Jun 05, 2016 Want to write a piece for 3DHEALS Expert Corner? Email us: info@3dheals.com
Form 2, 3D printed night guard
The extraordinary benefit of 3D printing is that you can send a digital file to a 3D printer anywhere to print. But this ease comes with a dark side – it is easy to steal. Every employee outside contractor that touches your files can also make off with them. Like Napster for songs, 3D printing makes widespread theft of intellectual property for manufactured goods high probably and hard to police. A stack of IP protection is usually necessary.
In one case, Ritani, LLC v. Aghjayan, an employee of a jeweler stole the 3D printable CAD files for several lines of jewelry. The CAD files included designs of parts that had a unique way of fitting together. He sent them to a manufacturer in China to change somewhat, and then 3D printed design casts for new jewelry items to make his own line. The jeweler sued the employee for copyright infringement, and misappropriation of trade secrets.
Surprisingly, the court dismissed the copyright infringement claims, because the employee had changed the designs even though they were still vaguely similar. But the court allowed trade secret claims. Specifically, the court found that the digital files contained protectable trade secrets, even though they were printed into jewelry that ultimately became public knowledge when the jewelry was sold. Specifically, some parts of the internal design and how it is created remained secret. Additionally, the jeweler had specific provisions in its contracts requiring all parties that touch the design to keep them secret.
This case illustrates the importance of a stack of IP protection for 3D printable designs, especially trade secrets enforced contractually. The copyright failed because copyright only protects the actual file data, and near exact copies of the ornamental design. The employee had changed them sufficiently to avoid copyright infringement. Since the jeweler never filed patents on the fitting, all that remained for protection was trade secret. If the jeweler had not used specialized contract language and internal procedures to keep the designs secret, the former employee would have gotten away perfectly legally.
Erik Birkeneder is an intellectual property attorney at Nixon Peabody that focuses on health care related patents. Erik also serves as outside general counsel for a number of digital health companies and helps them navigate the unique privacy, and other regulatory hurdles that are facing this industry, including in 3D printing. He has a Master’s in Biomedical Engineering from University of Wisconsin Madison where he performed research on the impact of neuropeptides on wound healing in diabetics, and has a law degree from University of Minnesota.
Protecting 3D Printed Innovations
Erik will be presenting on strategies for protecting innovations that are 3D printed, including the digital files with the 3D blueprints in the upcoming 3DHEALS event on orthopedic 3D printing. His talk will cover the basics of how to protect your innovations with trademark, copyright, patent, trade secret and the differences between the types of intellectual property.
https://angel.co/erik-birkeneder
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