The media is filled with the latest and greatest creations of 3D print technology. These include car parts, pizza slices, and handcuff keys. There’s commercial value to be exploited in using this new technology, especially in low cost prototyping. The beauty of 3D printing is the accessibility – these printers are now available at prices within range of the home user.
Having your designs and ideas turned into a 3D prototype is now an affordable reality. While you may be able to easily download a CAD file and print it at home, developing your product without specialist design and CAD skills, however, can be daunting.
Engaging others to help you turn your idea into a viable prototype is often the only real option. This can have a number of implications that you and any potential business partners must understand so that your product and its commercial value aren’t jeopardised during its development and prototyping phases.
There are three key considerations when you’re navigating this tricky area:
- Ownership of the intellectual property (IP). Generally speaking, the creator of the product owns the IP. If you engage others to assist you in the product development, however, they may own some of the IP related to your product. For you to take full commercial advantage of your product, it will usually be essential that you own all the IP. To do this, you’ll need to agree up-front who will own the IP rights in the work that the other person does. Make sure that you read your product developer’s terms and conditions of service as these often deal with ownership of IP. Owning all the IP isn’t always essential; but if you’re accepting less than full ownership, it’s important that your intended use of the product is within the scope of the licence that the other person grants to you for their own IP in the product.
- Confidentiality considerations. As 3D printed products are physical in nature, there’s the potential to obtain patent protection for the finished product. Patents can be very valuable, as the owner has a monopoly on the product for a specified period. One of the key requirements of a patent is that the invention is novel, that is, it isn’t already in the public domain. Therefore you need to keep tight control of who knows about your product and who they can tell. Having robust confidentiality agreements in place with all those involved in the project is essential.
- Intellectual property infringement. With the advent of 3D printing it’s now easier to copy physical products. A product can be scanned, an automated CAD file created and fed into the 3D printer, resulting in a 3D copy of the original product being created. If the copy has been made without the permission of the IP owner, it may be infringing the owner’s rights. Home-based 3D printing, together with the ease of file sharing, means tracking IP infringement can be very difficult.
To reduce the risk of your product being copied, remember to keep a tight control over any pre-production physical prototypes. Once your product is released, you’ll need to keep monitoring the marketplace for infringing products and then quickly follow up with a cease and desist action to help protect your rights.
When you’re developing a new product, it’s essential to ensure that these three points are taken care of throughout the product design and prototyping phases. 3D print technology brings with it huge opportunities, but it also brings risks. Managing those risks proactively will help ensure that your product and the commercial benefits it can bring aren’t jeopardised.
Chris Steenstra is an Associate at Norris Ward McKinnon. With offices in Hamilton and Huntly, we have friendly, expert legal advisors ready to help you with your business and personal legal matters. Find out more about us here.