Additive-manufacturing (AM) processes can produce three-dimensional (3D) physical objects that can be used as models, prototypes or even parts for use in service. AM processes can differ from one another based on the types of raw materials that are used, the method through which the raw materials are bound together to form the product or both the materials and the method. However, all AM processes involve five basic steps.
The first step involves the building of a computer-based design (CAD) file. The second step involves converting the CAD file into a stereolithography (STL) or similar file. The third step involves data processing of the STL into sliced layers or design elements. The fourth step involves processing the sliced layers or design elements with an AM device or system to produce a raw product. The fifth step involves performing finishing operations on the raw product to produce an end part.
The common feature of AM processes is the ability to produce 3D models, prototypes or parts. The 3D aspect of the product of these processes can have certain intellectual-property (IP) implications. The processes and the material used therein can have other IP implications.
A Hypothetical Case Study
The IP implications of various aspects of AM processes can be illustrated through a hypothetical case study. Suppose that a motorcycle racing team uses new in-house proprietary software to prepare CAD files for a new design prototype for a fork that is to be used on racing cycles. The fork has a unique 3D shape that has both novel ornamental features and functional features. The motorcycle team comes up with a new name for the fork – the RAPIDFORK™.
The motorcycle racing team decides to contact a manufacturer that specializes in metal 3D printing to produce a prototype. After entering into a suitable nondisclosure agreement with the manufacturer, the motorcycle racing team sends the CAD file that contains the design to the manufacturer.
The manufacturer discovers that the RAPIDFORK prototype cannot be produced through its standard metal 3D-printing process. One of the engineers that is working on the RAPIDFORK™ project, however, determines that it is possible to modify the company’s standard process to make a working prototype. The engineer later discovers that she can change the composition of the alloy that is used in the process to produce an improved prototype. The company gives the new process a name: RACEFORKPRINTINGSM.
The engineer decides to prepare a technical paper describing the properties of the alloy that is used in the RACEFORKPRINTINGSM process. The manufacturer prepares several marketing brochures that describe the process in a very general way.
Pursuing IP Protection for Various Aspects of the New Fork Design
The motorcycle racing team will have to make decisions involving all four forms of intellectual property: patents, marks, copyrights and trade secrets. The first two decisions that the motorcycle racing team will have to make relate to the fork’s novel ornamental features and functional features.
Protecting Ornamental Features of the RAPIDFORK Product
The ornamental features of the RAPIDFORK design can be protected by a design patent, trade dress protection or copyright protection. Design patents protect ornamental features of a product. See 35 U.S.C. § 171(a). Design patent protection can be very powerful because it can prevent third parties from independently creating the design or a close variation of the design. However, design patent protection can be more expensive to acquire because you must obtain a design patent from the U.S. Patent and Trademark Office (USPTO). Design patent protection only lasts for 15 years after the patent issues for newly filed design patent applications. See 35 U.S.C. § 173.
Trade dress protection can last indefinitely. Trade dress can protect product configurations, product packaging, color or other distinguishing nonfunctional elements of appearance. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992). Trade dress can be registered at the USPTO but requires a showing of acquired distinctiveness when the trade dress is a product’s configuration. See Wal-Mart Stores, Inc. v Samara Bros., 529 U.S. 205, 215 (2000). It usually takes at least five years to prove that trade dress has acquired distinctiveness.
Copyright protection may also be an option for protecting certain useful articles. The Supreme Court recently articulated a test for determining whether a design for a useful article is eligible for copyright protection. See Star Athletica, LLC v. Varsity Brands, Inc., ___ U.S. ___ (Slip. op. March 22, 2017). The Court held that a feature incorporated into the design of a useful article is eligible for copyright protection only if the feature can be perceived as a two- or three-dimensional work of art separate from the useful article, and it would qualify as a protectable pictorial, graphic or sculptural work – either on its own or fixed in some other tangible medium of expression – if it were imagined separately from the useful article into which it is incorporated.
Copyright protection is weaker than design patent protection because it is used to prevent someone from independently creating the design. However, copyright protection has a longer term than design patent protection. Generally, copyright protection is less expensive to acquire because the registration process at the U.S. Copyright Office (USCO) is not a substantive examination process, meaning that copyright applications are only examined to make sure that they have met certain formalities.
Protecting Functional Features of the RAPIDFORK Product
The functional features of the RAPIDFORK product can be protected by a utility patent or through trade-secret protection. Utility patents protect new or improved machines, products, processes and compositions of matter. See 35 U.S.C. § 101. Trade-secret protection protects information that companies keep secret to give them an advantage over their competitors. See http://www.wipo.int/sme/en/ip_business/trade_secrets/trade_secrets.htm. In theory, both forms of protection could be used to protect a fork design.
In most cases, utility patent protection is more desirable than trade-secret protection for articles of manufacture, like motorcycle forks, because utility patent protection can protect such items from being reverse-engineered. Trade-secret protection would only be appropriate for such items when those items are not displayed or used in public. As a result, the motorcycle racing team would most likely seek patent protection for its new design.
Protecting the Software
The motorcycle racing team may decide to use IP to protect the computer software that was used to create the fork. Computer software can be protected using utility patents, trade secrets or copyrights.
Some computer software is eligible for utility patent protection. The software must be useful, novel and nonobvious to be eligible for utility patent protection. In many cases, the software must meet criteria set forth in Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014), to demonstrate that the software is not abstract.
If the motorcycle racing team (or its lawyers) determine that patent protection is not appropriate, the team might consider trade-secret protection. Trade-secret protection would be appropriate if the software was only used in secret on the premises of the motorcycle racing team. It would be even more appropriate if the motorcycle team had the ability to limit access to the system upon which the software ran to keep a log of those who had access to the software and to take other similar measures to protect the software or the system.
Copyright protection would be the least desirable form of protection for the software in most cases because it would be necessary to deposit a copy of the software with the USCO. See 17 U.S.C. § 407(a). The deposited copy would be available for public inspection.
Protecting the Product’s Name
The product name, RAPIDFORK, may be eligible for trademark protection. Trademarks can be used to protect words, symbols, colors and sounds in association with goods. The name RAPIDFORK is a name that the motorcycle racing team is using in association with a class of goods (i.e., motorcycle racing forks).
Trademark rights are acquired through proper trademark use and can last for an indefinite period of time, as long as the mark is used properly. See Trademark Proper Use, International Trademark Association. Trademarks must be used as adjectives and should not be used as verbs. Id. Trademarks should be used in a consistent manner and without alteration. Id. They should not be used in a possessive form. Id. Finally, a trademark should not be pluralized (when the trademark is a singular term or phrase) and should not be singularized (when the trademark is a plural term or phrase). Id.
Trademarks can be registered at the USPTO and with individual state governments. Trademark registration is not necessary to protect trademark rights, but registration can provide the trademark owner with many additional rights.
Using IP to Protect Your Improved Process, Improved Alloy or Both
The improved process and the improved alloy can be protected through utility patent protection, trade-secret protection or a combination of both. The improved 3D-printing process that was used to create the prototype could be eligible for either utility patent protection or trade-secret protection.
The key considerations in determining which type of protection is more appropriate will likely depend on whether the process cannot be practiced in secret and whether use of the process by another party can be detected. If both of these conditions are true, then utility patent protection would be the most appropriate choice. If either of these conditions is not true, then trade-secret protection might be appropriate.
The improved alloy represents a slightly different type of analysis. Generally, the composition of an alloy can be easily determined through standard metallurgical engineering testing procedures, which would make reverse engineering a key concern. As a result, the manufacturer would want to investigate patent protection.
However, there is a scenario in which trade-secret protection might be appropriate. If the new process produces a unique metallurgical structure within items that are produced through the process, then trade-secret protection might be feasible because reverse engineering might be too difficult to achieve.
Protecting Other Aspects of the RACEFORKPRINTING Process
The manufacturer may decide to protect the name of the process using service mark or certification mark protection. Service marks are similar to trademarks in that they protect the words, symbols, colors and sounds in association with services.
Service-mark rights are acquired through use. Service marks can also be registered at the USPTO and with individual state governments to obtain additional rights. If the manufacturer wants to allow other entities to use the RACEFORKPRINTING process, the manufacturer could license the service mark to those entities.
Alternatively, the manufacturer could use certification marks to police third-party use of the process. Certification marks are similar to trademarks and service marks, except that the products or services that are marked by certification marks can be produced by third parties. Certification marks can be used “to certify regional or other origin, material, mode of manufacture, quality, accuracy or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.” 15 U.S.C. § 1127.
Finally, the manufacturer can use copyright protection to protect the product literature and the technical papers. See https://www.uspto.gov/trademarks-getting-started/trademark-basics/trademark-patent-or-copyright (“copyright protects original works of authorship including literary, dramatic, musical and artistic works, such as poetry, novels, movies, songs, computer software and architecture”).
Patent Ownership Issues
The hypothetical case study set forth assumes that the manufacturer does not contribute to the development of the fork design and that the motorcycle racing team does not contribute to the development of the improvement of the process or the alloy. If the parties were to contribute, however, then IP ownership issues could arise.
Patent rights vest with the inventor. See Bd. of Trs. of the Leland Stanford Jr. Univ. v. Roche Molecular Sys. Inc., 131 S. Ct. 2188 (2011)(slip op. at 7)(citations omitted). An inventor is a natural person that contributes to the conception of one or more of the patent claims in the issued patent. See 35 U.S.C. § 116(a). Thus, it is possible that one or more employees of the manufacturer might have to be named as an inventor on the patent (or patents) that are directed to the fork design in this modified hypothetical. Similarly, one or more employees of the motorcycle racing team might have to be named as an inventor on the patent (or patents) directed to the process or to the alloy.
The manufacturer’s employees and the motorcycle racing team’s employees may have an obligation to assign their patent rights to their respective employers. Employers can obtain an employee’s patent rights by state contract law, such as by requiring employees to sign preinvention assignment agreements as part of their employment agreements. Some states, like Pennsylvania, enforce express contracts to transfer patent rights when the contracts are clear and unambiguous. White Heat Products Co. v. Thomas, 266 Pa. 551, 555, 109 A. 685 (1920); Mosser Industries, Inc. v. Hagar, 200 USPQ 608 (C.P. Lehigh 1978). In absence of such a contract, the general rule is that the person who invents an invention owns it and has the right to exclude others from making, using, importing, offering for sale or selling it.
One exception to the general rule is for inventions by employees who are hired to invent. If an employee is hired to create a specific invention, the employer will be deemed the owner of the invention. Quaker State Oil Refining Co. v. Talbot, 315 Pa. 517, 174 A. 99 (1936).
Another exception to the general rule is that an employer may have a shop right to an employee’s invention, in which the employee retains ownership of the resulting patent but the employer retains a royalty-free license to make, use and sell items embodying the employee’s invention. United States v. Dubilier, 289 U.S. 178, 53 S. Ct. 554, 77 L. Ed. 1114 (1933); Gill v. United States, 160 U.S. 426, 16 S. Ct. 322, 40 L. Ed. 480 (1896); Solomons v. United States, 137 U.S. 342, 11 S. Ct. 88, 34 L. Ed. 667 (1890). A shop right may exist where an employee has used the employer’s time, facilities, materials or equipment in creating a patented invention.
In view of the above, both parties could end up with an undivided interest in one or more of the described patents. See 35 U.S.C. § 262. This may be undesirable because either party could license the patents to potential competitors without the consent of the other party. In order to avoid this undesirable situation, the parties may want to enter into an agreement regarding the distribution of patent rights before they begin to collaborate with one another.
Other IP Ownership Issues
Ownership issues could arise with respect to other forms of IP. The determination of the ownership of a copyright works in a similar way as the ownership of a patent. Specifically, the ownership of a copyright usually vests with the author, except when the copyrighted work is a work for hire or is the subject of a commission. See 17 U.S. Code § 201.
Ownership issues can become more complex when the copyrighted work is produced by joint authors. This can occur when two or more authors prepare a work with the intent to combine their contributions into inseparable or interdependent parts. Id. In such cases, the work is considered joint work, and the authors are considered joint copyright owners.
The USCO considers joint copyright owners to have an equal right to register and enforce the copyright. Unless the joint owners make a written agreement to the contrary, each copyright owner has the right to commercially exploit the copyright, provided that the other copyright owners get an equal share of the proceeds.
As previously indicated, trademark ownership rights arise out of use. In the U.S., it is possible to “reserve” trademark rights by filing a trademark application on an “intent-to-use” basis. However, the applicant must eventually use the mark before it will be registered. As a result, trademark rights will vest with the first party that uses the mark, unless the mark was registered on an “intent-to-use” basis by a junior user.
Trade-secret rights vest with the party that discovers the secret. The party will retain those rights as long as the party prevents that trade secret from being disclosed to the general public.
Thomas Joseph is a patent attorney in Pittsburgh, Pa. He maintains a solo practice in all areas of intellectual-property law and has been practicing since 2001.You can contact him at www.joseph-iplaw.com.