3D-printing: is the patent holder missing out?

On our website we have published several items about 3D-printing (or the professional variant ‘additive manufacturing’). In this item we will pay specific attention to the position of the holder of a patent. In another article on this website we focus on 3D printing and trademarks.

Specifically, we will address the possibilities under Dutch law for a patent holder to take action against:

  • private individuals who print a product or component;
  • print shops that print a product or component;
  • private individuals who share a CAD or STL file of a product or component online; and
  • platforms on which someone places a CAD or STL file of a product or component.

Private individuals – from consumer to prosumer

Due to 3D-printing, production and distribution can move to living rooms. Consider, for example, home accessories, jewellery and spare parts. Consumers who have their own 3D-printer no longer have to purchase such products at the store, but will soon be able to design and print them at home.

Service providers, such as 3D Hubs, bring supply and demand together, causing private makers to get in touch with potential customers. Via such services, it is currently already possible to find a place in almost every city where products can be printed on demand for private individuals. That blurs the line between private and business: the consumer becomes prosumer.

Can a patent holder take action against a private person who prints a product at home?

In principle the answer is no. In the Netherlands, the patent holder cannot object to the use of his invention in the private sphere without a commercial purpose (the ‘private use exception’). At the time, the Dutch legislator included the private use exception in the Dutch Patent Act (‘Rijksoctrooiwet’), because only commercial use could harm the patent holder in such a way that it was necessary to protect him against it. The Dutch legislator could not have foreseen the development of 3D-printing with the introduction of the Dutch Patent Act in 1910 or the revision in 1995.

And against private printing on demand?

However, because 3D-printing makes it possible for private individuals to copy technical products, the patent holder may miss out on income and indeed suffer disadvantage from 3D-printing consumers. Especially if they also start 3D-printing on demand. If the commercial character is clear, the private individual will no longer be able to hide behind the private use exception.

The question is whether the private use exception applies in the twilight zone between consumer and prosumer. In other words: where is the boundary between private sphere and business-like production at home? The Dutch tax authority also struggles with this question, among others in connection with possible VAT-liability.

Online sharing

Although the patent holder can indeed miss out on income in situations as described above, it really starts to become bothersome if the digital print file of his patented invention or component is distributed via the internet.

Can the patent holder take action against a private individual who shares his patented invention or component online?

To answer this question, it is important to determine whether the file is considered as a “patented product” within the meaning of the Dutch Patent Act. A patent holder has the exclusive right to manufacture, use, market or further sell, rent, deliver or otherwise trade the patented product in or for his business, or to offer, import or have in stock the patented product.

In literature and case law it has already been determined that a product must by its nature be tangible. A digital file is not tangible.

From this point of view, uploading and sharing a digital file would not constitute a patent infringement. Namely, the invention is not embodied in the file itself, but only in the (possible) later 3D-printed product. But perhaps the private individual does enable infringement and may thus still act unlawfully towards the patent holder.

Print shops

Not everyone will have their own 3D-printer, let alone a high-quality printer and the right materials to print the desired product or component. That is the case for printing with plastic filament, but certainly also for metal printing. Printing metal objects at home is not directly in the picture yet and it is even questionable whether it will ever be.

There are 3D-print shops and online platforms, where everyone – including private individuals – can order prints on demand or scan products or spare parts and convert them into printable file formats (for example standard STL format).

Can a patent holder take action against such print shops if he finds out that his patented invention or a protected part is being printed there?

Yes, among other things the manufacturing of a patented product or protected part is an action that is exclusively reserved for the patent holder. Assuming that the print shop prints the patented product or protected part on a commercial basis, there will be a patent infringement. This is of course also the case if the product has been ordered by a private individual and is ultimately used for private use.

Platforms

On many platforms, such as Shapeways, iMaterialise, Youmagine etc., subscribers offer 3D-printable products or spare parts. These are then printed and delivered on demand by the platform. These are often small businesses or private individuals.

Can the patent holder address the platform?

Here too, a digital file itself cannot be regarded as a “patented product” and its distribution will therefore in principle not constitute patent infringement. But it can certainly be unlawful, especially given the recent developments regarding The Pirate Bay. For this, see the previous item Liability of 3D printing platforms (after Pirate Bay judgment) on this website.

Once the product has been printed, there is of course a physical, tangible product that is delivered to the customer by the platform. The patent holder can take action against this.

Given their active role regarding the files on their website, platforms will not be able to easily rely on the exemption from liability for “passive” online service providers.

This means that such a platform is responsible and possibly liable for the content (such as 3D-printable files) on the platform. And that will certainly be the case if the platform does not immediately remove the unlawful information once it has been informed of its infringing nature.

Notice and Take Down-procedure?

For a platform it is therefore important to set up and operate a good Notice and Take Down-procedure. The 3D Clearing House offers a practical and professional solution for outsourcing the Notice and Take Down-procedure and the handling of claims.

What does this mean for the position of the patent holder?

It is quite difficult to take effective action against patent infringement because of the simple distribution of digital print files. An example is the Warhammer figure that was removed by Thingiverse as a result of an Notice and Take Down-procedure, but later appeared again on another platform.

It is surprising that large proceedings have not yet been initiated by patent holders against print shops or platforms, but that is probably a matter of time. In some cases it will be necessary to take measures. Such measures do not necessarily have to be a ban. A solution can also be found in good arrangements with the platforms so that it remains or becomes interesting for everyone.

Disruptive innovation requires appropriate answers from the inventors and rightholders. Otherwise it will be tilting at windmills.

Questions?

Do you want to know more about the legal pitfalls of 3D-printing? Or would you like more information about the 3D Clearing House?

Then please feel free to contact Ernst-Jan Louwers or Lisa Molenaars.

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