3D printing and IP: Lessons from the EPO’s ‘Shaping Tomorrow’ conference

IP Landscape

Growth

Additive Manufacturing (AM), also known as 3D printing, is one of the fastest growing areas at the EPO. From 2015-2018, its average annual growth rate was 36%, 10 times faster than the average for all EPO applications. Over 4000 AM applications were filed in 2018 alone, and this trend seems set to continue. The biggest sectors for AM patent filings are health, energy and transportation, but extend to consumer goods, construction and food.

Geography

There is a clear geographic bias in terms of applicants, with 47% of applications coming from Europe and 35% coming from the US. Within Europe, Germany is the responsible for the most applications, with 19% of total AM applications, followed by the UK at 5%. It is also interesting to note a clear concentration of AM innovation in the south of England, with far fewer AM inventions originating from the North or from Scotland.

There are surprisingly few applications originating from Asia, especially consider their strength in other technologies such as AI and 5G. The biggest player in Asia is Japan, which makes up 9% of all AM applications.

Applicants

Looking at the top applicants, there is a clear mirroring of the geographic concentrations mentioned above. The companies with the most AM patent applications are General Electric and United Technologies, both based in the United States. These are followed by Siemens, HP, BASF and 3M. The pharmaceuticals sector is represented in the top 20 by Johnson & Johnson. Only 4 of the top 20 filers are from outside the US and Europe: Fujifilm (Japan), Canon (Japan), Stratasys (Israel) and Sabic (Saudi Arabia).

3D printing represents opportunities for smaller companies and start-ups to dominate the patent landscape. 22% of applications come from companies with fewer than 1000 employers, with 12% of these coming from companies with fewer than 15 employees. 11% of applications originate from universities and public research organisations.

Exciting Areas

There are a number of technical fields which have been galvanised by the rise of 3D printing. These include food, where 3D printers are being used to print sweets and cakes in new and complex shapes, and healthcare, where 3D printed bones are especially important in countries with an ageing population. The COVID-19 pandemic has also been assisted by AM, with 3D printed valves being used to turn snorkelling masks into respirators.

3D printing also has the potential to significantly impact space travel. For example, titanium parts can be 3D printed and used on spaceships, allowing for a lighter design. Perhaps even more importantly, AM has opened the door to 3D printing parts while in space, such as solar panels, tools and spare parts. This would greatly improve the space efficiency of missions going forward.

While 3D printing may not completely replace traditional manufacturing methods in all areas of society, each sector to which AM may be applied has room for tremendous growth. One of the most promising is consumer products, with Nike already in the top 20 applicants for AM patents.

Infringement

Likelihood

The EPO grants over 100,000 patents a year, and the number of patents that are in force is obviously much higher. Yet, the number of patents that are being infringed is thought to be only a very small proportion of this. A number of reasons have been put forward for this discrepancy, including respect for the monopoly granted by the patent system.

Another possible explanation is that merely knowing how to make an invention, as disclosed by a patent, does not make it easy to do so. The manufacturing capabilities and know-how required to put an invention into practice on an industrial and commercial scale represent a significant barrier to entry. This is where 3D printing has the power to make all the difference. The ease at which people can make their own products using instructions available online creates a flatter market structure, which is likely to result in an increase in the number of patents that are infringed.

In addition, there are likely to be many patents which, even if they are infringed, are not enforced. One reason for this is that infringement is not always easy to spot, and patent proprietors may not be fully aware of all their competitors around the world. This trend may be exacerbated by 3D printing, as local production becomes favoured over large-scale centralised manufacturing.

Assembly

3D printing also raises issues regarding claim types and infringement. Traditional manufacturing of items such as bike chains requires an assembly step. Claims are often drafted with this in mind, either by reciting an extra component to hold multiple other components together or by requiring an assembly step in a method claim. Yet 3D printing techniques often obviate the need for assembly, and products are often ready to use as soon as they are printed. This therefore represents a further infringement consideration and is likely to impact how claims are drafted in the future.

In fact, the abovementioned issue is most likely to be important in fields which are not the obvious candidates for 3D printing. In those fields for which 3D printing has already made a significant impact, patent attorneys are already expected to anticipate these issues and to draft their applications with 3D printing in mind. Therefore, the problem is likely to lie in areas in which 3D printing is not typically considered to be important. Care should clearly be taken when drafting claims in a field which could, even if not too prevalent at the moment, be impacted in the future by AM.

CAD files

As will be discussed below, 3D printing can facilitate the rise of distributed manufacturing in a variety of different fields. This is made possible by dissemination of a CAD file, the digital representation of the invention, which is used to instruct a 3D printer. Whilst this is unlikely to directly infringe a patented product itself, it could count as indirect (secondary) infringement. Nevertheless, different jurisdictions have different levels of proof required for this type of infringement and it is therefore not ideal to rely on this provision.

Under Article 52 EPC, programs for computers (i.e. software) are excluded from patentability. CAD files fall under this exclusion, thus posing a challenge to the protection of inventions in the AM space. That being said, the exclusion only relates to software ‘as such’, and ways round the exclusion is achievable. We can therefore look towards the software field to examine how these problems have been solved in other technical areas. Beauregard claims are thought to be one way forward, and can help protect against this type of infringement avoidance. This claim type cover the computer instructions configured to cause a machine to produce a product, and should therefore cover the CAD file itself.

Final considerations

One of the great advantages of 3D printing is its made-to-order philosophy, which may help combat the existing throwaway economy and reduce waste. AM also allows for companies to respond flexibly to varying customer demands.

3D printing also has the ability to disrupt the classic model of distribution. Gone are the days of expensive shipping costs, where a product must be manufactured at a central location and then shipped to its final destination. Instead, the instructions can be sent electronically to multiple 3D printers all over the world and printed on location. Aside from the potentially huge cost savings, distributed manufacturing is also likely to greatly reduce the carbon footprint of the manufacturing sector.

The above advantage of 3D printing also throws up further patent infringement considerations. Whereas currently, applicants often only seek protection in potential manufacturing jurisdictions and some of the big markets, distributed manufacturing may make it necessary to obtain patents in many more jurisdictions. This could represent a significant increase in costs and presents a further challenge for companies in fields that will be impacted by the rise of AM.

Another challenge for AM is that there are still some materials that cannot be liquified. These include cotton and silk, which still need to be woven, and wood and paper. It is nevertheless hoped that some of these problems will be overcome with further innovation. Furthermore, unauthorised copying is likely to be abundant, seeing as instructions are sure to be widely shared online. This is a fast-moving area and tools (including legislative tools) must be put in place to protect rights-holders.