Suppose your company develops an innovative working method that you apply successfully for years. You keep the technology secret and do not apply for a patent for it. Until you discover that another company has independently made the same invention and has received a patent for it. Can you still use your method? Tinneke Jacobs, European patent attorney and partner at Oryon, explains how the right of prior use protects you in certain circumstances.
A patent on an invention that you have been using for years?
A patent gives the holder the exclusive right to prohibit others from commercially using a protected invention. To obtain a valid patent , the invention must be new, among other things. This means that it may not be publicly known before the filing of the patent application.
But what if a company has been using the same technology for years, without anyone outside the company knowing about it? In principle, a secret application does not make an invention public. Think, for example, of a researcher who develops a new technology and tests it in his laboratory. Or an R&D team that develops an innovative production process and applies it internally, without sharing the technical knowledge with the outside world.
Because the invention is not publicly accessible, another party that independently develops the same technology may still be able to obtain a valid patent for it. This raises an important question: can the new patent holder then prohibit you from using a method that you have been using yourself for years?
The right of prior use offers protection
Fortunately, Belgian law provides for an exception to the exclusive rights of the patent holder: the right of prior use. According to Article XI.36 of the Code of Economic Law , a person who had a good faith possession of the invention or was already using it before the filing date or priority date of a patent may continue to exploit that invention under certain conditions.
Suppose your company developed an innovative production method ten years ago. You decided to keep the method secret instead of applying for a patent. If a competitor later independently develops and patents the same method, you may be able to invoke the right of prior use. So you don’t necessarily have to stop your production because another party has received a patent. But in order to invoke this exception, you must meet a number of conditions.
When can you invoke the right of prior use?
In order to be able to invoke the right of prior use, you must meet two important conditions.
- You had the invention in good faith
You must have already used or owned the invention on Belgian territory before the filing date or priority date of the patent. Moreover, you must have acquired the invention in good faith. For example, if you have unlawfully obtained the technology from the later patent holder, you cannot invoke the right of prior use.
- You can prove your previous possession or use
In practice, this is often the biggest challenge. You don’t necessarily have to have already applied the invention. It is sufficient that you had it before the relevant date and that your technical knowledge was sufficiently complete and practical to be able to use the invention immediately.
But how do you prove that years later? Think of dated research reports, technical drawings, laboratory notes, test results or other internal company documentation. An i-DEPOT or a notarial deed can also help to record what technical information you had at your disposal at a given time.
Important: a date registration does not automatically prove that you meet all the conditions for the right of pre-use. Your documentation must sufficiently demonstrate that you actually owned or used the invention before the relevant date.
A patent attorney can help you assess whether your documentation is sufficient to substantiate a possible right of prior use.
Two main limitations: transfer and territory
Even if you meet the conditions, the right of prior use does not offer unlimited protection. The law is linked to your company. You can’t just sell or transfer it separately. In principle, transfer is only possible together with the company to which the right is linked.
Moreover, the right is territorially limited. A Belgian right of prior use applies exclusively to Belgium. If you have used a method in Belgium for years, this does not automatically mean that you can continue to use it in France, Germany or the Netherlands if a patent is in force there. Conversely, previous use in France does not automatically give you a right of prior use in Belgium.
A similar scheme exists in many European countries, but the conditions vary from country to country. This can pose a significant risk to companies that operate internationally.
Keeping an invention secret or patenting it?
The right of prior use can therefore be a valuable safety net. Yet it is not a fully-fledged alternative to a well-thought-out protection strategy. When you develop an innovation, you are faced with a strategic choice: do you apply for a patent or do you keep the technology secret?
A patent can give you exclusive rights for a limited period of time, in exchange for the publication of your invention. Confidentiality can be interesting when a working method is difficult to trace and you can keep its confidentiality for a long time. But secrecy also entails risks. Another party can independently develop and patent the same invention. In that case, you may have to rely on the right of prior use, with the associated evidentiary requirements and geographical restrictions. Therefore, think about a strong protection strategy during the development of your innovation.
Prior use can also play a role in a restored patent
The term ‘prior use’ also occurs in another situation: when a patent expires and is later reinstated. For example, a patent may expire because the annual renewal fee has not been paid on time. Under certain conditions, the patent holder can request that his rights be restored.
What happens to a company that started using the invention during the period in which the patent expired? Belgian legislation also provides protection for this. Anyone who used the invention in good faith during that period or made demonstrable preparations to use it can, under certain conditions, retain the right to continue that application within their own company.
There is an important difference with the previously discussed right of pre-use. With a restored patent, it is not enough that you knew the invention and could apply it immediately. You must have actually used them or made concrete preparations for that use. Moreover, ‘good faith’ plays an important role. Anyone who knew or is deemed to know that a request for reinstatement had been submitted cannot simply invoke this exception.
Protect your innovation with a well-thought-out strategy
Keeping an invention secret can be a conscious and wise choice. But what is a trade secret today can be independently developed and patented by another party tomorrow. That’s why it’s important to decide not only how to protect an innovation, but also how to demonstrate that you already had it.
Our patent attorneys help you to weigh up patent protection and confidentiality, to identify the risks and to carefully document your technical knowledge.
Would you like to see which protection strategy best suits your innovation? Book a no-obligation introductory meeting with our patent attorneys.
