CHAPTER V.

REPORT OF THE DELEGATES FROM THE UNITED STATES TO THE BRUSSELS CONFERENCE, 1897.

BRUSSELS, December 15, 1897.

SIR: We, the delegates from the United States to the Brussels Conference under the Convention for the Protection of Industrial Property, concluded at Paris March 20, 1883, respectfully report that we have attended and participated in all the meetings of the Conference which began on December 1 and adjourned December 14 to meet again after certain diplomatic correspondence shall have been concluded.

The conference was more largely attended than either of its predecessors held at Rome and Madrid. It was especially remarkable for the active part taken in its proceedings by States not yet adhering to the Union, viz, Austria-Hungary, Germany, Chile, Ecuador, Japan, Mexico, and Turkey.

Of the unionist States Belgium was represented by four delegates and a secretary, Brazil by one delegate, Denmark by one, France by three, Great Britain by three delegates, a technical adviser, and a secretary, Italy by three delegates, the Netherlands by one, Norway by one, Portugal by two, Servia by one, Spain by two, Sweden by one, Switzerland by two, Tunis by two (one of whom was the French minister to Belgium, who also appeared for France), making with ourselves thirty-one delegates.

Each country had but one vote, but the advantage of a number of delegates in committee and other work, often going on simultaneously, was apparent.

The nonunionist States were represented as follows: Austria-Hungary by two delegates, Germany by three, Chile by one, Ecuador by two, Japan by three, Mexico by one, Turkey by two.

The International Bureau was represented by M. Henri Morel, the director.

1. PROPOSITION OF THE UNITED STATES TO AMEND ARTICLE 2 IN THE INTEREST OF RECIPROCITY AND SOLUTIONS PROPOSED BY OTHER MEMBERS OF THE CONFERENCE.

We learned at the very opening of the Conference that most, if not all, of the other States of the Union had been instructed to oppose the proposition of the United States to add a paragraph to article 2 allowing reciprocity as to fees, and also as to the subject-matter of patents. We therefore asked that the proposition be sent to the committee on patents, where there seemed to be a better opportunity of proper consideration than in the open sessions of the Conference. We found unanimous opposition to the proposition in the committee, which could not be removed by argument. The statement of "motives" given in

56

support of the additional paragraph-which show the lack of reciprocity in the matter of patent grants between the United States and the other nations of the Union-did not carry weight with the other delegates, because, as they said, there were other solutions of the difficulties pointed out in the "motives" which were not inconsistent with their understanding of the principle laid down in article 2, viz, that citizens of any State of the Union shall enjoy in every other State the same rights as citizens of the latter.

The solutions referred to were the requirements from both citizens and aliens in case of an application abroad for a patent for an invention prior to an application for a patent therefor in the United States.

(a) Of the payment of the same fees in the United States as required in the country (or one of the countries to be designated) where previously applied for.

(b) Of a limitation of the patent granted in the United States in such case to the same subject-matter as protected by patent in the country (or one of the countries to be designated) where previously applied fore. g., if the laws of said country allow the grant of a patent for a process only and not for the product of the process-that then no patent shall be granted in the United States for the product, but only for the process. (e) Of a condition in the patent granted in the United States in such case that it shall become null in case the invention is not worked in the United States or licenses are not granted thereunder as required by the laws of the country (or one of the countries to be designated) where previously applied for.

It was pointed out that it is not likely that our citizens will first apply for patents abroad, whereas it is most probable that those who reside in those States which enforce the laws against our citizens to which we object will first apply in such countries and come under the limitations imposed in the interests of reciprocity.

Such provisions are not new in our law. An example is found in the patent act approved March 3, 1897, which amended section 4887 of the Revised Statutes so as to limit the grant of patents to both citizens and aliens for inventions for which applications had been previously made in other countries. This statute was not objected to in the Conference because of any claim that it is not in full accord with article 3 of the Convention.

The committee, after the discussion which brought out the suggestions for the solution of our objection to the Convention because not reciprocal toward us, reported that

The committee finds that the proposition of the Government of the United States is inspired by ideas which are in formal opposition to the terms of article 2 and the general spirit of the Convention. Under these circumstances it has rejected the proposition with the unanimity of its members, except the United States.

We immediately replied, in substance, that the United States has always maintained the principle that its national legislation should be as liberal as possible in its provisions concerning patents for inventions; but that a number of countries have, on the contrary, maintained, or introduced into their laws since the Convention of 1883, serious restrictions to the detriment of American citizens, which the Convention does not sufficiently minimize; that its results are reciprocally unequal, and sometimes wholly unjust to the individual members of the Union.

We further said that the United States has sought a means of remedying this inequality by a modification of the Convention itself,

and that if the Conference, by adopting the views of the committee, should not accept the proposition of the United States, it would probably be obliged to introduce restrictions into its legislation in order to preserve, as far as possible, its interests which are now sacrificed. No criticism was attempted upon the stand taken by us.

2. PROPOSITION OF THE UNITED STATES TO AMEND ARTICLE 4 SO AS TO REMOVE ANY QUESTION AS TO THE EFFECT OF AMENDMENT OF APPLICATION..

The United States supplemented the propositions of the International Bureau of Berne to amend and add to article 4 by a proposition to add an explanatory clause in regard to amendments made in the application for a patent in the United States, because of the requirements of the Patent Office.

All the proposed amendments of article 4 were examined with care and the evident intent to give the inventor a free period of time before the applications succeeding the first application for a patent during which he might do those things-such as a publication of a description of the invention, its working, or its introduction, which (if happening before the application) would render a patent in most of the European countries of the Union invalid.

The question has been asked by our people: "What is the effect of the words by a third party' (par un tiers) in article 4, and also what is the effect of the amendment of the application in our Patent Office on an application made under the Convention?"

The committee on patents of the Conference recommended that the words "par un tiers" be suppressed, which recommendation was adopted by the Conference.

The committee further reported, as follows:

The subcommittee, after having established by the explanation of the "motives" that the proposition of the United States applies only to the exercise of the right of priority, is of the opinion that the proposition is unnecessary, since it is incontestable that the restrictions given to the original description during the preliminary examination can not prejudice the right of priority as established by article 4.

The further statements made on the minutes of the Conference seem to settle any doubt as to the construction to be given to article 4. It seems clear, therefore, that with the suppression of the words "par un tiers," if agreed to by the contracting States and the interpretation given to the article by the Conference, an American inventor can apply for a patent for his invention in the United States and within the period of seven months thereafter can make a similar application in any of the other States of the Union and obtain a valid patent, notwithstanding the absence of absolute novelty as to the public before and at the time of the application. In other words, that an applicant in the United States for a patent for an invention not theretofore described or made known so as to be unpatentable in other countries of the Union may go into such country and offer his invention for sale like any other commodity during a period of seven months.

The proposition of the International Bureau to amend article 4 so that each State of the Union should fix for the application for a patent first deposited with it a date of commencement of the period of delay of priority at a point between the date of the filing of the application and the issue of the patent was withdrawn before article 4 was considered.

3. PROPOSITIONS OF OTHER STATES.

It is to be regretted that so few of the States of the Union complied with the resolution, adopted on the motion of the delegates from the United States at the Madrid Conference, that propositions for the amendment of the Convention should be presented in advance of the Conference. On account of such neglect some of the delegates were without instructions on important questions which were raised, and instead of the work being finished at the conference important parts were postponed for diplomatic correspondence. Excuses were made that the Conference was called in advance of the time originally set (May 1, 1898), at the earnest request of Spain, which desired an interpretation of the Madrid agreement of April 14, 1891, relating to false indications of origin. This interpretation, it was stated, would have some bearing upon a litigation then in progress in France over wine, alleged to bear a false indication of origin while in transit through France to England and Belgium.

The International Bureau presented in advance of the Conference a very exhaustive series of propositions covering the whole ground of the convention as well as of the agreements of Madrid. These propositions were made after long observation of the workings of the Con vention by the officials of the International Bureau, and also in view of the discussion which the Convention had provoked in many countries, and at a congress concerning the protection of industrial property held at Vienna in October, 1897. A copy of such propositions is sent herewith.

The Netherlands proposed to add to article 4 the words "regularly made," so that the period of priority for designs, industrial models, and trade-marks should only run from a deposit regularly made. It further proposed to exclude from trade-marks entitled to registration "proper or commercial names which the depositor is not entitled to use," meaning the names of strangers adopted without authority. (Art. 6, par. 4.)

It further objected to the amendment of article 10 proposed by the International Bureau as too broad.

Belgium also objected to the new article 4 bis proposed by the International Bureau and offered a substitute.

The propositions of the International Bureau, of the Netherlands, of Belgium, and of our Government were the only ones relating to the Convention of 1883 submitted prior to the Conference.

Spain proposed amendments to both of the agreements of Madrid and the Netherlands to the agreement for the international registration of marks.

Propositions of the French delegation were presented on December 1. They relate to persons assimilated to citizens of contracting States (article 3), and also to "unfair competition in trade"-a subject not provided for in the Convention. The proposition of the British delegation to limit the trade-marks entitled to registration under the Convention (article 6) was also presented on the same day.

Immediately after the opening of the Conference the Netherlands modified their proposition in regard to article 10 of the Convention, and Germany, Italy, and Sweden severally proposed modifications of article 4 bis, proposed by the International Bureau. Later Belgium, Hungary, and Servia made propositions. We transmit copies of the

various propositions herewith. It will be observed that the propositions of the International Bureau as originally printed were modified in the "Tableau Général des Propositions."

After considering the various propositions the Conference adopted a first final protocol relating to the Convention of 1883, and those States which had adhered to the Madrid agreement of 1891 in relation to international registration of trade-marks adopted what is called a second final protocol in relation thereto.

4. FIRST FINAL PROTOCOL ADOPTED BY THE CONFERENCE.

The amendments to the Convention adopted, and which now go to the various States of the Union for ratification, are annexed hereto as Appendix A.

The amendments and reasons therefor may be briefly stated as follows: Article 3.-The amendment to article 3 provides that citizens of a country not forming a part of the Union may be entitled to the advantages of the Convention to the same extent as the citizens of any country which is a member of the Union, if they are either domiciled in the latter country or maintain "effective and serious" industrial or commercial establishments therein. This amendment was intended to prevent the advantages of the Convention going to citizens of nonadhering countries who might maintain very small or trivial establishments as a pretense for obtaining such advantages.

Article 4.-The amendment to article 4 by striking out the words "by a third party" (par un tiers) removes a possible difficulty in the application of the article which might arise from an interpretation that the permitted disclosure, working, or importation could only be made by a third party, thus excluding the inventor himself from the right to publish, exploit, or introduce his invention, which right is the very thing desired by the United States, as before stated.

Article 4 bis.-A new article, entitled article 4 bis, provides for the mutual independence of patents applied for in the different States of the Union by persons entitled to the rights granted by the convention. We supported this proposed new article, as instructed by you.

In order to avoid any confusion in regard to the interpretation hereafter to be given to the second paragraph, which reads: "This provision shall apply to all patents existing at the time of its entering into force," we called attention to it in the regular meeting and found that it was the unanimous sense of the Conference that the paragraph was not applicable to existing United States patents, but only to those patents whose terms might be shortened by the laws of those States of the Union in which provision is made for a shortening of the term on the lapsing of patents for the same inventions in other States.

An existing United States patent can not be affected by what may take place in regard to a patent for the same invention abroad. The limitation of the terms of the United States patents imposed by section 4887 was a determination at the moment of the grant of the patent of its term, and therefore the duration of the patent is unaffected by the subsequent expiration of a foreign patent for the same invention by reason of nonpayment of taxes or nonworking.

While there exist no patents in the United States which can be affected by article 4 bis, it may still affect advantageously the foreign patents of American citizens, and is, therefore, a provision in the interest of our people.