INTERNATIONAL & COMPARATIVE PATENT LAW
Professor Hans Goldrian
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 an try to keep your answers concise and clear.
Write your answers in the bluebook 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 1, (10 points)
Mr. A, residing in the U.S., has given a lecture in an American research institution and explained an inventive idea he had successfully reduced to practice in his laboratory.
After the lecture, he is approached by a patent attorney who recommends to file a patent application on the invention. This is done three months after the lecture. For foreign filing, A is aware of the Paris Convention. One year after the U.S. filing, A wants to file patent application in Japan and the European Patent Office, claiming the U.S. priority
How will the patent attorney react?
Problem II (5 points)
Define the difference between "absolute" and relative" novelty. What is common to both systems?
Problem III (15 points)
Mrs. B, living in Italy, has invented there a new and useful kitchen appliance. She does not file a patent application because that seems too complicated and expensive to her.
Some months later she happens to get in touch with a manufacturer who is interested in the new appliance and in patent protection therefor. So Mrs. B has an attorney file a European patent application which is duly published 18 months after the application date. 5 months after that publication, the manufacturer, who has got a license from Mrs. B, draws her attention to a just published European patent application of a company C which had been filed 5 months after Mrs. B's application. Apparently, Mrs. B and C have made and claimed the same invention.
Mrs. B asks her patent attorney for an evaluation of the legal situation and professional advice what should be done. As her attorney, what would you tell her?
Problem IV, (10 points)
D and E are German Companies. Both are attempting, independently of each other, to solve a specific problem in the performance of remote controls for garage doors.
D has started to build a prototype incorporating an inventive idea and has ordered, on October 14, 1997, a number of special components needed for the prototype from an electronic supplier. The components having arrived, the prototype is finished successfully and D installs a production line and starts to sell the remote in Germany on March 10, 1998.
Shortly thereafter, D receives a warning letter from company E. Apparently E had filed a European patent application designating Germany, France, Italy, and Austria on December 16, 1997, claiming the same inventive idea as used by D. If E's patent is granted, D would infringe the claims.
Is there any possibility for D to manufacture and sell its remote? If yes, where?
Problem V, (10 points)
A certain limitation of the exclusive rights conferred by a patent is known as "exhaustion".
- what are the conditions for exhaustion? - precisely what is exhausted? - does exhaustion affect the existence of a patent? - which infringing act can always be prevented?
Problem VI, (10 points)
F, a U.S. company, has a pending US patent application filed June 3, 1997 on a new wrench and is manufacturing and selling such wrenches in the US and Europe. A customer calls F's attention to the fact that a British company G manufactures and sells identical wrenches in Europe. F sends a letter to its patent attorney in Washington, D.C. instructing him to fi le patent application in Germany, Great Britain, France and Italy and also in Japan, claiming the priority of the US application.
Due to a number of mistakes made in the company and in the attorney's office, the attorney finds that instruction on his desk in the afternoon of June 3, 1998, too late for regular national applications via local attorneys in these countries. What can be done?
Problem VII, ( 5 points)
Company H has been granted a European patent. Company J files an opposition claiming that the patent does not relate to only one general inventive concept as required by Art. 82 EPC.
Wh at will happen?
Problem VIII, (10 points)
K, a Canadian company, has filed a national patent application on February 4, 1998 as first application in the meaning of the Paris Convention.
Three months later, when the application is pending, K finds a substantive error in the description which would restrict the range of protection unnecessarily. Therefore, K withdraws the application of February 4 and files corrected documents on May 26, 1998.
If K files subsequent applications, which priority is he to claim?
Problem IX, (10 points)
Natural and legal persons not having either a residence or their principal places of business within the territory of one of the Contracting States of the European Patent Convention must be represented in the proceedings before the EPO by a professional representative contained in a list maintained by the EPO (Art. 133.2 and Art. 133 EPQ.
There are two significant exceptions to this requirement; name them,
Problem X, ( 5 points)
While a European patent breaks up into national patents in the designated countries and these national patents have the same effect as patents granted by the national patent offices (Art. 2 EPQ, there are some rules which have to be complied with by the national authorities and courts if they have to deal with a patent granted the "European way".
These rules are sometimes called the "European code"; the most important apply to revocation and to the extent of protection.
Explain them briefly.
END OF EXAMINATION