June 5, 2013
By Oliver Herzfeld
In my first installment of this three-part series (available here), I commenced a review of protections available for 3D printing designs and objects under U.S. intellectual property law with a focus on copyrights. I will continue with a review of such protections under U.S. utility and design patent law.
The objective of patent law is to encourage the development of useful applications of technology by awarding owners a monopoly for a limited time that is relatively short as compared to copyright law. In return for patent protection, owners must disclose the details of their inventions rather than keeping them secret. Doing so, increases technical knowledge available to the public and promotes further innovation by both owners and other parties.
The patent monopoly affords owners the right to prevent others from making, using, selling or offering for sale of patented inventions, thereby blocking competition, and to obtain damages for third party infringement. However, patents do not provide owners with the right to make or practice their inventions. Also, unlike copyrights, which carry with them the right to make derivative works, patents do not have any analogous rights to improvements on inventions. Consequently, different unrelated owners can hold patents that are improvements on the technologies of one another and owners may need to obtain one or more licenses to practice their inventions. Although patent protection is often the strongest form of legal protection available, there are a number of types, considerations and hurdles to consider.
A utility patent provides exclusive rights for any new, useful and nonobvious process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. Subject to the payment of certain maintenance fees, utility patents permit their owners to exclude others from making, using, or selling the inventions for a period of approximately 15 to 17 years from the date of issuance of the patents (more precisely, 20 years from earliest effective date of patent application filing). Certain expediting methods are available at additional cost (e.g., filing a petition to expedite with the USPTO or pursuing the USPTO’s extra-expedited “rocket docket” procedure), including an accelerated examination process for utility patents that is not available for design patents.
A design patent provides 14 years of exclusive industrial design rights for new and nonobvious ornamental designs of articles of manufacture. The USPTO examination process for design patents used to take over a year, which would sometimes exceed the life expectancy or actual lifespan of many designs. However, the USPTO has recently exerted efforts to improve and streamline its review procedure, so a design patent can now be obtained in approximately 10 to 12 months, and with certain expediting methods at additional cost (as described above), in as few as six months.
Obtaining a patent is an expensive process. There are application fees, search fees, attorney fees, and later, possible litigation and licensing costs. The usual first step is to engage outside counsel to perform a search of the prior art and develop a patentability opinion. Therefore, it is advisable for owners of 3D designs and objects seeking patent protection to create a budget to include such patentability search and opinion, as well as the projected patent application and prosecution costs in the U.S. and abroad, and some extra amounts for extraordinary items such as appeals of final rejections.
The patent process is time consuming. It typically takes three to five years from the filing of a utility patent application to the issuance of a patent (considerably less for a design patent as described above). Consequently, owners of 3D designs and objects should consider whether the patent process might be inadequate because (i) the duration of the process may exceed the useful life of the product or (ii) the intended users’ needs may change by the time the patent is issued.
In order to meet the so-called enablement, written description and best mode requirements of U.S. patent law, owners must include in their applications:
1. enough information about their 3D designs and objects, in sufficient detail, to enable a person reasonably skilled in the art to carry out the claimed invention; 2. a description of what the owner believes is the scope of the invention; and 3. what the owner believes is the best way to practice the invention (still legally required, but under the America Invents Act, a failure to disclose the best mode is no longer a basis on which a patent claim may be canceled or held invalid or unenforceable).
Instead of protecting owners, this full disclosure can actually facilitate the replication of 3D designs and objects by third parties. Indeed, since patent applications are generally published 18 months after filing, if the patent application is ultimately rejected by the USPTO, the inventor will have disclosed her or his idea to the public without receiving any patent protection whatsoever.
Commitment To Enforce Rights
Patent rights are strictly predatory in that they do not actually require any use or exploitation by an owner. Instead, a patent provides the right to exclude all others from making, using, selling, offering for sale, or importing the patented 3D design or object. Patents are usually enforced only through private actions, namely, civil lawsuits and license agreements. So owners of 3D design and objects must consider their commitment to enforce their rights against others by means of litigation and/or the establishment of a licensing program (including the concomitant costs of such enforcement actions).
No Innocent Infringer Or Fair Use Defenses
In general (with only a limited exception), unlike copyright law, there is no innocent infringer defense to patent claims that may reduce damages for defendants who can establish that they were not aware and had no reason to believe they were infringing the patent. In other words, once a 3D design or object is patented, any third party making, using, selling, offering for sale, or importing the relevant patented 3D design or object is liable for infringement, regardless of such party’s knowledge of the patent. Similarly, there is no parallel judicially created “fair use” doctrine for patents. So the listed purposes and four balancing factors of copyright fair use will not help exculpate a party from claims of patent infringement.
In my final installment of this three-part series, I will review and summarize protections under trademark, trade dress, and trade secret law, and provide some guidance as to what owners should do to protect their intellectual property rights in 3D designs and objects.