17 Subjective Scope of the Right of Prior Use:
Comparative Study of French and Law and Japanese Laws（*）
Industrial Property Right Expert Overseas Researcher: Tsukasa Aso
Today, no one doubts the importance of the system of the right of prior use. To date, the focus ofattention has been placed on the issue of the objective scope of the right, leaving the issue of subjective
scope unexamined. In Japan, due to its industrial structure, under which the practice of subcontracting is
widespread, it is extremely important to determine whether the right of prior use arises for an
order-placing party or an order-receiving party, i.e., subcontractor. Once the right of prior use arises, wewill have to face the issue of how to interpret the subjective scope of the right. For example, we will haveto determine whether an assistant and a subcontractor of the holder of a right of prior use should be
included in the subjective scope of the right and whether a distributor who has purchased products from theholder of a right of prior use should be excluded from the scope. Without clarifying these issues, it would be
impossible to promote the use of the system of the right of prior use. In this paper, we have examined
French law, which is considered to be the origin of the Japanese system of the right of prior use, and made acomparison between the Japanese system and the French system. The insights gained from the Frenchsystem were used to discuss possible interpretations of the subjective scope of the right of prior use under
the Japanese system.

Ⅰ Introduction
Today, no one doubts the importance of thesystem of the right of prior use. In the course of
discussion on the issue of the right of prior use, thefocus of attention has been placed on the issue ofthe objective scope of the right, leaving the issue of
subjective scope unexamined.
Since subcontracting exists under the Japaneseindustrial structure, a business operator often
places an outsourcing order with a subcontractor.
Therefore, it is extremely important to determine
whether the right of prior use arises for an
order-placing party or an order-receiving party, i.e.,
subcontractor. However, the answer to thisimportant question of who the qualified holder ofthe right of prior use is varies from one case toanother due to the lack of clear judgment criteria.1
Once the right of prior use arises, we will haveto face the issue of how broadly the subjective
scope of the right may be interpreted. For instance,
if the holder of a right of prior use employs asubcontractor, it would be uncertain whether thesubcontractor should be regarded as falling within
the subjective scope of the right of prior use. If a
company purchases products from the holder of aright of prior use for the purpose of selling them, it
would also be unclear whether the distributor(*)

should be excluded from the subjective scope of theright of prior use. Without clarifying these issues, itwould be impossible to promote the use of thesystem of the right of prior use.
While the Japanese system of the right of prioruse has been strongly affected by German law, theGerman system of the right of prior use has its
origin in French law. Thus, this paper presents asummary of the French system of the right of prioruse and conducts a comparative study between
Japan and France in terms of the subjective scope ofthe right of prior use with the hope of gaining
insights from French law.

Ⅱ French system of the right ofprior use
The French system of the right of prior use
was established based on the judgment handed
down in 1849 by the Supreme Court of Judicature(Cour de cassation), 2 3 which held that that the
raison d'etre of the system of the right of prior use
shall be found in the protection of vested rights.4
This interpretation was upheld by academic
theories 5 , while a small number of theories
interpreted the raison d'etre from the perspective ofequity.6
These theories shared the stance of using such

This is an English translation of the summary of the report published under the Industrial Property Research Promotion
Project FY2010 entrusted by the Japan Patent Office. IIP is entirely responsible for any errors in expression or
description of the translation. When any ambiguity is found in the English translation, the original Japanese text shall be
prevailing.

IIP Bulletin 2011 Vol.20● 1 ●terms as “vested rights” and “equity,” while using
the following two notions to interpret the raisond'etre of the system of the right of prior use.
The first notion is the protection of inventors.7
The importance of this notion was advocated evenmore strongly after the 1968 legislation, which
created the system of the right of prior use in
France.8
The second notion is the protection of thevested rights of a possessor. 9 According to thewording of relevant clauses, non-inventors are also
entitled to hold a right of prior use.10 Therefore, theraison d'etre was interpreted not from theperspective of inventor protection but from theperspective of equity.
As far as French law is concerned, the former
notion seems to be more commonly used.
Consequently, it is interpreted that the raison d'etreof the system of the right of prior use lies in theprotection of inventor’s vested rights. Meanwhile,
both notions have failed to clearly define the term
“equity”.11

Ⅲ Subjective scope of the Frenchsystem of the right of prior use
1

Introduction

Article L613-7 of the Intellectual Property
Code of France specifies the system of the right ofprior use by stating that “Any person who, within
the territory in which this Book applies, at the filingdate or priority date of a patent was, in good faith, inpossession of the invention which is the subject
matter of the patent shall enjoy a personal right towork that invention despite the existence of thepatent. The right afforded by this Article may only
be transferred together with the business, theenterprise or the part of the enterprise to which it
belongs.”12
In the following sections, we will identify thequalified holder of the right of prior use and thescope of the right. In this paper, the right of prioruse under the French system will be referred to as
the right of prior personal possession based on the
French term for the right of prior use.
2

Any person (Toute Personne)

The term “any person (toute personne)”
clearly indicates that either a natural person or ajuridical person could become the holder of a rightof prior personal possession.13 Even a nation could

benefit from a right of prior personal possession.14
Casalonga strongly advocated that a person
may not become the holder of a right of priorpersonal possession unless qualified as an inventor.
Casalonga arg ued that a right of prior personal
possession may be held only by an inventor or, insome special cases, by his or her successor. 15
However, a careful examination of the 1968 Law
reveals that the terms “inventor” and “his/her
successor” are not used in the provision concerning
the right of prior personal possession (Article 31 of
the French patent law), indicating that theownership of the right of prior personal possession
is not limited to those people.16 Today, it is widelybelieved that it is not necessary to qualify as aninventor.17
There used to be a debate as to whether the
beneficiary of the right of prior personal possession
should be determined based on the timing of thecommencement of possession. Today, a consensus
has been reached that the timing of thecommencement of possession and the number ofpossessors are not important factors in determining
whether a right of prior personal possession has
arisen. This is because the fact that possession has
been acquired would not provide reasonablegrounds for granting exclusive rights to thepossessor.
There has been a discussion on an agreement
under which research and development activities
are commissioned. It has been interpreted that thecommissioning party is entitled to hold a right ofprior personal possession to the extent of theagreement.18
There has also been a discussion on theassignment and transmission of an invention. This
does not mean the assignment of a right of priorpersonal possession but rather the assignment ortransmission of an invention.19 Under French law, aright of prior personal possession does not exist
before a patent application is filed. When an
invention is assigned, the assignee starts enjoying
the benefits of prior personal possession of theinvention on and from the date of assignment. 20
The same applies to the case where an invention istransmitted. Transmission of an invention may bemade either orally or in writing as long as what istransmitted is recognizable as information on an
invention.21
Different treatment would be necessary in thecase of a right of prior personal possession held by acompany. If the invention in question is made out of
research and development activities conducted by a

● 2 ●IIP Bulletin 2011 Vol.20

department that lacks juridical personality, the rightof prior personal possession would be held by the
corporation to which the department belongs.22
If an invention is in the possession of eachcompany belonging to the same corporate group,
each company would be entitled to enjoy thebenefits of a right of prior personal possession.23 If
the invention is in the possession of only one ofthose group companies, the effect of having priorpersonal possession of the invention could not beenjoyed by the corporate group as a whole.24
3Good faith (Bonne foi)

The requirement of good faith has its origin in
the Roman law principle, i.e., “Fraud negateseverything (Fraus omnia corrumpit).” 25 Thisrequirement has been established based on judicial
precedents since before the 1968 legislation that
introduced the system of the right of prior personal
possession. The use of this requirement has beenviewed favorably by academic theories.26
One of the early precedents is the judgment
handed down by the Court of Appeal of Paris (Courd'appel de Paris) on April 13, 1878. This is a caseinvolving a patentee and his employee. The
employee took advantage of a personal relationshipwith his employer and obtained information on his
invention. By the time when the employer filed apatent application for the invention, the employee
had already worked the invention. The Court ofAppeal of Paris held that the possession acquired by
the employee was tainted by fraud (fraude).27
According to judicial precedents, the person
who has acquired possession is required to provethat the requirement of good faith has been met.28
An analysis of judicial precedents that took
place before the legislation shows that many of
those precedents involved an invention made out ofan employer-employee relationship. In some cases,
an employee subsequently claimed a right of priorpersonal possession,29 whereas, in other cases, athird party who has learned of an invention from an
employee claimed such a right.30 In most of thosecases, the court found that the requirement of goodfaith was not fulfilled.
According to a general theory that can bederived from judicial precedents that took place
after the legislation, the requirement of good faith isconsidered to be satisfied in the case of “a self-madeinvention or an invention legally learned of from theinventor.31”

IIP Bulletin 2011 Vol.20

4

Territory (Territorialité)

Since Article L613-7 of the current Intellectual
Property Code of France states “within the
territory in which this Book applies,” possession
needs to be acquired within France.32
The territorial requirement for possession
becomes an issue in the following two cases: the casewhere the possession acquired in France has its origin
in the possession acquired in a foreign country and thecase where the possession has been achieved outside
France, while the possessor is in France.33
In the former case, the possessor may startenjoying benefits of a right of prior personal
possession on and from the date on which thepossession is achieved in France. 34 As a judical
precedent, the Court of Appeal of Paris handed down
a judgment addressing this issue on July 5, 1879.35
The latter case has been discussed for each of
the following two possible cases. In the first case,the possessor has an office in France, while thepossession of the invention has been achieved by an
office in a foreign country. In this case, the office inFrance may not acquire the right of prior personal
possession unless prior personal possession isachieved in France.36 In the second case, the rightholder of an invention is in France, whereas theinventor is in a foreign country.37 Regarding thiscase, there is an academic theory stating that the
territorial requirement should be waived in thiscase and that a right of prior personal possession
should be held by the right holder in France.38 As
relevant judical precedents, the Superior Court ofParis (Tribunal de Grande Instance de Paris) handed
down judgments addressing this issue on March 31,
1989, and December 19, 2003, respectively.39 40
5Date (Date)

Article L613-7 of the Intellectual Property
Code of France specifies the time requirement bystating “the filing date” and “priority date.”
Consequently, as far as patent applications filed in
France are concerned, a judgment will be madebased on the actual filing date. In the case of an
application claiming priority, a judgment will bemade based on the priority date.
6

Possession (Possession)

In order for possession to be achieved,
accurate and complete recognition of the invention
would be necessary.

● 3 ●The right of prior personal possession was
explicitly specified in Article 31 of the French
patent law by Law No.68-1 dated January 2, 1968.
The legislative history of establishing said rightsuggests why the notion of “the possession of an
invention” was adopted despite and because of its
ambiguity instead of the notion of “the working of
an invention”. This is why the legislator isevaluated with having chosen to remain silent.41
Academic theories are divided over how tointerpret “possession.” In France, a majority oftheories seem to have adopted the interpretationthat the notion of possession does not require theworking of an invention.42 However, based on an
in-depth study of the notion of possession, somescholars presented a strong argument that thenotion of possession requires the working of an
invention.43
Judicial precedents are also divided over thisissue. In recent precedents, the court is likely towaive the requirement that an invention must be
worked. These days, it is rare for the court to
explicitly find the working of an invention as arequirement for the possession of the invention.
7

Scope of the right of prior personal
possession

In this section, we will discuss the scope of theright of prior personal possession.
In France, due to the absence of statutory
limitations, it is widely believed that the rightholder may freely change the nature and manner ofworking an invention.44 Similarly, no limitations are
imposed on quantitative expansion of the working of
an invention.45
To discuss the personal scope of the right ofprior personal possession, it would be convenient todiscuss the issue of upstream separately from theissues of downstream. The issue of upstream lies in
the manufacturing phase of products that are
subject to a right of prior personal possession,
whereas the issue of downstream lies in themarketing phase of those products. After discussing
those two issues, we will discuss the issue of
assigning the right of prior personal possession.
First, the upstream issue needs to be examinedbased on the clear understanding that the holder ofa right of prior personal possession is prohibitedfrom granting a license. 46 This prohibition has
given rise to the question of whether the holder of aright of prior personal possession is permitted tocontract out the work that requires the exercise of

the right of prior personal possession. Academic
theories consider such use of a subcontractor to bepermissible in principle. 47 Some of the judical
precedents involved an associate, while others
involved a subcontractor. The difference between an
associate and a subcontractor is unclear. In those
precedents, the court found an associate favorably
and a subcontractor unfavorably. 4849
Second, the downstream issue should be
examined from the perspective of whether the
distributor’s (distributeur) act of selling products
manufactured by the holder of a right of priorpersonal possession constitutes infringement. Thisissue should not be regarded as an issue of
exhaustion (Article L613-6 of the Intellectual
Property Code of France). 50 Academic theories
share the view that the third party’s act of selling
products manufactured by the holder of a right ofprior personal possession does not constituteinfringement.51 However, the grounds for the view
vary from one theory to another and remain unclear.
Some theories use the principle of equity as thegrounds,52 while other theories find grounds in thefact that, if a distributor is prohibited fromexercising the right of prior personal possession, it
would be meaningless to permit the holder of aright of prior personal possession to manufacture
products.53 In judicial precedents, the court foundthat the distributor’s act of exercising the right ofprior personal possession did not constituteinfringement. The grounds for this finding were notexplained by the court.54
Regarding the assignment of the right of priorpersonal possession, Article L613-7 of theIntellectual Property Code of France imposescertain limitations. 55 These limitations were
established based on the personal nature of theright of prior personal possession.56 The limitations
were revised by the law dated December 18, 1996.
The current Code specifies that, “The right affordedby this Article may only be transferred together
with the business, the enterprise or the part of theenterprise to which it belongs.” Before the revision,
the provision referred only to “enterprise,” causing
controversy as to how to interpret the word. It
would be beneficial for Japan to learn from thiscontroversy, which is summarized below.
Academic theories had a tendency to broadlyinterpret the notion of enterprise. 57 In judicial
precedents, the court interpreted the term
“enterprise” as factory (usine), business office(maison de commerce), and business (fonds de● 4 ●IIP Bulletin 2011 Vol.20

commerce).58 59 In either case, the term “enterprise”
was not clearly defined.
Academic theories and judicial precedents
shared the view that the assignment of an entire
business will allow the assignee to receive atransfer of the right of prior personal possession
and continue the operation of the business.60 For
instance, if a company absorbs another company
that holds a right of prior personal possession, theabsorbing company may use said right of theabsorbed company.61 The same is true in reverse.
For example, if a company that holds a right of priorpersonal possession absorbs another company, theabsorbed company may use said right of theabsorbing company.62 In the case of a merger ofcompanies, all the companies may enjoy thebenefits of the right of prior personal possessionthat has been acquired by any of those companies.63
Views were divided over the case of partial
asset transfer. Some scholars argued that thebenefits of the right of prior personal possession
belong exclusively to the original holder of a right ofprior personal possession because each company
retains its juridical personality.64 On the other hand,some other scholars argued that a transfer of theright of prior personal possession should bepermitted even in the case of partial asset transfer.65
66
Regarding a corporate split-up, some scholars
argued that a transfer of the right of prior personal
possession should be permitted on the analogy of asituation where a parent company hopes to transfer
its right of prior personal possession to its
subsidiary company.67
8

Burden of proof

The person claiming a right of prior personal
possession must bear the burden of proof.68 The
ownership of a right of prior personal possession
may be proven in various ways.69

Ⅳ Purpose of the system of theright of prior use in Japan
In Japan, the purpose of the system of the rightof prior use should be interpreted as “providing
legitimate business operators with protection for
their industrial possession.” 70 This interpretation
would provide reasonable explanation for why the
expansion of business size is permissible.
Furthermore, this interpretation would make itpossible to explain the relationship between the
raison d'etre of the system of the right of prior use

IIP Bulletin 2011 Vol.20

and that of the patent system without raisingtheoretical issues. Thus, based on thisinterpretation, we will determine the subjective
scope of the system of the right of prior use.

Ⅴ Subjective scope of the systemof the right of prior use in Japan
1

Introduction

Article 79 of the Japanese Patent Act specifies
as follows.
“A person who, without knowledge of thecontent of an invention claimed in a patentapplication, made an invention identical to said
invention, or a person who, without knowledge ofthe content of an invention claimed in a patentapplication, learned the invention from a person
who made an invention identical to said invention
and has been working the invention or preparing for
the working of the invention in Japan at the time of
the filing of the patent application, shall have anon-exclusive license on the patent right, only tothe extent of the invention and the purpose of suchbusiness worked or prepared.”
Based on this provision, the following sections
will discuss the subjective scope of the right of prioruse.
2PersonSince no limitations are imposed on the term
“person,” either a natural person or a juridical
person may hold a right of prior use. Even a nation
may become the holder of a right of prior use.
In Japan, since said provision does not require“person” to be an inventor, a non-inventor may
enjoy the benefits of a right of prior use. Moreover,the provision does not require “person” to be a
person who has learned of an invention directlyfrom the inventor.
Regarding the number of holders of a right ofprior use, the provision imposes no limitations
either.
In France, regarding an agreement under which
research and development activities are commissioned,
it is interpreted that the commissioning party isentitled to enjoy the benefits of the right of priorpersonal possession to the extent of theagreement.71 In Japan, no discussion has been madein this respect.
When an invention is assigned or transmitted,
the party receiving the assignment or transmission● 5 ●may acquire the right of prior use as long as otherrequirements are satisfied. Since said provision
imposes no limitations, if an invention is assigned ortransmitted, the receiving party would be entitledto acquire the right of prior use even if the businessitself is not assigned to the party.
While the issue of how to treat the right ofpossession held by a company was in discussion in
France, Japan has paid little attention to the issue.
If an invention is made out of research anddevelopment activities conducted by a departmentthat lacks juridical personality, the right ofpossession would be held by the corporation towhich the department belongs. France also
discussed the case of companies belonging to thesame corporate group. This issue has been left
unaddressed in Japan. If an invention is worked byeach of the group companies that has juridical
personality, each company would be entitled toenjoy the benefits of the right of prior use.
3

Legitimacy of the route through which
an invention was learned of

In Japan, in order to become the holder of aright of prior use, the legitimacy of the route
through which an invention was learned of isrequired. This requirement is defined as “good faith”
in the law of 1921. Since the in-depth examinationof this requirement is indispensable to determine
the subjective scope of the right of prior use, wewill refer to both the former law and the current
law.
There are judicial precedents in which thecourt found, under the former law, that “the term
‘good faith’ refers to the absence of awareness thatthe right of the applicant may be damaged(Judgment of the Supreme Court in prewar Japan
dated November 15, 1934),” “without theknowledge of the existence of a prior application(Judgment of the Supreme Court in prewar Japan
dated February 4, 1938), and “the belief that thedesign belongs to oneself without realization of thefact that the design belongs to another person(Judgment of the Supreme Court dated October 17,1969).”72 73 74
Under the current law, disputes could arise if
the routes through which an invention was learnedof are identical. In the Sapporo High Court
judgment dated December 26, 1967, and the Osaka
District Court judgment dated March 11, 1977, thecourt found a right of prior use to have arisen

although the routes through which the invention
was learned of were identical.75 76
On the other hand, academic theories weredivided over the interpretation of “good faith”
required under the law of 1921. Some scholars
interpreted “good faith” as “the lack of knowledge
that an application has been filed,”77 “the absenceof awareness that the creation made by theapplication exists,”78 “no intention of committing awrongful act,” 79 “the belief that the creation
belongs to oneself without realization of the factthat it belongs to another person,” 80 and “theintention of compliance with the public order andgood morals.”81
The lack of clarity in the requirement of goodfaith has been pointed out as problematic.82 In orderto clarify the requirement, a legal revision wasmade.
In view of this legislative history, somescholars argue that, while the current law contains aprovision that requires the legitimacy of the route
through which an invention was learned of, theprovision merely specifies in general terms a typicalcase where the requirement of good faith is met.83
A majority of academic theories argue that it would
be unreasonable to adopt such narrow interpretationthat said provision is applicable only to cases where
inventions were made through two different
routes.84
4

Territory

In Japan, said provision requires an invention
to be worked in Japan. Therefore, if an invention isworked outside Japan, a right of prior use would notarise.
5

Date

Unlike France law, which adopts the term “thefiling date,” Japanese law has adopted the term “atthe time of the filing of the patent application.” In
the case of an application claiming Paris Convention
priority, a judgment as to whether a right of prioruse arises will be made based on the priority dateunder Article 4B of the Paris Convention.
6

Interpretation of the business involving
the working of the relevant invention

What is the definition of the business involving
the working of the relevant invention? This is acontentious issue especially when the operation is● 6 ●IIP Bulletin 2011 Vol.20

carried out under a manufacturing outsourcing
agreement.
According to the judgment of the Supreme
Court in prewar Japan dated February 4, 1938, thecourt found that the order-receiving party had aright of prior use by holding that “any person who
has been engaged in the business of producing or
selling certain products shall have the right to work
the relevant invention as long as the person learnedof the invention from the information contained in
an order placed by another person or in a sample
presented by another person, or the person madethe invention on his/her own for the purpose ofusing it for his/her own business.”85
The judgment of the Supreme Court dated
October 17, 1969, stated that “Academic theories
have adopted the view that the phrase ‘conducting
the business involving the use of the design’
contained in Article 9 of the former Design Act
refers to the situation where a person claiming theright to use the design conducts the businessinvolving the use of the design for his/her own
benefit on his/her own account. However, this viewshould not be narrowly interpreted as referring tocases where the person directly engages in thebusiness of producing and selling the products using
the design.”86 Rather, this view should be broadlyinterpreted as encompassing cases where theperson places an order with another person who has
facilities necessary for the business in order to havethe person produce the products using the design
exclusively for the order-placing party and deliver
the products to the order-placing party so that theorder-placing party can sell them to other parties.
In this judgment, the court found that theorder-placing party in a foreign country had a rightof prior use in Japan. It should be noted, however,that this judgment did not present the interpretationthat the order-receiving party was not entitled tohold the right of prior use.87
According to academic theories, the phrase“the business involving the working of the relevant
invention” has long been interpreted as referring toa situation where a person conducts businessinvolving the working of the relevant invention for
his/her own benefit on his/her own account. 88
These criteria, i.e., “for his/her own benefit” and“on his/her own account” have been criticized as
not being clear enough in some cases.89 For thisreason, some academic theories argue that a
judgment should be made based on such facts as on
whose account the business was carried out, or

IIP Bulletin 2011 Vol.20

more specifically, who actuallybusiness.90
7operated the

Scope of the right of prior use

The issue of upstream was addressed in theSupreme Court judgment dated October 17, 1969.
The Supreme Court found that, as far as theorder-placing party has a “relationship of affiliation”
with the order-receiving party, the act of theorder-receiving party shall be regarded as fallingwithin the scope of the order placing party’s right ofprior use. Academic theories have supported theSupreme Court judgment and shared the view thatthe holder of a right of prior use may contract out
the task of manufacturing products as long as theright holder uses the subcontractor as if it were its
affiliatedinstitutionor
its“handsandfeet”(manufacturing facilities).91
The issue of downstream was addressed in the
Chiba District Court judgment dated December 14,
1992. 92 The Chiba District Court found that theperson who had purchased products from the holder
of a right of prior use was entitled to have a right ofprior use by holding that the right of prior use
would be meaningless if the person who purchased
those products is subject to the exercise of a patentright. Academic theories cited this Chiba District
Court judgment and pointed out that this conclusionneeds to be upheld in order to ensure the effect of
the right of prior use.93 Some scholars argued thatthe doctrine of exhaustion may be applicable to thiscase.94
Apart from cases of general succession such as
inheritance, the right of prior use may betransferred only where the business involving theworking of the relevant invention is also transferredor where the consent of the patentee is obtained.
(Article 94, paragraph (1) of the Patent Act).
Disputes tend to arise when a right of prior use istransferred together with the business involving theworking of the relevant invention. In some judicial
precedents such as the case where all of the
facilities were transferred (Chiba District Court
Judgment dated December 14, 1992) and the casewhere contribution in kind was made (Osaka High
Court Judgment dated November 29, 2000), thetransfer of the right of prior use was permitted on
the grounds that the business involving the workingof the relevant was also transferred. 95 96 On theother hand, academic theories interpreted thebusiness involving the working of the relevant
invention as the business that is sufficient to work

● 7 ●the invention and supported the view that a
judgment should be made on a case-by-case basis.97

Ⅵ Insights from French law
1

8

Burden of proof

The burden of proof shall be born by the
person claiming a right of prior use.98
9

Other points at issue

Further discussion would be necessary on thenotion of “affiliated institution.” In the context ofthe discussion on the right of prior use, the notionof “relationship of affiliation” was presented in theSupreme Court judgment dated October 17, 1969,
regarding the issue of downstream.99 This indicatesthat the court took the theory of affiliation into
consideration. The affiliation theory first appearedin the judgment of the Supreme Court in prewar
Japan dated December 22, 1938, regarding theworking of an invention by a joint patentee. 100
According to this judgment, there are threerequirements for being recognized as an affiliatedinstitution: (1) the entity must have concluded anagreement with the right holder under which theentity manufactures products for the right holder inexchange for a fee paid by the right holder, (2) the
entity must be receiving supervision andinstruction from the right holder regarding thepurchase of raw materials necessary for the
manufacturing of the products, the marketing of the
products, and the quality of the products, and (3) the
entity must be delivering all of the products to theright holder and not selling any of them to a third
party. 101 There has been a consensus among
academic theories that, if an entity qualifies as anaffiliated institution, its act of manufacturing
products would not constitute infringement. 102
However, further discussion would be necessary to
clarify the definition of “affiliated institution.”
10 Others
The right of prior use holder’s act that isdeemed to constitute infringement (Article 101 of
the Patent Act) does not constitute infringement of
the patent. And it has been interpreted that theright of prior use should be applied (by analogy) to
the infringer of Article 101 of the Patent Act.103
Said system should also be applied by analogy tocases involving the right to claim compensation(Article 65 of the Patent Act).104

Legitimacy of the route through which
an invention was learned of (therequirement of good faith)

If the legitimacy of the route through which an
invention was learned of is regarded as a form of therequirement of good faith, there would be only asmall difference between Japan and France in termsof legal interpretation of the requirement. Therefore,
rather than studying the legal interpretation underFrench law, we should examine judicial precedents
in France and analyze court judgments with regard
to the requirement of good faith.
2

The business involving the working of
the relevant invention as a prerequisite
for the right of prior use

Under French law, it is still debated whether
the working of the relevant invention should be
regarded as a prerequisite for the right of priorpersonal possession. In-depth discussion on thisissue has yet to take place in France. As far as
French law is concerned, the discussion as to who isqualified to hold the right of prior use is still at thestage of examining the notion of possession. For
this reason, French law provides little insight forJapanese law.
3

The scope of the right of prior use

With regard to the issue of upstream, France
has failed to provide concrete criteria useful for
Japan except for such criteria as “control” and“account.” In terms of legal theory, France andJapan share the view that any person that may be
identified with the holder of a right of prior personal
possession may fall within the scope of the right ofprior personal possession.
Regarding the issue of downstream, bothFrance and Japan have reached the conclusion that,in the case of a person who has purchased products
from the holder of a right of prior use, his/her act ofselling those products does not constituteinfringement. The grounds found by France are thesame as those found by Japan.105 However, France
has not realized the possibility of the invocation of
the right of prior use to cases involving a person
who has purchased products. In terms of the level ofsophistication of the legal theory, Japanese law ismore advanced than French law.

● 8 ●IIP Bulletin 2011 Vol.20

Regarding the issue of transfer of the right ofprior use, France is more advanced than Japan interms of the depth of interpretation of the notion of“enterprise.” Therefore, it would be useful for Japanto study the interpretations presented in individual
cases in France.

Ⅶ Conclusion
This study has gained insights from an analysisof the subjective scope of the right of prior personal
possession under French law and used thoseinsights to discuss possible interpretations of thesubjective scope of the right of prior use underJapanese law.
Although the French system is regarded as
unique in the world, the discussion on the Frenchsystem presented in this paper is relevant to theissues faced by the Japanese system.
For example, it would be beneficial for Japan to
examine how France interpreted the requirement ofgood faith in individual cases. It would also be very
useful to examine the case-by-case judgment on atransfer of a right of prior use in France.
However, an examination of French law would
be insufficient for us to develop interpretation
theories on the subjective scope of the right of prioruse under Japanese law. It would be indispensable
to refer to German law, which received a strong
influence from French law and provided a basis for
the Japanese Patent Act. While coming from adifferent historical lineage, US law would also give
us some insights. The U.S. established the systemof the right of prior use and subsequently limited
the applicability of the system to the cases involving
business method.106
In order to determine the subjective scope ofthe right of prior use under Japanese law, it would
be necessary to conduct a comparative study on thelaws of various countries in consideration of the roleof the system of the right of prior use within theframework of intellectual property laws and theraison d'etre of intellectual property rights.
Daihan (Judgment of the Supreme Court in prewar
Japan), February 4, 1938, Daiminshu (Collection of
prewar Supreme Court civil cases), Vol. 17, No. 1, p. 37,
1937(O)No. 1352, Saihan (Judgment of the Supreme
Court), October 17, 1969, Minshu (Collection of civil
cases), Vol. 23, No. 10, p. 1777, Hanji (Law cases
reports), No. 577, p. 74, Hanta (Hanrei Times), No. 241,
p. 81, Kinsho (Finance and Commerce), No. 202, p. 7,
1966(O)No. 1360.
2
Paul ROUBIER, Le droit de la propriété industrielle, Sirey,
1

IIP Bulletin 2011 Vol.20

1954, t.2, p.175, Paul MATHÉLY, Le nouveau droit françaisdes brevets d'invention, JNA, 1991, p.299, Frédéric
POLLAUD-DULIAN, Droit de la propriété industrielle,
Montchrestien, 1999, nº545, p.233.
3
Cass., 30 mars 1849, Sirey.1850.1.70.
4
There is an interpretation that, in France, even before
the 1968 legislation, the system of the right of prior use
was applied to some court cases based on the principle ofequity. (Jean FOYER et Michel VIVANT, Le droit desbrevets, 1991, PUF, p.321, Christian LE STANC, Le
possesseur antérieur sur invention brevetée ou les deux
visages de Janus, Propr. ind., sept. 2002, Repère, p.5,
Joanna SCHMIDT-SZALEWSKI et Jean-Luc PIERRE, Droit dela propriété industrielle, Litec, 4édit., 2006, no177, p.74).
5
TH.TILLIERE, Traité théorique et pratique des brevets
d'invention, C.Vanderauwera, 1854, nº114, p.279, Henri
ALLART, Traité des brevets d'invention, t.3, Rousseau,
1889, nº641, p.142, J.RUBEN de COUDER, Dictionnaire dedroit commerciel, industriel et maritime, vºBrev. D'inv.,
nos544 et s., p.379, Pandectes Françaises alphabétique,vºPropriété littéraire, artistique et industrielle, 1894,
nº4482, p.493, Ferdinand MAINIÉ, Nouveau traité desbrevets d'invention, t.1, Chevalier-Marescq, 1896,
nº1778, p.749, Ch.THIRION et J.BONNET, De la legislationfrançaise sur les brevets d'invention, Belin, 1904, nº7,p.5.
6P.-L.MARTIN-SAINT-LÉON, Des conditions de validité desbrevets d'invention, Rousseau, 1886, nº38, p.112, LouisANDRÉ, Traité des brevets d'invention et de lacontrefaçon industrielle, t.2, 1899, nº1635, p.293.
7
Alain CASALONGA, Traité théorique et pratique desbrevets d'invention, t.2, 1949, nº971, p.102.
8Regarding the legislative history, please refer to suchofficial gazettes as J.O., documents de L'Assemblée
nationale, 19 sept.1967, Annexe nº244. J.O., documents
de L'Assemblée nationale, 21 sept.1967, Annexe nº320[Article 36]. J.O., débats parlementaires Assenmblé
nationale, 3e séance du 1re juill.1967, p.2590 [Article 36].
Rapport de Pierre MARCILHACY, nº42, Sénat, 1re session
ordinaire de 1967-1968, p.62. J.0., Documents de
L'Assemblée nationale, 30 mai 1968, Annexe, nº565, J.O.,
Documents de L'Assemblée nationale, 4 juin 1967,
Annexe, nº568. J.O., Débats parlementaires, Assemblée
nationale, 15 Déc.1967, p.5875. Regarding the evaluationof the legislation, please refer to F.SAVIGNON, Aspects
économiques de la réforme du systèm des brevets, PIBD
1969,Ⅱ, p.516. François MAGNIN, Know-How etpropriété industrielle, 1974, nº344, p.190.
9
P.ROUBIER, op.cit.(nº2), p.176. F.POLLAUD-DULIAN,
op.cit.(nº2), nº546, p.234.
10
Article L613-7 of the Intellectual Property Code ofFrance.
11
It has been pointed out that the principle of equity
should not be used to explain the purpose of the right ofpersonal possession. （ 7e rencontre de propriété
industrielle, Lyon 1978, Litec 1979, p.126 (stated by DE
PASSEMAR), Jean-Marc MOUSSERON, les droits du breveté,Thèse de Doctorat ; Université Montpellier, 1960, nº128
p.156, Gérard-Gabriel LAMOUREUX, La possession
personnelle antérieure, Thèse de Doctorat ; Université
Panthéon-Assas (Paris 2), 1986, p.73.）
12
The Japanese translation was made based on the● 9 ●information on the industrial property rights in foreigncountries that is available on the JPO’s website at
http://www.jpo.go.jp/shiryou/s_sonota/fips/mokuji.htm(last confirmed on March 1, 2011).
The original text is as follows: “Toute personne qui, debonne foi, à la date de dépôt ou de priorité d'un brevet,était, sur le territoire où le présent livre est applicable enpossession de l'invention objet du brevet, a le droit, àtitre personnel, d'exploiter l'invention malgré l'existence
du brevet.
Le droit reconnu par le présent article ne peut êtretransmis qu'avec le fonds de commerce, l'entreprise ou lapartie de l'entreprise auquel il est attaché.”13
G.-G.LAMOUREUX, op.cit.(nº11), P.MATHÉLY, op.cit.(nº2),
p.300, p.39, J.FOYER et M.VIVANT, op.cit.(nº4), p.319.
14G.-G.LAMOUREUX, op.cit.(nº11), p.39. C.LE STANC, JCB,
fasc.4620, nº8. As a precedent, Paris, 5 mars 1896, Ann.
propr. ind. 1896, p. 73
15
A.CASALONGA, op.cit.(nº7), n°971, p.102.
16
In some precedents, the court required the satisfactionof certain qualifications as an inventor （TGI Paris, 23
novembre 1989, PIBD 1990, n° 476, III, p. 253）.
17
G.-G.LAMOUREUX,
op.cit.(nº11),
p.40,
F.POLLAUD-DULIAN, op.cit.(nº2), nº546, p.234, C.LE
STANC, op.cit.(nº14), nº9.
18G.-G.LAMOUREUX, op.cit.(nº11), p.53.
19G.-G.LAMOUREUX, op.cit.(nº11), p.48. In earlier days,
H.ALLART, op.cit.(n°5), nº643, p.143. Douai, 19 juillet
1859, Ann. propr. ind. 1860, p.215, Cass. com., 18
décembre 1973, PIBD 1974, nº126, III, 173.
20
G.-G.LAMOUREUX, op.cit.(nº11), p.50.
21G.-G.LAMOUREUX, op.cit.(nº11), pp.51 et s.
22G.-G.LAMOUREUX, op.cit.(nº11), p.184.
23
G.-G.LAMOUREUX, op.cit.(nº11), pp.47 et 50. It is
unclear how LAMOUREUX defined group companies.
24
G.-G.LAMOUREUX, op.cit.(nº11), p.184.
25
G.-G.LAMOUREUX, op.cit.(nº11), p.43.
26
Eugène POUILLET, Traité théorique et pratique desbrevets d'invention et de la contrefaçon, 4édit., 1899,
n°433, p.422, Ch.THIRION et J.BONNET, op.cit.(nº5), nº7,p.5, A.CASALONGA, op.cit.(nº7), n°967, p.101, P.ROUBIER,
op.cit.(nº2), p.179, C.LE STANC, L'acte de contrefaçon debrevets d'invention, CEIPI, 1977, p.182, P.MATHÉLY, Le
droit français des brevets d'invention, JNA, 1974, p.349,
et op.cit.(nº2), p.300.
27
Paris, 13 avril 1878, Ann. propr. ind., 1878, p.105.
28
Triv. civ. Grenoble, 21 février 1912, Ann. propr. ind.,
1912, p.93.
29
Caen, 17 février 1887, Ann. propr. ind., 1887, p.31.
30
Grenobre 12 mai 1885, Ann. propr. ind., 1886, p.10, Trib.
civ. de Seine 30 décembre 1899, Ann. propr. ind., 1902,
p.52, Riom 5 avril 1900, Ann. propr. ind. 1901, p.105,
Cass. rej., 29 avril 1901, Ann. propr. ind. 1902, p.33.
31
TGI Paris, 15 janvier 1992, PIBD 1992, nº520, III, 219,
TGI Paris, 9 mars 2001, PIBD 2001, nº728, III, 495.
J.AZÉMA, Lamy droit commercial, 2009, n°1850.
32
Paris, 18 février 1986, Ann. propr. ind., 1987, p.113.
33
This classification of cases was made by
G.-G.LAMOUREUX, op.cit.(nº11), pp.82 et s.
34
G.-G.LAMOUREUX, op.cit.(nº11), pp.82 et s., J.FOYER et
M.VIVANT, op.cit.(nº4), pp.319 et s.
35
Paris, 5 juillet 1879, Ann. propr. ind., 1880, p.285.

36

G.-G.LAMOUREUX, op.cit.(nº11), pp.83 et s.
G.-G.LAMOUREUX, op.cit.(nº11), pp.83 et s.
38
G.-G.LAMOUREUX, op.cit.(nº11), p.84.
39
TGI Paris, 31 mars 1989, PIBD 1989, nº461, III, 436.
40
TGI Paris, 19 décembre 2003, PIBD nº785, III, 256.
41
G.-G.LAMOUREUX, op.cit.(nº11), pp.103 et s.
42
F.SAVIGNON, op.cit.(n°8), pp.522 et s., P.MATHÉLY,
op.cit.(n°26), p.347, op.cit.(nº2), p.299, J.FOYER et
M.VIVANT, op.cit.(nº4), p.319, Albert CHAVANNE et
Jean-Jacques BURST, Droit de la propriété industrielle,
5édit., 1998, Dalloz, nº444, p.268, F.POLLAUD-DULIAN,
op.cit.(nº2), nº549, p.235, Jacques Azéma etJean-Christophe Galloux, Droit de la propriété
industrielle, Dalloz, 6édit., 2006, nº437, p.272,
J.SCHMIDT-SZALEWSKI et J.-L.PIERRE, op.cit.(nº4), p.75,
Nicolas BINCTIN, Droit de la propriété intellectuelle, Lgdj,
2010, p.329, AIPPI Annuaire 1988/V, p.122.
43
C.LE STANC, op.cit.(nº26), nº223, pp.198 et s.
44
C.LE
STANC,
op.cit.(nº26),
nº256,
p.214,
G.-G.LAMOUREUX, op.cit.(nº11), p.159, J.FOYER et
M.VIVANT, op.cit.(nº4), p.320.
45
P.ROUBIER, op.cit.(nº2), pp.179 et s., C.LE STANC,
op.cit.(nº26),
nº256,
p.214,
G.-G.LAMOUREUX,
op.cit.(nº11), p.170, C.LE STANC, op.cit.(nº14), nº37.
46
F.MAINIÉ, op.cit.(nº24), nº1783, p.752, E.POUILLET,
op.cit.(n°26),
n°432,
p.421,
G.-G.LAMOUREUX,
op.cit.(nº11), p.160, F.POLLAUD-DULIAN, op.cit.(nº2),
nos555 et 557, pp.237 et s.
47
H.ALLART, op.cit.(n°5), n°644, p.144, E.POUILLET,
op.cit.,(n°26), n°432, p.421, P.ROUBIER, op.cit.(nº2), p.180,
A.CASALONGA, op.cit.(nº7), nº970, p.102, P.MATHÉLY,
op.cit.(n°26), p.353, G.-G.LAMOUREUX, op.cit.(nº11),p.161. F.POLLAUD-DULIAN, op.cit.(nº2), nº555, p.237,
A.CHAVANNE et J.-J.BURST, op.cit.(n°42), nº445, p.269,
J.AZÉMA et J.-C.GALLOUX, op.cit.(n°42), nº438, p.272,
F.POLLAUD-DULIAN, La propriété industrielle, Economica,
2011, nº613, p.332. Contra, J.SCHMIDT-SZALEWSKI et
J.-L.PIERRE, op.cit.(n°4), no179, p.76.
48
Lyon, 31 mars 1927, Ann. propr. ind., 1929, p.166.
49
TGI Paris, 15 mars 1973, PIBD 1973, n° 112, III, 306,
confirmée par Paris, 1er octobre 1975, PIBD 1976, n° 171,
III, 246.
50
G.-G.LAMOUREUX, op.cit.(nº11), p.165, C.LE STANC,
op.cit.(nº14), n°49, J.Azéma et J.-C.Galloux, op.cit.(n°42),
nº438, p.272.
51
A.CASALONGA, op.cit.(nº7), nº965, p.100, P.MATHELY,
op.cit.(n°26), p.354, G.-G.LAMOUREUX, op.cit.(nº11),p.166.
52
A.CASALONGA, op.cit.(nº7), nº965, p.100.
53
P.MATHÉLY, op.cit.(n°26), p.354, op.cit.(nº2), p.302,
C.LE STANC, op.cit.(nº14), n°49.
54
Lyon, 25 mai 1960, Ann. propr. ind., 1961, p. 11.
55
Even before the legislation, the transfer of the right ofpersonal possession was permissible（Paris 18 fevrier
1888 et Cass. 22 juillet 1890, Ann. propr. ind., 1890,
p.268., Yoshinobu Someno, “Hanhi,” Furansu hanrei
hyakusen (One hundred French Precedents), p. 254(1969)）.
56
E.POUILLET, op.cit.(n°26), n°432, p.421, P.MATHÉLY,
op.cit.(n°26), p.353, G.-G.LAMOUREUX, op.cit.(nº11),
p.182.
57
7e rencontre de propriété industrielle, Lyon 1978, Litec
37● 10 ●IIP Bulletin 2011 Vol.20

1979, p.130 (stated by COLLIN), C.LE STANC, op.cit.(nº26),
nº280, p.226.
58
Cass. req., 22 juillet 1890, Ann. propr. ind., 1890, p.268.
59
Cass. com., 18 décembre 1973, PIBD 1974, n°126, Ⅲ,
173.
60
Cass. req., 22 juillet 1890, Ann. propr. ind., 1890, p.268,
Cass. com. 18 décembre 1973, PIBD 1974, n°126, Ⅲ, 173,
E.POUILLET, op.cit.(n°26), n°432, p.421, P.ROUBIER,
op.cit.(nº2), p.180, A.CASALONGA, op.cit.(nº7), n°970,
p.102.
61
G.-G.LAMOUREUX, op.cit.(nº11), p.206.
62
ibid.
63
G.-G.LAMOUREUX, op.cit.(nº11), p.207.
64
G.-G.LAMOUREUX,
op.cit.(nº11),
p.209,
F.POLLAUD-DULIAN, op.cit.(nº47), nº616, p.333.
65
J.J.BURST, J.-J.BURST, “Group de sociétés et droit de la
propriété industrielle”, Dix ans de droit de l'entreprise,
Librairies techniques, 1978, p.266.
66
J.M.MOUSSERON et C.LE STANC, “La possession
personnelle d'invention brevetée”, loi de 1968-1978,
article 31 : Dossiers brevets 1978, Il, p. 35.
67
G.-G.LAMOUREUX, op.cit.(nº11), p.212, C.LE STANC,
op.cit.(nº14), nº43.
68
G.-G.LAMOUREUX, op.cit.(nº11), p.132.
69
For example, it may be proven by a design application（CA Lyon, 31 mars 1927, Ann. propr. ind. 1929, p.166）,a prototype（Lyon, 25 mai 1960, Ann. propr. ind. 1961,p.11）, or an order（TGI Lille, 23 juin 1971, PIBD 1972,
nº81, p.119）
70
Discussion on the objective of the Japanese system of
the right of prior use would be outside the scope of the
purpose of this study.
71
G.-G. LAMOUREUX, op.cit.(nº11), p.53.
72
Daishinin saibanreishu (Collection of prewar supreme
court cases), Vol. 8, p. 269, 1934(O)No. 662.
73
Daiminshu, Vol. 17, No. 1, p. 37, 1937(O)No. 1352.
74
Minshu, Vol. 23, No. 10, p. 1777, Hanji, No. 577, p. 74,
Hanta, No. 241, p. 81, Kinsho, No. 202, p. 7, 1966(O)No.
1360.
75
Kaminshu (Collection of lower court cases), Vol. 18, No.
11 and 12, p. 1187, 1966(Ne)No. 173, 1966(Ne)No. 174,
1967(Ne)No. 278.
76
Mutaizaisanken kankei minji gyosei saibanreishu(Collection of civil and administrative cases concerning
intangible property), Vol.9, No. 1, p. 222, Hanta, No. 353,
p. 30, 1975(Wa)No. 453, 1972(Wa)No. 3297.
77
Masataro Fujie, Kaisei tokkyhou youron (Elements of
the revised Patent Act), p. 99 (Ganshodo shoten, 1922)
78
This view is shared by Hatsushiro Miyake, Tokkyhou
kougi (Lecture on the Patent Act), p. 146 (Teikoku
hatsumei kyokai, 1926), Ichiro Kiyose, Tokkyohou genri(Principle of the Patent Act), p. 143 and subsequentpages (Ganshodo, Revised edition, 1929), Takatsugu
Yoshihara, Tokkyohou shouron (Detailed study of the
Patent Act), p. 151 (Yuhikaku. 1927), Kiyoaki Tanaka,
Tokkyo jitsuyoushinan ishou shouhyou houron (Study of
the Patent Act, the Utility Model Act, the Design Act,and the Trademark Act), p. 85 (Gansuido shoten, 1935),
Masami Hanabusa, Joukai kougyo shoyukenhou(Clause-by-clause explanation of the industrial propertylaws), p. 133 (Hakubunsha, 1952), Minoru Moribayashi,“Senshiyouken seido no sonzai riyu” (Raison d'etre of

IIP Bulletin 2011 Vol.20

the system of the right of prior use), Commemoration of
the 60th birthday of Prof. Ishiguro & Umase, Kougyo
shoyukenhou no shomondai (Various issues related tothe industrial property laws), p. 169 (Houritsu bunkasha,1972), and Sotaro Watanabe, Kougyo shoyukenhou
yousetsu (Elements of the industrial property laws), p.
75 (Yuhikaku, 1963). Prof. Kiyose stated that, even incases where a creation made by any person other than
the applicant was usurped, the requirement of good faith
may be regarded as satisfied (p. 144). This view is also
supported by Yoshitaro Sumida, “Tokkyo hatsumei nosenshiyouken ni yoru jisshiken ni tsuite (the right towork a patented invention under the system of the rightof prior use),” Tokkyo to shouhyo, Vol. 8, No. 12, p. 7
(1939).
79
Keikichi Hirata, “Kougyo shoyukenhou ni okeru
senshiyouken ni tsuite (The right of prior use under theindustrial property laws),” Minshohou zasshi, Vol. 11, No.
2, p. 204 (1930), Kikushirou Nagata, Kougyo
shoyukenron (Theory of industrial property rights), p.
496 (Fujishobo, 1950), Nobuo Monya, “Hanhi(Comments on court cases),” Jurist, No. 323, p. 126(1965), Ryuichiro Sengen, “Hanhi”, Minsho, Vol. 63, No.
6, p. 141 (1971).
80This interpretation was supported by Shoichi Iwara,
Tokkyohou gairon (Introduction to the Patent Act), p. 175(Ganshodou shoten, 1928), Kakuji Takeuchi, Tokkyohou(Patent Act), p. 408 (Ganshodou shoten, 1938),
Yoshitsugu Harima, “Hanhi,” Kigyohou kenkyu, No. 180,
p. 39 (1970), Tatsuki Shibuya, “Hanhi,” Keizaihou, No. 13,
p. 28 (1970).
81
Sueo Hoshiko, Tokkyo hatsumeiron (Theory ofpatented invention), p. 397 (Daido shoin, 1935)82
Based on this report, the law was revised into thecurrent law. (Japan Patent Office (Editor), Kougyo

shouken seido kaisei shingikai toushin setsumeisho(Explanation of the report issued by the council to revise
the industrial property system), p. 29 (Japan Institute ofInvention and Innovation, 1957)
83
Kazuko Matsuo, “Hanhi,” Hanta, No. 244, p. 93 (1970)
84
Koue Toyosaki, Kougyo shoyukenhou (Industrial
property laws), p. 256 (Yuhikaku, Revised and expanded
edition, 1980), Nobuhiro Nakayama, “Hanhi,” Jurist, No.
447, p. 139 (1970), Kazuo Morioka, “Senshioyouken no
youken to hani (Criteria and scope of the right of prioruse),” Toyo hougaku, Vol. 30, No. 1 & 2 combined issue,
p. 208 (1987), id., “Senshiyouken to nouhau (The right ofprior use and know-how),” Commemoration of the 70thbirthday of Prof. Someno, Kougyo shoyuken, Chushin
kadai no kaimei (Industrial property rights, Examination
on major issues), p. 178 (Keiso shobo, 1989), Kosaku
Yoshifuji (Author), Kenichi Kumagai (Editor), Tokkyohou
gaisetsu (Introduction to the Patent Act), 13th edition, p.
579 (Yuhikaku, 1998), Ryuichiro Sengen, Tokkyohou
kougi (Lecture on the Patent Act), P. 210 (Yuyusha, 4thedition, 2003). Those who adopted the narrowinterpretation included Hideaki Oda & Yoshio Ishikawa,Shin tokkyhou shoukai (Detailed explanation of the new
Patent Act), p. 292 (Nihon hatsumei shinbunsha, 1972),
Kazuhiko Takeda, Tokkyo no chishiki (Knowledge on
Patent), p. 469 (Daiamond, 8th edition, 2006), Maiko
Murai, “Hanhi,” Chitekizaisanhou Seisakugaku kenkyu,● 11 ●

Vol. 13, p. 234 (2006), Nobuhiro Nakayama, Tokkyohou(Patent Act), p. 459 (Kobundo, 2010), A criticism was
expressed by Shigetoshi Matsumoto, “Sengan shugi tosenshiyoken (First-to-file principle and the right of prioruse),” Commemoration of the retirement of Prof. Hara,
Kogyo shoyuken no kihonteki kadai (Basic issues related
to industrial property rights), p. 483 (Yuhikaku, 1971),
Nobuhiro Nakayama (Editor), Chushaku tokkyohou(joukan) (Annotated Patent Act, Vol. 1), [3rd edition](Seirin shoin, 2000), p. 846 [authored by Matsumoto &Mise], Nobuhiro Nakayama ＆ Naoki Koizumi, Shinchushaku tokkyohou (joukan) (Annotated Patent Act, Vol.
1), (Seirin shoin, 2011), p. 1250 [authored by Morisaki &Okada].
85
Daiminshu, Vol. 17, No. 1, p. 37, 1937(O)No. 1352.
86
Minshu, Vol. 23, No. 10, p. 1777, Hanji, No. 577, p. 74,
Hanta, No. 241, p. 81, Kinsho, No. 202, p. 7, 1966(O)No.
1360.
87
Nagao Okumura, “Hankai (Analysis of cases),” Saikou
saibansho hanrei kaisetsu minjihen (Explanation ofSupreme Court civil cases), FY1969, p. 664 (1972)88
Hirata, op.cit. (79), p. 202, Monya, op.cit. (79), p. 126,
id., “Hanhi,” Jurist, No. 449, p. 136 (1970), Shibuya,
op.cit. (79), p. 28, Harima, op.cit. (80), p. 39, Sengen,op.cit. (79), p. 141, Minoru Moribayashi, “Tokkyohou ni
okeru senshiyouken no seiritsu youken (Criteria for theright of prior use under the Patent Act),” Kigyohou
kenkyu, Vol. 175, p. 14 (1969), Shoichi Kidana, “Hanhi,”
Tokkyo hanrei hyakusen [Dai 2han] (One hundred
patent-related precedents [2nd edition]),” p. 175 (1985),
Morioka, op.cit. (84), “Senshiyouken no youken to hani
(Criteria and scope of the right of prior use),” p. 209, id.,
op.cit. (84), “Senshiyouken to nou hau (The right of prioruse and know-how), p. 178, Masami Ashidate, “Hanhi,”
Hougaku, Vol. 63, No. 3 (1999), p. 169, Hidesato Iida,“Senshiyouken (1), Hasseiyouken jujitsu (The right ofprior use (1), Facts as the criteria for the right of prioruse),” Toshiaki Makino (Editor), Kogyo shoyukenhou(Industrial property laws), [Saiban jitsumu taikei 9(Judicial practice system 9)], p. 308 (Seirin shoin, 1985),
Kazuo Morioka, “Tokkyo shingai sosho ni okeru
senshiyouken (The right of prior use in patent
infringement lawsuits),” Hakusan hougaku, No. 3 (2007),
p. 62. Nobuhiro Nakayama, “Hanhi,” Hougaku kyoukai
zasshi, Vol. 87, No. 11 & 12, p. 1091 (1970) did not use
the term “for its own benefit on its account” but used thejudgment criterion “on whose account it was conducted,”
which is practically the same as the aforementioned
criterion. The term “hands and feet” was used in
Nakayama, op.cit. (84), Tokkyohou (Patent Act), p. 464.
The criterion used to be expressed as “it is permitted aslong as it is conducted on its financial account (Hoshiko,op.cit. (81), p. 401). Hajime Kaneko & Yoshinobu Someno,
Kougyo shoyukenhou (Industrial property laws), p. 211(Nihon hyoronsha, Revised edition, 1968) stated that, if
the working of an invention has been commissioned to a
subcontract factory, the subcontractor would be entitledto hold the right of prior use as long as the invention wascommissioned together with the relevant business.
89
Okumura, op.cit. (87), p. 662.
90
Nakayama, op.cit. (88), p. 1091 and subsequent pages.
91
Matsuo, op.cit. (83), p. 92, Masao Miyake, Kaisei

tokkyohou zakkan (Comments on the revised Patent Act),p. 304 (Hanabusa kougyo shoyuken kenkyujo shuppanbu,
1971), Murai, op.cit. (84), p. 236, Morioka, op.cit. (88), p.
63. Though the term “affiliated institution” was not used,
this view was supported by Osamu Takura, etc., Tokkyo
shingai sosho no jitsumu, Shinkougyoshoyuken dokuhon(Judicial practice in patent infringement lawsuits,
Introduction to industrial property rights), (Tsusho
sangyo chosakai, 1970), p. 89, Matsumoto, op.cit. (84), p.
492 and subsequent pages, Yoshiyuki Tamura & Kazuo
Masui, Tokkyo hanrei gaido (Guidance on patent-related
precedents), p. 226 and subsequent pages [authored by
Tamura] (Yuhikaku, 3rd edition, 2005), Tsukasa
Matsumoto, “Hanhi,” Chizai kanri, Vol. 56, No. 1 (2006),
p. 119, Tatsuki Shibuya, Chiteki zaisanhou kougi I(Lecture on intellectual property laws I), p. 347(Yuhikaku, 2nd edition, 2006), Yoshiyuki Tamura, Chiteki
zaisanhou (Intellectual property laws), p. 286 (Yuhikaku,
5th edition, 2010). There used to be an interpretationthat it would constitute no infringement because it ishidden behind the holder of the right of prior use (RyoAriizumi, “Hanhi,” Hanmin, FY1938, p. 18). This
expression was subsequently used in Sengen, op.cit. (79),p. 144. There has also been an interpretation that, evenin a case where a subcontractor works the relevant
invention, if the subcontractor is under the control of theorder-placing company and is affiliated with said company,
the invention may be deemed to have been worked by
the order-placing company, which is the holder of theright of prior use (Nobuo Monya (Editor), Chushaku
tokkyohou (Annotated Patent Act), p. 212 [authored by
Kozo Mimino] (Yuhikaku, 1986).
92
Chitekisaishu(Collectionofintellectual
property-related cases), Vol. 24, No. 3, p. 894,
1988(Wa)No.1598. The court of appeal (Tokyo High
Court Judgment dated February 22, 1995, Chiteki saishu,
Vol. 27, No. 1, p. 23, 1992(Ne)No. 4898) upheld theinterpretation presented by the court of prior instanceabout the right of prior use.
93
Yasuyuki Echi, “Hanhi,” Hanji, No. 1937 (Hanrei
hyoron, No. 572), p. 47 (2006), Shibuya, op.cit. (91), p.
347, Morioka, op.cit. (88), p. 63 and subsequent pages,
Tamura & Masui, op.cit. (91), p. 226 [authored by
Tamura], Murai, op.cit. (84), p. 227.
94
“Sinpojium, Chiteki zaisanken to senshiyouken,
Shitsugi outou (Symposium, Intellectual property rights
and prior use right, Q & A),” (Japan Association ofIndustrial Property Law, Annual report, Nenpo (Annual
report), No. 26, pp. 195-196 (2003) [stated by Masayoshi
Sumida & Kazufumi Dohi & Nobuo Monya & Naohiko
Tatsumi], Toshiaki Makino, Toshiaki Iimura, Ryoichi
Mimura, Wataru Sueyoshi, Seiji Ohno (Editors), Chiteki
zaisanhou no riron to jitsumu [Dai 1kan] (Theory andpractice of the intellectual property laws [Vol. 1]),
(Shinhippon houki shuppan, 2007), p. 238 [Yasuhiro
Ichiba]95
Chiteki saishu, Vol. 24, No. 3, p. 894, 1988(Wa)No. 1598,
The court of appeal (Tokyo High Court Judgment dated
February 22, 1995, Chiteki saishu, Vol. 27, No. 1, p. 23,
1992(Ne)No. 4898) upheld the view presented by the
court of prior instance on the right of prior use.
96
1997(Ne)No. 3586.

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Nakayama, op.cit. (84), Chukai (Annotation), p. 907 andsubsequent pages [authored by Nobuhiro Nakayama],
Nakayama ＆ Koizumi, op.cit. (84), Shin chukai(Annotation), p. 1250[authored by Izumi Hayashi].
98
A very detailed description of the means of proof ispresented in Japan Patent Office [Editor], Senshiyouken
97

seido no enkatsuna katsuyouni mukete, Senryakutekina
nouhau kanrino tameni (Effective use of the prior use

system for strategic know-how management), p. 29 andsubsequent pages (Shouji houmu, 2006)99
Minshu, Vol. 23, No. 10, p. 1777, , Hanji, No. 577, p. 74,
Hanta, No. 241, p. 81, Kinsho, No. 202, p. 7, 1966(O)No.
1360.
100
Daiminshu, Vol. 17, p. 2700, 1938(O)No. 1145,
Comments on this case are presented in Tatsukichi
Minobe, “Hanhi,” Kokka gakkai zasshi, Vol. 53, No. 6, P.
851 (1939), Shizuo Tawara, “Hanhi,” Minshouhou zasshi,
Vol. 9, No. 6, p. 1239 (1939), Ryo Ariizumi, “Hanhi,”
Hanmin, FY1938, p. 622, and Masuji Hara, “Hanhi,”
Tokkyo hanrei hyakusen (Bessatsu Jurist, No.6), p. 178(1966)
101
Yoshifuji, op.cit. (84), p. 549, Ichiro Nakayama,“Kyoyuni kakaru tokkyoken no jisshikyodaku ni taisuru
tano kyoyusha no doui ni tsuite (Consent of another joint
patentee for granting a license of a joint patent),” AIPPI,Vol 47, No. 2, p. 12 (2002)
102
Minobe, op.cit. (100), p. 852, Tawara, op.cit. (100), p.
1242, Ariizumi, op.cit. (100), p. 624.
103
Matsumoto, op.cit. (91), p. 120.
104
Minoru Moribayashi, “Tokkyohou ni okeru
senshiyouken no kouryoku (Effect of the right of prioruse under the Patent Act),” Kigyohou kenkyu, Vol. 198, p.
29 (1971)
105
Echi, op.cit. (93), p. 47, Shibuya, op.cit. (91), p. 347,
Morioka, op.cit. (88), p. 63 and subsequent pages,
Tamura & Masui, op.cit. (91), p. 227 [authored by
Tamura], Murai, op.cit. (84), p. 227, Chiba District Court
Judgment dated December 14, 1992 (Chiteki saishu, Vol.
24, No. 3, p. 894, 1988(Wa)No. 1598)
106
American Investors Protection Act of 1999. A
discussion on the issue of licensing and subcontracting in
the United States is presented in Miyuka Nishi,“Beikoku hanrei ni okeru shitauke seizouken (have-maderights) no kaishaku (Interpretation of the have-maderights in U.S. precedents),” Patent, Vol. 63, No. 7, p. 92(2010)IIP Bulletin 2011 Vol.20● 13 ●