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.
Trademark Registrations Will Become More Important ...
to Deterring Unauthorized 3-D Printers from Passing Off Counterfeit Goods as Originals
3-D printing provides would-be infringers with a tool that they can potentially use to create exact or near-exact duplicates of various designs. If those designs are protected by trademarks, the recovery of damages and the possibility of significant criminal penalties may deter would-be infringers.
Trademark protection is available for names, logos, symbols, sounds, and other means that identify to a consumer the source of a product or service. Additionally, a manufacturer may also have a protectable “trade dress” in the overall commercial image of the non-functional features of a design of a product or its labeling or packaging, such as the color, shape, size, and texture, that serves as a source identifier. As with design patents, manufacturers may want to seek federal registration of any trade dress associated with their products.
Manufacturers routinely seek trademark protection for their names and logos, but often wait to file federal trademark applications until their products become successful in the marketplace, and often forego seeking any trade dress protection. With the increased risk of trademark and trade dress infringement through 3-D printing, it will become increasingly important to file applications for trademark and trade dress registrations early — i.e., as soon as the manufacturer has an intent to use the mark or trade dress, and before the manufacturer begins to actually use the marks. Manufacturers will want their trademark applications accepted and the marks registered quickly to discourage would-be infringers from counterfeiting the mark onto unauthorized 3-D printed products, advertising, or packaging.
Because 3-D printing may make it easier to make exact or nearly exact copies of certain types of products, trade dress infringements may increase along with counterfeit use of word marks. Trademark counterfeiting subjects infringers to civil damages and criminal penalties. See 18 U.S.C. § 2320(a)(1)(2); see also 15 U.S.C. § 1117. The trademark owner may receive their own damages, the infringer’s profits, and costs of the action and treble damages for counterfeiting. See 15 U.S.C. § 1117(a)(b).
For criminal penalties, the counterfeiter for the first offense may receive a sentence up to 10 years in prison and/or a fine up to $2,000,000 for individuals or $5,000,000 for companies. See 18 U.S.C. § 2320(b)(1)(A). For a second offense, the criminal penalties increase up to 20 years in prison and fines up to $5,000,000 for individuals and $15,000,000 for companies. See 18 U.S.C. § 2320(b)(1)(B).
Additionally, for both civil and criminal liability, the court may order a forfeiture of the counterfeit goods and the 3-D printing equipment. See 18 U.S.C. § 2320(c); see also 18 U.S.C. § 2323(a)(1)(A)(B)(C); 18 U.S.C. § 2323(b)(1). The available civil remedies and the threat of criminal penalties thus may be a strong deterrent to would-be counterfeiters.
3-D Printing May Lead to Increased Copyright Litigation in the Manufacturing Industry
Copyright litigation is perhaps most often associated with the music, movie, and publishing industries. The increasing ability to manufacture articles by 3-D printing, however, may soon force courts to determine whether certain 3-D-printed articles are entitled to copyright protection. Copyright protection exists for “original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” 17 U.S.C. § 102(a).
Computer programs and pictorial, graphic, and sculptural works are some of the categories of works of authorship that may be copyrighted. See id.; see also 17 U.S.C. §§ 101, 117. While copyright protection exists for a work as soon as it is fixed in a tangible medium, a copyright registration for the protected work is a prerequisite to pursuing a lawsuit for copyright infringement.
While the Copyright Act protects computer software, many authors of computer software do not register their software code for copyright protection, either due to oversight or a desire to keep the software code secret. Yet the benefits of copyright registration should not be overlooked, since it is a prerequisite to enforcement, and a company’s consistent assertion of copyright infringement claims against infringers may deter future infringers from copying that company’s works.
To obtain a copyright registration for a computer program, a copy of the source code, or certain portions of the program depending upon its length, must be filed with the Copyright Office. See Copyright Registration for Computer Programs, Circular 61.0812, at 3. Trade secret portions of the submitted source code may be redacted, but the redacted portions must be less than the amount of the unredacted source code, and the unredacted source code must contain “an appreciable” amount of original source code. See id.
Willful copyright infringers who engage in copyright infringement for commercial advantage or private financial gain may be subject to criminal prosecution. See 17 U.S.C. § 506. The threat of criminal prosecution can be a strong deterrent for would-be copyright infringers. Additionally, copyright owners may file a private cause of action to obtain monetary damages. The copyright owner may seek actual damages in the form of lost profits and the infringer’s profits to the extent they are not included in the actual damages calculation. See 17 U.S.C. § 504(b).
Alternatively, in lieu of actual damages and profits, the copyright owner may recover statutory damages of an amount between $750 and $30,000, or up to $150,000 if the infringement was willful. See 17 U.S.C. § 504(c)(1)(2). These statutory damages make it easier for the copyright owner to obtain monetary relief without the difficulty of proving actual damages. Similar to how the music industry sued Napster and individuals who downloaded digital music, consistent enforcement of copyrights and the amount of these statutory damages may dissuade potential infringers, particularly individuals with 3-D printers at home.
For copyrights in the United States, copyright owners have the benefits of the Digital Millennium Copyright Act. Under the DMCA, it is a crime for anyone to circumvent a technological measure that controls access to a copyrighted work. See 17 U.S.C. § 1201(a)(b). The owners of websites that host 3-D model data to 3-D print infringing articles may be prosecuted under the DMCA. Copyright owners thus may file take down notices to these host websites. The available remedies under the Copyright Act and the DMCA for 3-D printing infringement therefore may cause an increase in copyright litigation in the manufacturing industry.
New Federal Law Will Help Protect 3-D Printing Trade Secrets
Until recently, trade secret protection existed under individual state laws that are inconsistent with each other in scope and may limit what information may comprise a trade secret. The Defend Trade Secrets Act of 2016 provides trade secret owners with a private, federal, and civil cause of action to assert claims for misappropriation of trade secrets. See 18 U.S.C. § 1836(b)(1). For 3-D printing source code or blueprint designs kept as a trade secret, manufacturers may have the ability to assert a claim for misappropriation of trade secrets against the owners of websites that host 3-D model data.
To make a claim for misappropriation of a trade secret, a manufacturer will need to show that it took reasonable measures to keep its designs, computer programs, source code, or techniques that have independent economic value secret. See 18 U.S.C. § 1839(3)(A)(B). If the information is kept as a trade secret, then those who disclose or use the information when they know or have reason to know that the trade secret was acquired through improper means may be liable for misappropriation of the trade secret. See 18 U.S.C. § 1839(5)(A)(B). Those who knowingly copy a method of 3-D printing an article without consent of the owner of the IP rights in the method, therefore, may be liable for misappropriation of trade secret. See id.
Under the DTSA, a trade secret owner may obtain relief in the form of an injunction to cease the misappropriation and an award of monetary damages for the misappropriation. See 18 U.S.C. § 1836(b)(3)(A)(B). If the trade secret was willfully and maliciously misappropriated, then the court may award exemplary damages in an amount up to twice the damages award and an award of reasonable attorney’s fees. See 18 U.S.C. § 1836(b)(3)(D).
In extraordinary circumstances, the court may order a necessary seizure of property to prevent use of the trade secret, such as the 3-D printing equipment. See 18 U.S.C. § 1836(b)(2)(A)(i). Also, under the Economic Espionage Act, the United States Department of Justice and the Federal Bureau of Investigations may seek criminal charges against those who misappropriated the trade secret. See 18 U.S.C. §§ 1831, 1832. The threat of a civil suit for damages and a criminal investigation again may be deterrents to third parties seeking to profit from the 3-D printing trade secrets of manufacturers.
Conclusion
Despite the common fear that 3-D printing may create unstoppable copying of many products by unauthorized 3-D printers, well-established IP rights and their traditional associated enforcement mechanisms can still be useful in deterring infringements related to 3-D printing.
Manufacturers will want to be consistent in monitoring for infringements of their IP rights and enforcement of those rights. Consistent and well-publicized enforcement can result in fewer overall instances of infringement, if it becomes known that companies will not sit back and allow their IP rights to be infringed.
Jordan Becker is a registered patent attorney at Perkins Coie LLP with more than 20 years of experience as an attorney built upon his prior experience as an engineer in the aerospace industry. He offers a strategic perspective in guiding high-tech companies and entrepreneurs in all aspects of IP protection. He focuses on developing IP protection strategies and building IP portfolios, and he has obtained hundreds of U.S. and foreign patents for clients.
Heather A. Boice, a senior counsel with Perkins Coie LLP’s Patent Litigation practice, concentrates her practice on patent infringement litigation with an emphasis on electrical, computer and mechanical devices and designs, automotive designs and devices, the aftermarket parts industry, telephonic and cellular systems and devices, computers, nanoparticles, water and paper treatment solutions, collagen, pharmaceuticals, and dietary supplements. She also focuses on trademark, trade dress and copyright infringement, protection, registration, enforcement, and litigation.
