11

Facilitation of the Use of the Prior Use System

Under the patent systems of major countries worldwide, including that of Japan, a person
who has been conducting a business involving the working of an invention or making
perpetrations therefor prior to another person’s filing of a patent application for the same
invention, shall be entitled to obtain, as exceptional relief, a non-exclusive license for theinvention without charge. This is generally referred to as the prior use system.
However, it has been argued that the existing prior use system is not very user-friendly. In
light of this argument, the FY2005 Patent System Subcommittee of the Intellectual Property
Policy Committee of the Industrial Structure Council held discussions and reached the conclusionthat measures should be taken to clarify the prior use system based on judicial precedents andspecify the means of proof of prior use, and that guidelines should be developed to facilitate theuse of the prior use system.
For this research study, we formed a committee consisting of influential persons from thelegal, academic and industrial communities, and summarized the results of the discussions of theaforementioned subcommittee with regard to the measures needed to clarify the prior use systemand specify the means of proof of prior use. We also investigated the implementation status of theprior use system and the relevant court rulings in other countries (UK, Germany, France, China,
South Korea, and Taiwan), by requesting local law firms to provide relevant information and theirviews on the prior use system.

I

In response to this criticism, the FY2005
Patent System Subcommittee of theIntellectual Property Policy Committee of theIndustrial Structure Council deliberated on
methods for optimizing the prior use system,
and concluded that measures should be taken
to clarify the prior use system based on
judicial precedents and that the means of
proof of prior use should be specified, andthat guidelines should be developed tofacilitate the use of the prior use system.
For this research study, we formed acommittee consisting of influential persons
from the legal, academic and industrial
communities. By way of referring to the
judicial precedents and common academic
theories on this issue as well as the actual
status of companies’ use of the prior use
system, we summarized the results of the
discussionsattheaforementioned
subcommittee with regard to the measures toclarify the prior use system and specify themeans of proof of prior use. We also
investigated the status of implementation of
the prior use system and the relevant court

Introduction

Under the patent systems of majorcountries worldwide, including that of Japan,
a person who has invented a piece oftechnology and decided to keep it secret as
know-how, if he/she has been conducting abusiness involving the working of theinvention or making preparations therefor
prior to another person’s filing of a patentapplication relating to said invention, may beentitled to obtain, as exceptional relief, anon-exclusive license for the invention
without charge even where such anotherperson later obtains a patent right for theinvention. This is generally referred to as theprior use system.
Although the prior use system enables
companies to continue carrying out theirbusiness activities, it has also been criticized
as not being very user-friendly because thatwhich is required as proof of “conducting thebusiness” or “making preparations for thebusiness,” and to what extent such proof
should be provided, is not clear.
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license on the patent right, only to the extent
of the invention worked and the purpose ofsuch business conducted or prepared.” This
provision can be more easily understood bydividing it into phrases as follows: (i) “A
person who, without knowledge of thecontent of an invention claimed in a patentapplication, made an invention identical to
the said invention, or a person who, without
knowledge of the content of an invention
claimed in a patent application, learned theinvention from a person who made aninvention identical to the said invention”; (ii)“and has been conducting a businessinvolving the working of the invention or
making preparations for such business”; (iii)“in Japan”; (iv) “at the time of the filing of thepatent application”; (v) “shall have anon-exclusive license on the patent right”;(vi) “only to the extent of the invention
worked and the purpose of such businessconducted or prepared.” The first partconsisting of phrases (i) to (iv) (“A person who,at the time of the filing of the patentapplication” specifies the party entitled to theprior use right (prior user), and the second
part consisting of phrases (v) and (vi) (“shallhave…only to the extent of…prepared”)
specifies the contents of the prior use right.
The sections below discuss the points tonote and suggest views for clarifying theinterpretation of the provision of Article 79 of
the Patent Act and specifying the means of
proof of prior use, and present examples ofmeasures taken by companies to secure
evidence to prove prior use.

rulings in other countries.

I

Prior Use System in Japan

1 Prior use system(1) Outline of the prior use system
Japan has adopted the first-to-fileprinciple, under which if two or more persons
have independently made the same invention,
only the first to files a patent application (theearlier applicant) is entitled to obtain apatent right for the invention. Since a patentright is an absolute monopoly right, it is also
effective against other persons who have
independently made the same invention
before the earlier applicant has made it.
However, if the first-to-file principle isenforced without exception, even a person
who has independently made the same
invention and has been conducting thebusiness involving the working of theinvention or has been making preparations
for said business prior to the filing of thepatent application (prior user) would also
have to be subject to the patent right, which
would result in unfair treatment. To avoid
such a situation, the prior use system isdesigned to enable the prior user to obtain,
without charge, a non-exclusive license towork the patented invention only to theextent determined by law and to continue to
conduct the business involving the working of
the invention, thereby realizing fairness
between the patentee and the prior user.
The prior use right is stipulated in
Article 79 of the Patent Act, providing asfollows: “A person who, without knowledge ofthe content of an invention claimed in apatent application, made an invention
identical to the said invention, or a person
who, without knowledge of the content of an
invention claimed in a patent application,
learned the invention from a person who
made an invention identical to the said
invention and has been conducting a businessinvolving the working of the invention or
making preparations for such business inJapan at the time of the filing of the patentapplication, shall have a non-exclusive(2) Clarification of the prior use system(i) What is the definition of “at the time of
the filing of the patent application”?
Article 79 of the Patent Act includes thephrase “at the time of the filing of the patentapplication.” This means that the person
claiming prior use is required to be
conducting a business involving the workingof the invention in question or making
preparations for such business in Japan at
the time when another person files a patentapplication relating to the same invention.
In general, the prior user goes on from2

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intention of immediately conducting saidbusiness ” and “such intention (ofimmediately conducting the business) has
been manifested in the manner and to theextent that the intention can be objectively
recognized” (Supreme Court judgment in the
Walking Beam Case).
The term “immediately,” in daily use, issupposed to mean a very short period of time.
However, in the phrase “the intention of
immediately conducting the business,” theterm “immediately” should not be construed
merely as a length of time, as its meaning
may be determined by taking into
consideration all relevant factors, including
the nature of the subject matter of theinvention and the whole process from thecompletion of the invention to thecommencement of preparations for thebusiness in question, and said business hascommenced.
(iv) How can the “extent of the invention” towhich the prior use right is granted bedefined?
In the Walking Beam Case, the Supreme
Court stated as follows: “It is reasonable toconstrue that the prior use right is effectivewith regard to not only the mode of working
actually employed by the prior user or thecommencement of preparations therefor at
the time of the filing of the patent application(on the priority date) but also any changes in
the mode of working to the extent that suchchanges do not affect the identity of theinvention embodied by the mode of working.”
In past relevant cases, courts did not
follow the procedure wherein consideration
was given to whether the “invention
embodied by the mode of working”
corresponded to the patented invention orconstituted a part thereof, and in the latter
case, further considering whether theinvention embodied by the mode of working
that is subjected to the enforcement of thepatent right constitutes such a part of thepatented invention. Rather, courts considered,
while referring to the scope of claims,
whether the “invention embodied by themode of working that the prior user has
actually
been
employingormakingStage [1] to Stage [4] below in the process ofconducting
thebusinessormakingpreparations therefor:[1] Conduct research and development tomake the invention;[2] Make the invention in its entirety;[3] Make preparations for the “businessinvolving the working of the invention”;[4] Commence the “business involving theworking of the invention”.
It is rarely possible to prove, directlyfrom a particular piece of evidence, that “atthe time of the filing of the patentapplication,” the prior user had been at theabove-described stage [3] or [4], which is therequirement for prior use. There are somecases where courts seem to have ascertainedthat the prior user had been at stage [3] or [4]based on dated material evidence. However,in court proceedings, it is important to offer
evidence pertaining to the whole process,from Stage [1] to Stage [4].
(ii) Can a person other than the inventor
claim prior use?
In the case where the prior user is aperson other than the inventor, it isnecessary to prove that the prior user has“learnt” of the invention from another person
who has made the invention. By proving thisfact and satisfying other requirements under
Article 79 of the Patent Act, a person otherthan the inventor can claim prior use. This israther an ordinary case because mostinventions in Japan are made as employee
inventions.
When an employee has made aninvention, the company generally commences
activities with a view to launching a businessinvolving the working of the invention inquestion. Therefore, the company usuallylearns the invention (from the inventor)
based on reports, specifications andinstructions produced during the processfrom the completion of the invention to thecommencement of working thereof.
(iii) What is the meaning of “making
preparations for the business”?
“Making preparations for the business”
means that although said business has not
yet been conducted, “the prior user has the3
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proof of prior use. However, it isrecommended that all materials that
document the chronology of events from thecompletion of the invention to the
preparations for the business and operation
thereof be retained.

preparations therefor at the time of the filingof the patent application” is identical to the“invention embodied by the mode of working
that is being subjected to the enforcement of
the patent right.”(v) In what cases is the prior use rightextinguished?
When the prior user has discontinued
the business involving the working of theinvention or discontinued preparations
therefor, is the prior use right once
established deemed as having been waived or
extinguished? With regard to this question,some scholars argue that the abolition or
long-term discontinuation of the business isconstrued as a waiver of the prior use right.
However, to date, there have been no cases
wherein the court has established a prior use
right and then explicitly waived or nullified
said right.
In this regard, according to the findingsin the judgment of the Tokyo High Court ofMarch 22, 2001, where the prior user was
found to have been “making preparations forthe business” at the time of the filing of thepatentapplication
but
subsequently
abandoned said business, the prior user may
not be entitled to the prior use right even if
he/she later resumes “preparations for thebusiness” and commences said business.

(2) Examplesofevidential materials
produced in the course of routine work,
which may serve as useful proof ofprior use(i) Technical materials[1] Laboratory notebooks
When researchers carry out research
activities for the purpose of creating an
invention or device, they are expected torecord the chronology and results of theiractivities in laboratory notebooks. In
particular, from the perspective of securing
evidence for proving prior use, the following
procedures should be followed: the notebooks
used must be ones that can be stored over along period of time and cannot be replaced;ball-point pens or other indelible pens must
be used; no skipping of notebook pages is tobe allowed; materials affixed to notebooks
must be dated and signed; notebooks must be
properly managed; writing in notebooks must
be done in a manner that ensures that its
contents are intelligible to any given third
party.
[2] Technical reports
Technical reports include various kindsof reports to be produced, at regular or
irregular intervals, by R&D departments ofprivate companies, etc. for the purpose ofrecording R&D results. More specifically, thefollowing documents are generally regarded
as technical reports: experiment reports, trial
test statements, R&D conclusion reports,
R&D end-of-term reports, R&D monthly
reports and invention proposals.
[3] Design drawings and specifications
Specifications are documents stating thefeatures required for the product. Design
drawings are drawings that indicate theshape, structure, size of the product, etc. andaccord with certain rules.

2 Proof of prior use(1) Outline
In order to secure evidence to prove prioruse, companies should establish thenecessary rules and systems depending on
their own circumstances. More specifically, it
may be helpful for companies to clearlyspecify in advance what materials should besecured and how said materials should be
retained, as well as which departments andpersonnel are to be responsible of the
management of materials, and publicize sucharrangements in the form of documents
distributed within the company, so that thepersonnel
engagedinresearchanddevelopment can familiarize themselves withthese arrangements.
It is difficult to definitely specify thetypes of evidential materials admissible as
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(2) place the product or article in an envelopeand seal its opening firmly with paste, andaffix the private deed to the envelop withpaste in the manner whereby the private
deed conceals the opening and joint of theenvelop; (3) have the notary affix a stamp
bearing a fixed date at the joining of theprivate deed and the envelop.
As a result, nobody can touch the productor article inside the envelop without
damaging the private deed pasted thereto.
(b) Place a relatively large product orarticle in a cardboard box, seal the box,
and have the box stamped with a fixeddate
In the case of a relatively large productor article, the following method isrecommended: (1) submit a private deed to anotary’s office so as to have the notary put afixed date to the private deed; (2) place theproduct or article in a cardboard box and seal
the box by firmly taping the seams of the
openings; (3) encircle the box with tape atleast once without making a break across theupper opening surface of the box, and thenencircle the box with tape at least one again
covering the upper opening surface of the box
in the manner whereby the tape crosses at aright angle; (4) affix the private deed to thebox in the manner whereby the private deed
conceals the crossing point of the tape, andhave the notary affix a stamp bearing a fixed
date to the intersection between the private
deed and the box.
[3] Secure a video of the product or article
as evidence
In the case of objects that are difficult to
express in document form (by letters,
drawings or pictures), such as the manner inwhich a device moves or the state or sound of
the flowing of a liquid, a video demonstrationof said invention may serve as an easy meansof establishing proof.

(ii) Business-related documents[1] Business plan
Business plans should state that thecompany, etc. will commence activities tolaunch a business at a certain point of time in
the future.
[2] Decision on business commencement
It is a document stating the final
decision of the organization to commence thebusiness.
[3] Estimates and invoices
Product development generally involves
a number of transactions with external
companies.
Estimatesandinvoices
concerning such transactions can serve as
evidence to prove prior use.
The following materials may also serveas useful evidence: delivery slips, accountbooks, daily logs made at in manufacturingsections (factories), product catalogues,
booklets, and instruction manuals.
(iii) Examples of methods of securing thevideo of the product or article per se or
the relevant factory, etc. as evidence[1] Evidential materials not in the form of
documents
The most popular form of proof is
documentation (document evidence). If it isdifficult to secure evidence in the form of
documents, the following methods may be
useful for securing evidence in other forms.
[2] Secure the product or article itself
In the case where the essence of theinvention that one wishes to keep secret as
know-how is embodied in the product orarticle itself to some extent or can bepresumed from the product or article itself,
said product or article can be very usefulevidence to prove prior use. In this regard, it
is important to make arrangements to provesince when the product or article has existed.
(a) Place a small product or article in an
envelope, seal the envelope, and havethe envelop stamped with a fixed dateIn the case of a small product or article,
the following method is recommended: (1)submit a private document that is signed orsealed (hereinafter referred to as a “privatedeed”) to a notary’s office so as to have thenotary assign a fixed date to the private deed;(3) Points of time for securing evidence(i) Points of time for securing evidence
from documents produced throughroutine work
[1] Outline
In order to prove the chronology of the5

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process by which the prior user, prior to thefiling of the patent application, made theinvention as a result of R&D (or learnt of theinvention), made preparations for thebusiness involving the working of theinvention, and commenced said business, it iscritically important to retain the materials
produced throughout the process. Companies
should establish internal infrastructure forthe systematic management of materials by
specifying the types of materials to beretained, the time of production of said
materials, and methods and period ofretention.
For the purpose of reserving evidential
materials for the purpose of proving theexistence of a particular right, it is generally
recommended that evidential materials that
prove
the
facts
requiredfortheestablishment of the right be collected andstored, whenever it is possible to secure suchmaterials. As means of proof of prior use, it isalso advisable to secure relevant materials at
every stage when the necessary facts arefound.
[2] The R&D stage
Materials produced during the R&D
stage are useful for proving the process
through which the prior user carried out the
R&D that resulted in the invention that waslater kept secret as know-how.
[3] The stage of completed production of
the invention
The completion of the invention is theprerequisite for conducting the business.
[4] The stage of the decision to launch abusiness
This is the earliest stage at which theprior use right may come into existence.
[5] The stage when preparations for thebusiness are being madeIt is important to prove the acts
conducted at this stage accurately along thepassage of time.
[6] At the stage when the business hascommenced and thereafter
At the stage of manufacturing and sale ofthe product, the prior user is deemed to be
conducting a business involving the workingof the invention.

[7] The stage whereat the mode of working
is changed
It should be noted that if the prior userchanges the mode of working of the invention
after commencing the business involving theworking of the invention, the prior use rightmight be denied due to such change.
(ii) How to react upon becoming aware of
the fact that another company has filed
a patent application or obtained a patent
When the prior user finds, in the
publication of another company’s patentapplication or patent bulletin, that theinvention that is in conflict with thetechnology for which the prior user has been
conductingabusinessormakingpreparations therefor prior to the filing of thepatent application, it may be a possiblemeans of proof to collect evidential materials
going back to the time of the filing, and retain
such materials.
To this end, it may be desirable toestablish infrastructure allowing for thesystematically reservation of materials in
advance at varying stages on a daily basiswith regard to R&D, factory operations, andsales, so as to ensure access to such materials
whenever necessary.
(iii) Securing evidence that proves in-house
working at the time of conducting
transactions with other companies
As means of proof, it is helpful to collectevidential materials such as samples,drawings, and specifications of the product at
the time when transactions with othercompanies were being conducted, such as
product sales, placement of orders with
subcontractors for product components, andsupplying of components to parent company,
and retain such materials.
(4) Specific methods for increasing theprobative value of evidence
Evidence to prove prior use should becapable of proving not only the contents ofthe business or preparations therefor but also
the time when the evidence was produced(date of production). Furthermore, in order toincrease the probative value of evidence, it isimportant to prove that no alterations have6

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been made to the evidence (absence ofalteration) as well as the identity of the
producer of the evidence in question(producer).
(ii) Notary system[1] Outline of the notary system
Notaries are authorized to place fixed
dates on private deeds and produce notarized
deeds, thereby clarifying the legal relations
and facts and ensuring the admissibility of
documents as evidence. The notary system isdesigned to stabilize the everyday life of
citizens and prevent the occurrence ofdisputes.
[2] Notary services(a) Fixed dates
A private deed stamped with a fixed dateis sufficient proof of the existence of theobject in question on the affixed date, and it
has sufficient admissibility as evidence incourt (Article 4 of the Act for Enforcement of
the Civil Code).
Since a fixed date may be given to a
private deed, most documents produced bycompanies are eligible for notarization by
way of a fixed date stamp from a notary.
(b) Notarized deeds of observed fact
A notarized deed of observed fact is akind of notarized deed produced by a notary
based on his/her observations, or, in otherwords, the facts that the notary directly
observed with his/her five senses (Article 35of the Notary Act), and this is said to havethe greatest probative value under the law.
Since a notarized deed of observed fact
shall be retained in the book vault of thenotary’s office for 20 years following its
production, there is no fear of loss oralteration (the period of retention isextendable).
For instance, in order to secure evidence
to prove the method whereby a medical orother chemical substance was manufactured
at a factory, the company can invite a notary
to the factory to directly observe the raw
materials of the product, the structure andoperation of the machinery and equipment,
and the manufacturing process, and record
the findings of these observations in anotarized deed.

(c) Authentication of private deeds
Authentication of a private deed refers to
the certification of the fact that theauthenticated document has been signed andsealed by the nominal producer of the
document.
Such an authenticated private deed has
more probative value than a private deedwith a fixed date, in that the authenticateddeed can prove not only the existence of thedeed on the date of authentication but also
the absence of alteration in the deed.
There are other kinds of notary services,such as production of written contracts as
notarized deeds, sworn authentication, andnotarization of electronic data.
(iii) Timestamps and electronic signatures[1] Timestamps
Timestamping is a private service
wherein time information is given toelectronic data, thereby proving the existenceof the data at the time of timestamping (proofof date) and the fact that no change oralteration has been made to the data during
the period from the time in question to thetime of inspection of the data (proof ofabsence of alteration).
Although it should be noted that atimestamp does not have the same legal
status as a fixed date placed on a document,
it can serve as evidence in the determinationof the chronology of events.
[2] Electronic signatures
Electronic signatures is a technology
wherein seals or signatures are electronicallyaffixed to electronic data for the same
purpose as the physical affixing of a seal orsignature to a tangible document. In
accordance with the Act on Electronic
Signatures and Authentication Services,
electronic documents to which an electronic
signature has been affixed by satisfying
certain requirements are presumed to havebeen “produced at the will of the person who
has signed or sealed the document inquestion.”Content-certified
mailandreceipt-time-certified mail are also available
as means of proof.

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know-how, they can take such measures asavoiding introducing of the new technology tooverseas production factories, or thoroughly
restricting customer visits to factories for the
purpose of viewing production lines.

(5) Methods
actually
employedbycompanies as means of proof
Companies that intend to keep theirtechnical achievements secret as know-how
for strategic purposes currently employ thefollowing methods for securing evidence toprove prior use.
Companies decide whether or not tomaintainsecrecysurrounding
certaintechnical achievements as know-how, whileconsidering various factors such as whether
it would be difficult for other companies toindependently
developtherelevant
technology, whether the technology inquestion relates to a manufacturing method,
and whether the details of the invention (e.g.
processing method) have not been revealedby the product itself.
In an attempt to secure evidence to proveprior user, companies take various measures
including the following: recording DVDs
that feature video presentations of factory
production lines as well as data regarding
business commencement decisions of andother related documents, then placing said
DVDs in an envelop and having the envelope
stamped with a fixed date at a notary’s office;in the case of top-priority know-how
requesting that a notary produce a notarized
deed of h observed fact in the presence of alawyer or patent attorney, or establishingrules for electronic document managementthat require the use of timestamping
provided by private bodies; including
digitized design drawings together withproduct specifications, operational manuals
produced by the technical department, andoperational records depicting trials anderrors made by R&D personnel, and having
the package stamped with a fixed date at anotary’s office.
When companies decide to keep theirtechnical achievements secret as know-how,they may prepare patent claims anddescriptions regarding the technology in themanner akin to the filing of a patentapplication, thereby clarifying the scope of
the know-how in question. If their production
activities overseas (e.g. in China) involve
technology that they wish to retain as secretII

1

United Kingdom
Prior use rights are stipulated in Section
64 of the Patents Act. In order for a prior use
right to exist, the person who claims prior use
should, (i) before the priority date, (ii) within
the United Kingdom, (iii) in good faith, (iv) do
an act which would constitute an
infringement of the patent if it were in force,or makes effective and serious preparations
to do such an act.
The requirement to have “made effective
and serious preparations” means that the
preparations necessary for committing thepotential act of infringement in question
have nearly reached the point of committing
the act. It is construed that the prior user
may make changes to the mode of working
within the scope of the act that is
substantially similar to the act for which
effective and serious preparations have been
made prior to the filing of the patentapplication. There is no court precedentregarding the expansion of the production
scale. However, some scholars argue that
Section 64 of the Patents Act does not impose
any quantitative limitations, and according
to this argument, the prior user who has
manufactured a potentially infringing
product is allowed to expand manufacturing
without scale limitations (including thepurchase of new plant facilities).
In Forticrete Ltd. vs. Lafarge Roofing
Ltd. (Patents Court, November 25, 2005), thecourt rejected the claim of prior use, holdingthat the act committed by the defendant’s
prior to the priority date could not be deemedas substantially the same as the infringing
act.

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Prior Use Systems in Foreign
Countries

One means of proving possession of an
invention is a Soleau envelope. The person
who needs proof prepares two envelopes withidentical contents, and sends both to the
French Patent Office (Institut National de la
Propriete Industrielle). Having received them,
the Patent Office writes the date of receipt on
the envelopes and hole-punches them, andthen returns one of the envelopes to thesender while retaining the other in the officearchives (Article 511-6 of the Intellectual
Property Law).
The prior user is only required to haveknowledge of the invention in question, butevidence should be submitted to prove fullknowledge of said invention. It is construed
that the prior user may employ a form
equivalent to that embodied by the invention
in question possessed by the prior user before
another person obtains a patent for theinvention. The legitimate working by theprior user may extend to the prior user’s
needs without any quantitative limitation.
In the Concept K Ltd. (Hong Kong) vs.
Mr. Moulin case (Tribunal de grande instancede Paris, December 19, 2003), the foreign
corporate defendant successfully proved its
disclosure of the invention in France, andtherefore the court upheld its claim for prioruse with respect to the invention produced
overseas.

2

Germany
Prior use rights are stipulated in Section
12 of the Patent Law. In order for a prior use
right to exist, the person who claims prior use
should, (i) at the time of the filing of thepatent application, (ii) within German
territory, (iii) possess the invention, and (iv)the possession of the invention should be
affirmed by serious preparations (“necessary
arrangements”) to start to work (“use”) theinvention.
It is construed that the “necessary
arrangements to use the invention” should bemade with the intention of using theinvention in the future, and should indicate aserious, clear and unconditional intention ofusing said invention in the near future. The
prior use right covers the same kinds of usage
or specifically embodiments thereof, which
the prior user had actually used or for which
the prior user made necessary preparations
for using shortly. It is construed that there isno quantitative limitation on the prior use
right, and therefore the prior user is allowed
to magnify the production and export scales
thereof.
In the Elektrische Sicherungskörper
Case (Frankfurt District Court, November 18,1965), the court rejected the claim of prioruse, holding that the defendant’s manual
manufacturing of test samples not intended
for sale could not be regarded as effective useof the invention for the purpose of starting
mass production of fuses, or as sufficient
preparation for such use of the invention.

4

China
Prior use rights are stipulated in Article
63 of the Patent Law. In order for a prior use
right to exist, the following four requirements
should be satisfied: (i) the prior user has used
(worked) the invention or made necessary
preparations for the working thereof; (ii) use
has been initiated or preparations for suchuse have been made before the filing of thepatent application; (iii) such prior use is bonafide; and (iv) the invention is being usedwithin its original scope.
According to Article 96 of the “Opinions
on Several Issues Concerning Determinationof Patent Infringement” issued by the Beijing
High People’s Court, making “necessary
preparations” means to completely develop
design drawings and technical documents,

3

FrancePrior use rights are stipulated in Article613-7 of the Intellectual Property Law. In
order for a prior use right to exist, thefollowing four requirements should besatisfied: (i) geographical requirement (mustbe conducted within the territory of France);(ii) time requirement (must be invoked on thedate of the filing of the patent application or
the priority date); (iii) bona fide requirement(maintaining of good faith); and (iv) subject
requirement (the invention claimed by thepatent application must be in the possessionof the prior user).
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on this issue. There is an academic view thatthe prior use right may be effective within
the scope of the invention based on technicalideas and made apparent in the course ofworkingtheinventionormakingpreparations for the business. The prior user
may be allowed to expand the scale of thebusiness involving the working of theinvention to the extent of the purpose of thebusiness in question.
The Supreme Court judgment of June 8,
1993, addressed the case where a prior user
had, prior to the filing of the patentapplication in question, conducted a businessinvolving the working of an invention but
then abolished said business due to poor
business results, meaning that the prior user
had not continued the business in question
up to the time of the filing of the patentapplication. The court held that no prior use
right could be claimed in a case where theprior user had not continued the relevantbusiness up to the time of the filing.

and to finish preparation of the necessary
equipment and molds or the production ofsamples or trial models, and “within theoriginal scope” means within the limit of theactual production volume or production
capacityoftherelevant
production
equipment prepared prior to the filing of thepatent application.
Except for manufacturing and use, allother acts, such as exporting, are not coveredby the prior use right, and manufacturing
beyond the original scope shall constitutepatent infringement.
In the infringement case involving theutility model patent for a high-pressure
isolation switch, the court rejected the claimof prior use because the written directions
pertaining to trial production issued prior to
the filing of the patent application only
specified the problem to be solved by theinvention and did not indicate any concrete
technical strategies, and therefore thedefendant was deemed to have failed to makenecessary preparations prior to the filing
date.

6

TaiwanPrior use rights are stipulated in Article
57 of the Patent Law. In order for a prior use
right to exist, the following requirements
should be satisfied: (i) the prior user has,prior to the filing of the patent application inquestion, worked the invention or completed
the preparations necessary therefor within
the Republic of China; (ii) the person has
worked the invention or made preparations
therefor in good faith; (iii) the working of theinvention is within the scope of the businessthat the person has operated.
Accordingtothe“Pointson
Determination of Patent Infringement”(Taiwan Intellectual Property Office of the
Ministry of Economic Affairs), “ ‘all necessary
preparations’ refers to the necessary
preparations made within the Republic ofChina for the purpose of manufacturing thesame product or using the same method.”
There is no court precedent discussing thespecific meaning of the phrase “all necessary
preparations,” with the exception of thereason given in a court ruling wherein the
court stated that purchasing the machinery

5

South Korea
Prior use rights are stipulated in Article
103 of the Patent Law, which is similar to
Article 79 of the Patent Act of Japan. In order
for a prior use right to exist, the person who
claims prior use should satisfy the following
requirements: The person has (i) made aninvention without having knowledge of thecontents of the invention described in thepatent application or learnt the method of
production of the invention from the inventor,
and (ii) at the time of filing of a patentapplication, (iii) has been conducting abusiness involving the working of theinvention within the Republic of Korea, or
has been making preparations for suchbusiness.
It is construed that “preparations for thebusiness” must be made to the extent thatsaid preparations can be objectively
recognized. There is no clear provision onwhether or not a prior use right may be
granted even after the mode of working ischanged, nor has any court ruling been made10
IIP Bulletin 2007

andcasting
molds
necessaryformanufacturing can be deemed as a complete
implementation of necessary preparations.
There is also no court precedent judging
whether or not the prior use right may be
granted in cases where the mode of working
has been changed. Considering the current
practice in Taiwan whereby courts tend toconstrue the scope of prior use narrowly, it
may be difficult to obtain prior use right after
changing the mode of working of an
invention.
The Taiwan Shilin District Court
judgment of October 13, 2006, upheld theclaim of prior use, admitting as evidence
magazine ads, shipping bills, documents ofreceipt, and checks, and holding that thedefendant had, prior to the filing of thepatentapplication,
already
conducted
manufacturing by using the method related
to the relevant electronic device and sold theallegedly infringing computer mouse to the
public.
(Researcher: Yusuke IKESHIMA)11
IIP Bulletin 2007