Papers Relating to the Foreign Relations of the United States, With the Annual Message of the President Transmitted to Congress December 3, 1907, (In two parts), Part II
File No. 4968/3–4.
The Acting Secretary of State to Minister Gummeré.
Washington, April 9, 1907.
Sir: Referring to your dispatch No. 168, of February 16, 1907, transmitting correspondence with the British minister concerning the mutual protection of British and American patents in Morocco, [Page 872] I inclose for your information a copy of a letter from the Secretary of the Interior, accompanied by a copy of one from the Commissioner of Patents, expressing approval of the agreement suggested.
You will make the exchange of notes necessary to effect the proposed arrangement.
I am, etc.,
The Secretary of the Interior to the Secretary of State.
Washington, April 4, 1907.
Sir: Your letter of the 9th ultimo has been received, transmitting a copy of a dispatch from the American legation at Tangier, Morocco, suggesting the utility of the extension, by our respective consul authorities in Morocco, to English patents of invention of the same protection which is now accorded to trade-marks, on condition that the same protection will be assured by the British consular tribunals in Morocco to American patents of inventions which have been duly registered in Great Britain in conformity with “Patents, designs, and trade-mark acts, 1883–1888.” You request to be furnished with an expression of views on the subject.
In response thereto I have the honor to transmit herewith a copy of a letter from the Commissioner of Patents, to whom the matter was referred, reporting that under existing law and by the terms of article 2 of the convention of Paris of March 20, 1883, the protection suggested has already been effectuated. However, he considers the arrangement proposed to be a desirable one, and recommends that the same be entered into, as the rights now possessed by American citizens would be rendered more clear, in which I concur.
Very respectfully,
The Commissioner of Patents to the Secretary of the Interior.
Washington, April 3, 1907.
Sir: I have received by your reference of the 12th ultimo for consideration and report a letter of the Acting Secretary of State, dated March 9, transmitting correspondence between the American and British ministers at Tangier, Morocco, in regard to the protection of patents there, and requesting an expression of views in relation to this matter.
The letter of the American minister to the Secretary of State, dated February 16, reports receipt of a letter from the British minister at Tangier, suggesting the utility of the extension by our respective consular authorities in Morocco to patents of invention of the same protection which is now accorded to trade-marks, and he forwards copy of a letter from the British minister at Tangier, Gerard Lowther, dated February 4, 1907, in which the British minister informs him that “protection will be accorded by the British consular tribunals in Morocco to American patents of inventions which have been duly registered in Great Britain in conformity with Patents, designs, and trade-mark acts of 1883–1888,’ on condition that protection under the same conditions will be assured in Morocco by the American authorities to English patents of invention.”
The letter of the American minister, transmitting this proposition to our Department of State, asks for instructions in respect to this matter.
The effective and governing consideration here is the limitation among all American patents for inventions involved in the language “which have been duly registered in Great Britain in conformity with ‘Patents, designs, and trademark acts, 1883–1888,’ since such condition is required to be assured reciprocally by the American authorities to English patents of invention.” It becomes important, then, to note the provisions of the British “Patents, designs, and [Page 873] trade-marks acts, 1883–1888.” By reference to Terrell on Patents, fourth edition, London, 1906, page 437, section 103, I find, under the heading “International and colonial arrangements,” that—
“If Her Majesty is pleased to make any arrangement with the government or governments of any foreign state or states for mutual protection of inventions, designs, and trade-marks, or any of them, then any person who has applied for protection for any invention, design, or trade-mark in any such state shall be entitled to a patent for his invention, or to registration of his design or trade-mark (as the case many be) under this act, in priority to other applicants; and such patent or registration shall have the same date as the (date of protection obtained) date of the application in such foreign state.
“Provided that his application is made, in the case of a patent within (seven) twelve months, and in case of a design or trade-mark within four months, from his applying for protection in the foreign state with which the arrangement is in force.”
The evident purpose of this statutory provision is to effectuate the terms of article 2 of the convention of Paris of March 20, 1883, which is as follows:
“The subjects or citizens of each of the contracting states shall, in all the other states of the union, as regards patents, industrial designs or models, trade-marks and trade names, enjoy the advantages that their respective laws now grant, or shall hereafter grant, to their own subjects or citizens.
“Consequently, they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights, provided they observe the formalities and conditions imposed on subjects or citizens by the internal legislation of each state.”
To this convention of Paris both Great Britain and the United States are parties. The provision of our Revised Statutes by which the treaty of Paris is effectuated and intended to provide the equivalent legislation to that of the British patent act above mentioned is found in section 4887, which reads as follows:
“No person otherwise entitled thereto shall be debarred from receiving a patent for his invention or discovery, nor shall any patent be declared invalid by reason of its having been first patented or caused to be patented by the inventor or his legal representatives or assigns in a foreign country, unless the application for said foreign patent was filed more than twelve months, in cases within the provisions of section forty-eight hundred and eighty-six of the Revised Statutes, and four months in cases of designs, prior to the filing of the application in this country, in which case no patent shall be granted in this country.
“An application for patent for an invention or discovery or for a design filed in this country by any person who has previously regularly filed an application for a patent for the same invention, discovery, or design in a foreign country which, by treaty, convention, or law, affords similar privileges to citizens of the United States shall have the same force and effect as the same application would have if filed in this country on the date on which the application for patent for the same invention, discovery, or design was first filed in such foreign country, provided the application in this country is filed within twelve months in cases within the provisions of section forty-eight hundred and eighty-six of the Revised Statutes, and within four months in cases of designs, from the earliest date on which any such foreign application was filed. But no patent shall be granted on an application for patent for an invention or discovery or a design which had been patented or described in a printed publication in this or any foreign country more than two years before the date of the actual filing of the application in this country, or which had been in public use or on sale in this country for more than two years prior to such filing.”
The two statutes mentioned, the British and the American, are the interior legislation intended to effectuate the provisions of article 2 of the convention of Paris, above quoted, and since such legislation became effective we find that the rights accorded to their own natives are accorded by the provisions of the statutes mentioned to the citizens of the other country, as between Great Britain and the United States.
It then becomes possible under this legislation of the two countries for the citizens of each to obtain in the other “by action taken within the times provided by the convention of Paris “patents covering inventions, so that if such rights are exercised we shall see American citizens taking out British patents and British subjects taking out American patents and being treated in this regard like natives in each country. Thereupon it is to be noted that the laws [Page 874] of the United States create no distinction in the enjoyment of rights of patent after issuance, whether such right is in the hands of an alien or a native, and the British subject having done this stands clothed with power not to be distinguished by the law from that of an American citizen holding a corresponding American patent.
The present proposition, then, amounts simply to this, that the American inventor who has obtained a British patent may obtain for his British patent that protection in the British consular courts of Morocco which those same courts give to a British subject in the same case, and the suggestion is now made that the American consular courts in Morocco shall give to the British inventor who shall have obtained an American patent the same protection as is given to an American citizen.
Already, and without any convention upon this subject, we are bound, as I believe, by article 2 of the convention of Paris of March 20, 1883, to do this very thing, and therefore I have to advise that we already give the right which it is proposed now to give in explicit terms by the proposed convention. Nevertheless, since this comes in a roundabout way, by construction of the existing laws, I believe it would be well to effectuate this protection by an explicit convention, such as is here proposed, and I believe that the project is a good one and that the assent of the American Government should be given to the proposal made by the British minister above stated.
I see no new or considerable advantage accruing to the American citizen beyond that which he is already entitled to enjoy under the existing convention and statute, but such rights as he possesses would be by the proposed arrangement made more clear, and consequently I consider the arrangement to be a desirable one, and I accordingly recommend that such arrangement be made.
The papers received by your reference are returned herewith.
Very respectfully,