Patent and Trade Mark Review

MALIGNANI et al. v. JASPER MARSH CONSOL. ELECTRIC LAMP CO.
(Circuit Court, D Massachusetts. July 19, 1910.)

No. 223.

PATENTS (132)-TERM-EFFECT OF TREATY.

Article 4 bis provided by the International Convention for the protection of Industrial Property of December 14. 1900, at Brussels, ratified by the United States Senate, and proclaimed by the President to take effect September 14, 1902 (President's Proclamation Dec. 14, 1900, 32 Stat. 1940), did not repeal the limitation of a United States patent to the term of a previous foreign patent for the same invention.

In Equity. Bill by Arturo Malignani and another against the Jasper Marsh Consolidated Electric Lamp Company. Decree for complainant.

RICHARD N. DYER, for complainants.

A. PARKER-SMITH, for defendant.

BROWN, District Judge. The patent to Malignani, No. 537,693, dated April 16, 1895, is for a process for evacuating incandescent lamps. The patent has been sustained by the Circuit Court for the District of New Jersey, in Malignani v. Germania Electric Lamp Co., 169 Fed. 299, and by the Circuit Court for the Southern District of New York in Malignani et al. v. Hill-Wright Electric Co., 177 Fed. 430.

In the latter opinion it was held that the Malignani patent expired March 31, 1909, by reason of the expiration on that date of the term of a prior Italian patent to Malignani.

It was contended that by "article 4 bis" provided by the International Convention for the Protection of Industrial Property of December 14, 1900, at Brussels, ratified by the United States Senate and proclaimed by the President to take effect September 14, 1902, the limitation of the United States patent by the expiration of the Italian patent was repealed. President's Proclamation, Dec. 14, 1900, 32 Stat. 1940. This contention was overruled; the court following the decision of the Circuit Court of Appeals for the First Circuit in United Shoe Co. v. Duplessis Shoe Co., 155 Fed. 842, 84 C. C. A. 76, and stating that it did not feel bound to follow the contrary conclusion as to the effect of article 4 bis expressed in the opinion of Judge Archbald in Hennebique Construction Co. v. Myers, 172 Fed. 859, 97 C. C. A. 289. See, also, Union Typewriter Co. v. L. C. Smith (C. C.) 173 Fed. 288.

The complainants have filed a special brief of 95 pages relating to the question of the limitation of the term of the patent in suit. I have carefully examined this brief, but find in it no sufficient reason to justify this court in declining to follow the decision of the Circuit Court of Appeals for this circuit.

The complainants in this brief cite the opinion of the Supreme Court in French Republic v. Saratoga Vichy Co., 191 U. S. 427, 24 Sup. Ct. 145, 48 L. Ed. 247, as containing no intimation that the treaty was not self-executory. That case, however, though cited to this special point, seems on the whole against the complainants, for the court construed the special provision concerning the commercial name or trade-mark in connection with article II of the treaty (25 Stat. 1375), saying:

"That article was evidently designed merely to protect the citizens of other countries in their right to a trade-mark or commercial name, and their right to

3370 UNITED STATES PRACTICE.—-ADJUDICATED PATENTS.

sue in the courts of this country, as if they were citizens of the United States. It could never have been intended to put them on a more favorable footing than our own citizens, or to exempt them from the ordinary defenses that might be made by the party prosecuting.

"This is made the more apparent from article II of the treaty, which reads as follows: The subjects or citizens of each of the contracting states shall enjoy, in all the other states of the Union, so far as concerns patents for inventions, trade or commercial marks, and the commercial name, the advantages that the respective laws thereof at present accord, or shall afterwards accord to citizens or subjects. In consequence they shall have the same protection as these latter, and the same legal recourse against all infringements of their rights, under reserve of complying with the formalities and conditions imposed upon subjects or citizens by the domestic legislation of each state.'

"If there were any doubt about the rights of the plaintiffs under the eighth article, they are completely removed by the wording of the second. The rights of the French Republic are the same, and no greater under this article than those of the United States would be."

Section 4887, Rev. St. (U. S. Comp. St. 1901, p. 3382), as it stood at the time of the grant of letters patent to Malignani, limited every United States patent to expire at the same time with a previous foreign patent for the same invention. It made no discrimination between American and foreign inventors in this respect. It applied as well to a citizen of the United States who first patented his invention in a foreign country as to a citizen of a foreign state who' first patented his invention in a foreign country.

It was no part of the scheme of the treaty to enlarge the terms of United States patents granted to citizens of the United States.

To give to article 4 bis the effect of enlarging the terms of United States patents granted to citizens of foreign states, without enlarging the terms of United States patents granted to citizens of the United States, would put citizens of other countries on a more favorable footing than our own citizens. This would directly conflict with the terms of article II, and with the rule of construction applied in French Republic v. Saratoga Vichy Co., 191 U. S. 427, 24 Sup. Ct. 145, 48 L. Ed. 247.

To avoid this inequality by holding that the treaty so changed the domestic law as to enlarge also the terms of grants of United States patents to citizens of the United States would raise a question of the constitutional power of the President and Senate, even if the power to admit citizens of foreign states to equal rights with citizens of the United States be conceded. Opinion of W. H. H. Miller, Atty. Genl., 47 O. G. 397.

Construing article 4 bis with article II, it seems to have no proper application to a statute which is a part of the domestic law concerning the terms of United States patents, affording equal legal rights to citizens of foreign countries and to citizens of the United States.

We must conclude, therefore, that the patent in suit expired on March 31, 1909.

The Parmenter patent, No. 781,455, for a cigar-pocket, Held void for prior public use and sale of the patented article for more than two years prior to the application. Dittgen v. Racine Paper Goods Co., (C. C.,) 181 Fed. Rep., 394.

The D'Arcy patent, No. 785.410, claim 2, for a device for securing spiral springs to a wire frame in spring structures, Held valid, but not infringed. Jackson Cushion Spring Co. v. D'Arcy, (C. C. A.,) 181 Fed. Rep., 340.

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