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PARAGRAPH 1 OF ARTICLE 6 OF THE CONVENTION, ITS ORIGIN AND
The report of the Conference of 1880 shows article 6 to have been adopted after the following proceedings:
M. Jagerschmidt proposed a draft convention containing the following article (p. 27):
Art. 7. Le dépôt d'une marque quelconque de fabrique ou de commerce sera admis, dans tous les Etats de l'Union, aux risques et périls du déposant, quello que soit la nature du produit revêtu de la marque.
(The registration of any trade mark shall be allowed in all States of the Union at the risk and peril of the registraut, whatever be the nature of the product provided with the mark.)
When this article was reached as stated in the minutes (p. 89) On the request of Mr. Demour, Mr. Jagerschmidt stated the meaning of the article. He explained that in certain countries when a manufacturer or merchant appears to deposit a mark for pharmaceutical objects, for example, its registration is refused, because the product bas not been approved by the council of hygiene and can not be put on sale. Now, the mark is absolutely independent of the product, and it is of importance that its proprietor should be able to register it in order to guarantee his rights until the time when the product, forbidden to-day, shall be finally allowed.
The Conference then adjourned. On the next day the minutes say (p. 97):
He (the president) read article 7, which is as follows: “Dans tous les États de l'Union, le dépôt d'une marque quelconque de fabrique ou de commerce sera admis, aux risques et périls du deposant, quello que soit la nature du produit sur lequel la marque doit être apposée.
(In all the States of the Union the registration of a trade mark shall be allowed at the risk and peril of the registrant, whatever be the nature of the product upon which the mark is to be applied.)
The article is put to vote and adopted.
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 corresponds in position to the first paragraph of the existing article 6. It is as follows:
Toute marque de fabrique ou de commerce valablement déposée dans le pays d'origine sera admise tello quello au dépôt dans tous les autres États de l'Union (p. 133).
(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 all 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, that which it is intended to express by article 5 is, 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 conntry 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, or even by simply saying registered.
Mr. Demour (Belgium) said that except in countries having a preliminary examination the registration 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 the first reading.
The president stated the three propositions (p. 141)..
2. The text proposed by the Chevalier Villeneuve, delegate from Brazil, and adopted by the committee.
3. The modification accepted by Mr. Indelli, i. o., the words regularly registered with the addition of the words admitted and protected.
After the recitation of considerable discussion the minutes say:
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 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 Trade Marks, 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.
PROPOSITIONS OF THE UNITED STATES.
Article 2 of the Convention, as it now stands, gives the right to the subjects or citizens of each of the contracting States to secure the same protection, so far as concerns patents for inventions, trade or commercial marks, and commercial names, in all the other States of the Union that the respective laws thereof now, or may hereafter, accord the subjects or citizens, not only as regards the extent or duration of protection, but also as regards the fees for the issuance of the patent and for continuing the protection given by the patent in force during the period nained therein, and also as regards the inventions which may be protected by patent.
In the United States the fees for the grant of a patent for an invention are but $35, of which $15 is required upon filing the application and $20 prior to the issuance of the patent. The patent is granted for seventeen years, except in certain cases, and it continues in force for the full term for which it is granted without the payment of further fees. In certain of the States of the Union, not only are fees required upon deposit of the application and issuance of the patent, but further fees in the form of annual taxes are required for the continuance of the protection given by the patent as issued, the patent lapsing if these taxes are not paid. The aggregate amount of these fees in some of the States of the Union is many times the fees required by the United States. For instance, in Great Britain, as stated in the "Tableau Comparatif," published in a recent number of “La Propriété Industrielle,” the fee pay. able on filing the complete specification of £4 sterling (say $20). This pays for the continuance in force of the patent for four years. For the fifth year a tax of £5 (say $25) is required; for the sixth year a tax of £6 (say $30), and so on, increasing £1 each year. The aggregate amount of the fees for a patent of fourteen years is thus £99, or nearly $500.
In France annual taxes of 100 francs (say $25) are required, aggregating for a fifteen-year patent 1,500 francs (say $300).
In Austria, under the law of January 11, 1897, the fee payable on the filing of the application is 10 floring say $4) and the annual taxes for a fifteen-year patent aggregate over 1,900 florins (say $800).
It does not seem just that a subject or citizen of a foreign State should secure from the United States protection for his invention, trade or commercial mark for a less sum than is required of citizens of the United States for like protection by the State of which he is a subject or citizen, and it is believed that the Convention should not restrict the United States from requiring, if it shall seem best to do so, that subjects or citizens of other States should pay for the grant and continuance of protection the same fees which are required for like protection by other States from citizens of the United States.
Further, it does not seem just that a greater protection to inventions than that which is extended by the State of which the inventor is a subject or citizen, or in which he is domiciled at the time of making his invention should be extended by the United States. That, for instance, a subject or citizen of Austria (not yet, it is true, one of the contracting States) should be entitled to protection in the United States for the product of a chemical process, while in his own State he is entitled only to protection for a particular process for its manufacture and is not entitled to protection for the product, does not seem just, particularly as a citizen of the United States who has invented a product of a chemical process, for which he is entitled to protection in the United States, is not entitled to such protection in Austria as is now afforded the Austrian inventor in the United States.
So, too, with reference to Switzerland. The Swiss patent laws do not recognize as entitled to protection either a chemical process or the product of such process unless it is susceptible of being represented by a model, while the citizen of Switzerland is entitled to protection in the United States for chemical processes and products of chemical processes, as well as many other inventions which can not be represented by models.
Any State of the Union should be entitled to refuse, at its option, to subjects or citizens of another State the protection which is refused by that other State to its subjects or citizens.
For these reasons the United States Government proposes to amend article 2 by adding the following paragraphs:
Prorided, That a subject or citizen of any one of the contracting States applying for a patent for invention, trade or commercial mark, or commercial name in another of the contracting States way, at the option of the latter State, be required to pay for the issuance and continuance in force of the patent applied for fees equal in amount to the fees required of a subject or citizen of the State in which the patent is applied for, for the issuance and continuance in force of a patent for invention, trade or commercial mark, or commercial name, in the State of which the applicant is a subject or citizen.
Provided further, That an invention not the subject of a patent in the country of origin may, at the option of another State of the Union, be refused protection in that State.
Country of origin shall be considered the country of which the inventor is a subject or citizen, or in which he is domiciled at the time of the first deposit of an application for an invention.
Article 4 of the Convention is not suited to the wants of American inventors.
The amendment of section 4887 of the Revised Statutes of the United States, approved March 3, 1897, which will take effect January 1, 1898, will eliminate from our law the feature of the dependence of the United States patent on prior patents for the same invention previously taken in foreign countries. This amendment, while removing one reason for the proposition of the United States at Madrid that the period of delay should begin at the date of the issue of the United States patent, namely, that the grant of a prior foreign patent would limit the latter to the term of the former, does not obviate another difficulty which springs from our system of preliminary examination.
In our system the papers deposited with the application for a patent, and forming part thereof, are: 1. An application therefor in writing to the Commissioner of Patents; 2. “A written description of the inven. tion or discovery, and of the manner and process of making, constructing, compounding, and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same; and in case of a machine, an explanation of the principle thereof, and the best mode in which he (the inventor) has contemplated applying that principle so as to distinguish it from other inventions, and in which he (the inventor) shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery” (Revised Statutes, section 4888). 3. Drawings " when the nature of the case admits of drawings” (Revised Statutes, section 4889).
Specifications and drawings are submitted to the examination of skilled persons in the Patent Office, called examiners, who often find that the inventor has improperly described or misapprehended his invention and has claimed more than he had a right to claim as new. If it is found that the invention has been known or used by others in the United States, or has been patented or described in any printed publication in any country before his invention, the application is refused and no patent thereon issued. If, however, the claims of the application are merely broader than the invention and include therein matter which is shown by the prior state of the art to be old, then the applicant may amend his specification and claims so as to limit them to his actual invention, and this being done the patent is issued upon the amended specification and claims. Such amendments are always restrictive in their nature, and the applicant is never permitted to broaden his claim to cover an invention not within the description contained in the application as filed. It is found from the records of the Patent Office that of the applications for patents filed since the year 1880, nearly one-third were rejected for want of patentable novelty, the remaining two-thirds were found patentable, and, in all but those in which the final fee was not paid within the time required by law, patents were issued.
By amendment of the specification and claims forming a part of the application the inventor is enabled to separate the new from the old and to claim what he has in fact invented. It is this amended application which should be the subject of refiling in the different States of the Union under article 4. But as in certain cases the examination may not be completed for a considerable period of time, and the inventor may be desirous of immediately exploiting his invention in other countries of the Union or of avoiding the risk of intermediate publication or other acts which would vitiate his patent, he should be allowed to deposit his application in the several States of the Union, with a description of his invention as filed in the country employing the preliminary examination, and afterwards to amend the same so as to make it conform to the patent issued on the first application.
In the case of an application filed in another country and afterwards in a country employing the preliminary examination under claim of priority, then the specification and claims there allowed should be taken as equivalent to the prior application for the purposes of article 4.
The United States Government therefore proposes to amend article 4 by adding the following paragraph:
The application for a patent of invention of an industrial model or design, or trade-mark above mentioned, may be amended in the part describing or claiming the invention, model, or design, in conformity with the description and claim allowed and forming part of the patent issued in countries requiring a preliminary examination; but the description and claim sball not be construed to extend, in any State of the Union, greator protection to the invention than in the country of origin.