INTERNATIONAL & COMPARATIVE PATENT LAW
FINAL EXAMINATION

Professor Winfried Arnold Fall 1997

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.




Consider the following situation:
You are a patent attorney lending your expertise to a group of three scientists:

Prof Wang, a national of China and resident of the USA, has isolated and purified a novel compound from a well-known old Chinese medicine (CM). The medicine consists of a mixture of various plants. It is used for lowering blood pressure.

Mister Chin, a Chinese laboratory technician residing in the USA, assisted in isolating and purifying the compound. He followed strictly the orders given by Prof Wang.

Prof Span, a medical doctor and a national of and residing in a country which is not a member of the Paris Convention (PC), tested the compound in his home country for its potential pharmacological activities in animals and humans. He found that the compound does not lower the blood pressure, however, that it is an active antidepressant if injected intravenously in amounts of about 0. 1 mg/kg body weight, He does not know how the compound can be prepared.

Answer with short statements the following questions your clients may have, or state yes or no.

PROBLEM 1 (15 Points)

1. What is to be understood by the terms "intellectual property" and "industrial property"?
2. What is to be understood by the term "patent" and which rights does it grant?
3. What is the difference between a patent application and a patent?

PROBLEM 2 (42 points)
1 . What is to be understood by the term "claim"?
2. There are independent and dependent claims? What is the difference?
3. Which is principally patentable and which unpatentable subject matter under the European Patent Convention (EPC)?
a) a compound per se?
b) discovery of a naturally occuring compound?
c) method for the preparation of a compound?
d) method of isolating and purifying a compound?
e) pharmaceutical compositions?
f) use of compounds for producing a pharmaceutical composition?
g) methods for treating animals or humans?
h) a theory, why a compound should be pharmaceutically active?
i) a plant variety?
j) a novel composition of various plant extracts?
4. Suggest some independent claims for your clients' invention (number them 1, 2, 3, etc.)

PROBLEM 3 (24 points)
1. Who are the inventors of claims 1, 2, 3, etc.
2. Your clients suggest filing of 3 priority applications in their national countries, each covering only their own contribution, which should be followed within 12 month by 3 PCT applications. Make them aware of the reasons why this approach would possibly not result in patents at all. Is it correct that a) Wang's invention is not patentable because Wang does not know how to use the compound?
b) Chin is not entitled to a patent because he is not an inventor or coinventor?
c) Span's invention is insufficient because he does not know how the compound is to be made?
d) Wang is not entitled to a PCT application because he is not a national of the USA?
e) Span is not entitled to file a PCT application because he is not a national or resident of the USA?
3. Which are the basic requirements of patentability?
4. Do the combined findings fulfill these requirements of patentability if they are described in the patent application in an enabling manner?

PROBLEM 4 (12 points)
1. Are your clients obliged to file a priority application first in the USA?
2. Is it possible for your clients to file an English version first under the EPC in Europe if they have an export permission?
3. Is it possible to file a Spanish version of the priority application first in the USA?
4. Your clients are forced to publish as early as possible. They suggest discussing their work at the forthcomming meeting at an international exhibition (a recognized one) in Tokyo. There is no time to file the patent application before said exhibition. If they file the patent application after the meeting, can they get protection anyway? In which country? Please advice.

PROBLEM 5 (8 points)

Suppose your clients have already filed a patent application last year and the term for filing in foreign countries expires tomorrow on October 29, 1997.
1 . Your clients are negotiating a license agreement with an interested pharmaceutical company. However, more time is needed to finalize the agreement. What do you recommend today? ,
2. Suppose the PCT application was filed timely. Under certain conditions is it seems possible to postpone filing in national and regional patent offices up to 30 month after priority. Which are these conditions?


PROBLEM 6 (15 points)
1 . Mister Chin has, towards the end of the priority year, without assistance of Prof Wang improved the process for the isolation and purification of C1 which results in a 50% higher yield. a) Do you recommend including this method in the forthcomming PCT application?
b) Or would you rather recommend filing an independent new application?

Discuss the advantages or disadvantages for these two options.


2.Would it be possible to obtain a valid patent for a second application filed after expiration of the priority year? Why?


PROBLEM 7 (10 points)

Suppose 20 month after expiration of the priority year your clients become aware of a patent application describing exactly their invention. This application was only filed one day after your clients' priority date.
1. Is it possible that this later filed US patent application may endanger in any way the issue of your clients' patent in the USA? In which proceeding is this problem solved?
2. Is it possible that this later filed US patent application in any way endangers the grant of your clients' patent in Japan or Europe?


PROBLEM 8 (16 points)
1. What are some of the main benefits of filing under the PCT System?
2. Your clients assume they can obtain a patent under the PCT system which would be valid for all member countries. Is this correct?


PROBLEM 9 (8 points)
1. What are the main benefits of filing a patent application under the European Patent convention?

2. Can the European patent be a) opposed in the European Patent Office?
b) appealed in the European Patent Office?
c) after declared valid by the Board of Appeals can the EP Patent be declared invalid by an authority of the European Patent Office?