The notion of prior use comes into play when the invention underlying a patent application is already in use before filing of the patent application, the right(s) of which although having a common ground, yet are determined differentially across the jurisdictions owing to the territorial nature of patents. One factor that is most important in determining something “prior”, is the filing date of the patent application, especially in a jurisdiction adhering to the “first to file” principle. For a country following the “first to invent” principle, the matter is even tougher to determine as without a mandate of a filing date of a patent application, it is painstaking to conclude the “prior”.
To put it categorically, the question of prior use generally comes when a defendant/ alleged infringer vide a counter claim, claims prior use of a “product” and/ or “process”, often secretive in nature, in response to an infringement suit filed by a plaintiff/ patentee. Before coming to the Indian scenario, a little overview in some other prominent jurisdictions under the light of similar provisions can be discussed.
Denmark, a Scandinavian country mandates that any person using an invention or in other words, exploiting an invention qualitatively i.e. making, offering, putting on the market or using the invention, at the time of filing a patent application by any other party regarding that invention, may continue such exploitation provided that said exploitation doesn’t include an abuse of the applicant or its legal predecessor. “Prior use” must occur prior to the filing of the priority date of the patent application for prior user rights to apply.
In France, the need is to show that the person claiming prior use was in possession of the invention at the time of filing of a patent application or the priority date of the patent, whichever is earlier. The phrase “possession” is not well defined in the French Act; however, an intellectual possession of the same technology at par with the patent may suffice as against any mandate of use of the invention. The possession should be secret, acquired or existing in France and realized before the filing/ priority date of the patent.
For Germany, continued use including anyone of production, offer, and distribution etc. of the invention underlying a patent application should be shown as against a mere intellectual possession in France. Any distortion in use may alter the prior user’s right, and the prior user’s right is restricted to the uses, without any adjustment or alterations made before the patent application.
For the United Kingdom (UK), the prior use is, as usually prior to the filing date/ priority, and any exception related to the prior use would only apply when there is an infringement of the patent, and never to be applied when the invention is used privately and for non-commercial purposes. However, like France, the use should be secretive, and if it becomes public by any means, the novelty of the underlying invention of the patent application, would be destroyed.
Japanese Patent Act bestows prior user right to a person who is working on an identical invention, with the right transferable along with the business. The effect of this right covers a form of working, as well as modified working without losing the identity of the scope of the prior user right, a non-exclusive right to work the invention.
In the USA, the America Invents Act covers all technologies, available for persons who act in good faith with independent commercial use. The prior user should establish that the relevant activities occurred more than a year before of the date of filing of the patent application covering the technology or the date of public disclosure, whichever is earlier. Like Japan, a prior user enjoys a non-exclusive right to work.
Coming to the scenario in India, for secret use, at the very outset a court may revoke the patent for any such use of the invention in India under Section 64(1)(l) of the Indian Patents Act, 1970, if any invention so far as claimed in any claim of the complete specification was secretly used in India, before the priority date of the claim. However, the Indian Patent Act, 1970 also has a provision to protect a patent application with prior use of the underlying invention vide Section 34, saying a patent shall not be revoked or invalidated by reason only of any circumstances which, by virtue of section 29 or section 30 or section 31 or section 32, do not constitute an anticipation of the invention claimed in the specification. Thus, by virtue of Section 34, any invention that has been disclosed before a learned society or before the public authority or government personnel while on duty or any public working necessary to test the efficacy of the invention, any prior publication by the inventors are not considered as anticipation, provided the patent application concerning these inventions is filed within 12-months from the public disclosure. Further, certain act won’t be considered as anticipation including mandatory public display, public working, or like exhibition, if performed by the true inventor(s).
Regarding the public display as well as corresponding use for an invention prior the grant of patent, a milestone case between Nicholson and the city of Elizabeth, NJ, may be referred, wherein Nicholson devised a wooden pavement and the process of manufacturing the same thereof, and fixed his invention in an avenue in the city of Boston to verify and determine the strength and durability of the same in his own expense i.e. without any expense to the exchequer. He sued the city of Elizabeth for infringing his patent, which was countered due to said public use. Therefore, the question was: whether or not an inventor’s experimental uses which in a special case like this mandated the rigorous daily use by the passers-by in order to verify the durability of the underlying invention may constitute a “prior public use”. Owing to the intention of the inventor to use the piece of pavement as an experiment mandating a public use, this was held by the court as “experimental use” and not “prior public use”. The court further held that an abandonment of an invention to the public may happen if the invention is on sale with the inventor’s consent at any time within 1 year before his patent application for a patent
Further, any importation constitutes prior use; however, activities during the preparatory work for a job related to an invention may not constitute prior use. However, once the process of the invention is commenced, it will constitute prior use, if a patent application is to be filed for the same process by a third party. Therefore, to obviate these difficulties, a person or entity should file a broad provisional patent application to cover its product/ process, even during the preparatory stage i.e. before the actual commencement of production. Even if somebody files a patent application for covering the process, the user will have an earlier priority date and this will reinforce or establish the "prior use" requirement.
Covering a process in a provisional patent application along with test data of the working of the process, may be a good idea to safeguard from any predatory entity. This working may also be specified in the patent document along with dates. A provisional patent application is a document on record and is not published, but can be used in litigation because it becomes a dated document and a certified copy of that document is available from the Patent Office. Such document may also be used for establishing secret use, for revocation of a patent. This may safeguard in a better way than that of an ordinary notarial document due to inherent confidentiality.