Baron Saurma to Mr. Gresham.

[Translation.]

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 [Page 529] 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Government thinks itself called upon to refer to them again, and to add that if the three months’ limitation were withdrawn from American patent documents in Germany the Americans would obtain an advantage over the Germans which the Germans do not enjoy in America.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.,

Saurma.
[Inclosure.]

Memorandum handed to the German Government by the United States Ambassador.

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 [Page 530] 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.