Industrial Property Law

An inventor who has kept the invention secret may find that exploitation of the invention is hampered by the fact that a third party has registered the invention, thereby benefiting from the priority granted to the first applicant. In order to remedy this situation, Article L. 613-7 of the Intellectual Property Code recognizes the right of any person who, at the date of filing or priority of a patent, possesses in good faith the invention which is the subject of the patent, to continue to exploit it on a personal basis despite the existence of the patent. 

The “prior personal possession” exception can only be enforced against the patentee if the person claiming it can prove that he or she has complete knowledge of all the constituent elements of the invention, which is not the case when the invention possessed by the patentee has a different structure to the patented device . Full knowledge of the invention, independently of any implementation, is sufficient to establish possession. Thus, an undertaking which is the transferee of equipment used to implement a process can claim prior personal possession even if it did not implement the invention before filing the patent application .

Priority use must be proven by a reliably dated document . Such proof may be provided by the filing of a standard  or electronic  Soleau envelope. 

The possessor must have acquired knowledge of the invention in good faith. This is not the case for a company which only had access to the invention through its contractual relationship with the future patentee, on whose behalf it implemented tests and developed prototypes , or for a company created by the inventor when the latter filed the application on behalf of another undertaking of which he is the manager . 

The right of prior personal possession may only be transferred together with the goodwill, undertaking or part of the undertaking to which it is attached (Article L. 613-7, paragraph 2, IP Code). Assignment by an undertaking of its entire business, including the means for implementing the patented process, necessarily entails assignment of this right .

CA Paris, 20 September 2006, LawLex202200002124JBJ; CA Paris, 4 June 2008, LawLex202300001747JBJ.

Cass. com. 18 December 1973, LawLex202200002732JBJ. 

Cass. com. 29 November 1988, LawLex202200001830JBJ.

CA Paris, 4 June 2008, LawLex202300001747JBJ, which nonetheless dismissed the evidence insofar as the structure of the invention described in the Soleau envelope differed from the characteristics of the allegedly infringing invention. 

See INPI Decision No 2016-273 of 13 December 2016 relating to the terms and conditions for filing, extending and returning electronic Soleau envelopes. 

Cass. com. 25 April 2006, LawLex202200002731JBJ; Cass. com. 25 April 2006, LawLex202200002730JBJ.

Cass. com, 20 May 2003, LawLex202200001829JBJ.

Cass. com. 18 December 1973, LawLex202200002732JBJ.

315. Prior personal possession