How to prove the "original scope" in the defense of the right of first use.

The legal basis for the defense of the right of first use is:《Item (II) of Article 75 of the Patent LawAny of the following circumstances shall not be deemed as an infringement of the patent right:The same product has been manufactured, the same method has been used, or the necessary preparations have been made for manufacture and use before the date of patent application, and the manufacture and use continue only within the original scope..Interpretation of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Cases of Patent Infringement Disputes"Article 15, paragraph 2, providesUnder any of the following circumstances, the people's court shall determine that the necessary preparations for manufacture and use have been made as specified in Item (II) of Article 69 of the Patent Law:The (I) has completed the main technical drawings or process documents necessary for the implementation of the invention-creation; the (II) has manufactured or purchased the main equipment or raw materials necessary for the implementation of the invention-creation. The original scope provided for in Item (II) of Article 69 of the Patent Law includes the scale of production existing before the date of patent application and the scale of production that can be achieved by using existing production equipment or according to existing production preparations.The people's court shall not support the transfer or licensing of the technology or design that has been implemented or made necessary preparations for implementation after the patent application date, and the accused infringer claims that the implementation is to continue within the original scope, except for the transfer or inheritance of the technology or design together with the original enterprise.

The key and difficulty of the success of the preemptive right defense lies in the submission of evidence that meets the requirements of the establishment of the preemptive right.Shenzhen Saiyuan Electronics Co., Ltd. tried in Guangzhou Intellectual Property Court(Hereinafter referred to as Saiyuan Company)v. defendant dongguan lefang industrial co., ltd.(Hereinafter referred to as Lefan Company)In the case of infringement of utility model patents, the Guangzhou Intellectual Property Court made(2020)Guangdong73Knowing the Beginning of the People585In the judgment, it was held that the certificate submitted by Le Fang Company had been completed before the date of the patent application in question.A25The relevant evidence of speaker design, other evidence that has been prepared for mass production and sales, and evidence that has promoted the sale of the accused infringing products, most of the evidence is provided by unilateral production, and the court does not accept it if Saiyuan does not recognize its authenticity and legality. Therefore, the above evidence submitted by LeFang is not sufficient to prove that it had manufactured the same product or had made the same product before the date of the patent application in question.Necessary preparation for good manufacturing. To take a step back, even if the above evidence is admissible, the evidence given by Le Fang Company is limited to the fact that it has prepared and manufactured the infringed product before the patent application date, but has not provided evidence on the scope of its manufacture and the continued manufacture only within the original scope. Therefore, the evidence submitted by Le Fang Company is not sufficient to prove that the defense of first use is established.In the above-mentioned cases, the reason why the defense of the right of first use was not recognized was that most of the evidence submitted by Lefang Company was self-made evidence, and the other was that the relevant evidence in the original scope was insufficient.

Lefang Company refused to accept the first instance judgment to the Supreme People's Court (hereinafter referred toThe "Supreme Court") filed an appeal, and in the second instance, Lefang added four new pieces of evidence and witness testimony to prove the size of its factory and the evidence of ordering molds with outsiders, etc., to strengthen the fact that Lefang continued to manufacture and use the infringed products only within the original scope.

The Supreme Court made (2021) The Supreme Law knows the end of the people508In its judgment, the Supreme Court held that:“Since the determination of the original scope often involves objective circumstances such as production molds, production quantities, plant area, etc. that existed before a certain point in the past, the determination of the original scope of“Only continue to manufacture and use within the original scope”The relevant facts shall be ascertained, and the burden of proof shall be allocated in combination with the claims of the parties and the specific circumstances of the case. The prior user has tried his best to provide evidence that the evidence given can be prima facie.“Original Scope”If there is reasonableness and the patentee has not provided evidence to the contrary, it can be determined that the prior user has not made or used beyond the original scope. If the subsequent patentee has evidence that the first patentee manufactures or uses beyond the original scope, the patentee has the right to claim separately.its legitimate rights and interests. In this case, the evidence such as the order review form and forecast order submitted by Lefang Company can prove that Lefang Company has a certain production scale and production capacity to manufacture the products involved before the patent application date. And the mold factory quotation, mold acceptance, witness testimony in the second instance and other evidence combined with each other, can initially prove that the company only holds.1Set of production molds. The Plant Lease Contract, on the other hand, provides preliminary proof that the plant area is from2013The year has not changed so far. Therefore, the evidence submitted by Lefang Company corroborates each other and can form a chain of evidence, which preliminarily proves the production scale and scope of Lefang Company before the date of the patent application in question, and that it has not expanded its production scale. The evidence submitted by Lefang in this case regarding the original scope is reasonable and has initially reached a high level.The standard of proof of the degree of cover. In the case that Saiyuan Company did not submit contrary evidence to prove that Lefang Company exceeded the production scale before the date of the patent application in question, the Court determined that Lefang Company did not manufacture the products in question beyond the original scope.”

From the above (2021) The Supreme Law knows the end of the people508Judgment No. can understand the Supreme Court's judgment of the original scope of evidence and the criteria for determination.In terms of the original scope of proof, the scale of the factory, the area of the factory, the number of employees, the orders for purchased molds or equipment, product orders, the number of equipment, the maximum production capacity of the certification materials, etc. can be considered. When these evidences can form a complete chain of evidence and initially reach the proof standard of high veracity, the patentee fails to provide sufficient counter-evidence to overturn it, generally, it can be determined that the accused infringer is implemented within the original scope.

The above cases hope that when enterprises experiencing infringement disputes need to defend their right of first use, they can bring some enlightenment to their proof. In addition, it is suggested that enterprises should apply for patents as soon as possible, while for technologies protected in the form of technical secrets, they can take precautions and preserve evidence through notarization or other means for the research and development process, implementation preparation process, implementation process and evidence materials within the original scope, in the event of infringement disputes in the future, it can ensure that the enterprise continues to implement within the original scope and safeguard the interests of the enterprise.