3D Printing: Manufacturing Revolution or Intellectual Property Threat?

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Introduction

Imagine that you are a contractor needing to build some highly specialised cladding for the irregularly shaped sides of a new skyscraper. The challenge is that each piece of cladding is highly individualised and will require extensive customisation. The cost and complexity of making each piece to measure is going to pose a serious challenge in getting the work done on time and under budget. What can be done?

On the other hand, imagine that you are a manufacturer trying to build new prototypes of your product to help you revise and re-work your project. Building prototypes is expensive and time consuming, and the lead time in getting new prototypes designed and manufactured can considerably slow down the design process as well. Traditional rapid prototyping machines can be complex and expensive. What can be done?

Counter-intuitively the answer to both problems is the same: 3D Printing (also – more formally – known as additive manufacturing). The core idea behind 3D Printing is that you can create an object by ‘printing’ it using a designated material and, by depositing layer on top of layer, create a 3D object. This distinguishes it from traditional subtractive manufacturing processes where raw material is cut and shaped until the desired object remains.

In many respects, 3D Printing shows all the hallmarks of a classic disruptive technology. Progress in this area is rapid, with many considering that 3D printing technology is currently going through the same boom that computing went through, and is improving at an exponential rate. With these improvements come expanding use cases, increasing interest in deploying such technologies and the rise in legal issues that surround the use of such technology.

Any fan of science fiction will have read stories or seen films containing devices that can instantly or near-instantly reproduce any object, at will. Watchers of Star Trek will have seen Captain Picard simply ask for a cup of Earl Grey ‘hot’, only for it to magically appear. But in fact technology which is very close to this is already available and already being used.

Pinsent Masons | 3D Printing: Manufacturing Revolution or Intellectual Property Threat?

Introduction Advanced Manufacturing and Intellectual Property Challenges3D Printing looks set to lead to a paradigm shift in terms of advanced manufacturing. 3D Printing first hit the mainstream press when the designs necessary to ‘print’ a working handgun were released on the internet, and whilst this was clearly intended by the press to create page hits it did at least show that 3D Printing processes can be used to simplify the production of complex devices. The ability to produce relatively complex plastic models directly from their designs is a game-changer and there are now consumer products available on the market whose manufacture contains an element of 3D Printing.

One such example is the Alpha Dog Headphones, produced in the United States by a company called Mr Speakers. These headphones retail for US$599 and are the world’s first 3D Printed production headphones. Crucially, despite being 3D Printed, they are highly regarded in the audiophile community. This shows that 3D Printing is already being used to produce technically complex and class leading products. The technology allows advanced manufacturers to simplify and accelerate their production process, ultimately saving money.

Infrastructure Sector & 3D PrintingTraditionally 3D Printing technologies have focused on small objects – starting with the prototyping scenario described in the introduction and the example of the headphones above – but it has recently seen a growth in focusing on the extremely large and the extremely small. The focus on the extremely large has seen uptake by advanced manufacturers such as Boeing, who are using 3D Printing to manufacture parts for its most modern airliners.

Its ultimate deployment on the largest scale is being seen in its use on construction projects, where ambitious goals are being set for the use of 3D Printing. Recently, leading architects such as Foster & Partners and Zaha Hadid have committed to exploring the use of these technologies in upcoming projects. Dutch architects anticipate they will finish printing the world’s first entirely 3D Printed plastic house later this year. The team behind the house claim it is a waste-free, eco-friendly way to design and construct the cities of the future. Sophisticated contractors are already deploying the technology in projects, with Skanska using the technology to print cladding for the tops of steel columns for a roof garden at 6 Bevis Marks in London. A Chinese contractor is 3D Printing houses for under US$5,000. They are printing ten complete houses per day.

As cost pressures increase on all businesses in the construction industry, there will be increasing interest in using such technologies. They come with two inbuilt advantages. Firstly, additive manufacturing is a specialised form of pre-fabrication and will reduce the complexity of work that has to be carried out on site. This fits well with the overall goals of contractors and employers within the Infrastructure sector. For example, the Hong Kong Construction Association in its Vision 2020 document has committed to increasing the use of pre-fabrication by 50% in the industry in Hong Kong. Similarly, there are significant material costs savings as well. Contour Crafting, an initiative in relation to 3D Printing run by the University of Southern California, believes that using such technology will save the construction 20

percent to 25 percent in financing and 25 percent to 30 percent in materials. The biggest savings would come in labour, where Contour Crafting believe that 45 percent to 55 percent savings can be made by using 3D Printers instead of humans. In many sophisticated infrastructure markets, where labour costs are high and the specialist skills needed to carry out complex construction and installation works are scarce, these will be significant benefits for contractors and employers in using 3D Printing technologies.

The Legal Issues3D Printing, whether used as part of advanced manufacturing processes or within the infrastructure sector, comes with legal issues that are worth considering. Unfortunately, with simplification of the production process comes increased risk to an organisation’s intellectual property. Take the analogy of a document produced in Microsoft Word. Any individual who has access to a computer and a printer can produce an identical copy of a document provided to them as a Word file. Whilst not quite so straightforward, someone with access to a 3D Printer and the relevant “3D Printable” design for a product should be able to produce identical copies of that design. As 3D Printing technology continues to fall in price the spectre of counterfeiters producing cheap copies of successful products, with relatively minimal effort, becomes very real indeed.

Indeed, it is perhaps inevitable that 3D Printing will lead to the infringement of rights holders’ design rights in products. In Hong Kong, protection is available through the registration of a design right, the benefit of this as opposed to other forms of intellectual property being that the right subsists even in everyday objects such as bowls, cups, and plates. Other protections may arise through the use of trade marks, patenting and actions for passing off. This may of course lead to a large increase of claims as rights holders seek to protect their registered designs but this may be unavoidable. It does not however alleviate the fact that counterfeiting may become easier, and that those organisations who wish to control and protect their valuable intellectual property will have to become ever more vigilant.

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Another major concern is the changes to the design process that will have to be incorporated when adopting 3D Printing. Traditionally, designers in more advanced manufacturing sectors and architects in the infrastructure sector do not concern themselves with how something will be created. They see their role as providing the final design and leaving it to others to finalise the design process that goes with these items (e.g. the creation of moulds or the building of temporary works). That approach will not be feasible when designing items that are going to be created using 3D Printing. Implied within the design process then will be an obligation to ensure that the design can be constructed using a 3D Printing technology. When designers fail to do so, they may expose themselves to contentions that they have failed to act with the necessary skill and care given their knowledge of how the item had to be manufactured.

The final major concern is that of product life. Currently, products and items created using 3D Printing are limited in the materials that can be used and how they can be combined. Not all materials can be used for 3D Printing and not all materials can be easily combined with other materials. This may mean that not only must careful thought be put in to their design, but careful thought

must also be put into the durability of the product and what legal obligations should be taken in relation to warranties as to quality, fitness for purpose and the design life of the item. In the longer term, we can anticipate that 3D Printing will change the nature of such obligations as parts become easily replaceable and reproducible at low cost. The focus will shift to ensuring that the product has the right quality to be used for the intended purpose. Parties intending to use 3D Printing must ensure that their contractual obligations are drafted with their intended outcome in mind, having captured the opportunity that 3D Printing offers to change that approach.

ConclusionDisruptive technologies are a fundamental driver of how advanced manufacturing and infrastructure businesses can improve their processes, products and results. The coming rise of 3D Printing represents the next major disruptive process for these industries. Understanding the opportunities and challenges that it offers will be vital to making best use of this process.

At its core, the legal risk inherent in 3D Printing is that it imposes a certain uniformity upon the manufacturing and fabrication process by standardising the equipment that is used for fabrication. The 3D Printer will become all the tooling, moulds, and specialist equipment that is needed to take advantage of this technology.

With that comes the risk inherent to easy reproducibility. These can involve difficulties with controlling access to important design information and ensuring that such information can be protected legally. Parties may also be extremely concerned to ensure that products reach the quality standard that products using ordinary manufacturing techniques can achieve.

In the medium term as 3D Printing matures, it may become expected of designers that they will produce something that is capable of being printed. They will be taking the risk that it cannot be printed since the 3D Printer is unlikely to be willing to bare any design risk for essentially a mechanical process.

In the long term, the expectations that surround products that are made using 3D Printing may also change. Parties will not have the same expectations as to quality, durability and cost that they had previously. Contractual obligations will need to be adjusted – and standards reviewed – to ensure that these obligations are well drafted and specify an achievable standard.

Taking these steps can help parties ensure that they are well prepared for the next wave of technological revolution represented by the rise of 3D Printing.

Sales of Goods – if the 3D Printer and material used as an input for the 3D Printer are specified in the Contract, then Sales of Goods/Quality of Materials issues are far more likely to be issues at the Main Contractor level. If poor quality material is used then it is possible that bubbles or faults will appear in the final product, resulting in large amounts of wasted materials and attendant delays.

Design Co-ordination – at least at first it is unlikely that 3D Printing will be adopted wholesale. It is more likely that 3D Printing will be used for discrete items on projects. Unless the project is Design-Build, this may lead to issues involving design co-ordination.

If the Architect provides a variation, and stipulates that the variation is to be 3D Printed, there may be clashes with the Contractor’s design. Particularly in instances where the Architect is involving itself in areas that are the Contractor’s responsibility.

BIM may help eliminate this – but otherwise, careful drafting in Contracts may need to be employed so that parties clearly understand whose responsibility it is to watch out for such design clashes.

Pinsent Masons | 3D Printing: Manufacturing Revolution or Intellectual Property Threat?

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Contacts

Vincent ConnorHead of Hong Kong OfficeConstruction Advisory & DisputesHong Kong T: +852 2294 3490M: +852 9186 7221E: vincent.connor@pinsentmasons.com

Paul HaswellPartnerStrategic Business Services, TMT Hong Kong T: +852 2294 3315E: paul.haswell@pinsentmasons.com

6798www.Out-Law.comwww.pinsentmasons.com

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