Myths and the Reality of Proof: How to Confirm the Open Use of an Invention Before the Priority Date

The priority date in patent law is the starting point that determines who was the first. But this construction is vulnerable. If the technology became available to an indefinite number of people before the application was filed, the patent can be invalidated or a competitor's claim can be reflected. The problem is that the gap between "we know for sure that we sold this in 2019" and the legal standard "proven beyond reasonable doubt" turns out to be an abyss in practice. The Intellectual Property Court and Rospatent are extremely skeptical about retrospective evidence.

Let's analyze what clients' arguments usually fall apart in court, and what really works.

Myth 1: "We have old photos and videos from YouTube"

A classic situation: the opponent shows the judge a printout of a screenshot or video where the product is demonstrated at an exhibition. The date on the site is 2018. It seems that this is it, ironclad proof. But no.

Digital artifacts without independent fixation depreciate in minutes. Let's say you bring to court a video file "Tests of the planetary СМП-200.avi mixer", uploaded to the YouTube channel on March 14, 2018. The metadata of this file (EXIF) is changed by simple copying to a flash drive or sending it via cloud storage. The date of publication on the video hosting is not proof that the content was not changed later: the channel administrator can replace the original video with an edited one, keeping the old link. Experts can easily prove that the page could have been edited "retroactively" or the video sequence was edited. The court does not need the file itself, but proof of its existence at a specific point in time. A screenshot taken yesterday from a site where the old date is indicated is information about the content of the site today, not in the past. The IP Court has repeatedly rejected such materials, pointing out that it is impossible to verify the integrity of the data at the time of the alleged disclosure.

Myth 2: "Our employees will confirm this in court as witnesses"

Witness testimony is the most unreliable asset in a patent dispute. The logic of the court is simple: the company's employees (or former employees) are affiliated with the applicant. Their motivation to help the employer is obvious.

In cases of challenging patents, the IP Court adheres to the position: witness testimony without an objective paper or material trace does not form an evidentiary base. If the head of the assembly shop of TechnoPrivod LLC declares: "Yes, I personally supervised the installation of the GR-5 hydraulic valve on the prototype in March 2019", but the development log is lost, and the test report has not been preserved, this is an empty sound for the court. Human memory is subjective, and dates in oral retelling often float. Even if the witness is a former chief engineer who worked at the enterprise for 15 years, his words will not replace the missing drawing. Testimony works only as an addendum to the documents, explaining their content, but not as an independent source of the fact of disclosure of information.

Myth 3: "We sold this product, here are the bills of lading"

The presence of a supply contract and an invoice proves the fact of the transfer of a certain product. But a patent does not protect the product in general, but a set of essential features of the claims.

The main risk: there is no identification of the technical solution in the primary document. Imagine that you are challenging a competitor's patent for a "diamond grinding head with a radius working surface". Your invoice No 456 dated 05/12/2020 states: "Diamond grinding heads GShA-2, 20 pcs." The supply contract does not contain annexes with drawings or specifications that reveal the radius of curvature of the working surface - and this is exactly the feature recorded in the formula. The court cannot compare the sold object with the patent claims, because it is not clear from the documents what exactly the design was. The competitor will claim that in 2020 a modification with a flat surface was sold, and a radial one appeared only in 2022 after modernization. Without design documentation signed by the parties and confirming the configuration, the consignment note is only a fact of money flow, and not a fact of disclosure of know-how.

The Reality of Proof: Reinforced Concrete Standards

In order to discredit the novelty or prove the right of prior use, evidence is needed that cannot be refuted without refuting the very essence of the document.

• A notarial inspection carried out in a timely manner. We are not talking about a screenshot taken by a lawyer, but about the protocol of inspection of evidence by a notary. The key word is timely. If you fix a competitor's website before he submits an application, you have priority evidence with a presumption of reliability. The notary records not only the visible content, but also the fact of clicking on links, which excludes the argument about photomontage.
• Design documentation with reference to the transaction. The scheme works: a drawing with a mark of the Quality Control Department on control and an approval stamp, which is an integral annex to a specific supply contract. The court and Rospatent accept this as evidence of the transfer of technical documentation to a third party. This creates a direct cause-and-effect relationship between the date of the document and the fact of disclosure of information to the buyer. If the drawing is signed by the buyer's representative, this is the final point in the dispute.
• Customs declarations (declarations for goods). A customs declaration is a document of strict accountability submitted to a government agency. If column 31 of the declaration describes in detail the technical characteristics: power, type of engine, the presence of a cooling system of a certain design, this is an independent state trace.
• Printed publications with a fixed circulation. Publication in a peer-reviewed journal or exhibition catalog, which describes the principle of operation of the device, is considered open use if the fact of publication of the print run is proven. It is not the date of signing for printing that is important, but the date of sending to subscribers or transferring to the library. It is this date that forms the event of availability to an indefinite number of people.

How to fix the development "for the future"

1. Deposit with an independent examination. It is not enough just to transfer materials to the depository. It is necessary that the act of transfer contains a description of the essential features that is understandable to an outside expert. This will protect against accusations that a "flash drive with unknown content" was placed in the box.
2. Trade secret regime with date fixation. The introduction of the regime (stamp, access log) creates a paper trail proving that on a certain date the information already existed and was documented. This works as a "black box" for the idea.
3. Notarization of drawings. Periodic (for example, quarterly) inspection by a notary of a package of design documentation with the fixation of the identification details of the drawings. This is cheaper than suing and creates a retrospective foothold.

Proof of open application is a strategic work carried out before the conflict, not in the process of it. As long as the client is not faced with a claim, he considers the folder with the invoices to be sufficient protection. The illusion of evidence collapses in court when it turns out that the contract does not have an appendix with a drawing, and the YouTube video was uploaded "yesterday", despite the date in the description. Preventive fixation through notary, customs and independent printing is the only way to meet the standard "beyond reasonable doubt".