SR 1019

Calendar No. 1001

87TH CONGRESS 1st Sesson

SENATE REPORT No. 1019

PARIS CONVENTION ON PATENTS AND TRADEMARKS

SEPTEMBER 14, 1961.----Ordered to be printed

Mr. MCCLELLAN from the Committee on the Judiciary, submitted the following

REPORT

[To accompany H.R. 5754]

The Committee on the Judiciary, to which was referred the bill (H.R. 5754) to carry into effect a provision of the Convention of Paris for the Protection of Industrial Property as revised at Lisbon, Portugal, October 31, 1958, having considered the same, reports favorably thereon without amendment and recommends that the bill do pass.

PURPOSE

The purpose of the proposed legislation is to carry into effect a provision of the Convention of Paris for the Protection of Industrial Property as revised at Lisbon, Portugal, October 31, 1958.

STATEMENT

The Department of Commerce and the Department of State recommend enactment of this legislation. The reports of those Departments are attached hereto and made a part hereof.

The provisions of the Convention of Paris are not self--executing, and legislation is therefore needed to carry into effect any provision not already in our present law. The revised convention makes quite a number of changes in detail over the previous revision of that instrument. However, with one exception, these changes are already provided for or taken care of by existing law in the United States. The one exception which requires a speciﬁc amendment of our Federal statutes is the subject matter of the instant bill. It relates to new paragraph 4 which has been added to article 4C of the convention, and it relates to the ''right of priority'' which applicants for patents and trademarks obtain under the international instrument.

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SECTION 119 of title 35, United States Code, pursuant to the Convention of Paris, provides that an application for a patent ﬁled in the United States by a person who has previously ﬁled an application for a patent for the same invention in a foreign country, which affords similar privileges, shall have the same effect as if ﬁled in this country on the date on which it was ﬁrst ﬁled in the foreign country. The instant bill, pursuant to the 1958 revision of the Convention of Paris, would grant the same priority rights with respect to a subsequent application ﬁled in a foreign country if the ﬁrst ﬁled foreign application has been withdrawn, abandoned, or otherwise disposed of without leaving any rights outstanding. A similar change would be made in section 1126(d) of title 15. United States Code, which pertains to the revision of trademarks.

The amendments to our patent and trademark laws suggested by this bill closely follow the substance of subparagraph 4 of article 4C of the Convention of Paris as revised at Lisbon on October 31, 1958.

BACKGROUND OF CONVENTION OF PARIS

The committee wishes to point out that the Paris Convention----an international treaty----has reciprocal provisions, and American inventions are entitled to similar privileges when applications for them are made in foreign countries. The convention, to which the United States is a party, applies to some 50 countries. These include all the countries of Europe except Russia, Albania, and Andorra; other members are Canada, Mexico, Cuba, Brazil, the United Arab Republic, Morocco, Union of South Africa, Israel, Turkey, Japan, Australia, New Zealand, and others. The treaty was ﬁrst formed in 1883 and started with about a dozen countries. The United States adhered in 1887. Since 1883, the convention or treaty has been revised at diplomatic conferences in 1900 (Brussels), 1911 (Washington), 1925 (The Hague), 1934 (London), and most recently in 1958 (Lisbon). Since each of these revisions is in effect a new treaty, each must go through the usual ratiﬁcation procedures to come into effect, although most of the provisions of one revision are similar provisions of the preceding one. At the diplomatic conference at Lisbon in 1958 delegates from 40 member countries were present as well as delegates from 8 nonmember countries who were present as observers. Article 19 of the new treaty provides that it comes into force on June 1, 1963, between those countries which have by then ratiﬁed it and deposited the instruments of ratiﬁcation with the Swiss Government. However, if at least six countries have ratiﬁed the treaty and deposited the ratiﬁcation before that date, it will come into force earlier.

The U.S. Senate last year approved a resolution advising and consenting to the ratiﬁcation of the instant revision of the Paris Convention. The convention or treaty by its terms is not self--executing, however, and the Senate was advised by the Secretary of State that the ratiﬁcation of the United States would not be deposited with the Swiss Government (which is needed for it to become effective) until after the instant legislation making the necessary changes in our domestic patent and trademark laws was enacted.

While the revision of Lisbon contains various changes over the earlier treaty, it so happens that with one exception all of the changes made are in consonance with U.S. law, and changes in our Federal

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statutes are not necessary. The only new provision in the revised treaty which needs speciﬁc changes in our patent and trademark laws to harmonize these laws with the revision in a change relating to the so--called right of priority, which is the purpose of the instant bill and which is explained earlier in this report.

The committee, after a review of the foregoing, concurs in the action of the House of Representatives and recommends that the bill, H.R. 5754, be considered favorably.

THE SECRETARY OF COMMERCE.

Washington, D.C., March 17, 1961.

Hon. EMANUEL CELLER. Chairman, Committee on the Judiciary, House of Representatives, Washington. D.C.

DEAR Mr. CHAIRMAN: On January 17, 1961, before the present administration took office, the Department of Commerce submitted to the 87th Congress for introduction the following item of draft legislation to carry into effect a provision of the Convention of Paris for the Protection of Industrial Property as revised at Lisbon, Portugal, October 31, 1958.

The draft legislation was referred to your committee for consideration on January 18, 1961, by Executive Communication No. 367 but has not as yet been introduced.

You are advised that the Department has reexamined this item and we continue to support its enactment and urge that it be introduced.

The Bureau of the Budget has advised that there is no objection from the standpoint of the administration's program to our continued support of this draft legislation.

Sincerely yours, LUTHER H. HODGES

Secretary of Commerce.

STATEMENT OF NEED FOR AND PURPOSE OF PROPOSED LEGISLATION

The International Convention for the Protection of Industrial Property, to which the United States has been a party since 1887, was revised on October 31, 1958, and the new convention has been submitted for ratiﬁcation by the Senate (Congressional Record, Feb. 17, 1960, pp. 2529--2530). This convention is not self--executing and legislation would be required to carry into effect any provisions not already in our present law. Article 17 of the new convention also requires that the time an instrument of ratiﬁcation is deposited the country must be in a position under its domestic law to give effect to its terms.

The revised convention makes quite a number of changes in detail over the previous revision of the instrument. However, most of these changes are already provided for or taken care of in one way or another by existing law in the United States. There is one change which would require a speciﬁc amendment to the statutes. This is new paragraph 4 which has been added to article 4C of the convention, relating to the right of priority.

According to article 4 of the convention, if a person has regularly ﬁled an application for a patent in one country and thereafter within 1 year ﬁles another application for patent for the same invention in

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another country, the second applications given as an effective ﬁling date the date of ﬁling the ﬁrst application; in effect, the ﬁling of an application for patent in one country constitutes a constructive ﬁling of applications for patent for the same invention in all the other countries on the same date, which constructive ﬁling is made actual in a particular country by the ﬁling of a formal application in that country within 1 year of the date of ﬁling of the ﬁrst application. The period of priority is speciﬁed in article 4C as 1 year from the date of ﬁling of the ﬁrst application in the case of patent applications and 6 months in the case of trademark applications. This provision of the convention is enacted in title 35, United States Code, section 119, in the case of patent applications and in title 15, United States Code, section 1126(d) in the case of trademark applications.

The revision of article 4C of the convention provides that under certain exceptional circumstances the period of 1 year for the right of priority may start from a second or later ﬁled application, instead of from the ﬁling date of the ﬁrst foreign application. The conditions under which this may be done are somewhat limited but the provision would be an advantage to American citizens ﬁling abroad in some cases. Inasmuch as title 35, United States Code, section 119, and title 15, United States Code, section 1126(d), are both limited in language to the ﬁrst foreign application, an amendment to these two section is necessary. The proposed form of the amendment is merely the addition of a paragraph to the two sections mentioned, in language paralleling the language of the treaty.

DEPARTMENT OF STATE,

Washington, May 16, 1961.

Hon. EMANUEL CELLER, Chairman, Committee on the Judiciary. House of Representatives.

DEAR Mr. CHAIRMAN: In your letter of April 28, 1961, you advise the Department that Subcommittee No. 3 will conduct public hearings, May 18, 1961, on a bill (H.R. 5574) to carry into effect a provision of the Convention of Paris for the Protection of Industrial Property as revised at Lisbon, Portugal, October 31, 1958, and suggest the submission of a statement for the record, if the Department does not plan to send a representative to testify.

The Department appreciates the invitation to provide a representative at these hearings to acquaint the subcommittee with its views on the bill. Although it does not plan to have a representative testify, the Department is strongly in favor of the bill and has prepared a statement for inclusion in the record supporting its enactment. The statement is enclosed.

Sincerely yours. BROOKS HAYS.

Assistant Secretary

(For the Secretary of State).

DEPARTMENT OF STATE STATEMENT ON H.R. 5754

The Convention of Paris for the Protection of Industrial Property, to which H.R. 5754 pertains, is the major intergovernmental instrument assuring protection abroad of industrial property rights of U.S. nationals (patents, trade

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marks, designs, commercial names, and related rights). The Department also considers this convention the most effective mechanism for insuring continuing and sound cooperative relations with other countries in the industrial property rights ﬁeld. The convention is based on two important principles: namely ''national treatment'' and the extension of special rights or advantages. Under the ''national treatment'' principle each member country is required to extend to nationals of other member countries the same protection and rights which it grants to its own nationals in this ﬁeld. Under the second principle each country is required to provide certain rights or special advantages for other members' nationals. One of the most important of these rights is the right of priority for foreign patent and trademark applicants. H.R. 5754 deals speciﬁcally with implementation of these right--of--priority provision in the United States.

This convention, to which the United States and approximately 50 other countries are parties, was originally adopted in 1883 and was revised 4 times (1900, 1911, 1925, and 1934) prior to the revision adopted at Lisbon in 1958. The changes which have been made over the years in these four revisions have strengthened and made more effective the patent and trademark protection afforded nationals of the member countries. The United States became a party to the original convention and these four subsequent revisions. The Lisbon revision is not yet in force as between any countries. The Department believes, however, that this new revision is particularly signiﬁcant and merits this Government's strong support because of the far--reaching improvements which it has provided for in the international industrial property ﬁeld. One of the most important of these improvements relates to the establishment of machinery for interim meetings by the member governments between diplomatic conferences of revision to enable them to study and discuss more frequently than in the past problems arising under the convention. In this connection, the revised convention includes a provision for regular triennial meetings of representatives of the member governments. Signiﬁcant changes have also been effected by the Lisbon revision through a rewriting of the basic provisions in the convention concerning the protection of trademarks. These have been rewritten in such a way so as to increase substantially the protection accorded for the trademark rights of nationals of member countries. Also for the ﬁrst time speciﬁc reference to the protection of trademarks associated with services, as distinct from those used to identify goods, has been provided for in the new convention revision.

The Lisbon revision of the convention was transmitted to the Senate by the President on February 17, 1960 (S. Doc. Ex. D. 86th Cong., 2d sess.) and received the Senate's advice and consent to ratiﬁcation on August 17, 1960. This new revision received strong support of the department in

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testimony by Assistant Secretary of State for Economic Affairs, Mr. Edwin M. Martin, before the Senate Foreign Relations Committee, June 21, 1960. Leading business and professional groups in the United States interested in the industrial property rights ﬁeld, such as the National Foreign Trade Council, the U.S. Council of the International Chamber of Commerce, and the patent and Trademark Section of the American Bar Association, also wholeheartedly endorsed this new revision. In fact, the Department is not aware of any business or professional group that is opposed to the United States becoming a party to this latest revision. Under the terms of article 17 of the Lisbon revision, this revision is not self--executing: that is, its ratiﬁcation would not be itself modify our domestic law. This article speciﬁes that at the time a country deposits its instrument of ratiﬁcation it must be in a position under domestic law to give effect to the convention's terms. Most of the changes embodied in the new revision do not require amendments to U.S. statutes since such changes are already consonant with our law. Only minor changes will be needed in the right of priority provisions of our patent and trademark laws in order fully to implement the now convention. These changes would be effected with the enactment of H.R. 5754. The United States, therefore, will not be able to deposit its instrument of ratiﬁcation until after enactment of the legislation embodied in H.R. 5754 which is designed to make these necessary changes in our patent and trademark laws.

The Department accordingly is strongly in favor of the enactment of H.R. 5754 at an early date since the legislation which it embodies is essential for ratiﬁcation of the revised Convention and its entry into force as between the United States and other countries. Also, U.S. participation in the new revision will insure that our relations with the other member countries will continue on a sound basis in this important area of our foreign economic policy relating to the protection of industrial property rights. For these reasons the Department is strongly convinced that enactment of H.R. 5754 is most desirable and that it will be in the public interest by fully implementing under our present laws the Industrial Property Convention as revised at Lisbon.

[Changes in existing law section OMITTED]

93d Congress, 1st Session

IN THE HOUSE OF REPRESENTATIVES

MAY 8, 1973

Mr. KASTENMEIER introduced the following bill; which was referred to the Committee on the Judiciary

A BILL

To amend the Trademark Act of 1946 and title 35 of the United States Code to change the name of the Patent Office to the ''Patent and Trademark Office''.