20against%20infringers.
- Swaraj Paul Barooah, 3D Printing and Indian Copyright Law, Spicy IP, https://spicyip.com/2014/01/guest-post-3d-printing-and-indian-copyright-law.html.
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