19

Comparative Study on the Basis of the Prior User Right(Focusing on Common Law)（*）
Research Fellow: Takeo Masashi

Suppose A had filed a patent application for an invention, but, prior to A’s filing, the other B had made thesame invention independently and has been making and selling a product embodying such invention. In thiscase, could A be granted a patent? Or, would A’s patent be found invalid? If A is to be granted a valid patent,
would B be allowed to continue making and selling the product even after a patent has been granted to A? The
Japanese Patent Act [JPA] provides the following solutions to this question: (i) in cases where A’s invention lacks
novelty due to B’s making and selling (Article 29 paragraph (1) of JPA), A cannot be granted a patent, and B
will be able to continue making and selling the product, (ii) in cases where A’s invention is still new, A will be
granted a patent, but, nevertheless, B will be allowed to continue making and selling pursuant to and to theextent of prior user right (Article 79 of JPA). But these solutions are, from a historical and comparative
perspective, not exclusive ones. For example, the “classical” UK Patent Law prior to 1977 and US Patent Lawprior to reform in 2011 have provided different solutions from those of Japan. The purpose of this study is toinvestigate why they have adopted different solutions in adjusting the conflict between patentee and prior user
and, thereby, to clarify the characteristic of the prior user right of JPA.

I

Introduction

1

Overall Question in This Research –[Basic Question]

license and will be allowed to continue making andselling without consideration. Moreover, the patentright in question shall not be effective against the
product made prior to A’s filing pursuant to Article
69 paragraph (2) item (ii) of JPA.
The concepts shown by the solutions provided
by JPA as briefly illustrated above, also apply, inprinciple, to German law, which had a major impact
on JPA, and also to the treaties and national laws ofEuropean countries.
Nevertheless,fromahistoricalandcomparative perspective, the aforementioned
regulations did not necessarily constitute exclusive
solutions. More specifically, the solutions provided
by the traditional UK Patent Law prior to theamendment in 1977 (hereinafter referred to as the"Classical UK Patent Law") and by the US Patent
Law prior to the reform in 2011 (hereinafterreferred to as "US Patent Law Prior to Reform")
were completely different from those of JPA.

[Basic Question]
Suppose A had filed a patent application for
an invention, but, prior to A’s filing, the other B had
made the same invention independently and has
been making and selling a product embodying suchinvention. In this case, could A be granted apatent? Or, would A’s patent be found invalid? If A
is to be granted a valid patent, would B be allowed
to continue making and selling the product evenafter a patent has been granted to A?
The current Japanese Patent Act [JPA]
provides the following solutions to this "basic
question": (i) in cases where A's invention lacks
novelty due to B’s making and selling (Article 29
paragraph (1) of JPA), A cannot be granted a patentand therefore, B will have no problem in continuingsuch making and selling.
In contrast, (ii) in cases where A's invention isstill new, A may be granted a patent. On the other
hand, B, pursuant to the prior user right (Article 79
of JPA), and to the extent of it, will have a statutory

2

The Purpose of This Study

The purpose of this study is to examine theconcept or value judgment underlying thelegislations of other countries which provide
solutions to the "basic question" different fromthose of JPA as briefly mentioned above. Moreover,(*) This is an English translation of the summary of the report published under the Industrial Property Research

Promotion Project FY2011 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 shallbe prevailing.
●

IIP Bulletin 2012 Vol.21

1 ●through such process, this study aims to gain a
new perspective which would be useful inclarifying the purport and characteristics of theJapanese patent system where patent and prioruser right go together.

public, in view of avoiding a de facto extension of
the patent term.
Today, it may be said that we have a generalimage of patent system that a patent for an
invention shall be granted in return for public
disclosure of it. But, under the Classical UK Patent
Law, they have another image: use of an invention
itself was treated as the principal bar to patent anddisclosure of an invention was considered to be adifferent concept. These are, we could say,characteristics of the Classical UK Patent Law. So
then, the question is, how did the Classical UK
Patent Law come to develop such characteristic?

Ⅱ Study on UK Law
1

Classical UK Patent Law – decision of
the House of Lords in Bristol-Myers
Company (Johnson’s) Application

It is the decision of the House of Lords inBristol-Myers Company (Johnson’s) Application 1
under the former law (Patents Act 1949) that is asuitable starting point for understanding thesolutions provided by the Classical UK Patent Law.
This decision pointed out that the concept that
"No one was to be given the right to stop othertraders from doing what they had done before,"2 i.e.
the ‘right to work’ principle, served as the legal
policy or legal principle consistently since theenactment of the Statute of Monopolies, andclarified that even if prior use constituted"uninformative" use as in this case, there would be
no change in the application of this legal policy orlegal principle. Accordingly, it may be said that thisdecision placed the "solution provided by theClassical UK Patent Law," where A would not be
granted a patent or A’s patent would be found to beinvalid in relation to the "basic question", as thelegal policy which had been consistently applied
since the enactment of the Statute of Monopolies.
In this decision, the legal policy or legal
principle mentioned above was regarded as aconcept which differed from the written disclosureof inventions required for grant. It was deemed to
be of no importance in determining the novelty of
the invention whether the prior user knew what
the invention in question was, or whether the
information of the invention in question had
become available to the public from the prior use.
Consequently, it was decided that the invention inquestion was anticipated even though the prioruser had done his act without knowledge, as it was
not necessary that an infringer should haverealised that he was doing an infringing act for the
purposeofinfringement
(i.e.
the
reverse-infringement test).
In addition to the two points mentioned above,it is remarkable that the decision pointed out
another traditional concept that once an invention
had been commercially used , it was no longer
regarded as "new," even if the information of theinvention itself had not yet become available to the2

Background to the "Solution provided by
the Classical UK Patent Law"

The original purpose of the UK patent system
was the very promotion of industry, and therefore,use (working) of an invention itself was regarded
as the most important element. In addition, theStatute of Monopolies was enacted with the
purpose of eliminating the mischief caused by thearbitrary grant of monopolies by the Crown,
particularly those which harmed other traders who
were already engaged in business before themonopoly was granted. Hence, it was the prior use
itself and the prior users themselves that were to
be protected and it was more than natural thatprior use was considered to constitute a bar topatent.
In this way, the early UK patent system placed
more weight on use of an invention rather than ondevising of an invention. Therefore, as to whoshould obtain a patent, "true and first inventor"
was interpreted to include not only the actual
deviser of an invention but also the person who
imported an invention from abroad, and thispractice had been continued until the revision to
the current legislation. Based on suchinterpretation of the "inventor," it can be presumed
that the "first" inventor was not necessarily
decided based on the time of devising an invention.
Indeed, initially, the standard of time for deciding
the "first" inventor was the time of the grant of apatent, although it was later changed to the time
(date) of filing a patent application. So, even if therelevant person were not the first deviser, he/she
could be regarded as the "first inventor."
Under the Classical UK Patent Law, it wasconsidered that Patent Law had no role to play any
more if a prior user already existed and the public
had already enjoyed the benefit of the invention. It
can be said that what was valued in those days wasbusiness relating to the use of an invention rather●

2 ●IIP Bulletin 2012 Vol.21

than devising of an invention, business operators
rather than inventors, and utility (benefit) of an
invention (utility of a patented product) rather thaninformation of an invention itself. Certainly they
had a view of price (consideration) for disclosure of
an invention, but rather, they had an idea that apatent is a price (consideration) for use of an
invention.
In other words, if any business activities
relating to the use of an invention had already been
conducted, the very existing business was
regarded as what was to be protected in terms ofnational industrial policy, and the grant of a patent
which might harm such existing business wasdeemed unreasonable. Moreover, it was also
deemed unreasonable to grant an additional patentmonopoly in cases where a de facto monopoly had
already been made based on prior use, because if
do so, it would mean that the Crown (the State)
was taking part in prolonging the monopoly
unreasonably.
3

absolute novelty corresponding to the EPC in the
Patents Act 1977 which amended the former Act inorder to harmonize with the international
conventions, especially EPC.
(2) Introduction of the Concept of Absolute
Novelty in the Patents Act 1977
As a result of introducing the concept ofabsolute novelty, it was no longer permissible toprovide "secret prior use" as aground for invalidity(the revocation) of patent, as in Section 32(1)(l)of the Patents Act 1949, and thus that provision
was repealed. Deletion of such provision alone led
to the possibility of leaving the secret prior user
with no protection, so the Banks Committee
recommended the establishment of a prior user
right, which is now provided in Section 64 of thecurrent UK Patents Act.
As a result of amendments mentioned above,the "previous policy of the law" which had been
noted in the decision of the House of Lords in theBristol-Myers case and maintained under the
Patents Act 1949 dramatically turned into "The Old
Law." Regarding this drastic change, the decision of
the House of Lords in Merrell Dow v. Norton 3
noted as follows:"Drastic Change in the Legal Policy"
through the enactment of the Patents Act
1977

The Classical UK Patent Law, which had thecharacteristic mentioned above, achieved a drasticchange through the enactment of the Patents Act
1977. Such change was made in response to ademand to harmonize the UK patent system withthose of other European countries.

"The 1977 Act therefore introduced asubstantial qualification into the old principle that apatent cannot be used to stop someone doing what
he has done before. If the previous use was secretor uninformative, then subject to section 64, it can.
Likewise, a gap has opened between the tests forinfringement and anticipation. Acts done secretlyor without knowledge of the relevant facts, which
would amount to infringements after the grant of
the patent, will not count as anticipations before."4(1) Harmonization in Europe – The Conceptof Absolute Novelty
Work on the enactment of the Patents Act
1977 started with the purpose of making theamendments necessary for the ratification of
so-called Strasbourg Convention signed in 1963.
Article 4 of that Convention which provided fornovelty, contained the concept of "absolute novelty"
where everything made available to the public
before the date of the patent application may be
used for the determination of novelty, without
either geographical or time limits. Thus, in 1970,
the Banks Committee which examined the patent
system and patent law recommended in its report
the adoption of the concept of "absolute novelty."
Later, in 1973, so-called European Patent
Convention [EPC] which attempted to establish
European patent system was concluded. This
convention contained the concept of absolute
novelty, in almost the same wording as provided forin the Strasbourg Convention. Accordingly, the UK
Patent Law came to introduce the concept of

As seen from the above, the introduction of
the concept of absolute novelty in the Patents Act
1977 had significance in that the subject of the test
for anticipation was limited to the invention itself,
i.e. the very knowledge or information of theinvention. Accordingly, under the new Act, nomatter how many products embodying an invention
are on the market, if it is absolutely impossible toobtain information on the invention from any
reverse engineering efforts or if the reverse
engineering itself is impossible, such invention
itself does not form part of the state of the art and,
therefore, it is still new and a patent for it can be
granted. Based on such patent, which has become
effective under the new Act in contrast to theformer law, the use of the invention which the
public, based on freedom, commenced without●

IIP Bulletin 2012 Vol.21

3 ●infringing any of the rights or interests of others
could be injuncted However, to avoid such an
unreasonable result which would be insupportable
under the principles of the former law “Right tocontinue use begun before priority date”, i.e. prioruser right, provided in Section 64 of the current
Patents Act, was established. Only when this rightis admitted, would it be unacceptable to use apatent to stop the act of prior user. And, therefore,
it may be said that it is only to that extent that the
principle of the former law, i.e. the right to work
principle, is still in existence under the current law.

unpatented product made by a patented method issold and the method remains secret, such a salecreate an “on sale” bar if engaged in by theapplicant him/herself, but not if engaged in byanother.
(2) Origin of the "Double Standard"
Such a "double standard" in Section 102(b) of
the US Patent Law Prior to Reform has its origin in
the historical development of that provision.
Section 102(b) has been developed as a provision
inextricably bound up with the so-called
experimental use doctrine, i.e. the issue of thescope of acts which applicants are permitted to
conduct prior to filing an patent application.
To put it another way, this refers to a concept
where an invention shall not be used commerciallyprior to filing an application, which is the same asthat under the Classical UK Patent Law.

Ⅲ Study on US Law
1Section 102(b) of the US Patent Law Prior
to Reform

As mentioned in the Introduction, we can finda common rule applied to the situation of the “basic
question” in some countries, and the rule relates tothe use of an invention and the time of filing. The
purpose of this study is to examine the details ofand thoughtsbehind such a rule. From thisstandpoint, it is the provision of Section 102(b) of
the US Patent Law Prior to Reform which provides
for "public use" and "on sale" that shall be studied.

2

Historical Development of Section 102(b)of the US Patent Law Prior to Reform –Regarding The Vested Rights Clause

The so-called vested rights clause itself,
which was provided in Section 7 of the Patent Act
of 1839, was not equivalent to what we call a prioruser rights; rather it was a provision similar to theprovision of Article 69 paragraph (2) item (ii) of thecurrent Japanese Patent Act which focuses ontangible products. Further, as machines wererequired to be purchased from the inventor (orwith his/her knowledge or consent, etc.) under the
Patent Act of 1870, the issues for which such
clause was provided for were dissolved by the firstsale doctrine or the doctrine of implied license
concerning the distribution of patented products;
these doctrines were different from theabovementioned Article 69(2)(ii) of JPA. So finally,
the vested rights clause was deleted from the law.
Judging from this history, it would have to be said
that the clause itself had a limited significance forthis study.
Yet, what is important is the discussions
carried out in regard to the vested rights clause
which resulted in the development of theprovisions (and interpretations) of Section 102(b)of the US Patent Law Prior to Reform (including
the grace period provision) and the problems whichbecame apparent in the course of such discussions.
For example, an early judgment 8 examined
separately the use of an invention by anindependent (second) inventor and that by piracy,
in addition to the use of an invention by theinventor him/herself. However, gradually, the use(1) "Double standard" concerning Section
102(b) of the US Patent Law Prior to
ReformAlthough no difference can be found in thetext, in regard to the "public use" and "on sale"requirements set forth in Section 102(b) of the US
Patent Law Prior to Reform, different treatments
have been made between in the case where the"public use" or "on sale" was made by the applicant
him/herself and in the case of "public use" or "onsale" by another (e.g. an independent inventor).
First, if the applicant him/herself madecommercial use of a machine or method which ispatentable invention prior to the critical date of theapplication, such commercial use shall constitute a"public use" even if the secrecy of such machine or
method has been maintained, and therefore, suchmachine or method shall not be patented5.
In contrast to this, in cases where the use wascaused by a third party, the existence of "publicuse" shall be determined based on the generaltests for novelty, i.e. whether or not the subject
matter of the invention has been disclosed or has
become available to the public through such use6.
And as to “on sale” bar, it was noted in a
judgment that such "double standard" treatment
should also be applied7; it was noted that where an●

4 ●IIP Bulletin 2012 Vol.21

of the invention by independent inventors came tobe ignored and only the two propositions, i.e. "thecommercial use of the invention by the inventor
him/herself prior to his/her application shall not beallowed" and "the inventor should be protectedfrom the public use of the invention by piracy"came to be emphasized.
This trend is considered to have occurred dueto the fact that the US Patent Law adopted theconcept where the first inventor was the only one
who could dedicate the invention to the public (orcause the patent to lose its novelty and to be in the
public domain). A later judgment rendered by theSupreme Court of the United States9 interpreted
that, pursuant to Section 6 of the Patent Act of1836, it was concluded that in cases where an
invention was in public use or on sale without theconsent of the inventor, such public use or on sale,
regardless of the length thereof, did not constitutea ground for invalidity, but later a change was madethat such public use or on sale of the invention
shall not constitute a ground for invalidity as longas it had been made within the grace period
pursuant to Section 7 of the Patent Act of 1839.
Hence, it may be said that, to that extent, the rightof the public was extended pursuant to the Patent
Act of 1839. On the other hand, provided it iswithin the grace period, even the dedication of theinvention to the public has been allowed only to thefirst inventor.
3

general competition policy concerning inventions,a concept presenting the starting point or mainprinciple for the regulation of monopoly. In fact, themore we consider the disclosure of an invention by
filing an application to be significant as a purpose of
the patent system, the more apparent it may bethat trade secret protection is contrary to such
purpose in some instances.
Yet, the Classical UK Patent Law, whichplaced weight on the use of an invention itself,gave no indication that the use of (entrance into)
the patent system was a fundamental rule. Rather,under the Classical UK Patent Law, the patent
system was regarded as an exception to thegeneral prohibition of (the creation of) monopolies,
so it could be said that the way of thinking is quite
opposite.
This difference is considered to have resulted
from the fact that the first-to-invent rule wasadopted in the US Patent Law and thereby theconcept of the public domain differed from that of
the Classical UK Patent Law. More specifically, the
US Patent Law may be deemed to have made abreak with the concept taken under the Classical
UK Patent Law which gave weight to existing
business, by adopting the concept that the firstinventor was the only one who could dedicate theinvention to the public or could establish the publicuse, etc. of the invention which would cause thepatent to lose its novelty (within the grace period).
Under US Patent Law, the public use, etc. of an
invention by persons other than the first inventor
shall not be taken into consideration as a bar to
obtaining a valid patent so long as such public use,etc. was made within the grace period, andtherefore, the protection of such persons had been
narrowed in comparison to the Classical UK Patent
Law.
However, this merely means that a patent may
be granted even if there was a prior user and theuse of prior user may be prevented by the patent.
Accordingly, it may be said that the inventor should
file a patent application if he/she wants to avoid
such risk, but not that it is unacceptable that aninventor, taking such risk, uses his/her invention
without filing an application.
This view is reinforced with the difference inthe protection provided by each system. It is apossible view that trade secret protection, as it
does not require disclosure of an invention, isrelatively weaker than patent protection, forexample, trade secret law does not exclude
independent (honest) inventors. If the protection
available under the two systems were the same,the conflict between them would pose a more

Relationship with the System of Trade
Secret Protection – Based on Kewanee
Oil case

In Kewanee Oil case10, several opinions wererepresented in regard to the relationship between
the system of trade secret protection and thepatent system. Specifically, on one hand thedissenting opinion pointed out that the use of(entrance into) the patent system was afundamental rule and therefore inventors werecompelled to file patent applications; on the other,
the concurring opinion (and the opinion of thecourt) pointed out that the patent system didn’t
exert pressure on inventors to file patentapplications and merely "offer" inventors to do soIn this regard, the origin of the UK and USPatent Law isfound in the Statute of Monopoly, i.e.
antitrust law. According to this fact, in one way it
may be straightforward to understand, as thedissenting opinion, the concept of "monopoly for acertain period of time in consideration of thedisclosure of the invention", not as a mere concept
under the Patent Law, but as one relating to the●

IIP Bulletin 2012 Vol.21

5 ●serious problem, but as long as there is any
difference in their effects, it is possible to view thatthe inventor is merely being offered multiple
options and the inconsistency regarding disclosureis allowable.
Now, since we accept the coexistence of thetwo systems, it may result that an inventor shouldbe allowed to choose either protection which
seems more favorable in view of the nature of
his/her invention, etc.: patent protection which isrelatively stronger but has a time limitation, ortrade secret protection which is relatively weaker
but the monopoly continues as long as theinvention is kept secret. Indeed, this choice itself
has been accepted.
However, even if trade secret protection andpatent protection could be chosen at will, the US
Patent Law Prior to Reform took the view thatonce an inventor chose trade secret protection
which did not accompany disclosure of an invention
and therefore was unfavorable for the Patent Law,it was unacceptable any more that the inventor
made a change to patent protection later. Morespecifically, this was the interpretation of Section
102(b) of the US Patent Law Prior to Reformwhereby, if the applicant used the inventioncommercially prior to the filing, such use should be
deemed to constitute "public use" or "on sale" and apatent could not be granted, even if the invention
had not become available to the public and so wasstill new.
As illustrated above, in the US Patent Law,
while the coexistence of trade secret protection
system itself was admitted, within patent system,
the use of an invention without disclosing it byfiling a patent application was considered as
essentially not being in accord with the purpose of
the Patent Law. This way of thinking had aninterpretive significance in the US Patent Law as afundamental idea of the system. The emphasis on
the interests enjoyed by the public through theprompt (public) disclosure of an invention, coupledwith the view that the de facto extension of theterm of monopoly should be avoided, formed theinterpretation of Section 102(b).

Ⅳ

Discussion

1

Addendum: Australian Law

In contrast, in legislating the current Act(Patents Act 1990 (Cth)), while s.100 (1)(l) of theformer Patents Act were deleted, a provisionequivalent to that providing so-called prior user
right were established to protect prior users. In
this point, the Australian Patents Act had anexperience similar to that of the UK in revising theformer Act into current one (Patents Act 1977).
On the other hand, Australia established arequirement for patentability which the UK current
Act doesn’t have. In s.18(1)(d) and s.18(1A)(d) ofPatents Act 1990 (Cth), it is provided as arequirement for patentability that the invention
was not secretly used derived from the patentee.
The theoretical basis of this requirement is toprevent the patentee from enjoying a de facto
extension of the monopoly period without public
disclosure of the invention11. This is the same viewas indicated in the Classical UK Patent Law and USPatent Law Prior to Reform. As a result of theestablishment of these provisions, with regard to abar to patent, the Australian Patent Law is taking
basically the same approach as the "double
standard" approach under the case law in the US
Patent Law Prior to Reform.
2

Comparison of the Three Laws

While the Classical UK Patent Law took theview that the prior use of an invention by anindependent inventor or by the public should beprotected, i.e. the right to work principle, its
purpose was to avoid the de facto extension of themonopoly period in cases where a patentapplication had been filed after secret use. The
former view may be concerned solely with the useof an invention by persons other than the applicant
and the latter, mainly with the use of an invention
by the applicant him/herself. So it is possible toview that Section 32(1)(l) of the UK Patents Act
1949 defined different secret use by different
entities collectively as one ground for revocation ofpatent.
In contrast in the United States, as lessemphasis was placed on the necessity for theprotection of prior use by a third party due to theadoption of the first-to-invent rule, it was merely
the general anticipation rule that was applied when
it came to public use, etc. of an invention by a third
party. On the other hand, there was the same viewthat a de facto extension of the monopoly period
was to be prevented as under the Classical UK
Patent Law. Rather, it may be able to say that US
Patent Law sometimes emphasizes the significanceof prompt application much more than those of

Under the former law in Australia (Patents Act
1952 (Cth)), if an invention was secretly used byanyone in Australia before the priority date, suchuse constituted a ground for revocation of thepatent (s.100(1)(l)).
●

6 ●IIP Bulletin 2012 Vol.21

other first-to-file rule countries. Consequently, incases where the applicant him/herself had used theinventioncommercially,notthegeneralanticipation rule buy a strict rule should be applied
and the applicant came to lose his/her right toobtain a patent even if the invention were notavailable to the public.
The Australian Patent Law also inherits theview of preventing a de facto extension of the termof the protection as the tradition from the UK
Patent Law. Once the inventor has chosen to use
the invention commercially as a trade secret,he/she will not be allowed to later choose suchinvention to be protected by a patent, even if theinvention hasn’t been available to the public. On
the other hand, with respect to the prior use of an
invention by a third party, the Australian Patents
Act provides a solution similar to that of thecurrent UK Patents Act, i.e. "patent right on one
hand and prior user right on the other," which
contrasts sharply with the US Patent Law Prior to
Reform.
3

the "exchangeable relationship" mentioned above.
Moreover, it may rather be presumed that theconcept of absolute novelty was introduced with
the implication that such matter shall not be taken
into consideration. Thus, it could be said that the
UK Patent Law had no option but to delete Section
32(1)(l) of the Patents Act 1949, "secret prior use,"
in making an amendment to the Patents Act in1977.
If this were the case, the Australian Patents
Act which provides for secret prior use derived
from the applicant as a bar to patent may bedeemed as not adopting the concept of absolute
novelty in a strict sense. In fact, there is an article
which suggests that, unlike the UK, Australia has
not been subject to external pressure to harmonize
its patent legislation. Similarly, the US Patent Law
Prior to Reform may also be deemed as not
adopting the concept of absolute novelty in a strict
sense.
(2) Compatibility with the Prior User Right
Under the Patents Laws of common law
jurisdictions, in preventing the de facto extensionof the term of patent protection, it is argued thatonce an inventor has exploited trade secret system,
it is unacceptable that the inventor later exploits
patent system in addition.
Leaving aside the pros and cons of such anargument, I should like to question whether suchview is compatible with prior user right.
Specifically, if it were unacceptable that "at first useof an invention as a trade secret and then patentmonopoly" by an applicant him/herself, it would be
similarly unacceptable that "at first use of an
invention as a trade secret and then entry into
patent monopoly based on statutory license
without consideration" by a prior user. Or it might
be much more unacceptable, as the prior user has
not even filed an application by him/herself.
For this reason, the Classical UK Patent Law,
which focused on the use of an invention itself andwas directed straightforwardly against the mischiefof the continuance of monopoly in the market ofpatented product regardless of who held themonopoly, sought to resolve this problem by simply
invalidating the patent (not granting any patent).
On the other hand, the US Patent Law, whichsought to grant a patent to the first inventor andtherefore focused on the entity to obtain a patent,
may be understood to have adopted an approach to
avoid the emergence of any entity which will enjoy
an unreasonably extended monopoly period by
granting a patent to the first inventor on one handand denying prior user right on the other.

Prevention of the De Facto Extension of
the Term of Patent Protection(1) The Consideration for the "Monopoly fora Certain Period of Time"First of all, the view that preventing a de facto
extension of the term of patent protection which iscommon to the laws of the three countries shall be
examined. In this regard, taking into account thehistorical development of Patents Law in common
law countries where the Statute of Monopoly,
which was a codification of the rules of common law,prohibited monopolies in general but approved
patents as exceptionally allowable monopolies fora certain period of time, a monopoly is merely an
exception and thereby the approach of strictly
controlling "monopoly for a certain period of time"
may well be understood as natural.
Nevertheless, today’s Patents Law (or theconcept of absolute novelty) puts weight on the
public disclosure of information of an invention
itself through the filing of a patent application andplaces the concept of novelty (only) as an issue as
to whether or not the information of an invention
has been available to the public. Under such Law(or concept), only the "public disclosure of
information of an invention itself" and the"monopoly for a certain period of time" are in an
exchangeable relationship, and therefore, it would
have to be said that whether or not there had been
a de facto monopoly in the market of a "productembodying (utility of) an invention" is irrelevant to●

IIP Bulletin 2012 Vol.21

7 ●If this understanding were correct, the"absence of prior user right" in the Classical UK
Patent Law and US Patent Law Prior to Reform
may be found to be fairly logical conclusion, apartfrom the pros and cons of these approaches.
Conversely, it is expected to be extremely
difficult to provide a consistent explanation on theapproach taken under the Australian Patent Law intheory.

matter may become a barren controversy.
While Patent Laws (on the first-to-file rule) incivil law countries concentrate on the issue of thenature of an invention as the object of patent rightat the time of filing (lack of novelty), the Patent
Law especially in the US or Australia focuses on
the manner of the acts conducted by the subject(entity) claiming a patent right during the period
from the (completion of the) invention until thefiling of an application, and takes an approach tocause him/her to lose the right to obtain a patent,
regardless of the fact that the invention as theobject of patent itself is patentable.
Incidentally, as remarked above, under the UK
and US Patent Law, it is sometimes argued that it
is unreasonable to allow an inventor who has oncechosen trade secret to make a switch to patent
protection which may exclude even an independent
inventor, after receiving any information that
his/her competitor is about to succeed indeveloping the same art. Yet, it is not altogether
clear as to how many patent applications are likely
to be actually filed in such a situation. This
argument should further be examined as towhether or not it is based on actual proof or if it israther some sort of ideological arguments.

4

Importance of (Public) Disclosure of an
Invention
Next, I would like to examine the view ofprompt (public) disclosure of an invention as
particularly noted under the US and Australian
Patent Law. Although this issue may basicallyoverlap with the view of preventing a de facto
extension of the term of patent protection, it
seems to contain a different viewpoint to someextent. Therefore, separate examination has been
made as follows.
First, it is indeed undeniable that the objectiveof US Patent Law "To promote the Progress of
Science and useful Arts" (Article 1 Section 8
Clause 8 of the United States Constitution) shall befully achieved only if a patent application is filed as
promptly as possible after the completion of an
invention.
However, if the novelty of an invention has notbeen lost even if such invention had beencommercially used, there should still be social
merit in having the information of the invention
itself being publicly disclosed through the filing of apatent application. Nevertheless, if such invention
were to be denied its patentability as a result ofcommercial use, wouldn’t this be regarded as
wasting the opportunity to have a new invention
publicly disclosed?
In other words, as long as an invention has notbeen available to the public yet and so is still new
at some point in time, it could be said that rather
than make the criticism that "the invention shouldhave been publicly disclosed much earlier" (andleading such invention to be continuously used as atrade secret), it would, to some extent, contributeto the prompt public disclosure of the invention toleave the possibility of filing a patent application forsuch invention by keeping it patentable, whilesetting aside the question as to how many
applications would actually be filed in suchsituation. Yet, this issue may stem from thefundamental difference between the first-to-filerule and first-to-invent concerning the point oftime for judging the promptness of public
disclosure, and therefore, any discussion on this5

Conclusion

Finally, I would like to conclude this report byexamining the significance that the concepts
underlying the laws of the countries as studied
above may have in relation to the Japanese Patent
Act and prior user right.
First of all, as mentioned above in regard to
the Australian Patent Law, there seems to be somedegree of inconsistency in applying the legal
system of prior user right while taking the viewthat a de facto extension of the term of patent
protection should be prevented. Hence, in theory,
it seems difficult to provide in the JPA that thecommercial use of an invention by an applicant
him/herself prior to the application should
constitute a bar to obtaining a valid patent.
However, as it seems, in the first place, that taking
the view that the prevention of a de facto extensionof the term of patent protection itself is unfamiliar
to Japanese Patent Law, the needs to establish sucha provision shall not unexpectedly arise unlessthere are requests from other countries forharmonization.
Secondly, also in terms of the concept ofnovelty which has been adopted in Japan, taking
the view that a de facto extension of the term ofpatent protection should be prevented seems to be●

8 ●IIP Bulletin 2012 Vol.21

difficult in Japan. If an invention is new at the timeof filing, the public disclosure of the information ofsuch invention and the monopoly for a certain
period of time are in an exchangeable relationship,
and therefore, it seems unnecessary and,furthermore, inappropriate to question whether or
not the invention had been used commerciallyprior to the application. However, continuousstudies are expected to be made on such points as towhether it is truly impossible to explain such a view
as another bar to obtaining a patent and the strictnessof the concept of novelty adopted in Japan.
Thirdly, the right to work principle provided in
the Classical UK Patent Law is an interesting
concept in relation to the prior user right provided
in the JPA. However, the details of that principle
have not yet been understood sufficiently, andtherefore, further research is expected to be madeby investigating this concept itself and therecognition of this concept under the current
Patents Act. Moreover, the manner by which thisconcept should be understood in relation to thecurrent system of the (public) disclosure of
inventions through filing is a key issue as well.
Finally, the discussions made with regard to
US Patent Law are also important in terms of theprompt (public) disclosure of inventions.
Unfortunately, this report could only show the firststep of the studies on the discussions on therelationship between patent system and trade
secret system. Hence, I am expecting to advance
this study further and eventually to work on theissue of the relationship between business itself
which relates to the use (working) of an invention
and the concept of property.
1

2
3

4
5

6

7

8
9
10

11

Bristol-Myers Company (Johnson’s) Application [1975]
RPC 127 (HL).
[1975] RPC 127, 154
Merrell Dow Pharmaceuticals Inc. and Another v. H. N.
Norton & Co. Ltd. and Others [1996] RPC 76 (HL).
[1996] RPC 76, 86
Metallizing Engineering Co. v. Kenyon Bearing & Auto
Parts Co., 153 F.2d 516, 68 USPQ 54 (2d Cir. 1946), cert.
denied, 328 U.S. 840, reh’g denied, 328 U.S. 881 (1946).
W. L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d
1540, 1550, 220 USPQ 303, 310 (Fed. Cir. 1983), appeal
after remand 842 F.2d 1275, 6 USPQ2d 1227 (Fed. Cir.
1988).
In re Caveney, 761 F.2d 671, 675-676, 226 USPQ1, 3-4(Fed. Cir. 1985).
Pennock v. Dialogue, 27 U.S.(2 Pet.) 1 (1829).
Andrews v. Hovey, 123 U.S. 267, 8 S.Ct. 101 (1887).
Kewanee Oil Company v. Bicron Corporation, 416 U.S.
470, 94 S.Ct. 1879 (1974).
Azuko Pty Ltd v. Old Digger Pty Ltd (2001) 52 IPR 75;[2001] AIPC 91-741; [2001] FCA 1079, at [180].

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