Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.

Wednesday, July 23, 2014

Protecting designs in the age of 3D Printing

By Lester Miller, Patent Attorney and Senior Associate

You really should see Theo Jansen's brilliant, articulated Animaris Geneticus Parvus emerge from a 3D printer, finished and without any assembly required, and walk itself across a boardroom table powered only by the breeze of conversation. There is brief elation, then the shock of being dumped unprepared into an unfamiliar world.

The Maker Movement has arrived, taking advantage of fast data transfer across national borders for instructing affordable machines to build tangible products. Designs law around the world is already being reviewed in an attempt to keep it relevant to this new technology.

What is 3D printing?

There is more than one way to 3D print products on your desk, but one of the important methods is Fused Deposition Modelling (FDM), patented in 1992 (now expired) by Stratasys. FDM uses a computer-controlled dispensing head to place a thin layer of liquid material on a base. After the bottom layer solidifies, the head indexes upwards to drop other layers on the lower ones to form a product. Usable materials include at least 50 plastic types, rubbers, metals and even biological materials. Dita von Teese was the main attraction in a 3D printed net gown at an event in New York last year, while it is anticipated that the first fully functioning human organ will be 3D printed within a year.

Figure 1 of Crump FDM patent US 5121329

Consumer 3D printers can be yours for less than $2000, printing coffee cup-sized products for a few dollars.

Creating and using model data

To design a product, a designer uses a computer modelling package which outputs the product details to a stereo lithographic (STL) file. A converting software client then changes that file to another format, which gives path and dispensing instructions to the dispensing head.

To copy a product, laser digitisers scan 3D objects and create an STL file. Usually everyone scans their own head first (do it annually for fun), and then they move on to copying existing products.

A large number of websites (such as this one and this one) provide STL files of original designs, many for free.

Downloading protected products for free!

Imagine a successful product, the subject of an Australian registered design. Overseas, a person scans the product and makes an STL file available, hosted on a server in a country where the designer did not seek registered design protection. A user in Australia downloads the file and makes it here on their own printer. What remedies can the owner of the registration seek? And against whom?

(a) Some present actions

The design owner may consider suing the Australian maker for making, offering to make, importing for sale, selling, using in business, keeping for sale in relation to a product identical to or substantially similar in overall impression to, the registered design. This is possible, but suing individuals is unlikely to be commercially palatable for a design owner.

Similarly, it would be difficult to make a legal case that there has been third-party authorisation of a design infringement by the provider of the STL file, or that that party is a joint tortfeasor with the maker of the design, because of the high bar set for establishing those grounds and the ease of working around the relevant provisions. It is also not clear whether a take-down request would be observed in one jurisdiction when the design right is in another.

Some Australian cases indicate that posting an STL file on a foreign website may be considered to be an offer to make, but it would probably need to be proved that the website targeted Australia.

(b) Potential actions under possible amendments to the Australian Designs Act

(i) 'Product' redefined

'Product' in the Designs Act 2003 is defined as a 'thing that is manufactured or hand made'. Kits are included in the definition if, when they are assembled, are a protected product. Neither 'product' or 'kit' in their present narrowly-defined form seems apt to cover an STL file on a computer.

But it does not seem a large conceptual stretch to extend the definition of 'product' to a data file for input to a machine for making the product, whether or not the data file is further transformed to instructions to make the product via head pathways or other methods. This would arguably inhibit the making of the file in Australia, transmission of the file to Australia (importation for sale), keeping for sale or offering to sell in Australia.

In support of this small stretch, last month the United States International Trade Commission confirmed parts of an Initial Determination of a presiding Administrative Law Judge which found that an electronic transmission of a digital data set constituted 'importation of articles'.

(ii) Contributory infringement

Designs law could include something similar to the contributory infringement regime of section 117 of the Patents Act 1990: if the use by a person of a product having only one reasonable use would infringe a patent, then the supply of the product to that person would infringe the patent. This could cover the provision and/or transmission of a data file in or to Australia containing details of a protected product.

ACIP Designs Review

The Advisory Council on Intellectual Property is currently reviewing the Australian designs system. An issues paper is to be released in late 2014 and there will be consultation on that paper in August and September. ACIP anticipates that recommendations to the Government will be finalised by November 2014.


3D printing presents great opportunities for realising efficiencies in designing and manufacturing prototypes and products. But as a result of widespread copying and the international availability of data files of protected products, IP owners risk loss of income, while ISPs and technology companies may risk potential liability for secondary infringement if they are seen to have authorised design infringement. The problems of copyright owners are now the problems of design owners, who should be vigilant in putting in place suitable strategies, starting with conducting regular searches for their products (or close copies) on Maker websites.

The situation for design owners and makers will be clearer in a few months' time once the ACIP consultation process is complete and it has made its recommendations to the Government.

(A longer version of this article was first published in The Australian Intellectual Property Law Bulletin, Vol 27 No 5 p118)

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