International & Comparative Patent Law

FINAL EXAMINATION

Fall 1998

Professor Hans-Gunther Foraita

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 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.

Problem 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:

i) Denmark
ii) Belgium
iii) France
iv) Germany
v) Italy
vi) Sweden


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)

Describe precisely the term cross-border injunction .

a) Where have they been applied?

b) 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 points)

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 national phase?

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