Papers Relating to the Foreign Relations of the United States, Transmitted to Congress, With the Annual Message of the President, December 5, 1892
Mr. Alfons Mumm von Schwarzenstein to Mr. Blaine.
Washington , November 3, 1891 . (Received November 5.)
Mr. Secretary of State: The envoy of the United States at Berlin proposed, by a note bearing date of April 22, 1891, in connection with the recently introduced reform of German patent legislation, an arrangement between the Empire and the United States of America for the reciprocal protection of patents.
Presuming that this proposition, although it expressly mentioned patents for inventions only, was not, and could not have been, designed to exclude other industrial rights from being regulated by treaty, the Imperial Government welcomes it with satisfaction.
The Imperial Government is consequently prepared, in compliance with the suggestion of the Government of the United States of America, to conclude an arrangement with it for the reciprocal protection of patents, samples, and trade-marks, for which arrangement the principles of the union might, in the opinion of the Imperial Government, serve as a model, so far as this is allowed by the legal institutions and economical interests in the territories of both parties.
I have the honor to inclose six copies of the proposals made by the Imperial Government for the conclusion of an arrangement, together with a few explanatory remarks, and I would at the same time express the hope that these proposals may be taken as a basis for subsequent negotiations.
In case the United States Government may desire to familiarize itself with the German laws bearing upon this matter, I have the honor, in each additional inclosure, to transmit a copy of the law for the protection of trade-marks, dated November 30, 1874; a copy of the law concerning the rights of originators in patterns and models, dated January 11, 1876; a copy of the patent law of April 7, 1891; and, finally, a copy of the law relative to the protection of utility patterns, dated June 1, 1891.
I have the honor to request that I may, as speedily as practicable, be acquainted with the views of the Government of the United States of America as regards these propositions, and I avail myself of this occasion to offer you, Mr. Secretary of State, a renewed assurance of my most distinguished consideration.
- A. v. Mumm.
- Hon. James G. Blaine,
Secretary of State of the United States, Washington.
Proposed arrangement between Germany and the United States of America for the Reciprocal Protection of patents, patterns, and trade-marks.
The subjects or citizens of each of the contracting parties shall enjoy the same rights in the territory of the other party that are there enjoyed by its own subjects or citizens as regards the protection of inventions, patterns, and models, and of trademarks, firms, and names.[Page 201]
Other persons whose residence or principal establishment is in the territory of the contracting parties are considered, by this arrangement, as being on the same footing with the subjects or citizens of the said parties.
If notice is given of an invention, pattern, model, or trade-mark in the territory of one of the contracting parties with a view to the obtainment of protection, and if such notice is also given, within the time designated below, in the territory of the other contracting party, then—
- The latter notice must precede all notices that have been given in the territory of the other party subsequently to the time when the former notice was given.
- The object of the former notice shall not be deprived of its recency in the territory of the other party by circumstances arising subsequently to the time when the said notice was given.
The time fixed is six months. In the case of patterns and models, and also of trade-marks, it begins at the time when the first notice is given, and in that of inventions it begins at the time when the patent is granted.
The importation of goods manufactured in the territory of one party, on the ground of an invention of a pattern or model, into the territory of the other party, shall involve no unfavorable consequences as regards the protection of the pattern or model in the territory of the latter.
The owner of a trade-mark that has been registered in the territory of one of the parties can not be prohibited from registering the same in the territory of the other party on the ground that the external form of the mark does not meet the requirements of the laws.
For trade-marks that are generally considered, in the territory of one party, as distinguishing the goods of a particular association of manufacturers in that territory, or of a particular district or locality belonging to that territory, the subjects or citizens of the other party can not obtain protection. The same is the case as regards coats of arms and other signs or emblems that are reognized in the territory of the other party as appertaining to the State, a community, or any public association
Each of the contracting parties shall adopt measures to prevent the sale and the offering for sale of goods that are designated incorrectly, and with intent to deceive, as coming from a locality situated in the territory of the other contracting party.
The main principle laid down in article 1, which places the subjects or citizens of both contracting parties on the same footing in respect to the acquisition and assertion of industrial rights in each of the two countries, correspond to article 2 of the union treaty of March 20, 1883. For the obtainment and exercise of these rights the laws of that country whose protection is sought are, of course, to be complied with, in so far as the following articles do not involve an exception.
In the wording of article 2 the resolutions of the Madrid Conference concerning the “assimilation of foreigners” have been borne in mind. As the principal manufacturing countries belonging to the union are not willing to allow the subjects or citizens of other countries to be placed on the same footing [with their own subjects or citizens], unless they reside in a country belonging to the union, or unless their principal industrial establishment is in such a country, the countries that do not belong to the union will be compelled, for the present, to adopt this restriction, in order to prevent the situation of their own subjects or citizens from being rendered less favorable than that of the subjects or citizens of the union countries.
In the subsequent articles those persons who are benefited by the stipulations of the treaty, according to articles 1 and 2, are not again designated. It is understood from the contents of the latter article that the privileges proposed in articles 3, 4, and 5 are not to be granted to the subjects or citizens of third States who are not [Page 202] placed by article 2 on the same footing with the subjects or citizens of the contracting parties.
In Article 3 the principle laid down in Article 4 of the treaty concluded by the union is formulated in a manner that will probably be found to harmonize with the form of the protective arrangements in Germany and the United States.
Under the head of patterns and models are to be understood all articles that are to be considered as samples in matters either of taste or utility. The laws of the two countries differ, it is true, in that while America does not, Germany does recognize a previous material examination in this line; the length of the time fixed for securing rights of priority will, however, in all probability, meet the interest of America also.
As to inventions, properly so called, no advantages would accrue to persons announcing them in the States which make the issuance of a patent dependent upon an official examination as to whether the distinguishing characteristics of an invention are present, if the time fixed for securing the right of priority should begin at the time of giving notice of the invention. The United States of America have already become convinced of this, and at the Madrid conference they laid stress upon the fact that the union treaty, in its present form, possessed no value so far as their territory was concerned. The two other States of the union which do not allow patents to be issued until an examination has taken place, viz, Sweden and Norway, have endeavored to remedy the difficulty by considering—in virtue of their domestic laws—the time when the patent is granted as the beginning of the period fixed by the union treaty.
A special stipulation providing that a [the] notice, on the ground of which the privilege is rendered valid, shall meet the formal requirements of the country in which it is given, does not appear to be necessary. The party seeking protection will, on subsequently giving notice in the other country, have to prove, by the presentation of official certificates, that these requirements have been complied with. On the other hand, as to the material requirements concerning the notice, they are to be judged exclusively according to the laws of the country in which the grant of the right is sought.
The effects of the privilege are circumscribed in the same way as in Article 4 of the union treaty.
The proposition made in Article 4 contains a statement of the principles laid down in Article 5 of the union treaty, which are contradictory, and have, consequently, not been uniformly carried out by the individual States of the union.
Article 5 reproduces the principle touching the reciprocal recognition of presumptions for the registration of trade-marks contained in Article 6 of the union treaty. The wording of the article has been changed from that of Article 6 of that treaty, so that it may appear with certainty that a privilege in itself is to be granted only as regards the external condition of the mark (form, composition, etc.), while, with respect to the other presumptions relative to registration, the laws of the country in which registration is applied for are to be obeyed. That the treaty of March 20, 1883, is the outcome of the same views, appears from the final protocol in the part referring to Article 6.
The main object of Article 6 is to reconcile the conflicting interests of individual manufacturers and of large associations connected by similar industrial interests.
As to Article 7, the resolutions adopted by the Madrid conference concerning the prevention of improper designations of goods are of so comprehensive a character, and for that very reason so little circumscribed, that there appears to be considerable room for doubt whether they will be efficiently and uniformly enforced even in those States of the union in which they are ratified. To this must be added that several States of the union have, from the very outset, been strenuously opposed to the resolutions. Yet, even in a material point of view, it appears to be a very hazardous proceeding to hamper and disturb trade and business relations by regulations of general application, concerning the scope of which even an approximately correct opinion can not be formed in advance. The effect of such provisions goes far beyond the object had in view, viz, the prevention of dishonest speculation.
The draft occupies essentially the same ground as the union treaty of March 20, 1883, and seeks, by a clear provision, which can easily be carried out, to prepare the way for the abolition of prevailing abuses. Article 7 prohibits all persons from mentioning, with intent to deceive, any locality situated in the territory of the other party as the place of origin. It is not intended to exclude hereby such designations from which it is merely to be inferred that the goods are made by the same manufacturing process, and that they possess the same qualities as goods manufactured in the foreign locality. It is not advisable to regulate, in the treaty itself, the way and manner in which the prohibitory provision of each country is to be executed (penal provisions, prohibition to import, seizure), especially since the union treaty and the Madrid resolutions allow freedom of action in this respect to the individual countries.
An act for the protection of trade-marks, dated November 30, 1874.
We, William, by the grace of God, German Emperor, King of Prussia, etc., hereby order, in the name of the German Empire, with the consent of the Bundesrath and the Reischstag, as follows:
Section 1. Manufacturers, whose firm names have been entered in the commercial register, may give notice, before the competent court (for the purpose of having them entered in the commercial register of the place where their principal establishment is situated), of trade-marks, which are to be placed upon their goods or upon the packages containing them, with a view to distinguishing said goods from those of other manufacturers.
Sec 2. The notice must be accompanied by a plain representation of the trademark (section 1), together with a list of the kinds of goods for which the mark is intended, and the signature of the firm.
Sec. 3. The registration of trade-marks whose use is protected by law for the giver of the notice concerning them, and that of marks which, up to the beginning of the year 1875, have been generally known in the trade as distinguishing the goods of a particular manufacturer, shall not be refused.
Registration shall, however, be refused if the marks consist entirely of numbers, letters, or words, or if they contain public armorial bearings or representations likely to give offense.
Sec. 4. Registration shall take place in the name of the firm giving the notice. The time when the notice is given shall be mentioned in the registration. If a trademark that has been previously registered shall be registered anew, owing to the removal of the principal establishment, the time when the first notice was given shall be mentioned when such trade-mark is reregistered.
Sec. 5. A registered trade-mark shall, on application of the firm, be canceled.
Cancellation shall take place—
- When the firm name is canceled in the commercial register.
- When notice is given of a change in the firm, and no notice is given, at the same time, that the trade-mark is to be retained.
- When ten years have elapsed since the registration of the mark without any notice having been given of its retention, or since the date of such notice without any renewal thereof.
- When the mark, according to section 3, should not have been recorded.
Sec. 6. The first registration and the cancellation of a trade-mark shall be announced in the German Advertiser of the Empire (Reichs-Anzeiger).
The cost of the announcement of the registration shall be borne by the firm.
Sec. 7. A fee of 50 marks shall be required for the first registration of a trademark not protected by law.
The governments of countries may remit the fee for the registration of marks which, up to the beginning of the year 1875, have been generally known in the trade as distinguishing the goods of a particular manufacturer.
No fee shall be required for other registrations and cancellations.
Sec. 8. The firm for which notice was first given shall have the exclusive right to place marks of which notice has been given to the commercial register on goods or on the packages containing them, or to introduce goods thus marked into the trade.
Sec. 9. No person can, by giving notice, acquire a right to trade-marks protected by law, or to marks which, up to the beginning of the year 1875, were generally known in the trade as distinguishing the goods of a particular manufacturer, with the exception of the owners who are legally protected or who are generally recognized in the trade, provided that the said owners give notice prior to October 1, 1875.
Sec. 10. No one shall be prevented, by the announcement of a trade-mark containing letters or words, from using his name or that of his firm, although it be in an abbreviated form, for the purpose of distinguishing his goods.
No person can, by giving notice, acquire a right to trade-marks which have hitherto been freely used by all or by certain classes of manufacturers, or the registration of which is not permissible.
Sec. 11. A firm for which a trade-mark has been registered must allow that mark to be canceled on the application of a person who has the right to prevent it from using the mark, or, if the trade-mark is one of those mentioned in section 10, paragraph 2, the firm must allow it to be canceled on the application of an interested party.
Sec. 12. The right acquired by giving notice of a trade-mark shall be canceled—
- When the notice is withdrawn, or when application is made for its cancellation by the firm having acquired such right.
- In one of the cases contemplated in section 5, Nos. 1, 2, and 3.
Sec. 13. Any manufacturer or dealer doing business in the territory of the German Empire may bring an action at law against any person who shall illegally mark goods or the packages containing them with a trade-mark to whose protection such manufacturer or dealer is entitled according to the provisions of this act, or against any person who shall illegally mark goods or the packages containing them with the firm name of such manufacturer or dealer, the object of such action at law being to secure a decision to the effect that the person so marking his goods or the packages containing them has no right to do so.
A manufacturer or dealer may, in like manner, bring an action at law against any person who shall introduce into the trade or expose for sale illegally marked goods, the object of such action at law being to secure a decision that such person has no right to introduce goods thus marked into the trade or to expose the same for sale.
Sec. 14. Any person who shall knowingly mark goods or the packages containing them with a trade-mark which, according to the provisions of this act, is entitled to protection, or who shall knowingly mark them with the name, or the firm name of a manufacturer or dealer doing business in the Empire, or who shall knowingly introduce into the trade, or expose for sale such illegally marked goods, shall be punished by a fine of from 150 to 3,000 marks, or by imprisonment for a term not exceeding six months, and shall be liable to the injured party for damages.
Prosecutions shall be instituted on application only.
Sec. 15. Instead of any damages based on the ground of this act, a fine, the amount of which shall not exceed 5,000 marks, may, on application of the injured party, be ordered to be paid to him in addition to the penalty. The convicted parties shall be liable as joint debtors for the payment of this fine.
When the payment of a fine is ordered, this shall exclude the presentation of any further claim for damages.
Sec. 16. The court shall decide, according to its convictions, alter duly considering all the circumstances, whether any damage has been done; and, if so, what the amount thereof is.
Sec. 17. If a sentence is pronounced on the ground of section 14, the destruction of the marks on the packages or the goods shall, on application of the injured party, be ordered as regards the goods in possession of the convicted party; or, if therein oval of the marks is possible in no other way, the destruction of the packages or of the goods themselves shall be ordered.
If a sentence is pronounced in penal proceedings the injured party shall be authorized to publish the sentence at the expense of the convicted party. The manner and time of publication shall be fixed in the sentence.
Sec. 18. The protection granted to the owner of a trade-mark, of a name, or of a firm name by the provisions of this act shall not be forfeited by the fact that the trade-mark, the name, or the firm name is reproduced with alterations that can be perceived only by very close observation.
Sec. 19. Civil suits in which a claim is preferred by complaint, in accordance with the provisions of this act, shall, in the sense of the laws of the Empire and of the countries composing it, be considered as commercial cases.
Sec. 20. The provisions of this act shall be applicable to the trade-marks of manufacturers not having a commercial establishment in the territory of the Empire, and likewise to the names or the firm names of foreign manufacturers or dealers, when German trade-marks, names, and firm names are (in pursuance of a notice inserted in the paper in which the laws are published by authority) protected in the country in which their establishment is situated; but the said provisions shall be applicable to trade-marks (section 1) on the following conditions:
- Notice concerning a trade-mark must be given to the court of commerce, with a declaration that the giver of the notice will hold himself amenable to the jurisdiction of the aforesaid court in complaints presented on the ground of this act.
- The notice must be accompanied by proof that, in the foreign country, the conditions are fulfilled on which the giver of the notice may there claim protection for the mark.
- The notice shall serve as the basis of a right only so far and so long as the giver of the notice is protected, in the foreign country, in the use of the mark.
Sec. 21. This act shall take effect on the 1st day of May, 1875.
The provisions of the laws of the country shall, nevertheless, be applicable to trade-marks that have been protected by law up to this [that?] date, until notice shall have been given in pursuance of this act, at the latest until October 1, 1875.
In testimony whereof we have hereunto set our hand and caused our imperial seal to be affixed.
An act relative to the rights of originators in patterns and models, dated January 11, 1876.
We, William, by the grace of God, German Emperor, King of Prussia, etc., hereby order, with the consent of the Bundesrath and the Reichstag, as follows:
Section 1. The right to copy an industrial pattern or model, either in whole or in part, belongs exclusively to its originator.
None but new and peculiar productions shall be considered as patterns or models in the sense of this act.
Sec. 2. In the case of patterns and models that are made by draftsmen, painters, sculptors, etc., who are employed in a manufacturing establishment in the territory of the Empire by order or for the account of the owner of the establishment, such owner, if no other arrangement is made by contract, shall be considered as the originator of the patterns and models.
Sec. 3. The right of the originator shall be transferable to his heirs. This right may, either by contract or by testament, be transferred to others.
Sec. 4. Making free use of individual component parts of a pattern or model in constructing a new pattern or model shall not be considered as copying.
Sec. 5. Any copy of a pattern or model that is made with the intent to circulate it without the consent of the originator or of the party or parties who have legally acquired his rights (sections 1 to 3) is hereby prohibited. A copy shall likewise be considered as prohibited—
- When, in making it, a process is used which is different from that used in the original work, or when the copy is intended for a branch of industry different from that for which the original is used.
- When the dimensions or colors of the copy are different from those of the original, or when the alterations made therein are such as can not be perceived without the exercise of special attention.
- When the copy is not made directly from the original, but indirectly from a copy thereof.
Sec. 6. The following copies shall not be considered as prohibited:
- A single copy of a pattern or model, provided that it is not made with intent to circulate or use it for industrial purposes.
- Copies made of patterns that are on a plane surface by means of plastic materials, and inversely.
- The insertion of copies of single patterns or models in a book or similar publication.
Sec. 7. The originator of a pattern or model shall not be protected against imitations unless he shall give notice thereof for registration in the register of patterns, and shall deposit a pattern, or a drawing thereof, with the officer having charge of the register of patterns.
The notice must be given and the deposit made before any article made from the pattern or model can be exposed for sale.
Sec. 8. The protection afforded by this act against copying shall be granted to the originator of a pattern or model, at his option, for from one to three years from the day on which notice shall have been given.
The originator shall, on payment of the fee provided for in section 12, paragraph 3, be entitled to an extension of the term for which protection is granted for a period not exceeding fifteen years. Any extension of the term shall be noted in the register of patterns.
Sec. 9. The register of patterns shall be in charge of the judicical authorities having charge of the commercial register.
It shall be the duty of an originator to give notice concerning his pattern or model to the court of the place where his principal establishment is situated, and also to deposit the said pattern or model with such court; and, if he does not do business under the name of a registered firm, to give such notice and make such deposit with the competent court of his place of residence.
Originators who have neither an establishment nor a residence in the territory of the Empire, must give their notice to, and make their deposit with, the court of commerce at Leipzig.
Patterns or models may be deposited open or sealed, single or in packages. Packages must not, however, contain more than fifty patterns or models, and must not weigh more than 10 kilograms. Special rules relative to the management of the register of patterns shall be issued by the chancellor of the Empire.
Packages of patterns that have been deposited sealed shall be opened three years after the notice shall have been given, or, if the term for which protection is granted is shorter, at its expiration.
The registration and the extension of the term of protection (section 8, paragraph [Page 206] 2) shall he advertised every month in the German Advertiser of the Empire. The cost of advertising shall he paid by the giver of the notice.
Sec. 10. Entries shall be made in the register of patterns without any previous examination with regard to the right of the applicant or the correctness of the facts stated for entry.
Sec. 11. All persons shall he at liberty to examine the register of patterns and such patterns and models as are not sealed, and to procure authenticated extracts from the register of patterns. In case of dispute as to whether a pattern or model is protected against copying, even sealed packages may, for the purpose of procuring a decision, be opened by the officers having charge of the register of patterns.
Sec. 12. All statements, proceedings, attestations, authentications, depositions, extracts, etc., shall require no stamps.
For each registration and deposit of a single pattern, or of a package containing patterns, etc. (section 9), a fee of 1 mark for each year shall be payable, unless a term of protection not exceeding three years is claimed. (Section 8, paragraph 1).
If the originator claims a longer term of protection, according to section 8, paragraph 2, he shall pay a fee of 2 marks for each additional year until the tenth year, inclusive, and from eleven to fifteen years he shall pay a fee of 3 marks for each single pattern or model. For each certificate of registration and for each additional extract from the register of patterns a fee of 1 mark shall be required.
Sec. 13. Any person who shall have given notice concerning a pattern or model, in order to have it entered in the register of patterns, and who shall have made his deposit in the manner required by section 7, shall be considered as an originator until proof to the contrary is furnished.
Sec. 14. The provisions of sections 18 to 36 and section 38 of the act of June 11, 1870, relative to the rights of authors in literary works, etc. (Law Gazette for 1870, p. 339), shall be applicable to the rights of originators in patterns and models, with the restriction that copies found and contrivances intended for illegal multiplications shall not be destroyed, but shall, at the expense of the owner and at his option, either be deprived of their jeopardizing form or officially kept on deposit until the expiration of the term of protection.
Unions of experts, which, according to section 31 of the act aforesaid, are required to give their opinions concerning the copying of patterns or models, shall be composed of artists, manufacturers of various articles, and other persons who are familiar with pattern and model business.
Sec. 15. Civil suits in which a claim is preferred for indemnity, enrichment, or confiscation shall be considered, in the sense of the laws of the Empire and of the countries composing it, as commercial cases.
Sec 16. This act shall apply to all patterns and models of originators residing in the Empire, provided that the articles made according to the patterns or models are manufactured within the territory of the Empire, without regard to whether they are sold in the Empire or in a foreign country.
When foreign originators have their industrial establishments in the territory of the German Empire they shall enjoy the benefit of this act for their goods manufactured in the Empire.
The protection extended to foreign originators shall he regulated by existing treaties.
Sec. 17. This act shall take effect on the 1st day of April, 1876. It shall be applicable to all patterns and models made subsequently to the day on which it shall have taken effect.
Patterns and models made previously to that day shall not enjoy the benefit of the protection of this act unless the first article made according to the pattern or model has been offered for sale after April 1, 1876.
Patterns and models that have hitherto been protected from imitation by a law of one of the countries composing the Empire shall still be thus protected; such protection can not, however, extend beyond the territory for which it was originally granted.
In testimony whereof we have hereunto set our hand and caused our imperial seal to be affixed.
Patent law, dated April 7, 1891.
We, William, by the grace of God, German Emperor, King of Prussia, etc., hereby order, in the name of the Empire, with the consent of the Bundesrath and the Reichstag, as follows:
The following provisions are to take the place of sections 1 to 40 of the patent law of May 25, 1877 (Journal of the Laws of the Empire, p. 501):
Chapter 1.—Patent rights.
Patents shall be granted for new inventions that may be used for industrial purposes.
The following shall be excepted:
- Inventions the use of which would conflict with the laws or with good morals.
- Inventions of alimentary products and medicaments, and also of chemically prepared articles, unless the inventions relate to a special process for the preparation of the articles.
Sec. 2. An invention shall not be considered as new if, at the time of the notice given in public prints, as required by this law, during the last one hundred years, it has been so described or so publicly used in the territory of the Empire that its use by other experts seems possible.
Descriptions of patents officially published in foreign countries shall be considered as being on the same footing with public prints at the expiration of three months from the day of issue, provided that a patent is sought by the party who has given notice of the invention in a foreign country, or by his legal successor. This privilege shall, however, extend only to official descriptions of patents of those States in which reciprocity is guaranteed by a notice published in the Advertiser of the Empire.
Sec. 3. The party who has given first notice of the invention in the manner provided by this law shall be entitled to a patent. A subsequent notice can not furnish ground for a claim to a patent if the invention is the object of the patent of the party who has given the previous notice. If this supposition is partially realized, the one who has subsequently given notice shall only be entitled to a patent with proper restrictions.
The party applying for a patent shall not be entitled to one if the essential contents of his notice are taken from the descriptions, drawings, models, implements, or contrivances of another, or from a process used by another without his consent, and when objections are raised by the latter on this account. If the objection results in the withdrawal or the rejection of the notice, the party objecting, if he gives notice of the invention within one month from the communication of the decision of the patent office relating hereto, may require that the day before the publication of the former notice be fixed as the day of his notice.
Sec. 4. The effect of a patent shall be that the patentee is exclusively authorized to manufacture the object of the invention, to introduce it into the trade, to offer it for sale, or to use it. If a patent has been granted for a process, the effect extends to productions prepared directly by the said process.
Sec. 5. The effect of a patent shall not be operative against a person who, at the the time when notice was given, had already made use of the invention in the Empire or had made the necessary preparation for using it. Such a person is authorized to make use of the invention for the requirements of his own business in his own factory or in those of others. This privilege can only be transferred or disposed of together with the business.
The effect of a patent shall not, moreover, become operative unless the invention, by direction of the chancellor of the Empire, is to be used for the army or navy, or otherwise in the interest of the public welfare. Still, the owner of the patent, in this case, shall be entitled to a suitable indemnity from the Empire or the State that has demanded the restriction of the patent for its own interest, and in case no agreement can be reached with regard to such indemnity, the matter shall be settled by process of law.
The effect of a patent shall not extend to arrangements on board of vessels temporarily entering the territory of the Empire.
Sec. 6. A claim for the issuance of a patent and the right accruing from a patent shall be transferable to the heirs of the holder. The claim and the right may be transferred to others in case of death, by agreement or by law, either with or without restrictions.[Page 208]
Sec. 7. The time for which a patent is granted shall he fifteen years. This period shall begin on the day following the announcement of the invention. If an invention has in view the improvement or further development of another invention, which is protected by a patent in favor of the applicant for a patent, he may make application for the issuance of a supplementary patent, which shall expire simultaneously with the patent for the earlier invention.
If a supplementary patent becomes an independent patent through the declaration of the nullity of the principal patent, its duration, and the day when the fees are due shall be determined according to the day when the principal patent begins. The day when the supplementary patent begins shall determine the yearly amount of the fees. In this the period between the day of the announcement of the supplementary patent and the next following anniversary of the commencement of the principal patent shall be considered as the first patent year.
Sec. 8. A fee of 30 marks shall be payable for each patent before it is issued. (Section 24, paragraph 1.)
With the exception of supplementary patents (section 7), a fee is to be paid for the patent at the beginning of the second and of each succeeding year of its duration; which fee shall be 50 marks the first time, and shall be increased by 50 marks each year thereafter.
This fee (paragraph 2) is to be paid within six weeks after it has become due. At the expiration of this period payment can not be made unless 10 marks are added to the fee within six additional weeks.
If the owner of a patent furnishes proof of indigence, the fees for the first and second years of the duration of the patent may be deferred until the third year, and if the patent is canceled in the third year they may be remitted.
The payment of the fees may take place before they are due. If a patent is relinquished, or declared to be null and void, or withdrawn, the fees which have not become due shall be refunded.
The fees may be reduced by a resolution of the Bundesrath.
Sec. 9. The patent shall he canceled when the owner thereof relinquishes it, or when the fees are not paid in due time at the treasury of the Patent Office or at a post-office within the German Empire, to be remitted to said treasury.
Sec. 10. A patent shall he declared to be null and void when it appears—
- That the article was not entitled to a patent according to sections 1 and 2.
- That the invention is the object of a patent of a party who has given earlier notice.
- That the essential contents of the notice were taken from the descriptions, drawings, models, implements, or contrivances of another, or from a process employed by him without his consent.
If one of these suppositions (1, 2, and 3) is realized only in part, a declaration of nullity by proper restriction of the patent shall take place.
Sec. 11. A patent maybe withdrawn at the expiration of three years, reckoned from the day of the announcement of its issuance (section 27, paragraph 1)—
- If the owner of the patent neglects to bring the invention into use to a proper extent in the Empire, or neglects to do that which is necessary to cause it to be so brought into use.
- If, in the public interest, it seems proper to grant permission to use the invention to others, and the patentee refuses to grant this permission in return for a suitable compensation and a satisfactory guaranty.
Sec. 12. A person residing in a foreign country can assert a claim to the granting of a patent, and to the rights accruing therefrom, only in case he has appointed a representative within the German Empire. Such representative shall have the right to represent his constituent in all proceedings taking place according to this law, likewise in civil suits relating to the patent, and he shall be authorized to institute prosecutions. The representative’s place of residence, and in default thereof the place where the patent office is situated, shall be considered, according to section 24 of the ordnance concerning civil procedure, as the place where the articles of property are situated.
Provision may be made by an order of the chancellor of the Empire, issued with the consent of the Bundesrath, that the right of reprisal may be exercised against the subjects or citizens of a foreign state.
Chapter 2.—Patent office.
Sec. 13. It shall be the duty of the patent office to issue patents, declare them to be null and void, and to withdraw them.
The patent office is situated at Berlin. It shall consist of a president, of members who are eligible to the office of judge or to an office in the superior administrative service (members possessing a legal education), and of members who are experts in [Page 209] some technical branch (technical members). The members shall be appointed by the Emperor, and the president shall be nominated by the Bundesrath. The members possesssing a legal education shall, when they fill an office in the service of the Empire or the state, be appointed for the duration of that office, otherwise for life. The technical members shall be appointed either for life or for five years. In the latter case the provisions of section 16 of the law concerning the legal situation of officials of the Empire, dated March 31, 1873, shall not be applicable to them.
Sec. 14. The following divisions shall be formed in the patent office:
- Divisions for notices concerning patents (notice division).
- A division for applications for declarations of nullity or for the withdrawal of patents (nullity division).
- Divisions for complaints (complaint division).
In the notice division only technical members may be employed who have been appointed for life. The technical members of the notice division shall not be employed in the other divisions, and the technical members of the other divisions shall not be employed in the notice division.
The presence of at least three members shall be required to render the decisions of the notice division valid, and of these three members two must be technical members.
The decisions of the nullity division and of the complaint division shall require the presence of two members possessing a legal education and three technical members. The presence of three members shall be sufficient for the adoption of other decisions.
The provisions of the ordinance concerning civil procedure with regard to the ex-elusion and declination of magistrates shall he properly enforced.
Experts who are not members may be admitted to these deliberations, but they shall take no part in voting.
Sec. 15. The resolutions and decisions of the divisions shall be adopted in the name of the patent office; the grounds on which they are based shall be stated; they shall be drawn up in writing and furnished to all who are officially concerned.
Sec. 16. Complaint may be made of the decisions adopted by the notice division and the nullity division. No member who has been concerned in the decision complained of may take part in the adoption of the decision concerning the complaint.
Sec. 17. The formation of the divisions, the assignment of their work, the forms of procedure, including the delivery service, and the procedure of the patent office shall, in case no provision is made therefor by this law, be regulated by imperial ordinance, with the consent of the Bundesrath.
Sec. 18. It shall be the duty of the patent office to issue opinions in regard to questions connected with patents at the request of the courts, when, in the judicial proceedings, conflicting opinions have been pronounced by several experts.
The patent office, however, is not authorized to render decisions or to pronounce opinions outside of its legal sphere without the consent of the chancellor of the Empire.
Sec. 19. A list shall be kept at the patent office in which shall be mentioned the objects of the patents granted and the duration thereof, and likewise the names and residences of the owners of the patents and of such representatives as they may have appointed at the time of giving notice of their inventions. Mention shall be made in the list of the beginning, expiration, extinction, and declaration of the nullity of the patent and of the withdrawal thereof, and the same shall, at the same time, be published in the Advertiser of the Empire.
If any change is made in the person of the patentee or in that of his representative, such change shall likewise be mentioned in the list, and published in the Advertiser of the Empire, when it is brought in an authentic form to the knowledge of the Patent Office. Until this is done the former patentee and his former representative are authorized and bound according to this law.
All persons are at liberty to inspect the list, the description, drawings, models, and samples on the basis of which the patent has been granted, provided that a patent is not concerned which has been taken out in the name of the Imperial Government for the use of the Army or Navy.
The Patent Office shall publish the essential portions of the descriptions and drawings, provided that they are open to the inspection of the public, in an official gazette. The announcements which, according to law, are to be published in the Advertiser of the Empire are likewise to be printed in the said gazette.
Chapter 3.—Procedure in patent cases.
Sec. 20. Notice of an invention for which it is desired to secure a patent shall be given in the patent office in writing. A separate notice shall be required for each invention. The notice must contain an application for the issuance of a patent, and in such application the article to be protected by the patent shall be accurately [Page 210] designated. The invention is to be described in an appendix in such a manner that the use of the same by other experts shall appear possible. At the close of the description that which is to be placed under protection as patentable (claim for a patent) shall be mentioned. The necessary drawings, representations, models, and samples shall also be added.
The patent office shall make provision with regard to the other requirements concerning the notice.
Until the decision concerning the publication of the notice, changes shall be admissible in the statements therein contained. Simultaneously with the giving of the notice 20 marks shall be payable for the costs of procedure.
Sec. 21. A preliminary examination of the notice shall be made by a member of the notice division.
If the notice does not seem to meet the requirements prescribed (section 20), the applicant for a patent shall be summoned to make good the deficiencies within a determinate period.
If the preliminary examination shows that the invention is not patentable according to sections 1, 2, and 3, paragraph 1, the applicant shall be so informed, shall be made acquainted with the reason, and shall be summoned to say what he may have to say within a given period.
If the applicant for a patent does not comply with the summons (paragraphs 2 and 3) in due time, the notice shall be considered as having been withdrawn; if he does explain himself within the time allowed, the notice division shall adopt a decision.
Sec. 22. If the notice does not meet the prescribed requirements (section 20), or if it appears that the invention is not patentable according to sections 1, 2, and 3, paragraph 1, the notice shall be rejected by the division. The member who issued the summons shall not take part in the adoption of the decision.
If the rejection is to take place on the ground of circumstances that have not been made known to the applicant in the summons, an opportunity shall be given to him to make a statement relative to the said circumstances within a specified time.
Sec. 23. If the patent office considers the notice to have been given in due form and the issuance of a patent to be proper, it shall order the publication of the notice. When the publication has taken place, the legal effect of the patent shall be provisionally enjoyed, as regards the object of the notice, by the applicant for a patent (sections 2, 4, and 5).
When the publication takes place, the name of the applicant for a patent and the essential contents of his application shall be published once in the Advertiser of the Empire. The announcement is also to be made that the object of the notice is to be provisionally protected against unauthorized use.
At the same time the notice, with all its appendixes, is to be opened to the inspection of the public in the patent office. It may be ordered, in the manner provided by section 17 of the law, that such notice and appendixes are to be opened to the inspection of the public outside of Berlin also.
The publication may, at the request of the applicant, be deferred for six months, at most, from the day of the decision concerning the publication. The postponement for a period not exceeding three months shall not be refused.
If a patent is concerned for which application is made in the name of the Imperial Government for the use of the army or navy, the patent shall be issued without publication, if this is requested. In this case there shall be no registration in the list of patents.
Sec. 24. The first annual fee (section 8, paragraph 1), is to be paid within two months after the publication (section 23). If payment is not made within this time, the notice shall be considered to have been withdrawn.
Objections may be made during the same period to the issuance of a patent. All objections must be made in writing, and the grounds on which they are based must be stated. They can only be based upon the assertion that the article is not patentable according to sections 1 and 2, or that the applicant is not entitled to a patent according to section 3. In the case provided for in section 3, paragraph 2, the injured party alone shall have the right to present objections.
After the expiration of the time allowed, the patent office shall form a decision with regard to the issuance of a patent. The member who issued the summons (section 21) shall not take part in the adoption of the decision.
Sec. 25. At the preliminary examination and in the proceedings before the notice division, the summons and hearing of the parties interested, the examination of witnesses and experts, and the adoption of other measures necessary to throw light upon the matter may at any time be ordered.
Sec. 26. The applicant for a patent may protest against the decision by which his notice is rejected, and the said applicant or the objector may, within one month from the time of receiving it, complain against the decision adopted with regard to the issuance of a patent. When the complaint is presented, 20 marks shall be payable as costs of procedure; if this payment is not made, the complaint shall be considered as not having been presented.[Page 211]
If the complaint is not well founded, or if it is handed in too late, it shall he rejected as inadmissible.
If the complaint is found to be admissible, the subsequent procedure shall be according to section 25. The citation and hearing of the parties interested must take place at the instance of one of them. Such instance may be disregarded only when the citation of the petitioner had already taken place in the proceedings before the notice division.
If a decision is to be adopted concerning the complaint on the basis of circumstances other than those had in view in the decision to which exception is taken, an opportunity shall be given beforehand to the parties interested to make such statements as they may think proper.
The patent office may determine how far an interested party shall, in cases of defeat, be held liable for the costs of procedure in the case of the complaint. It may also order the fee (paragraph 1) to be refunded to the interested party whose complaint is found to be justified.
Sec. 27. When the issue of a patent has been finally decided upon, the patent office shall publish a notice to that effect in the Advertiser of the Empire, and shall then, without delay, issue letters patent to the party entitled thereto.
If the notice is withdrawn after publication or if a patent is refused, this shall likewise be made known. The annual fee which has been paid shall, in such cases, be refunded. When a patent is refused, the effects of the provisional protection shall be considered as not having become operative.
Sec. 28. The institution of proceedings for a declaration of nullity or for the withdrawal of a patent shall take place on application only.
In the case provided for in section 10, No. 3, the injured party alone shall have the right to make such application.
In the case provided for in section 10, No. 1, no application shall be admissible after the expiration of five years, reckoned from the day of the publication of the notice concerning the issuance of the patent. (Section 27, paragraph 1.)
Applications must be made to the patent office in writing, and must contain a statement of the facts on which they are based. When the application is made, a fee of 50 marks shall be payable. The fee shall be refunded when the proceedings are ended without a hearing of the parties interested.
If the maker of the application resides in a foreign country, he must furnish security to the other party, at his request, for the costs of the proceedings. The amount of the security shall be fixed by the patent office. A time shall be fixed when the applicant is ordered to furnish security, within which the security shall be furnished. If the security is not furnished before the expiration of the time fixed, the application shall be considered as having been withdrawn.
Sec. 29. After it shall have been decided to institute proceedings, the patent office shall notify the patentee of the application, and shall summon him to make a statement within one month.
If the patentee shall make no statement within the time fixed, a decision in accordance with the application may be rendered at once, without a summons or hearing of the parties interested, and, when the decision is rendered, all the allegations made by the applicant may be considered as having been proved.
Sec. 30.—If the patentee presents his plea in due time, or if, in the case contemplated in section 29, paragraphs 2, decision is not immediately rendered in accordance with the application, the patent office shall adopt the necessary measures for the elucidation of the case, and, if an answer has been made, shall communicate the same to the applicant. It may order an examination of witnesses and experts. In such case the rules of the ordinance concerning civil procedure shall be enforced. The proceedings in evidence shall be taken down by a sworn reporter.
The decision shall be rendered after the interested parties have been summoned and heard.
If application is made on the ground of section 11, No. 2, for the withdrawal of the patent, a commination of withdrawal, together with a statement of reasons and the appointment of a suitable time, must precede the decision rendered in accordance with this application.
Sec. 31. In rendering a decision the patent office must decide in what proportions the costs of the procedure must be borne by the parties interested.
Sec. 32. It shall be the duty of the courts to lend legal assistance to the patent office. The punishment of witnesses and experts who have failed to appear, or who have refused to take the required oath, shall be fixed by the courts, which shall also produce witnesses who have failed to appear.
Sec. 33. An appeal may be taken from a decision of the patent office (sections 29 and 30). Appeals shall be made to the supreme court of the Empire. Notice thereof is to be given, and the grounds on which they are based are to be stated within six weeks from the day when the decision shall have been communicated to the party interested.[Page 212]
The amount of the costs of procedure shall he determined by the decision of the court in pursuance of section 31.
The proceedings before the court shall be held in accordance with a body of regulations, which shall be prepared by the court and sanctioned by an imperial ordinance issued with the consent of the Bundesrath.
Sec. 34.—As regards the language to be used in business with the patent office, the provisions shall be enforced which are found in the law concerning the organization of the judiciary relative to the language to be used before the courts. Communications not written in the German language shall receive no attention.
Chapter 4.—Fines and indemnities.
Sec. 35. Any person who shall, through gross carelessness, make use of an invention in violation of sections 4 and 5 shall be bound to indemnify the injured party.
If an invention relative to the method of preparing any new material is concerned, any material of the same nature shall be considered as having been prepared by the patented process until evidence is furnished to the contrary.
Sec. 36. Any person who shall knowingly make use of an invention, in violation of sections 4 and 5, shall be punished by a fine not exceeding 5,000 marks or by imprisonment for a term not exceeding one year.
Prosecutions shall be instituted on application only. Applications for prosecution may be withdrawn.
If a punitory sentence is pronounced the injured party shall, at the same time, be authorized to publish the sentence at the expense of the party convicted. The manner and time of publication shall be provided for in the sentence.
Sec. 37. Instead of any indemnity based on the ground of this law, a fine not exceeding 10,000 marks may, at the request of the injured party, be ordered to be paid to him in addition to the penalty. The parties sentenced to pay this fine shall be responsible therefor as joint debtors.
When the payment of a fine has been ordered, this excludes the presentation of any further claim for damages.
Sec. 38. In civil suits, in which a claim has been presented by complaint or plea on the ground of the provisions of this law, the proceedings shall be held and the final sentence shall be rendered, according to section 8 of the law introductory to the law concerning the organization of the judiciary, by the supreme court of the Empire.
Sec. 39. Complaints on account of the violation of patent rights shall become outlawed, as regards any act constituting such violation, in three years.
Sec. 40. The following persons shall be punished by a fine not exceeding 1,000 marks:
- Any person who shall mark any article, or the package containing it, with a designation calculated to lead to the erroneous belief that such article is protected by a patent in pursuance of this law.
- Any person who, in public advertisements, on signs, cards, or in similar announcements, shall make use of a designation calculated to lead to the erroneous belief that the article therein mentioned is protected by a patent in pursuance of this law.
The provision contained in section 28, paragraph 3, of article 1 shall be applicable to patents now in force, with the proviso that the application shall be admissible until the expiration of at least three years from the day when this law shall take effect.
This law shall take effect on the 1st day of October, 1891.
In testimony whereof, we have hereunto set our hand and caused our imperial seal to be affixed.
An act for the protection of utility samples, dated June 1, 1891.
We, William, by the grace of God German Emperor, King of Prussia, etc., hereby order, in the name of the Empire, with the consent of the Bundesrath and Reichstag, as follows:
Section 1. Models of implements for labor or articles for use, or of parts of the same, are to be protected, according to this law, as utility samples, so far as they are to serve the purpose of work or use through a new conformation, arrangement, or contrivance.
Models shall not be considered as new if they have, at the time of the notice given in pursuance of this law, been described in public prints or have been publicly used in the territory of the Empire.
Sec, 2. Notice is to be given at the patent office, in writing, of models for which protection as utility samples is desired.
The notice must state under what designation the model is to be registered and what new form or arrangement is to serve the purpose of work or use.
Every notice is to be accompanied by an imitation or drawing of the model.
The patent office shall make provisions as to the other requirements concerning the notice.
A fee of 15 marks is to be paid for each model of which notice is given at the time of the giving of such notice.
Sec 3. If the notice is given in accordance with the requirements of section 2, the patent office shall order the registration in the list of utility samples.
The registration must mention the name and residence of the party giving the notice, and likewise the time at which the notice is given.
Registrations are to be published at determinate times in the advertiser of the Empire.
Changes relating to the person of the registered party shall, at his request, be mentioned in the list.
Any person shall be at liberty to inspect the list, as well as the notices on the basis of which the registrations have taken place.
Sec. 4. The effect of the registration of a utility sample according to section 1 shall be that the party registered shall have the exclusive right to manufacture imitations of the sample and to offer for sale or to use implements and articles produced by imitation.
The right based upon a subsequent notice, if it is an infringement of the right of a party registered in pursuance of a previous notice, shall not be exercised without the permission of such party.
If the essential contents of the registration have been taken from the description, drawings, models, implements, or contrivances of another person without his permission, the protection of the law shall not be accorded to the injured party.
Sec 5. If a right based upon section 4 infringes upon a patent, notice of which has been given before the notice of the model, the registered party shall not exercise the right without the permission of the owner of the patent.
In like manner, if a right based upon section 4 is infringed by a patent subsequently announced, the right derived from this patent shall not be exercised without the permission of the party registered.
Sec. 6. If the requirements of section 1 are not complied with, any person shall have the right to demand, against the party registered, the forfeiture of his utility model.
In the case provided for in section 4, paragraph 3, the injured party shall be entitled to claim forfeiture.
Sec. 7. The right based upon registration is transferable to the heirs of the party registered, and may, by contract or arrangement, in case of death, be transferred to others, either with or without limitations.
Sec. 8. The time for which protection shall be granted is 3 years; this time shall begin to run on the day following that on which the notice shall have been given. If an additional fee of 60 marks is paid before the expiration of the time, the period for which protection is granted shall be extended 3 years. Mention of the extension shall be made in the list.
If the party registered renounces the protection before the expiration of the period, the registration shall be canceled.
Cancellations of registrations taking place not in consequence of the expiration of the period are to be published at determinate times in the advertiser of the Empire.
Sec. 9. Any person using a utility sample knowingly or through gross carelessness, in violation of sections 4 and 5, shall be bound to indemnify the party injured.[Page 214]
Complaints on account of the right of protection shall become outlawed, as regards any act on which they are based, in three years.
Sec. 10. Any person who shall knowingly make use of a utility sample, in violation of the provisions of sections 4 and 5, shall pay a fine not exceeding 5,000 marks or be imprisoned for a term not exceeding one year.
Prosecutions shall take place only in case application to that effect is made. Such application may be withdrawn.
If the party prosecuted is condemned to receive punishment, the party aggrieved shall, at the same time, be authorized to publish the sentence at the expense of the party convicted. The manner of publication and the period during which it may continue shall be provided for in the sentence.
Sec. 11. Instead of any indemnity provided for in this act, a fine to the amount of 10,000 marks may, at the request of the injured party, be adjudged to him in addition to the penalty. The guilty parties shall be jointly responsible for the payment of this penalty.
An adjudged penalty excludes the validity of any further claim for indemnity.
Sec. 12. In civil suits, in which a claim is entered, on the basis of the provisions of this act, by complaint or plea, the proceedings shall be held and the decision in final instance shall be rendered by the supreme court of the Empire, in pursuance of section 8 of the law introductory to the law for the organization of the judiciary.
Sec. 13. A person not having a residence or an establishment in the territory of the Empire can claim the protection of this law only in case German utility samples are entitled to protection, according to an announcement contained in the journal publishing the laws, in the state in which he resides or his establishment is.
Any person giving notice on the basis of this provision must, at the same time, appoint a representative residing in the Empire. The name and residence of the representative shall be mentioned in the list. The registered representative shall be authorized to represent the party entitled to protection in suits at law concerning the utility sample, and also to institute prosecutions. The place where the representative resides, and in default thereof the place where the patent office is established, shall, in accordance with section 24 of the ordinance with regard to civil suits, be considered as the place where the article of property is.
Sec. 14. The provisions with regard to the procedure of the patent office which are necessary for the execution of this act shall be adopted by an imperial ordinance, with the consent of the Bundesrath.
Sec. 15. This act shall take effect on the 1st day of October, 1891.
In testimony whereof, we have hereunto set our hand and caused our imperial seal to be affixed.