The draft convention having been gone over, article by article, a new text was prepared with newly numbered articles.

Article 5 of the new draft contained four paragraphs, the first of which, corresponding in position to the first paragraph of the existing article 6, was as follows: "Toute marque de fabrique ou de commerce valablement déposée dans le pays d'origine sera admise telle quelle au dépôt dans tous les autres Etats de l'Union" (p. 138).

(Every trade-mark validly registered in the country of origin shall be admitted, such as it is, to registration in all the other States of the Union.)

The minutes say:

"Mr. Jagerschmidt remarked that the text of the first paragraph is that which was adopted by the congress of 1878 (the congress at the Paris Exposition). * * * "The president observed that the expression validly (valablement) may be inconvenient. The deposit (registration) is simply a declaration, therefore it may be regular without being valid. It would be better to adopt the word regularly (régulièrement). *

*

*

"The president said that before everything an understanding was necessary. Does the word valid (valable) mean that the property is definitely acquired by the depositor? *

* *

Mr. Jagerschmidt sought to enlighten the discussion by reproducing an example cited before the committee of the conference. The question was first raised between France and Russia. The Russian law protects marks written in Russian characters only; no French mark could be admitted to registration in that country. After an exchange of correspondence between the two Governments it was decided that the French mark regularly registered in France should be admitted, such as it is (telles quelles), and protected in Russia, although drawn up in French characters.

"Thus, it is intended to express by article 5 that the mark shall be admitted to registration in the country of importation if it is regular in the country of origin; but an obligation on the tribunals to recognize and sustain the law of the country of origin as to validity does not result therefrom; they are only required to judge that the deposit has been regularly made. The article can, therefore, be adopted with the words regularly registered (déposée), or even by simply saying registered (déposée). "Mr. Demeur (Belgium) said that except in countries having a preliminary examination the registration (depôt) by itself does not prove the right of the registrant even in the country of origin. A judicial examination upon the validity of the mark, which examination should be judged according to the legislation of the country of origin, can therefore arise in the country where the mark shall be imported. He preferred to return, with the exception of the omission of the words designs and models, to the original text of the first paragraph of article 5 adopted at its first reading. "The president stated the three propositions (p. 141):

"1. That of Mr. Demeur, which is the old text of article 5.

"2. The text proposed by the Chevalier de Villeneuve, delegate from Brazil, and adopted by the committee.

"3. The modification accepted by Mr. Indelli, i. e., the words regularly registered with the addition of the words admitted and protected."

*

*

*

"The text of the first paragraph of article 5 of the committee with the word 'regularly,' and the addition, and protected, is put to vote, and adopted by the majority.” (P. 142).

The final text is as follows (p. 163):

"Toute marque de fabrique ou de commerce régulièrement déposée dans le pays d'origine sera admise au dépôt et protégée telle quelle dans tous les autres pays de l'Union."

This is translated in Treaties and Conventions between the United States and other Powers, 1776 to 1887 (p. 1170), as follows:

"Every trade or commercial mark regularly deposited in the country of origin shall be admitted to deposit and so protected in all the other countries of the union." The translation published by Great Britain is as follows (see Kerley's Law of Trademarks, p. 659) :

"Every trade-mark duly registered in the country of origin shall be admitted for registration, and protected in the form originally registered in all the other countries of the union,"

Appendix K.—Propositions of the United States. (See ante, p. 53).

S. Doc. 43--6

ANALYSIS OF REPORT OF DELEGATES TO BRUSSELS CONFERENCE, 1897.

1. Composition of the Conference.

2. Propositions of the United States.

A. Addition to article 2 to make the Convention more reciprocal as to taxes, fees, subject-matter, etc. Remedies by internal legislation pointed out. Adverse action of Conference. Protest of the United States. B. Addition to Article 4 in regard to amendments of applications for patents prior to grant. Declaration of Conference that such amendments have no effect on questions of priority.

3. Propositions of other States.

4. First protocol. Amendments to the Convention adopted by the Conference. Art. 3. Persons assimilated to subjects or citizens; limited to those only who have effective and serious industrial establishments, etc.

Art. 4. Striking out "par un tiers" in second paragraph.

Art. 4 bis. A new Article providing for independence of patents taken out in different countries for the same invention.

Art. 9. An additional paragraph permitting the substitution of a prohibition of importation in place of seizure and making seizure in transit optional.

Art. 10.

Adding to interested party "producer" and to "locality of product" falsely indicated "the region where said locality is situated." Art. 11. International expositions shall be "granted" a temporary protection "in accordance with the legislation of each country.

Art. 14. Omission of sentence "The next meeting shall take place in 1885 at

Rome."

Art. 16. Time of entering into force of an adhesion to the Union.

5. Second protocol. Amendments to the Madrid agreement concerning the international registration of trade-marks adopted by the States adhering to the said agreement.

6. Propositions left to diplomatic correspondence.

A. The delay of priority. (Art. 4.)

B. The forfeiture of patents for nonworking.

(Art. 5.)

C. The admission of trade-marks to registration.

(Art. 5.)

D. The usurpation of marks used but not registered.

(Art. 7 bis.)

E. Unfair competition in trade.

7. Collective marks.

8. Resolutions adopted by the Conference.

9. Resolution introduced by France that the United States should replace local trade

marks by Federal laws.

10. Requirements of Germany before adhesion to the Convention.

11. Acceptance of the invitation of the United States.

APPENDIXES.

A. First final protocol, Convention of Paris of 1883, proposed by Brussels conference. (p. 46.)

B. Second final protocol, agreement of Madrid, 1891, concerning international registration of marks, proposed by Brussels conference. (p. 49.)

C. Convention of Paris of 1883. (p. 10.)

D. Agreement of Madrid of 1891 concerning the international registration of marks (p. 24.)

E. Agreement of Madrid of 1891 concerning the suppression of false indication of origin. (p. 22.)

F. Propositions of the British delegates as to trade-marks.

G. Statement of German delegates.

(p. 73.)

(Art. 6, protocol 4, p. 72.)

H. Inventions especially excluded from protection by patents in other countries.

(p. 75.)

I. Laws of some other countries in regard to compulsory working and license. (p. 78.) J. Article 6 of Convention, its origin and history. (p. 80.)

K. Propositions of the United States. (p. 53.)

CHAPTER VI

REPORT OF THE BRITISH DELEGATES TO THE BRUSSELS CONFERENCE, 1897.

The British Delegates to the Brussels Conference of the Union for the Protection of Industrial Property to the Right Hon. C. T. Ritchie,

M. P.

BRUSSELS, December 15, 1897.

SIR: We have the honor to report that, in accordance with our instructions, we have attended the conference of the Union for the Protection of Industrial Property, which met in this city on the 1st instant and closed yesterday.

Nearly all of the countries of the Union sent delegates, and among those States not parties to the Union which were represented may be mentioned Germany, which sent an able and well-equipped delegation, who took an active part in the proceedings; Austria-Hungary, which will shortly enter the Union, represented by two well-informed Delegates, and Japan, which sent three Delegates to watch but not to take part in the proceedings.

The object of the Conference was the discussion of a revision of the Convention of 1883 and of the additional Acts signed at Madrid on the 14th April, 1891.

It is not necessary for us now to recite at length the various proposals which had been put forward by the International Bureau of Berne and by the States, parties to the Union as the basis of the proceedings, many of these having been dropped or modified in the course of the discussions.

When the conference got to work it soon became apparent that the chief difficulties would be encountered in regard to the following points:

(a) Article IV of the Convention of 1883, as to the delay of priority for patents and trade-marks.

(b) Article V, respecting forfeiture of patents on account of nonworking.

(c) Article VI, relative to the obligation of the contracting States to register trade-marks "Telle quelle," or in the form originally registered in another State of the Union.

(a) The Arrangement of Madrid of the 14th April, 1891, respecting false indications of origin.

We propose, in the first place, to give a short explanation of what took place on each of these points.

(a) DELAY OF PRIORITY FOR PATENTS.

It will be remembered that the Paris Convention of 1883 provides for the international recognition of a period which commences from the deposit in one of the States of the Union of an effective application to such State for the grant of a patent, design, or trade-mark, and

within which such applicant can, by subsequently depositing a like application in another State of the Union, enjoy in such last-mentioned State the same rights as if his application thereto had been deposited at the same time as his application to the first-mentioned State.

The above period, usually spoken of as the "period of priority for patents," is fixed by Article IV of the Convention of 1883 at six months, one month more being allowed for countries beyond sea.

Section 103 of "The Patents, Designs, and Trade-marks Act, 1883," grants a period of seven months to all foreign States to which the Act has been applied by Order in Council.

It has been made clear at the Conference that the German Government would not enter the Union unless this period could be extended to twelve months. The object of the German Government appears to be to enable the German patentees to avail themselves of the results of the official examination practiced in Germany as to novelty of invention before they decide whether they will also take out their patents in foreign States.

.

It has been found necessary in practice that a period of at least twelve months should be allowed for the completion of this examination.

There is at present no similar examination in the United Kingdom, otherwise the extension suggested by Germany would probably become necessary. As the English law at present stands, it would be disadvantageous to British inventors to extend the time during which British patentees are left in uncertainty whether or not they can be forestalled by means of patents taken out by foreigners in the United Kingdom under the Convention.

It would consequently be necessary, if the German proposal were hereafter entertained, to make some provision to obviate this inconvenience. This might possibly be done by requiring foreigners who apply in the United Kingdom for patents under the Convention, to file with their application a complete specification setting out fully the objects and mode of working of their patents, and by shortening the period at present allowed for the acceptance of that specification. At present a period of nine months is allowed before the complete specification must be filed, and the latter specification need not be accepted until the expiration of twelve months from the date of the application. These periods may be extended to ten and fifteen months, respectively. The proposal put before the Conference was to extend the period of priority fixed by the Convention in the case of patents to twelve months, and in the case of trade-marks to four months in all cases.

We stated our readiness to agree to seven months for patents and four months for trade-marks, as now provided by English law. A vote on the extension to twelve months was eventually taken, with the following result:

Germany and Austria had no votes, not being as yet Parties to the

Union.

As it was clear that unanimity could not be obtained, and bearing in mind the importance which is attached to the entry of Germany into the Union, we thought it best to reserve our vote, so as not to have the appearance of closing the door to possible future negotiations.

(b) FORFEITURE OF PATENTS FOR NONWORKING.

Several of the Contracting States are desirous of adding to the Convention provisions to mitigate the severity of the laws in force in some of the States of the Union, which provide for the forfeiture of patents which are not being worked in the countries in which they are taken out by foreigners.

The proposal on this subject, which was brought forward by the International Bureau as a basis of discussion, was to add the following two paragraphs to Article V of the convention of 1883:

[French text proposed.]

Cependant, il ne sera soumis à cette obligation qu'après un délai minimum de ans, à l'expiration duquel la déchéance du brevet pourra être prononcée, si le breveté ne justifie des causes de son inaction.

Sera considérée comme une des causes justifiées d'inaction, l'absence de toute offre faite au breveté d'acquérir de lui des licences à des conditions équitables, après qu'il aura provoqué de telles offres par des publications reconnues suffisantes.

[Translation.]

Nevertheless, he shall only be subject to this obligation after a minimum delay of years, after the expiration of which judgment may be given in favor of the forfeiture of the patent if the patentee fail to account for his inaction.

The following shall be considered as one of the justifiable grounds of inaction: The absence of any offer to the patentee to acquire licenses from him on equitable terms after he shall have invited such offers by the publication of notices recognized as satisfactory.

Under the English law patents are not forfeited for nonworking, but nonworking is one of the grounds on which compulsory licenses may at any time be obtained under section 22 of the Act of 1883.

In the course of the discussions on this subject it appeared that the proposal of the Bureau was intended to affect only the forfeiture of patents, and was not designed in any way to modify the law as to compulsory licenses under section 22. No objection was therefore raised to our proposal to make this clear by substituting the words "le brevet ne pourra être frappé déchéance pour cause de non exploitation," for the words "il ne sera soumis à cette obligation," on the first line of the above paragraphs.

The proposal as thus amended would have had the effect of affording some protection against forfeiture to British patents taken out in foreign countries, while in no way affecting our law under section 22.

Considerable divergence of opinion was manifested as to the minimum period at the expiration of which a patent should be forfeitable for nonworking, the French Delegates being strongly in favor of not extending this period beyond two years, while several of the Delegates, including those of Germany, were very desirous that it should be extended to three years.

The French Delegates strongly objected to the second of the proposed additional paragraphs, which was supported by Germany and other States.

As it became evident that unanimity was not procurable on this subject the question was reserved for future consideration.

Germany will probably not join the Union unless the three years can be granted.