Foreign Patents and Foreign Applica

tions Mentioned in Sections 4886 and 4887, Revised Statutes

By

F. J. PORTER,

Division XXII, United States Patent Office.

INTRODUCTION.

The object of this paper is a discussion of Sections. 4886 and 4887, Revised Statutes, with regard to the foreign patents and foreign applications mentioned therein, and includes statements of the practice of this Office in cases which involve foreign patents, foreign applications and foreign publications.

În actions under Section 4886, it is important to know either the date of the foreign patent as a patent or its date as a printed publication or, possibly, both.

There is an essential difference between a patent considered either as a contract or a public document and a printed publication. The government may or may not disclose the patented invention by means of a printed publication, also the printed publication may have one date and the patent may have been signed, sealed and delivered on another date.

DATE OF PATENT.

In considering the patent date, it has been held that no patent exists until there is an actual grant of the monopoly in the invention by the foreign government.

Telegraph Co. et al. vs. Telephone Co., C. D. 1890, p. 403.

De Ferranti vs. Westinghouse, C. D. 1890, p. 114. Bell Telephone Co. vs. Cushman et al., C. D. 1893, p. 546.

Merrell-Soule vs. Milk Co., 215 Fed., 922.

The point is of no importance in so far as British patents are concerned, since they are all, with the exception of secret patents, published before they are sealed and since the earliest date is the controlling one, the sealing date of a British patent is of no importance under Section 4886.

With German patents, it has been argued that the effective date under Section 4886 is prior to the "ausgegeben" date, but the Court held, from the evidence before it, that there was no actual monopoly grant of patent rights until the "ausgegeben" date.

Merrell-Soule vs. Milk Co., 215 Fed., 922.

It may be noted that the "erteilung" or bestowal of the German patents is published in the Patentblatt and in the Reichsanzeiger two weeks prior to the "ausgegeben" date and that the numbers of German patents do not run according to the "ausgegeben" dates but are given numbers as of the date of "erteilung."

In Austria, the lapse of time between the date of "erteilung" or bestowal, as indicated in the Patentblatt, and the "ausgegeben" date is about six weeks. The "ausgegeben" date has been uniformly held in this Office to be the effective date under Section 4886.

Printed copies of Swedish patents are on sale about nine days after the patent grant, according to Singer'sPatent and Trade-Mark Laws of the World.

The date of grant of Dutch patents which have been received by this Office since June, 1913, is indicated in the heading by the word-"Dagteekening."

The word "Udstedt" in the heading of a Danish patent indicates the date of grant or issue.

Concerning Swiss patents, it has been held that the date of registration thereof, giving it a number, is of no avail unless the patent is printed and published and that the date of publication is controlling.

Roschach vs .Walker, C. D. 1899, p. 157.

In this connection, it might be well to state that the heading of a Swiss patent gives only the date of filing of the application.

The grant of the patent is indicated in the Swiss Patent Liste, which is published twice a month and gives a list of patents granted and refers to the date when printed copies may be obtained. The information obtained from the Swiss Patent-Liste as to the exact dates of grant and publication is not sufficiently definite and it would seem worth while to induce the Swiss government to print, in the heading of the patent, the date on which it was granted, and the date on which it was published.

This suggestion applies with nearly equal force to the British patent specifications.

A German Gebrauchsmuster patent is a patent within the meaning of Section 4886.

Law Examiners Decision in Sexton vs. Reis, Interference No. 37,770.

In the case of Robin vs. Muller et al., C. D. 1904, p. 569, the Commissioner said that the effective date of the French patent 3628 is May 23, 1900, the date of grant and delivery, because it was established that this foreign patent was granted and delivered prior to any date alleged by Robin and in view of the French law then in force, that as such patents were open to the public, it must be held that this French patent 3628, and addition, was not a secret patent and that its grant and publication are a bar to the issue of a patent to Robin.

In the case of French patents prior to 1902, I am informed that the delivré date is the only one available.

I am informed, from a copy of a letter of a French agent in a pending case, that the filing date of a French application is the date of the signature of the ministerial decision recognizing the regularity of the application and indicating the patent numbers. From this date, the application may be inspected upon the payment of a fee, though no copy may be made. The deliverance of the patent is advertised in the official Bulletin of Industrial and Commercial Property and since June 19, 1913, the public may obtain copies of the specification and drawings on the payment of a fee.

The date of publication is indicated in the official Journal some weeks in advance and every one knows exactly

from what date they will be able to secure a printed copy of the patent.

In the case of Schoerken vs. Swift et al., 7 Fed., 469, the Court said that the word "patented" as used in Section 4886 would seem, from the significance of the word, to mean only inventions laid open to the public and protected to the inventor, but the case turned on the question of evidence, the Court holding that the French patent which was not published, was not a secret patent because a certified copy of the patent was presented in evidence, and that a copy of a secret patent could not be obatined. The Court held that the French patent was a patent within the meaning of the law, and would operate as a bar.

Judging from the decision in the cases of Schoerken vs. Swift, and Robin vs. Muller, cited, and the letter of the French agent, a French patent is a reference under Section 4886, as of the date when the patent is delivered and open to the public. I am not prepared to say, from the information at hand, that this is the delivré date, especially when the uniform practice in this Office has been to use the publié date.

Still, if there is an actual grant of the monopoly of an invention in France as of the date of delivery appearing on the heading of the patent, the delivré date is the controlling one.

To use the patent date effectively under Section 4886, the invention must be actually patented, i. e., covered by the claims of the patent, if the patent has claims.

The question of the identity of the invention patented is taken up later in connection with the discussion of Section 4887. The word "patented" means the same thing in each section.

Queen vs. Friedlander, 149 Fed., 775.

It is hoped that authoritative directions may be given as to the effective dates under Section 4886 of all foreign patents as patents, and as printed publications, and that provision be made for printing these dates on the headings of all foreign patents which are received by this Office.

While the date of foreign letters patent has always

been considered the controlling one, irrespective of the date of publication, and whether the patent was a printed publication or not, it is suggested that this is an undue hardship on American inventors, who, while not being charged with notice of public use of the invention abroad, are barred from receiving a patent in this country on an invention patented in a foreign country more than two years prior to the filing date of their applications here, whether the foreign patent is a printed publication or not.

For instance, though no amount of public use in Italy would bar an inventor from obtaining a patent in this country, he might be barred by an Italian patent, the contents of which can only be learned by sending to the Italian patent office for a certified copy of the letters patent. Italian patents are not printed publications.

The only knowledge derived from foreign sources which should operate as a bar under Section 4886 by way of dedication to the public of this country, is that obtained from printed publications.

However, as the law stands, a foreign patent may be a bar under Section 4886, whether the subject-matter thereof is disclosed in a printed publication or not.

Sirocco vs. Sturtevant, 220 Fed., 137, citing Ireson vs. Pierce, 39 Fed., 795, and Bell Co. vs. Bevin, 73 Fed., 469.

SECRET PATENTS (SECTION 4886).

It was intimated in Schoerken vs. Swift, cited, that a secret patent is no bar under Section 4886 to the issue of a patent in this country.

In Robin vs. Muller, the Commissioner said that while a prior foreign patent under Section 4886-Revised Statutes, is a bar to the grant of a patent in this country, an apparent exception exists under the authorities where the foreign patent has been kept secret.

Again, in Brooks vs. Norcross, 2 Fischer, 661, the court said, speaking of the word "patented" as it occurred in Section 7 of the Patent Act of 1836, which is similar to Section 4886 of the Revised Statutes, "the word 'patented' as here used must of course mean covered and made known to the world by a public patent, so as to