One of the biggest issues in the 3D printing industry as it grows is intellectual property, as legal concerns surround the nascent industry. One of the biggest stories over the last year has been the emergence of HP Inc. as a player with the introduction of its Multi Jet Fusion 3D printers. With all of HP’s activity in the additive manufacturing space, particularly with the focus it has been placing on partnerships and collaborative development, it should come as no surprise that the global entity has been keeping an eye toward all aspects of industry participation, including intellectual property (IP) and other issues of legality.
Working at the fore of such efforts is Jennifer Prioleau, Division Counsel at HP for the Graphic Solutions business and the 3D Printing business. In her role there, she oversees general legal matters and drafts, negotiates, and advises on a broad range of strategic complex commercial contracts with suppliers, customers, and R&D, promotional, strategic, and channel partners, pertaining to hardware, software, technology, and IP. She further advises senior management regarding day-to-day issues surrounding product development and launches, market strategies, and post-sale issues. Working from a strong legal background and great expertise gathered over her career, Prioleau is highly knowledgeable about the minefield of legalities impacting the additive manufacturing industry.
Prioleau shares her expert insights with us in an exclusive interview as we continue to put the spotlight on women working in 3D printing, as she relates her own background to the growth in 3D printing and HP’s place in the burgeoning marketplace.
HP MJF 3D printer as seen at formnext 2016
Can you tell us briefly about your educational/professional background, and how you came to work at HP as head counsel for the 3D printing division?
“Before taking on my current role at HP, I was the lead trademark and copyright counsel for HP’s Personal Systems Group, where I managed U.S. and International trademark clearance, prosecution, and maintenance as well as advised on trademark and copyright enforcement and infringement matters.
Prior to joining HP, I was assistant general counsel managing intellectual property, licensing, marketing and commercial contact matters. I was also an associate at one of the largest intellectual property boutique law firms in the United States prior to going in-house. In that role, I conducted a variety of IP litigation support and transactional work, and counseled clients from small startups to Fortune 500 companies.”
How did your prior legal background prepare you for the wealth of IP and other issues to be dealt with in additive manufacturing?
“With respect to IP issues, I started my career in IP and so naturally I have that experience as my foundation. With respect to a myriad of other legal issues, in addition to serving as division counsel for the 3D Printing business, I serve in the same role for HP’s Graphic Solutions Business, where I am also responsible for a broad range of complex commercial contracts involving hardware, software, technology and IP with suppliers, R&D partners, promotional partners, strategic partners, channel partners, OEMs and customers. That background in graphics has been important in helping me understand our customers’ needs and how HP goes-to-market, which was key when drafting our new 3D printing customer contracts. Graphics and 3D print are similar in that both graphics 2D printers and 3D printers are like mini factories for our customers. In graphics, our large format commercial 2D printers create books, signs, displays, wall-art, and packaging for example and, in 3D, HP’s Multi Jet Fusion printers can produce functional parts.”
HP has a heritage of disrupting industries such as 2D printing, commercial graphics, etc. How do you apply that experience/learnings/challenges/success to what you are doing for 3D printing?
“HP’s experience, leadership, and innovation in printing for the past forty years is a huge advantage to the knowledge base we apply to new markets such as 3D printing. One key piece of knowledge that will set 3D printing up for success is understanding and anticipating customer needs even when customers may not realize their needs. For example, in the legal realm from an IP perspective, 3D printing customers are concerned about access to their digital design files, since access to the digital file allows the part to be printed, and if the part is protected by IP then unauthorized printing constitutes IP infringement. During my talk at AMUG, I explained the challenging issues 3D printing presents when enforcing your IP as well as some practical solutions, such as technical protection measures (TPM), to fill in the gaps where IP protection is lacking. We are working on our own platforms and with our software partners on TPMs so stay tuned for notable progress in that area.”
HP is working frequently with partners to develop new materials for 3D printing; what kinds of legal issues must be kept in mind when forming such international collaborations?
“The two most contentious legal issues we typically deal with in our 3D printing agreements with partners tend to be Intellectual Property (IP) and liability risk allocations.
First, when we work with partners, we often need to carve up the IP pie, so to speak, when there is some kind of collaboration agreement. First you need to decide the scope of collaboration: the parties need to agree upon what each party is contributing to the project and whether development will be done jointly, or by one party? Next you need to decide who will own any newly created IP and the issues to consider are: What IP does each party bring to the table that remains owned by such party and whether newly created IP will be jointly owned or not, and if owned by one party, whether ownership will be determined by field of use or some other mechanism. Finally, you need to figure out whether despite any IP ownership, the other party has the right to use such IP and this is where various licensing rights are considered.
Now let’s pivot to product liability and risk allocation. The issue to wrestle down is who is responsible if someone or something gets injured or damaged as a result of either party’s actions or inactions or from any product that either party has had any part in developing, manufacturing, marketing, distributing and/or selling. Needless to say, it can get complicated in a hurry. And specifically with 3D printing, the interesting legal issue is who ought to be responsible for the design and manufacture of the 3D printed part. Similar to traditional manufacturing, at the end of the day, we believe that OEMs that design and manufacture a product, or part of a product, should be responsible and not the manufacturer of the equipment or 3D printer that was used to produce the product or part.”
In your recent presentation at AMUG, you discussed thoughts on the regulatory landscape, product liability, and IP; how do you see such areas of law evolving with the growth of technology?
“It’s hard to sum up a 30 minute presentation in 30 seconds so let me focus on the regulatory part of the question since I’ve already talked a bit about IP and product liability. Because 3D printing technology is so new, very few laws exist specific to 3D printing anywhere. In the US, there is a California law requiring registration of 3D printed firearms and the FDA has issued some guidelines (not a law but recommendation) for 3D printed medical devices. Outside the US, there is a Thai law that creates some administrative hurdles and requires all 3D printers be registered. In France, there has been pending legislation on copyright levies for 3D printers, which is kind of like a copyright tax on 3D printers.
The good news is that right now there are no specific legal challenges preventing the growth of the 3D printing industry. Ultimately, whether there should be more regulation and change depends on individual perspective and how current laws will be interpreted. If current laws are interpreted in ways that do not impede growth, then from an industry perspective, we probably don’t need to advocate for regulation. However, from a government perspective, the need for new laws around 3D printing depends on behaviors and if the industry or individuals create risks to public health or safety, or operate unfairly in some way. IP protection is an example of where governments might step in to protect the public or another government interest.”
What do you see as being key to ongoing growth in the 3D printing industry as it matures?
“Mass adoption of any new idea that is disruptive to the status quo requires education on many levels. We have to educate product designers to design for 3D printing capabilities. We have to educate our customers and partners that 3D printing technology in many applications has benefits over traditional manufacturing methods, such as cost, speed, customization and intricate design capability, all without sacrificing product quality or safety. We also have to educate policymakers on our positions and how 3D printing can benefit society, from environmental benefits to the potential for domestic job creation. From a legal perspective, there’s a big need for educating the legal community about the technology because there is little to no 3D printing legal precedent. What that means is that we are a little uncertain as to how, for example, a product liability case might turn out. At HP, we engage in this legal dialogue by having lawyers such as myself speak and write about the various 3D printing legal issues that should be on the industry’s radar.”
As an experienced legal professional, do you feel your overall experience has been in any notable ways substantively different from those of men in similar positions?
“In some ways yes, in some ways no. Compared to other professions, law is not a very diverse profession. Women constitute about one-third of all lawyers and minority women less than half of that number and when you get to the higher positions in firms and corporations, those percentages go way down. So my ‘yes’ answer stems from the fact that, as a mom of three kids, the reality is – and please don’t shoot the messenger – I along with many other working moms have had a very different experience than our male colleagues. In part because notwithstanding all the nannies, au pairs, and hired help in the world, many working moms shoulder a large and disproportionate share of family responsibilities and we have to juggle it all.
My ‘yes’ answer also reflects my experience on the receiving end of some unconscious bias. For some, as a woman of color, I may not necessarily look like what they believe is a stereotypical lawyer. Early in my career, I recall instances where when I walked into a room without knowing anyone, I had to correct people that yes, I am the attorney and not the paralegal or secretary. HP recently launched a new campaign to shine a light on unconscious bias in hiring. Under the guidance of senior leaders including Chief Diversity Officer Lesley Slaton Brown, Head of HR Tracy Keogh, Chief Marketing Officer Antonio Lucio, and General Counsel Kim Rivera, among many others, the Company introduced Reinvent Mindsets which is worth watching and sharing. I’m confident in the change the company I work for is driving and proud of the precedent for change HP is setting across many industries.
Now here is the genesis of my ‘no’ experience. In many respects, even though minorities and women sometimes have to go above and beyond to prove themselves initially because of this unconscious bias, at the end of the day, I believe I am judged on my talent and performance, which is how it should be.”
Women, yourself included, are appearing more frequently on the agenda speaking at 3D printing-focused events; how do you see this upward trend affecting industry participation?
“It’s great seeing the increased participation of women in 3D printing. It’s inspiring and infectious too, so I expect we’ll see women’s participation and influence in 3D printing continue to accelerate. I’m of course biased being a woman, but I do believe women bring a different perspective to these events that have historically lacked diversity.”
What are your general observations regarding diversity in the 3D printing industry? How do you feel women are represented?
“I do think women and minorities are underrepresented in 3D printing and technology in general, but I feel encouraged that the numbers will improve. I’ll cite another example of HP bringing its culture of innovation to life by driving diversity and inclusion at the highest levels of the company. Earlier this year, the Alliance for Board Diversity (ABD), recognized HP for having the broadest diversity on its Board of Directors.
I would like to see technology in general and 3D printing in particular grow beyond just gender diversity and embrace a wide range of professionals, regardless of sexual orientation, age, race or ethnicity. I believe developing a more inclusive workforce and advancing more diverse leaders into senior leadership roles is key to a growth strategy in any industry, and 3D printing is no exception. This is because diversity and inclusion enables cross cultural intelligence, which is key to meeting the unique needs of those who represent the changing workplace and marketplace in the 21st century. At the end of the day, technology is about solving life’s challenges for everyone, so the more different perspectives included in how tech is developed, arguably the more attractive a product will be to a broad-range of people from different backgrounds. Emerging technologies such as 3D printing have an opportunity to break the historical ‘lack of diversity’ tech mold and lead the way.”
A 3D printed hand as seen at HP Corvallis
What do you see as the biggest challenges to diversity in the 3D printing industry? The biggest benefits to a more diverse workforce?
“I think the biggest challenge is first to acknowledge there is a problem so that we can do something about it and then commit to actually doing something about it. Diversity is a popular buzzword, that everyone is talking about but we need to move from words to actions to affect change. For example, HP’s General Counsel, Kim Rivera, recently implemented a requirement that outside law firms must meet certain attorney diversity criteria or HP will withhold a portion of its invoiced fees. This was a bold, intentional act that will spur action and change in the legal field. Likewise, 3D printing companies also need to be bold and take actions that will affect change.”
What advice would you have for a girl/young woman looking to enter the legal and/or 3D printing fields today?
“When I am asked about what pearls of wisdom I have for young women entering the legal profession, I emphasize the three C’s: Challenge, Confidence and Communication. First, accept the challenge: law school and working as a new lawyer is quite challenging so my advice is do your homework, work really hard, and be prepared. Second, be confident: you are smart and capable so have confidence in yourself or no one else will. And finally, communicate: don’t be afraid to speak up about your successes or to ask for a stretch project because you own your career development.”
As the industry surrounding 3D printing continues to expand, legal issues will remain in the spotlight, requiring great and growing expertise — and participation. The industry can only benefit from an increase in the mix of voices adding to the conversation, as education concerning the technology and its implications is on the rise. Discuss in the Jennifer Prioleau forum at 3DPB.com.
If you are interested in sharing your story, or know a woman we should get in touch with for this new series, please reach out any time. Send us an email or connect on Twitter. We’re looking forward to sharing more stories about women in 3D printing. Find all the features in this series here.
[All photos: Sarah Goehrke]