International & Comparative Patent Law
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 problem 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 yours 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.
I (15 points)
In order to harmonize management of intellectual property rights international agreements have
been enacted between various countries. Such agreements are for example: a) The GATT/TRIPS Agreement b) The NAFTA
Agreement c) The Paris convention d) The Patent Cooperation Treaty (PCT) e) The European Patent Convention Describe
in one sentence the rights, which these agreements confer upon inventors and applicants of the member states. Remember
you may consult your or any written material, especially the written material distributed in class.
Problem 2 (5 points)
A resident of Switzerland has filed a number of corresponding patent
applications in various member states of the Paris Convention for his invention,, a new electric knife.
In one of the countries on file the National Patent Office defines that the claims do not comply with
the requirements of unity. Does this have any affect on the applications in other countries?
Problem 3 (15 Points)
Mr. Olsen, a Norwegian citizen, a national of a non-contracting state of the
EPC has filed a patent application under the EPC on August 20, 1997 claiming a priority right of
August 21, 1996 of his Norwegian Application.
A second applicant Mr. Brady, a national of the U.K., a contracting state of the EPC, has filed one
month later on September 20, 1997 a patent application under the EPC claiming priority rights of his
U.K. application of September 21, 1996 describing to some extent the very similar invention.
a) Who is
entitled to the priority-rights and why.? Remember the convention responsible
for the priority-rights for all inventors of the contracting states.
b) Is the description of Mr. Olsen's European
application a valid reference against the European application of Mr. Brady (U.K.), if said application
(Mr. Olsen) describes parts of the second application and could be seen as an obvious equivalent
thereof? Please answer just by indicating yes or no.
c) If parts of
the invention of Mr. Brady (U.K.) describe only to some extent the same
invention what will the European Patent Office decide? A check on novelty will
be required. All parts which are covered already by Mr. Olsen's application
shall be declared as dominated (please insert)
by ....... according to the "whole contents approach". All parts
described in the first
application of Mr. Olsen cannot be claimed anymore
in the second application of Mr. Brady.
Problem 4 (15 points)
a) When does a
patentee of a granted EP-Patent has the right to apply for a SCP (Supplementary
Protection Certificate), in order to obtain an extension of his valid EP-Patent?
Remember in short which requirements are necessary.
b) If the patent was filed on December 20,
1978, can he (patentee) obtain a Supplementary Protection Certificate in:
Please remember the earliest date for each country when
registration for the
launch may be obtained.
Problem 5 (5 points)
Which are the criteria required for patentability of an invention? Remember the demands in above
mentioned conventions and agreements.
Problem 6 (10 points)
precisely the term cross-border injunction .
a) Where have
they been applied?
Which country has been involved in patent matters and has accepted the ruling of a foreign court?
Problem 7 (10 points)
What is to be understood under the terms: a) First filing b) Date of conception
Problem 8 (5 points)
What is to be understood in patent language as line-extension when a patent has already been
obtained for a certain product per se, a process for manufacturing and the use thereof
Problem 9 (5
What rights does a granted and valid patent provides to the patentee?
Problem 10 (10 points)
Your client Mr. Albert in France has realized that a European Patent has been granted and
published on October 26, 1998 covering his product which he intends to bring on the European market, e.g. France,
Germany, U.K. and Italy. What would you suggest as his attorney as next and cheapest action on his request if you have
checked with your client that additional and uncited prior art has been revealed.
a) Under citing which Articles of the EPC this action may occur. What term is used in patent
language for this action?
b) What is the latest deadline for completing this action?
Problem 11 (5 points)
Why is the
request for filing an International Preliminary Examination Report by the IPEA
(using the PCT-filing system) to be seen as advantage later when going into the
* * * END OF EXAM * * *