INTERNATIONAL & COMPARATIVE PATENT Law
FINAL EXAMINATION


Professor Hans Goldrian IPSI 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 bluebooks 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 bluebook you turn in.






Problem I
(10 points)
A, a resident of Germany, has invented a novel frame construction for a bicycle and filed a German patent application on March 13, 1996. In May 96, he presented the new frame in a local exhibition, and on March 12, 1997 filed a European patent application designating GB, DE, FR, IT, CH.

B, had visited the exhibition in May 96, seen the new frame which he believed to have been invented by himself in the fall of 1995 already, and hurried to file a European patent application on June 4, 1996 designating GB, DE, FR, BEL, NL, IT.

How do you evaluate the position of B with regard to patent protection and right to use the invention?

Problem II
(5 points)
If B had filed a PCT-application designating EPC and USA, what are his chances?

Problem III
(15 points)
A, a resident of Paris, has made an invention comprising features a and b and filed a French patent application on February 6, 1996. End of March 1996, he talks with an acquaintance B about the relevant technology. This results in a definition of a feature C considerably improving the original invention. A decides to abandon the application of February 6, 1996 and files a French patent application with features A, B, and C on May 13, 1996 and designates GB, DE and IT. Later B tells A that he has filed a European patent application on April 16, 1996 designating GB, FR, and IT, in which feature C is the basis for the claim.

A wants to safeguard his rights. As his attorney, how would you evaluate the legal situation?
A) Does the patent application of Feb. 6, 1996 help?
B) Did B have the right to file claims on feature C? Under what conditions?
C) If A and B decided to settle the case, what would you recommend?

Problem IV
(10 points)
What are the two basic differences between "full contents approach" European way and US way?



Problem V
(5 points)
D prosecutes a number of corresponding patent applications in various member states of the Paris Convention. In one of the countries, the Patent Office finds that the claims do not comply with the requirement of unity.
Does this affect the applications in the other countries?

Problem VI
(5 points)
What are the characteristics of a "first application" in the meaning of the Paris Convention?
Who can file such a "first application"?

Does the first application have to be pending at the time of claiming its' priority for a subsequent application in another P.C. state?

Problem VII
(10 points)
In the European system, the first inventor has mainly two legal provisions in his or her favor which constitute exceptions to the normal first-to-file rule. Explain briefly.

Problem VIII
(10 points)
G residing in Concord, has invented a new umbrella and starts manufacturing. As from March 1996, he has some local stores in Concord sell such umbrellas.

A patent attorney, having purchased one, recommends to file a US patent application, which is done on July 11, 1996.

Considering that it is raining also in other countries, G asks the patent attorney to file a PCT application designating the EPC and Japan and to claim the US priority.

What should the patent attorney do?

Would the situation be different had G advertised the new umbrella, explaining the structure, before marketing?

Problem IX
(10 points)
Explain briefly the term "exhaustion" as used in the patent system. Precisely what is "exhausted"?
Is the patent still enforceable, and how? What is meant by "regional exhaustion"?

Problem X
(10 points)
By the "validation" process of a granted European patent we arrive at a bundle of national patents as provided in Art. 3.2 and Art. 64, for instance. National authorities and courts take over.

However, the EPC contains some provisions, commonly called the European core, which are binding upon authorities and courts also in the national phase. Name at least two of them. Is a decision of the EPO Board of Appeals with regard to novelty and inventive step binding in national nullify proceedings?

Problem XI
(10 points)
M has corresponding patents in the countries S, T, V, X Y, Z. N has acquired a prior user right in country X. If all above countries have a prior user right system, where can N continue or commence the use? If the countries were member states of the European Union, would the situation be different?