One of the most daunting IP questions raised by clients is how to protect their three-dimensional product. The issue is of particular importance in connection with 3D printing, where the end-result of the process is just that – a three-dimensional product. But here’s the rub: in the absence of patent protection, three-dimensional objects that serve a purely functional purpose are not afforded IP protection. There is hope yet though, for objects that have both functional and non-functional aspects. Perhaps the most intriguing possibility in this regard is what is called a design patent, or an industrial design.
A Primer on Designs
A design patent protects the ornamental features of an object. For example, while a bottle has the function of containing a liquid, and various elements of a bottle are necessary to carry out this function (such as the sides, bottom and an aperture of the bottle), this functionality does not dictate that all bottles must be of the same shape. There are a large number of potential shapes by which a bottle can be fashioned. Design patent law thus serves to protect these ornamental features if they meet the legal requirements.
There is no uniform definition for what constitutes a design. For instance, under U.S. law, a design patent protects a “new, original, and ornamental design for an article of manufacture.” By contrast, under the Registered Design Act of Singapore, a design “means features of shape, configuration, pattern or ornament applied to an article by any industrial process.” Despite these variations in statutory definition, the basic idea is the same — a design protects the features of an object that give it eye appeal.
Designs Protection in a 3D Printing World
As a general matter, design protection is obtained by registration, which is valid for a fixed period of time, and usually less than the period of protection that is accorded a patent. In some fields, most notably the fashion and textiles industries, a design will typically have commercial value for a short period of time (one season or so), such that the length of the registation process will usually exceed the period of time during whict the product is on the market. Because of this, design protection is seldom sought in these industries. Applying this observation to the 3D printing world, the first consideration is whether the object can be expected to enjoy commercial popularity for more than one commercial season. If the answer is “yes”, and there is a reasonable anticipation that the object will enjoy extended commercial success, then the creator of the object might consider seeking design registration protection, assuming that there is the requisite level of ornamention.
More recently, some jurisdictions have recognized design protection on an unregistered basis1. Notable examples are the unregistered design right in the European Community and in the UK, respectively, although what is protected is not identical in the two jurisdictions. Thus, an unregistered Community design right will protect the appearance of the whole or part of a product, whether resulting from the lines, contours, colours, shape, texture and/or materials of the product or its ornamentation. In the UK, protection is granted for original, non-commonplace designs of the shape or configuration of products. The period of time for protection of an unregistered design varies.
Naturally, there is a distinction between the scope of protection provided by a registered versus unregistered design. A registered design gives the owner a monopoly right in the design. This means that a third party cannot produce a product that incorporates the registered design, regardless of whether such person knew about or copied the design. Protection for an unregistered design right however, only prevents an act of actual copying – this means that the third party must have had actual access to the protected design. It should also be noted that design protection does not apply to the making of derivations or other adaptions of the design.
Conclusion – the Importance of Enforcement
Whether protection is sought for a registered, or unregistered design, enforcement may well be a challenge. This is because the offending third party will often be an individual who is creating the object within the confines of his home or office, and as such does not lend itself to ready enforcement. However, if the production is taking place at a commercial fulfillment center, the likelihood that the owner of the design will have knowledge of such unauthorized reproduction will increase and enable enforcement measures to be taken. As well, it may be possible take action against the party that created the CAD file that enables the copying to take place, based on the doctrine of contributory infringement as applied to patent and copyright law. This doctrine provides that a person will be liable for infringement if the only, or predominant use of the object created by the person is to enable infringement to take place.
 While unregistered design rights are not recognized in Singapore, this issue was raised for discussion in public consultations conducted by the Intellectual Property Office of Singapore in 2014 and 2015.
Dr Neil Wilkof
Dr. Eyal Bressler & Co
Speaker at GFIP 2015
Neil Wilkof is a member of Eyal Bressler and Co., Ramat-Gan, Israel, where he is engaged in both contentious and non-contentious IP matters. He has been ranked a leading practitioner in his field by various bodies and designated a Top 300 IP Strategist. He is currently a member of the Board of Directors of the International Trademark Association.
Mr. Wilkof is the author of numerous articles as well as several books, including Trade Mark Licensing, second edition with Daniel Burkitt (Sweet & Maxwell) and Overlapping Intellectual Property Rights, co-edited with Professor Shamnad Basheer (Oxford University Press). He also is the co-author, together with Professor James Conley and Peter Bican, of the WIPO-commissioned study, "Patents and the Public Domain." He serves as one of the contributors to the blog, IPKat. Mr. Wilkof has lectured in various places, including the United States, Singapore, India, England, Germany, the Netherlands, Switzerland, and Israel.