By Katri Kiviniemi, ECTA Design Committee member, Castrén & Snellman Attorneys Ltd (FI) and Marta Alves Vieira, ECTA Design Committee Secretary, Vieira de Almeida & Associados (PT)

ECTA’s Design Committee has been carefully following the developments of industrial 3D and 4D printing and their potential impact on intellectual property rights, particularly in design law and practice.

A task force was created within the ECTA Design Committee to monitor the developments in this field and to assess whether a change in the current legislation would be appropriate and recommended in order to deal with the challenges brought by these new technical developments.

3DP is a fast-developing technology, even if it still is somewhat unclear to what extent and how fast it will become more widely spread and used in the industry and in private use. It is, however, clear that this technology and other developing technologies alike are challenging intellectual property laws, and when reviewing changes to these laws, their implications should be anticipated or, at least, taken into consideration.

In April 2020, the European Commission launched a Study carried out for the European Commission, entitled ‘The Intellectual Property Implications of the Development of Industrial 3D Printing’ dated February 2020. In June 2020, the Committee had already been engaged in ECTA’s Brief Report on 3D Printing and Comments to this European Commission Study.

Moreover, ECTA is strongly committed with the European Union Design Reform project and has already contributed to the Public Consultation with an assessment on design law and protection. This contribution led to the European Commission’s Evaluation of EU legislation on design protection published in November 2020.

In this context and based on the ECTA Design Committee’s reflections and discussions in the last years, a Position Paper on 3D Printing and its Implications on Design Law has been approved and submitted by ECTA to the European Commission in April 2021.

This paper addresses several aspects of the design law to be carefully evaluated in relation to 3D printing.

Firstly, the definition of a product should be reconsidered to clearly include new technologies. In this sense, a design within a CAD file should be considered a ‘product’ and a CAD file encompassing the design of a digital item should be eligible for design protection.

Besides, the defence available for acts done privately and for non-commercial purposes in accordance with the Design Regulation should be interpreted narrowly. However, it may be too early to fully understand the practical implications of the use of this exemption considering that widespread use of the 3D printing technology is not yet a reality. Therefore, it may be too early for an actual change in the law in this aspect.

Also, it would be relevant and necessary to explicitly include contributory infringement in the design law to provide legal clarity and more effective tools for rights holders in defending their right.

Considering the potential impact of 3D printing in relation to spare parts, it is advisable to maintain limited and balanced protection for spare parts. In line with the ‘ECTA Position Paper – Designs and Spare Parts’ published back in 2016, it is useful to explore alternatives to achieve a balance between total liberalisation (removing all design protection from items categorised as spare parts) and full exclusivity of design rights in spare parts (even if time restricted).

Finally, considering that there is already a multitude of legal tools, including other IP laws in place to stimulate innovation and control the markets, at the time being there is no further need for a specific sui generis law to govern 3D printing technology. Moreover, ECTA does not see any clear obstacles to further amending the current EU design laws to cover the implications of 3D printing or other related foreseeable digital technologies (such as 4D printing).