table of contents
Prior use rights of designs
(1) Overview of prior use rights of designs
(1-1) Non-exclusive license
A non-exclusive license by prior use (also known as a prior user right) is a type of non-exclusive license, but there are three types of non-exclusive licenses: a non-exclusive license by permission, a non-exclusive license by statutory license, and a non-exclusive license by arbitration. A prior user right is a type of statutory license.
A statutory license is a right that arises in accordance with legal provisions for the sake of public interest or fairness between the parties, even without the permission of the design right holder, and allows the commercial exploitation of a registered design within the scope prescribed by law.
Prior use rights are the right of a person who has been manufacturing, selling, etc. a registered design of another person before the other person applied for a design to continue to manufacture, sell, etc. free of charge, subject to certain conditions.
(2) First-to-file system and prior user rights: The purpose of the prior user rights system
(2-1) First-to-file principle
Many countries, including Japan, have adopted the first-to-file system, which means that only the person who files a design application first (the first applicant) can obtain a design right.
Once a first applicant obtains a design right, even if a person has implemented the design before the first applicant, if he or she implements the registered design without the permission of the first applicant (design right holder), the person will be subject to the enforcement of rights such as injunctions and claims for damages.
(2-2) Purpose of the prior user rights system
However, if the first-to-file system were to be strictly enforced, it would be unfair because anyone who had been manufacturing or selling a product before the first applicant filed a design application would not be able to continue their business. The prior user rights system was established as an exception to the first-to-file system in order to ensure fairness between design rights holders and prior user rights holders.
In addition, if production and sales can no longer be continued, existing facilities will fall into disrepair, so this system is also beneficial from the perspective of protecting existing facilities.
(3) Requirements for prior user rights
The requirements for prior user rights are as follows:
1) The person created the design without knowledge of the design in the design application, or derived it from someone who created the design without knowledge of the design
2) A person who is engaged in a business of working a design in Japan at the time of the design application, or who is preparing to do so
The interpretation of the lexical parts is explained below.
(3-1) Don't know
1) Having created a design or a similar design without knowledge of the design in the design application
2) The person learned of the design in question from a person who created the design or a similar design without knowing the design in question.
In other words, it refers to someone who created something themselves, rather than imitating something, or someone who was taught by someone who created something themselves.
This does not involve the timing of whether or not you knew about the design at the time of the other person's application, but rather whether the way in which you became aware of the design was legitimate (i.e., that it was not an imitation of a registered design).
(3-2) When filing an application
Strictly speaking, the time of day on the filing date also matters, but in practice it is thought to be very rare for the time to matter.
(3-3) Within Japan
Prior use rights will not be recognized even if the design has been used abroad. It is necessary that the design has been used within Japan.
(3-4) A person engaged in a business involving the exploitation of a design, or a person preparing for such a business
Preparation for a project requires that there is an intention to carry it out immediately and that this intention is expressed to a degree and in a manner that can be objectively recognized.
In other words, it is necessary for something to be objectively recognized as preparation; merely planning it in one's mind or applying for a loan from a bank to purchase machinery will not be recognized as preparation for a business.
In order to be recognized as preparation for a business, for example, the machinery necessary for the business must have been ordered and already completed, employment contracts must have been signed, and significant promotional activities must have been carried out.
(4) Effect of prior user rights
A non-exclusive license is granted within the scope of the design and business purpose being implemented or prepared.
It is not permitted to carry out business outside the scope, but it is permitted to expand the scale of business if the business is the same.
(5) Proof of prior use rights
Although prior use rights are beneficial, they will not be recognized unless they can be proven, and proving them is not easy.
For example, you need objective documents that prove that you were implementing or preparing a business at the time of filing a design application for another person's design, documents that objectively prove that you created it independently, etc. Even if you have documents, they will not be accepted as evidence if they are undated or if there is a delivery note but it does not state that it is a delivery note for the product related to the design.
It is important to keep such materials safe if you have concerns about claiming prior user rights.
in conclusion
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