Mr. Wharton to Mr. von Holleben.

Sir: Referring to Mr. von Munini’s note of November 3, 1891, submitting a proposed arrangement between the United States and Germany for the reciprocal protection of patents and trade-marks, I have now the honor to inclose for your information a copy of a report from F. A. Seely, Chief Examiner of the United States Patent Office, which has been forwarded to the Department with a letter from the Acting Secretary of the Interior, of the 2d instant, under his approval. It will be observed that the Acting Secretary agrees to the proposed treaty with the exception of article 3, and explains why that can not be accepted by this Government in its present form. In lieu of it he offers a substitute. A proposition for an additional article is also made with explanations as to the necessity for it.

For your further information I inclose a copy of the treaty* as proposed and will thank you for any information that you may be able to [Page 215] impart as to its acceptance in its present form by the Government of Germany.

Upon receipt of a favorable response from you I shall lose no time in having the treaty engrossed for signature.

Accept, sir, etc.,

William F. Wharton,
Acting Secretary.

Memorandum upon the draft of a proposed arrangement between Germany and the United States concerning patents, designs, and trade-marks.

I have given careful attention to the proposed arrangement the draft of which has been submitted to the Secretary of State by the Chargé d’Affaires of Germany, and submit the following remarks concerning it.

I can see no reason why all the articles except the third should not be accepted by our Government, nor why they should not be immediately in force in this country, after ratification, without the need of further legislation. Their adoption will be of great advantage to the people of the United States.

Article 3, however, can not be accepted in the present form. The English translation of it is faulty in that the usual technical terms of patent law are not employed. The most important changes to be made in it, to make it express what the original intended to cover, are these two. For “must precede” in paragraph (a) read shall have precedence; and for “recency” in paragraph (b) read novelty. The expression “notice is given” and all reference to “notice” in this article mean exactly what is meant in this country by the filing of an application, as is shown by section 20 of the German patent law.

Article 3 therefore provides when protection shall have been sought for an invention, design, or trade-mark in territory of one contracting state the applicant or owner of the trade-mark may within a certain period file an application in the other contracting state, and the latter application (a) shall have precedence over all applications made in the latter country, subsequent to the date of the first application in the country of origin, and (b) the novelty of the matter of the application is not to be vitiated by anything that may occur in the meanwhile.

The necessity of the first of these stipulations arises from section 3 of the German law of April 7, 1891, according to which the party who first applies for patent is entitled thereto. This stipulation is intended to put the American inventor, who has made application for a patent at home, on the same footing as if he had on the same day filed his application in Germany; and it avoids the difficulty experienced by Americans under the convention of 1883, in that it makes the “period of priority” commence from the grant of the patent instead of from the filing of the application. This is just what the United States contended for in Madrid, in 1890.

But it happens that the United States can confer no corresponding privilege on the German inventor, since our law contains no such provision as that in section 3 of the German law. We do not grant the patent to the first who applies; but, in case of conflicting applications for patent, determine who is the prior inventor by a special proceeding called an “interference.” Hence the necessity for such a provision does not exist here, and only a minor advantage results from an earlier date of the application.

A similar stipulation in article 4 of the convention of Paris has been the source of some trouble in this country, resulting in an opinion by the Swiss Government, in its capacity of surveillant of the International Union, that the actual American law was broader than the convention, and that the implied obligation of article 4 that each state should grant a patent to the applicant who filed his application in it within six months from his prior application in his own country was not binding on the United States. And considering the peculiar laws of Sweden and Switzerland, this language is used: “No objection has ever been raised on account of these laws, and it is confidently believed that none will be raised on account of that of the United States.” (Mr. Claparède to Mr. Blaine, April 3, 1891.)

If the German Government will be satisfied with the acceptance of this treaty by the United States subject to the same reservation as exists (by reason of this opinion of the Swiss Government) regarding article 4 of the Convention of Paris, we might very well enter into this arrangement; but it is to be apprehended that it will be construed as committing this Government to stipulations it could not fulfil without additional legislation, and of a kind at variance with the spirit of our patent law. Conventions subject to reservations are better avoided.

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The need of the other stipulation (b) is based upon section 2 of the German law, according to which the novelty of the invention is vitiated in Germany if before the filing of the application it has been described in the Empire so that others may use it. But under certain conditions an exception is made of official publications of patents granted in other countries.

Hitherto the American has been estopped from patenting his invention in Germany if he had previously secured his patent at home, because the publication, simultaneous with the grant in this country, destroyed the novelty of the invention thereafter. The proposed stipulation removes this barrier and is exactly what we require. We not only do not permit novelty to be vitiated by six months publicity, but admit of two years publicity before filing the application for patent. And in the case of a foreign patentee, if the invention has not gone into public use in this country, the time is extended to the whole life of his patent.

The closing paragraph of article 3 makes the limit of delay six months, which is more liberal than the statute, and specifically provides that it shall run from the grant of the patent. But while in respect to inventions it is to run from the time when the first patent was granted, the draft provides that for designs and trademarks it shall run from the time of filing the application. The reason for making this distinction is to be found in the explanatory remarks that are appended to the draft. The author of these remarks is in error in saying that America does not recognize “a previous material examination” in respect to designs. On the contrary design patents are only granted after the same kind of examination, search into novelty, inquiry into priority of invention in contested cases, and all the delay these involve, that obtain in the case of mechanical inventions. The same kind of procedure obtains respecting trade-marks; and the reason for fixing the limit of delay to commence from the date of the grant is no stronger in one case than in the other.

I subjoin a draft which I would prefer to substitute for article 3. It is in harmony with our law, and if it varies from existing German law, does so only as proposed by the original draft in extending the period of three months conceded in the statute to six months.

It is as follows:

“Any person who shall have received a patent for mechanical invention or design or shall have registered a trade-mark in one of the contracting States, shall enjoy in the territory of the other the right to protection for the same matter, provided he shall deposit his application for such protection within six months from the date on which the protection was granted in his own country. Any printed description or other publicity given to such matter during this period shall not destroy its novelty.”

It may be remarked that the term “novelty “is applied to trade-marks in a little different sense from that in which it is applied to mechanical inventions or designs. For these latter the United States law, as does the German, prescribes absolute novelty as the condition of a valid patent. No absolute novelty is demanded in a trade-mark in either country, but only that the mark shall not have been previously used by others upon the particular merchandise upon which protection in its use is sought. In any convention which treats of patents and trade-marks in the same connection this distinction should always be kept in mind.

The German law for trade-marks requires, section 20 (2), that an application for protection by a foreigner must be accompanied by proof that in his own country the owner of the mark has fulfilled the conditions on which he may there claim protection for it. The only proof to be given of this fact is a copy of the certificate of registration, which in many cases can not be given in the United States within three months of the application. The law therefore does not contemplate application for registration in Germany until after registration in the applicant’s country, and the modification of article 3 herein suggested would seem to be more strictly in touch with the spirit of the law than the original draft.

Article 5 contains a provision much like that of article 6 of the convention of 1883, which appears not to be practically enforced in the countries of the International Union. Careful consideration of the trade-mark laws of both Germany and the United States has led to the conviction that, as between these nations, this provision will present no serious difficulties, while it offers some decided advantages to American producers.

I am of opinion that, with the change in article 3 herein suggested, the proposed convention will be of material benefit to Americans, and that it should be concluded as early as possible.

The consideration of the proposed convention gives to the United States an opportunity to submit to the Imperial Government another proposition closely related to the subjects of patents and trade-marks. It has several times been brought to the notice of this Government that the oaths prescribed by Congress in verification of applications for patent and similar documents are not in consonance with the German [Page 217] law, and that difficulties arise on that account. The legal oath for this purpose is taken without much trouble or expense wherever a United States consular or diplomatic officer can be found, while the forms required by German law involve more or less delay and expense. But German courts of law do not recognize our statutory oaths as valid and binding, and in consequence, while our law aims to minimize the expense and trouble of preparing applications for patent, a loophole exists by which its purpose, that merely of establishing the good faith of the applicant, may be evaded, since no indictment for perjury would lie in Germany in case of false statements under such oaths.

If the Imperial Government would consent to a provision whereby oaths taken in accordance with the law of the United States in such cases should be held sufficient in Germany to subject the false swearer to the penalty of perjury, this difficulty would be avoided.

I therefore suggest to submit to the German Government a proposition which I have embodied in the form of an additional article as follows:

Article 8. Oaths to verify applications for patent or for the registration of trade-marks, or for use in counection with other proceedings before any executive department of the Government of either contracting state, duly administered in accordance with the law of one country by a minister, chargé d’affaires, or a consular or commercial agent holding a commission therefrom, within the territory of the other country, shall be deemed sufficient and binding oaths in the courts of the latter country, and any false statements or declarations made in papers or documents so substantiated shall subject the party making them to the penalties of perjury under the laws of the country within which they are administered.”

It is scarcely likely that any occasion would ever arise for enforcing this provision, the mere fact of such an agreement being enough to accomplish all that is required. It would simply remove an opportunity that now exists, and possibly is sometimes improved, to evade the true purpose of our law.

  1. See page 200. The treaties differ only in phraseology and in the changes to article 3 recommended in the report of Mr. Seely.