The pitfalls of Intellectual Property (IP) infringement in 3D printing – don’t get caught out!

Atiq Bhagwan| Manager | EY Law | +44 (0) 20 7980 0717 | atiq.bhagwan@uk.ey.com

3D printing is an emerging technology with the potential to significantly disrupt the manufacturing industry by making it possible to copy certain 3D items without the involvement of the original manufacturer. 

One of the key challenges with 3D printing is the potential for infringing the intellectual property rights (IPRs) in items. The risk of infringement has increased as 3D scanning technology has become more readily available.

IPRs in an item

There are a number of IPRs which can be embodied in the same physical items, for example: 

  • The shape of the whole or part of an item, and / or its surface decoration may be protected by registered and / or unregistered design rights.
  • The item itself may benefit from copyright protection if it is an original expression of the author’s own intellectual creation.
  • The shape of an item may constitute a registered trade mark.
  • The shape of an item (or certain parts of it) may also be protected by a patent if it meets the patentability criteria (including being novel, having an inventive step and being capable of industrial application).
  • The software code in Computer-aided design (CAD) files used to print an item through 3D printing are computer programs which are themselves protected by copyright.

IP ownership

In general, the first owner of an IPR will be the person who created it, unless the IPR has been created under a contract of employment. However, ownership of IPRs can be transferred through valid assignment, and exclusive licensees can hold rights very similar to those of an owner within the scope of their exclusive licence. Infringing acts to be aware of when using 3D printing include the unauthorised 3D scanning of items to make CAD files and the sharing of CAD files through online tools including P2P (peer-to-peer) networks. 

3D printing raises some further IPR ownership questions which you may need to consider, for example: 

  • Who owns IPRs in a 3D scan of an item? 
  • Who owns IPRs in a CAD template file which has been amended to make it work?
  • Who owns IPRs in customised items created using proprietary software?

Impact on your business

Usually, only the owner of an IPR can permit its use by another party – without permission, such use will likely infringe it (unless an exception for that particular use applies). If you provide 3D printing services, you should consider whether the necessary permissions for you to provide these services have been obtained from the owner of the relevant IPRs. If not, you risk being liable for infringing these IPRs.

How we can help

As with many emerging new technologies it is not always clear or easy to determine the impact of 3D printing on your existing IPR or whether new permissions must be obtained. Our team can provide advice to help guide you through these challenging issues.