ENG107e

Examination – January Semester 2018

Intellectual Property and Patents

Tuesday, 22 May 2018 1:00 pm – 3:00 pm

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Time allowed: 2 hours

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INSTRUCTIONS TO STUDENTS:

1. This examination contains FOUR (4) questions and comprises FIVE (5)
printed pages (including cover page).

2. You must answer ALL questions.

3. All answers must be written in the answer book.

4. This is an open-book examination.

At the end of the examination

Please ensure that you have written your examination number on each answer book
used.

Failure to do so will mean that your work cannot be identified.

If you have used more than one answer book, please tie them together with the string
provided.

THE UNIVERSITY RESERVES THE RIGHT NOT TO MARK YOUR

SCRIPT IF YOU FAIL TO FOLLOW THESE INSTRUCTIONS.

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Examination – January Semester 2018
Answer all questions. (Total 100 marks)

Question 1

Two enterprising young men Mr Invanter and Mr Beezners have been good friends
since secondary school days. Mr Invanter now works as a delivery rider on a
motorcycle in a café owned by Mr Bossman. Mr Beezners is currently unemployed,
and while eating at the café, he noticed that the takeaway bags made the dumplings
soggy and unappetizing after a very short time.

Mr Invanter and Mr Beezners decided to work together and come up with an improved
takeaway bag during their free time. Mr Invanter and Mr Beezners made significant
contributions to the improved bag. Mr Bossman had no knowledge of the development
work while the improved takeaway bags were being worked on, but subsequently
approved the improved bags for use in his café when he saw the finished product that
was produced. Customers of the café were impressed and sales increased.

Mr Bossman intends to seek patent protection for the takeaway bags but found out that
Mr Invanter had already filed a Singapore patent application which listed himself as the
sole applicant and owner. Mr Bossman also found out about Mr Beezners’ involvement
and informed him of the existence of Mr Invanter’s patent application.

(a) Recall and state the conditions where an invention belongs to the employer.
Does Mr Bossman have any justification to be regarded as the owner in the
patent application? Justify your answer.
(11 marks)

(b) Advise Mr Beezners on his claim to ownership in the patent application. Justify
your answer.
(5 marks)

(c) After subsequent negotiation and agreement among the three parties (Mr
Invanter, Mr Beezners and Mr Bossman), Mr Beezners and Mr Bossman
became the two joint-owners in the patent. Thereafter, Mr Greedy, who owns a
competing café, approached Mr Beezners for a licence to use the patented
takeaway bag in his competing café. Mr Beezners granted the licence and
received the licence fee from Mr Greedy. Comment on the validity of Mr
Greedy’s licence.
(5 marks)

(d) Unknown to Mr Beezners and Mr Bossman, Mr Invanter made additional,

significant improvements to the takeaway bags. To prevent Mr Beezners and
Mr Bossman from finding out, Mr Invanter decides to file a patent application
in Malaysia only, assuming he will still get patent protection in Singapore.
Discuss whether Mr Invanter’s strategy will work.
(4 marks)

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Examination – January Semester 2018
Question 2

In the year 2011, on a backpacking trip through rural Thailand, Ms Wander was
introduced to Big Tusk Coffee (coffee made from beans that are first ingested by the
digestive system of elephants). On returning to Singapore, Ms Wander had two rabbits,
one brown and one white in colour, and decided to feed each of them coffee beans as an
experiment. She found that after removing the beans from the faeces, only those beans
from the brown rabbit had a good aroma, whereas those from the white rabbit did not.
She then successfully patented a process for producing the beans ingested by brown
rabbits and launched Long Ears Coffee which surpassed the aroma and taste of Big
Tusk Coffee. Sales of Long Ears Coffee surpassed expectations.

Professor Starbuckovic, a research scientist and coffee connoisseur, was impressed by

Long Ears Coffee and decided to rear his own brown rabbits and used Ms Wander’s
patented process to produce a competing brand of coffee called Bunny Shot Kopi. His
activities began after the grant date of Ms Wander’s patent. Ms Wander came to know
about Professor Starbuckovic’s activities and sued him for infringement.

Professor Starbuckovic hires you, a renowned intellectual property lawyer.

(a) Your assessment of the case indicates that it is very likely Professor
Starbuckovic has infringed Ms Wander’s patent, so the best course of action is
to look at applicable defences. Your further investigations lead to discovery of
the below listed findings in the patent document. Based on the below findings,
give your appropriate defence strategies for Professor Starbuckovic.

(i) A claim of the patent was amended post-grant as follows:

“….characterised in that at least one coffee bean was ingested by a
brown rabbit, defaecated as faeces by said brown rabbit, isolated from
said faeces of said brown rabbit…..”;
(6 marks)

(ii) The following statement exists in the background section of the patent
specification: “….mammals are not known to ingest coffee beans…..”
(6 marks)

(b) Discuss the rational for recommending the strategies in Questions 2(a).
(3 marks)

(c) Ms Wander’s grandmother was a famous artist and had done a beautiful
sculpture of a rabbit for which she had copyright in an artistic work. Her
grandmother passed away in 1944. The work was never published and now Ms
Wander is the sole owner of the work. In 2012, Ms Wander used the rabbit
sculpture as inspiration and was granted a registered design for a rabbit shaped
box to package Long Ears Coffee for sale. In 2015, Mr Storage used a sample
of Ms Wander’s box and manufactured identical boxes, which also contained
normal generic coffee beans for sale. Not surprisingly, Ms Wander has initiated
infringement proceedings. Mr Storage has also come to you for advice. Your
assessment is that he is very likely to have infringed and that suitable defence is

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Examination – January Semester 2018
 the best strategy. Based on the facts stated above, give an appropriate defence
strategy for Mr Storage.
(10 marks)

Question 3

(a) Puresound Pte Ltd (“Puresound”) filed a trademark application in March 2016.
The logo was a stylised violin and goods under Class 15: Musical Instruments.
Puresound obtained a positive report from its intellectual property lawyers that
there was a reasonable chance the trademark application will be successful. The
application was filed in April 2016. On the same day as the filing date,
Puresound immediately published on its corporate website that it had been
granted a Singapore trademark for its musical instruments.

Separately and independently, Puresound’s competitor Soundmaster Pte Ltd

(“Soundmaster”) was thinking of using an identical stylised violin as a
trademark for the same class of goods. In May 2016, before Puresound’s
trademark was granted, Soundmaster discovered Puresound’s announcement of
its trademark grant on its website and wants to apply to invalidate Puresound’s
trademark. You are a well-known trademark lawyer and Soundmaster is
seeking your advice.

(i) Identify the offence that Puresound has committed. State the facts of the
identified offense for the case outlined above.
(8 marks)

(ii) State the applicable punishment Puresound will be liable for.

(4 marks)

(iii) Are there grounds to invalidate Puresound’s trademark application?

Justify your reasoning.
(4 marks)

(b) Wingtel has obtained a licence to sell mobile phones in Singapore made by a
well-known global manufacturer called Orange.Wingtel discovers that
Moonhub has been importing Orange phones from Zandhi (Orange’s
authorised Indian agent and licencee in India.) for sale in Singapore at a cheaper
price. Show whether Wingtel has grounds to take action against such imports.
Explain your reasoning.
(9 marks)

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Examination – January Semester 2018
Question 4

Mr McTopgun, a former fighter pilot, has developed an innovative autopilot system

that allows an aircraft to be steered by the pilot’s eye movements (“EyeSteer”). Mr
McTopgun has been very careful to keep his innovation confidential and has not
disclosed details to any third party.

However, in February 2016 he attends a meeting at the office of Summit Aerospace and
meets with the company owner and R&D Director, Dr Gunn. At the beginning of the
meeting Mr McTopgun states that the subject matter of the meeting is confidential. Dr
Gunn nods his head and verbally indicated his agreement. Mr McTopgun proceeds to
tell him about the details of his invention. He also shows Dr Gunn some technical
drawings but retains these when he departs the meeting. During the meeting, a potential
licence agreement and in particular a royalty rate was discussed.

In May 2016, Mr McTopgun becomes aware of Summit Aerospace’s new development

of an autopilot system identical to EyeSteer when he reads an article in an engineering
journal which features a picture of Dr Gunn standing next to a prototype which is said
to be ready for commercialisation. Mr McTopgun suspects Summit Aerospace has used
all of the information he disclosed to Dr Gunn. Advise Mr McTopgun on his legal
rights.

(a) Cite the appropriate law under which Mr McTopGun may have a cause of
action against Summit Aerospace.
(2 marks)

(b) Based on the law you have identified in Question 4(a), assess whether Mr
McTopGun’s action is likely to be successful.
(15 marks)

(c) Does Summit Aerospace have any defences against infringement proceedings?
(8 marks)

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Examination – January Semester 2018