3D printing: hype or reality?

United Kingdom

This article was produced by Nabarro LLP, which joined CMS on 1 May 2017.

3D printing needs no introduction. Its possibilities have been hyped by manufacturers, engineers, designers, the press and the public alike since the early 2010s. President Obama even endorsed it in his 2013 State of the Union address: “3D printing has the potential to revolutionize the way we make almost everything”.

But whilst innovative applications of 3D printing have seen considerable uptake in the scientific and industrial sectors, including healthcare, construction and real estate, the benefits to the consumer retail market are still primarily theoretical. This can be seen with 3D printer manufacturers such as MakerBot, its parent Stratasys, and 3D Systems closing stores and/or experiencing dramatic drops in share price in 2015. This article looks briefly at some of the applications of 3D printing, their successes and shortfalls and the associated legal considerations.

Here’s a recap on some of the more ground-breaking progress that we’ve seen recently in the 3D printing market.

Healthcare

The printed body part market grew over 30% between 2013 and 2014, with business focused on made-to-measure titanium replacement hip joints and polymer bones. 3D bio-printing – the process of generating viable and functional cells – has created printed skin tissue, blood vessels and even stem cells derived from a donor’s adult cells. This paves the way for personalised drug treatments, lower transplant rejection rates, and eliminates the need for animal testing.

Construction and real estate

Emergency and low income housing construction particularly benefit from the speed, low cost and good safety record of 3D printing. The ultimate goal now is to print entire buildings in situ using locally-gathered materials. One such example of this is the ‘Contour Crafting’ project. This uses NASA award-winning technology to construct an entire house within a day, complete with structural components, plumbing, wiring, utilities, and even consumer devices such as audio-visual systems.

Retail and consumer

Accessibility to materials, sophisticated printing machines and high costs for the average user mean that the commercial reality of customers printing their own designs or buying the rights to a design and printing these at home is unlikely to land for at least a few more years. Companies which derive significant revenue from merchandising (e.g. toys and small collectable figurines) - such as film studios, video games companies and entertainment giants such as Disney - are expanding their offerings so you can 3D print yourself as a Star Wars or Marvel character. However, as 3D printing technology becomes more readily available there are fears that piracy will disrupt the industry in the same way that digital content piracy impacted on the music, film and gaming markets.

Legal considerations

The legal considerations surrounding 3D printing are complex and will only increase as the adoption of 3D printing becomes more commonplace. Careful consideration should be given to all aspects of 3D printing from the initial sketches and CAD files to the final product. Whilst IP issues are the most obvious, thought should also be given to product liability, licensing and data protection. Below are some of the key legal considerations that can help safeguard your business and product.

1. Designs: Does your printed product have a unique and distinctive look?

This is a key right for protecting your product, as 3D printing has given rise to new innovative structural and design possibilities. For example, in the Netherlands, one startup is planning to print an entire steel footbridge spanning 15 metres in situ with a distinctive branch-like structure. A registered Community design subsists for a maximum of 25 years (subject to renewal every 5 years). If unregistered, the Community design automatically protects against copying for 3 years.

2. Copyright: Who created the CAD files and/or design sketches?

At the heart of any 3D printed product are the original drawings, designs and CAD files that instruct the printer to print the design. You might not think it but these drawings themselves attract valuable copyright.

Copyright protection arises automatically in software, web content and databases as well as original drawings, preparatory and marketing materials. If these were prepared by a third party outside the business or contractor (ie. any non-employee), make sure that any IP arising in these materials is assigned to the company or licensed on appropriate terms. Without such rights, use of these designs to create a 3D printed product might infringe the IP of a third party resulting in an infringing 3D printed product.

3. Patents: Is your product an "invention" capable of industrial application?

The process of 3D printing is likely to give rise to novel inventions, both in terms of the specific 3D printing technology used and the final product. For example, Amazon has filed several patent applications in the US for delivery vans that 3D print goods en route to customers, aiming to shorten the time between receiving and delivering orders.

Patents can be expensive and difficult to obtain but they guarantee a monopoly right for at least 20 years (subject to renewal). Do not disclose your invention to the public (whether that be the output of the printer or the technology behind the printer itself) before the first patent application has been filed. Consider entering into non-disclosure agreements with anyone you collaborate with to keep it secret before launch - this can also provide sufficient protection if your product is likely to sell for only a short time, such that patent protection is not worthwhile.

4. Beware of counterfeiters: What techniques have you used to try to prevent others infringing your IP rights? How can you license your IP rights whilst discouraging counterfeiters?

3D printing may increase counterfeiting. Although IP rights allow you to take legal action against anyone using those rights without permission, in practice you will need to take proactive steps to safeguard your rights.

As part of your strategy, you may wish to consider how ‘trade mark’ DNA or nanoparticles can be embedded to brand ‘authorised’ or ‘authentic’ products. CAD files may also require more sophisticated distribution techniques, such as the adoption of a ‘pay-per-print’ business model, and/or the secure streaming of CAD files via an Application Programming Interface (API) which sends instructions directly to a printer, removing the need for the CAD file to be handled by the consumer.

5. Product liability: Have you tested your product and do you know how to deal with any defects? How are third parties involved?

Although traditionally liability arising from a defective product attaches to the manufacturer, 3D printing introduces a number of additional parties. These include the owner, manufacturer and/or supplier of the printer, the supplier and/or manufacturer of the materials, the creators of the digital files or drawings, as well as the end user/manufacturer. There are also other variables to consider, such as the type and model of printer used, the materials used by the distributor or consumer at home, and printing conditions. If consumer 3D printing becomes adopted by the mainstream (as suggested by Gartner last year), we can expect changes to product liability regulations to determine or apportion liability between those players, although this is likely to be considered by the court initially on a case-by-case basis. This area of law is fast developing – watch this space.

6. Regulatory permits and consents: are there any additional industry-specific requirements?

3D printing will need to be considered in light of industry-specific laws. For example, in the healthcare sector additional authorisations may be required in relation to health and safety, product quality, transportation, packaging, sterility, usage instructions and marketing. Industries such as the automotive or aviation industries will need to consider the traceability of 3D printed spare parts for reasons of safety and usability.

7. Data protection and privacy: does your product (or its designs) use or contain personal information relating to a living individual?

Any CAD file or final product containing personal data (i.e. any data that identifies or may identify a living individual) or elements of personalisation will require appropriate safeguards to protect such data, including privacy or data protection policies to ensure compliance with the Data Protection Act 1998. It may seem unlikely that your input or output from a 3D printer will involve the use of personal data, but the healthcare sector provides a good example: 3D printed models made for pre-surgery planning will incorporate personal data about a patient’s health, a particular illness, or their genetic makeup and may require the patient’s explicit consent in relation to any use or disclosure of this data.