3D Printers and Patent Infringement: Low-Cost Legal Tips for Hardware Startups

Written by Pete Tormey

You’ve worked hard on your invention and spent no small sum getting it patented. So what happens when someone uses a 3D printer to make your patented invention without your permission? What if someone uses a 3D scanner to scan your invention, and then creates a graphics file so everyone else can download and make your invention for free? 

The point of your patent is to prevent unauthorized people from making, using and selling your invention. Clearly, the burgeoning industry of 3D printing is poised to seriously disrupt patent protection for hardware startups.

What can hardware startups do, as patent owners, to avoid losing revenue if makers begin printing their products for free? Should hardware companies file suit, or is that particular cure worse than the disease? Can hardware startups avoid the negative publicity that copyright-holders experienced last decade among users of file-sharing software such as Napster, LimeWire, etc.? This article will focus on these questions and suggest some low-cost tips to protect you.

Music, Movies, Art and Copyright Infringement: An Analogy from Recent History.

The Past: Music Artists and Copyright Infringement 

Let’s talk a little about those litigious, copyright-friendly entities like the Recording Industry Association of America (RIAA), users of Napster and it’s progeny, and the selected battleground: the courtroom. Around the 1990’s and early 2000’s, file sharing became incredibly popular, much to the dismay of artists, musicians and movie rights holders (which we will refer to as ‘copyright holders’ in this article). Suddenly, music and movies were easily traded in portable file formats such as mp3s and mpegs. Copyright holders of previous decades were forced to ask themselves, what was the point of creating works of art? How can a movie production company justify spending seven- or eight-figures on a major motion picture if people could simply download it and watch it for free?

One strategy to curtail file sharing was to go after individual downloaders and file suit against each of them. Quickly, little-known names like ‘the RIAA’ became infamous. Worse yet, by suing the very people that should have been seen as customers (rather than infringers), copyright-holding organizations were seen by much of the public as an enemy. (See https://www.eff.org/wp/riaa-v-people-five-years-later) So what’s the key takeaway? Suing your potential customers is probably a bad idea because it won’t help your company to be seen as “the enemy."

The Present: 3D Printing and CAD files.

3D printing is poised to usher in a new era of disruption to intellectual property, this time aimed at patent holders instead of copyright holders. Will history repeat itself?

3D printers use a computer-assisted drawing (CAD) file to create the item that the CAD file represents. While CAD files have been around for decades, the advent of the inexpensive 3D printer and the laser scanner enhances the power inherent to the once-humble CAD file.

A laser scanner allows one to take a 3D ‘picture’ of a product and create a CAD file that can be used with a 3D printer to print copies of that product. Thus, the time-consuming task of manually creating a CAD file that represents a product is eliminated. Alternatively, smartphones equipped with the right app could allow for a user to simply snap one or more pictures to generate a CAD file. 

As 3D printers drop in price, they will appear more frequently in homes and print/ship stores rather than only in machine shops and laboratories. Thus, 3D printers will very likely become ubiquitous, allowing for anyone with a CAD file of their desired product to have a copy of that product with just the push of a button, and the slight cost of print material (e.g., some bits of plastic). But what if that CAD file is of a patented product?

If you have a patented product, chances are good you worked hard to create it and  spent some money to properly patent it. The main beneficiary of the patent process is not the inventor, but the people who invest in getting the product to market. What is the point of that investment if someone can simply fire up a 3D laser scanner, take a ‘picture’ of your product and churn out copies for free? Moreover, what is the right solution here? To file suit against each individual could generate very poor PR between your organization and those who could become your customers. Our advice is to avoid repeating history and consider some of our less litigious suggestions.

One possible solution: stop expensive litigation before it starts by ‘providing notice’.

While scholars and law firms alike provide different legal theories under which infringers can be sued, patent infringement suits begin in the six figure range and often run into the millions. For many of our clients, this is not a viable option. Indeed, a patent infringement suit for a startup is something to be avoided if at all possible. To meet this end, we suggest two options to stave off potential infringers. One option is to use a well-known bit of patent law about providing notice to potential infringers. The other is to take advantage of another branch of intellectual property: - trademark law.

Providing notice of patents pending on your product.

The first option is essentially printing, preferably using a raised or textured surface, the words "patent pending" on your invention once you’ve applied for a patent.  Of course, putting "patent pending" on a product that is not covered by any patents (pending or otherwise) is a crime known as false marking, something which we do not advocate. However, if your product does have patents pending, placing those words on one or more surfaces of your product can provide notice of infringement to someone trying to create a CAD file. This is because the laser scanner itself may scan and include the raised surface words “patent pending” into the CAD file, giving notice to anyone who downloads the CAD file that this is patented product.

Once labeled, the print shop will be put on notice that infringement of your invention may soon commence. In this case, the print shop will take steps to avoid being found as inducing infringement because they will be liable – not just the end user. This may provide some protection against infringers who use commercially available 3D print shops.

In other cases, we recommend including the CAD file itself as part of the patent protection. So in addition to a patent on your invention, your patent attorney can help you get a patent on the computer instructions used to make your invention. Someone who copies and distributes those instructions will be liable. Keep in the mind the goal is not to go after each individual, like the record labels did, but to go after the wholesale distributors of your invention. That way, you avoid the negative PR and debilitating cost of attempting to sue individual downloaders.

Similarly, the CAD file is copyrightable, so if an infringer copies the file, say by making it available for download, that infringement is actionable in court. To gain copyright protection is easy and affordable and can be done by anyone; you don’t need a law firm. See www.copyright.gov for details. Unlike patent litigation, copyright litigation can be much less expensive.

Providing notice of your trademark on your product.

Another good option, using a trademark, piggy backs off of some of the ideas above. A trademark protects the purchaser by assuring the goods or services are from the right company. If someone buys a soda that says “Coca-Cola” on it, you would reasonably assume that it’s from the Coca-Cola and that’s what’s inside. If a disreputable soda maker started marketing their soda using Coca-Cola’s logo, that would be a pretty serious case of trademark infringement.

Thus, if you have a trademark for your company and you put your trademark in textured surfaces on the product, you let the purchaser know where that product came from (i.e., your company). And if someone uses a 3D laser scanner that picks up the trademark as well as the product and prints products with your trademark, they are committing trademark infringement. It should be easy to make sure your products are protected this way because most manufacturers like to have their company name and logo visible on their products If you have federally registered your trademark, you may be able to recover damages at the state and federal level against anyone who distributes CAD files of your invention. Trademark infringement cases can be much less expensive than patent litigation.

Here’s a final strategy that combines a few of the above suggestions. You could provide original CAD files of your invention that include textured trademarks or listed/pending patents clearly visible in the CAD file itself. Since you are the creator of your product, you are best positioned to create an accurate CAD file (versus someone who uses a laser scanner), and thus you have control of the source of the first CAD file of your invention. People will be likely to go to you to get that CAD file, so why not make it yours? In a way, this is similar to music artists who have provided free mp3s of their own songs with an additional audio segment inserted somewhere in the song by the author suggesting that the downloader pay for the song. An effective, if not irksome, strategy.

Final Thoughts.

In the end, it will be difficult to find each and every potential infringer because someone with a laser scanner and 3D printer at home who has your patented invention will be hard to find. Furthermore, this person may very well be your potential customer. It might not be in your best interest to sue them even though they are infringing your product. Moreover, it may be cost-prohibitive to launch a patent infringement suit against everybody. Trademark and copyright infringement suits are often less expensive and may be used as a last resort. Our suggestions aim towards avoiding expensive litigation by simply adding notices of patent pending or trademarks for your patented or trademarked products clearly, in a textured format, that will be difficult to alter if scanned.

The information presented in this article is for educational purposes only and does not constitute a legal relationship. There are no warranties, express or implied, of any type, for the information contained herein and statements contained herein are not intended to constitute legal advice or create an attorney-client relationship in any manner.

The authors would like to thank Professors Holbrook and Osborn for their stellar treatment of this subject in their article ‘Digital Patent Infringement in an Era of 3D Printing,’ which can be found in 48 U.C. Davis L. Rev. 1319 and at: http://lawreview.law.ucdavis.edu/issues/48/4/Articles/48-4_Holbrook-Osborn.pdf

Learn more tips like this at HardwareCon 2018, the Bay Area’s Premier Hardware Innovation Conference on April 19th-20th.  Experience two full days of keynotes, panels and workshops focused on the most important topics around building a successful hardware company. Get" class="redactor-linkify-object">http://www.hardwarecon.com/">G... your tickets here now if you want to meet the hottest startups, investors and industry leaders across the global hardware ecosystem.

About The Author

Pete Tormey

Pete Tormey

Managing Partner at Antero & Tormey LLP

Over 7 years experience obtaining Intellectual Property protection for start-up and small high technology businesses. I bring my entrepreneurial design and marketing experience to the legal relationship to provide reliable counsel for growing businesses. Specialties: All forms of Intellectual Property counsel for high tech businesses

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