What does the manufacture of an identical product in prior user rights mean?

Patent prior user rights are provided under article 69 of the Patent Law. Pursuant to this provision, it is not deemed to be patent infringement when a party had manufactured an identical product prior to the patent filing date and whose manufacture of that product continues, but only within the original scope. From this it can be seen that it is crucially important to clarify what constitutes the manufacture of an identical product.

Identical product

“Identical” here should mean that the product manufactured prior to the filing date is identical to the patent, not that the priorly manufactured product is identical to the product whose patent is allegedly being infringed. In other words, consideration need only be given as to whether the prior act is the act of manufacturing the patented product; the relationship between the prior manufactured product and the alleged infringing product can be ignored.

First, the prior user defence should consider the relationship between the patented technology and the prior use technology, using the specific right to use the prior technology to counter the restrictions imposed by the patented technology. Secondly, when assessing patent infringement, the prior manufacturer should be restricted only within the patent’s scope of protection. The method of determining through assessment whether the patented technology and the prior use technology are identical is conducive to avoiding the prior manufacturer being subject to restrictions outside the patent’s scope of protection. Lastly, outside the patent’s scope of protection, the prior manufacturer should not be restricted by its own history and should be free to develop as it wishes.

Jiang Fengtao is the managing partner and Yang Cunji is an associate of Hengdu Law Offices