Upon receipt of a favorable response from you I shall lose no time in
having the treaty engrossed for signature.
Memorandum upon the draft of a proposed
arrangement between Germany and the United States concerning
patents, designs, and trade-marks.
I have given careful attention to the proposed arrangement the draft
of which has been submitted to the Secretary of State by the Chargé
d’Affaires of Germany, and submit the following remarks concerning
it.
I can see no reason why all the articles except the third should not
be accepted by our Government, nor why they should not be
immediately in force in this country, after ratification, without
the need of further legislation. Their adoption will be of great
advantage to the people of the United States.
Article 3, however, can not be accepted in the present form. The
English translation of it is faulty in that the usual technical
terms of patent law are not employed. The most important changes to
be made in it, to make it express what the original intended to
cover, are these two. For “must precede” in paragraph (a) read shall have
precedence; and for “recency” in paragraph (b) read novelty. The
expression “notice is given” and all reference to “notice” in this
article mean exactly what is meant in this country by the filing of an application, as is shown by
section 20 of the German patent law.
Article 3 therefore provides when protection shall have been sought
for an invention, design, or trade-mark in territory of one
contracting state the applicant or owner of the trade-mark may
within a certain period file an application in the other contracting
state, and the latter application (a) shall
have precedence over all applications made in the latter country,
subsequent to the date of the first application in the country of
origin, and (b) the novelty of the matter of
the application is not to be vitiated by anything that may occur in
the meanwhile.
The necessity of the first of these stipulations arises from section
3 of the German law of April 7, 1891, according to which the party
who first applies for patent is entitled thereto. This stipulation
is intended to put the American inventor, who has made application
for a patent at home, on the same footing as if he had on the same
day filed his application in Germany; and it avoids the difficulty
experienced by Americans under the convention of 1883, in that it
makes the “period of priority” commence from the grant of the patent
instead of from the filing of the application. This is just what the
United States contended for in Madrid, in 1890.
But it happens that the United States can confer no corresponding
privilege on the German inventor, since our law contains no such
provision as that in section 3 of the German law. We do not grant
the patent to the first who applies; but, in case of conflicting
applications for patent, determine who is the prior inventor by a
special proceeding called an “interference.” Hence the necessity for
such a provision does not exist here, and only a minor advantage
results from an earlier date of the application.
A similar stipulation in article 4 of the convention of Paris has
been the source of some trouble in this country, resulting in an
opinion by the Swiss Government, in its capacity of surveillant of
the International Union, that the actual American law was broader
than the convention, and that the implied obligation of article 4
that each state should grant a patent to the applicant who filed his
application in it within six months from his prior application in
his own country was not binding on the United States. And
considering the peculiar laws of Sweden and Switzerland, this
language is used: “No objection has ever been raised on account of
these laws, and it is confidently believed that none will be raised
on account of that of the United States.” (Mr. Claparède to Mr.
Blaine, April 3, 1891.)
If the German Government will be satisfied with the acceptance of
this treaty by the United States subject to the same reservation as
exists (by reason of this opinion of the Swiss Government) regarding
article 4 of the Convention of Paris, we might very well enter into
this arrangement; but it is to be apprehended that it will be
construed as committing this Government to stipulations it could not
fulfil without additional legislation, and of a kind at variance
with the spirit of our patent law. Conventions subject to
reservations are better avoided.
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The need of the other stipulation (b) is based
upon section 2 of the German law, according to which the novelty of
the invention is vitiated in Germany if before the filing of the
application it has been described in the Empire so that others may
use it. But under certain conditions an exception is made of
official publications of patents granted in other countries.
Hitherto the American has been estopped from patenting his invention
in Germany if he had previously secured his patent at home, because
the publication, simultaneous with the grant in this country,
destroyed the novelty of the invention thereafter. The proposed
stipulation removes this barrier and is exactly what we require. We
not only do not permit novelty to be vitiated by six months
publicity, but admit of two years publicity before filing the
application for patent. And in the case of a foreign patentee, if
the invention has not gone into public use in this country, the time
is extended to the whole life of his patent.
The closing paragraph of article 3 makes the limit of delay six
months, which is more liberal than the statute, and specifically
provides that it shall run from the grant of the patent. But while
in respect to inventions it is to run from the time when the first
patent was granted, the draft provides that for designs and
trademarks it shall run from the time of filing the application. The
reason for making this distinction is to be found in the explanatory
remarks that are appended to the draft. The author of these remarks
is in error in saying that America does not recognize “a previous
material examination” in respect to designs. On the contrary design
patents are only granted after the same kind of examination, search
into novelty, inquiry into priority of invention in contested cases,
and all the delay these involve, that obtain in the case of
mechanical inventions. The same kind of procedure obtains respecting
trade-marks; and the reason for fixing the limit of delay to
commence from the date of the grant is no stronger in one case than
in the other.
I subjoin a draft which I would prefer to substitute for article 3.
It is in harmony with our law, and if it varies from existing German
law, does so only as proposed by the original draft in extending the
period of three months conceded in the statute to six months.
It is as follows:
“Any person who shall have received a patent for mechanical invention
or design or shall have registered a trade-mark in one of the
contracting States, shall enjoy in the territory of the other the
right to protection for the same matter, provided he shall deposit
his application for such protection within six months from the date
on which the protection was granted in his own country. Any printed
description or other publicity given to such matter during this
period shall not destroy its novelty.”
It may be remarked that the term “novelty “is applied to trade-marks
in a little different sense from that in which it is applied to
mechanical inventions or designs. For these latter the United States
law, as does the German, prescribes absolute novelty as the
condition of a valid patent. No absolute novelty is demanded in a
trade-mark in either country, but only that the mark shall not have
been previously used by others upon the particular merchandise upon
which protection in its use is sought. In any convention which
treats of patents and trade-marks in the same connection this
distinction should always be kept in mind.
The German law for trade-marks requires, section 20 (2), that an
application for protection by a foreigner must be accompanied by
proof that in his own country the owner of the mark has fulfilled
the conditions on which he may there claim protection for it. The
only proof to be given of this fact is a copy of the certificate of
registration, which in many cases can not be given in the United
States within three months of the application. The law therefore
does not contemplate application for registration in Germany until
after registration in the applicant’s country, and the modification
of article 3 herein suggested would seem to be more strictly in
touch with the spirit of the law than the original draft.
Article 5 contains a provision much like that of article 6 of the
convention of 1883, which appears not to be practically enforced in
the countries of the International Union. Careful consideration of
the trade-mark laws of both Germany and the United States has led to
the conviction that, as between these nations, this provision will
present no serious difficulties, while it offers some decided
advantages to American producers.
I am of opinion that, with the change in article 3 herein suggested,
the proposed convention will be of material benefit to Americans,
and that it should be concluded as early as possible.
The consideration of the proposed convention gives to the United
States an opportunity to submit to the Imperial Government another
proposition closely related to the subjects of patents and
trade-marks. It has several times been brought to the notice of this
Government that the oaths prescribed by Congress in verification of
applications for patent and similar documents are not in consonance
with the German
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law, and
that difficulties arise on that account. The legal oath for this
purpose is taken without much trouble or expense wherever a United
States consular or diplomatic officer can be found, while the forms
required by German law involve more or less delay and expense. But
German courts of law do not recognize our statutory oaths as valid
and binding, and in consequence, while our law aims to minimize the
expense and trouble of preparing applications for patent, a loophole
exists by which its purpose, that merely of establishing the good
faith of the applicant, may be evaded, since no indictment for
perjury would lie in Germany in case of false statements under such
oaths.
If the Imperial Government would consent to a provision whereby oaths
taken in accordance with the law of the United States in such cases
should be held sufficient in Germany to subject the false swearer to
the penalty of perjury, this difficulty would be avoided.
I therefore suggest to submit to the German Government a proposition
which I have embodied in the form of an additional article as
follows:
“Article 8. Oaths to verify applications
for patent or for the registration of trade-marks, or for use in
counection with other proceedings before any executive department of
the Government of either contracting state, duly administered in
accordance with the law of one country by a minister, chargé
d’affaires, or a consular or commercial agent holding a commission
therefrom, within the territory of the other country, shall be
deemed sufficient and binding oaths in the courts of the latter
country, and any false statements or declarations made in papers or
documents so substantiated shall subject the party making them to
the penalties of perjury under the laws of the country within which
they are administered.”
It is scarcely likely that any occasion would ever arise for
enforcing this provision, the mere fact of such an agreement being
enough to accomplish all that is required. It would simply remove an
opportunity that now exists, and possibly is sometimes improved, to
evade the true purpose of our law.
