Professor Jorda April 23, 1997


This is a two-hour, open-book exam (three hours for certain foreign students). You may consult the course materials as well as any other materials. Yet, your examination must be your own work. Do not discuss it with other students.

Write your answer in the blue books supplied, but please use only one side of the page and observe the margins. Please write or print as legibly as possible.

Grading will be anonymous; please do not put your name on anything you turn in. BE SURE YOUR EXAM NUMBER IS ON EACH BLUE BOOK YOU TURN IN.


A. Facts

See attached "Sunday Monitor" column by Courtney Price, entitled "Entrepreneurs" and dated March 2, 1997.
[click here or scroll down]

B. Questions

What is terribly off-the-mark (wrong) about her opinion/answer to the inventor of an exercise machine? What advice should she have given to this inventor/ entrepreneur? [15 Points]


A. Facts

Jet Engine Inc. (JE) needed an improved design for jet turbine blades and approached Gas Turbine Corp. (GT) to take on the project. John Smith, general manager at GT, then assigned Brad Brainy as the chief engineer on the project of coming up with a different design. The specific goal of Brainy's project was to develop a one-piece leading edge. Brainy spent 70% of his time on that project and after attempting several solutions he developed the invention. Brainy reduced the invention to practice using GT's resources, GT's other employees, GT 's shop tools and materials, and GT's time. GT also has paid and continues to pay for the prosecution df a patent application on the invention. And Brainy has repeatedly acknowledged GT's roles in the development of the invention, although he had no written employment contract. GT and Brainy now dispute ownership.

B . Questions

Who owns the patent rights for this invention and why? [15 Points]


A. Eacts

Balloon angioplasty is a popular procedure for opening clogged arteries in treating cardiovascular disease. Inventors Robert and Simpson in the late 1970s decided to develop their own catheter and balloon device to be used in balloon angioplasty. Seeking a suitable material for the balloon, they contacted XYZ Corp. engineer Smart, who suggested XYZ's heat shrinkable irradiated modified polyolefin tubing, as well as an adhesive-free seal to attach it to the catheter. Smart provided multiple samples of tubing and described how one end could be shrunk fit onto the central shaft of the catheter without the use of any potentially-toxic adhesive chemicals. After much experimentation and difficulty, Robert and Simpson developed an acceptable adhesive-free seal and in 1982 were issued a patent on their catheter. The patent was assigned to ABC Inc. which began making the catheters with tubing supplied by XYZ. In infringement litigation against a third party, Smart intervened by filing a cross-complaint against ABC for joint inventorship.


How should the court rule on Smart's cross-complaint and why? [15 Points]


Miscellaneous Questions.

1. What IP category or what combination of IP categories provides optimal protection for software and why? [5 Points]

2. Discuss the reasons for, and importance of, using "House Marks" and their relationship to trademarks and service marks [5 Points]

3. What is the PCT (Patent Cooperation Treaty) and why is it "sweeping the globe"? [5 Points]

4. What are the purposes behind the universal use of Invention Disclosures? [5 Points]

5. What are the major provisions to be set forth in Employment Agreements? [5 Points]


Keys to keeping a Trade Secret hush-hush

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