Limitations of trademarks. Prior user rights defence in Germany, UK, France and USA


The Albeit trademark protection does not entail obvious time limits as patents do, it still has territorial limitations, almost the same as in patents. A patent in the US will provide you with exclusive rights only in the US, the same as a US-registered trademark. Here it means worth considering and figuring out the economic component: where will it be appropriate, to protect your intellectual property? Consequently, if you do not protect your interests, in one of the countries where you propose to produce/distribute invention in the future, someone will likely copy furthermore get ahead of you in registering a patent. Consequently, you risk getting a ban in this region.

In case you aren't ready to file a patent application, avoid publicly disclosing your concepts and use NDA as much as possible. It will help you keep your invention secret and manage trade secret protection. It will also help claim “prior user rights” protection in the case of a patent ban on use. In the US, this is specified in the Leahy – Smith America Invents Act. where it says that if you manage to prove that a year before the filing of the patent application by another person, you have already adopted this invention, the Patent Prohibition on Use will not apply to you.

Something similar can be found in Germany. The prior user right in Germany is limited to accept that has been put into effect or prepared before the filing of the patent application or priority. Exemption from the prior user right may be requested only by an individual or legal entity that has decided to use or prepare for use. The prior user right is the protection of only those advantages of the patented invention that occur within the business of the specified person or organization.

In the UK, the prior user rights are governed by section 64 of the Patents Act 1977. The prior user rights are an exception to the violation, which stands accessible to any person who, before the priority date of the invention in the granted patent: (a) conscientiously performs an act which would constitute a violation of the patent, if it were in force, or (b) conscientiously makes effective and serious preparations for such an action.

In France it's possession. In France, there is no definition of the term “prior user”. It is commonly accepted, that intellectual possession of the invention can be sufficient to generate the right to practice. The property must be kept secret and be realized or transferred before the filing of the application or patent priority date. Possession needs to be acquired in France.

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