Insight into the industry, protecting your assets/information and creating a foundation for compliance with labor and employment laws
From May 17-19, 2022, the AmericaMakes: RAPID + TCT Additive Manufacturing Conference was held in Detroit, Michigan. The event involved a mix of thought leadership panels, large group presentations, small group presentations and an exhibit hall. Throughout the week, two major points were highlighted during the conference: (1) the future is 3D printing and that future is “glocal” and (2) everyone contributes to the ecosystem wider. Below are some takeaways from the legal industry that will highlight what businesses in this industry can and should do to protect their products and services.
The future is 3D printing and that future is “Glocal”
Although some companies or manufacturers resist change and implement 3D printing in their processes or in the design of their products, additive manufacturing (traditionally known as 3D printing) is the manufacturing process that becomes quickly becoming the go-to manufacturing process for many different industries. Not only does 3D printing save time for prototyping and limited production runs (e.g. less than 10,000 units depending on the item produced), but in some cases it can be more environmentally friendly. than previous manufacturing processes. The manufacturing industry now operates on a “glocal” scale, because the market is based on international collaboration. Specifically, within the automotive industry (and amid supply chain shortages), the “glocal” scale of 3D printing is allowing automakers to source parts from anywhere in the world. the world (or within their own facilities in the case of on-site 3D printer investments). The ability to produce spare parts is also much more manageable for logistics teams and less expensive from a storage perspective.
Everyone contributes to the greater ecosystem
Several speakers highlighted the need for collaboration across the industry to bring additive manufacturing to scale. The additive manufacturing “ecosystem” involves a team of companies bringing 3D printing to the forefront of manufacturing by providing multiple solutions to today’s manufacturing dilemmas and working together to provide businesses with practical and efficient solutions. . Historically, 3D printing had limited materials to use to create parts and products; however, the industry has evolved over the past few years and now has a strong focus on new materials, printing equipment using these materials, and new processes that improve the quality of parts and end products.
1. Protect your intellectual property
The additive manufacturing ecosystem includes manufacturers of 3D printers and support systems (e.g. printing material supply systems for 3D printers), subcontractors and, of course, manufacturers. of products that use additive manufacturing. Traditional intellectual property categories include patents, trademarks, copyrights, trade dress, and trade secrets. Often, know-how and negative know-how become valuable intellectual property assets, especially for newer manufacturing processes. Given the explosive amount of new materials and equipment being developed to support new materials, the additive manufacturing industry will find all areas of IP to be effective. Patents include both utility patents (protecting structure and function) and design patents (protecting ornamental appearance).
New materials range from a wide variety of metals, plastics and even biological substances. With these new materials, new or improved machines must be created. New or upgraded machines often include new structural features and often upgraded software to accommodate new materials. Additionally, test equipment is often developed to perform quality assurance functions of new materials. New materials are often created to produce products that cannot use existing materials for various reasons (eg biologics).
Patents are often the primary focus of customer protection. Thousands of patents are granted every year for additive manufacturing. Patents will likely serve as the intellectual property asset necessary to show that a company is innovative, but also as both offensive and defensive weapons depending on the nature of the business and the aggressiveness of the company. With such a crowded market, strategic patenting can be invaluable in producing quality patents.
Copyrights can be advantageous given the heavy use of software programmers in the additive manufacturing market. Registered copyrights can be a valuable tool in reducing the incentive for existing programmers to misappropriate software when joining a competitor. When applying for copyright registration with the US Copyright Office, it is suggested to use a trade secret strategy in copyright filing so that copyright intellectual property assets and of trade secrets are available in the event that a programmer joins or becomes a competitor of the company. Of course, with any trade secret, trade secrets embedded in software must be protected as trade secrets (e.g., limited access, kept within the company, tracking who actually accesses the trade secret code, etc.)
Trademarks and trade dress can also be valuable assets. Trademarks usually come in the form of words and symbols that are source identifiers for a source of goods and services. Trade dress filings with the US Trademark Office can also be used to protect product shapes and packaging. Such an IP asset is much less common, but can be very valuable in certain circumstances when the shape of a product serves as a source identifier (eg, a certain shape of a bottle).
Know-how and negative know-how may not reach the level of trade secret, but these IP assets can be a natural barrier to competitors and can serve as valuable IP assets for outbound sales. from a company. Of course, know-how and negative know-how are excellent competitive advantages.
Intellectual property assets for additive manufacturing must be comprehensively protected, in the sense that a careful analysis of the product and service created and executed by the company must be carried out so that an intellectual property lawyer can evaluate and prescribe appropriate intellectual property assets to protect the business. Depending on the nature of the business (for example, machine manufacturer, service bureau, or finished product manufacturer), different intellectual property assets will be more valuable to protect the business.
2. Protect your trade secrets and confidential information
A company must also appropriately protect its trade secrets and confidential information. As a first step, companies should consider signing agreements with their employees that include restrictive covenants, such as non-competition, non-solicitation and/or non-disclosure clauses (as applicable), in order to ensure that confidential information, trade secrets and other company assets are protected. These agreements should be used in conjunction with the protections listed above, as the copyright filing process as well as restrictive covenants can be a major barrier for existing employees to become potential competitors. Companies should consult with labor and employment attorneys to ensure that these provisions are enforceable (as state law strongly dictates the enforceability of restrictive covenant provisions) and to adequately protect appropriate interests.
In addition, employment contracts (especially those with executives) should contain appropriate invention assignment clauses. In the automotive industry, where additive manufacturing can be done in-house, these steps are particularly important. However, even when additive manufacturing is done externally, there are still important processes worthy of protection. Consultants should also be carefully engaged to capture intellectual property developments and prevent these developments from passing on to competitors in future consultant engagements.
3. Lay the foundation for compliance with labor and employment laws
Start-ups in the additive manufacturing industry should consult with a lawyer to ensure compliance with labor and employment laws. There are key steps companies should take in the early stages of hiring (or contracting) individuals to ensure compliance with federal, state, and local employment laws. Specifically, a company should consider properly completing I-9 forms, writing written policies (such as an employee handbook), analyzing the FLSA status (exempt or non-exempt) of employees, tracking time, vacation/sick and bonus/compensation structure to name a few.
As we have previously published, following the new wave of unionization and because the manufacturing industry is already heavily unionized, companies should seek advice on how to deal with the potential unionization of the workforce and the best practices.