Bang bang

Prior user rights are one area of common misconceptions about patent law among the public.

Suppose you teach an IP class in a scientific university, and you tell the students about patent infringement, the first-to-file system, etc. Soon enough one of them will speak up and express the view that there cannot possibly be a right to a patent if the invention was actually made by someone else earlier. “Sorry folks, but there most certainly is a right to a patent if the invention was not publicly disclosed before the filing date“, you reply. “That said, there are what they call prior user rights“. At this point, relief is palpable in the room, until you add: “But hey, don’t count on that, it is only an exemption and it is seldom of any use in practice“.

This last part sometimes gets over people’s heads. Not just students, but also misleading websites that allegedly provide cheap protection to inventors. In one of those (no link included in this post), it is stated that “prior user right is the ideal alternative to patent filing, it makes it possible to legally protect an invention and to continue exploiting it even in the presence of a patent filed later on a similar invention, it also allows you to regularly make your innovation evolve”. Quite a few inaccurate statements in this sentence…

Let’s have a look at what French law actually has to say on the subject, and more particularly article L. 613-7 of the Code de la propriété intellectuelle:

Any person who was in possession of the patented invention in good faith, at the patent filing or priority date, on the territory where the present law is applicable, has the right to personally exploit the invention despite the existence of the patent. 

The right acknowledged by the present article can only be transmitted with the business assets, company or part of the company to which it relates. 

So, this is not a form of legal protection similar to a patent. It is a defense that can be raised against allegations of infringement. It can only apply if the prior possessed invention is the same as the patented one (and not just a “similar” one). Accordingly, the defense may no longer apply if the prior user later changes something in their invention.

Also, this defense can only be raised by the person (individual or company) who possessed the invention before the filing / priority date. Not by anyone else, even if they are related to this person. The defense cannot be raised if the possession of the invention occurred abroad. And finally this “right” cannot be freely transmitted to another person, it is linked to the business assets to which it relates (somewhat like the opponent status in EPO opposition proceedings).

This is only a short summary of course, but it already makes it clear that there are many boxes that need to be ticked before a prior user right can be effectively used as a defense. And of course there is also the issue of proof – the burden being on the defendant who relies on this right. Not exactly “the ideal alternative to patent filing“.

Accordingly, prior user right defense is seldom relied upon, and even more rarely successfully so.

One recent example involved a French patent on an “adaptable and modulable support assembly for automatic/semi-automatic gun“. The two co-owners of the patent were the inventors themselves. Together with their licensee, Société Technique de Rééquipement de Combat, they sued the manufacturer (RDS Industries) and the distributor (OPS Equipement) of an allegedly infringing gun support. The plaintiffs lost both in first instance and on appeal.

If only guns always shot candy bullets like this one...
If only guns always shot candy bullets like this one…

However, a prior user right defense was raised and this part of the defense was shot down by the first instance judges as well as the appeal ones.

The patent filing date was December 17, 2008. The company RDS Industries was founded by a Mr. K only three weeks earlier. Mr. K previously owned another weapon and ammunition manufacturing business, known as L’Armurier Breton (i.e. “the Breton gunsmith“). This was a personal business, and not an incorporated one.

According to the defendants, Mr. K had an employee at L’Armurier Breton who made a prototype back in 2007-2008 having all the features of the patented invention. But they never moved forward with production and marketing due to commercial uncertainty, they said. Anyway, they added, Mr. K possessed the prototype (and thus the invention) when RDS Industries was created, so that the company should benefit from a prior user right.

The Court of appeal admitted that Mr. K possessed a prototype made by his employee but nevertheless rejected the prior user right defense on two grounds.

First, not enough evidence was provided that the prototype or one of the prototypes made in 2007-2008 comprised all the patented features. The defendants’ case was apparently incomplete in this respect:

Even if, when RDS Indstries was created, Mr. K may have possessed a prototype received from his inventor […], nothing shows that this is the prototype that they rely on. The engineer who is said to have designed it is not specific on the identification of the prototype in question as well as on the features said by the respondents to be identical to those of the invention of the patent. In particular, he wrote in his affidavit: “we have made several prototypes from early 2008”. 

This illustrates the major burden of proof issue that those wishing to rely on prior user rights always face. It is certainly fair to demand full and convincing evidence from the defendants, especially since the plaintiffs are generally not in a position to provide counter-evidence of their own on this topic. But documenting and record-keeping practices being what they are, such evidence is usually very difficult to provide.

Second, even if there was some sort of prior user right, it was not proven that RDS Industries could benefit from it:

Even if one admits that Mr. K can claim the possession of the mentioned prototype […], the freedom to exploit that he can benefit from under the first paragraph of article L. 613-7 is personal. It cannot extend to the company that he founded, unless there is a demonstration that the individual transferred this right to the company according to the provisions of the second paragraph of the article (which is not the case). 

The case illustrates that there are many hurdles on the way to prior user rights, and any of them is sufficient to make the defense stumble.

Fortunately for the defendants in this case, and unfortunately for the plaintiffs, the patent was revoked for lack of inventive step. The inventive step discussion is actually rather interesting as well so that I may want to address it in a future post.


CASE REFERENCE : Cour d’appel de Paris, Pôle 5 chambre 2, May 27, 2016, Rogeon, Cambres & STRC v. RDS Industries & OPS Equipement, RG No. 14/03454.