Prior User Rights Study Report to Congress - America Invents Act

Likewise, in Australia, prior use is defined as either: (i) exploiting the product, method, or process; or (ii)taking definite steps to do the same. Similar definitions are set out in the laws of Japan, 59 the Republic ofKorea, 60 Mexico, 61 China, 62 and the Russian Federation. 63Some of these use-possession hybrid countries afford varying possession standards. For example,the United Kingdom has a very stringent possession standard. The United Kingdom defines prior use as“acts that would constitute infringement” of a patent or “effective and serious preparation” to do thesame. 64 With regard to making “effective and serious preparation,” the United Kingdom’s case lawsuggests that mere possession of an invention, without proactive steps to manufacture or commercializethe same, is not enough activity to be deemed prior use. 65 In contrast, Germany has an easily satisfiedpossession standard. In Germany, activities that constitute prior use include “use of the invention” andmaking “necessary arrangements to do the same.” 66 With regard to the latter, a party asserting thedefense must show actual possession of the invention. 67 Possession of the invention simply means thatthe asserting party must be knowledgeable of the invention and be able to intentionally exploit theinvention. 68 This low threshold is circumscribed by the fact that prior use in Germany is limited toLimitations to Patent Rights 8-9, http://www.wipo.int/export/sites/www/scp/en/exceptions/submissions/denmark.pdf.59 Patent Act, Act No. 121 of 1959, art. 79 (amended by Act No. 75 of June 29, 2005.) [hereinafter “Japanese PatentAct”] (where use is defined as “working the invention”, and possession is defined as making “preparing” for thesame).60 Patent Act, Dec. 31, 1961, art. 103 (last amended by Act No. 9381, Jan. 30, 2009.) [hereinafter “Korean PatentAct”] (where use is defined as “working the invention”, and possession is defined as making “preparations” for thesame).61 Indus. Prop. Law, Mexican Federation Official Diary, Art. 22.III, January 25, 2006 [hereinafter “Mexican IPLaw”] (where use is defined simply as use, and possession is defined as making “necessary preparations” for thesame).62 Patent Law of the People’s Republic of China, art. 69(2) (promulgated by the Standing Comm. Nat’l People’sCong., Dec. 27, 2008, effective Oct. 1, 2009.) [hereinafter “Chinese Patent Law”] (where use is defined as“use/manufacture,” and possession is defined as “making necessary preparations” for the same).63 Patent Law, 2003 (Russ.), § IV, art. 12 [hereinafter “Russian Patent Law”] (where use is defined simply as use,and possession is defined as making “necessary preparations” for the same).64 Patents Act, 1977, c. 37, § 64 (Eng.) [hereinafter “U.K. Patent Act”] (“(1) Where a patent is granted for aninvention, a person who in the United Kingdom before the priority date of the invention does in good faith an actwhich would constitute an infringement of the patent if it were in force, or makes in good faith effective and seriouspreparations to do such an act, shall have the rights conferred by subsection (2). . . .”).65 Andrew Webb, Prior Use Under Section 64 of the UK Patents Act 1977, UNION-IP, white paper 4.6-4.10(European Practitioners in Intell. Prop.) Congress Port. (2008) (citing Helitune Ltd. v. Stewart Hughes Ltd., [1991]F.S.R. 171, and Lubrizol Corp., et al. v. Esso Petroleoum Co., et al., [1998] R.P.C. 727 (CA)).66 Patent Act (F.R.G.), Dec. 16, 1980, BGBl. I at 1981, last amended by Gazette (F.R.G.), Jul. 31, 2009, BGBl. I at2521, pt. 1, § 12 [hereinafter “German Patent Act”].67 Sabine Rojahn, Right of Private Prior Use: Sec. 12 Patent Act, UNION-IP (European Practitioners in Intell.Prop.) Congress Port., slides 5-8 (2008).68 Id.15