The European Communities Trade Mark Association (ECTA) has submitted a position paper on 3D printing and its implications on Design Law to the European Commission.
The ECTA’s Design Committee has been closely following the development of industrial 3D printing and the technology’s potential impact on intellectual property (IP) rights, particularly in terms of design law and practice. The association’s task force monitors developments within the sector and assesses whether changes in current legislation would be appropriate in combating the challenges brought by new technical additive manufacturing developments.
The paper, which was submitted in April, addresses several aspects of the design law that the ECTA says needs to be evaluated in regards to 3D printing, such as product definition, non-commercial acts, contributory infringement, and the potential impact of 3D printing in relation to spare parts.
Intellectual Property and 3D printing
As 3D printing technology has continued to develop over the years, the adoption of additive manufacturing for industrial applications has increased. 3D printing is being used by industrial players more and more for the production of spare and replacement parts, as well as for the fabrication of end-use customized products and equipment.
In response, questions regarding IP rights within the industry have also arisen. According to Jason Teng, Partner and Patent Attorney at leading full service IP law firm Potter Clarkson, it is important for all parties in the supply chain to be aware of the risks of IP infringement regarding 3D printing as the technology continues to evolve.
The European Union (EU) perceives 3D printing as a key technology in bringing about industrial transformation, and in 2017 reinforced this opinion by publishing a working document on the importance of IP rights in additive manufacturing.
In July 2018, however, the European Parliament issued a resolution on 3D printing regarding IP that experts at the time warned could stifle innovation and lead to increased regulation of the technology.
In May last year, the European Commission released a further study analyzing the state of industrial 3D printing in relation to IP law. The report outlined how the existing IP framework brings protection to IP rights holders, in addition to pointing out potential challenges and the ways in which the 3D printing sector could overcome these hurdles.
The ECTA’s position paper
The paper addresses several aspects of the design law that the ECTA believes need to be carefully evaluated in relation to 3D printing.
The first of these concerns the definition of a product, which the association says should be reconsidered to clearly include new technologies. The ECTA takes the position that a design within a CAD file must qualify as a product in order to be protected under EU design law, and as such the wording of the Article 3(b) of the Regulation and Article 1 of the Directive should be amended to include “not only CAD files, but also any digital representation of items.”
The paper further suggests that the design within a CAD file should be considered a product and the CAD file encompassing the design of a digital item should, therefore, be eligible for design protection. The ECTA does recommend, however, that in order to achieve eligibility for design protection, further clarification would be required regarding how the 3D design incorporated within a CAD file should be described within a design application.
The second point the position paper addresses is the enforcement and limitations surrounding private use of a community design. For instance, an individual scanning and printing copies of products protected by community designs for their own use, or for others with no charge, could be protected from infringement in line with the Article 20(1)(a) exception of the Design Law.
However, the paper points out that 3D printing has not yet reached a stage where completely accurate reproduction of a wide range of consumer goods or high-value complex products would be possible in an adequately wide range of materials cost-effectively. The ECTA believes that this part of the design law is not in urgent need of clarification until this exemption starts to be used on a regular basis.
The next point outlined by the ECTA concerns contributory infringement, which is a form of secondary liability for direct infringement of a patent, copyright, or trademark where a person may be held liable for infringement even though they did not engage in infringing activities themselves.
The association considers it both “appropriate and necessary” to explicitly include contributory infringement in EU design law. It states that the law should clarify that any party that knowingly facilitates or contributes to a violation of design rights, such as scanning an object, hosting a CAD file, or providing it to a third party without the proprietor’s consent, would potentially be a contributory infringer and therefore liable.
Moving on, the paper also addresses IP concerns surrounding 3D printed spare parts, with the ECTA taking the position that this anticipated technological advancement could help find a better balance between “total liberalism”, where all design protection is removed from items categorised as spare parts, and “full, although sometimes restricted, exclusivity of design rights” in spare parts.
The paper suggests that product designers and rights holders generally consider the balance of design protection for spare parts is weighted too far on the side of consumers, with only five years of protection.
As an alternative, the ECTA proposes that the protected period could be doubled to 10 years, or after a five-year period of exclusivity, spare part makers could obtain a license with the right to reproduce the design on terms to be agreed with the rights holder.
Is there a need for a Sui Generis law?
Discussions surrounding 3D printing and its implications for IP laws have raised the question whether the technology should be governed by a completely new sui generis, or unique, law to avoid overlaps and potential confusion with current legalities.
Citing a “multitude of legal tools” including other IP laws that are in place to control the markets, the ECTA’s opinion from the design law point of view is that there is currently no need for a specific sui generis law to govern 3D printing technology.
The position paper states: “It must be strongly emphasised that 3DP technology changes the old structures of designing and manufacturing processes and thereby provides more opportunities for both the industry and society as a whole, but at the same requires changes or at least some amendments to existing IP laws.”
The ECTA also believes that there are “no clear obstacles” to further amending current EU design laws to cover the implications of 3D printing technology.
The association suggests that the best way forward would be to find a balanced means of amending and specifying the limitations and exceptions of current laws in order to increase legal certainty, rather than adding new legislation that could lead to “further complicating the legal field, resulting in overly broad protection of rights, and even hindering the use and future development of 3D printing technology.”
The ECTA’s position paper can be read in full here.
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Featured image shows the flag of the European Union. Photo via Adobe stock/Tobias Arhelger.