Baron Saurma to Mr.
Gresham.
[Translation.]
Imperial German Embassy,
Washington, April 3, 1895.
(Received April 5.)
Mr. Secretary of State: In accordance with
instructions which I have received, I have the honor to call your
excellency’s attention to the following subject:
In a memorandum handed to the Imperial Government by the United
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States ambassador at Berlin
October 19, 1894, a copy of which is inclosed, the wish is expressed to
conclude a special agreement with the Imperial Government to the effect
that American citizens be granted the benefit of certain provisions of
the German patent law of April 7, 1891, which are not in themselves
applicable to aliens.
The opinion repeatedly expressed therein, that the American patent
legislation already grants to German inventors that which is asked of
Germany by America, rests, in the judgment of the Imperial Government,
upon a not quite correct view of the legal situation. The points to be
considered in the matter were communicated to the then United States
Secretary of State, Mr. J. W. Foster, in the German note of September
15, 1892. As they were mentioned in the memorandum of October 19, 1894,
without a reply being made to them, the Imperial Government thinks
itself called upon to refer to them again, and to add that if the three
months’ limitation were withdrawn from American patent documents in
Germany the Americans would obtain an advantage over the Germans which
the Germans do not enjoy in America.
The draft of an agreement for the conclusion of a patent, sample, and
trade-mark convention between the United States and Germany, transmitted
to your excellency with the German note of November 10, 1893, which,
according to the kind note of Acting Secretary of State Uhl of November
30, 1893, was handed to the proper authorities for examination and
approbation, contains, in article 3, a provision which, in the opinion
of the Imperial Government, is calculated to satisfy fully the wishes of
the United States Government. The Imperial Government cherishes the
opinion that by the speedy conclusion of a convention upon the basis of
the above-mentioned draft the matter would be settled in the most
satisfactory manner, and in that most conducive to the interests of both
parties.
With the request that I may soon be favored with a reply, I avail,
etc.,
[Inclosure.]
Memorandum handed to the German Government by the
United States Ambassador.
Embassy of the United States,
Berlin, October 19, 1894.
An American patent may be applied for by a foreign inventor whose
invention has been patented abroad at any time during the life of
his foreign patent unless his invention has been introduced into
public use in the United States for more than two years prior to the
application, the American patent, if granted, to expire the same
time as the foreign patent.
All that can be secured for an American inventor under the German law
is the right to obtain a patent in Germany if the application be
made within three months from the date of the publication of the
American patent. This benefit of the German law extends only to
those States which warrant reciprocity, according to a publication
in the Reichsgesetzblatt. The benefit, then, is not granted until
the publication of a notification that such reciprocity exists.
Now, under American law the German inventor has more than the German
law would give an American inventor if it were declared that
reciprocity exists; for a German inventor may apply in America for a
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patent for his
invention at any time during the life of his German patent unless he
has permitted his invention to be in public use in the United States
for more than two years prior to his application, so that he has in
any event two years in which to apply, while the American inventor
could only get a patent in Germany by applying within three months
from the time of getting his American patent.
The claim that reciprocity does not exist is, according to Baron von
Ketteler’s note of September 15, 1892, based on two grounds.
- First. That to obtain a patent in the United States the German
applicant must swear that he is the inventor, while in Germany
patent is granted to the inventor or anyone who has legally come
into possession of the invention.
- Second. That the right of caveat is confined to American
citizens and not granted to German subjects.
When this subject was previously under discussion here it was
suggested by the Imperial Government that it be left for adjustment
under the proposed new treaty between the United States and Germany
in regard to patents and trade marks. That treaty has not yet been
agreed upon, and my instructions are to endeavor to reach an
understanding with the German Government separately and apart from
that treaty (which involves other things) whereby American citizens
may enjoy the benefit of the German law before referred to.
