File No. 811.542/41
[Inclosure]
The Commissioner of
Patents to the Secretary of
State
Department of the Interior,
United States Patent Office,
Washington,
December 13, 1916.
Sir: I have the honor to acknowledge the
receipt of your letter of December 6, 1916, addressed to the
Secretary of the Interior and enclosing a copy of a note from the
German Ambassador with respect to the extension of the period of
priority fixed by the International Convention for the Protection of
Industrial Property.
Article 4 of that Convention reads in part as follows:
- (a)
- Any person who shall have duly filed an application for a
patent, utility model, industrial design or model, or
trade-mark, in one of the contracting countries or the
successor or assignee of such person shall enjoy, for the
purpose of filing application in the other countries, and
subject to the rights of third parties, a right of priority
during the periods hereinafter specified.
- (c)
- The periods of priority above referred to shall be twelve
months for patents and models of utility, and four months
for industrial designs and models, as also for
trademarks.
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Section 4887 of the Revised Statutes of the United States, which was
passed to carry into effect the provisions of Article 4 of the
Convention, 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 4886 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 privilege 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 4886 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 Act of Congress of August 17, 1916, reads as follows:
An act to extend temporarily the time for filing applications
and fees and taking action in the United States Patent
Office in favor of nations granting reciprocal rights to
United States citizens.
Be it enacted by the Senate and House of Representatives of
the United States of America in Congress assembled, That any
applicant for letters patent or for the registration of any
trade-mark, print, or label, being within the provisions of
this act, if unable on account of the existing and
continuing state of war to file any application or pay any
official fee or take any required action within the period
now limited by law, shall be granted an extension of nine
months beyond the expiration of said period.
Sec. 2. That the provisions of this act shall be limited to
citizens or subjects of countries which extend substantially
similar privileges to the citizens of the United States, and
no extension shall be granted under this act to the citizens
or subjects of any country while said country is at war with
the United States.
Sec. 3. That this act shall be operative to relieve from
default under existing law occurring since August first,
nineteen hundred and fourteen, and before the first day of
January, nineteen hundred and eighteen, and all applications
and letters patent and registrations in the filing or
prosecution whereof default has occurred for which this act
grants relief shall have the same force and effect as if
said default had not occurred.
The ordinance of the German Government of May 7, 1915, provides that
the priority time limits of Article 4 of the Convention for the
Protection of Industrial Property are extended to the expiration of
six months after the termination of the war, but at the latest to
June 30, 1916, and provides further:
These provisions shall apply in favor of subjects of foreign
countries when and to the same extent as the priority time
limits are prolonged in such countries in favor of German
subjects, as shall be certified by proclamation published in
the Reichs-Gesetzblatt.
This ordinance was modified by the ordinance of April 8, 1916, by
omitting the provision limiting the extension to June 30, 1916.
Upon the passage of the Act of August 17, 1916, I considered that
this country came within the provision above quoted of the German
ordinance of May 7, 1915, and did not deem it necessary to await
notice that it had been so certified by proclamation published in
the Reichs-Gesetzblatt in order to give
German citizens the benefit of the Act in accordance with the
provisions of Section 2 thereof.
In the cases of Jens Dedichen and Rudolf Haugwitz, subjects of the
German Emperor, in which the application was not filed in this
country within twelve months from the filing of the German
application, the period fixed by the convention and by Section 4887
of the Revised Statutes, but was filed within nine months from the
expiration of that period, I held that the German Government having
granted substantially similar privileges to citizens of the United
States, the applicants were entitled, in view of the showing made as
to the cause of the failure to file within that period, to the
benefit of the Act of August 17, 1916, and that therefore a patent
in this country would not be barred by the granting of a German
patent.
I have referred only to the question of extending the “period of
priority” for the reason that in the proclamation by the German
Government October 21, 1914, it is stated that the United States
grants to citizens of the German Empire the same facilities as are
provided for in the Ordinance of September 10, 1914, which relates
to the extension of the time for the payment of taxes and for the
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taking of any action
with regard to the Patent Office, the nonobservance of which entails
a loss of rights. In a number of cases I have accepted fees paid in
applications filed by German subjects after the expiration of the
period “now fixed by law,” for their payment.
The Act of August 17, 1916, is a remedial one and in my opinion
should be liberally construed. I have therefore held that it is a
sufficient compliance with its requirement as to reciprocal rights
or privileges if the Government, of which the applicant is a
citizen, grants to citizens of the country relief from forfeiture
arising under its own laws without specific reference to the form in
which relief is granted.
If it can be arranged, I should be pleased to have a conference with
the German Ambassador on this subject.
Respectfully,
