Home 3D printing and its relationship to industrial design registration

CONSIDERATIONS REGARDING PRIVATE AND NON-COMMERCIAL USE OF DOMESTIC 3D PRINTING AND ITS RELATION TO INDUSTRIAL DESIGN REGISTRATION

3D printing – also known as additive manufacturing – is a very popular technology in modern design and plays a very relevant role in solving complex problems in industries of different sizes, such as aerospace, healthcare and electric vehicles. .

Although the initial equipment has a high cost, 3D printing is currently more popular due to greater economic accessibility and better knowledge of the technology. Thus, as the technology continues to evolve and its entry into the domestic environment expands, domestic 3D printing may face some intellectual property and industrial property rights issues, such as the Registration of Industrial Designs, established by Law No. 9279 on Industrial Property. , of May 14, 1996 (hereinafter the Brazilian Intellectual Property Law).

In this sense, art. 187 of the Brazilian Intellectual Property Law only describes the incriminated practice of the unauthorized manufacture of a product incorporating a registered industrial design or a substantial imitation of a registered industrial design that may lead to error or confusion. The two articles of art. 188 deal with acts of commercial exploitation of an object unlawfully incorporating a registered industrial design or model or a substantial imitation that may lead to error or confusion.

Moreover, on the basis of the single paragraph of art. 109, where applicable, the provisions of art. 42 and points I, II and IV of art. 43, the latter dealing with exceptions to the rights conferred by the owner, apply to the registration of the industrial design. Consequently, the protection of the registration of the industrial design does not apply to acts performed by unauthorized third parties, in a private capacity and without commercial purpose, provided that they do not cause damage to the economic interests of the registrant; and acts performed by unauthorized third parties, for experimental purposes, related to scientific or technological studies or research, in accordance with points I and II of art. 43, respectively.

Additionally, art. 26.1 of the TRIPS Agreement provides that: “The owner of a protected industrial design has the right to prevent others, without his authorization, from making, selling or importing articles bearing or incorporating a design which constitutes a copy, or is in substance a copy , of the protected design or model when these acts are carried out for commercial purposes.”.

In general, based on the provisions of Art. 43 of the Brazilian Intellectual Property Law, it is understood that the right conferred by the registration of the industrial design or model cannot be exercised against certain uses, such as private use and for non-commercial and experimental purposes, related to scientific or technological studies or research, respectively, in accordance with points I and II of the said article.

In the context of 3D printing, this discussion covers home 3D printing in the context of the limitation of private and non-commercial use, established in Art. 43 (I) of the Brazilian Intellectual Property Law.

It is perceived that household 3D printing may fall under the exception of private and non-commercial use, as in an example case, where a toy printed on a 3D printer, which is used for private and not commercialization by an unauthorized third party, does not constitute a crime against the registration of an industrial design or model of such a toy.

However, with the future massive growth of the national use of 3D printing, the question arises whether such an exception of non-infringement of industrial design rights by private non-commercial use can be understood as an threat to industrial design registrants, as the increased circulation of the protected good would inevitably lead to a decrease in the volume of sales, for example, which would run counter to the exception of Art. . 43 (I), resulting in harm to the economic interests of the holder of the industrial design registration.

At this stage, it should be mentioned that the commercial purpose indicated in I of Article 43 does not include any reference to the number of products. In addition, the limitation referring to the use that does not cause damage to the economic interest of the holder does not attribute any quantification or qualification to the possible damage. Therefore, it can be deduced that any damage caused to the interest of the holder would exclude acts performed by an unauthorized third party with the exception of point I of article 43, configuring an infringement of the registration of the design or model industrial.

In the same context, the “economic interest” of art. 43, one can apply what s. 30 of TRIPS says “does not unreasonably conflict with its normal operation” with “does not unduly prejudice the legitimate interests of its owner”. That said, it is understandable that even when it marginally affects the economic interest, the private and non-economic act of domestic 3D printing can be permitted.

In the process involving the act of domestic 3D printing are also included other elements that require particular attention with regard to the protection conferred on the registration of the industrial design, namely CAD and STL files.

With reference to the CAD file, this is generated by modeling software, which allows for example the design of objects or structures. The STL file is the ready-to-use file for 3D printing, which is converted from the original CAD file and does not allow significant changes to the object contained in the original CAD file. STL and CAD files can be purchased on various e-commerce platforms for 3D printing resources.

Certain situations involving the circulation of files for the 3D printing of an object protected by the registration of an industrial design or model can be envisaged within the framework of national 3D printing, such as an unauthorized third party marketing this file on a public 3D printing resource platform; and a third party purchases said file and prints the 3D object only for private, non-commercial use. In the first situation, the unauthorized third party makes this file available for purchase, therefore, it can be understood that private use would not be characterized, which could characterize the infringement of the industrial design registration. In the second case, in principle, it would not affect the right of the holder of such a recording, but the rights of the holder not being exhausted, this third party could not resell this object and/or file.

Obviously, these and other situations can also be dealt with by the Brazilian Copyright Law (Law No. 9,610 of February 19, 1998) and the Computer Programs Law (Law No. 9,609/98 February 19, 1998). Also, as is well known, computer programs are constant targets of hacking, and so can such files, which can lead to anti-hacking actions.

In addition, it is also possible to envisage the offer by an authorized person of a domestic 3D printing file of a replacement/maintenance part of an artefact, in which this part is protected by the filing of the drawing industrial. In this case, the quality of the final 3D printed object may not correspond to that initially proposed by the owner, who has no control over it, which may lead to losses for the user, as well as motivate actions in this regard.

There is no doubt that the subject in question opens up a range of discussions and analyses, which permeate not only industrial design registration rights, but also patents and copyrights.

References:

BARBOSA, Pedro M. Nunes. BARBOSA, Denis Borges. O código da propriedade industrial conform os tribunais: comentado com precedentes judiciais: volume 1: patents. Rio de Janeiro: Lumen Juris, 2017.

IDS-Instituto Dannemann Siemsen de Estudos de Propriedade Intelectual. COMMENTS TO LEI DA PROPRIEDADE INDUSTRIAL. Revised and updated edition. Renovation: 2015.

European Commission, Directorate-General for Internal Market, Industry, Entrepreneurship and SMEs, Mendis, D., Bernd Nordemann, J., Ballardini, R., et al., The intellectual property implications of the development of industrial 3D printingPublications Office, 2020, https://data.europa.eu/doi/10.2873/85090

DECREE No. 1,355, December 30, 1994. Agreement on Trade-Related Intellectual Property Rights – “TRIPS”.

Law No. 9.279 of May 14, 1996. Industrial Property Law.