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3D Printing Design Policy to Reduce Infringing Use of 3D Printing Designs & Related CAD Files

Miami - December 19, 2019

Reduction of Infringing Use of 3D Printing Designs & Related CAD Files by:

Decoupling IP Rights in 3D Printing Designs & related CAD Files (retained by the Manufacturer)

From the Rights over physically manufactured 3D printed Design models (transferred to Client)

I - Difficult Protection of 3D Printing Designs & CAD Files under IP Law

3D printing is the process of printing three-dimensional physical objects by depositing layers of materials like plastic, rubber, or metal in line with a computer-aided design (CAD) file.

3D printing facilitates the counterfeiting recreation of most objects without Manufacturer’s permission, even if the object is protected under IP law, because nowadays with a mobile 3D scanning application it is possible to take photographs of objects and then send the resulting electronic file to a 3D printing machine for such objects to be manufactured. This makes it difficult to file a lawsuit against infringers who are most of the time impossible to locate. Indeed, anyone can copy a 3D object if they have the CAD file, which can either be downloaded online or obtained by scanning the object with or without the permission of the owner of the object. For instance, in Canada (Copyright Act, R.S.C. 1985, s. 64 (2).), India, Singapore (Registered Designs Act, 2000), 3D printing designs are considered as ‘Disruptive Intellectual Property. This means that if mass-produced (meaning more than 50 industrial reproductions of a given proprietary 3D printing design) then reproductions are no longer viewed as an infringement of a proprietary 3D printing design (such rule is called the ‘50 articles rule’ in relation to the concept of ‘industrial application’).

II – Solutions

The designer (manufacturer) of 3D printing designs and related CAD files may:

1) establish with its customers a cloud-based paid subscription (licensing) contractual model regarding 3D Printing Designs and CAD Files (e.g. offering of downloadable 3D print files or 3D-printed objects, similar to online music delivery sector, in exchange for a monthly fee);

2) mark its 3D printing design and associated CAD files with a unique identifier to track use and infringements;

3) enter into partnerships with 3D printing design sharing platforms which make 3D files publicly available in order to help reduce unauthorized use; and/or

4) put in place a user-friendly 3D Printing Design Policy with its customers to establish good faith with customers and communicate customers’ responsibilities and the risks they may face should they steal the 3D printing designs. Such a policy should include a precise intellectual property rights clause providing that any product, feature, design, trademark, CAD files, presentations, images, sketches, the 3D printing process, the design of the internal lines/shapes, design philosophy, methodology shall remain the sole and exclusive property of the Manufacturer. It should also add that In the event that the Manufacturer is mandated by the client to print and/or manufacture the 3D Printing Design on behalf of the Client, and once all sums owed to the Manufacturer have been paid to the Manufacturer, the latter will then assign to the client ownership over the physically manufactured 3D printed Design model subject to the limitation that Manufacturer shall retain all intellectual property rights in the 3D Printing Designs and CAD Files. Indeed the Client should agree that, except for the rights which Manufacturer may assign to Client, Client shall not acquire by implication or otherwise any right in or title to or license in respect of the 3D Printing Design Files.

If you wish to learn more about how you can protect your 3D Printing Design assets, please do not hesitate to contact us, we will be happy to help!

Dr. Ariel Humphrey