Crowdsourcing Prior Art to Defeat 3D Printing Patent Applications

The America Invents Act changed U.S. patent law to allow preissuance submissions, a mechanism by which third parties can submit patents or printed publications to the United States Patent and Trademark Office (USPTO) for consideration during patent examination, along with "a concise description of the asserted relevance of each submitted document."¹The U.S. Congress intended preissuance submissions to help the USPTO increase the efficiency of examination and the quality of issued patents.²Congress did not, however, intend the use of this mechanism to interfere with patent examination.³Nor did it intend preissuance submissions to allow for third party protest or preissuance opposition.⁴Yet a segment of the 3D printing (3DP) community, known as Makers, is using preissuance submissions as a sword to oppose 3DP-related patent applications. Perhaps more importantly, they are leveraging the concept of crowdsourcing to do so, potentially creating problems for patent applicants everywhere.⁵

To understand why and how Makers are mobilizing to challenge patents through presissuance submissions, one must first understand what 3DP is, and the composition of the 3DP community. 3D printing—more formally known as additive manufacturing—is a technology that creates three dimensional objects from CAD files. There are many legacy and emerging 3DP technologies. Generally, 3DP works by fusing layer upon layer of materials, such as plastics, powder metals, and ceramics, to build a final, fully formed product, much as Athena sprung full-blown from the head of Zeus. This process requires a digital 3D model of the product, stored in a CAD file, and a 3D printer. Digital product models can be obtained by either (1) designing the product with a CAD program; (2) downloading an existing CAD file from the Internet; or (3) scanning an existing product with a 3D scanner to create a CAD file. Further, almost anyone can buy a 3D printer today; they are sold through Skymall and at Staples. Where 3DP was once cost prohibitive for most, 'prosumer' and home printers are now available at reasonable prices.

People can and are using 3D printers to make just about anything. Ordinary people are using 3D printers to make things like working vinyl records, guns, cases for cellphones, jewelry, art, and even 3D printers that can self-replicate. And while 3DP is starting to tilt past the tipping point into the mainstream, the basic technology has been around since the 1980s.

The 3DP community consists of essentially four segments: small and large scale, closed and open. Although the lines between them can be fuzzy, the large-scale segment is essentially the industrial segment, which relies on a closed platform, and therefore on intellectual property. Of equal—and some would say more—significance, is the small-scale segment, which consists of entrepreneurs, garage, basement, and school lab innovators, and kids, many of whom are dedicated to open availability of the technology. They are called "Makers." Makers are a growing and potentially powerful force, similar in some ways to PDP music file sharers, but more organized. They are a community and decide, collectively, whether and what intellectual property is appropriate in the 3DP world. Makers would keep 3DP open and unhindered by the constraints of intellectual property.

Makers have discovered preissuance submissions as a method to combat 3DP-related patents they do not like. They believe 3DP-related patents will stifle innovation, not promote it. According to the Electronic Frontier Foundation, "the incremental nature of innovation in 3D printing makes it particularly unsuitable for patenting" and "openness often outperforms the patent system at spurring innovation." Thus, organizations like the EFF are marshaling the Makers, using crowdsourcing to identify prior art to challenge 3DP-related patent applications they view as "threatening" or "dangerous."

Specifically, the EFF website asks Makers to help identify 3DP-related patent applications to attack. The EFF has also partnered with Ask Patents to harness the power of crowdsourcing to find the best available prior art. Ask Patents allows anyone to make a "call for prior art" about any application. After a call for prior art has been made, visitors to a webpage dedicated to the application can identify possible prior art and rate it until the cream rises to the top.⁶

Using crowdsourcing to identify prior art and then submitting the art in preissuance submissions may be particularly effective for 3DP-related applications. Because 3DP has been around for over 30 years and has been widely adopted and developed by thousands of Makers and the industrial sector, there could be tons of prior art. Moreover, the open nature of the Maker movement makes Makers very receptive to collaborative efforts to identify prior art and challenge patent applications. In fact, Makers, led by the EFF or others, have already used the preissuance submissions process to file prior art with the USTPO. As of May 2013, the EFF filed crowdsourced prior art in connection with six 3DP-related patent applications.

The Makers' use of preissuance submissions has profound implications for patent applicants everywhere. Most obviously, coupling the crowdsourcing of prior art with preissuance submissions could be copied in any area of technology with an active open platform movement. And the Internet and social media are very effective tools for forming such movements for any type of technology. In fact, the EFF plans to extend its crowdsourcing prior art/preissuance submission model to mesh networking technology.

Additionally, the preissue submission of 3DP-related prior art could reduce the number and breadth of patents that issue in the 3DP space. A similar effect could occur in connection with any technology with a community using such a crowdsourcing prior art model.

The irony of the Makers' preissuance submissions may be that stronger but narrower—though possibly fewer—patents eventually issue. After a preissuance submission is filed with the USPTO, the submitter's involvement with the application ends. The patent applicant then gets the chance to distinguish its pending claims from the submitted prior art. If the applicant overcomes the prior art, it will obtain a patent that has already been tested against what may be the best available prior art. In other words, what does not kill the application makes it stronger. If stronger 3DP-related patents issue after Makers' preissue submissions, the Maker community's goal of blocking and weakening patent protection may be undercut.

It will be interesting to see how these unintended consequences play out. Will the use of preissuance submissions be restricted? Will fewer or narrower patents issue in this space? Will Makers unintentionally help stronger 3DP-related patents to issue? Or will they keep their powder dry and save strong prior art for post-issue validity challenges? Only time will tell. We plan to watch it closely.

Endnotes

¹35 U.S.C. § 122(e).

² See statement of Senator Hatch, 157 Cong. Rec. S1097 (daily ed. Mar. 2, 2011).

³H.R. Rep. No. 110-314 at 37 (2007).

⁴Id.

⁵Id.

⁶See, e.g., CALL FOR PRIOR ART: 3D Printing application "Process forProducing Three-dimensionally Shaped Object and Device for ProducingSame" (13/503217),http://patents.stackexchange.com/questions/3494/call-for-prior-art-3dprinting-application-process-for-producing-three-dimensi

Originally printed in 3D Printing Industry. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.