Article 8 shall be as follows: "ART. 8. The government of the country of origin shall fix at its discretion and receive for its own profit a fee which it shall collect from the owner of the mark for which international registration is demanded. "To such fee shall be added an international fee of 100 francs for the first mark and 50 francs for each of all other marks deposited at the same time by the same owner. The annual proceeds of these fees shall, under the supervision of the international bureau, be distributed equally between the contracting States, after deduction of the common expenses necessary to the execution of this agreement.' There is inserted an article, 9 bis, as follows: "ART. 9 BIS. When a mark entered in the international register shall be assigned to a person established in a contracting State other than the country of origin of the mark, notice of the assignment shall be given to the international bureau by the government of said country of origin. The international bureau shall register the assignment, and after having received the assent of the government to which the new owner belongs shall give notice to the other governments and publish it in its journal. "The present provision does not have the effect of modifying the laws of the contracting States, which prohibit the assignment of the mark without the simultaneous conveyance of the industrial or commercial establishment whose products it distinguishes. "No assignment of a mark inscribed in the international register, made on account of a person not established in one of the contracting States, shall be registered." ARTICLE II. The closing protocol, signed at the same time as the agreement of April 14, is suppressed. The present additional act shall have the same force and duration as the agreement to which it relates. It shall be ratified and the ratifications thereof shall be exchanged at Brussels in the form adopted by this agreement as soon as may be, and at the latest within the period of one year. It shall go into effect three months after such exchange. In witness whereof the undersigned have signed the present additional act. Done at Brussels, the of The respective governments are invited to sign the above project within six L'article 8 aura la teneur suivante: "ART. 8. L'Administration du pays d'origine fixera à son gré, et percevra à son profit, une taxe qu'elle réclamera du proprietaire de la marque dont l'enregistrement international est demandé. A cette taxe s'ajoutera un émolument international de 100 francs pour lu première marque, et de 50 francs pour chacune des marques suivantes, déposées en même temps par le même propriétaire. Le produit annuel de cette taxe sera réparti par parts égales les États contractants par les soins du Bureau international, après déduction des frais communs nécessités par l'exécution de cet Arrangement.' Il est inséré un article 9 bis conçu comme suit: "ART. 9 BIS. Lorsqu'une marque inscrite dans le registre international sera transmise à une personne établie dans un Etat contractant autre que le pays d'origine de la marque, la transmission sera notifiée au Bureau international par l'Administration de ce même pays d'origine. Le Bureau international enregistrera la transmission et, après avoir reçu l'assentiment de l'Administration à laquelle ressortit le nouveau titulaire, il la notifiera aux autres Administration et la publiera dans son journal. "La présente disposition n'a point pour effet de modifier les législations des Etats contractants qui prohibent la transmission de la marque sans la cession simultanée de l'établissement industriel ou commercial dont elle distingue les produits. "Nulle transmission de marque inscrite dans le registre international, faite au profit d'une personne non établie dans l'un des pays signataires, ne sera enregistrée." ARTICLE 2. Le Protocole de clôture signé en même temps que l'Arrangement du 14 avril 1891 est supprimé. Le presént Acte additionel aura même valeur et durée que l'Arrangement auquel il se rapporte. Il sera ratifié, et les ratifications en seront échangées à Bruxelles, dans la forme adopté pour cet Arrangement, aussitôt que faire se pourra, et au plus tard dans le délai d'une année. Il entrera en vigueur trois mois après cet échange. En foi de quoi les soussignés ont signé le présent Acte additionnel. Fait à Bruxelles, le Les Gouvernements respectifs sont invités à signer le projet ci-dessus dans un months; the signature and the exchange of ratifications shall take place in the manner designated in said additional act. RULES OF PROCEDURE. Modifications submitted to the approval of the contracting governments. Insert in the regulations an article 6 bis, as follows: "ART. 6, BIS. The fee provided by article 5 of the agreement for the copies or extracts from the register is fixed at 2 francs for each extract." Modify article 7 as follows: "ART. 7. The changes taking place in the ownership of a mark, and which shall have been the object of the notice provided by articles 9 and 9 bis of the agreement, shall be entered in the register of the international bureau. The latter shall give notice in its turn to the contracting governments and shall publish them in its journal, taking into account the special provisions of article 9 bis when the new owner is not established in the country of origin of the mark.” Modify the first paragraph of article 11 as follows: "ART. 11. The present rules shall remain in force as long as the agreement to which they relate." Done in one single copy at Brussels, December 14, 1897. For Belgium: A. Nyssens, L. Capelle, Georges De Ro, J. Dubois. For Brazil: F. Vieira Monteiro. For Spain: El Marqs. De Bertemati, Eduardo Toda. For France: Montholon, C. Nicholas, Michel Pelletier. For Italy: R. Cantagalli, C. F. Gabba, S. Ottolenghi. For The Netherlands: Snyder Van Wissenkerke. For Portugal: F. Quintella De Sampayo, Jayme De Séguier. For Switzerland: Alphonse Rivier, L. R. De Salis. For Tunis: Montholon, Etienne Blade. délai de six mois; la signature et l'échange des ratifications auront lieu de la manière consignée dans l'Acte additionnel. RÈGLEMENT D'EXÉCUTION. Modifications şoumises à l'approbation des Administrations contractantes. Insérer dans le Règlement un article 6 bis ainsi conçu. "ART. 6, BIS. La taxe prévue par l'article 5 bis de l'Arrangement pour les copies ou extraits du registre est fixée à 2 francs par extrait." Modifier l'article 7 en lui donnant la teneur suivante: "ART. 7. Les changements survenus dans la propriété d'une marque, et qui auront fait l'objet de la notification prévue par les article 9 et 9 bis de l'Arrangement, seront consignés dans le registre du Bureau international. Ce dernier les notifiera à son tour aux Administrations contractantes et les publiera dans son journal, en tenant compte des dispositions spéciales de l'article 9 bis, quand le nouveau propriétaire ne sera pas établi dans le pays d'origine de la marque.” Modifier le premier alinéa de l'article 11 de la manière suivante: "ART. 11. Le présent Règlement restera en vigueur aussi longtemps que l'Arrangement auquel il se rapporte." Fait en un seul exemplaire, à Bruxelles, le quatorze décembre, 1897. Pour la Belgique: A. Nyssens, L. Capelle, Georges de Ro, J. Dubois. Pour le Brésil: F. Vieira Monteiro. Pour l'Espagne: El marqs de Bertemati, Eduardo Toda. Pour la France: Montholon, C. Nicholas, Michel Pelletier. Pour l'Italie: R. Cantagalli, C. F. Gabba, S. Ottolenghi. Pour les Pays-Bas: Snyder Van Wissenkerke. Pour le Portugal: F. Quintella de Sampayo, Jayme de Séguier. Pour la Suisse: Alphonse Rivier, L. R. de Salis. Pour la Tunisie: Montholon, Étienne Bladé. CHAPTER IV. PROPOSITION FOR THE AMENDMENT OF THE CONVENTION PRESENTED BY THE UNITED STATES TO THE BRUSSELS CONFERENCE. 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 named 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 payable on filing the complete specification is £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 florins (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: Provided, 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 may, 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 invention 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 a 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 shall not be construed to extend in any State of the Union greater protection to the invention than in the country of origin. |