Additive manufacturing requires two main elements to produce a part: a 3D printer, and a manufacturing file (such as a 3MF file) that defines the part to be produced. Once a power source is available and print-material is provided, a 3D printer requires minimal configuration and can be set up in remote, rural, or even hostile locations. A manufacturing file can then be readily provided by the original equipment manufacturer (OEM) to an operator in the field, for example, via a satellite internet connection. This means that spare parts can be produced to factory specifications and installed on-site, allowing repairs of essential equipment in locations where the delivery of the spare parts would otherwise be impractical or impossible.

From manufacturing in space to offshore and isolated terrestrial locations, remote 3D printing allows spare parts to be produced where and when they are required. As a result, remote 3D printing can keep lifesaving and mission-critical equipment in service with minimal downtime. However, this shift from physical distribution to digital supply chains raises significant intellectual property, contractual and compliance challenges for OEMs.

Distributing manufacturing files as opposed to selling physical products

For OEMs, the remote production of spare parts via 3D printing unlocks a new business paradigm, allowing OEMs to support their legacy products without incurring the upfront costs of manufacturing, stocking, and delivering the physical spare parts. With remote production, operators can simply pay the OEM to download manufacturing files and then manufacture the spare parts themselves, closer to where the parts are needed.

However, compared to selling physical products where the OEM has control over the first sale of each part, distributing manufacturing files exposes the OEM to the risk of unauthorised manufacture of their products. Essentially, with remote manufacturing, OEMs are providing a blueprint for their products which could be directly copied. OEMs must therefore put measures in place to ensure that operators only manufacture the parts which they have been authorised to. Here, the OEM can employ both technological and legal means to limit this unauthorised production.

Security and DRM

Operators may wish to manufacture more parts than they have paid for, or more subtly, modify OEM designs or employ substandard print-materials. Technological solutions have been developed to mitigate such instances. DRM tools such as encryption are widely utilised to prevent manufacturing files from being interpreted by the 3D printer without a corresponding decryption key provided in a paid licence. Additionally, constraints may be embedded into the manufacturing files such that limits are placed on: the number of prints that can be made from a single file; the length of a licence’s validity; and the geographic location from which a printer is permitted to produce parts.

Furthermore, proprietary streaming protocols may be employed to send encrypted print instructions directly to the 3D printer, bypassing the operator. This means an operator never gains access to a complete manufacturing file which fully defines a part, and as such, cannot readily modify the OEM part. Importantly, by modifying parts before production, operators may change the performance characteristics of the part and thereby void the industrial certification of these parts. To further promote compliance with industrial certifications and standards, the manufacturing files or streamed instructions may only be operable on specific 3D printing hardware that has been tested and certified by the OEM itself. Similarly, the manufacturing files or streamed instructions may restrict the print-material(s) that can be used to print a particular part, thereby ensuring that the material performance is suitable for the part’s application and compliant with the relevant certifications.

Beyond these immediate considerations, an OEM may utilise DRM to signal that their technology is protected, and further, that the OEM intends to enforce this protection. As such, in an instance where an operator abuses the OEM’s technology, the boundaries around which actions were and were not authorised by the OEM are made clearer. Thus, if an IP dispute does arise, the presence of DRM may strengthen the case that the OEM can put forward.

Intellectual property considerations

Via the threat of IP infringement proceedings, intellectual property rights can dissuade operators from conducting unauthorised production of OEM parts. Particularly, where an operator produces parts for commercial purposes, patent or design protection present strong defences against unauthorised manufacture. However, when parts are being used for private or non-commercial purposes, patent or design infringement may not be enforceable. Further, as remote manufacturing allows a part to be designed and manufactured in different locations, the intrinsically territorial protection that IP rights offer may further limit their enforceability. Additional complexity is introduced by the specific spare part being manufactured by the operator. Therefore, OEMs must carefully analyse the nature of potential infringement and the IP tools at their disposal before establishing a parts catalogue for remote manufacturing.

Patent protection issues

Fundamentally, patents are territorial, meaning a patent can only protect a product if an infringing act occurs in a territory in which the product is patented. If a product is patented by an OEM in each territory, and an operator makes that product from the OEM’s manufacturing file in the same territory without authorisation, there is a strong case for the direct infringement of the OEM’s patent. However, the situation is less clear if the operator only makes a portion of the product (for example, in UK Supreme Court case Schutz (UK) Ltd v Werit (UK) Ltd [2013] UKSC 16). Here, the degree of relevance of the manufactured part to the overall product must be considered for infringement to be found. Nevertheless, direct infringement is still a relevant tool for OEMs if remote manufacturing usually occurs within a single territory, or if the OEM has patent protection in multiple territories.

Remote manufacturing inherently facilitates products to be designed and offered for sale in a first territory and then manufactured and used in a different territory. Potentially, patent protection may exist for the product in the first territory but not in the second. Here, as manufacturing and use are the infringing acts, no recourse under direct infringement can be sought as no infringing act has occurred in a territory in which the product is patented.

The OEM may then look to indirect infringement under, for example, section 60(2) of the UKPA 1977. Indirect infringement could be found if an operator performs unauthorised making of a patented product, or potentially a part thereof, outside of the territory in which the product was patented, but then supplies the product in the territory of the patent. This could also apply if the operator gains access to and then supplies the OEM’s manufacturing files themselves. However, in the UK for instance, it is unclear whether a manufacturing file meets the requirement of being a “means essential to put the invention into effect” required for indirect infringement. In fact, across many territories around the world, issues arise regarding which aspects of a product constitute a significant enough portion of said product to trigger patent infringement.

Design protection issues

OEMs may also utilise various design rights to mitigate unauthorised making of their products, for instance, registered designs protect the appearance of the whole or a part of a product. This means that the manufacture of a product embodying the protected design, made without the OEM’s authorisation, could constitute direct infringement of the registered design.

However, as with patents, the protection offered by registered designs is limited to the territory in which the design right exists. Moreover, registered designs have several exclusions that particularly impact the protection they provide to spare parts. Namely, UK law provides two specific limitations: the repair defence, which permits the reproduction of parts to restore the original appearance of a complex product, and the “must fit” exclusion. The latter ensures that features whose shape is dictated solely by the need to connect to another component cannot be protected, preventing OEMs from using design rights to block functional compatibility in the spare parts market.

The UK also has a unique form of design protection in the UK unregistered design right (UDR). Here, primary infringement includes copying a design document, that is, a manufacturing file, and manufacturing a product derived from that file. However, UDR also has limitations on the protection it confers, particularly for spare parts, excluding protection for designs dictated solely by technical function or those meeting "must fit" and "must match" criteria.

Further, unregistered designs, including UDR, present additional hurdles compared to registered designs. Namely, with unregistered designs, the subject matter being protected is not defined until litigation. This may then complicate infringement proceedings as the aspects of the design that are protected and subsequently infringed must be ascertained during said proceedings. OEMs must then keep accurate records of the design in question, when said design was disclosed to the public, and prove further aspects such as the copying of the design by a potential infringer. Hence, while UDR offers attractive protection for the remote 3D printing use case, OEMs should view this form of protection as one tool within a larger toolbox of IP rights.

Conclusion

Overall, remote production of spare parts via additive manufacturing promises to keep equipment running in rural and remote locations across the globe. However, OEMs should consider that as IP protection is territorial, there is likely to be jurisdictional divergence regarding the extent of protection offered for 3D printing technologies. As such, before OEMs digitise their spare parts catalogues, strong DRM alongside robust multi-territorial intellectual property strategy must be implemented to make the remote manufacturing of spare parts economically viable for the OEM.

If you have any questions on this subject, or would like assistance with protecting your invention, please contact your usual D Young & Co representative.

Useful links

• The future of spare parts is 3D: A look at the challenges and opportunities of 3D printing: https://dycip.com/spare-3d-strategy
• 3D Systems & Daimler Truck - Daimler Buses Innovations Maximize Vehicle Uptime by Decentralizing Spare Part Production: https://dycip.com/daimler-buses-spare-parts
• Digital Rights Management in 3D Printing - A Proposed Reference Architecture for Design-to-Fabrication Security and Licensing: https://dycip.com/digital-rights-3d
• Streaming in metal additive manufacturing - a catalyst for secure distributed manufacturing: https://dycip.com/additive-spares-supply 
• King’s College London, Three dimensions of patent infringement: Liability for creation and distribution of CAD files: https://dycip.com/3d-patent-cad 
• Law Society of Scotland - IP challenges in 3D printing (an overview of 3D printing & intellectual property law under the contract with the Directorate General Internal Market, Industry, Entrepreneurship and SMEs (MARKT2014/083/D): https://dycip.com/ip-challenges-3d-print