INTERNATIONAL & COMPARATIVE PATENT IAW

FINAL EXAMINATION

Fall 1995

Professor Hans Goldrian
 

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 answers before you begin to write and try to keep your answers concise and 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.

PROBLEM I

Employees of two US companies A and B have made independently the same invention and assigned it to their respective employers. Company A can refer to a conception date of January 12, 1994. It started a production line in June 1994 and marketed the product since October 1994. It filed a patent application with the USPTO on September 15, 1994 and subsequent patent applications, claiming the US priority, with the EPO and the JPO on September 12, 1995. Company B can refer to a conception date of June 15, 1994. It filed a US patent application on August 19, 1994 and subsequent applications, claiming the US priority, with the EPO and the JPO on August 18, 1995. In the US, Company A can be expected to win the interference proceedings.

Which company can get:

a) The European patent?

b) The Japanese patent?  [10 points]


Problem II

Define briefly the terms:

a) "first application!

b) "claiming priority" [15 points]


Problem III

Mr. X a resident of a New England town, has invented a new and economical method to repair frost heaves in streets. A local TV station airs a report in which Mr. X explains his method in detail.

Two days later he is approached by a patent attorney recommending patent applications in the US, Europe, and Japan and offering services.

This on disregards a basic requirement for patentability contained in one
of the relevant laws. What is it? [10 points]

Problem IV

A US company has filed a PCT application and chose the EPO as ISA and IPEA. It appoints a European -patent agent to represent it before the EPO in the international phase.

a) Was that necessary ?

b) If no, what could be a reason to do that? [10 points]


Problem V
Who is entitled to:

a) Claim priority under Article 4 Paris Convention?

b) File a PCT application?

e) File a European application? [10 points]


ProblemVI

A US company has Med a US patent application on November 8, 1994 and subsequently manufactured and marketed the new product in 1995. Contrary to original intentions, it was decided in a board meeting in the morning of November 8, 1995, to also market the product in Europe and to take out a European patent.

a) Is it essential to claim the US priority, and if yes, why?

b) As patent attorney of the company, what would you do? [10 points]


ProblemVII

What legal possibilities does the public have to attack a granted European patent? [10 points]
 

Problem VIII

While the granted European patent breaks up into a bundle of national patents, each enforceable under respective national law, the EPO contains a number of provisions which are binding the national courts as far as validity and interpretation of claims is concerned. Name the most important of these provisions. [15 points]

Ptoblem IX

A French housewife has invented a new appliance and asked a mechanic to make a pilot model, obliging him to treat the invention confidential. The mechanic, however, is dishonest, though he was told that the invention had not yet been filed in the patent office.

What remedies does the EPC provide for the inventor if the mechanic:

a) Publishes the invention?

b) Files a patent application? [10 points]

Problem X
Define briefly the terms:
a) "international exhaustion"

b) "border measures" [10 points]


* * * END OF EXAMINATION * * *
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