Patent and Trade Secret Law

Summer 1998

Final Examination

This examination is an open book examination. You will have two hours to finish the examination. Please answer the precise question asked. and do not demonstrate your broad knowledge of the law beyond the scope and content of the question asked.



Question 1

Adrian Reynard, owner of Reynard Mfg. International. developed and improved a method for manufacturing electro-chromic devices in his Wolfshead. Surrey manufacturing plant during January of 1997. The plant started manufacture of the devices at or about that same time under the direction of Adrian's plant manager. Walter Hauser. The electro-chromic devices were sold to customers starting in June 1997. At the same time Adrian opened a second manufacturing facility in Huntsville. Alabama. Devices made in the Alabama plant were offered for sale. and, sales were made to several European and Asian customers.

The electro-chromic devices do not inform anyone of the method used to make them. All employees of the Huntsville plant are under duties of confidentiality In June of 1997 Walter Hauser moved I to the United States. but upon refusing to enter into the confidentiality agreement required by the Huntsville operation was terminated and has no duty of confidence to Reynard's company.

If Reynard applies for a United States patent not having filed anywhere else previously. can he obtain a valid United States patent for the method of making the electro-chromic devices? Assume the invention is unobvious over the prior art of others.




Question 2

Allison Aronson and Barley Bert each independently have invented global positioning systems that operate not from the use of satellite references. but from di itized magnetic atlas data. Allison and Bartley's 91

respective inventions are the same. Allison filed for her United States patent April 30. 1998 based upon a claim to priority based upon her filing in the Swiss patent office on March 30. 1998. Allison never made an actually reduced to practice embodiment of her invention. but has a signed and witnessed laboratory notebook dated September6. 1996. that shows each element of the claimed invention and shows the relationship of each element to the other. Allison decided that it was wisest to wait for the World Magnetic survey to a completed rather than gather all of this evidence herself. She did test the overall workability of the concept by testing the device in a small area that had been surveyed. Nebraska. in the 1930's

Barley conceived of the invention in May of 1997 and had a working prototype in January of 1998 and then filed in the United States Patent and Trademark office June 1. 1998. Barley prototype was completed within two weeks of his finishing work on the global magnetic survey.

Who has the superior claim to priority of invention? Please discuss the pertinent facts and law.




Question 3

Henry Marchand manufactures and sells water purifiers in France and throughout Europe. Laurence Evian invented and owns U.S. Patent No. 6,123.000. which covers the product Marchand sells in Europe. Marchand sells to Willie Webber who distributes the product throughout Europe. Marchand knows that on occasion Webber has sold product into the United States and has voiced his dismay at such practices. Webber has recently opened a sales page on his Internet site.

Under what conditions might Marchand is liable for infringement of the 6.123.000 patent?




Question 4

Lorne Tompkins created a software code writing business. "Code-in", in Brattelboro. Vermont in 1988 and worked with various larger software firms. Code-in specialized in writing software components for user interfaces, Typically. code-in would supply the software component to each client under a testing contract that included a confidentiality requirement. Their customers included Macrosoft. ManualDesk. Ibexes. and others. Each customer was one of long standing and each had entered into these agreements and had know ledge that such was the practice of Code-in.

In 1995 ManualDesk was gearing up for introduction of their product to the Doors 95 operating system which was to be introduced in late 1996 after having been scheduled to ship in early 1993. Since. the 95 introduction was far earlier than anyone in the industry could have expected ManualDesk had been caught flat-footed and needed to integrate into the 95 operating system to maintain the high growth profile it had enjo yed previously.

In 1995 ManualDesk was not happy with the rate of progress that Code-in had displayed. but lacking source code they were stuck. In desperation they hired one of Codein's programmers to start an independent product development. Cody Ranger left code-in to join ManualDesk in 1995. and took with him source code. most of which lie had written himself Based upon this code. ManualDesk launched its Doors 95 program successfully and rocketed to the top of the Engineering utilities software market.

Code-in has all of its employees sign an invention assignment agreement. However. it is agreed that the software that Code-in wrote for ManualDesk is not patentable. There is no non-compete agreement nor any confidentiality agreement. Code-in operates in a large brick Victorian house in Brattelboro with no locked doors and no security on its computer system.