Patent & Trade Secret Law

IPSI Summer Institute

1995

For the 1994 season Harley Davidson decided to compete in the American Superbike series and in the world Superbike series in Europe. All of the people involved in the American series were employed by Harley Davidson. The European effort was made up of the Harley Davidson team and a "private" team that leased motorcycles from Harley Davidson. By the European series rules each manufacturer is required to lease motorcycles to a private team. Harley's lease with the privateer team stipulated that it would receive the same motorcycles as the Harley factory effort.

During 1994 Jane Anderson joined Harley Davidson as an engine designer after working for Cosworth Engineering. In May 1994 she designs a prototype engine that is running on the dynamometer in June and is tested by the American Harley team in July meeting all requirements on July 13. This design is raced with some effect in the U.S. by the factory team in August 1994 and is scheduled to be used by all teams in September.

In September the privateer team in Europe run by Albert D'Agostini received the Anderson engine and fearing that Harley will choose a new team for the following year, D'Agostini studies the engine. Certain aspects of the engine are quite novel and are related to increased performance. D'Agostini strikes a deal with the Italian motorcycle manufacturer Mayaila to race in the American series in 1995.

You are Harley Davidson's attorney. Anderson has approached you to ask if the engine design might be protected by U.S. Patent law. She also wonders whether there is anything that can be done Advise Anderson what rights Harley Davidson might have that protect any inventions that arose from racing development.

Please carefully read the questions. There may be more than one correct answer to the multiple choice questions. Choose all correct answers and write your answers in a blue book. Only provide comments on the multiple choice questions when asked. This examination is open book. You may bring any written material into the examination

You will have two hours to complete this examination. Remember to allocate your time proportionally, and to think before responding.

Multiple Choice Section (50 percent)

1. Dr. Robert Numerica has discovered a method for calculating large prime number keys heretotfore unknown that are useful as keys for encryption methods. Mathematicians across the world are surprised by Numerica's method. What evidence if any would be most useful in assisting Dr. Numerica to get a valid United States Patent on this method.

a.) The method can be described in words without resort to any mathematical formula.

b.) The method is specifically related to a method of encrypting electronic messages.

1 It c.) The numbers calculated could be used methods other than encryption methods.

d.) Dr. Numerica can show that there is commercial value for his invention..

2. Dr. Numerica has also developed a method for baking brownies that in conjunction with his very own recipe has delighted his graduate students, who he treats regularly to these special "indeterminant" brownies. Dr. Numerica has used the same recipe and method since April 12, 1992, and has brought brownies to research group meetings every other Friday since that time. As a regular matter of practice research group members donate a small sum in order to cover the expenses for snacks and coffee. Dr. Numerica files an application on July 17, 1995. Rejections of the claims assuming these facts might be premised on which of the following provisions.

a.) 35 USC 101
b) USC 102 a
c.) 35 USC 102 b
d.) 35 USC 102 c
e) none of the above

3. Given the facts of question number 2, consider the situation where Dr. Grigor Kranz of the Vienna Pastry Institute developed the same recipe and process as Numerica's while in Vienna in April 1991. The Institute provides a "method" approach to cooking and uses no written recipes. Cameron Blehm while a student at the Institute learns the method and recipe and then emigrates to New York where he takes up employment at a New York Restaurant. Cameron tells other chefs at the restaurant of this wonderful recipe and method in March 1992. Kranz's activity is prior art to Numerica's application pursuant to:

a.) 35 USC 101
b.) 35 USC 102 a
c.) 35 USC 102 b
d.) 35 USC 102 c
e) none of the above

4. Blehm's activity is prior art to Numerica's application pursuant to:

a.) 35 USC 101
b.) 35 USC 102 a
c.) 35 USC 102 b
d.) 35 USC 102 c
e.) none of the above

5. If Cameron Blehin files a United States Patent application on July 18, 1995 he must show which of the following to win priority.

a.) That he used the method and recipe while in New York prior to Numerica's reduction of proof.
b.) That he used the method and recipe while in New York prior to Numerica's conception as shown by uninterrupted diligence prior to Numerica' reduction to practice.
c.) That his, Blehm's, use and reduction to practice in the United States was not experimental.
d.) Blehms will, based on the facts of the case, not be able to prove priority.

6. Miranda Miller, Ph.D., president of UAC Laboratories of Dover, New Hampshire has singlehandedly developed a new ceramic/conductor material that is controllably photosensitive, stable and temperature robust as a conductor/resistor. UAC starts using this material in many of its highly secretive projects for NASA. The first products made with this material are provided to NASA on July 12,1994. All correspondence with NASA was marked "PROPRIETARY AND CONFIDENTIAL." The material itself could not be reverse engineered in 1994. Any directed electromagnetic radiation directly applied to the materials irreversibly degraded the material. Miller conceived of the material June 11, 1992 and regularly worked on the material while at the University of Utah as a faculty member. She made the first working batch of material December 3, 1993 and started looking for specific uses. She started UAC in order to develop the materials for high speed electronic devices and started talking to NASA.

Dr. Ilga Romana developed the same material for use as a light fixture insulator in Romania in April 1992. The light fixture and its material are described in a printed article January 4, 1995. The article is printed in an American Engineering periodical.

Miller files a U.S. application May 3, 1995. The Office can issue a rejection pursuant to:

a.) 35 USC 102 a over the Romana article.

b.) 35 USC 102 b over the discussions with NASA.

c. 35 USC 102 c.

d. 35 USC 102 g

e.) none of the above.

7. Does Miller have a trade secret? Briefly Explain.

8. NASA announces that it plans to request bids from others to provide the material. It will provide a detailed technical paper to other potential vendors. Do Miller and UAC have a remedy against NASA's plans under the Uniform Trade Secret Act? Specifically identify any such remedy.

Essay (50 percent)

Harley Davidson, Incorporated and its officers were feeling rather satisfied in the early Spring of 1992. After the leveraged buy out they had really turned the company around. No longer were they a part of a large undirected conglomerate. They had become focussed and returned to the traditional, and lucrative, roots of the Harley Davidson Motor company. Bikes while very traditional in appearance, had been re-engineered in distinctly American fashion In a market that had been shrinking, Harley Davidson was growing. The U.S. motorcycle market had decreased by half since the early 1980s. Harley sales had doubled since then.

However, the worldwide motorcycle market had grown since that time by 25 percent. Harley's success had been solely in the United States. The Harley leadership wanted to grow throughout the world, and they knew in order to do so they would have to impress Europeans and Asian clients with performance. Nowhere else does the credo "win on Sunday, sell on Monday" better apply than in the motorcycle market. In 1993 Harley Davidson began its road racing debut creating a factory team of two motorcycles. In 1993 it campaigned in the United States with moderate success under the banner "HARLEY DAVIDSON: FAST TWINS." All members of the team were employees of Harley Davidson and shared in the purse winnings. However, the 1993 season was marred by the struggles and failures to develop the "potato engine" technology that was the prime hope of Harley Davidson racing.

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