A Patent DMCA
posted by Gerard Magliocca
One point that is becoming clear with respect to 3D printing is that we are eventually going to need a Digital Millennium Patent Act. Why is that?
The federal statute on contributory patent infringement probably does not apply to websites that host files instructing 3D printers to make objects. 35 U.S.C. Sec. 271 (c) says that selling or importing a “component” of a patent can lead to contributory infringement liability. In 2007, though, the Supreme Court held, for purposes of a different section of 35 U.S.C. 271, that software is not a “component” of a patent until it is combined with the hardware. Basically, the Court said that software is the equivalent of a blueprint, and blueprints are not commonly understood as part of a machine. As a result, a website that has a “blueprint” for a 3D printer to make something patented would probably not be liable for infringement. (This conclusion is not airtight. The Federal Circuit could read the word “component” differently in a different section of the statute, but that’s not likely).
Accordingly, the notice and takedown safe harbor that we are familiar with for copyrights (on YouTube) or trademarks (on Ebay) is not required for a site like Thingaverse. Thingaverse is a digital intermediary for 3D printing files, and it does use notice and takedown for files that print copyrighted material (say, a statute). Only Congress can make notice and takedown a requirement for patents. This would be a good idea to give patentees limited protection, and also makes sense given that it is already required for copyrights on the same sites. Why have two sets of 3D rules?
March 6, 2013 at 9:25 am
Posted in: Intellectual Property, Uncategorized
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Responses (5)
Michael Risch - March 6, 2013 at 10:01 am
Interesting post and proposal, but I’m not sold on the premise. Yes, software is not a component under 271(f), but 271(c) is broader than that, and software companies are routinely held liable for selling software. Indeed, even in the case that outlawed components for imports, Microsoft was held liable for domestic sales.
But let’s say that wasn’t true. I don’t think that component in the 271(f) sense (as in combining components to create an invention) is the same as providing instructions for manufacture – which is more of a material aid then a component. The real question is whether we would hold people liable for posting instructions about how to make something that weren’t carried out by the computer. The answer may be no – and your argument would apply.
But I’m not sure the way to look at it is under the component rules. It’s more like a loosening of the inducement standard. In that sense, there is the DMCA for patents – once you get notice that your instructions (electronic or not) are used to infringe a patent, then inducement kicks in.
Gerard Magliocca - March 6, 2013 at 10:40 am
Michael,
This is an interesting point that we will have to consider. One thought is that a DMPA (to coin an acronym) would remove any uncertainty surrounding the issue and avoid years of litigation.
PrometheeFeu - March 6, 2013 at 11:53 am
That seems weird. As I understand it, in order to get a patent, you must give to the patent office (which then makes it available to the public) enough information so that the thing you are patenting could be reproduced. Under those circumstances, it would be, (correct me if I am wrong) perfectly acceptable for me to take a patent and put together a set of documents (blueprints, bills of materials, etc) which would instruct a factory to produce the patented objects. (perhaps in anticipation of the patent’s expiration or perhaps as an exercise) If that is the case, why would a set of instructions aimed at a 3d-printer be any different?
Another way to look at it is this: Patentees must disclose enough information such that somebody skilled in the art can apply the patent. Surely, it would be allowed for somebody to take this disclosure and “convert” it such that even somebody unskilled in the art could apply the patent. (basically, annotate and explain it or even re-write the whole thing) How is that any different from “converting” the patent into a format that can be consumed by 3d printers.
Michael Risch - March 7, 2013 at 9:39 am
PromeetheFeu – In general, you are not allowed to “prepare” to infringe until there is expiration. That’s why we have special laws that allow generic drug manufacturers to get a head start.
That said, you are right to point out the oddity, and it is one that was pointed out in the software export case, and one I use with my students. If I send the parts with a copy of the patent, am I inducing infringement?
Here, though, the answer is easier, because we assume that not only are we preparing the instructions, we are distributing them with the intent that they be carried out. That clears any “internal preparation” exception we could think of.
PrometheeFeu - March 7, 2013 at 12:32 pm
Michael Risch,
Thanks. I was not aware of 273(c).
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