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How to Present Evidence to Claim the Prior User Rights?
Article 59, Paragraph 1, Item 3 of Taiwan’s Patent Act clearly stipulates that “The effects of an invention patent right shall not extend to acts done by a person who has been exploiting the invention or making all the necessary preparations for doing such act in this country before the filing date of the invention.” This is the so-called “Prior User Rights,” generally used as a defense of non-infringement by defendants in a patent infringement litigation. The key to whether the court would accept said defense lies primarily in the probative value of evidence. As the defendants need to prove that the product already existed in the “past” (before the filing date of the patent), it is not easy in practice to provide relevant evidence as such. In the following, the relevant decisions rendered by the Taiwan Intellectual Property Court (“IPC”) over the last two years are reviewed and summarized.
The decisions that did not adopt the prior user rights are listed as follows:
1. 2018 Min Zhuan Shang Zi No. 15 Civil Judgment rendered by the IPC on February 14, 2019
Given the fact that the product catalogs presented by the defendant do not disclose the main technical features of the patent in dispute, there is no way to prove that the disputed product was manufactured and sold before the filing date of such patent. Meanwhile, the defendant's online advertisement only reveals an appearance and a model number of the product without exposing its internal structure. Hence, there is no way to determine whether the product revealed by the aforementioned evidence is the disputed product. In addition, although the defendant presented a notarial certificate and the notarized physical evidence to the court, and alleged that the manufacture date on the name plate of the physical evidence’s outer casing was before the filing date of the patent in dispute, the aforementioned physical evidence, of which the notary was unable to know the state of its internal parts, was witnessed by the notary based on its state at the time of the notarization, not the state of its prior use. Therefore, it might be possible that the internal parts had been replaced before notarization, or that said name plate, which is a sticker, had also been replaced. Since other pieces of evidence do not have any model numbers for the record, there is no way that the defendant’s prior user rights defense could be adopted.
2. 2019 Min Zhuan Shang Zi No. 24 Civil Judgment rendered by the IPC on May 21, 2020
Based on the briefing documents, drawings and textual descriptions related to the manufacturing process of the prior use product in the evidential file jacket, the IPC concluded that the technical concepts of the prior use product are different from that of the patent in dispute, so the court had difficulty recognizing that said prior use product is the disputed product that has infringed upon the patent right; other pieces of evidence do not specifically disclose the structure of the patent in dispute, and only prove that the defendant had the ability to manufacture said product before the filing date of the patent. It is neither sufficient to evidence that said product definitely has prior user rights, nor sufficient to allow recognition of the fact that the product in dispute had been exploiting, or had done all the necessary preparations for such act before the filing date.
3. 2019 Min Zhuan Su Zi No. 65 Civil Judgment rendered by the IPC on April 29, 2020
Since the components' features shown by photos in the evidential file jacket are different from the technical features in the claims of the patent in dispute, it is difficult to conclude that the article, which is identical to that having the overall technical features in Claim 1 of the patent, was manufactured before the filing date of the patent in dispute.
The decisions that adopt the prior user rights are listed as follows:
1. 2019 Min Zhuan Su Zi No. 81 Civil Judgment rendered by the Intellectual Property Court on June 30, 2020
Cross-checking and verifying the defendant's proposed catalogs, photocopies of export declarations, confirmation forms of product drawing, and the finished products made according to the aforementioned confirmation forms, the court concluded that the defendant indeed commissioned a third party to make blank product samples before the filing date of the patent in dispute, in accordance with the aforementioned confirmation forms of the product. In turn, the third party delivered such blank products to the defendant accordingly. In general, the products presented by the defendant in court match with the dimensions of the various parts shown in the aforementioned evidential drawings. Therefore, the court recognized that before the filing date of the patent in dispute, the defendant domestically had manufactured the disputed product that the plaintiff alleges was infringed upon.
2. 2020 Min Zhuan Su Zi No. 25 Civil Judgment rendered by the IPC on November 6, 2020
(1) The disputed product was demonstrated in a new product exhibition held in Niigata and Tokyo, Japan, on November 17 and November 24, 2018, respectively; this can be evidenced by posters of said product, photos of the exhibition venue where the product was displayed and demonstrated, together with the catalogs thereof in December of the same year. Before the filing date of the patent in dispute, website A used the photos from the aforementioned catalogs to publish the product and list its price; website B also used the aforementioned catalog’s photos to introduce the product. Hence, a conclusion can be made based on the aforementioned evidence that the disputed product was publicly sold in Japan before the filing date of the patent in dispute.
(2) In July of the same year, the defendant provided the photos, specifications, suggested pricing, and wholesale pricing of the disputed product in a “highly confidential” email, and asked distributors to submit pre-order forms by July of the same year. The dates of sale of the product on said email matched the schedule of the Japanese head office where the catalogs were released and the products were ordered, displayed, and sold publicly. Therefore, the aforementioned email can be considered to be true. As the defendant notified several Taiwanese distributors of necessary instructions for selling and purchasing the disputed product, provided pre-order forms and informed them that late orders were deemed replenishment orders, the defendant already stated the necessary content for selling and purchasing the product for the purpose of establishing contracts and evoking the manifestation of intention with certain distributors. The defendant is therefore deemed to have made an offer to sell the disputed product.
(3) The defendant then imported the disputed product from the defendant's Japanese head office; this can be evidenced by the invoices and packing lists for examination. In December of the same year, the defendant held an event in Taiwan, where the disputed product was demonstrated and used; this can be evidenced by the event photos, event brochures, and Facebook screenshots, which can prove the fact that the defendant had imported new products from its Japanese head office for promoting the disputed product in a new product event after offering to sell it to the aforementioned distributors. In short, before the filing date of the patent in dispute, the defendant domestically offered to sell the disputed product to distributors, imported it for the aforementioned purpose, and then exploited it for the promotion. In accordance with Taiwan’s Patent Act, the effects of the patent right in dispute do not extend to the disputed product.
In view of the above, the party accused of infringement must aggressively present various pieces of evidence to prove the timing of prior use (before the filing date of the invention), relationship between the prior use product and the product accused of infringement, and types of prior use, etc., so as to allow the court to render a favorable judgement.