3D printing: Patents could make it difficult for start-ups to enter the industry

It seems as though every week a new 3D startup company is formed or a new project on Kickstarter has been launched. The more people get involved in 3D printing, the faster this technology can become as common as 2D printers. But as always, IP law cannot keep pace with these new technologies. To help companies tackle this challenge, Christopher Higgins, Managing Associate at the global law firm Orrick, has developed a special expertise in in 3D printing and additive manufacturing technologies.

When and why did you realize 3D printing was an interesting area to focus on?

In late 2012, I read several articles on patents in 3D printing and realized that these articles were giving people incorrect advice on expiring 3D printing patents. I had been closely following 3D printing technology, but when I saw the chance to incorporate 3D printing into my legal work I jumped at the opportunity. Much of the presentations I give on 3D printing are focused on educating the public, potential investors, and those already in the 3D printing industry of how patents affect 3D printing. For example, simply because one patent expires related to a specific type of 3D printing technology, does not mean that everyone can then go out and build their own 3D printer.

How does your background in law and engineering prepare you for the challenges in this new field?

I have an undergraduate degree in electrical engineering, which allows me to understand 3D printing technology at a very in-depth level. Coupled with my law degree, I am able to recognize and anticipate where patents and 3D printing technology may intersect. This allows me to counsel clients on best strategies to both grow a 3D printing patent portfolio and lessen the risk of being sued for patent infringement.

Where do you see the biggest challenges regarding 3D printing and IP law?

IP laws have typically lagged behind new technologies, leaving the courts to fashion old laws to situations that were not envisioned when they were created. For example, the repair and reconstruction doctrine of patent law clearly did not contemplate that consumers would be able to cheaply and easily 3D print replacement parts for a variety of components. In copyright law, many internet 3D printing companies permit a consumer to upload a 3D printing make file and have it printed. Without proper safeguards on the end of the printers, they could run into copyright infringement issues if the design is subject to a copyright.

How do these challenges compare to past and current IP issues such as we have seen in the music industry?

The copyright issue is quite similar to Napster and the fight between the music industry and peer to peer sharing sites. However, 3D printing adds an additional twist. Not only are 3D printing make files widely available for download, but there is the additional step of actually printing the potentially copyrighted design. Thus, there could be multiple layers of copyright infringement if consumers and companies are not vigilant.

What do companies have to do to meet these challenges? Where do you currently see potentially dangerous blind spots?

Any technology company should be aware of changes to IP laws and changes in technology that could implicate old laws. 3D printing is no different. A typical 3D printer could be covered by hundreds of patents, from the filament, to the printer heads, platform, and circuitry. In addition to the hardware, the associated software could also be covered by many patents. We often see newer technologies run into issues with patents directed to software that have nothing to do with the newer technology at issue. This typically arises in cases brought by non-practicing entities (“patent trolls”). These entities buy patents that are broad in coverage and then attempt to read the claims on a multitude of technologies that were not even within the scope of the invention. It is rather difficult to predict if and when patent trolls will enter the 3D printing landscape, but we think as the industry grows we will begin to see suits against some of the larger companies.

Some people argue that the attempts to reduce counterfeit goods have not been very successful so far and that 3D printing will make this practice virtually impossible to eliminate. What do you think?

Because of the high cost to 3D print an object, I do not think counterfeiting is an area of concern. There are still much cheaper ways to produce counterfeit goods than with a 3D printer.

Are legislators also required to make changes to adjust to the new realities (regarding patents, for example)?

The legislature constantly proposes reforms to US patent laws, but rarely does anything come to fruition. When it does, however, such as with the America Invents Act in 2011, it is not typically directed to a specific technology area. The patent laws are meant to have broad applications and it is the courts that are in the best position to address nuances that arise due to new technology. A great example of this is the recent decision by the US Supreme Court in the Aereo case. Aereo had a novel idea of distributing television stations to consumers by rebroadcasting televisions shows over the internet and was sued by cable companies for copyright infringement. Aereo argued that because it distributed the program over an individual antenna for each customer, it had the right to do so. The Supreme Court found that Aereo’s system was still a public performance and its arrangement did not skirt the copyright laws.

How will the regional differences between Europe, the US and Asia regarding IP law affect the future of commercial 3D printing?

The differences between the US, European, and Asian patent regimes are not new to 3D printing. Global companies should be informed of key differences in patent and copyright laws before selling 3D printers or 3D printed end products in multiple countries. This typically begins with an opinion by competent counsel in the respective country to evaluate the proposed product or service under the applicable law.

What are the greatest misunderstandings about 3D printing and expiring patents or other issues in IP law?

Expiring 3D printing patents are typically the topic of a majority of questions I get asked. Many articles have posited that because a seminal patent in a particular 3D printing technology (e.g., selective laser sintering) the field is open for all to enter. But that could not be further from the truth. These expiring patents cover technology that is at least 20 years old. In the past 20 years, thousands of patents have issued that cover “improvements” on the basis technology. Therefore, unless one wanted to use only the 20-year old technology in the original expired patents, there is a significant chance that one or more patents cover basic improvements to the original technology.

What fascinates you most about the field?

The staggering rate at which the field is growing and expected to grow is most fascinating. It seems as though every week a new startup company is formed or a new project on Kickstarter has been launched. The more people get involved in 3D printing, the faster this technology can become mainstream and as common as 2D printers.

How do you think the 3D printing and IP law will evolve in the future?

According to the US Patent Office, the number of patent applications related to 3D printing has continued to rise each year. There have been over 13,000 patent applications filed in the past decade that attempt to capture some aspect of 3D printing. This number will continue to grow in the next few years and the technology will get more crowded. While I do not think it will reach the high level of patents in the smartphone industry, the number of issued 3D printing patents will be quite robust and make it more difficult for new startups to enter the industry down the road.