International & Comparative Patent Law


Fall 1999

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 1 (10 points) Define briefly the very common terms in patent language:

a) "first to file"

b) "first to invent"

c) Who can establish an earlier conception date in US proceedings?

Problem 2 (5 points)

Who is entitled to:

a) Claim priority under Article 4 Paris Convention

b) File a PCT application

c) File a European application

Problem 3 (10 points)

In order to harmonize management of intellectual property rights international agreements have been enacted between numerous countries. Such agreements are for example:

a) The Paris Convention

b) The Gatt/TRIPS Agreement

c) The Budapest Treaty

d) The Patent Cooperation Treaty

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 4 (10 points)
One of your clients Mr. Bradford from the U.K. has realized that a European Patent has been granted and thereafter published on September 22, 1999 covering the very produkt which he intends to bring on the European market,
e.g. France, Gernany, U.K. and Italy. All those countries have been designated on the granted European Patent.

a) 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?

b) Under citing which Articles of the EPC this action may occur? What term in patent language is used for this very action?

Problem 5 (10 points) What is meant under the abbreviated terms when the PCT-systern is used for filing:

a) RO

b) ISA


d) Why is the request for filing an Report by the IPEA (using the PCT-filing system) to be seen as advantage when going later into the national phase?

Problem 6 (5 points)

Which are the main criterias required for patentability of an invention? Remember the very similar demands in above mentioned conventions and agreements.

Problem 7 (5 points)

In which countries are patent term extensions possible? To which field of invention are they limited and how long are the obtainable extension terms.?

Problem 8 (5 points)

A resident of Belgium has filed a number of corresponding patent applications in numerous member states of the Paris Convention for his invenion, a new electronic calculator. In one of the countries on file the receiving National Patent Office defines that the claims do not comply with the requirement of unity. Does this have any effect on the applications on other countries?

Problem 9..... (10 points)

An inventor from the US has filed for his invention an PCT application when going abroad and chose the EPO as ISA and IPEA. He appointed a European Patent Attorney to represent him before the EPO in the
international phase.

a) Was that necessary?

b) If not, what could be the reason to chose this way?

Problem 10 (10 points)

A patentee of a granted EP-Patent has the right to apply for an SPC (Supplementary Protection Certificate) (remember the criterias of the right)

a) If the patent was filed on December 20, 1978, can he as 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 11 (10 points)

Mr. Petersen, a citizen from Finland, 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 Application in Finland.

A second applicant Mr. Miller, 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, especially the Article 4 responsible for the priority-rights for all inventors of the contracting states of this convention, the oldest and most important convention.

b) Is the description of Mr. Petersen European application a valid reference against the European application of Mr. Miller(U.K.), if said application (Mr.Petersen) 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.Miller (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. Petersen's application shall be declared as dominated (please insert) by .................... right according to the "whole contents approach". All parts described in the first application of Mr. Petersen cannot be claimed anymore in the second application of Mr. Brady.

Thank you for reading and answering all questions.

* * * END OF EXAM * * *