Patent Law: Scope of Prior User Rights
● Key Point
The scope of an invention being worked or prepared for working refers to the scope of the technical idea, i.e., the invention, embodied in the form of working by the prior user. The effect of the prior user right extends not only to the form of working that the prior user was actually working or preparing to work at the time of the patent application, but also to forms of working that have been modified within a range that does not lose identity with the invention embodied therein.
● Explanation
Regarding the scope to which prior user rights extend, it is defined as "within the scope of the invention and the purpose of the business being worked or prepared for working" (Article 79 of the Patent Act).
Previously, regarding the specific meaning of "within the scope of the invention and the purpose of the business being worked or prepared for working," there were:
(1) A theory that it is limited to the form of working actually being performed at the time of the patent application, and
(2) A theory that it includes technology belonging to the same category in terms of inventive thought as the technology expressed in the form of working actually being performed (Inventive Thought Theory).
Regarding this point, the Supreme Court, in the Walking Beam case (Supreme Court Judgment, October 3, 1986, Minshu Vol. 40, No. 6, p. 1068), took the position of the Inventive Thought Theory and held that:
"The 'scope of the invention being worked or prepared for working' is not limited to the form of working that the prior user was actually working or preparing to work in Japan at the time of the patent application (priority date) for the patented invention, but refers to the scope of the technical idea, i.e., the invention, embodied in that form of working, and therefore, the effect of the prior user right extends not only to the form of working that the prior user was actually working or preparing to work at the time of the patent application (priority date), but also to forms of working that have been modified within a range that does not lose identity with the invention embodied therein is the appropriate interpretation," and as a specific example, held that "if the invention embodied in the form of working corresponds to only a part of the patented invention, it goes without saying that the effect of the prior user right extends only to that part of the patented invention, but if the scope of said invention matches the scope of the patented invention, it should be said that the effect of the prior user right extends to the entire scope of the patented invention."
● References
- Naoki Koizumi & Yoshiyuki Tamura (Eds.), "100 Selected Patent Precedents, 5th Edition" (Yuhikaku, 2019), pp. 56-57
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