The growing adoption of additive manufacturing means that IP rights holders are taking ever more interest in the implications for the protection of their assets. Rem Noormohamed and Marco Müller-ter Jung - of international law firm DWF LLP - explain the English and German law positions.
Access to and use of 3D printers is increasingly widespread. Many printers now retail for less than £500, and those who do not wish to own the equipment may nevertheless send CAD files to professional printers who are often able to print and dispatch a design within 24 hours.
This raises questions such as, “If someone prints a spare part for their lawnmower, does this infringe the intellectual property rights (IPRs) that protect the lawnmower?”, and, “If someone prints copies of a pair of trainers to sell, is this infringement?”
As the technology proliferates and improves, IPR holders are taking ever more interest in the implications for the protection of their assets. As CAD files are easily transferred – and their data made physical – across borders, this must inevitably take on an international dimension.
Helpfully, the basic principles of the relevant IP protection law are harmonised across the current EU member states. A comparison of the positions in English and German law may therefore be illustrative.
In both jurisdictions, both the script of a CAD file and the object that may be produced by its use are capable of being protected as IP. In both jurisdictions, the former is commonly protected by copyright, meaning that reproducing the file – for example, by adding it to an online platform – from which it can be downloaded, may constitute infringement.
In the case of the latter, the object itself may be protected by design rights or, if the object comprises an invention, by one or more patents.
Both English and German law permit the registration of designs for up to 25 years (subject to payment of renewal fees every five years). Registered designs can protect spare parts, provided that they are visible to the end user when the product is in normal use, are replaceable and intended to be assembled and disassembled, and are themselves new and have individual character.
There is an exception for features, which are necessary to allow an article to fit another article (must-fit). Registered designs are therefore unlikely to protect the lawnmower’s spare parts in our example above.
Unregistered designs also receive some protection, but this has a shorter duration (up to 15 years in the UK, but only three years in case of a Community design).
Both registered and unregistered design rights only prohibit making objects to the design for commercial purposes.
In both jurisdictions, a product patent will not ordinarily protect all of the product’s components, therefore potentially requiring the registration of further patents or design rights in “spare parts”.
However, note that under English law, spare parts may receive protection, depending on its life expectancy, whether the spare part is part of the patented product’s “inventive concept” or is free-standing.
There is also an exemption from patent infringement for acts done privately and for non-commercial purposes. Using the examples above, printing a spare part for a lawnmower may be exempt, but printing trainers for sale may infringe a design and/or patent.
If someone uses additive manufacturing to print an item, which has the likeness of a trademark, this may infringe the mark. Note that trademarks can last indefinitely (subject to renewal) and may in specific circumstances protect the shape of a product, as well as any branding which may appear on it.
Authors
Rem Noormohamed, Partner
IP, Technology, Commercial & Competition
T +44 7791 937489
Marco Müller-ter Jung, LL.M., Partner
T +49 221 534098-0
If the trademark is unregistered, in both jurisdictions law allows the possibility of a passing-off action, although this is harder to establish. Neither trademarks nor passing-off will protect the IPR owner against someone printing a product for private use.
While both German and English intellectual property laws offer IPR owners protection, the rise of additive manufacturing presents significant challenges to the enforcement of those rights in practice.
Infringing manufacturers often use jurisdictions where it is more difficult to enforce IPRs. In the past, counterfeit goods have typically been manufactured in countries with lower costs and then transported to higher-cost jurisdictions, such as the EU.
The lower costs of additive manufacturing mean that it is cheaper to produce goods in the country in which they will be sold, eliminating transport costs and meaning that the goods will not need to cross borders. In the past, customs authorities have played an important role in detecting counterfeit goods crossing borders, but this may be lost.
Due to the risks presented by additive manufacturing, vigilance and proactive registration of all relevant rights is advised.
