DL301E FINAL EXAM, 2015

WIPO Academy Advanced Distance Learning Course on

Patents (DL301E15S1)

FINAL EXAM

Please provide the information required under nos. 1, 2 and 3 before proceeding. This page
should serve as a cover page when you upload your completed final exam paper.

1. Last Name, Name:

2. Email address:

3. Tutor:

Please read carefully the instructions below before you complete and submit your final exam:

It is estimated that completing this exam will take you around 8 hours of work. However, you
will be permitted to complete this exam during a period of approximately 5 days, on your own
schedule.

Your response to the final exam questions should be saved as Word document (Word 95 and
above). Upon completing your work, please upload your document in the final exam module
where you see Add submission.

You have until July 28, 2015, to upload your completed paper.

SUBMISSION OF EXAM: Please note that your exam must be uploaded onto the course and
not sent by email.

REGULATIONS & PLAGIARISM WARNING

We are very interested in your own thoughts and writing in response to the questions in
the exam. This is for your benefit to show you have really learned the material to qualify for
the WIPO certificate. It is also for our benefit to demonstrate that the materials we use and
our teaching techniques are effective.
WIPO Academy will check all submitted final exams for plagiarism, excessive
referencing and for exams which are identical or in which evidence of copying is apparent.
Failing to acknowledge and cite other peoples work or ideas, close paraphrasing, using
passages verbatim without referencing, extreme referencing (without any original work done by
the student), and copying other students work is considered academic dishonesty by WIPO
Academy. The Academy will record the incident, and the reasons for failing the exam in the
personal file of the concerned participants for future reference.
Special focus is given to exams submitted by participants who share the same computer
during the course, come from the same Organization or University, in order to avoid the problem
of similar exams being submitted.
Accordingly, responses to the questions in the final exam should be original.
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Final exams which have been reported with apparent plagiarism/copying will be returned
without being marked, resulting in failure to pass the exam.
WIPO Academy recommends that students use appropriate citation styles, for example:

Harvard referencing guide 2010 :

http://www.biosocsoc.org/sbha/reference/harvard_referencing_guide.pdf,
Open University Harvard guide to citing references
http://www.open.ac.uk/libraryservices/documents/harvard_citation_hlp.pdf
APA style: www.apastyle.org and http://www.apastyle.org/learn/quick-guide-on-
references.aspx
Chicago manual of style: http://www.chicagomanualofstyle.org/tools_citationguide.html

and include a bibliography at the end of the final exam containing the necessary information for
the grader to identify the sources cited.

The 2010 Harvard Referencing Guide defines plagiarism in the following manner:

1.2 Plagiarism

Plagiarism is passing off the work of others as your own. This constitutes academic theft and is
a serious matter which is penalised in assignment marking. The following extract is from the
Anglia Ruskin University Academic Regulations (2010). For full details see: Anglia Ruskin
University. 2010. Anglia Ruskin University Academic Regulations. [online] 3rd edition. 2010
Available
at: < http://web.anglia.ac.uk/anet/academic/academic_regulations.phtml> Anglia Ruskin
University http://libweb.anglia.ac.uk/referencing/harvard.htm 5

10.7 Plagiarism and collusion are common forms of assessment offence. They are defined as
follows:

Plagiarism

10.7.1 Plagiarism is the submission of an item of assessment containing elements of work

produced by another person(s) in such a way that it could be assumed to be the students own
work.

Examples of plagiarism are:

the verbatim copying of another persons work without acknowledgement

the close paraphrasing of another persons work by simply changing a few words or altering
the order of presentation without acknowledgement
the unacknowledged quotation of phrases from another persons work and/or the presentation
of another persons idea(s) as ones own.

10.7.2 Copying or close paraphrasing with occasional acknowledgement of the source may also
be deemed to be plagiarism if the absence of quotation marks implies that the phraseology is
the students own.

10.7.3 Plagiarized work may belong to another student or be from a published source such as a
book, report, journal or material available on the internet.
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DL301E15S1 FINAL EXAMINATION

QUESTION 1 (14 Points)

Mr. Paolo Armstrong is a famous herbalist. During a trip in the Amazonian forest, he discovered
that a particular plant called Amazonia-herbal-meltus contained a substance that is very
effective in melting steel. However, the industrial use of this substance is possible only if a
sufficient amount of the melting substance can be isolated. Many skilled practitioners tried but
their attempts to do so has not been successful until now. After five years of intensive work,
Paulo invented a device which he created and called Armstrong-Melting-Device (AMD). This
device has a unique property of efficiently isolating sufficient amount of the melting substance of
the Amazonia-herbal-meltus. He would like to protect his invention and asks you the following
questions:

A) Can he obtain a patent for the protection of his AMD? (6 points) 300 words

B) Since he was the first to discover the melting properties of the plant called Amazonia-
herbal-meltus, can he also obtain a patent for this discovery? (3 points) 150 words

C) Considering the invention was displayed at an officially recognized international

exhibition six weeks before filing a patent application, can Mr. Paolo Armstrong still
benefit from the protection for his device? (5 points) 250 words

QUESTION 2 (10 points)

The Worldwide Company sellsa patented product in country A where the national exhaustion
regime is applied. But the same product is much cheaper in country B which applies the
international exhaustion regime.

A) Discuss the various regime of exhaustion of rights. (5 points) 600 words

B) Can a trader import the patented product from country B to sale it in country A? Is the
reverse position possible? (5 points) 300 words

QUESTION 3 (21 points)

Mr. Joe Smith resides in the US and is a hobbyist inventor. One day while toying with his
computer, it was apparent to him that he could prolong the battery life in laptop computers. Joe
was very enthusiastic about his invention and shared the good news along with the invention
with a few family members and friends. His family recommended that he should seek the
advice of a patent attorney in order to draft the patent application for his device in a proper
manner but Joe felt confident that he can do it all by himself.

In the written description of the patent application, Joe discussed various power supplies for
laptop computers and tablets found in the market today. Next, Joe described his new type of
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battery power supply that according to him is nothing less than a breakthrough technology,
enabling to prolong the battery life by almost twice the amount prevalent in the market today!

The first claim written by Joe read: A battery power supply for powering portable computers,
comprising a power supply unit; and a rechargeable battery

Four years after the filing of the patent application, Joe received from the USPTO a patent for
his invention but felt drained from the process. Patent-Opportunities a company which
specialized in acquiring patents from small inventors desired to become his assignee to exploit
the patent. Joe declined, and offered instead to provide them with an exclusive license. Patent-
Opportunities accepted Joes offer and became the exclusive licensee of Joes patent. Patent-
Opportunities wasted no time and immediately sent out cease and desist letters to several
parties, which according to Patent-Opportunities were infringing on the said patent.

Among the alleged infringer parties were:

Party 1: Innovative-Note a commercial company specializing in manufacturing notebook

computers with very advanced features such as voice recognition, and accelerated speed.

Party 2: Research University was also attempting to use the technology in connection with
smart phones.

Party 3: Save-Lives a none profit organization that specializes in distributing defibrillators to

hospitals. Save-lives wished to run tests on the patent in order to see whether they can
incorporate it in a new defibrillator model awaiting regulatory approval.

Party 4: Affordable-Computers, a small computer store that assembles laptops from old parts
at affordable prices, recently started to incorporate the patented product in their computers and
sales increased dramatically.

The parties responded to the cease & desist letters in the following way:

Party 1 Response: Innovative-Note responded by stating that their in house counsels have
examined the said patented product and found it invalid. Moreover, they sent Patent-
Opportunities an expert opinion by one of the leading patent firms in the State, affirming the
view that the patent is invalid.

Party 2 Response: Research University responded that they are not commercializing the
patented product but only exploring its scope of use.

Party 3 Response: Save-Lives responded that they were a nonprofit organization and were
not deriving any financial gain from the patented product.

Party 4 Response: Affordable-Computers simply responded that since Patent-Opportunities

are only licensees they cannot enforce the patent rights.
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A) Comment upon the initial responses of alleged infringers Party 2 and Party 4. (5 Points:
350 words)

B) At trial, Patent-Opportunities requested a preliminary injunction against each of the

aforesaid parties. What does Patent-Opportunities have to demonstrate in order to
obtain a preliminary injunction against the defendants? (5 words: 250 words)

C) What other remedies could Patent-Opportunities seek from Defendant Party 1 and
Party 4? What are the chances of receiving such remedies? (6 points: 350 words)

D) What are the defense options for defendants Party 2 and Party 3 at trial against the
patent infringement allegations? (5 points: 500 words)

QUESTION 4: (18 points)

Food production company, Foodologics Inc. has been working on an innovative method that
checks contamination in food products to avoid product spoilage and further effects resulting in
health problems. In order to avoid reinventing the wheel, the company regularly searches for the
newest patented technologies that improve the quality control process for its food products.

When Foodologicslast searched, one particular US patent document 7,236,889 was considered
of extreme relevance.

Please find the patent document and assist the company in reading it by considering the
following questions: (Participants in this course should be able to find the patent document.
They should not ask the tutor the tutor on how to find the patent document)

Part I (6 points)
A) Who are the inventors? (1 point)
B) Who owns the patent? Is it the inventors themselves? (1 point)
C) When was an application filed for the US patent? What is the relevant priority date?
What application is this priority based on? (1 point)
D) What is the patent classification? Define patent classification G06F 19/00 (IPC) and
702/19 (USPC)? (2 points)
E) What publications were found to be relevant to this invention do these include US
patent documents, patent documents in other countries, and other non-patent forms of
publication? (1 point)

Part II (6 points)
In order to allow your research team members understand the identified technology in the above
US patent; you decided to present in a seminar, based on the US patent document, new
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developments in quality control in food production techniques. In particular, you would like to
address the following questions in your presentations
A) What kind of descriptive information is contained in this document, and in what sections?
(2 points: 125 words)
B) Does it describe how to carry out the invention in a way that could be understood by an
expert in the relevant field? Elaborate please. (2 points: 100 words)
C) If other documents were mentioned in the patent document do they look like they could
be of interest for the seminar you are preparing? Elaborate please. (2 points: 100
words)
Part III (6 points)
Foodologics is interested in exploring further the area of technology to control food
contamination and you are asked to evaluate the claims of the US patent document 7,236,889.
A) Identify the dependent and independent claims how many independent and dependent
claims are there? (2 points: 50 words)
B) What is the role of dependent claims? Please explain in relation to the US patent
document? (2 points: 100 words)
C) Do the claims concern a product or a process? Can you identify a common inventive
concept that all the claims share? (2 points: 100 words)

QUESTION 5 (20 points)

A start-up technology company, after having spent considerable amount of time and money on
research based investigation related to non-invasive techniques and devices for monitoring
sugar level, made a breakthrough. Having no IP expert within the firm, the CEO of the company
requested a group of scientists to prepare a quick report on the most cost effective way to
protect the device in a number of countries.

The report also suggested that applications for patent protection be made in each country, since
the system of issuing a world patent does not exist.

A) Do you agree with the last statement? Would your advice be different from the
scientists? Explain. (3 points: 200 words)

B) The company applied for its first patent protection in Italy in January 2004. After 22
months from the first application filing date, they decided to apply in China as well.
Explain if the first application date of January 2004 can have any effect on the
application in China? Would your answer change if the application in China was filed
based on a validly filed PCT application, which claimed priority from the Italian first filed
application? (7 points: 450 words)
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C) The company was granted an Italian patent and decided to withhold applying for
protection in Poland. This decision was a result of the advice given by its scientists who
reported that Poland was a member of the same international agreement the European
Patent Convention, which guaranteed that the companys right can be enforced in
Poland as well as Italy. Provide your view on this decision. (3 points: 200 words)

D) Briefly explain all possible routes that are available to the company to protect the
invention in multiple countries. (4 points: 300 words)

E) A few years after filing a US application, the company managed to obtain patents in the
USA. With the grant of the US patent, the company believes that it has right to
manufacture and sell the patented product in the US. Please comment? (3 points: 200
words)

QUESTION 6 (7 points: 450 words)

The Development Agenda, adopted by the member states of WIPO in 2007, contains 45
recommendations to enhance the development dimension of the Organizations activities. Key
among these are recommendations focused on enhancing the understanding and use of
flexibilities in the intellectual property (IP) system. In view of this, please explain what you
understand by the term "Patent Flexibilities", as available in the International treaties? Give
three examples of such flexibilities.

QUESTION 7 (10 points)

Many of us travel around the world and amass hundreds of coins from different countries and
dont know how to change them to usable currency. Imagine if we could change all that loose
change into currency of our choice. FourEx (visit their website to find out more -
www.fourex.co.uk) is a company that specializes in exchanging any sort of money at an ATM-
like kiosk into the currency of your choice. Their website states the following: exchange coins
and notes fromhundreds of countries and get cash paid out in either pounds, euros or dollars.
They have won the bid to install various machines to dispense cash in the London
Underground. They have chosen not to patent their invention in order to maintain their
advantage as the first mover in the market. .

In their words: 85% of the kiosks components can be found off the shelf, and are used in ATMs
around the world. We integrated two very specific pieces of software, a massive database, and
some very clever interface. We have spent the money we would have spent on patents, on
encryption of the software and database so even when we license it, the user has no access to
how it works.

A) In the absence of patents, what other type of Intellectual Property FourEx can rely on for
protection of their invention? What conditions will the company have to meet in order to
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have the possibility of using this other type of intellectual property? (5 points) 400
words

B) In their commercialization strategy, why do you think FourEx has chosen not to obtain
patent protection and what do you think the disadvantages are in adopting this approach
(5 points) 300 words

[End of Exam]
[Total: 100 points]