Reciprocity in Respect to Patents and Patent Rights
in Respect to
Patents and Patent Rights.
A Scheme for the Consideration of the International
By F. A. Seely.
Reciprocity in Respect to Patents and Patent
A Scheme for the Consideration of the
International American Congress.
By F. A. Seely.
In formulating terms for reciprocity between the American nations, with respect to patents for inventions, it is observed, first of all, that no scheme can be framed which will be more liberal towards foreigners than the existing law of the United States. That law places them in all respects on the same footing as our own citizens, both in regard to the conditions on which letters patent are granted and those under which patent rights are subsequently upheld by the courts. This liberality towards foreigners is, indeed, characteristic of the laws of the American nations generally. They grant their patents to citizens and aliens alike, and upon the same terms. This is done by statute, and hence there is little need of treaty stipulations to establish reciprocity in this particular.
But the conditions under which the validity of a patent in some American countries may be vitiated after the grant bear somewhat hard on the foreigner if, as is natural, he happen to have first secured a patent in his own country. In no case is the patent granted without the presumption of novelty and that the applicant is the true inventor but in none of the American countries are the same pains taken as in the United States to determine positively that the invention for which the patent is asked is the invention of the applicant, and that the patent shall be granted only for that which, by rigid examination into the art to which the invention appertains, has been determined to be actually novel. In the United States the grant is conditioned on these, an oath being required of the applicant that he verily believes himself to be the original and first inventor of that which he seeks to protect by patent, and his claims to invention being closely defined and submitted to the severest scrutiny of a body of trained examiners.
These features of our system are the result of its development for a century. They involve an abrupt departure from the system of granting patents which prevails in Europe, and, since their adoption by Canada, have become known as the American system. Under it a patent goes forth with a practical guaranty of the novelty of the invention. It may be vitiated, but only by the discovery of new evidence against novelty, or by the discovery that, notwithstanding his oath, the applicant was not the true and first inventor.
Another feature of the United States patent system is that the patent, once granted, is subject to no subsequent conditions to keep it in force for its full term. The Constitution of the United States recognizes that invention is to be encouraged for the promotion of the useful arts, and that the way to encourage it is by securing to the inventor the benefit of his invention for a limited time. Under this doctrine a United States patent is not in spirit a grant from the sovereign, but is a contract between the sovereign and the inventor, whereby in consideration of the protection given him for a term of years he agrees to give to the public the full benefit of his invention at the expiration of that term. This is the sole consideration, and as it was regarded just in theory, so it has been found expedient in practice. Hence the issue of a patent is accompanied by no imposition of annual or other dues, no obligation to work the invention, no binding or harassing conditions whatever. The sole pecuniary benefit derived by the Government is in the fees paid in to the Patent Office with the application, which are the estimated reasonable compensation for the actual work done by the office for the patentee.
It is to be particularly noticed that under the United States patent law prior public use of an invention in a foreign country is not a bar to the grant of the patent. Nor is the fact that the invention has been previously patented in a foreign country a bar to the grant to the inventor if applied for during the life of his foreign patent. Even the fact that the invention has been known and used in this country will not bar the grant if the application for patent is made within two years from the beginning of public use. Everything in the law favors the inventor who introduces his invention to the people of the United States. He may have patented it first abroad, be may have suffered it to become known and used abroad without protecting it by patent, he may have tested it experimentally and publicly and commercially here for full two years, but none of these stand in the way of the completest protection the law affords. All this, too, has been considered wise in principle, and the results have demonstrated its expediency.
It seems almost like excessive liberality to grant such privileges to foreigners as these statements indicate, but the United States patent law knows no foreigners—citizens and aliens are on the same footing. And he who can promote the useful arts in the United States by introducing a valuable and novel invention, being himself the inventor, is entitled under the Constitution and statutes to protection in its enjoyment.
A single restriction, which has sometimes been regarded as a discrimination against the alien, exists in the patent laws of the United States. It is that provision of the statute whereby the term of a patent for an invention which has been previously patented abroad is made to expire with the expiration of the foreign patent, or, if there be more than one, with the term of that having the shortest time to run. This, however, is not in fact a discrimination against the foreigner, since it applies equally to the citizen, and has been made effective by the courts to terminate the patent rights of citizens. It amounts to the claim by the United States, on behalf of her own people, that the invention shall become the property of the public here when permitted to become so elsewhere. This is undoubtedly just in theory, and the same provision is found in the patent laws of nearly every American nation. In practice, there are reasons to doubt its expediency, and the repeal of this provision of law has often been urged.
Another provision of our patent law to be considered in this relation is that relating to publication. Publication of some kind is a feature in the patent law of every country. In some it takes place immediately on the application and before the grant. In others it does not take place until the expiration of the term of the patent. In the United States publication is simultaneous with the grant, everything relating to the invention being kept secret in the Patent Office until that event. This publication is real and thorough. Printed copies of the specification and drawings are exposed for sale. They are furnished to the libraries of the States and of the United States district courts they are distributed to foreign governments under a system of exchange, while the original record of the case, and all proceedings in the Patent Office concerning it, may be inspected by any one. This complete disclosure to the public is in conformity with the terms of the contract, and is in the interest both of the public and the inventor, serving to define to all concerned the metes and bounds of his privilege, to avoid unintentional trespass, and to inform the public with great exactness of the rights to which they are ultimately to succeed. Such disclosure stimulates other inventors, and many a crude and unprofitable invention has under this system become the parent of vast industries.
What has been said indicates sufficiently the favor extended by the patent laws of the United States to the foreign inventor. Be he the inventor, or in good faith believing himself to be so, he comes to the Patent Office in every respect on the same footing as a citizen. He is not required to first obtain protection at home, and no special fees or exactions are imposed on him. Like the citizen, he may work his patented invention or not, as he pleases, since the only obligation he incurs is that of giving it to the public at the expiration of its term. In the courts he may bring suit for infringement, and will find in these tribunals that an alien friend is entitled to, and will receive, the same protection in his rights as a citizen. And all this is irrespective of treaties; it is the simple result of the law.
In proposing terms of reciprocity in respect to patents, it is not possible for the United States to propose anything less liberal than her own law. She can not ask of the other powers any terms under which they shall not give to her citizens what, without a treaty, and by her own statute, she gives freely to theirs. With this view, and to adapt the propositions of the United States for the intelligent and orderly consideration of the Congress, the following scheme is presented in the form of articles:
Subjects or citizens of each of the contracting states shall enjoy in all the other states, in respect to patents for invention, all the rights their respective subjects or citizens now possess or may hereafter possess. They shall have the same protection and the same legal recourse against all infringements of their rights, subject to the formalities and conditions imposed by the domestic legislation of each state upon its own subjects or citizens.
Persons who are permanently domiciled or have industrial establishments in any one of the contracting states shall, in respect to the rights guarantied by the above article, be regarded as citizens of that state.
Any person, being a citizen or subject of one of the contracting states, who has made an invention in the useful arts, may be granted a patent for the same in any other contracting state in the same manner and under the same conditions as if he were a citizen thereof.
A patent shall not be refused to any person applying for the same in any contracting state, nor, when granted, shall it be vitiated by reason of his having first obtained a patent in his own country, or in any other of the contracting states, nor by reason of the publication of the specification of such patent in accordance with the laws of such state, provided the invention has not been introduced into public use in the country in which application is made for more than two years prior to such application.
Nothing in these articles shall be construed as interfering with the right of any of the contracting states to make the duration of a patent terminate with the expiration of the term of a prior foreign patent for the same invention, nor as absolving the patentee from any obligations imposed upon him by the laws of any country in which he seeks protection.
Contests and disputes regarding the rights of patentees shall be settled by the appropriate tribunals of the respective states, and shall in no case become the subject of diplomatic intervention.
Articles I and II are substantially in the words of the convention for the protection of industrial property signed at Paris in 1883, and to which, along with many of the nations of Europe, several of those of America are parties. It is not known that any objection can arise to them, and they need no explanation.
Article III defines more clearly the nature of the reciprocity desired. It is not believed to be at variance with the existing law of any American state.
Article IV is in accordance with the law of the United States. It is more liberal than most of the Spanish American patent laws, since under them a patent may be vitiated after the grant if it is found that the invention had prior to application been so fully published as to make it possible to put it in practice. The laws of most European countries are similar in this respect, and the hardship they impose on the inventor is one that treaty stipulations have more than once sought to remove, by admitting of a term, during which, after publication of his invention according to the patent laws of one country, the inventor may deposit his application in another without prejudice by reason of the prior publication. The inventor encounters no such difficulty here. His prior patent may abridge the term of a patent in the United States, but neither the existence of such patent nor any publication under it can vitiate that granted to him by this Government.
The only ground on which the true inventor can be refused a patent in this country is that of public use or sale for two years in this country prior to the application. This applies alike to citizen and alien, to either of whom the law allows this liberal term in which he may not only test the operativeness of his invention, but, if he choose, its commercial value. There is no magical character in the term of two years, but it is in our patent system the term which has been established as the limit of delay. Thus, failure to apply for patent within two years after public use of the invention will cause the patent to be refused. Failure to complete an application within two years from filing a petition works abandonment; so does a failure to prosecute the case within two years after an action by the office. Failure to take out the patent within two years after allowance also works abandonment. And now the courts are inclined to hold that if the patent when granted is void, through error which may be cured by a re-issue, the application for re-issue must, under ordinary circumstances, be filed within two years from the original grant; otherwise it will be void.
This term, dictated by do special reasons, is found expedient in practice, and, so far as relates to the period of public use which shall constitute a bar to a patent to the true inventor, it is urged for adoption by the other American nations. It has already been incorporated into the patent law of Venezuela. It is an encouragement to the inventor, since it enables him before applying for a patent to ascertain experimentally the commercial adaptation of his invention f6r any particular country, and it is in no respect disadvantageous to the public of that country.
Article V scarcely needs explanation. It simply expresses acquiescence in the domestic laws of each country, and practically is a repetition in more specific terms of a part of Article I.
Article VI is in accordance with the existing statute of some South American states. No occasion for such a statute has been found in the United States. Diplomatic intervention in matters of this character is not likely to occur, but if attempted would meet with scant favor. The existence of such a law in several states indicates that the need of it has been felt, and the United States will not hesitate to pronounce herself in full accord with the public policy that has led to its enactment.