"The effects of an invention patent right", according to the Patent Act, "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." (Article 59, Paragraph 1, Item 3, Patent Act.) This is the "prior user rights" defence generally used to argue non-infringement in patent litigation. The key to whether the court will accept this defence lies primarily in the probative value of the evidence. In practice it is not easy to provide evidence that the product existed before the patent filing date and the courts will not always recognise the right. In this article, the relevant civil judgments of the Taiwan Intellectual Property Court (IPC) over the past two years are reviewed and summarised.
IPC decisions not upholding prior user rights
2018 Min Zhuan Shang Zi No. 15 of 14 February 2019 Given that the product catalogues presented by the defendant failed to disclose the main technical features of the patent in dispute, there was no way of proving that the disputed product was manufactured and sold before the filing date. Meanwhile, the defendant's online advertisement revealed only the appearance and model number of the product without showing its internal structure. There was therefore no way of determining whether the product presented in evidence was the disputed product. In addition, the defendant presented a notarial certificate and notarised physical evidence to the court, and alleged that the manufacture date on the name plate of the outer casing pre-dated the filing date of the patent in dispute. However, the notary was unable to ascertain the state of the evidence's internal parts, and the evidence was witnessed based on its state at the time of the notarisation, not at the time of its claimed prior use. Therefore, it was possible that the internal parts had been replaced before notarisation, or that the name plate – a sticker – had also been replaced. Since other pieces of evidence had no recorded model numbers, the defendant's prior user rights defence could not be upheld.
2019 Min Zhuan Shang Zi No. 24 of 21 May 2020 Based on the briefing documents, drawings and textual descriptions relating 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 differed from those of the patent in dispute, so the court had difficulty recognising that the prior use product was the disputed infringing product. Other evidence did not specifically disclose the structure of the patent in dispute, and proved only that the defendant could manufacture the product before the filing date. The evidence was neither sufficient to show that the product definitely had prior user rights, nor sufficient to allow recognition that the product in dispute had been exploiting, or had done all the necessary preparations for exploiting, the invention before the filing date.
2019 Min Zhuan Su Zi No. 65 of 29 April 2020 Since the components' features, shown by photos in the evidential file jacket, differed from the technical features in the claims of the patent in dispute, the court found it hard to conclude that the article, which was identical to that which had the overall technical features in Claim 1 of the patent, was manufactured before the filing date.
IPC decisions upholding prior user rights
2019 Min Zhuan Su Zi No. 81 of 30 June 2020 By cross-checking and verifying the defendant's proposed catalogues, photocopies of export declarations, confirmation forms of the product drawing, and the finished products made according to the confirmation forms, the court concluded that the defendant had commissioned a third party to make blank product samples before the filing date of the patent in dispute, in accordance with the confirmation forms, which the third party had then delivered. In general, the products presented by the defendant in court matched the dimensions of the various parts shown in the evidential drawings. Therefore, the court recognised that before the filing date, the defendant had domestically manufactured the disputed product that the plaintiff had alleged infringed the patent.
2020 Min Zhuan Su Zi No. 25 of 6 November 2020 The disputed product was demonstrated in a new-product exhibition in the Japanese cities of Niigata and Tokyo on 17 and 24 November 2018, respectively; this could be evidenced by posters of the product, photos of the product on display and being demonstrated at the exhibition venues, together with related catalogues in December 2018. Before the filing date of the patent in dispute, website A used the photos from the catalogues to publicise the product and list its price; website B also used the catalogue photos to introduce the product. It could therefore be concluded that the disputed product was publicly sold in Japan before the filing date of the patent in dispute.
In July 2018, 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 that month. The dates of sale of the product on the email matched the schedule of the Japanese head office where the catalogues were released and the products were ordered, displayed and sold publicly. Therefore, the email could be considered authentic. 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 had already stated the necessary content for selling and purchasing the product to conclude contracts with and elicit expressions of interest from certain distributors. The defendant was therefore deemed to have made an offer to sell the disputed product.
The defendant then imported the disputed product from its Japanese head office; this could be evidenced by the invoices and packing lists for examination. In December 2018, the defendant held an event in Taiwan, where the disputed product was demonstrated and used; this could be evidenced by the event photos, event brochures and Facebook screenshots, proving that the defendant had imported new products from its Japanese head office to promote the disputed product at a new event having offered to sell it to distributors. In short, before the filing date of the patent, 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 the Patent Act, the effects of the patent right in dispute did not extend to the disputed product.
In view of the above, the party accused of infringement must vigorously 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, to allow the court to render a favourable judgment.
