Editor's note: This is the first of a two-part series on 3-D printing.

Unless you’ve been living under a rock, you know by now that 3-D printing, also known as additive manufacturing (AM), is the next big thing.

Using materials like titanium, stainless steel, and everyday plastic to make everything from cars to meat (yes, meat) to guns (yes, guns), 3-D printing is personalizing product design in unprecedented ways. Already, designers are hard at work on custom-made medical implants, prosthetics, and even organs.

The technology, which involves layering three-dimensional materials on top of one another and adhering them together, has been around for more than three decades. Chuck Hull was one of the first developers of stereolithography, a subset of 3-D printing that used UV light to bind together successive layers of sheets, for which he filed his first patent application in 1984. A few years later, Hull, who also developed the now-universal standard tessellation language (STL) file format for translating computer-aided design (CAD) software into 3-D-printing-friendly modules, founded 3-D Systems Corp., now an industry leader.

‘It will be impractical or even impossible to enforce the laws.’

Since that time, prices of the machines, cartridges of the materials they print, and the computerized instructions for doing so have consistently declined to the point that desktop systems for in-home use now cost less than $1,000.

Democratization of the technology has continued apace. Earlier this year, Autodesk, the Bay Area-based company that pioneered CAD software in the 1980s, introduced open-source AM software designed to “enable the acceleration of innovation in 3-D printing, and make it accessible and relevant to millions, if not billions, of people.” (Disclosure: Autodesk is a client of my law firm.) While the software will be optimized to work with a new proprietary Autodesk 3-D printer, that printer’s design will in turn “be made publicly available to allow for further development and experimentation.”

With physical copying now approaching digital copying in terms of ease, cost, and convenience, how will the advent of this new technology affect intellectual property rights, be they patents, copyrights, or trademarks?

This first installment examines the impact of 3-D printing on patent rights, which are arguably the most at risk. In general, patents come in two stripes: utility patents and design patents. Utility patents, far more common in the IP world, claim useful inventions, not mere ornamentation. Design patents, on the other hand, claim a product’s innovative look and feel. Because 3-D printing mainly involves design, its impact on utility patents, at least at this stage, is somewhat limited. But it’s already changing the way we think about design patents.

John Hornick, a prominent IP attorney, expects “a lot of IP infringement lawsuits” with the advent of in-home AM, predicting that “the size and scale of this situation will be huge.” Because the technology will soon be so widely distributed, Hornick thinks it will “be difficult to identify the infringement, and it will be impractical or even impossible to enforce the laws.”

The unique set of facts associated with AM present several legal challenges, each of which can thwart the enforcement of patent rights.

Other commentators, such as law professors Deven R. Desai and Gerard N. Magliocca, more guardedly forecast that 3-D printing will “reduce the value of many patents, some copyrights, and all trade dress, because even the best efforts to stop this surge in infringement will fall short.” 

Why? Because the unique set of facts associated with AM present several legal challenges, each of which can thwart the enforcement of patent rights.

Imagine a toymaker named Brohas who manufactures a popular line of My Little Horsey products. Now imagine an enterprising fan of these magical creatures — perhaps even a Brony — uses a 3-D scanner to make a perfect digital copy of Starburst Rainbow Magic, which is subject to one of Brohas’s design patents, then posts the CAD file online where others can download it and 3-D-print as many physical copies of the Horsey as they would like.

Whom should Brohas sue? The manufacturer of the printer used to create a copy of the protected design? Because the manufacturer didn’t actually make Starburst itself, it can be held liable only for “indirect” infringement. But because its printer will inevitably have “substantial non-infringing uses” — i.e., it can be used for many legitimate purposes besides creating the infringing products — and because it will take care not to specifically encourage its customers to copy Brohas’s design, it will be difficult for the patent-holder to recover damages.

What about the creator of the operating system the user employs to create the copy of Starburst Rainbow Magic? Well, this software, too, will almost always have substantial non-infringing uses, so unless its creator instructs customers how to use it in an infringing way, it will also be off the hook. 

How about the fanboy who scanned, digitized, and then posted the specific CAD blueprints used to 3-D-print the Horsey? Brohas would seem to have a strong case against him, but how could the company hope to track him down? And even if they did, would he have the resources to pay for his infringement? During the Napster wars of the 2000s, the music industry tried this tactic of making an example out of specific college students and other users, but wound up sparking a massive popular backlash. The same would be true if Brohas tried suing the individual users who printed Starburst using the fanboy’s CAD files.

Thus, according to the conventional wisdom, 3-D printing will do to patent rights what digitized music did to copyright. Every Tom, Dick, and Harry will easily be able to generate perfect physical facsimiles of their favorite action figures, kitchen gadgets, and other consumer goodies — much as early-2000s teens could effortlessly copy their favorite songs through file-sharing services.

Desktop systems for in-home use now cost less than $1,000.

At the same time, AM will present new opportunities for innovative companies, much as the digital music revolution empowered startup technology even as legacy firms suffered. If Apple profited at the expense of Capitol Records by introducing the iTunes store to capitalize on digitized content, so too can new entities exploit the opening provided by 3-D printing. For instance, even incumbent manufacturers can provide downloadable files that are secure, reliable, and malware-free and that enable at-home enthusiasts to 3-D-print their favorite figures.

Hasbro has begun doing exactly that.  The legacy toymaker recently partnered with Shapeways, a leading online 3-D printing marketplace, to enable “fans inspired by Hasbro brands to showcase their artwork and sell their 3-D printed designs there and on Shapeways.”  Through the “SuperFanArt” portal, enterprising artists and other creators will be licensed to create their own downloadable designs based on popular Hasbro characters, beginning with, you guessed it, My Little Pony.

Apart from this “if-you-can’t-beat-’em, join-’em” approach, legal scholars and industry insiders have advanced other possible solutions to a potential diminution in patent rights.

For instance, Desai and Magliocca propose a “Digital Millennium Patent and Trademark Act,” which would “impose notice and takedown rules on the sites that host 3-D printing software,” much as YouTube and other video-sharing and -posting sites empower legitimate copyright holders to request that their protected content be removed.

Another promising anti-3-D-piracy measure the law professors suggest would require the patent holder to make the specific CAD files available on a networked 3-D printer (or a network of such printers) that is password-protected and IP address-specific.

According to the conventional wisdom, 3-D printing will do to patent rights what digitized music did to copyright.

At the same time, it’s also important to ensure that law-abiding home users are insulated from frivolous or harassing lawsuits. Desai and Magliocca urge Congress to remove “the shadow of infringement liability from some people who use 3-D printers for personal purposes” and to provide “clear rules for websites that host the programs that let these devices function.” In their view, incumbent manufacturing firms shouldn’t repeat the mistake that the recording industry made last decade when it lobbied for stringent new copyright laws that did little to preserve its crumbling profitability.

Furthermore, patent rights will in turn impact the development of 3-D printing: the original pioneering patents on AM machines have expired, and others will run out over the next few years.

For instance, Hull’s patent — No. 5,637,169, entitled “Method of Building Three Dimensional Objects with Sheets” — expired this past June and claimed “a method for producing a three-dimensional object from sheets of material capable of selective solidification upon exposure to electromagnetic radiation, wherein portions of said sheets solidify to form cross-sections of said object.” The method included the fundamental steps of dispensing a sheet, forming a cross-section of the object on the sheet, and “selectively adhering” further sheets to the first sheet.

While some commentators estimate that there are another 5,000 AM-related patents and another 8,000 such applications wending their way through the patent office, the expiration of some of the broadest, most basic patents will open the door for more device manufacturers to enter an increasingly crowded market.

Thus, the interplay of patents and 3-D printing poses both challenges and opportunities. In the next installment, we’ll examine the potential impact of 3-D printing on trademarks, trade dress, and copyright.

Michael M. Rosen, a contributor to The American, is an attorney in San Diego living in Israel this year. Reach him at michaelmrosen@yahoo.com.

FURTHER READING: Rosen also writes "Telecommuting: Good for Workers, Good for Bosses," "How to Clean Up the Senate’s Nuclear Fallout," and "The Right Way to Combat Patent Trolls."

Image by Dianna Ingram / Bergman Group