ECTA Round Table on 3D Printing and IPRs – Update on the Trade Marks Legislative Package (Event Review – Part II)

by Pedro Malaquias

On 11 March, ECTA – The European Communities Trade Mark Association hosted in Brussels a Round Table on 3d Printing and Intellectual Property Rights. This post is a report of said round table. For a review of the first part of the conference, where Michael Koenig (Deputy Head of Unit, Industrial Property, DG GROW – Internal Market, Industry, Entrepreneurship and SMEs) presented an update on the trade marks legislative package, see our previous post here.

The round table had three participants. Benjamin Denayer, Senior Business Developer Additive Manufacturing at SIRRIS, made a presentation of the technology. Representing the academia, Dr. Rosa Ballardini, Assistant Professor at the Department of Commercial Law of the Hanken School of Economics presented ‘3D Printing and Patents’. Finally, Carla Van Steenbergen, Legal Counsel at Materialise, analysed ‘3D Printing from a Design and Copyright Point of View’.

 

The first speaker was Benjamin Denayer, who started by explaining what 3D Printing is (Layer by layer manufacturing technique, that allows functional end products with excellent mechanical properties starting from a 3D CAD model) and how does it work, providing present examples of its uses. To explain the present status of the technology, a reference was made to Gartner’s Hype Cycle for 3D Printing.[1] One of the most exciting possibilities of the technology is the fact that it makes designing easy and accessible to everyone through low cost printers and scanners, open design architectures and the existence of online printing services and innovative printing resources. However, as the stakeholders multiply and the consumer enters the production structure, the value chain ceases to be linear. Further, rapid technological developments allied with a dispersion of players along an international scene and the development of new business models in an open innovation culture make the future unpredictable.

Entering into legal territory, the speaker noted that additive manufacturing combines the issues resulting from the online sharing of digital files with tools allowing for both perfect copies and endless variations of physical objects. This has implications in most of the existing intellectual property rights, raising new questions in relation to the overlapping of rights and the differences between subject matters, what constitutes an act of infringement and which exceptions and limitations apply. On the other hand, the use of Digital Rights Management systems (see US Patent 8,286,236) and identifiers in printed objects to establish its provenience is evolving.

However, the legal issues surrounding to additive manufacturing are not limited to intellectual property law. In fact, Mr Denayer noted that there are other legal and ethical questions. As an example, the speaker mentioned gun control issues, the safety and effectiveness of medical devices and the quality of food products.

 

After a short break for coffee, Dr Ballardini presented the topic ‘3D Printing and Patents’. From the onset, the speaker warned that her presentation was made of preliminary thoughts and that no solutions would be provided.

Following a necessary context on how the technology works, the current state of play of the European patent law and the differences between direct and indirect infringement, the speaker centred her attention in articles 25 (Right to prevent the direct use of the invention) and 26 (Right to prevent the indirect use of the invention) of the Agreement on a Unified Patent Court.

In relation to direct infringement, Dr Ballardini noted that anyone who prints a patented device would be directly infringing as a result of ‘making’ the device without authorization. Therefore, unless the rightholder allows it or an exception and limitation applies (such as private use), printing a patented object is a prohibited act.

Most of the presentation was however focused in the topic of indirect infringement. After suggesting that the manufacturers of the printers and the suppliers of printing cartridges would not be indirect infringers, the speaker discussed the liability of individuals or platforms that share a file that can be used to print an infringing physical object. After quickly enumerating the requisites for indirect infringement, Dr Ballardini devoted the rest of the presentation to questioning if the CAD files could i) constitute means, ii) that relate to an essential element of the invention and iii) that are susceptible to put the invention into effect. Unfortunately, and due to time constraints, the remaining requirements for indirect infringement were not analysed.

As Dr Ballardini explained, means are historically of a tangible / physical nature and simple. Furthermore, abstract instructions would normally not be considered to be means in this context. However, some national case law has held that software should be considered a means.[2] On the other hand, arguments could be raised to defend that CAD Files are not means. First, the speaker wondered if it would not be possible to argue that CAD files do not have a tangible / physical nature and that they are not software (by analogy with the recent CJEU decision in Art & Allposters).[3] Second, one could argue that CAD files are simple blueprints that provide abstract instructions on how to make the invention. Third, it is questionable that they have a strong connection with the ability to put the invention into effect. As such, the question remains open.

The second step was questioning if the CAD files relate to an essential element of the invention, especially where the invention is the result of traditional ways of manufacturing products and there is no mention of 3D printing technologies in the patent claims. The following possibility of reasoning was laid down: once the object is printed, both the files and the invention exist independently and separately and an analogy can be made with the assembly lines from which traditional devices are manufactured, which are not seen as “essential elements” of an invention. A possible test would then be if the invention could be put into effect also without the CAD file.

The last question the suitability of the CAD files for putting the invention into effect. The speaker noted that although CAD files are usually shared without the drawings and therefore a considerable effort is still needed “for putting the invention into effect”, it would be hard to argue that printing the object would be a maverick or unlikely use.

Having written his LL.M. dissertation on the topic of 3D Printing and IP, this blogger must say that this was quite an interesting presentation as it challenged some of our views on the topic. As such, we look forward for the paper that (we have learned) will be later coming out from this presentation and where we hope the speaker develops her analysis and answers to the questions that posed during her presentation.

 

The last presentation of the afternoon was in charge of Carla Van Steenbergen, Legal Counsel at Materialise. The speaker started by presenting Materialise, a Belgian company specialised in additive manufacturing software and solutions, and i.materialise, its online 3D printing service. As a case study, the speaker introduced the audience to Iris van Herpen’s 3D Printed fashion designs.

Then, Ms Van Steenbergen noted some instances where copyright law and 3D Printing have clashed. The first reference was to Paramount who sent a cease and desist letter to Todd Blatt, who had recreated an extra-terrestrial cube inspired by the Super 8 motion picture. Mr Blatt complied. The recent Katy Perry left shark 3D-printing legal row was also mentioned.

However, instead of discussing the outcomes of users’ actions, the speaker focused the attention on how online platforms can reduce their liability. To do so, i.materialise includes the following clause in its terms and conditions:

i.materialise.com provides an automated internet-based service to users, which they use to design and sell products. i.materialise contractually prohibits its users from using the service to order and/or sell products that infringe third party intellectual property rights (including among others copyright, trademark, design and model, patent, trade dress and right of publicity, etc.). You are solely responsible for the content that you upload on the Site. By submitting an order to i.materialise, you confirm that you are the owner and/or you have obtained from a third party the rights necessary for submitting this order to i.materialise for production and commercial use (see the article re. the challenges) without any violation of any intellectual property rights. If the design you submit to Materialise risks infringing the intellectual property rights of third parties, Materialise reserves the right to either not produce the design or produce the design without the part that risks infringing the rights of third parties. Should your user generated content nevertheless be found to be infringing and/or in violation of any law, you will defend i.materialise against third party claims, and be held liable for all (direct and indirect) damages and costs incurred by i.materialise with respect to such claims.

Still, this is an untested area and it is not possible to state without doubts that such a contractual clause would hold in court and shield the company from any liability. Additionally the company instructs its designers to avoid working in any potentially problematic designs. However, it is completely impossible to guarantee that no infringement work will ever be printed. Answering a question from the audience on this point, the speaker noted that although the E-Commerce Directive[4] provided some protection to the company, the truth is that since it also manufactures the objects once the files are sent to them and provide consultancy on the printability of the files, it is expectable that its conducts are not fully covered by the safe harbour provisions of this directive. As such, it is hoped that the entire legal framework is interpreted in a way that allows for the development of this type of business

Another topic of interest is the collaboration of the company with third parties to create quality files. Ms Van Steenbergen explained that there is more to 3D Printing than simply pressing a button. Not every file that looks good in a screen allows for the printing of a quality object. Working with companies, Materialise assumes also a consultancy role, explaining the real possibilities of the technology and optimising the files in such a way that they can be used to produce good articles. However, this leads to questions over the ownership of the files and to the rights than each of the parties have. Those should be solved prior to any work being carried out in detailed licence agreements.

On the other hand, an area where the protection granted by the law might not be adequate concerns medical applications and devices, such as hip implants that are specific to an individual. The uniqueness of these parts seems to exclude the value of protection granted by design and copyright law. On the other hand, the safety of 3D Printed medical devices is a more pressing issue than the intellectual property implications of the technology. Hospitals are starting to buy printers and they do not always have experienced people to work with them. The on-going revision of the medical device directives will allow for the use of custom-made devices without proper quality certification, something than can create problems for patient safety.

Ms Van Steenbergen concluded her presentation with some thoughts from the business side. The industry should rethink the value of digital files. They constitute an opportunity, allowing for the reduction of stocks and can be used to revolutionise the spare parts industry while benefiting local manufacturing. As such, the protection of these files should be high on the agenda of any company evolved in 3D Printing. As for the law, the most important factor would be to have legal certainty and avoid laws that are too strict.

 

The event then came to an end. As a final though, the speakers noted that although it is expected an exponential growth of the use of additive manufacturing technologies, they will not work as a magic trick to bring manufacture industry back to the European Union. In fact, additive manufacturing technologies will work as a complement to traditional ways of manufacturing, not fully substituting them. Still, the legislative framework should not contribute to hampering the innovation in this interesting field.

 

On a final note, we would like to remind everyone that ECTA is organisings its 34th Annual Conference which will take place in Hamburg, Germany from 10-13 June 2015. For further details, see the event website.

 

[1] See https://www.gartner.com/newsroom/id/2825417.

[2] Menashe Business Mercantile Ltd v William Hill Organization Ltd [2002] EWCA Civ 1702, [2003] RPC 31.

[3] Case C‑419/13 Art & Allposters International BV v Stichting Pictoright.

[4] Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’).