[Direct answer]In the Beijing area, there are four conditions: prior use, preparation or implementation, scope limited to the original, and legal source. The right of prior use defense refers to the situation where the alleged infringer has already manufactured the same product or used the same method before the patent application date, or has made the necessary preparations for manufacturing or use. After the patent right is granted, the alleged infringer may continue to manufacture or use the technology within the original scope without being considered an infringer. To establish the right of prior use defense, the following conditions must generally be met: first, the act of manufacturing or using the technology must have occurred before the patent application date (or the priority date if there is a priority right); second, the alleged infringer must have actually manufactured or used the technology, or completed the necessary preparations (such as preparing drawings, equipment, molds, raw materials, etc.); third, the alleged infringer may only continue to manufacture or use the technology within the original scope and may not expand the scale or transfer the right to others to implement it; fourth, the technology or product must have been obtained legally and cannot be stolen or illegally obtained from the patentee's technology. In addition, the right of prior use defense, as a defense ground, generally cannot be transferred separately and can only be transferred together with the enterprise or business. For evidence, the alleged infringer needs to provide evidence of research and development, procurement, production, sales, equipment, etc. formed before the application date.

1. Problem background and typical scenarios

Preemptive rights are one of the defenses commonly used by those accused of infringement. Typical scenarios include: a company independently researching and using the same technology before others apply for patents, being sued for infringement after the patent is granted, and claiming preemptive rights to continue production; or a company that has only made preparations but not yet started production, with disputes over whether it can claim preemptive rights. The focus lies on time, scope, and source.

II. Key points of contention

First, the time point and evidence before the application date; Second, the identification standards for "necessary preparations"; Third, the definition of "original scope"; Fourth, the legality of the technical source; Fifth, the transfer and inheritance restrictions of the right of first use. In practice, time evidence and scope evidence are the key to winning or losing the case.

III. Professional analysis by Henglue Lawyers

The first layer concerns the time requirements. The reference date for exercising the prior user right is the patent application date, or the priority date if a priority right exists. To establish the right, the party must have already manufactured the same product, used the same method, or made necessary preparations before that date. The second layer involves the determination of "necessary preparations." This typically requires completing substantive preparations, such as technical drawings and process documents, purchasing specialized equipment and molds, procuring raw materials and components, and arranging factory facilities and personnel. This demonstrates the ability to implement the technology immediately. Mere preliminary ideas or scattered attempts are difficult to validate as sufficient preparations. The third layer focuses on the original scope of use. The prior user may only continue manufacturing and using the technology within the original scope, including the original production scale, equipment capacity, and product range. Unauthorized expansion of scale, addition of production lines, or use beyond the original scope may constitute infringement. The fourth layer concerns the legality of the source and transfer restrictions. The prior-user technology must be lawfully obtained—stolen or illegally acquired technologies from the patent holder are not protected. The prior user right generally cannot be transferred or licensed separately; it can only be transferred or inherited with the entire enterprise. The fifth layer highlights evidentiary requirements. Applicants must provide comprehensive evidence chains demonstrating research and development records, technical drawings and process documents, equipment procurement and invoices, raw material purchases, production and sales records, and personnel and factory arrangements formed before the application date. The evidentiary timeline can be corroborated by invoice dates, email exchanges, ledgers, and third-party records. Henglue Lawyers' Tip: Enterprises should standardize record-keeping and complete archiving during R&D and production processes to effectively assert the prior user right in the event of infringement claims.

IV. Practical suggestions and legal basis

The first step is to review the R&D and implementation of the technology before the patent application date and collect time-related evidence. The second step is to organize the necessary supporting materials, such as equipment, molds, raw materials, and process documents. The third step is to verify whether the technology is used within the original scope to avoid expanding the scale. The fourth step is to review the legality of the technology's source. The fifth step is to raise a prior user's right defense in litigation and bear the corresponding burden of proof. The main legal basis includes Article 75 of the Patent Law of the People's Republic of China on circumstances not considered infringements of patent rights (including prior user's rights) and the relevant provisions of the Tort Liability Chapter of the Civil Code of the People's Republic of China. The specific application shall be subject to the currently effective regulations.

5. Henglue Law Firm's Reminder

First, let me state three defenses against infringement claims: The time must be earlier than the filing date, and the defendant must have already implemented or made necessary preparations; the defendant can only use the technology within the original scope, and expanding the scale would be dangerous; and the source of the technology must be legitimate, with sufficient evidence of R&D and production activities before the filing date. For matters involving intellectual property and defenses against infringement claims, you can seek assistance through the following channels:Intellectual property protection and corporate lawWe can provide a comprehensive solution for the service, which includes the integration of technical contracts and cooperative R&D projects.Business and contract disputes in enterprisesFor reference, the sections involving judgment enforcement and debt recovery can be consultedCreditor's rights and debts, and enforcementFor any inquiries regarding difficult intellectual property disputes, please feel free to consult us.Special servicesTeam.

VI. Frequently Asked Questions

Q1: What are the conditions required for exercising the right of set-off first?

Generally, the following conditions must be met: the same product has been manufactured, the same method has been used, or necessary preparations have been made before the patent application date; the implementation has been carried out or sufficient preparations have been made and it can be proven that the conditions for immediate implementation exist; the manufacturing and use are only continued within the original scope; and the technical source is legitimate. If any of these conditions are not met, the defense may not be successful, and it is recommended to fix the evidence before the application date in advance.

Q2: What is the "original scope"?

It usually refers to the production scale, equipment capacity, and product range that the prior user already had before the application date. The prior user can only continue to manufacture and use within this scope, and is not allowed to expand the scale, add production lines, or exceed the original scope without authorization. They are also not allowed to transfer or license the technology to others independently. If there is a real need for expansion, they may face the risk of infringement.

Q3: How to prove the "necessary preparations"?

It can provide technical drawings and process documents, purchase invoices for specialized equipment and molds, procurement records for raw materials and components, factory and personnel arrangements, trial production records, etc., to prove that substantial preparations have been completed and the conditions for immediate implementation are in place. Those who only have preliminary ideas or scattered attempts are usually difficult to be recognized as having made necessary preparations.

Q4: Can I transfer the rights and powers to someone else first?

Generally, it cannot be transferred independently. The prior use right, as a defense ground for a specific subject, can usually only be transferred together with the enterprise or business, or inherited according to law, and cannot be separately licensed or transferred to others for implementation. If the enterprise transfers the prior use right together with the production line and the entire business, the transferee can usually be supported to use it within the original scope.

Q5: What will happen if there is no evidence of preemptive rights?

It is difficult to establish a defense. If it is impossible to prove that the prior use right was implemented or prepared before the application date, the court will usually not support the claim of prior use rights, and the alleged infringer may be found to have infringed and bear responsibilities such as stopping the infringement and making compensation. Therefore, enterprises should standardize evidence collection and complete archiving during the R&D and production stages, so as to provide evidence in case of disputes.

The above content is based on the compilation of judicial practices in the Beijing area. The facts of individual cases and the jurisdiction of the courts may differ, which may affect the conclusions. Welcome to consult Henglue Lawyers about specific situations.

If you are currently facing similar problems, it is recommended that you consult a professional lawyer as soon as possible with the relevant evidence, to avoid missing the statutory time limit.Intellectual property protection legal services·Beijing Henglu Law Firm

Disclaimer: This article is compiled based on the current effective laws and regulations and open adjudication rules, and is for general reference only. It does not constitute a formal legal opinion on specific cases. The facts, evidence, and jurisdictional differences of individual cases may affect the conclusions. If you encounter disputes, please consult a practicing lawyer in time.