Mr. Ketteler to Mr. Foster.
Washington, September 15, 1892. (Received September 19.)
Mr. Secretary of State: The United States minister in Berlin, in his note of May 12, 1892, called the attention of the foreign office to that provision of section 2, paragraph 2, of the new German patent law of April 7, 1891, in accordance with which, within three months after the making known of an invention by means of an official description of the patent published abroad, an application for a patent for that invention in Germany is allowed, provided that the application is made by the same authorized person who has applied for it abroad, and provided that reciprocity is guaranteed in that country in which the publication of the invention by means of an official description of the patent has already taken place, which (guarantee) must be attested by the proper announcements in the Reichsgesetzblatt (the Imperial law journal). Mr. Phelps, alluding to the fact that such an announcement had not as yet been made with regard to the United States, suggested the immediate publication of the same in order to secure to his countrymen the advantages of the said provision of the German patent law.
The Secretary of State of the foreign office (for foreign affairs) stated, in reply to the above-mentioned note, that (the subject involved in) the wish which had been expressed would be decided by the negotiations pending between the Empire and the United States for the settlement of the (mutual) protection of patents, and that it would, therefore, be better to refrain from a separate discussion of the question raised by Mr. Phelps.[Page 218]
Mr. Phelps, however, has returned to the subject, in a note of June 30, 1892, and stating that the United States grants German applicants for patents the same, or, rather, still greater privilege than that conveyed by the aforesaid section 2, paragraph 2, of the German patent law, requests on the ground of “fair reciprocity” the immediate issue of a proclamation (announcement) in the Reichsanzeiger (Imperial Advertiser) by which the reciprocity granted by the United States be acknowledged, and the benefit of the German law be granted to Americans in Germany.
In reply to this note, I am now instructed by the Imperial Government, Mr. Secretary of State, to make the following statement:
In the United States the law provides that application may be made for a patent for an invention within two years after it has become public, provided that the applicant makes oath that he is the inventor. This provision conflicts in two respects with the purpose of the German law. It gives the person who has first applied in Germany no advantage by virtue of that application; any other person can, within the said two years, with the same right as the German applicant, make application in America, provided that he makes oath that he is the inventor. Any other person can thus anticipate the German applicant, and render useless the priority which the latter had acquired in Germany.
In the second place, that provision requires the German applicant, even when he adduces proof that his application has been entertained in Germany by the Patent Office, to make oath, all the same, that he is the inventor. The German applicant for a patent is, however, not always able to take that oath, since in Germany the patent is not issued (exclusively) to the inventor, but to any one who has legally come into possession of the invention. The provision of the American law does not, therefore, benefit the applicants who are protected in Germany, to the extent required by the German Empire.
If, notwithstanding, citizens of the United States complain bitterly, as Mr. Phelps asserts, that they are worse treated in Germany than Germans in the United States, it may be said in reply that in the investigation of patents (in the United States), the important right of the “caveat” is reserved to citizens of the United States, and is not granted to German subjects. This involves a difficulty in the protection of patents to the disadvantage of the Germans such as does not exist in Germany to the disadvantage of the Americans. The German law gives Germans no advantage over American citizens.
The Imperial Government cherishes the earnest wish to arrive at an agreement on this subject which shall be satisfactory to the United States, but, nevertheless, thinks it desirable—and the above remarks will demonstrate the correctness of the opinion—that this should be included in an agreement which shall also regulate the other relations in the province of the patent system.
Besides, the examination of the remarks which have been made on the part of the United States Government, in the pending negotiations for the protection of patents, samples, and trade marks, on the propositions made by the Imperial Government, will probably soon be ended, and I shall have the honor, at the proper time, to communicate to you without delay the further proposition of the Imperial Government.