3D Printing: Practical Patent Pointers

Authored by Elizabeth D. Ferrill, John F. Hornick, and Benjamin T. Sirolly

In our first two installments, we explained the kinds of intellectual property rights that protect 3D printing methods and discussed some of the legal issues of 3D printing an object protected by such rights. This third installment provides some practical tips for figuring out whether you can 3D print a replacement part without violating someone's patent.

We scanned a part and want to 3D print a replacement. Can we?

Maybe. The first question you should ask is whether it is patented. As we discussed in our earlier installments, 3D printing can make you liable for monetary damages to the patent owner. Under some circumstances, if you know a part is patented and 3D print it anyway, you can be liable for up to three times those damages, plus the attorneys' fees of the patent owner. Thus, patent infringement can be very expensive. So before you fire up your 3D printer, we recommend that you answer the following questions to see if the part you want to make may be covered by someone else's patent.

The part we scanned is really old, can we 3D print it?

Probably. Patents typically last for only twenty years from filing, give or take. A patent's life can extend a little beyond this twenty-year period, but the details are complicated. And many utility patents expire earlier because the owner does not pay the post-issuance renewal fees.

If you are trying to 3D print a replacement part for a machine that was built in the 1970s or earlier, you should be safe.

The part we want to make is pretty new; how can we figure out if it is patented?

First, look at the part itself. Does it have a patent number stamped on it? Patent numbers may also appear on the system that uses the part.

A utility patent number has seven digits (e.g., "7,654,321") and a design patent number has six digits (e.g., "D654,321"). If you see "patent pending," this means the owner applied for patent rights, but a patent may or may not have issued. To see if a patent is still in force, you can go on the PTO's website and Google Patents. If there is no patent number, things get trickier. You can look to information made publicly available by the original manufacturer. Manuals, catalogs, or websites may list patents covering the part you want to print.

Still nothing? Now you have a tough choice of whether to keep searching. Finding every patent that might cover the part you want to 3D print can be really, really hard. Practical steps, like the ones above, can help you find a patent owned by the manufacturer. But you can infringe any patent if your part fits within the scope of its claims, even if the patent's owner had nothing to do with the part you are trying to replace.

Because there are over two million U.S. patents in force out there, it's nearly impossible to be 100% sure that you have found all of the patents that might cover the part you want to print. You may want more certainty if the part you are printing is a large revenue generator for your business, or if your company is often embroiled in patent lawsuits. If so, you should hire a lawyer to conduct a patent search and give you an opinion on whether you are free to operate. While you should not 3D print a part that you know is patented, you can never be entirely sure that something you make does not violate a patent.

We think the part is patented. Is there any way we can still make the part using our 3D printer?

Absolutely. If the part is patented, you can try to negotiate a license from the patent owner. A patent license is a contract made with the patent owner, where the owner gives another person permission to practice the patent without fear of a lawsuit.

Sometimes, just asking for a license can be enough. Some patent owners freely grant licenses. For example, Tesla recently announced that it would not sue anyone using its electric-car patents, so long as they act in good faith.

Others may be willing to grant you a license for a small fee. If your company has a good business relationship with the original manufacturer, it's probably worth reaching out to them to see if they will license any patents covering the technology as part of your continuing business relationship. Licenses are often a way for businesses to build stronger ties and goodwill with one another.

You could also consider offering the manufacturer your 3D-printable digital file of the part in exchange for the license. In that way, your efforts to 3D print a replacement part could strengthen your relationship with the original manufacturer.

Even though 3D printing is new, old rules still apply.

In these three articles, we have tried to provide some simple guidelines for 3D printing that take into account intellectual property rights. IP laws may not be a perfect fit for 3D printing, and many legal questions remain unanswered, but these laws still apply to this exciting new space. Even so, we hope that by following a few simple precautions, like those we have outlined, 3D printing can be a fruitful and legally-pain free exercise well into the future.

Originally printed in Wired Innovation Insights on September 2, 2014. 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.