Erik Birkeneder is an intellectual property attorney and a partner 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. Mr. Erik Birkeneder will be a speaker at the #3DHEALS2018 conference on April 20-21st, 2018.
Jenny: When was the first encounter you had with 3D printing? What was that experience like? What were you thinking at that moment?
Erik: In 2012, when I first read “Makers, the New Industrial Revolution” by Chris Anderson I realized how transformation this technology would be and how it would impact intellectual property. I read as much as I could after that and began to seek out work in this field. After that, when I met Jenny some years ago, I was excited to walk with her on this journey of making 3D printing more accessible in health care. That motivated me to learn as much as I could about the industry, and study the IP and patent implications very carefully.
Jenny: What inspired you to start your journey/company/career/research in 3D printing (bio-fabrication/bio-printing)?
Erik: See above.
Jenny: What motivates you the most for your work?
Erik: As a lawyer with a biomedical engineering background, I love the opportunity to work on technologies and for companies that are changing the world. Much of this innovations are coming through the digital health and 3D printing space, and to be a small part of that is humbling.
Jenny: What is/are the biggest obstacle(s) in your line of work? If you have conquered them, what were your solutions?
Erik: One is that startups have such little knowledge of how IP laws impact their businesses and many of them make irreversible mistakes early on before they can afford good legal counsel. I have done a series of presentations at incubators that have helped solve that problem, and have a relatively open door to answer entry level questions for companies working on technologies I believe in.
Jenny: What do you think is (are) the biggest challenge(s) in 3D Printing/bio-printing? What do you think the potential solution(s) is (are)?
Erik: From my perspective, I think understanding how intellectual property can be protected will be one of the biggest challenges, as 3D printing creates a host of opportunities and pitfalls for IP. If they are not properly protected, much loss of IP will occur with new companies in this space. I think identifying legal counsel with deep expertise in the space will be critical to avoid these pitfalls.
Jenny: What advice would you give to a smart driven college student in the “real world”? What bad advice you heard should they ignore?
Erik: Take ownership of your life and your career path. Ignore the “shoulds” and expected and well-worn paths.
Jenny: What were/was the best investment you made in 3D printing/bio-printing/bio-fabrication?
Erik: Reading many books on the topic and researching many of the patent and legal issues.
Jenny: What was/is the biggest risk you took in your career?
Erik: Betting my future on expertise in digital health and 3D printing.
Jenny: What do you enjoy in your spare time? What are you passionate about outside of your work/3d printing?
Erik: Hiking, meditation, reading, and food!
 
 
 
 

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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.

About the Author

Erik Birkeneder MS JD

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

The post Protecting the Intellectual Property (IP) in your 3D Printable Digital Files: A Case Study in the Theft of CAD Files appeared first on 3DHeals.