Additive manufacturing, also known as 3D printing, has revolutionised the way people create customised products and component parts. However, this new technology has added a layer of murkiness when it comes to intellectual property (IP) rights, specifically certified design rights.
In Australia, manufacturing objects using 3D printing technology is likely sufficient to constitute design infringement as per section 71 of Designs Act 2003 (Cth). This section allows the owner of a certified design to take legal action to prevent unauthorised copies from entering the market. When assessing design infringement, the court will determine whether the alleged infringing product is substantially similar in overall impression to the certified design, as perceived by the informed user.
To date, there have been no design infringement cases pertaining to 3D printing before the Australian courts. However, it is important to be cautious when 3D printing, as design infringement does not require knowledge or intent. Successful findings of infringement can result in injunctions, damages, or an account of profits, as well as punitive damages for flagrant infringements.
If an individual or company uses a 3D printer to create a product or component part incorporating a certified design, it is likely to amount to infringement, even if done unknowingly. However, the likelihood of an action being brought against an individual or company for 3D printing a product or component for personal use is extremely low.
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Conversely, if a person or company creates a 3D printed product for commercial use, there is a high likelihood that the owner of the design right will bring an infringement action. In this regard, it is pertinent to consider the recent case of Multisteps Pty Ltd v Specialty Packaging Aust Pty Ltd  FCA 587. In this case, it was held that individual company directors may be found liable for design infringement if they “authorise” the infringement. For example, authorisation may occur by failing to perform due diligence clearance searches, or for endorsing or controlling the company’s conduct, even if by omission or lack of oversight.
Even further still, if a third party creates 3D printed products at the request of others, there may be design infringement. For example, if a user uploads a 3D CAD file to an Australian service provider’s website for printing, there will likely be an infringement by the user for procuring the making of a registered design.
It is crucial to exercise a high degree of caution when using 3D printing technologies, especially when the product is to be used commercially. While 3D printing offers exciting possibilities, it also poses new challenges and risks for companies and individuals. The Patent Attorney Brisbane team at Kings are here to help you and your business navigate patent law, trade marks and registered designs.