Final Examination
International Intellectual Property Law
Professors Glenn and Hiaring
Fall 2003
1. You have three (3) hours to complete this exam.
2. This is an open book exam. You may have any written materials that you wish. The assigned textbook, Supplement and course Hand Out have all the information needed for this exam.
3. Please write your responses in the blue books provided to you. Write only on the right hand side of the page and double-space your work, written or typed. Please write legibly.
4. Write you exam number on your exam envelope, at the top of this exam question packet and your used blue books. Do not use your name, student ID number or Social Security Number on any exam materials.
5. At the conclusion of the exam, return all exam materials to the exam envelope and submit it to the proctor. Do not seal the envelope. Students who do not return all exam materials at the end of the exam may not be graded.
GOOD LUCK!
John Larouche is the founder and CEO of a privately held, multi-million dollar software integration business, called Integra. Integra sells its software mostly in the U.S., but has recently made major sales worldwide. Integra also provides the services of software integration to U.S. customers and is in the process of branching out to integrate systems in Japan and in four countries that are members of the EEC. In his spare time, John is an orchid enthusiast, collector and breeder.
In tinkering with his orchid breeding, in August 2002, John discovers a key to DNA cloning which he believes has application for all types of DNA cloning: not just plants, but most animals, including humans. He is quite excited and writes a short article about his discovery in the Spring, 2003 issue of Orchid Digest, which is sent to subscribers all over the world.
In chatting with his engineers at Integra in May 2003, he realizes that perhaps his orchid DNA cloning process and the resultant clone could be protected by one or more patents.
John calls up his patent counsel to discuss this in June 2003, after his vacation in Thailand. While he is discussing the patent issue, intellectual property counsel asks how business is going, and John advises that Integra products are now available outside the U.S. Counsel advises that Integra has no trademark protection outside the U.S. The U.S. registrations are for the INTEGRA mark for “computer software in the field of software integration” in Class 9 and for “computer consulting services” in Class 42. Integra’s U.S. registrations were issued in 1995. John then goes on to mention that Integra has out-sourced most of its computer software code drafting, and that in fact most of Integra’s staff is now Indian, operating out of Bangalore in India. John mentions that Integra does not have employment agreements with most Indian nationals who live and work in India.
You are John’s and Integra’s intellectual property counsel. After your meeting, you prepare a short memo to John about the possibility of protecting the DNA cloning patent in the U.S. and outside the U.S.; including in whose name the patent should be filed, if such patent is protectable or not under TRIPS , whether it is patentable subject matter at all, and whether and when it should be filed.
You write a separate memo to John as the CEO of Integra about registering the trademark in the INTEGRA mark outside the U.S., specifically addressing international agreements governing the registration of marks and possible advantages from filing under applicable treaties. You are concerned about what John told you about how Integra’s software is now developed. Your memo lays out the issues concerning copyright protection for computer software, including registration and protection of the copyrights and copyright ownership issues in the U.S., India, Japan and the EEC.
Discuss all the issues and make recommendations to your client in each of the two memos.
END OF EXAM