A prior use right – how to use a patent and not to violate the patent holder’s right
In the developing world, it is quite difficult to come up with something new and unique, to develop a new technology or a new product. However, if you look at it on the other side, the continuous development of the manufacture leads to the constant improvement of a technological process.
While improving and modernizing the manufacture, the companies face two main tasks. First of all, this is a desire to retain the right to the subject matter of intellectual property created as a result of the modernization. An effective way to retain the exclusive right is to obtain a patent for an invention, a utility model, an industrial design. The patent not only allows using the result of the intellectual activity, but it also allows prohibiting its use to third parties.
In accordance with Paragraph 1 of Article 1229 of the Civil Code of the Russian Federation, “A citizen or a legal entity possessing an exclusive right to the result of the intellectual activity or the means of individualization (a right holder) shall be entitled to use such result or such means at his/its own discretion by any method that does not contradict the law. The right holder may dispose of the exclusive right to the result of the intellectual activity or to the means of individualization (Article 1233), unless otherwise is stipulated by this Code.
The right holder may at his/its discretion permit or prohibit other persons to use the result of the intellectual activity or the means of individualization. The absence of the prohibition shall not be considered as a consent (permission).
Other persons can not use the respective result of the intellectual activity or the means of individualization without the consent of the right holder, except the cases stipulated by this Code. The use of the result of the intellectual activity or the means of individualization (including their use by the methods stipulated by this Code), if such use is carried out without the right holder’s consent, shall be illegal and shall entail the responsibility stipulated by the this Code and other laws, except the cases, when the use of the result of the intellectual activity or the means of individualization by the persons other than the right holder without the consent of the latter shall be allowed by the this Code.”
The second task in the development of the new technology is a desire to protect oneself from the claims on behalf of the third parties, who also keep up with the progress and create new and unique technologies and products.
If we are talking about a breakthrough in science and creating something outstanding and fundamental, then we can assume that a brilliant idea has come up with several scientists simultaneously. As an example, one can remember about the greatest invention of the late XIX century – the discovery by Popov and Marconi of electromagnetic radiation, which was laid as the basis of the action of the radiotelegraphs.
Admitting the possibility of the creation of the same technology, device, product by different people at one time, the legislator provides the possibility of using the result of the intellectual activity by the authors parallel to each other.
In accordance with Paragraph 1 of Article 1361 of the Civil Code of the Russian Federation, “A person, who, before the priority date of the invention, the utility model or the industrial design (Articles 1381 and 1382), has used in good faith on the territory of the Russian Federation the identical solution created independently of the author or the solution that is different from the invention only with the equivalent features (Paragraph 3 of Article 1358), or who has made the necessary preparations for this, shall retain the right to the further gratuitous use of the identical solution without expanding the scope of such use (a prior use right).”
The prior use right can arise from the author, who has created and used in good faith the technical solution before the priority date of the patented invention, the utility model or the industrial design.
As a rule, the issue on the prior use right arises, when the patent holder applies to the court for the defence of the exclusive right. So, in the case of the claims on the prohibition of the introduction into the civil circulation of the products, in which the patented invention, the utility model or the industrial design is used, the author of the disputable technical decision is entitled to file a statement of counter-claim on the recognition of the prior use right. The satisfaction of the statement of counter-claim excludes fully or partly the satisfaction of the initial statement of claim.
The statement of counter-claim on the recognition of the prior use right may be filed before the first-instance court adopts a judicial act that will finish the substantial consideration of the case. The statement of counter-claim is considered together with the initial statement of claim, their joint consideration will lead to a more rapid and proper consideration of the case.
In practice, the cases of the refusal to satisfy the claims on the defence of the exclusive right to the patented invention, the utility model or the industrial design and to satisfy the statement of counter-claim on the prior use right are very rare. As an example, two judicial cases can be analyzed, as a result of the consideration of which the following judicial acts have been adopted.
Appellate Definition of the Sverdlovsk Regional Court of 03.21.2017 in case No. 33-4157/2017.
The plaintiff filed a statement of claim to the court, in which it had indicated that it was a holder of the exclusive right in respect of a utility model. The defendant uses the indicated utility model without the plaintiff’s permission in its manufacture activity by manufacturing the drives for the deep well pumps of a DDWPH type.
On the basis of the above, the claims were filed to compel the defendant to stop violating the exclusive right, to destroy the installations (supports) on which the DDWPH drive was placed, and to recover damages for the violation of the exclusive right.
Having checked the plaintiff's arguments on the use by the defendant in the manufacture of the DDWPH drive of every feature of the independent claim of the claims of the utility model, the court came to a conclusion about their justification, having founded on the basis of the case files that such use had been confirmed by the design documentation.
The defendant did not agree with the statement of claim, filed a statement of counter-claim, where it asked to recognize that the right to the further gratuitous use of the identical solution without expanding the scope of such use (the prior use right) to the technical solution contained in the patent for the utility model belonged to it. At the same time, the defendant pointed out that in order to use in its own products, it had developed a welded structure that ensured the alignment of the rod of the power hydraulic cylinder with the rod of the deep well pump; before the priority date of the utility model, the technical documentation had been developed and approved, the pilot scale tests had been carried out, a conformity certificate had been obtained.
The first-instance court dismissed by its decision the initial statement of claim, the prior use right to the technical solution contained in the patent for a utility model in a certain number of the pieces per year without an expansion of the manufacture was recognized as belonging to the defendant. The Court of Appeal confirmed the lawfulness of the judicial act adopted.
As the Court of Appeal noted, the use in good faith by the company of the disputable solution in its activities and, consequently, the fact that the prior use right belonged to it was presumed until otherwise was proven. The obligation to prove such circumstances lies with the person, who denies this right, that is, in this case, with the plaintiff. The plaintiff did not provide the evidence to that.
Resolution of the Ninth Arbitration Court of Appeal of 09.06.2016 in case No. A40-110383/14.
The Court considered the case regarding the statement of claim on the recognition of the use by the defendants of a utility model as illegal, on compelling the defendants to stop using that utility model without a permission of the right holder.
It follows from the case files that the exclusive right to the utility model “PIPELINE” belongs to the plaintiff according to patent of the Russian Federation No. 136827, the priority date is 05.04.2013, the date of the grant is 20.01.2014.
The ground for filing the initial statement of claim was the fact of the manufacture of the works by Defendant 2 by the order of Defendant 1 for the reconstruction of the Novo-Lyubertsky sewage channel during the period from September 2013 till the date of filing the statement of claim, in the course of which the channel rings made of polymer concrete were used, which contained each feature of the utility model given in the independent claim contained in the plaintiff’s patent according to patent No. 136827 of the claims of the utility model. This conclusion was confirmed by a patent and technical forensic report.
Defendant 1 filed a statement of counter-claim on the recognition of the prior use right. The statements of counter-claim were motivated by the fact that the reconstruction of the Novo-Lyubertsky sewage channel had been started long before the priority date of the plaintiff’s utility model through the implementation of the identical solution created independently of the authors of the utility model – the technology of the engineering systems of the company Tauber Rohrbau using the polymer concrete blocks manufactured by the said company – the so-called technology LockPipe, whereby Defendant 1 retained the right to the further gratuitous use of the said identical solution (the prior use right).
Defendant 1, being JSC Mosvodokanal, is a sole successor of MSUE Mosvodokanal.
MSUE Mosvodokanal implemented the arrangements for the preparation of the reconstruction of the Novo-Lyubertsky channel at the section between chambers K58-K48, for which the Department of the Capital Construction of Hydrotechnical Constructions MSUE Mosvodokanal had obtained a specification for the reconstruction of that section of the pipeline. The specification contains a requirement to provide for the development of a design and estimate documentation for the reconstruction using a “polymer concrete” method.
A contract agreement for the development of the design and estimate documentation for carrying out the reconstruction of the Novo-Lyubertsky sewage channel at section K58-K48 was concluded between MSUE Mosvodokanal and the project organization LLC Institute “Kanalstroyproekt” in 2008. Simultaneously, MSUE Mosvodokanal issued a task for designing in accordance with the specification to carry out the design works.
In accordance with the General Explanatory Note to the working design developed by LLC Institute “Kanalstroyproekt” in 2008, “lining the collector tunnel is the separate polymerquartz rings consisting of three identical segments. The segments are interconnected adhesively by the grooves and projections, thus forming a statically stable ring” (Paragraph 1.2 of Section “Design Solutions,” page 5 of the design). The length of the route being reconstructed, as it follows from the information contained on page 6 of the General Explanatory Note, is d = 2480 mm -2559.5 m, d = 200 mm-39 m, total - 2598.5 m.
The utility model according to patent No.136827 is protected within the scope of the claims, the independent claim of which is the following: “The pipeline formed by the plates interconnected at a stationary position in the form of the segments of a hollow cylinder, characterized in that the plates in the form of the segments of a hollow cylinder are made of polymer concrete.”
The comparative analysis made allowed the Court coming to a conclusion that the design documentation developed according to the task of Defendant 1 involved the use of the technical solution, which was identical to the utility model according to patent No.136827, and the method of the reconstruction of section K58-K48 of the Novo-Lyubertsky channel was identical to the technology, which had been applied earlier at the reconstruction of the experimental section of the pipeline.
Based on the stated factual circumstances, the first-instance court came to a legitimate conclusion that Defendant 1 had made the necessary preparations and it had also applied (when reconstructing the experimental section of the Novo-Lyubertsky sewage collector at interval T83-K58) the technology patented by LLC Polikvartsit well before the priority date (05.04.2013).
The prior use right arises, provided that the use has begun or the necessary preparations to it have been made on the territory of the Russian Federation before the priority date.
The first-instance court stated that the use in good faith by Defendant 1 Mosvodokanal of the technical solution identical to the patented one at the reconstruction of the Novo-Lyubertsky sewage channel, and therefore, the fact that the prior use right belonged to it was presumed until otherwise was proven. The obligation to prove such circumstances lies with the person, who denies this right.
By its decision of 05.02.2016, the Arbitration Court of the City of Moscow dismissed the initial statement of claim; the statement of counter-claim was satisfied. The lawfulness of the decision was confirmed by the Court of Appeal.