Although, under § 4884, Rev.Stat., a patent is for seventeen
years, under the provision of § 4887, Rev.Stat., as it has been
judicially construed, the American patent granted for an invention
previously patented in another country is limited by law, whether
so expressed in the patent itself or not, to expire with the
foreign patent previously granted having the shortest term.
Section 4887, Rev.Stat., limiting patents to the period of the
same patent previously granted by a foreign country, if any, has
not been superseded by Article 4
bis of the Treaty of
Brussels of 1900.
A most essential attribute of a patent is the term of its
duration, which is necessarily fixed by local law, and the Treaty
of Brussels will not be construed as breaking down provisions of
the local law regulating the issuing of the patent.
Page 227 U. S. 40
The Act of 1903 effectuating the provision of the Brussels
Treaty, as construed in the light of surrounding circumstances and
of similar legislation in other countries, did not extend an
American patent beyond the period prescribed by § 4887,
Rev.Stat.
The Brussels Treaty of 1900 should be construed in accordance
with the declaration of the Congress at which it was framed and
adopted at the instance of the American delegates, and it was the
sense of the Congress of the United States that the treaty was not
elf-executing.
The Act of 1903 did not make Article 4
bis of the
Treaty of Brussels effective or override the provision of § 4887,
Rev.Stat.
The facts, which involve the construction of §§ 4884 and 4887,
Rev.Stat., as affected by the Treaty of Brussels of 1900 and the
effect of prior patents in foreign countries on the duration of an
American patent, are stated in the opinion.
MR. JUSTICE McKENNA delivered the opinion of the Court.
A bill in equity was brought by appellant as successor to the
rights of an invention patented under United States letters patent
to Edwin Cameron
et al. for a process and an apparatus for
treating sewage, No. 634,423, dated October 3, 1899. The bill
contained the usual allegations and prayed for an injunction to
restrain appellee from the use of the invention. Appellee filed a
plea to the bill in which it alleged that the invention had been
previously patented in Great Britain by letters patent dated
November 8, 1895, and that that patent had expired on or before the
8th day of November, 1909, being the expiration of
Page 227 U. S. 41
the term for which it was granted, and that therefore the United
States patent expired and became terminated by law, and it being
stipulated that the bill should be considered as filed as of that
date, and as the bill was not filed with the purpose or intention
of applying for or obtaining an injunction before the expiration of
the British patent, no injunctive or equitable relief could be had.
A dismissal of the bill was therefore prayed. The decree of the
court recited the facts of the plea and adjudged that the patent
had expired as therein alleged, and that its expiration was not
prevented
"by any effect of the treaty of Brussels of December 14, 1900,
which treaty and the construction thereof was drawn in question on
the plea in this cause;"
and that therefore the court was without jurisdiction, the
complainant having a plain and adequate remedy at law. This appeal
was then prosecuted under § 5 of the Circuit Court of Appeals Act,
26 Stat. 826, c. 517.
The single question here is whether the United States patent
expired with the British patent according to the laws which existed
when it was issued, or whether its existence was preserved by the
treaty of Brussels.
At the time the patent was issued, § 4884, Revised Statutes,
made the term of a patent seventeen years, and by § 4887 it was
provided that the receiving of a foreign patent did not prevent the
granting of a United States patent. It was, however, provided
that
"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."
The section coming up for judicial consideration, it was decided
that it assumed that the foreign patent previously granted was one
granted for a definite term, that the United States patent should
expire with that
Page 227 U. S. 42
term, and that it was not to be limited by any lapsing or
forfeiture of any portion of the term of the foreign patent, by
means of the operation of a condition subsequent, according to the
foreign statute.
Pohl v. Anchor Brewing Co., 134 U.
S. 381,
134 U. S. 386.
And it was held that the American patent is limited by law, whether
it is so expressed or not in the patent itself, to expire with the
foreign patent having the shortest term.
Bate Refrigerating Co.
v. Hammond, 129 U. S. 151,
129 U. S. 167;
Bate Refrigerating Co. v. Sulzberger, 157 U.
S. 43;
Leeds & Catlin Co. v. Victor Co.,
213 U. S. 301,
213 U. S. 325.
Appellee contends that these decisions and the cited sections of
the Revised Statutes constituted the law of the United States
patent to Cameron, and caused it to terminate with the expiration
of the term of the British patent. The argument is that it was
granted not for seventeen years, but for a term to be measured by
that of the foreign patent, enduring the full term for which the
latter was granted, but no longer, though on its face it was to run
seventeen years. The appellant, opposing the contention, insists
that the treaty of Brussels has superseded § 4887, and has freed
the Cameron patent from subjection to the provisions of that
section. It is the effect of the contention that, though the patent
was issued for a definite term, as decided by the cited cases, the
term was enlarged by the treaty.
Appellant candidly admits that there are cases adverse to its
contention, but seeks to limit their strength of persuasion or
authority to one only, and to that one opposes the reasoning and
precedent of another. The cases so put in opposition are
United
Shoe Machinery Co. v. Duplessis Shoe Machinery Co., 155 F.
842, decided by the Circuit Court of Appeals of the First Circuit
against the effect of the treaty contended for, and
Hennebique
Construction Co. v. Myers, 172 F. 869, decided by the Circuit
Court of Appeals of the Third Circuit,
Page 227 U. S. 43
which is asserted to be the other way. But the cases do not
present the antagonistic authority of two courts. Judge Archbald,
whose views in the latter case are relied on by appellant, stated
in a subsequent one (
Union Typewriter Co. v. Smith, 173 F.
288, 299) that this opinion was not that of the court.
The other cases in which the Brussels treaty was considered, and
in which it was decided that it did not enlarge the term of an
American patent beyond the term of a foreign patent for the same
invention, are the following:
Malignani v. Hill-Wright Electric
Co., 177 F. 430;
Malignani et al. v. Jasper Marsh Consol.
Elec, Lamp Co., 180 F. 442;
Commercial Acet. Co. v.
Searchlight Gas Co., 197 F. 918. Appellant contends, as we
have seen, that these cases do not express independent views, but
follow
United Shoe Machinery Co. v. Duplessis Shoe Machinery
Co. as authority. This is not true to the extent contended. In
the first two cases, an independent judgment was expressed. In the
third case (197 F. 918), it was said of
United Shoe Machinery
Co. v. Duplessis Shoe Machinery Co. that it was "well
considered and very persuasive," and was "deemed to be the correct
expression of the law for the purpose" of the hearing. Judicial
opinion must therefore be ranged against appellant's contention,
and is persuasive at least, of its unsoundness.
Appellant, however, relies on the words of the treaty, which, it
is insisted, have no ambiguity whatever, and which, it is
contended, by the proclamation of the President of September 14,
1902, because the "
supreme law of the land.'" The provision
relied on reads as follows:
"Art. 4
bis. Patents applied for in the different
contracting states, by persons admitted to the benefit of the
convention under the terms of articles 2 and 3, shall be
independent of the patent obtained for the same invention in the
other states, adherents or nonadherents to the Union. "
Page 227 U. S. 44
"This provision shall apply to patents existing at the time of
its going into effect."
"The same rule applies, in the case of adhesion of new states,
to patents already existing on both sides at the time of the
adhesion."
32 Stat.1940.
The Cameron patent existed at the time the treaty went into
effect, and the British patent by which it was limited was a patent
obtained in one of the states adhering to the treaty, namely, Great
Britain. It is hence contended that all of the conditions necessary
to the application of the treaty to the Cameron patent existed, and
the limitation of its term to that of the British patent, as
provided by law at the time it was issued, was removed, that law
being repealed by the treaty, which, it is contended further, was
self-executing, and the patent became a grant for seventeen years.
Two propositions are involved in the contentions: (1) that the
treaty applies to the Cameron patent; (2) that the treaty is
self-executing. If either proposition be erroneous, appellant's
contentions are untenable.
To say that the text of the treaty is without ambiguity does not
carry us far. All of the conditions of a patent are not expressed
in it, and, when these are considered, construction is demanded and
must be exercised. What is meant by the independence of a patent
for the same invention in different states? It certainly was not
intended to break down all of the provisions of law applicable to a
patent -- in other words, to interfere with the manner of its grant
-- and, it would seem, by necessary implication, the extent of its
grant as provided by the local law. A most essential attribute of a
patent is the term of its duration, which is necessarily fixed and
determined by the local law. And what difference in principle or
effect is there if the term be expressed directly by a number of
years or by something else, as a foreign patent which has a certain
duration? The patent is no
Page 227 U. S. 45
more contingent in one case than in the other. It is complete in
both cases at the moment it is issued. In both cases, its term has
certain definition given by the local law. And this is the
declaration of the cases, and that the integrity of its term and
its independence were not affected by subsequent conditions which
might terminate the foreign patent.
But it is contended that so to confine the treaty is to deprive
it of significance and force because the decisions of this Court
had given to patents such independence.
Pohl v. Anchor Brewing
Co., 134 U. S. 381. The
answer is not sufficient. It might have been thought worthwhile to
give conventional sanction to the judicial construction, and make
it applicable to the adhering states whose laws were not uniform,
and it is certain that there was an immediate demand of the
American delegates so to qualify the provision that it should not
extend the term of the monopoly of the patent beyond that which was
given by the law under which the patent had been issued.
The details of the Conference are set out in
Hennebique
Constr. Co. v. Myers, supra. It appears that Mr. Forbes, one
of the American delegates, pointed out that, if article 4
bis could be interpreted as applying to patents already
issued, which he said it might be, it would encounter opposition in
the United States, and he inquired whether it could not be made the
subject of a special protocol. A view was expressed that the
article would not produce the apprehended effect, but Mr. Forbes
insisted on the necessity of stating the point precisely in order
to avoid error of interpretation. After debate, in which different
views were expressed, the director of the International Bureau
suggested the following amendment:
"This provision shall apply to patents in existence at the time
of its being put into force. Its effects are, however, limited to
nullities and lapses which
Page 227 U. S. 46
would affect anterior patents."
The amendment was not adopted, but, following the suggestion of
Mr. Bellamy Storer, one of the delegates from the United States,
the president
"put to vote the adoption of the text previously adopted for
article 4
bis, with the interpretation which the American
delegation desired to specifically point out, by proposing to
complete the second paragraph by supplementing this explanatory
clause: 'However, the term fixed by the initial law of each country
remains intact.' Article 4
bis is definitely adopted with
this condition."
It is, however, urged that the delegate from Great Britain said
that he "could only take the indicated act of interpretation as a
declaration of the American delegation, and not as a decision of
the Conference." The proceedings, however, show that the Conference
adopted the whole of the first final protocol prepared by the
committee on reports.
Certain subjects were not disposed of by the Conference, but
postponed with the comment that "after the exchange of views
through diplomatic channels," the Conference would "reassemble anew
in the Belgian Capital in order to finish its work."
The American delegates reported to the Secretary of State their
understanding of the meaning of article 4
bis and
interpretation which had been given it by the Conference. The
unanimous sanction of the Conference, they said, was that the
second paragraph of article 4
bis, which reads: "This
provision shall apply to all patents existing at the time of its
entering into force," was not applicable to existing United States
patents, but only to those patents whose terms might be shortened
by the laws of those states of the Union [for the Protection of
Industrial Property] in which provision was made for the shortening
of the term on the lapsing of patents for the same invention in
other states. Existing United States patents, they further
reported, could not be affected by what might take place
Page 227 U. S. 47
in regard to a foreign patent, their terms having been
determined by § 4887 at the moment they were issued, and that
therefore their duration was unaffected by the subsequent
expiration of a foreign patent for the same invention by reason of
nonpayment of taxes or nonworking.
There was a second session of the Conference in December, 1900.
Article 4
bis was not further debated. There was some
reference to it as one of three arrangements "concerning
retroactivity." Appellant hence insists that, having that quality,
the article necessarily applied to existing patents, and was a
"plain and simple retroactive ending of the former dependence of
existing patents upon the running of the terms allowed to foreign
patents." To confine the provision, it is contended further, to
"mere future contingencies that might befall patents would be
prospective, and not
retroactive.'" In aid of these
contentions, it is urged that the American delegates, two of whom
were new, made no objection to the declaration of the retroactivity
of article 4 bis, and that no limiting protocol was
annexed to the treaty when it was finally adopted at Brussels in
1900, and that the article was ratified by the Senate and
proclaimed by the President without qualifying it. The
considerations have strength, but there are opposing ones. The
second session of the Conference was a continuation of the first.
The American delegates had secured an interpretation of article 4
bis. It could be accepted by them as final and definite.
There was no challenge of it by ascribing retroactivity to article
4 bis, for that article was recognized to have such
effect, but not to extend the term of a patent fixed by the initial
law. Future contingencies, as said by appellant, would, of course,
be prospective, but whether patents existing at the time of the
treaty should be subject to them or independent of them was
retroactive.
The action of Congress must be taken into account in estimating
appellant's contentions. In
United Shoe
Page 227 U. S. 48
Machinery Co. v. Duplessis Shoe Machinery Co., supra,
it was made determinative, and the court decided that what
construction should be put on article 4
bis, and what rule
should apply as to its becoming effective, became academic
questions in view of the provisions of the Act of Congress of 1903,
entitled, "An Act to Effectuate the Provisions of the Additional
Act of the International Convention for the Protection of
Industrial Property." The Act of 1903 was preceded by -- and
probably induced by -- a letter which the Charge d'Affaires of
Switzerland addressed to the Secretary of State. The letter was
prompted, according to its representations, by the embarrassment to
which the International Bureau was subjected on account of the
uncertainty of the action of the United States in regard to the
additional Act of Brussels of December 14, 1900, the treaty being
so designated. It referred to the Convention of March 20, 1883, and
the approval by the Senate of that Convention in 1887, but it
stated "that Congress had not brought into the federal law the
changes required to make it consonant with the Convention," and
that,
"according to the opinion rendered by Attorney General Miller in
1889, American courts have consistently decided that the Convention
of 1883 could not be enforced in the United States except so far as
it accorded with the law of the country."
The opinion was expressed that the difficulties attending this
condition of things were not so great as they would have been in
some other country, but it was said, however, that the
circumstances had changed since the additional act of Brussels went
into effect. One of the most important of its provisions, it was
said, was that which amends Article 4 of the Convention of 1883,
extending to one year the priority of six months during which the
original applicant for a patent in one of the states of the Union
may validly file an application for the same invention in the other
contracting states. After some comment on the priority
Page 227 U. S. 49
period, the letter proceeded as follows:
"The Bureau is placed in an awkward situation. On the one hand,
it cannot say that the United States will not enforce the
additional act it has ratified and has asked should go into effect.
On the other hand, it is without information that the bills
relative to industrial property that have been framed in the
committee organized under the Act of June 4, 1898, have been passed
by Congress, and it is constrained to admit that, according to
judicial precedents, the new treaty provisions could not be
enforced until the corresponding legislation shall have been
revised."
The required legislation was urged.
The Secretary of State replied to the letter, describing it as
"in regard to the provisions of the Industrial Property Convention
of March 20, 1883, and the Brussels act of December 14, 1900,
modifying it," and said that he was advised by the Secretary of the
Interior that he had prepared a bill "to make effective in this
country the Convention and modifying act in question."
The Act of 1903 was then enacted, and if there could be any
doubt that it expressed the sense of Congress and those concerned
with the treaty that it required legislation to become effective,
such doubt would be entirely removed by the legislative action of
other states. It appears from the report of the committee on
patents of the Senate and of the House of Representatives on the
proposed legislation that thirteen countries had adopted
legislation giving full force and effect to the provisions of the
additional act, either in the form of a general law or by specific
amendment to other laws providing for carrying into force the
provisions of the additional act as regards the extension of the
"delay and priority" to twelve months. Other countries were
mentioned as being expected to do so. In explaining the object of
the bill, the member in charge of it in the House of
Representatives said that it was to carry into effect the
additional act of the Convention held at
Page 227 U. S. 50
Brussels in December, 1900, and further, that the additional act
agreed upon simply extended the period of priority in applications
for patents, and that it did not "extend by a single instant the
life of any patent now in existence, or any patent that may be
granted hereafter." He further said that nearly all of the nations
which were represented at Brussels had already passed legislation
to give force to the act, and that it was but fair that this
country should take similar action.
An attempt is made by appellant to distinguish between article 4
bis and the provisions of the treaty expressly dealt with
by Congress, and to assign to that article a more distinct and
definite power of execution than the other provisions possess. To
account thereby for this omission from the Act of 1903, it is urged
that those provisions concern matters of administrative law which
might be or thought to be in conflict with statutory provisions,
whereas article 4
bis accomplished all that it could
accomplish the instant the treaty went into effect, and there was
nothing further to be done as a matter of administrative law. We
are unable to accept the distinction, and appellant is therefore
brought to this alternative. If the treaty be construed as we think
it must be construed, in accordance with the declaration of the
Conference at the instance of the American delegates, it has no
application to the Cameron patent. If it be not self-executing, as
it is certainly the sense of Congress that it was not, and seems
also to be the sense of some of the other contracting nations, and
as the Act of 1903 did not make effective article 4
bis,
the provisions of § 4887 apply to the Cameron patent, and caused it
to expire with the British patent for the same invention.
Decree affirmed.