The European Patent Office (EPO) has recently confirmed that it is possible to obtain patent protection for additive manufacturing software instructions (e.g. G-code). This is a boost for innovators who may wish to prevent the unauthorised distribution of additive manufacturing files for their products.
Additive manufacturing is maturing. The global additive manufacturing market size is estimated to reach $76.16 billion by 2030, in part due to the adoption of additive manufacturing in industrial applications. This includes growing adoption of additive manufacturing in the automotive, healthcare, aerospace and defence sectors.
As additive manufacturing becomes more prevalent, there is an increased risk that competitors may attempt to manufacture counterfeit products through additive manufacturing. In addition, competitors or consumers may share software files for use in manufacturing infringing products (e.g. through online marketplaces, such as Thingiverse).
Previously, there was a question as to whether software files that describe a patented product might infringe a patent, or whether the sharing of these files would evade traditional patent protection (as noted in this article by Marks & Clerk in The Engineer).
Whilst the manufacture of a product would infringe a patent to that product, it is often difficult to pursue a large number of individual infringers, relative to pursuing the original source of an infringing software file. This was the experience of copyright owners with the unauthorised distribution of filed for copyrighted music and film (e.g. through online file sharing sites, such as Napster). Having said this, there is a risk that traditional patent protection for a particular product would not cover unauthorised distribution of additive manufacturing files.
Marks & Clerk has been at the forefront of highlighting this risk, and speaking to patent offices around the world about ensuring that the above loophole is closed. Pleasingly, the EPO has now confirmed in their Guidelines for Examination that it is possible to obtain protection in Europe for software that is configured to control an additive manufacturing device to produce an innovative product (e.g. G-code). This applies even if the method of manufacture itself is not inventive (i.e. if the inventiveness lies only in the product being manufactured).
In order to obtain protection, the EPO has stated that the software must "define the instructions for operating the (additive manufacturing) device". Accordingly, it appears that a design file that merely represents the geometry of a product (e.g. an STL file), without explicit instructions for printing, would not directly infringe. Nevertheless, obtaining direct protection for additive manufacturing instructions (e.g. G-code) opens up a stronger argument that more general Computer Aided Design (CAD) files may indirectly infringe.
Whilst this opens up a new avenue for protection, this can only be utilised if appropriate wording is included in the application as filed. Marks & Clerk has been advising clients to include this wording, even prior to the EPO's confirmation of validity, but this confirmation from the EPO is a boost to innovators.
Going forwards, innovators should consider the whole range of protection available to them. Patents filed today will have a term of up to 20 years. Given the increasing prevalence of additive manufacturing, and the likelihood that this prevalence will grow considerably over the next 20 years, innovators should review their filing strategies to ensure that their IP strategy is future-proofed against the threat of additive manufacturing infringement.