The Rise of 3-D Printing

Advances in additive manufacturing, or 3-D printing, now make it easier and less expensive for companies to manufacture products. With 3-D printing, the time and expense needed to design and produce products can be significantly decreased, and articles once considered impractical to manufacture can be commercialized.

3-D printing allows many products that traditionally have been made of multiple components to be manufactured as a single article. Manufacturing companies thus are beginning to realize the benefits of 3-D printing. Aerospace companies, for example, use 3-D printing to manufacture engine components. Automotive companies use it to produce parts such as grilles, exhaust components, and door handles. Healthcare companies use it to create medical devices and synthetic body parts.

Although 3-D printing may be the next evolution in manufacturing, its potential misuse to infringe intellectual property rights raises serious concerns for innovators. 3-D printers are now accessible to essentially anyone. As 3-D printing technology advances and the costs of 3-D printers decrease, many more businesses and individuals may purchase 3-D printers, just as they purchase computers and typical paper printers today.

Businesses and individuals now may have a shortcut to duplicating or copying a product — wrongfully in some cases — after an innovative company or individual has expended significant time, resources, and money to design and develop the product. It will be increasingly important for businesses and individuals to take appropriate steps to protect their IP rights in their inventive 3-D printing processes and designs. Consistent enforcement of these IP rights to hold unauthorized 3-D printers liable for infringement may deter future infringements through 3-D printing.

Early and Robust Patent Protection Will Become Increasingly Important to Protecting 3-D Printing Innovations and Deterring Would-Be Infringers

The potential damages award that a 3-D printing infringer may be ordered to pay for infringing a utility patent or design patent makes the sometimes lengthy patent application process worthwhile. Inventors may obtain utility patents for new, non-obvious, and useful inventions that are functional or structural aspects of a technology, and they may obtain design patents for the visual ornamental features, or non-functional features, of an article of manufacture.

Innovators often unwisely are slow to retain patent counsel to file patent applications on their behalf, in part because they know it will be a relatively long time before the inventions are actually commercialized. Although advances in 3-D printing technology will help manufacturers reduce the costs, time, and resources needed to bring their products to market, would-be infringers also will be able to more quickly bring infringing or competing products to market. Any delay in initiation or prosecution of the patent application process, therefore, can prove detrimental for innovators.

After the filing of a patent application at the U.S. Patent and Trademark Office, several years can pass before a patent is issued. Inventors of 3-D printable designs will want to consider expediting this process by paying an extra fee to the USPTO at the time of filing the patent application to request “Track One” prioritized examination of the application. Doing so enables the patent application to receive a final decision regarding patentability from the USPTO within 12 months.

Additionally, filing a patent application as early as possible is critical in the United States — as it is in most countries — where a patent is awarded to the “first inventor to file.” 3-D printing is quickly becoming a “crowded art,” as more than 1,000 U.S. Patents related to 3-D printing technology already have been granted. With many manufacturers incorporating 3-D printing into their manufacturing processes, inventors will want to stay a step ahead of their competitors who are developing similar technology.

Inventions related to use of a 3-D printer commonly relate to the systems, methods, and chemical compositions used for 3-D printing. Many of these systems and methods are software applications used to program a 3-D printer to make the article. The U.S. Supreme Court has confirmed that under the patent statute, “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (interpreting 35 U.S.C. § 101).

In the more than two years since the Alice decision, courts have held many software patents invalid as claiming nothing more than an abstract idea. However, the U.S. Court of Appeals for the Federal Circuit has clarified that claims directed to software are not inherently abstract and that a software-related patent may claim non-abstract improvements to computer technology. See, e.g., Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3-D 1288, 1296-1306 (Fed. Cir. 2016); McRo, Inc. v. Bandai Amco Games Ams. Inc., 837 F.3-D 1299, 1314-16 (Fed. Cir. 2016); Bascom Global Internet Svcs., Inc. v. AT&T Mobility LLC, 827 F.3-D 1341, 1348-52 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3-D 1327, 1335 (Fed. Cir. 2016).

At a minimum, broad interpretation of what constitutes an “abstract idea” under Alice has received much scrutiny and criticism in the legal profession, including from patent practitioners and federal district court judges. The Supreme Court may revisit or clarify its holding. Alice, therefore, should not deter innovators from seeking utility patent protection for innovations in any industry, including 3-D printing. The potential to obtain monetary damages for infringements made with 3-D printing technology and to obtain an injunction against further infringement make the patent application process worthwhile. See 35 U.S.C. §§ 281, 283, 284.

The current law under Alice also increases the importance of design patent protection. Many companies often overlook the need for design patents and only obtain utility patents for their products, when they should consider applying for both. Design patents protect the overall visual ornamental appearance of a design, which may include the configuration or shape of the design and the surface ornamentation. Now that 3-D printing will make exact copying of a design easier, protection of the ornamental features of the design becomes even more important.

While design patents are typically more limited in scope than utility patents, they nonetheless can be effective against copying of patented designs by 3-D printing. Moreover, a patent owner may obtain a disgorgement of a design patent infringer’s profits, which makes the recovery of monetary damages for a design patent easier than having to prove lost profits or a reasonable royalty for infringement of a utility patent. See 35 U.S.C. § 289.