At the beginning of this year we wrote about expiring 3D printing patents. Yes, several early 3D printing patents have expired or are expiring. So what? Contrary to the legions of writers who predict otherwise, such patent expirations are unlikely to open a brave new world of open 3D printing or additive manufacturing technology.
When a patent expires, the invention goes into the public domain. But figuring out when a patent has actually expired can be tricky. The current U.S. patent term is 20 years from the date the patent application was filed at the U.S. Patent and Trademark Office (USPTO). Don’t assume, though, that every patent necessarily expires 20 years after its filing date. For applications filed on or after June 8, 1995, the patent term is 20 years from the filing date (or 20 years from the filing date of an earlier application if it claims the benefit of that application). For patents that were in force on June 8, 1995, or that issued from an application that was filed before that date, the patent term is the longer of (a) 20 years from the application filing date (or 20 years from the filing date of an earlier application if it claims the benefit of that application), and (b) 17 years from the patent grant.
In addition to the filing and grant dates, several other factors can affect the actual expiration date. For example, some patents may have a somewhat longer life because the patent terms were adjusted to compensate for delays in reviewing the applications at the USPTO. Because of the backlog of applications, this adjustment is commonly a few years or longer. Other patents may have a somewhat shorter life because the owner entered a “terminal disclaimer” that ends the patent when an earlier patent expires. Many other patents expire early because the owners fail to pay maintenance fees, which are due at four year intervals in a patent’s life. To see if a particular patent’s maintenance fees have been paid, you can check here. For anyone the needs to know if a patent has expired, the best, safest, and yes, most expensive course of action is to ask a patent attorney, who can research the patent’s “prosecution history” and give you an opinion on whether and when the patent has expired.
The technology covered by a patent is defined and limited by its claims. A patent is infringed by making, using, selling, offering to sell, or importing a machine, component, or process that falls within the scope of its claims. So for expired patents, the only technology that can be used safely, without infringement, is the technology covered by the claims and nothing more, not even improvements upon the technology. In other words, an expired patent gives only the right to use that specific 20-year-old technology. As a simple illustration, let’s assume you know that a particular patent covering a coffee mug has expired. You might think you can freely make coffee mugs after the patent has expired, but if your new mugs have an improvement, like a protective sleeve, they might infringe a different, non-expired patent that covers coffee mugs with sleeves.
For a real-world example, consider Alexander Graham Bell’s telephone patent. After it expired in the late 1800s, anyone was free to use the technology covered by its claims. But telephone technology has come a long way since then, generating thousands of patents that companies like Apple and Samsung are warring over today. The freedom to use Bell’s technology doesn’t amount to much when the technology has long been surpassed. So are expiring patents for old 3D printing technology really going to change either the industrial or consumer 3D printing industries? For the former, probably not much. For the latter, there certainly are a lot of FFF/FDM startups. But will they be able to compete with innovators who obtain patents for improvements or new ways of 3D printing on the consumer level? While only time will tell, it seems unlikely.
Even though a few old 3D printing patents have expired, there is no shortage of patents and published applications in the additive manufacturing space (about 13,000). Approximately 5,000 utility and design patents have been issued that relate in some way to additive manufacturing or rapid prototyping. Since 2000, approximately 8,000 applications have been published that relate in some way to 3D printing. New applications are being filed all the time. Some of these 13,000+ patents and applications cover 3D printing machines and machine components, but many are method patents, which cover methods, processes and systems (including software) for making products and materials. Others cover designs and materials. More importantly, although many of these patents and applications cover incremental improvements to old technology, others cover basic advances and whole new ways of making things. Again, today’s telephones are far different from Bell’s.
So making, using, selling, offering to sell, or importing a 3D printer that does anything beyond the scope of the claims of an expired patent may infringe some other patent. If the printer includes any features or functionality covered by an improvement patent, the owner of that patent may assert an infringement claim. The same is true of method patents.
There is no quick and easy way to know if an additive manufacturing machine or process infringes one of the 5,000 patents or could infringe one of the 8,000 published applications (there is no potential liability for practicing the claims of a pending application, unless and until it issues as a patent). Before making, using, selling, offering for sale, or importing any machine or component, or using any additive manufacturing process, ask a patent attorney if you’re concerned about infringement. The attorney can perform a patent search, analyze the relevant patents in the space, and provide a “freedom to operate” opinion. On the other hand, the attorney may tell you that building and selling your machine will infringe someone’s patent. You might also ask the attorney to provide an opinion on whether such patents are likely to be declared invalid by a court or the USPTO. But be forewarned. Even with an opinion saying you don’t infringe or that the patent is probably invalid, or both, you could still be sued for patent infringement, and even lose an infringement lawsuit. Having such opinions, however, provide some peace of mind and may protect you from a charge that you willfully infringed a patent.
John Hornick is a partner and Dan Roland is an associate with the Finnegan IP firm, based in Washington, DC (www.finnegan.com). Any opinions in this article are not those of their firm and are not legal advice.
