FINAL EXAMINATION
Professor Hans Goldrain
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)