Cantor Colburn LLP is a full service IP law firm with expertise in additive manufacturing. They have established an additive manufacturing practice group and are ranked #10 nationally for issued patents. The firm works with an international network of associates. In 2013, the United States and China drove growth in international patent filings under the Patent Cooperation Treaty, with the US exceeding its 2007 filing levels. 3D printing presents unique intellectual property challenges regarding the rights to use, make, and sell 3D printed objects. There are various forms of IP protection such as patents, copyrights, trademarks, and trade secrets that can apply depending on the situation.

1. Cantor Colburn LLP
Global IP Strategies

2. Cantor Colburn LLP
William J. Cass, Partner
• Co-Chair Additive Practice
• Co-Chair Litigation Department
• Mechanical Engineer
• Commercial Multi-engine Instrument Pilot
• Cantor Colburn LLP is a full service IP law firm
– Established Additive Manufacturing Group
• Ranked #10 Nationally in 2014 for Issued Patents
• International Network of Foreign Associates
2

3. World Intellectual Property
Association
188 Patent Cooperation Treaty (PCT) States
3
http://www.wipo.int

4. US and China Drive International Patent
Filing Growth in Record-Setting Year
4
• The United States of America and China drove record-level patent-
filing activity via WIPO in 2013 as the number of annual international
patent applications surpassed the 200,000 mark for the first time.
International trademark and industrial design filings also achieved new
record-breaking levels.
• The total number of filings under WIPO’s Patent and Cooperation
Treaty (PCT) applications filed in 2013 amounted to 205,300,
representing 5.1% growth compared with 2012.2 The United States of
America (US) saw double digit growth in PCT filings and together with
China accounted for 56% and 29% of the total PCT growth,
respectively.
• With 57,239 applications in 2013, the US exceeded in 2013 its
previous filing peak of 54,046 applications reached prior to the global
financial crisis in 2007. China surpassed Germany to become the third
largest user of the PCT system, with Japan as the second-highest
user. The US remains the most-active user of the system
• Geneva, March 13, 2014 PR/2014/755
http://www.wipo.int/pressroom/en/articles/2014/article_0002.html

5. 3D Printing
Unique Challenges!
5
Copyright Functional? –
(Maybe A Utility Patent)

6. Do You Have The Right to Use,
Make and Sell?
6

7. Forms of Protection
7

8. Copyright
Mode Of Expression
• Expression of work fixed in tangible form
• Excludes others from copying or using form
of expression

9. Design Patent and Trade Dress

10. Design Patents
• Protect the Ornamental Features of a
Design (but not the functional features)
– Automotive Manufacturers
• Bumpers, grills, seats, lights, steering wheels,
etc.
• Consumer products
• Trade Dress
– Exclusive use – develop trade dress rights

11. Is it Functional?

12. Trademark

13. UTILITY PATENTS

14. Patents – The Right To Exclude
• Protect functional aspects of an invention
• Invention must be useful, new, and not
obvious
• Typically Years to Obtain
• Expensive – especially to enforce

15. Patent vs. Trade Secret

16. Reasons to Patent
• Protection
– Can the invention be easily reversed
engineered?
• Then a patent may be necessary
• Devices should be given consideration
• Asset development
– Increase the value of the business
• Attracting investment
• Marketing
• Discouraging the competition
• Defensive strategies

17. Reasons Not to Patent
• Expensive to obtain
– Attorneys fees
– Maintenance fees
– Not always successful
• Publication
– Teaching the technology
• Difficulty in enforcement
– May not be able to establish a process and/or
method infringes
– Cost

18. THE IP AGREEMENT

19. The IP Agreement
An Important Form of
Legal Protection
• Employment/Non-Competition
• Joint Development Agreement
• Non-Disclosure Agreement
• Ownership Agreement
• The License

20. The IP Agreement
• Scope – covers most situations
• Flexible - may be customized
• Expedient – patents take years!
• Additional protection -
–Warranties and Representations
–Risk Allocation

21. Global Strategies

22. Global Strategies
• PATENT COOPERATION TREATY
• EUROPEAN PATENT APPLICATION
• SELECTING CERTAIN COUNTRIES
– Reduce the number of necessary patents and fees
– Consider U.S., Germany, Japan and China, as an
example
• Berne Convention on Copyrights
• The Hague System for the International
Registration of Industrial Designs

23. U.S. Member of the Hague Union
• On February 13, 2015 the USPTO announced that the
United States has deposited its instrument of
ratification to the Geneva Act of the Hague
Agreement Concerning the International Registration
of Industrial Designs (Hague Agreement) with the
World Intellectual Property Organization.
• The treaty will go into effect for the United States on
May 13, 2015.
http://www.uspto.gov/about-us/news-updates/united-states-deposits-
instrument-ratification-geneva-act-hague-agreement

24. The Hague System
for Industrial Design Applications
• Currently, U.S. applicants must file individual
industrial designs applications in each jurisdictions
where rights are desired.
• Hague Agreement will allow U.S. applicants to file a
single international design application either with
WIPO in Geneva, Switzerland, or the USPTO to obtain
protection in multiple economies.
• Register up to 100 designs in over 62 territories with
the filing of one single international application
http://www.uspto.gov/about-us/news-updates/united-states-deposits-
instrument-ratification-geneva-act-hague-agreement

25. Protection in Europe –
but what is Europe?
There are 38 European Patent
Office countries
-plus 2 Extension countries
The European Patent Office
Countries are the 28 EU
countries plus:
Albania Switzerland Iceland Liechtenstein Monaco
Macedonia Norway Serbia San Marino Turkey

26. Protection in Europe –
but what is Europe?
Population:
European Union countries:
ca. 504,000,000
(July 1, 2013 projection)
European Patent Office countries:
(considering only Turkey and Switzerland
as additional countries):
- Turkey – ca. 75,000,000 (2013 estimate)
- Switzerland – ca. 8,000,000 (2013 data)
→ ca. 587,000,000
… US population: ca. 317,000,000 (2013)

27. So what is Europe?
Europe is a huge potential market...
→ tip: Don't just file in a few European countries!
DE application: (at filing, off of PCT application)
Official fees at filing: Euro 430
Translation costs: 2,000 Euro
Total: 2,430 Euro
EP application: (at filing, off of PCT application)
Official fees: 2,400 Euro
Translation costs at filing: -
Total: 2,400 Euro
Assumptions: ISA = EPO; 15 claims; 35 pages; 10,000 words

28. Cover all of “Europe” at the outset
tip: Don't just file in a few European countries!
EP v national applications:
EP application more advantageous because:
- reduced costs per country at filing
- reduced attorney fees (1 attorney involved, 1 procedure
before 1 Patent Office)
- no translations needed during prosecution
- potential to obtain protection in 38 + 2 countries (several
years to think about where – at no additional cost!)

29. Unitary Patent: Entry into force
What needs to happen (by law)?
1) ratification of UPC agreement by 13 states,
including DE, UK and FR
.… 6 states already ratified!
AT, BE, DK, FR, MT, and SE
….UK is assessing public feedback regarding ratification
….IE must hold referendum
.… what if GB leaves the EU???

30. Unitary Patent: Entry into force
What needs to happen (by law)?
2) amendment of EU regulation No 1215/2012 on
jurisdiction and recognition + enforcement of
decisions
… entered into force January 2015!

31. UP: Entry into force
What needs to happen (in practice)?
ES + IT had filed action against new system (now dismissed)
but:
ES filed new action against new system (language
discrimination)
→ action needs to be dealt with by EUCJ!
 Advocate General Yves Bot rejected Spain’s arguments in a
November 2014 opinion and recommended that the EUCJ
dismiss the action.
in addition...

32. UP: Entry into force
What needs to happen (in practice)?
• UPC + EPO: administrative functions
• UPC: rules of procedure (17th draft markup final one???)
• UPC: selection and training of judges
• UPC: creation of court facilities
• UPC: creation of IT system
• UPC: decision on fees (opt-in/out, court fees, etc.)
• EPO: decision on fees (post-grant renewal fees + unitary
effect fees)

33. Asia and Pacific
• World Intellectual Property Organization
• Regional Bureau for Asia and the Pacific
The Regional Bureau for Asia and the Pacific is
responsible for provision of legal and technical
assistance to 38 countries, including 25
developing countries and 13 LDCs, in the Asia
Pacific region. This assistance is provided in
cooperation with relevant sectors in WIPO.

34. What’s New In The United States?

35. U.S. Patents in Additive
Manufacturing
Additive Manufacturing Conference
United States Patent and Trademark Office January 23, 2013

36. U.S. Patents in Additive Manufacturing
• Patent Applications Filed
• Average 680/Year
• Over the Last 10 Years
• 200 Classifications
• New Art Unit Established at The United
States Patent Office
• 3000 Issued Patents
Additive Manufacturing Conference
United States Patent and Trademark Office January 23, 2013

37. Exciting Times!
Many Key Patents Have
Expired!

38. Supply SpoolsBuild Filament
Support Filament
Heated Nozzles
Build Platform
Fused Deposition Modeling
US 5,121,329

39. Laser Scanner
Liquid Resin
Support
Recoater Blade
Platform
Stereolithography

40. Laser Sintering
US 4,938,816

41. Be Careful - Meaningful Patent
Protection Still Exists
• Materials
–Object
–Support
–Special Properties
• Hardness, glass transition, fillers,
porosity, etc.
• Treatments
–Vapor deposition

42. Be Careful - Meaningful Patent
Protection Still Exists
• Build Chambers/Heating Cabinets
• Material Handling
– Moving platforms, conveyors
• Internet protocols
– Remote construction, user input and
design choice
• Physical components
– UV lights, lasers, liquefiers, dispensing
systems

43. The Key To Success
• Due Diligence
–Determining the right to use the
Intellectual Property for the intended
purpose
–A Well Drafted Agreement
• Formal Protection
–Patents, Trademarks, Copyrights, Trade
Secrets. . .
• Dual Protection

44. Thank You!