INTERNATIONAL & COMPARATIVE PATENT LAW

FINAL EXAMINATION

Professor Winfried Arnold

Fall 1996

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 1 (15 Points)

International agreements have been enacted in order to harmonize management of intellectual property rights between various countries, Such agreements are for example:

a) the Paris Convention (PC)

b) the Patent Cooperation Treaty (PCT) e) the European Patent Convention (EPC) d) the Budapest Treaty (BT)

Describe in one sentence the rights which these agreements confer upon inventors and applicants of the member states.
 

PROBLEM 2 (5 points)

Under which prerequisites is a national of a country outside the Union (PC) entitled to the same rights as a national of the Union?
 

PROBLEM 3 (10 points)

Name the four most important requirements for patentability required by the EPC and define each of them in one sentence,
 

PROBLEM 4 (5 points)

With respect to the requirements for the description there exists an important difference between the U.S. patent law and the European Patent Convention (EPC). Name this difference.
 

PROBLEM 5 (15 points)

Applicant A, a national of a non-contracting state of the EPC, has filed a patent application under the EPC on March 15, 1995. Applicant B, a national of a contracting State of the EPC, has filed one month later a patent application under the EPC describing the same invention.

a) Who is entitled to the priority rights and why?

b) is the description of applicant A a valid reference against the application of B if said application claims not the same but an obvious equivalent thereof.?
 

PROBLEM 6 (10 points)

Your client is a Professor at the University of Paris and has filed a priority application covering a new diagnostic method for the early detection of a human immuno deficiency virus (FHV) on March 30, 1995 in France. On April 14, 1995 he published the method in a scientific paper. The diagnostic company originally interested withdrew from signing a license agreement questioning now the operability and usefulness of the method.

a) What advice would you give your client to gain time for proving operability if such proof would be impossible within the priority year?
b) What is the best way for gaining the maximum of time for foreign national filing?
c) What would be the last date for foreign national filing?
 

PROBLEM 7 (15 points)

A) Pharmtex Ltd. has filed a patent with the European Patent Office on January 9, 1977, covering a new pharmaceutical product against heart attacks. They got first marketing approval in Belgium on January 20, 1983. Can they get supplementary protection certificates (SPC) in
a) Denmark
b) Belgium
c) France
d) Germany
e) Italy
f) Sweden

All countries are members of the EEC and are designated in the European Patent.

B) Your client, the generic company Genera Ltd., will finish development of the product in the USA and would be ready for marketing on January 8, 1997. They ask you at which earliest dates they can import the product into

a) Denmark
b) Belgium
c) France
d) Germany
e) Italy
f) Sweden

without infringing any patent rights of Pharmtex Ltd. assuming that all possible SPCs have been granted.
 

PROBLEM 8 (10 points)

A biologist at the MIT. has found a new microorganism producing a known antibiotic in much higher yield as the microorganisms used previously for that purpose. He discloses this fact at a public scientific meeting without giving any hint as to what type said microorganism is and where or how it can be obtained.

A) Can he still obtain a valid patent on said microorganism?

B) Which is the latest date the microorganism must be deposited under the Budapest Treaty
for obtaining an European Patent,
a) immediately after the discovery?
b) before he gave the lecture in said meeting?
c) before the priority application is filed?
d) before the filing in foreign countries?
e) before the first publication of a patent application?
f) before the examination period starts?
g) before the patent issues?

PROBLEM 9 (15 points)

Briefly explain five of the following terms used in the field of patents:
a) state of the art
b) description
c) claim
d) priority right
e) filing fee
f) novelty
g) inventive step
h) formal examination
i) examination -on the merits
j) publication date
k) issue date
1) industrial applicability
m) repeatability
n) opposition
o) appeal.

* * * END OF EXAMINATION * * *
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