INTERNATIONAL & COMPARATIVE PATENT LAW

FINAL EXAMINATION

IPSI 1996

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 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 [10 pts.]

Mrs. A has published in the US a description of a new appliance in an attempt to find a manufacturer interested in production and marketing of her invention. Seven months later, a US company B gets in touch with her, acquires all rights, and immediately files a US patent application. B also wants to file a European patent application, claiming priority of the US application.
 

As B's attorney, what is your recommendation?
 

PROBLEM II [5 pts.]

Applicant C enjoys in country D "national treatment" under the Paris Convention. Does this mean that:
 

a. C is to be treated in country D as he would be treated in his home country?

b. C is to be treated in country D like a national of D?

c. C is to be treated in country D as a national of D would be treated in C's home country?


PROBLEM III [10 pts.]
Who is entitled to:

a. File a PCT application?

b. File a EP application?

c. Claim priority rights based on a first application under the Paris Convention?

Do you need an attorney for filing:
d. A PCT application?

e. A EP application?


PROBLEM IV [15 pts.]

E has filed a patent application in Germany and subsequent applications, claiming priority, in the EPO, Japan, and the US. The German examiner states that because of lack of unity, E has to divide the application.
 

a. Is E obliged to divide the subsequent applications accordingly?

b. Can E divide the subsequent applications on his own initiative in a manner different from the division in Germany*

c. If yes, would this affect the priority right claimed?


PROBLEM V [10 pts.]

Company F has filed a "first application" in Italy on June 6, 1995. In the course oftime, an important improvement was found. F includes and claims that improvement, together with the original disclosure and claims, in a subsequent EP application filed June 6, 1996.
 

The effective priority of the original claims is June 6, 1995. What is the effective priority of the added improvements:
 

a. The date when the improvements were invented and documented?

b. The filing date of the subsequent application?

c. The filing date of the "first application"?
 

PROBLEM VI [5 pts.]

Many large US companies doing business worldwide follow, in their patent policies, the first-to-file system, i.e., do not rely on the one-year grace period of the US law. They file a US patent application before any publication or public Use.

What is the reason for that?
 

PROBLEM VII [10 pts]

G, an inventor residing in Washington, DC, has invented a special design for a bicycle frame and filed a US patent application on April.12, 1995. He tries to find a company interested in a license for manufacture and sale and makes Ilumerous test rides in public to demonstrate the advantages of his invention.

After some disappointments, a company H calls him in the morning of April 12, 1996 and offers a license agreement provided that G can get European patent Protection. G realizes that he cannot meet the Paris Convention deadline by mailing a patent application to the EPO. He contemplates to file European without Priority, but is in doubt as to the prospects of such an application.

As G's attorney, what would you recommend to do? Is there a choice?
 

PROBLEM VIII [15 pts.]

According to Article 61 and Rule 13 of the EPC and the Protocol on Recognition, an inventor K who, by a final decision of the competent court, is entitled to the grant of a European patent instead of the original applicant L can file a new European patent application in respect of the same invention.

a. Can K claim, the priority of the original application filed by L?
b. Can K extend the subject matter beyond the content of the original
application because L missed some important aspects and features
of the invention?
C. Will all designated countries accept the new ownership?
d. Can K designate other, particularly additional Contracting States
than L did? (See Art. 61.2 EPC)
 

PROBLEM IX [5 pts.]
Some proceedings in connection with EP applications and patents are unitary,
and some are national. Indicate which:

a. filing
b. search
C. examination
d. appeal
e. grant
f opposition
g. revocation
h. enforcement
k. infringement suits
1. license agreement disputes.
 

PROBLEM X [10 pts.]
Protection in a Contracting State of the EPC can be secured the "national way"
or by designating that State in a EP application, see Art. 2.2 EPC.
However, there are rules and provisions in the EPC which produce a distinction
between a national patent and a European patent effective for that country, by
binding the authorities and the courts in each Contracting State.
Name at least two important binding provisions, defining the character of a European patent in revocation and infringement proceedings.
 

PROBLEM XI [5 pts.]

Both the PCT and the EPC provide a number of unitary proceedings done by one office for all designated countries. There are, however, fundamental differences between the proceedings under the PCT and under the EPC.

Name three of the most important differences.

* * * END OF EXAMINATION * * *
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