Product Design IP in the age of 3D Printers

Dieter Rams designed Coffee Maker

Intellectual property protection for industrial design and industrial designers has always been a fraught process. The nature IP does not lend itself easily to the tasks Industrial Designers might put to them. However, new technology might begin to change how Industrial Designers see Intellectual Property protection.

IP Limits

Conventionally, industrial design is protected through a design patent.  Design patents allows the designer to get protection on their purely ornamental design for 14 years from filing.  Unfortunately, this means that if the product has a functional component (enhanced ergonomics etc.) then the designer relinquishes that functionality, or they are forced to obtain the more expensive and time consuming utility patent. A utility patent covers the function of a device , process, compound or article of manufacturer. For example, a designer could hold a patent on the manufacture of a particular item. While this might successfully deter large scale copying, it does not prevent wide spread dissemination of the construction methods and processes.

Copyright protects artistic and literary works for 70 years, plus the life of the author. Text and audio-visual works are the primary focus of copyright. Once you move beyond the artistic realm into the functional, Courts have held that copyrights no longer apply.  However, the age of 3D printing might be about to change the rules of the game.

Charles Eames Design Patent 

3D Printing

For the uninitiated, a 3D printer is a device that builds an object, usually out of some resin, layers at a time. It is the electronic opposite of a very fine mandolin slicer. MakerBot, and companies like them are pioneering a way to have an "internet of things." The eventual goal would be a repository of templates for the production of all manner of goods, ready to be downloaded and printed, the way one might download a song and burn it to a CD [ed. do kids ever do that any more ?].

 The software used in 3D printers vary from device to device. However, they all use some form of stereolithography file to instruct the device on how to lay down layers of material. Once all the layers have been deposited, you should have a reasonable copy of object described by the file.

It should be apparent that 3D printing allows for the production of many useful things, it also allows for the re-production of industrial design elements without authorization from the original creators. Where 3D printing has created a problem, it might also offer a solution.

IP Incorporation into Designs



Since the procedures for manufacturing the item begins with a digital file. It is possible to encapsulate the design within the boundaries of Copyright law. If the software file, the instruction set for making a particular design is complete (that is, it does not require additional tooling, or minimal machining) then the software encapsulates the design.

It might still hold true that the tangible representation of the software (i.e. a chair or lamp) is not covered by copyright, the software code that executes the 3D printer is a valid piece of IP.  Therefore, the nexus of IP infringement of the design would occur when the digital file is copied (i.e. on a file share network). Thus, developing code for the 3D designs will become as important as the conceptual prototypes. Court are well positioned to hear arguments on the illicit trade and sale of pirated software. This presents an opportunity for Industrial designers and software coders to collaborate on clever implementations of the software to render the designs with minimal post processing. The closer the code is to representing the object, the stronger the case for infringement. Once the code base of a portfolio has been engineered, a simple licensing program [not in bitcoins!!!] (think Itunes) could offer people the world over the chance to download an use a particular firm's designs.

Alternatively, or additionally, a designer could include a structural trademark element. For instance, the design of a chair could,  incorporate a logo. In this instance, merely printing the object does not create a cause of action. However, once an unscrupulous manufacturer attempts to sell the copied design, they are engaged in trademark infringement.

There are likely more elegant solutions than these two for the potential problems posed by 3D printing. However, these solutions show that IP in 3D printing can be maintained and creators can be protected.

Jordan Garner

Tax Policy for NPE ('Patent Trolls") [Wonky]

'In this world nothing can be said to be certain, except death and taxes." - Benjamin Franklin (noted scientist, inventor, philanderer  founding father, and fit model for currency).

The current debate around NPE (non-practicing entities, i.e. Patent Trolls) had me thinking about the law of unintended consequences and taxes. (Yes, I know, boring).  

I think everyone can agree that the ultimate goal of the AIA changes to the patent law were driven, in no small measure, by companies wishing to eliminate the threat of Patent Troll suits. For a general counsel with the ear of the legislature, this sounds like a perfectly reasonable use of power and influence. For the solo inventor who honestly believes that MegaCorp has ripped him off, it looks like corruption of the highest order. 

Resolving these two conflicting visions is nearly impossible. For MegaCorp, it honestly believes that Solo inventor is just a crook who is hassling their highly successful venture. For Solo inventor, he has invested time, but more importantly, money in acquiring a patent and MegaCorp is reaping all the benefit.  Furthermore, to Solo, it looks like the law has been changed to favor one party over the other. 

While the AIA might cut down on NPE suits, it will likely have inadvertent effects that we are barely aware. As such, I tend to not agree with wholesale legal changes as a way to eliminate 'bad' actors. When profit is the motive, very bright people will expend effort to find the loophole.  The problem with the AIA is that it targets the result of NPE actions (suits directed against major tech companies) instead of the goal of NPEs (Profit!). 

I would have advocated using tax policy to target the goal, not the result. 

On MegaCorp's side, Tax policy could be changed to make a new taxable income category for reasonable royalties as assessed by a court for infringement of a non-practiced patent.   Currently the tax rate for recovery in settlement and and reasonable royalty recovery by judgement are the same (~35% and taxed as income).  However, a change is the way that the IRS treats recovery from settlement vs recovery from litigation would lead NPE's to maximize their profit through the most efficient way possible.  If the tax rate for reasonable royalty (of a Non-practiced patent were sufficiently high, it would alter the calculus of going after MegaCorp, especially given that attorney fees are not tax deductible. Likewise, tax policy could be used to reduce the windfall that a true NPE could recover based on a past damages.

While this might drive NPE's into settlements instead of broadside litigations (which is what most GC's are really worried about), it would still leave Solo inventor holding the bag on his out of pocket patent fees.  

One way to lesson the impact to Solo is to use tax policy to unburden him of some of the cost in acquiring the patent.  This system would work as thus: The IRS would allow, given the size, income and subject matter, a tax credit for money spent acquiring a patent. This could be as simple as acquiring a tax credit for application fees, or it could be as complex as some formula for a tax credit that takes into account the amount of money that was spent in prosecution. 

These are obviously rough sketches of a goal oriented solution to the NPE problem, while trying to make sure that honest small inventors are not thrown out with the NPE bathwater. 


Jordan Garner 

You got a job, now what?

Even with last week's job report steady employment is still difficult to find for a lot of people. One of the demographics having a slightly easier time achieving the employment dream are those young people with hard science and engineering degrees. regardless of if you are going to work for Microsoft or some garage stat-up, you should keep in mind what is being slipped into your employment contract.

A good illustration of the pitfalls of not properly reading your employment contract can be found in Picture Patents, LLC v. Aeropostale, Inc.  (Google Scholar is a god send for cheap Attorneys who hate to use the Westlaw accounts).  While this case is not new (April 2011) it does provide 2 key point I want to make about employment contracts and keeping your rights.  


A bit of back story. Ms. Baker, a student at Columbia, got an job working for IBM. Excellent right! Well, IBM being a huge, 100-year old multinational corporation who builds Jeopardy winning supercomputers in its spare time, is not an entity to let something like an employment contract be a Staples brand boiler plate. The employment contract has all the obvious provisions about not showing up drunk and sexually-embarrassing your co-workers in the breakroom.  In addition it has this doozy of a IP assignment section. The relevant part states: 

4. I hereby assign (emphasis mine) to IBM my entire right, title and interest in any idea, invention, design of a useful article (whether the design is ornamental or otherwise), computer program and related documentation, and other work of authorship (all hereinafter called "Developments"), hereafter made or conceived solely or jointly by me, or created wholly or in part by me, whether or not such Developments are patentable, copyrightable or susceptible to other forms of protection, and [sic] the Developments: (a) relate to the actual or anticipated business or research or development of IBM or its subsidiaries, or (b) are suggested by or result from any task assigned to me or work performed by me for or on behalf of IBM or its subsidiaries....

The above provisions concerning assignment of Developments apply only while I am employed by IBM in an executive, managerial, product or technical planning, technical, research, programming or engineering capacity....

Humm... restrictive. You invent a newer, better algorithm. It belongs to IBM.  You invent a better toaster, IBM is making your toast. You invent a slightly tastier pancake (impossible you say!, pancakes are already at maximum tastiness! Bah!), IBM is slathering Aunt Jemima all over it. An important note here is "hereby assign" this means today, not some point in the future. So when you develop something in the future, it is already assigned (in a temporal paradox no doubt) to IBM.  You are binding future you to assign things, i.e. you don't get to renege later.

I am pretty sure you know what happens next. Ms. Baker comes up with an idea (not important what) that she developed with the resources of IBM, while at IBM. IBM declined to advance the project further. Ms. Baker decided to take the technology on the road, do some more developing and file some patents.  Later, she decides that a whole bunch of people are infringing said patents, and brings suit....and looses.  Why?

Cause those patents belong to IBM.  Yea, she paid all the maintenance fees, all the filing fees and all the attorney time, but BIG BLUE takes the prize. Ms. Baker failed (or Ms. Baker's attorney failed) on two accounts. One, when the IBM's employment agreement asked her to list all currently developed(ing) projects that were outside the scope of the the IP agreement she wrote "None".  While it was possible that at the time of her signing, she had zero conception of the project, it is not likely. More likely, she didn't think the idea was worth putting down on paper at the time.

What's the lesson?  Always divulge (in confidence, so as not to be considered a disclosure under sec 102 et seq. ) all of you concepts. Sure some of them might sound stupid, or half baked, but you never know when you will develop them into the next killer app, only to have Megacorp take all the cash.  This is easily done with something like a spread sheet that gives a basic description that lists the things you are working on and thinking about. The downside to this is that if you are too descriptive, you run the risk of narrowing your room to claim broader inventions.

Two, do not use your corporate resources to pursue personal inventions or discoveries. They hate that. More importantly, using their equipment lends credence to the fact that you were doing it for them, and it belongs to them (while else would a company let you do stuff, if not for their benefit).

The back-up lesson you kids who skipped to the end is to make sure you read your employment contract thoroughly. If you don't understand something, ask a lawyer. If you are working for a place that has this kind of contact, and you develop something on your off time, as your lawyer how to make sure it does not instantly get grabbed by the boss.

The Future

If only it were this easy

You will notice in the future that I will be putting forward some pretty random, reckless, speculative legal theorizing.  There is a point to this beyond satisfying my desire to investigate future legal developments that may never occur.  

I have a general theory about the future of Intellectual Property and how society will alter, and nurture the concept. Unfortunately, my overall thesis is a bit broad for this format.  Even more unfortunately, I am pretty sure I couldn’t convince anyone to pay me hash it out in one sitting.  Therefore, I have decided to use this forum to piece the concepts together and flesh out the ideas.  Eventually, if I like where I went, I might publish them all together as an ebook or something similar.

I will try to preface those posts with some sort of headline that tells the uninterested that they are about to be subject to some random dissertation concerning Economic Theory of Patents, Molecular manufacturing, Time Dilation and the Patent Office and why super villains must have great in -house counsel.


Jordan Garner


[Ed. Edited for random grammatical errors]

Google V. THE WORLD

Recently Google announced that its Scholar web-based search service would begin providing access to Federal and State legal opinions. Above the Law correctly notes that this could be the opening shot of a war that ends with the destruction of the Lex-West-Bloom legal search gatekeepers. While Google is a force to be reckoned with in everything from browsers, search engines (and patent search too), operating systems, phone services, e-mail, word processing and a ton of other things, I am not sure that Scholar will cause the total collapse of the big three.....today.

Using Scholar, I searched for Graham v. John Deere Co. to see what sort of results the service provided. Google gives you two options, to read the case (with highlighted keywords, that were part of your search) and to see how the case was cited. This second option is where Google has a bit more work to do. One of the essential features of the big 3 is the key cite, shepherdize, precedence identifies that let you know if you are barking up the wrong (and no longer good) legal tree. Scholar gives dozens of links and text snippets showing where the originating document was cited in subsequent documents, but does not comment on whether or not there was agreement, comment or dissent. Most importantly, it does not tell you if the case is good law.

Until Google gets the ability to show precedence and some legal analysis about the context of the case, I don't think any small law practitioners should be canceling their Lexis / West accounts anytime soon. However, this is Google, so assuming that they are not already working on a smooth integrated solution to this would be folly. Google database engineers are some of the best computer scientist that money can buy, and it would be prudent to bet that world of legal search is about to get a lot more competitive.

[GA]