The development and accessibility of 3D printing has enabled a multitude of technical advances in numerous fields. This technology is today widely used by startups for technical studies and prototyping in FabLabs.
This is not, however, without risk, in particular because it is probably the first technology which can lead simultaneously to infringement of all forms of intellectual property rights (copyright, patents, industrial designs, models, and even topographical and semiconductor rights).
Startups should bear in mind certain rules of prudence in order to avoid infringing the rights of third parties and compromising the protection of their own inventions/creations.
It is to be recalled first of all that there are two ways to use a FabLab: either as an “OpenLab” (that is to say open access on a day for which the platform is available to all), or under a rental contract.
The FabLabs charter specifies that the creations or inventions developed in a FabLab used as an OpenLab must remain available such that individuals can uses them and learn from them (principle of learning from peers).
By contrast, still under the FabLabs charter, the user who, for the day, rents a machine or the FabLab, or even the services of the facilitator, in order to prototype a product or produce a small series, may request confidentiality and have a non-disclosure agreement signed; he is not required to document his design for the community and may file applications for Intellectual Property rights which he may consider necessary for the protection and the exploitation of his invention/creation.
For these reasons, using the FabLab as an OpenLab poses difficulties which would appear to be avoided by use under rental.
It should be recalled that a product may be new (as well as inventive or original, and therefore patentable or capable of protection by another IP right) but also incorporate an object that is known and protected (such that the new product is dependent on earlier rights of third parties.
If the known object is protected by copyright, the 3D printing of the object, performed identically (in the context of the printing by a startup of its own product incorporating the object), is a prohibited act of reproduction (French IP Code L.122-1). However, this act may benefit from the exception for a private copy (French IP Code L.122-5 ) subject to passing the “triple test”: the original work must have been legally acquired, the reproduction must not be prejudicial to the normal exploitation of the work, or cause unjustified injury to the legitimate interests of the author.
Furthermore, supply to the community of a CAD file reproducing the protected object constitutes a prohibited act of representation (French IP Code L.122-1) (this is communication of the work to the public by a telecommunication process under French IP Code L.122-2). However, the user of the FabLab in open access cannot avoid such an act of supply.
Moreover, users of the FabLab in open access are supposed to relinquish the ownership part of their copyright and agree to leave their designs to the community to enable their work to be reproduced. That being the case, it will not be possible for the startup to claim or profit from any copyrights which could have arisen by it designing a new product. The application of copyright would appear simpler provided there is an agreement (for rental of all or part of the FabLab).
If the known object is protected by a patent, its reproduction, either identically or by equivalence of means, constitutes a direct act of infringement (L.613-3 French IP Code), unless it can be considered that this act of manufacture is accomplished in a private context for non-commercial purposes, or is accomplished on an experimental basis and relates to the patented object of the invention. The prototyping in a FabLab of a product incorporating a patented object would appear to be covered by the second exception.
However, manufacture is not the only way to infringe a patented object. “Indirect infringement” is also sanctioned against, since it shall also be prohibited, save consent by the owner of the patent, to supply or offer to supply […] to a person other than a person entitled to work the patented invention, the means of implementing […] the invention relating to an essential element thereof where the third party knows, or it is obvious from the circumstances, that such means are suitable and intended for putting the invention into effect (French IP Code L.613-4), unless those supplied means are staple commercially-available articles.
In this connection, it should be noted that the CAD file of the prototype produced in OpenLab and any associated documentation (both enabling the product incorporating the patented object to be reproduced later) have to be provided to the community.
Could this act be considered as an act of infringement under Article L.613-4 of the French IP Code? The risk would appear to be real by analogy with the reasons for the decision by the Commercial Supreme Court (Cass. com. 12 Feb. 2008), which previously held that the supply of drawings and instructions for installing a suction facility for blackwater implementing a process covered by a patent was indirect infringement, regardless of whether the supplier of the means therefor knew of the existence of the patent.
Furthermore, the delivery of such documentation to the FabLab community also constitutes a disclosure destroying the novelty of the product developed by the startup, thereby invalidating any later filed patent application covering that product. In the context of an aesthetic creation, the filing of an application for a registered design may still be envisioned, but only in the states which provide a grace period (for example 12 months in France) enabling the application to be filed after its disclosure by its creator.
Therefore, if a startup uses the FabLab with open access (OpenLab) for its initial developments, it exposes itself to a dual risk: that of legal action against it for infringement and that of being unable to protect its own invention/creation using intellectual property titles. What is more, startups seeking funding are well-aware of the importance of such titles in the eyes of investors.
Use of the FabLab within the framework of a rental agreement enables a startup to avoid such pitfalls.