Mr. Uhl to Mr. Runyon.
Washington , October 5, 1894 .
Sir: I inclose herewith copy of a correspondence which has passed between this Department, Messrs. Richards & Co., of New York, and the Department of the Interior in regard to publishing in the Imperial Gazette-of Berlin that the laws, of the United States guarantee reciprocity in the matter of patents, in order that our citizens may thereby be enabled to avail themselves of the benefit of the German patent law of April 7, 1891.
That law provides as follows:
Section 1. Patents are granted for new inventions, which permit of an industrial exploitation. The exceptions are * * *
Sec. 2. An invention is not considered as new, if at the date of filing the application according to the provisions of this present law, the same has been so described in public prints, within the last century, or so publicly employed in the country (the German Empire), that the use of the same by other persons skilled in the art appears possible.
The official foreign patent specifications are only considered equal to public prints after the lapse of three months from the date of publication, in so far as the patent is applied for by the foreign patentee or his legal successor.
This exception refers, however, only to the official publications of those States in which, according to a publication of the imperial chancellor in the Imperial Gazette, reciprocity is guaranteed.
It will be seen by the report of the Commissioner of Patents inclosed in the letter from the Secretary of the Interior of August 27, 1894, that the reciprocity so to be guaranteed on the part of Germany by the act of the imperial chancellor has long been guaranteed by the United States under the provisions of section 4887 of the Revised Statutes, taken in connection with section 4886.
Section 4887 is as follows:
No person shall be debarred from receiving a patent for his invention or discovery, nor shall any patent be declared invalid, by reason of its having been first patented or caused to be patented in a foreign country, unless the same had been introduced into public use in the United States for more than two years priorto the application. But every patent granted for an invention which has been previously patented in a foreign country shall be so limited as to expire at the same time with the foreign patent, or if there be more than one at the same time, with the one having the shortest term and in no case shall it be in force more than seventeen years.
Section 4886 reads:
Any person who has invented or discovered any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement thereof, not known or used by others in this country, and not patented or described in any printed publication in this or any foreign country before his invention or discovery thereof, and not in public use or on sale for more than two years prior to his application, unless the same is proved to have been abandoned, may, upon payment of the fees required by law and other due proceedings had, obtain a patent therefor.
It is apparent, therefore, the Commissioner observes, that no person is debarred from receiving and maintaining an American patent by reason of its having been first patented in a foreign country unless the invention has been in public use in the United States for more than two years prior to the application, the only limit being that the American patent so granted shall be limited to expire at the same time with the foreign patent. An American patent may be applied for at any time during the life of the foreign patent.
As all that can be secured to American inventors under existing provisions of the German law is the right to apply for a German patent within three months from the date of the publication of his American patent, a much more restricted favor than has long been enjoyed by German subjects in this country, and as all that remains to be done to secure the enjoyment of this limited right is that reciprocity be announced by a publication effected by the imperial chancellor in the Imperial Gazette, the Commissioner of Patents submits that American inventors have just ground for asking that the Imperial Government make prompt publication of the reciprocity which has long been offered by the existing provisions of the American law.
In view of this recommendation you are instructed to endeavor to reach an understanding with the German Government whereby the publication of the requisite German announcement may be procured, in order that citizens of the United States may enjoy the benefit of the German law. The subject is to be considered separately and aside from that of the draft treaty concerning patents and trade-marks, which involves many other questions, and which is under consideration by the Patent Office.
I am, sir, etc,
Acting Secretary.