3D Printing Technology Raises Concerns for Patent Protection, IP Attorneys Say
The advent of 3D printing may raise enough questions about patent law to encourage a push for legislative or regulatory changes, said several intellectual property attorneys in recent interviews. The technology could spur discussion about a patent law modeled after the Digital Millennium Copyright Act, which grants safe harbor to websites that unknowingly host files that infringe copyright, they told us. No such law exists for files that infringe on patent rights, they said. While aides in both chambers told us Congress will take up some narrow legislation aimed at patent assertion entities this fall, the attorneys said neither that legislative debate nor the House Judiciary Intellectual Property Subcommittee’s ongoing review of copyright is likely to address intellectual property issues in 3D printing.
Sign up for a free preview to unlock the rest of this article
Timely, relevant coverage of court proceedings and agency rulings involving tariffs, classification, valuation, origin and antidumping and countervailing duties. Each day, Trade Law Daily subscribers receive a daily headline email, in-depth PDF edition and access to all relevant documents via our trade law source document library and website.
Printing in 3D puts consumers at risk of running afoul of patent law in a new way, just as digital music downloads put consumers at risk of widespread copyright infringement, said a 2012 study in the Harvard Journal of Law & Technology (http://bit.ly/14aU8qP). But a consumer downloading a design file for a patented object doesn’t infringe on that patent until he or she creates an object, so cases against potential individual patent infringers might be too resource-intensive to be valuable, said Michael Weinberg, vice president at Public Knowledge. Instead, rightsholders might seek damages from contributory infringers, such as the manufacturers of 3D printers or the websites that facilitate downloads of 3D printing design files, he and other attorneys said.
Manufacturers of 3D printers likely are safe under existing law because the printers can be used for a multitude of noninfringing purposes, said Mark Radcliffe, an attorney at DLA Piper. But websites that facilitate the downloads of patented material could be liable as contributory infringers, much as websites that facilitated access to copyrighted material might have been liable as copyright infringers were it not for the DMCA’s safe harbor provisions, which require such sites to implement notice-and-takedown procedures, said Darrell Mottley, a Banner & Witcoff intellectual property attorney, agreeing with Radcliffe and Weinberg. Mottley and other attorneys said the DMCA could offer protections to websites such as Thingiverse and Shapeways, if the design file they host would produce a copyrightable object -- but no similar protections exist if the design file points to a patented object. Thingiverse and Shapeways, both of which have a notice-and-takedown procedure in place, had no comment for this article.
Weinberg and Radcliffe said rightsholders seeking to sue websites for hosting files that infringe on patents would still have to prove that someone manufactured a patented object, and that the website itself contributed to that infringement -- which could require substantial research and resources, Weinberg said. Rightsholders would also have to prove the company knew or had intent to cause someone to infringe a patent, he said, echoing Paven Malhotra, an attorney at Keker & Van Nest. Those hurdles would likely insulate the companies against such suits, Weinberg said. Radcliffe agreed that since patent infringement is expensive and difficult to prove, hosting websites aren’t a likely target. “Damages can be difficult to justify, so if the infringement stops, most people will go away,” he said. Websites that have a notice-and-takedown procedure in place are unlikely to see many patent infringement cases, he said. Moreover, Weinberg said, a DMCA for patents might not be necessary at all, because the Patent and Trademark Office (PTO) hosts instructions on how to create patentable objects.
Many of the existing problems with the patent system are highlighted by 3D printing, but it “does not create a whole new class of problems,” Weinberg said. “The industry will be confronting a lot of patent questions in the next couple of years, but I don’t know that any of those questions are unique to 3D printing.” He said the technology could also bring a new wave of people into contact with the patent system, and if those people grew angry over flaws in the system, that could catalyze change. Just as the Internet “elevated the relevance of copyright in everyday people’s lives,” 3D printing could elevate patent law, he said.
The attorneys also said 3D printing raises problems relating to copyright law. Copyright doesn’t apply to functional objects, but it can apply to objects that serve decorative and creative purposes, Weinberg said. While physical objects in and of themselves might not be protected under copyright law, decorative objects could be. Reproducing a doorstop might not violate copyright law, but reproducing an intricately designed doorstop could, he said. If designers work to create objects for which the creative design and function are inseparable to protect their work under copyright law, they could bypass the patent system, he said. “Useful objects could be protected for decades after creation,” he said in a paper on the subject he published in 2010 (http://bit.ly/16dcKDU). “Mechanical and functional innovation could be frozen by fears of massive copyright infringement lawsuits. Furthermore, articles that the public is free to recreate and improve upon today (such as a simple mug or bookend) would become subject to inaccessible and restrictive licensing agreements."
The patent issues don’t necessarily mean Congress should pass a 3D printing law, the attorneys said. “I don’t think there’s a need, and part of that is because a lot of the questions raised at least have potential answers in existing law,” said Weinberg. “We're also at this early stage where it’s very easy and attractive to speculate ... but I don’t know that that’s a good way to develop policy in this case.” Radcliffe and Malhotra agreed legislation isn’t yet necessary. Some members of the House and Senate Judiciary committees are keeping 3D printing on their radar, but none had considered legislation on the subject, from an intellectual property perspective or otherwise, said aides. Weinberg said Public Knowledge and others had hosted several events on Capitol Hill to introduce members to the technology, so “it’s not foreign to people,” he said. “You can find people on the Hill who are aware of it, but we haven’t had hearings on it.”
Congress isn’t likely to get involved soon, either, attorneys said. Mottley said such involvement could hurt the emerging 3D printing economy. “There’s a lot of excitement for U.S. competitiveness and jobs,” he said. “Services are out there and businesses are developing. If Congress makes legislation, it could stop or hurt that business.” Legislating in the intellectual property space has also been notoriously difficult, Radcliffe said. “You have all these very strong interest groups, and it’s difficult to get legislation through, however well intentioned and appropriate.” The America Invents Act took about eight years to pass, he said, and the DMCA took three years of hearings.
Instead, the attorneys are looking to the PTO to police the issue. “It’s critical that the examiners are well educated on the technology and prior art of [3D printing], because they're going to be the ones who decide to grant or not grant a patent,” said Malhotra. Weinberg said if the PTO issued very broad patents relating to 3D printing, or perhaps any technology, it would “cause trouble down the line.” The PTO did not comment on the potential for policymaking regarding 3D printing, but gave us a copy of remarks the agency’s then-deputy director made at a 3D printing event the PTO held in January.
"The USPTO is deeply committed to equipping the entrepreneurs and small businesses with the tools and resources they need to protect their [intellectual property] and navigate the patent system,” said Teresa Stanek Rea, according to the remarks. She said 3D printing presents a number of potential challenges, since the technology “permits production of extraordinarily accurate duplicates of objects that are the subject of IP protections” and the industry has only modest barriers to entry. “As in other creative and innovative industries, since digital files and objects are easy to copy, distribute, and pirate, the emerging online market in which 3D entrepreneurs are entering and competing should be closely monitored,” she said.
Courts will likely also play a role in determining how and whether 3D printing files and models infringe on copyright and patent rights, the attorneys said. “Even for the super interesting questions, there are existing doctrinal guides,” Weinberg said. “It will take a couple of lawsuits that start to put some meat on the bones of those guidelines to give everyone an opportunity to say, ‘OK, these guidelines have existed and here’s how they're being applied. Do we need to clarify or rewrite them?'” he said. “If new problems emerge and companies find the DMCA isn’t giving them enough protection, then there might be calls for relief,” Malhotra said. “But we're in the early stages, so people aren’t really sure what problems will emerge.” -- Erin Mershon (emershon@warren-news.com)