The British Embassy to the Department of State70


His Majesty’s Embassy desire to draw the attention of the State Department to past correspondence between His Majesty’s Embassy and the State Department regarding the desirability of establishing a Commission in the United States to deal with claims in respect of the user by the United States Government of patented and non-patented inventions of British subjects.

In Mr. Kellogg’s last note on this subject dated April 17th, 1926, (File Reference 811.54241/60),71 a request was made that additional information should be supplied in respect of individual claims, and that the State Department should be furnished with some typical cases in which His Majesty’s Government desire to obtain awards for British subjects for the user of inventions. In this connection, His Majesty’s Embassy beg leave to state that, in subsequent communications received from His Majesty’s Principal Secretary of State for Foreign Affairs, to whom the foregoing note was duly communicated, it has been pointed out that the majority of claims on the part of British inventors are in respect of the user of non-patented inventions. For this reason, His Majesty’s Government are primarily desirous that when considering the establishment of the proposed Commission the United States Government should bear in mind the necessity of including in its purview the consideration of claims based on the use of unpatented inventions and claims which may be founded partly on monopoly rights and partly on grounds of equity. His Majesty’s Government are of opinion that the United States Government will the more readily be prepared to meet their wishes in this matter having in view the fact that, as pointed out in His Majesty’s Embassy’s notes of July 22nd, 1925, and of March 17th, 1926,72 United States citizens in Great Britain are entitled to file suits before the Royal Commission on Awards in respect of inventions not covered by patents. Furthermore, under Article I, paragraph 2, of the arrangement concluded between the United States Government and His Majesty’s Government of May 19th, 1927,73 for the disposal of certain pecuniary claims arising out of the recent war, it is laid down that each of the parties to the agreement will [Page 998] use its best endeavours to secure to the nationals of the other the same rights and remedies as may be enjoyed by its own nationals in similar circumstances.

In the last paragraph of the note which His Majesty’s Ambassador addressed to the Secretary of State on May 19th, 1927, attention is also drawn to this provision. Reference is there made to the understanding of His Majesty’s Government, (confirmed in the concluding paragraph of Mr. Kellogg’s note of the same date), that, in view of the assurance contained in paragraph 2 of Article I of the agreement, the Department of State will give active support to a request to Congress for appropriate remedial legislation on behalf of those British nationals whose claims are not covered by the agreement.

In these circumstances, His Majesty’s Government have now instructed His Majesty’s Ambassador to invite the United States Government to give their active support to the enactment of legislation setting up a Commission which will secure to British nationals with claims in respect of non-patented, as well as patented, inventions the same rights and remedies as United States nationals already enjoy in similar circumstances in Great Britain.

It is confidently expected that such reciprocal treatment of the British nationals concerned will be granted retrospectively, at any rate so far as concerns services rendered in the past forming the subject of pending claims, and His Majesty’s Government are anxious, moreover, that it be extended to include all cases arising during the war up to January 10th, 1920, i. e. the date of the Order in Council announcing the official termination of the war, in respect of the user of patented and non-patented inventions by British subjects which have proved or may prove of use to all branches of the United States forces.

Whilst it is not proposed that the contemplated Commission should include in its purview the consideration of the claims of British nationals arising from the user of new patented or non-patented inventions adopted by the United States forces subsequent to the official termination of the war, it is the desire of His Majesty’s Government that the Commission should entertain claims in respect of the past, present and future use of all inventions which the United States Government adopted during the war.

It should be added that the claims under reference are those of individuals and not of His Majesty’s Government. The claimants themselves would consequently present their claims to any Commission which the United States Government may decide to set up, a procedure conforming with that adopted in the case of claims by United States citizens submitted to the British Royal Commission on Awards to Inventors.

As regards claims for the user of patented inventions, His Majesty’s Government appreciate the fact that, as stated in Mr. Kellogg’s note [Page 999] of November 12th, 1925,74 it is already open for British nationals in this category to prefer their claims before the United States Court of Claims in accordance with the provisions of the Act of Congress of June 25th, 1910.75 On the other hand, the large number of claims already pending before that Tribunal renders it inevitable that considerable time must necessarily elapse before the Court can actually hold a hearing and make an award to the individual British patentees who are at liberty to have recourse to it for compensation. For this reason, His Majesty’s Government desire to express the hope that, for the purpose of effecting the speedy settlement of claims in this category, also, the United States Government will agree to include them, as well as those not covered by patents, in the purview of the proposed Commission. In the event of the United States Government being prepared to approve this arrangement, it would also be advantageous were they in suitable cases, to adopt the practice of making a modified admission of the validity and infringement of the patent similar to that set out in paragraph 6 of the first report of the Royal Commission on Awards to Inventors forwarded to the State Department under cover of Mr. Chilton’s note No. 706 of July 22nd, 1925.74.

Similarly, if, after filing his claim, an individual claimant finds that the validity or infringement of his patent is seriously disputed, he should be enabled to abandon his case as based on patent rights where he feels that such rights exist and to continue proceedings before the same tribunal.

In order to facilitate the consideration of this question on the part of the United States Government, there is appended to the present memorandum a list of certain typical instances of claims or complaints in respect of the user both of patented and non-patented inventions now on record in the files of His Majesty’s Admiralty and War Office.74.

Lastly, it should be pointed out that a number of the claims, for the consideration of which it is desired to secure the establishment of a Commission, relate to inventions on the part of British Naval Officers who were forbidden by His Majesty’s Government to enter into negotiations for the war user of their inventions at the time when these inventions were communicated to the United States Government. This procedure was at no time considered to debar the officer concerned from making a claim for an award upon the United States Government subsequent to the user of his invention and His Majesty’s Government have full confidence that claimants in this category will not be denied remuneration for their valuable inventions, from which [Page 1000] the United States Government were enabled to profit by the action of His Majesty’s Government in freely placing them at their disposal at a time of great need.

  1. Handed to the Assistant to the Under Secretary of State by the Commercial Counselor of the British Embassy, Jan. 5, 1928.
  2. Not printed.
  3. Neither printed.
  4. Foreign Relations, 1927, vol. ii, p. 753.
  5. Not printed.
  6. 36 Stat. 851.
  7. Not printed.
  8. Not printed.