Any process of creating a result of intellectual activity is accompanied by a certain source of inspiration, which can often be the same for several authors at once. As a consequence, two authors who do not know each other can create similar but creatively independent intellectual property objects. In copyright law, this situation is called “parallel creativity”. However, if copyright arises by virtue of its creation in an objective form, then in order to obtain exclusive rights to a patent, it is necessary to comply with a number of formalities established by law, in the form of obtaining a patent for the corresponding solution. In order to support the scientific, technical and design spheres, the legislator introduced a separate provision of the law, in which he granted authors who did not exercise their right to obtain a patent, but conscientiously use the patented technology, a special right called the “prior use right”.

By virtue of paragraph 1 of Article 1361 of the Civil Code of the Russian Federation, “a person who, prior to the priority date of an invention, utility model or industrial design (Articles 1381 and 1382), in good faith used on the territory of the Russian Federation an identical decision or decision created independently of the author, which differs from the invention only in equivalent features (paragraph 3 of Article 1358), or has made the necessary preparations for this, retains the right to further free use of the identical solution without expanding the scope of such use (the right of prior use).

In other words, the right of prior use provides the possibility of free use of an identical solution to a certain extent without expanding it.

As noted by the Supreme Court of the Russian Federation in paragraph 126 of the Decree of the Plenum No. 10 of April 23, 2019, “On the Application of Part Four of the Civil Code of the Russian Federation”, “the right of prior use does not arise by virtue of a court decision, but if there are 1 article 1361 of the Civil Code of the Russian Federation of the conditions…».

When considering cases on establishing the right of prior use, the courts identified the following conditions:

1) the use by the prior user of a solution that is identical to the patented object;

2) creation of an identical solution regardless of the author;

3) good faith in the use of the solution;

4) use or preparation for use of an identical solution on the territory of the Russian Federation before the priority date of the patented object;

5) the amount of prior use.

Moreover, it is important for the prior user to simultaneously prove all the above circumstances (for example, the ruling of the Court for Intellectual Property Rights dated August 28, 2018, in case No. A71-13515 / 2017).

Meanwhile, the current legislation does not exclude the possibility of applying to the court with an independent claim (including a counterclaim) for the recognition (establishment) of the right of prior use (paragraph 126 of Resolution No. 10).

And if everything is quite clear with the use of an identical solution, then, as a rule, more questions arise in making the preparations necessary for this.

According to paragraph 128 of Decree No. 10, “by virtue of paragraph 1 of Article 1361 of the Civil Code of the Russian Federation, the right of prior use arises for a person who has made the necessary preparations for using an identical technical solution protected by a patent for an invention, utility model or identical to a solution protected by a patent for an industrial design in appearance or a solution that differs from the invention only by equivalent features.

In order to determine the actions related to the implementation of the necessary preparations, paragraphs 2 and 3 of paragraph 128 of Decree No. 10 indicate that “under the necessarypreparation is understood as the intention established by the circumstances of the case to use at a particular enterprise an existing solution identical to the object protected by a patent at a technological stage that determines the procedure for its implementation, which can be objectively successfully implemented.

At the same time, it was noted that “scientific and other studies not related to the direct introduction into production of the manufacturing technology of the product (product) or the application of the method do not constitute the necessary preparation for the use of an identical solution.”

According to judicial practice, the purchase of the necessary raw materials, material, equipment for the production of products, the availability of production facilities, trained personnel, technical and accounting documentation, etc. can be taken into account as evidence of the necessary preparations. (For example, the decision of the Nineteenth Arbitration Court of Appeal dated March 9, 2016, in case No. A14-9941 / 2015).

It is interesting that the right of prior use in itself is not negotiable, however, it can be transferred to another person together with the enterprise where the use of the identical solution took place or the necessary preparations were made for this. in accordance with paragraph 2 of Article 1361 of the Civil Code of the Russian Federation.

By virtue of the provisions of Article 132 of the Civil Code of the Russian Federation, “an enterprise as an object of rights recognizes a property complex used to carry out entrepreneurial activities.

The structure of the enterprise as a property complex includes all types of property intended for its activities, including land plots, buildings, structures, equipment, inventory, raw materials, products, rights of claim, debts, as well as rights to designations that individualize the enterprise, its products, work and services (commercial designation, trademarks, service marks), and other exclusive rights, unless otherwise provided by law or contract.”

In order to avoid qualifying the acquirer of such a property complex as an infringer of the exclusive right in the subsequent production of products using a patented technology, the parties are recommended to prescribe in the relevant agreement on the sale of the enterprise an independent condition on the inclusion of the right of prior use in the transferred enterprise.

Also, the actions of third parties to introduce goods using a patented solution into civil circulation, which were purchased from a prior user, are not a violation of exclusive rights to patents, since, by virtue of paragraph 6 of Article 1359 of the Civil Code of the Russian Federation, “they are not a violation of the exclusive right to an invention, utility model or industrial design introduction into civil circulation importation into the territory of the Russian Federation, application, offer for sale, sale, other introduction into civil circulation or storage for these purposes of a product in which an invention or utility model is used, or a product in which an industrial design is used, if this product or this product was previously introduced into civil circulation on the territory of the Russian Federation by the patent owner or another person with the permission of the patent owner or without his permission, but on the condition that such introduction into civil circulation was carried out lawfully in the cases established by this Code.

Similar conclusions were made in the decision of the Nineteenth Arbitration Court of Appeal dated March 9, 2016, in case No. A14-9941/2015.

In the event of a dispute regarding the existence of the right of prior use, the burden of proving the absence of such a right lies with the person denying this right, since its existence is assumed until the opposite is proved (paragraph 29 of the Review of Judicial Practice in Cases Related to the Resolution of Disputes on protection of intellectual rights, approved by the Presidium of the Supreme Court of the Russian Federation on September 23, 2015).

At the same time, the prior user should not forget that, despite being given the opportunity to produce products using a patented technology, such production should always be limited to the amount determined on the priority date of the patent.

As explained in paragraphs 28, 30 of the Review, “in order to assess the scope of the right of prior use, it is necessary to take into account not only the actual use of the object of exclusive rights, but also the preparations made for this.

When determining the scope of use of an identical technical solution, it is necessary to take into account the criterion of the possibility of implementing this technical solution with all the resources that existed at the time of the creation of such a solution, as if they were all used only for the production of products based on it.

The rights of the prior user are limited to the scope of application of the identical solution that he achieved on the priority date, or, if the use was not started before this date, to the extent corresponding to the preparations made.

The prior user is not entitled to use the identical solution to a greater extent than the one in which the solution was used or intended to be used before the priority date of the application. At the same time, the established scope of use of the identical solution must be documented.”

This position was further confirmed later by the Supreme Court of the Russian Federation in paragraphs 4, 5, 6 of clause 127 of Decree No. 10, where it was noted that “the quantitative change in the volume of output (in pieces, kilograms, meters, etc.) should not exceed the volume of use (necessary preparation for use), which took place before the priority date of the invention, utility model or industrial design, including that established by the court when recognizing the right of prior use.

To determine such a number, the court, at the request of the person participating in the case, or with the consent of the persons participating in the case, may appoint an expert examination.

Similarly, the territory of use of an invention, utility model or industrial design cannot be extended.”

In the event that the prior user nevertheless decides to expand the scope of use of the patented solution in any way, including by indicating the types of manufactured products, he will have to obtain permission from the patent holder to use the patented invention, utility model or industrial design, in accordance with paragraph 3 of clause 127 Decree No. 10.

Accordingly, lawful introduction into civil circulation and subsequent use can be recognized only in relation to the volume of products, the use of which or the necessary preparations for which were achieved by the previous user before the priority date of the corresponding registered patent. In the rest, the volume of products that goes beyond the limits, in the absence of an appropriate permission, of the patent owner may be recognized as illegal use of patents.

Thus, the current legislation guarantees the protection of the exclusive rights not only of holders of patents for an invention, utility model or industrial design, but also of persons who have created and used in good faith an identical solution before the priority date of the corresponding patent, which, in my opinion, has a beneficial effect on scientific and technical and design field of activity.