Adjusting Your Patent Strategy for the Era of 3D Printing

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The era of personal 3D printing is (almost) here.

Machines capable of printing 3D objects have been around for many years. But recently this fascinating technology has reached the point where the personal 3D printer has become a reality. At this year’s CES, for example, MakerBot Industries and Cubify both introduced 3D printers for the everyday consumer. Cubify also introduced a cloud-based 3D printing service, where a consumer can upload 3D data, then Cubify will have it printed and delivered.

The prices of personal 3D printers are still a bit too high to appeal to the average consumer – some numbers I’ve seen have been in the $1,200 to $1,700 range. But the raw material used by the 3D printers, their “ink” equivalent, is surprisingly inexpensive. For example, you can purchase about 1kg of raw plastic material for little more than the cost of an ink jet printer cartridge. And as with other technologies, expect the prices of the 3D printers to continue to drop.

So what does this mean for your intellectual property?

Consider this scenario: a consumer purchases your new product, creates a 3D scan of it (or a portion of it), uploads the 3D scan data to a file-sharing website, and suddenly anyone, anywhere in the world, can print your product using the 3D scan data and their own 3D printer.

Sound far-fetched? It’s not. In fact, just recently The Pirate Bay announced the creation of a new portion of their file-sharing website devoted to 3D scans, which they are calling “physibles.” Are you ready if your patented product shows up in the “physibles” library?

While there may not yet be a 3D printer in every home, the day is coming, probably sooner than we imagine. So consider this: the patent application you are drafting today should be ready to protect the invention for the next 20 years, during which time 3D printing is likely to become as common as ink-jet printers are today. Take this into account while you plan your patent strategy. Are there any aspects of the invention that could be vulnerable to virtual copying? For example, are there any potential embodiments that could include transfer of 3D model data and 3D printing?

Also, think about whether it may be appropriate to seek one or more design patents for various aspects of the product. Are there important components that could be covered by a design patent?

While you’re at it, remember to be careful with the scope of your design patents.  Are there portions of the design that could be modified by a user, e.g., by manipulating the 3D design using CAD software, without departing from the novel aspect of your invention? If so, those portions of the design patent drawings should probably be shown in broken lines. Can your product be broken down into multiple components that may have their own novel designs? If so, you may want to consider pursuing multiple design patents.

Personal 3D printing is an exciting new technology. The potential uses for 3D printing extend beyond what I can imagine. But, unfortunately, the potential uses include activities that could infringe on other’s intellectual property rights. So it’s important to begin taking this potential problem into consideration when planning an IP strategy. As many of us have seen, the current rate of advancements in technology have a way of making today’s possibilities into tomorrow’s realities.

Have you started to consider the implications of 3D printing and how it may affect your or your client’s intellectual property? If so, how has it affected your approach to obtaining IP? Let me know in the comments below!

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Interesting Design Patents of the Week

Here are a couple of interesting design patents that issued this week.

Anyone else ready for summer? Design patent no. D653,172 covers a design for a “Mobile Ice Cream Kiosk”:

 

Also, it looks like Facebook has patented the design of their website. Check out design patent no. D653,258:

 

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A Guide to Outlining Office Actions

If you aren’t familiar with the patent application process, an “Office action” is, basically, a letter from the USPTO (U.S. Patent and Trademark Office) informing an applicant about the status of their pending patent application. Often it means that the patent application has been rejected. (Don’t panic if you get one of these – many, if not most, patents issued from patent applications that were initially rejected.)

A common task for patent prosecutors is to evaluate and, if appropriate, prepare a response to an Office action. The patent regulations require that the response “must reply to every ground of objection and rejection in the prior Office action.” (37 C.F.R. 111(b)) However, despite good intentions, occasionally a practitioner will, for one reason or another, fail to address every ground of objection and rejection. Perhaps they are too focused on an obviousness rejection, and forget about that minor specification objection. While it’s not necessarily a fatal error, it is an error that can be avoided with the use of a good outline.

[As an aside, if you are curious about what happens if you submit an incomplete response to an Office action, see MPEP 714.03.]

So it’s a good idea to get into the habit of outlining an Office action as a first step in its evaluation. A good outline can serve as a checklist later on, when you’re ready to file a response, to make sure that you’ve addressed everything. In addition, your outline can provide you with an summary that you can reference when explaining the Office action to your client. Also, if you receive a subsequent Office action, you can compare outlines to quickly see whether you’ve made any progress, or if the same rejections have been repeated.

Using a fictitious example, here’s how I usually go about outlining my Office actions. (Scroll to the bottom to see the completed outline)

First, at the top of the page, I write the docket number and then outline the claims:

In this example, claims 1, 6, 12, and 13 are independent claims. The commas “point” to dependent claims. So, for example, claims 2, 4, and 5 depend from claim 1; claim 3 depends from claim 2; and so on.

Next, I write the Office action type and date:

Here, NFOA stands for Non-Final Office Action. Alternatively, I might use FOA for Final Office Action or RR for Restriction Requirement. If you are a new practitioner or don’t do much prosecution work, it’s not a bad idea to write the response deadline out to the side as well.

Finally, I list the objections and rejections in the order they appear in the Office action:

Each item in the list includes the subject portions of the application, then the type of objection/rejection, and then notes about the basis of the objection/rejection. Some of the shorthand I use includes ivo = in view of; fivo = further in view of; Obj = objection; 102 = anticipation rejection under 35 USC 102; 103 = obviousness rejection under 35 USC 103; a.i.r.i.i.f. = allowable if re-written in independent form.

At this point, it’s a good idea to count the claims in the list to make sure that all claims are present and accounted-for. The eagle-eyed practitioner will notice that claim 10 is missing in this example. Time to go back and look for it in the Office action to see if you missed it or if the Examiner failed to address it. This highlights another advantage of outlining – it allows you to catch these types of issues early-on when they can best be addressed.

Here’s what the completed outline sheet looks like after a couple of Office actions:

(Click for a larger view)

After outlining the second Office action, you can compare the two Office actions and easily see that you overcame some objections, and you made some progress with some claims, while other claims remain rejected.

There’s nothing special about this format. Feel free to use it or change it to meet your needs. The key is that it’s complete and easy for you to understand. If it meets that criteria, it will serve as a useful tool to help you catch mistakes and get a quick overview of the progress of the patent application.

Do you have a different method of outlining or tracking your application’s progress? Tell me about it in the comments!

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