Right of Prior Use in Russia: How to Prove?


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Sometimes, to protect themselves from probable claims of patent holders in future, businesses “go on the offensive”. This is the situation where business entities that have made significant preparations/were engaged in the implementation of an intellectual property object eventually get to learn that a patent for an identical object has been obtained by another entity/person.

In order to preserve the right to use the patented object, business entities initiate judicial proceedings by filing claims against patent holders to establish the right of priority.

Thuswise, the claimant’s main task is to prove that has used in good faith the identical object, which may differ from the patented object by equivalent features, or that significant preparations for
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such use have been made by the claimant. The judgment in case, in brief, demonstrates what exactly is required of the parties in such cases and what is worth special attention.

Legal Facts

The сlaimant: Simbirskiy zavod steklopodyemnikov private company limited by shares. The company specializes in the production of window regulators, door, hood, and boot locks, drives, and a number of other parts for Russian-manufactured cars (VAZ, UAZ, GAZ, OKA); the company actively participates in exhibitions of new machine building technologies in Russia and Germany (Hanover, Karlsruhe).

The defendant: Anna Yeliseyeva, a private entrepreneur, holder of the patent of Russia for the utility model “Device for pulling window lifter cable” (commencement date: 26 December 2011).

This technical solution ensures the stable pulling of the cable and prevents the shift of the window lifter cable and it’s jamming and, as a result, increases the service life of the window lifter assembly.

History of the Proceedings

In early 2016, Simbirskiy zavod steklopodyemnikov filed a lawsuit with the court against the Entrepreneur for the recognition of the prior use right (free use of an identical design created independently of the author without expanding the scope of such use) for a utility model, in the production and sale of window lifters similar to the claims protected by patent for the utility model “Device for pulling window lifter cable” in the total amount not exceeding 10,100 pieces per year.

The claimant argued that Simbirskiy zavod steklopodyemnikov had been using the decision identical to the defendant’s utility model in the production of window lifters prior to the commencement date of the patent (December 26, 2011).

In accordance with the Civil Code of Russia, “any person who was using in good faith within the territory of the Russian Federation the identical solution or made the necessary preparations for such use before the priority date of an invention, utility model or industrial design, have the right to proceed with that use gracious provided that the scope thereof is not extended (the right of prior use)”.

Simbirskiy zavod steklopodyemniko argued that:

1) a window cable pulling device, which is actually similar to the utility model protected by the patent dated December 26, 2011, was developed by the claimant in April 2007;

2) working drawings of component parts were developed by designers and approved by the technical director (employees of Simbirskiy zavod steklopodyemnikov);

3) engineering documentation and corresponding moulds were prepared;

4) the claimant started to produce the component parts for this device;

5) the claimant started to produce and sell the finished products made with the use of this design (“Door window lifter”).

To support the arguments, the Claimant submitted the following documents to the court:

- engineering documentation for the product titled “Door window lifter” with drawings;
- certificates of origin;
- commodity waybills for 2007-2011;
- printouts from the accounting computer program.

At the petition of the claimant, the court commissioned the patent and technical expert examination. Questions put to the expert witnesses:

It was evident from the answers, that prior to the priority date, the claimant had developed engineering documentation for the product titled “Door window lifter”, which was not the electric window lifter, but contained every feature of the utility model claims by the patent “Device for pulling window lifter cable”.

Having examined commodity waybills, the expert witnesses and the court concluded that back in 2005, i.e. prior to the development of engineering documentation, the claimant used to sell window lifters (under other names), which inherently could not contain the defendant’s utility model, but the claimant called them electric window lifters.

Thus, the court found that the claimant failed to prove that the products titled “Door window lifter” identical to the utility model by the patent “Device for pulling window lifter cable” had been brought into production and produced (sold) prior to the defendant’s priority date, i.e. December 26, 2011.

Come-off

As a result, the lower court (Judgment of the Ulyanovsk region commercial court dated June 14, 2016), the court of appeal (Ruling of the Eleventh Commercial court of appeal dated August 18, 2016) and the court of cassation (Ruling of the Intellectual Property Court dated December 13, 2016) took the side of the Entrepreneur and declined to establish the claimant’s right of priority.
It is important to remember that the presumption of the right of prior use is not provided by the law of Russia.

Thus, establishing the right of priority requires providing the evidence to prove each of the following facts:

a) the prior user used the solution identical to the patented solution;
b) the identical solution was created independently;
c) the solution was used in good faith;
d) use or preparing to use the identical solution in Russia before the priority date for the patented object;
e) extent of prior use.

These strict rules are aimed primarily at protecting the rights of patent holders, since the right of prior use may to a certain extent limit the exclusive rights to patents. Naturally, it’s not easy to get the permission to use an invention, utility model, or industrial design by initiating a legal action. In this dispute, the court held that technical documentation was not enough to establish the identity of the claimant’s and defendant’s technical solutions, as well as to establish the prior user right for Simbirskiy zavod steklopodyemnikov.

ABOUT THE AUTHOR: Nataliia Minakerman
Nataliia Minakerman is a Lawyer in the International Department at IPStyle Patent Law Company. She specializes in the protection of intellectual property rights in Ukraine. The point of Nataliia’s focus is the theoretical and legal aspects of the IP law field regulation. The most challenging and landmark cases in Ukraine and other countries are the subject to her analyzing. From the perspective of completed overview, she develops new suggestions and judicial strategies for disputes settling in various branches of IP law.

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Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.

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