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Summary of the main IP issues related to 3D printing
Design
- The Community Design is regulated by the Regulation No. 6/2002. It is obvious that the reproduction of a registered/non-registered Community design constitutes
direct infringement. A more discussed issue is the enforceability of a Community design against the reproduction of the same in the files to be used in the 3D
printing process. - Other relevant issues are the scope of the private use exception and the protection of spare parts that can be easily printed with a 3D printer.
- At European level there is no harmonization of the contributory infringement. In its 2016 design report the EU Commission has recommended the possibility of introducing a provision on contributory infringement, resembling the one under patent law.
Patents
- The EU does not have a uniform regulation on patents. However, the European Patent Convention, and more recently the Unified Patent Court Agreement, creates a common legal framework for the EU members.
- That said, whenever the requirements for patentability are met, it is obviously possible to patent the 3D printing process, the components of the 3D printer and the materials used during the printing process.
- The main problem is the "domestic" reproduction of a patented product. In particular, it is discussed whether this activity falls within the scope of the. private use exception. Another discussed issue is the classification as contributory infringement of the conduct of the intermediaries as the distributors of file containing the blueprint.
Trade Marks
- Trademark law is mostly harmonized in the European Union, lastly by the entry into force (on October 1, 2017 for its second stage) of the new European Union Trademark (EUTM) Regulation No. 2017/1001, and soon (no later than January 2019) through the implementation by the individual EU member States of the new Trademark Directive No. 2015/2436.
- As a tool to differentiate your own 3D printing offerings from the competitors, trademark registrations are as usual an apt tool for calling attention to the products and services offered in connection with this new technology. Several companies already did so, and a variety of marks for 3D printing have been registered in different classes, such as: printer machines (class 7), control software (class 9), thermoplastic filaments (class 17), auction services (class 35), printing services (class 40) and education services (class 41).
- Counterfeit 3D printed objects which embody or are affixed with a mark and used in commerce, will be considered infringing someone else’s trademark registration(s) for the same/similar sign and covering the same/similar goods.
- For distinctive and non-functional product shapes, three-dimensional (shape) trademark registrations covering just the product shape itself could be requested. And once obtained, such registrations could be enforced against counterfeit 3D printed objects in a similar way as mentioned in the previous paragraph, provided that the counterfeit product does not add features which detract from the shape and make confusion or association by the consumer less likely.
Copyright
- Copyright law / droit d’auteur is not fully harmonised in Europe. A European “copyright reform”, with a Directive and a Regulation are in the works since several years, and voting in the European Parliament is currently taking place. That shall harmonise certain aspects of copyright across EU jurisdictions.
- It is discussed whether copyright protection shall apply to the source code of the 3D printing file, at the same level software is protected like literary work by copyright in the EU. Designs contained within the file (either generated by CAD or 3D scanned) and the printed physical objects, whereas responding to the national requirements, could be both protected by copyright as a pictorial and/or sculptural work; therefore, one single object could subsume three different copy-rights (and three different authors/right holders).
- As far as the private/research use(s) of 3D printing is concerned, all the (different) national “limitations and exceptions” to copyright have to be taken into account. Currently they differ widely, the only common principle they have to conform to being for the moment the so-called “three-step test” contained in article 13 of the TRIPS Agreement.
- Lastly, it is discussed whether a levy on private copying shall be mandated on the 3D printing tools (printers and/or printing materials).
Trade secrets
- In 2016 was issued a new Directive on trade secrets (No. 943/2016). Please note that an information or document is considered trade secret if three elements are simultaneously present and the information a) is not generally known; b) has an economic value, b) is the subject of reasonable efforts to maintain its secrecy.
- In view of the protection of the printing process, it may be considered trade secret and thus protected as such, the file containing the blueprint of the product, the material used during the printing process and the 3D printing process itself. Of course the protection could be a temporary protection before, the filing of a patent, or a “permanent” one (until all the requirements to be considered a trade secret are present) if the trade secret is not patentable or the holder is not willing to patent it.
- In any case, the risk of the reverse engineering remains present, especially in the light of the directive on trade secrets that expressly allows this particular process.
Authors:
Filippo Calda | Giovanni Orsoni |