INTERNATIONAL & COMPARATIVE PATENT LAW
FINAL EXAMINATION

Professor Hans Goldrain

Summer 1995

Instructions:

This is a two-hour, open-book exam. You may consult any written materials, yet your examination must be your own work. Consideration of the problems outside the exam room or discussion with any other persons during the exam period is not permitted .

Organize your answer before you begin to write and try to keep your answers concise arid clear.

Write your answers in the blue books supplied, but please use only one side of the page and observe the margins. Please write as legibly as possible!

Grading will be anonymous; please do not put your name on anything you turn in. Be sure your examination number is on each blue book you turn in.

I. Company A, doing business in Munich, Germany, has acquired from an employee the rights to an invention, conceived on August 20, 1993, of a new product. A starts to set up an assembly line for this product on December 12, 1993 and files a patent application in Germany on January 10, 1994 and, claiming priority, in the US on January 9, 1995.

An employee of company B, doing business in San Francisco and having a subsidiary in Germany, has conceived the same invention independently in the US on November 15, 1993 and assigned this invention to B. During December 1993, B establishes assembly lines for the new production the US and Germany. B files a US patent application on May 17, 1994 and, claiming priority, a subsequent application in Germany on May 16, 1995.

A starts selling the product in July 1994 in Germany, B in April 1994 in the US and in June 1994 in Germany.

Assuming the general requirements for patenting are met:

1. Who gets a patent in Germany?

2. Who can manufacture and sell in Germany?

3. What is your opinion with regard to patenting, manufacture and sale Li the US?

4. If the provisions , of the TRIPs agreement had come into effect 5 years ago, would the US situation be different?

If yes, explain in which respect. (15 points )

II. Company A, US-based, used to conduct business only in the US and to file only US patent applications, particularly a patent application on a new product on March 24, 1994 which was marketed in the US starting in September 1994. In a meeting on March 22, 1995, the Board decided that A should try to sell such products also in Europe, and a European patent application, claiming the US priority, should be filed. 'Me in-house patent attorney of A happened to be on vacation. His secretary telefaxed a request under the letterhead of A, designating all EPC member states and claiming priority, and a copy of the US application documents directly to the EPO, signing on behalf of her boss, on the evening
of March 22, 1995.

The boss, having returned from his vacation, tells her that this application was worthless since a company without a principal place of business in the EPC states has to be represented by a professional representative whose name appears on a list maintained in the EPO.

1. Is he right?
2. Was there another possibility to save the priority right? (10 points)

III. Mr. X living in London, England, has made an invention. He tells Mr. B, a business friend, about the subject matter of the invention, mentioning that he does not intend to exploit it for the time being and therefore will not file a patent application. Mr. B thinks that Mr. A is wrong and files a patent application in his own name, mentioning Mr. A as inventor, in the EPO designating UK, FR, BE, NL. After the publication of the application, he sends a copy to Mr. A. Now Mr. A is annoyed. He very much dislikes that Mr. B should be granted a patent since W. A did not authorize the filing. Besides, he believes that more countries must be designated once patent protection is sought at all. Mr. A would like to file a new patent application with claims drafted to his satisfaction andadditional designation of DE and IT without losing the application date.

If A asks you for your professional advice, what would you recommend? (15 points)

IV. Company A has filed a patent application in the EPO on January 12, 1995, claiming priority of a first application in Belgium on January 13, 1994. Examination by the EPO as to formal requirements revealed 2 months later that a wrong sheet of drawings had been submitted which belongs to another application. The drawings referred to in the description of the present application are missing.

1. Which legal provisions apply?

2. What would you check first?

3. Which options do you have?                                      (10 points)

V. A company having its principal place of business in Quito, Ecuador, is owner of an invention of a product that might be marketable in various countries of the world. A patent application had just been filed in Ecuador. Before filing in other countries, the company intends to test the market in several countries, particularly in the US, Japan, Great Britain, France, and Germany, and would like to spend money for patent application in these countries only if the tests were encouraging. Half a year would be sufficient, but Ecuador is not a member of the Paris Union.

What could the company do to enjoy:
1. Right of priority?
2. National treatment in Paris Union countries?
3. Is there a possibility for a PCT application? (10 points)


VI. Explain briefly the most important differences between Chapter I and Chapter II
PCT. (5 points)

VII. In a PCT application you can make a single designation for all countries members of
the EPC.
At which time do you have to decide which designations you actually want to maintain in the
European proceedings? (5 points)

VIII . Are there specific provisions for a patent granted by the EPO (for a designated country) and a patent granted for the same country-by a national patent office, regarding

1. Revocation (invalidation)

2. Enforcement (10 points)

IX. An inventor residing in Stockholm, Sweden, has invented a screwdriver with a flexible
shaft. He is not- experienced in patent matters and would like to save the money for
attorney's fees. So he writes on his personal paper a letter in the Swedish language directly
to the EPO as follows:

"I want a European patent for all countries and claim a screwdriver with a flexible shaft". He encloses a description in handwriting and rough sketches of embodiments, and signs the letter.
1. Would such a letter comply with the formal requirements of the EPC?
2. Would the letter be a suitable basis for a claim of priority.? (10 points)

X. What does the term 'regional exhaustion" mean?
What is exhausted? (10 points)