Innovate

Innovate Magazine

Innovate is a special compendium of articles written by and for AIPLA members. Designed as an online publication, INNOVATE features magazine-like articles of 500-1,500 words in length on a wide variety of topics in IP law today.

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Innovate Articles

 

The market for 3D printing continues to grow and analysts forecast that its overall economic impact will reach upwards of $100 billion by 2025.1   As 3D printing becomes more commonplace, some have begun to question whether it is any more environmentally friendly than the conventional manufacturing processes it seeks to replace.

Broadly described, 3D printing is any form of additive manufacturing that builds a 3D object by extruding material onto a platform in progressive layers.  3D printers and printing technologies have been around for about 30 years, but only recently has their adoption become widespread.

A variety of factors have contributed to the rise of 3D printing including: superior machines, improved printing material, and lower costs.2   Another important factor has been the expiration of a number of patents covering core 3D printing technologies.3   This has led to an increase in market participants.

Many of the technologies described in expired 3D printing patents were developed 20 or more years ago.  As a consequence, they may not address modern day manufacturing challenges.  New 3D printing technologies developed to address such challenges may not be described or even contemplated by these old patents.  Opportunities therefore should exist to carve out protection for improvements to the basic 3D printing technologies described in the expired patents.  The thousands of 3D printing related patent applications filed over the past 20 years substantiate this view. 

One area that appears fertile for pursuing patent protection are technologies for reducing the environmental impact footprint of 3D printing.  In some respects, 3D printing is already eco-friendly.  3D printing facilitates the production of components with less material without sacrificing strength, for example.  Other aspects of 3D printing, however, are considered problematic from an environmental perspective.4   Experts have warned that 3D printing may consume more energy than conventional production techniques in certain cases.5   Also, many 3D printing processes produce plastic by-products which are not reusable and/or emit fumes, some of which may be toxic.6  If 3D printing is to overtake the tooling market, like many advocates predict, it seems likely that a variety of innovations will be needed to improve the eco-friendliness of existing 3D printing techniques.

This challenge presents an opportunity for innovators in that they can potentially leverage the patent system to secure exclusive protection for their inventive solutions.  When confronted with a technical problem, companies will sometimes commission a patent landscape study to gather information on how others have attempted to address the problem in the past, if at all.  Most U.S. and foreign patent applications publish 18 months after filing and therefore can provide valuable insights on new products under development by competitors and which otherwise might not be publicly known.  Additionally, due to the written description and enablement requirements, patents and pending applications can provide a wealth of technical know-how relevant to a particular technology.  Understanding what others have done in the past can spark ideas on how to improve or tweak existing products and methods, as well as provide guideposts to the “white space” where there may be opportunities to obtain exclusivity.

How To Protect 3D Printing Innovations With A U.S. Utility Patent

A U.S. utility patent is “a grant to the patentee…of the right to exclude others from making, using, offering for sale, or selling throughout the United States, or importing the invention into the United States.” 7   This right to exclude is for a period of twenty years from the date the application for patent was filed, provided maintenance fees are paid.8   

To obtain a U.S. utility patent, each patent claim9 in a U.S. utility application must include patent eligible subject matter.  Patent eligible subject matter includes a process, machine, manufacture, or a composition of matter.10    For 3D printing innovations, such subject matter may include improvements to the 3D printer itself, including any methods of operating the 3D printer and systems within the 3D printer, materials used within the 3D printer, and media used by the printer to make the 3D objects.  Other subject matter may include the software used to direct the 3D printer to print the object and the 3D printed objects themselves.  In addition, uses of the 3D printer could be coupled with other technologies for patent purposes.  For example, the digitized output of MRI or CT medical scans could be used to print a 3D replica of a tumor or other object within the body of a patient, thereby allowing doctors to have an accurate in situ view of the object in preparation for surgery or other treatment.  

In addition, each patent claim must also be useful, novel, and not obvious. For example, a third party patent disclosing the same improved 3D printing material or tool and invented before the proposed invention may prevent the claim from being novel.11   Also, the differences between the claimed invention and one or more prior art patents, for example, must not be obvious to a person having ordinary skill in the art to which the claimed invention pertains.12  

One claiming strategy may include having claims in a single utility patent application directed to at least one of an improved 3D printing process, a 3D printing system, software used to direct the 3D printer, and the 3D printed object, as relevant.  In some circumstances, it may be helpful to conduct a patentability search to understand any third party patents and publications related to the proposed invention before filing.  The patentability search results may help both the inventor understand the potential scope of the patent protection available before proceeding and the patent drafter craft a claim strategy tailored to the same.  

The subject matter of just some of the more recently issued utility patents relating to 3D printing improvements include support platens, printhead modules, brace structures, and deposition nozzles for additive manufacturing, for example.13 Various other patents relating to 3D printing include methods of producing orthopedic implants, method of making cemented carbide powder, 3D printed shoes and splints, and 3D printed expandable spinal fusion cages, to name a few.14 

As a result, there appear to be opportunities for patent protection for both technologies reducing the environmental impact of 3D printing and 3D printing related technologies in many other sectors as well.15   Likewise, even if manufacturers do not consider obtaining utility patent protection for their 3D printing innovations, it may be prudent to search and review unexpired patents relating to their innovations to reduce any risks of infringing such patents before proceeding.  

Disclaimer: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney. Views expressed are those of the author and are not to be attributed to Marshall, Gerstein & Borun LLP or any of its former, present or future clients.

NOTES: 

1. Bromberger, Jörg et al. (2017, September).  Additive Manufacturing: A Long-Term Game Changer for Manufacturers, found at https://www.mckinsey.com/business-functions/operations/our-insights/additive-manufacturing-a-long-term-game-changer-for-manufacturers.

2. Flynt, Joseph. (2017, February 21).  The Environmental Impact of 3D Printing [Blog post], found at 3dinsider.com/environmental-impact-3d-printing/.

3. See footnote 2; and Hermann, Christiane.  (2014, July 7).  3D printing: Patents Could Make It Difficult for Start-ups to Enter the Industry [Blog post], found athttp://blog.drupa.com/de/3d-printing-patents-could-make-it-difficult-for-start-ups-to-enter-the-industry/.

4. See footnote 3; and Kurman, Melba.  (2013, July 20).  Is Eco-Friendly 3D Printing a Myth?  [Blog post], found at https://www.livescience.com/38323-is-3d-printing-eco-friendly.html.

5. See footnote 3.

6. Id.

7. 35 U.S.C. § 154 (2012) (in addition, this statute states that “if the invention is a process” the patent is a grant “of the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, referring to the specification for the particulars thereof”); see also 35 U.S.C. § 100(c) (“(t)he word ‘patentee’ includes not only the patentee to whom the patent was issued but also the successors in title to the patentee”).

8. See 35 U.S.C. § 154 (2012) (“Subject to the payment of fees under this title, such grant shall be for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States.”).
  
9. The claims of a patent define the scope of protection conferred by the patent.  In other words, the claims define the limits of what is and what is not covered by the patent.  A patent owner generally has the right to exclude others from making, offering to sell, selling, using, or importing into the U.S. things which fall within the scope of the claims. 

10. See 35 U.S.C. § 101 (2012)  (“[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore”).

11. See 35 U.S.C. § 102 (2012).

12. See 35 U.S.C. § 103 (2012).

13. See Kerry Stevenson (2017, March).  Think You Can Keep Up With 3D Print Patents – Think Again, found at http://www.fabbaloo.com/blog/2017/3/23/think-you-can-keep-up-with-3d-print-patents-think-again#.WdGtjQnv7Sc.mailto.

14. Id.; see also Sarah Saunders (2017, August). 3D Printing News Briefs: August 22, 2017, found at https://3dprint.com/185035/3d-printing-news-briefs-8-22-17/.

15. See Jia Lee (2017, July) To Print Or Not To Print: Innovation And IP Issues In 3D Printing, found at https://www.ip-watch.org/2017/07/19/print-not-print-innovation-ip-issues-3d-printing/  (“patent filings relating to 3D printing have increased 23-fold over the last five years”).

 


Meggan F. Duffy is a registered patent attorney and partner with Marshall, Gerstein & Borun LLP. She has extensive experience  securing valuable domestic and foreign patent rights for a variety of clients in the mechanical, consumer products, medical devices, e-commerce, and insurance services sectors. She also provides strategic opinion counseling and portfolio management advice for many clients, helping them succeed by advancing and protecting their technologies through skillful patent preparation and prosecution.

As a partner with Marshall, Gerstein & Borun LLP, Daniel T. Chavka focuses his practice on patent law matters including patent procurement and portfolio management. He enjoys working on the cutting edge of technology and is passionate about finding creative ways to protect the inventions of his clients. Mr. Chavka works closely with in-house counsel and managers, invention review committees, and inventors to evaluate new innovations, develop protection strategies, and implement those strategies throughout the world. 
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