According to Article 59 of the Patent Law which applies, mutatis mutandis, to design patents, the right conferred by an invention patent shall not apply where, prior to its filing date, the invention has been practiced or the necessary preparations involved in practicing the invention have been made by a third party in this country. It is the so-called “'prior user right” in legal doctrine, and may serve as a defense in patent infringement lawsuits. The ambit of the prior user right generally includes the manufacturing, selling, using, or importing the same products or employing the same methods of manufacturing domestically. Moreover, the right is not limited to personal implementation; commissioning others also falls under the provision of Article 59.
In the defense of prior user right, it is necessary for the accused party to present evidence such as emails sent to distributors containing photos, specifications, suggested retail prices, and release dates of the disputed products, along with air freight documents and so on so forth. Such evidential materials are capable of proving that some appointments have been made with distributors for domestic sale, or for the purpose of importing and marketing the allegedly infringing products. Additionally, product drawings and affidavits from companies commissioned to manufacture prototypes may be used by the accused infringer showing that the structure and the prototype of the two parties’ products are identical, thus asserting that necessary preparations or practice have been accomplished domestically before the filing date of the disputed patent. These defenses are commonly seen in invention or utility model patent infringement lawsuits only. Thus, a recent design patent infringement lawsuit involving the defense of prior user right is worthy of mention.
The owner of a design patent entitled “electric window frame materials” filed a civil lawsuit for infringement against a manufacturer and seller of the allegedly infringing products with the Intellectual Property and Commerce Court (hereinafter referred to as the IPC Court.)
In the litigation process, the accused infringer presented a mold commissioning and design confirmation sheet (hereinafter referred to as design drawing) and a shipping invoice from the commissioner. These materials, all dated prior to the filing date of the disputed design patent, were submitted by the accused infringer to prove that the allegedly infringing product had been shown in the market before the filing date of the disputed design patent, and thus the defense of prior user right should apply to limit the exclusive right of the disputed design patent.
The IPC Court, upon trial, held that the product illustrated in the design drawing, pertaining to an aluminum window frame design, is substantially the same as the product applied to the disputed design patent. The design drawing depicts various parameters such as spacing, width, thickness, and shape in sectional views. A comparison between the design drawing and the disputed design patent in terms of the front and rear views revealed that the 'wing portion', 'plate body', 'base plate', and their relative positions and relationships are all corresponding. More importantly, the overall outer appearances of the two designs were found to be identical or highly similar.
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Moreover, taking into account the date on the design drawing which is earlier than filing date of the design patent, the contents of the shipping documents, and the testimony of the commissioner’s sales staff, it is reasonable to assume that the accused infringer had demand the commissioner to form a mold for the allegedly infringing products the products had been delivered before the filing date of the design patent. Therefore, the defense of the prior user right should apply to the case.
From this judgment, it's crystal clear that the acceptability of the defense of a prior user right by a court hinges on whether the evidence presented sufficiently proves that the practice or necessary preparations had been accomplished domestically before the filing date of the disputed design patent. Accordingly, it's advisable to preserve concrete evidence of such evidence as dated catalogs, product photos, or exhibition photos. Besides the evidence or testimony like in the discussed case, one can also use impartial entities such as standardization organizations (ISO systems), notarization processes, or even electronic document preservation methods itemized in foreign legal provisions (e.g., Japan's e-Document Law), to digitally preserve important data chronologically. The preservation of evidence is of significance to a business when it starts to make preparations for manufacturing a product.