Some issues and challenges associated with 3D printing

By Bharadwaj Jaishankar and Gaurang Gautam, Saikrishna & Associates
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With a constant and dynamic advancement in technology, laws, especially intellectual property laws, are always playing catch-up. This results in IP laws being stretched and sought to be purposively interpreted to cater to the advancement of technology. One such technology growing at an amazing rate, 3D printing, has thrown up interesting IP issues.

Bharadwaj Jaishankar
Bharadwaj Jaishankar

Involving a process of complex layering, 3D printers print three-dimensional tangible objects easily generated through a computer-aided design (CAD). The resultant product can be complex in design and, in some cases, complete with moving parts as well.

This advancement has created a scenario where manufacturing of any product can be highly localized, presenting IP owners with the prospect of high quality infringement of various IP rights.

Patent protection: 3D prints are capable of infringing patents to the extent that basic products can easily be designed on a computer and printed products may carry certain moving parts which in themselves are patent protected. Making, selling, offering to sell or using such printed products constitutes infringement under the Patents Act, 1970. However, if the printed products were made at a private set-up, the exceptions precluding infringement, namely research or experimentation or imparting instructions, could come into play.

Copyright protection: Copyright affords protection to the author/owner of a work and excludes others from copying or reproducing it. In India copyright protection arises upon creation of a work. Registration of the copyright is not mandatory for the grant of protection.

The “tension” or overlap between copyright and design rights, especially in relation to 3D works, gives rise to an interesting insight. The conversion of a non-functional two-dimensional artistic work into a 3D work would infringe copyright. However, if an artistic work is registrable as a design, more than 50 reproductions would extinguish copyright in the work per section 15(2) of the Copyright Act, 1957.

Save for cases where 3D prints are created in the course of employment, the rights to 3D works would vest with the author. However, unlike traditional copyright works, the creation of a 3D print involves: (a) the person who conceptualized the design; (b) the person who designs the file on the computer; and (c) the person who operates, loads and sets the printer. This raises issues of ownership of copyrights in the created work and the various assignments that a copyright owner would have to obtain from the other involved parties.

Trademark protection: A person reproducing a protected design through a 3D printer can also be pursued under trademark laws. Although still in the nascent stage, shapes/textures have started being recognized as protectable trademarks around the world, including in India. As long as the shape/texture conveys meaning and distinguishes the goods or services of one person from another, such non-conventional marks are capable of being protected and enforced as trademarks. The first obvious risk that follows is that the use of 3D printing to print objects can be exploited to infringe protected shape/texture marks. Additionally, using a 3D printer to replicate an existing product could result in the copying of a logo (affixed on the product). This could lead to a claim of counterfeiting.

Gaurang Gautam
Gaurang Gautam

To mitigate such risks, right owners may extend their brand protection strategy to cover shape/texture marks and take steps to enforce their rights, through appropriate civil or criminal action, against such infringing 3D printed products.

To conclude, the economic advantages of 3D technology are immense. With even complex design files stored in thumb-sized devices, production of intricate models is becoming localized, effective, cheap and convenient. Moving away from conventional factory production, manufacturing will become a powerful tool enjoyed by households and private individuals.

However, this shift is bound to entail confrontational IP aspects. To say that producing 3D printers itself harbours potential growth of infringements is misplaced. Merely because myriad challenges may arise with the use of a 3D printer, it would be inappropriate to attribute the infringement to the production and sale of the printer. With sufficient printed warnings and disclaimers, a 3D printer manufacturer is easily absolved of liability, and rightly so.

As products can now be manufactured cheaply and in households, right holders will have to think ahead to curb infringement. Makers of 3D printers should take the lead by adopting strict IP policies and creating general IP awareness. Right holders should endeavour to protect their product design or CAD files from the public eye. If the computer design is not available, it is an uphill task for potential infringers to make accurate replicas of the product.

The creation of innovative, artistic and patentable work with the aid of a computer design will open up a realm of possibilities. To believe that 3D printing will only potentially infringe and not create new IP would be myopic. In any event, the ground is set for this technology to further chisel IP laws all over the world.

Bharadwaj Jaishankar is a senior associate at Saikrishna & Associates, where Gaurang Gautam is an associate. The views expressed in this article are personal.

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