Papers Relating to the Foreign Relations of the United States, Transmitted to Congress, With the Annual Message of the President, December 1, 1873, Part I, General Correspondence; and Papers Relating to Naturalization and Expatriation, Volume I

No. 19.
Mr. Jay to Mr. Fish.

American Legation,
Vienna, August 15, 1873. (Received September 4.)

No. 617.]

Sir: Mr. Thacher advises me that he is to make to you a full report of the proceedings of the recent congress for patent-reform, but as some little time may elapse before its completion, I send, for the information of the Department and of the Patent-Office, a copy of the resolutions adopted by that body.

The last resolution converted the preparatory committee into a permanent executive committee, with power to add to their number; and this provision, the importance of which seemed, when first suggested, to be but imperfectly appreciated by some of the leading members of the congress, promises to secure a continuance of organized effort. France took no part in the congress, but is expected to furnish members to the executive committee.

His excellency the Baron Schwarz-Senborn, Mr. Siemens, the president of the congress, Mr. Webster, the English patent-jurist, appointed by the government to report its proceedings, and Mr. Owen, the British commissioner, have all spoken to me of the congress as a success in the character and ability of the delegates, and the unanimity of their views and their earnest determination. The Baron Schwarz-Senborn is the president of the executive committee, Mr. Pieper, of Dresden, its secretary, and Mr. De Rosas, to whom I have previously referred as the highest legal authority in Austria on patent-questions, its treasurer.

The executive committee, after the adjournment of the congress, waited, by appointment, upon the Count Andrassy and Mr. Banhaus, the minister of commerce.

The Count Andrassy expressed warmly his pleasure at the success of this congress, and his full approval of its general views. Mr. Banhaus, who spoke with more reserve, received them cordially, said that the patent-laws of Austria required revision, and intimated that he would gladly avail himself of the suggestions of the congress. Mr. Thacher regarded his language as non-committal, but Mr. Siemens thought it extremely encouraging, especially in a remark that he dropped in addressing Mr. Thacher, when he said, in allusion to our coming negotiation, that he hoped he might be able to meet the views of the American minister.

I am told that the Count Zichy, the minister of commerce for Hungary, is decidedly in favor of a patent-reform, and this fact is the more important in view of the position of the Count Andrassy, and of the fact that political reasons rather incline Austria to assent to imperial measures that are warmly desired by Hungary.

I have had several conversations with Mr. Thacher on our best mode of procedure, and he agrees with me in thinking that if the revision of the existing patent-law of Austria-Hungary is about to be taken up by the two ministries of commerce, it affords a favorable opportunity of obtaining the changes which we deem desirable, and with less likelihood of their being opposed in the Reichsrath than if they were first presented in an international convention.

Mr. Thacher, at my request, has read carefully the translation of the Austrian law contained in yellow volume published by the English commission, of which I sent you a copy, [and three more copies got to the Department by this post,] commencing at page 91, and has furnished me with a note of the alterations which he would deem advisable. A copy of this note I add. (Appendix II.)

I have recommended hi in to submit these suggestions to Mr. Webster, the English jurist, and to Messrs. Pieper and Rosas, that they may be brought to the notice of the minister of commerce and the superintendent of the Austrian patent-office in the most judicious manner.

If the really important differences between the Austrian and American systems can be adjusted in a revision of their own legislation, the proposed convention may follow almost as a matter of course, and with no objections on the part of the Parliaments, on the ground that it contradicts and changes the law and policy of the empire.

I beg leave to suggest that the note of Mr. Thacher may be revised by Mr. Leggett, and that I may be advised of the views of the chief commissioner upon the subject; and I think it might also be of material advantage to have, as soon as may be convenient, the draft of such a convention as the Department would approve as a guide to the action which I may find it proper to take in making suggestions to the executive committee of the congress, or in answering the questions which may be put to me by this government in regard to the views of the Patent-Office at Washington.

The practical difficulties in the way of a convention will, I think, in a great measure disappear with the adoption by this government of the leading principles declared by the congress; with the deposition in each country of copies of all the specifications from the patent-office of the other; the employment in each country of a patent expert from the other to assist in examinations and in the procurance of patents; and especially with a provision, that while disputed questions shall in each case be first decided by the courts of the country where they arise, there shall be an appeal to an international tribunal to be established. Should Austria, the United States, and England unite in such a treaty, each country might perhaps furnish a judge to constitute a permanent and final court of appeal.

I have, &c.,

JOHN JAY.

[Appendix 1.]

Resolutions adopted by the patent congress, Vienna, Austria, August 5–10.

I. The protection of inventions should be guaranteed by the laws of all civilized nations under the condition of a complete publication of the same; because—

(a.) The sense of right among civilized nations demands the legal protection of intellectual work.

(b.) This protection affords the only practical and effective means of introducing new technical ideas, without loss of time and in a reliable manner, to the general knowledge of the public.

(c.) The protection of invention renders the labor of the inventor remunerative, and induces thereby introduction and practical application of new and useful technical methods and improvements, and attracts capital from abroad, which, in the absence of patent protection, will find means of secure investment elsewhere.

(d.) By the obligatory complete publication of the patented invention the great sacrifice of time and of money, which the technical application would otherwise impose upon the industry of all countries, will be considerably lessened.

(e.) By the protection of invention the secrecy of manufacture, which is one of the greatest enemies of industrial progress, will lose its chief support.

(f.) Great injury will be inflicted upon countries which have no national patent laws by the native talent emigrating to more congenial countries, where their labor is legally protected.

(g.) Experience shows that the holder of a patent will make the most effectual exertions for a speedy introduction of his invention.

II. An effective and useful patent law should be based on the following principles:

(a.) Only the inventor himself, or his legal representatives, should be entitled to a patent. A patent should not be refused to a foreigner. It is advisable, in carrying out this principle, to introduce a system of preliminary examination.

(b.) A patent should be granted either for a term of fifteen years, or be permitted to be extended to such a term.

(c.) Simultaneously with the issue of a patent, a complete publication of the same should take place, rendering the technical application of the invention possible.

(d.) The expense of obtaining a patent should be moderate; but, in the interest of the inventor, a progressive scale of fees should be established, enabling him to abandon, when convenient, a useless patent.

(e.) Facilities should be given by a well-organized patent-office to obtain in an easy manner the specification of a patent, as well as to ascertain what patents are still in force.

(f.) It is advisable to establish legal rules, according to which the patentee may be induced, in cases in which the public interest should require it, to allow the use of his invention to all suitable applicants, for an adequate compensation.

(g.) The non-application of an invention in one country shall not involve the forfeiture of the patent if the patented invention has been carried into practice at all, and if it has been rendered possible for the inhabitants of such country to purchase and make use of the invention.

In all other respects, and particularly as regards the proceedings in the granting of patents, the congress refers to the English, American, and Belgian patent laws, and the draft of a patent law prepared for Germany by the Society of German Engineers.

III. Considering the great differences in patent legislation, and the altered international commercial relations, the necessity of reform is evident; and it is of pressing moment that governments should endeavor to bring about an international understanding upon patent protection as soon as possible.

IV. The congress empowers the preparatory committee to continue the work commenced by this first international congress, and to use all their influence that the principles adopted be made known as widely as possible, and carried into practice. The committee is likewise authorized to endeavor to bring about an exchange of opinions on the subject, and to call from time to time meetings and conferences of the friends of patent protection.

To this end the preparatory committee is hereby appointed, to act as a permanent executive committee, with power to add other members to their number, and to appoint the time and place for the next meeting of the congress, in case such a meeting should be considered necessary, for the promotion of the results achieved.

[Appendix 2.]

Mr. Thacher’s note of desirable amendments to the Austrian patent laws.

Section I.

§ 1.

Note 1, clause 1. Amend by erasing and substituting therefor the following: “An exclusive patent may be granted for each new discovery, invention, or improvement, to the original inventor thereof, or his legal representatives.”

This limitation seems to be necessary, for in the law, as it now stands, no such restriction is to be found.

Note 1, clause 5. Erase “addition” and insert instead “material change.”

This amendment is desirable in view of the construction put upon the clause by the Austrian government, by which the improvement of a device by taking away some part is not regarded as an improvement.

Note, clause 6. Amend by inserting after the word “publication,” in the second line, the words “or a foreign patent.”

The publication of foreign patents should be regarded as notice to the world.

§ 2.

The United States grants patents for chemical compositions and preparations; but, perhaps, it is not desirable to urge an amendment of this section to correspond with our practice.

§ 3.

Note, clause 1. The United States law does not require that the invention shall have been patented abroad. It is suggested that this clause should be amended accordingly. Note, clause 2. Erase “owner,” and insert “patentee” instead.

Section II.

§ 9.

Clause d. Strike out altogether “A patented invention should never remain a secret, but be fully disclosed through the specifications.”

§ 11.

If possible, the tariff should be reduced.

§ 17.

Erase and insert in lieu the following: “An examination into the novelty or the usefulness of the discovery, invention, or improvement stated, will take place before the patent is granted, but the state administration do by no means guarantee the absolute novelty and utility of the invention patented,” should be amended so as to ingraft upon the Austrian law a system of preliminary examinations.

§ 10.

Amend by inserting “and § 17” after § 16 in second line.

Section IV.

§ 29.

Substitute “patentee” for “owner” in b b.

2 a. This limitation should be abrogated if possible.

§ 32.

Amend by striking out reference to secret patents.

Section VII.

§ 40.

Strike out reference to secret patents.

§.42.

This paragraph should be amended so as to leave all questions arising in patent suits to the judiciary of the country. The remaining paragraphs of this section require thorough revision, so as to leave all these questions to the courts.

General observations.—It is suggested that in any convention between Austria and the United States it may be desirable to limit the exclusive right of a citizen of either country to obtain a patent for his invention in the other, to a reasonable term, after the grant of his own patent, say two or three years, and if he neglects to avail himself of the privilege provided by law within such time, the invention shall become public property. In this way inventors would be stimulated to patent and introduce their inventions in foreign countries.

Patents granted in one country should be granted in the other, unless rejected upon additional proof of want of novelty.