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The Paris Convention

Historical Development of assimilated intellectual property laws

Originally patents had been granted as a privilege of a sovereign for introducing a invention. A privilege however implied that inventors had no legal means to request to be treated equally to an inventor who had been granted such a privilege on another occasion. By the 16th century, the English Crown would habitually abuse the granting of letters patent for monopolies rather for increasing the Crowns income than for promoting innovation.

A Groom of the Chamber received from Queen Elizabeth a monopoly on importing and selling playing cards in England. Edward Darcey obviously used this opportunity to enrich himself. The judgment of the Queen's Bench court, rendered after the Queens death in 1603, stated that the Queen was deceived by Edward Darcey that this arrangement would regulate the increasing card-playing activities of her subjects. In fact, Queen Elizabeth particularly was known for issuing patents for common commodities such as starch, salt and vinegar as a way to raise money by charging patent-holders without having to incur the public unpopularity of a tax. After public outcry, King James I of England (VI of Scotland) was forced to revoke all existing monopolies and declare that they were only to be used for "projects of new invention". This was incorporated into the Statute of Monopolies (1624) in which Parliament restricted the Crown's power explicitly so that the King could only issue letters patent to the inventors or introducers of original inventions for a fixed number of years.

With a strong patent system in place England attracted foreign inventors who left their country, in which such protection did not exist, to exploit their inventions in England and benefit from a temporary monopoly for their inventions in England. Several states therefore succumbed to introduce patent laws, sometimes, as in Prussia only to protect their citizens and not to grant the same right to a foreigner. With increasing free trade it became obvious that a patent system was a handicap for countries with patent legislation in relation to those without. [2]

The Glass Palace of the Great Exhibition in London 1851

Between 1798 and 1849 the French State organized eleven industrial expositions in Paris to offer a panorama of the productions of the various branches of industry with a view to emulation. These exhibitions were open for foreign visitors, but only products of French origin were allowed to be shown. The prime motive of the Great Exhibition of the Works of Industry of All Nations in London in 1851 was for Britain to make clear to the world its role as industrial leader

In preparation of the Great Exhibition also the risks of such an exhibition were uttered. "At various public meetings which were held all over the country it was a constant question by artisans and others how, under the existing patent laws, they could exhibit their inventions without forfeiting protection to the fruit of their talent and skill" [3]

In order to tackle the problem that design or patent protection may have not been secured in advance to the exhibition, and therfore were vulnerable to piracy, the Parlament adopted two laws to this effect, limited for the Great Exhibition

• The Designs Act, 1850
• The Protection of Inventions Act, 1851

In response to the raising critiques that "The Great Exhibition" may disadvantage the national exhibitors as it may increase the threat of piracy and fraudulent imitation, the English Parliament adopted an act to extend and amend the acts relating to the copyright of designs. This act introduced as a key point the possibility to file a provisional design application with minimal formal requirements. Based on this provisional application the proprietor could file a regular design applciation within a year of the filing date of the provisional application. Within this year specific actions of the applicant, such as publication, sale or exposure for sale of his product did not void the later regular design application. The Act for the Protection of Inventions intrduced the same concept for inventions.

This seems to be the first time that a design or patent law granted provisional protection for designs or inventions publicly exhibited. With this certificate the designer or inventor could file a provisional application, which within a year could be transformed into a regular patent (see: grace period).

In 1862 the president of the Liverpool Chamber of Commerce, Robert Macfie proposed a plan for a Patent Union to help standardize patent legislation in different countries. It may be unknown forever if Robert Macfie was inspired by the idea of a Universal Postal Union proposed by the German economist Johann von Herrfeldt around 1841/1842, which eventually was established by the Treaty of Bern of 1874, nine years prior to the signatures of the Paris Convention. In any case, the Union for the protection of industrial property, as the Paris Convention is called, can claim to be among one of the first international treaties.

As a result of the British debate for the standardization of national legislation, the Parliamentary Select Committee on Patents declared itself in favour of an assimilation of national laws. [4]

Rotunde of the Vienna World fair in 1873

The next pivotal event for progressing in the assimilation of national patent and trademark laws was the Vienna World's Fair in 1873. The Vienna World's Fair in 1873 was overshadowed by the United States’ threat to boycott the World fair as the US felt that the current laws in Austria put them at disadvantage in Austria. The particular complaint which was made about the Austrian law, was the requirement that the manufacture of a patented article should commence within the Austro - Hungarian Empire within one year from the grant of a patent. Bureaucratic delays within the Empire were identified as a significant obstacle to this working requirement [4]. In an attempt of adjustment of differences, the Austrian-Hungarian Government published on 28 November 1872 a law, that entitled every ehibitant on their request to a certificate which granted protection for an exhibited invention for the year 1873 free of charge. This certificate could be used to file for a national invention patent, which granted another 1 to 2 years of protection in Austria and could be extended up to 15 years [5]. A translation of this law into the language of the respective State which had confirmed their attendance to the World Exhibition in Vienna [6]. In parallel, as the General director of the Vienna World Exhibition, Baron Wilhelm Freiherr von Schwarz-Senborn mentions in his opening speech, "without appearing to be inmodest" a congress on patent laws was organized on his initative with the blessing of the Austrian-Hungarian Emperor. [7].

Obviously the Exhibition offered a chance to have various congresses on standardization agreements, as for example a unified yarn count [8].

The official language of the international patent congress was German, but after each statement in German a translation at least into English was provided. [9].

The key positions were strongly secured by the “Verein Deutscher Ingenieure” (Association of German Engineers) who’s director Werner von Siemens was a vice-president of the Congress. His brother, William Siemens, presided over the meetings, and Carl Pieper, a patent agent was in charge of the secretariat of the Congress. The Association of German Engineers was a vehement supporter of a standardization of patent laws, as they at the same time were lobbying for an Imperial Patent Law. The German Empire came into existence only two years before the Vienna Congress on patents, in 1871. The various patent laws of the various former German states and micro states, if such laws existed at all, were inhomogenous and sometimes even aribtrarly. Prussia for example set the patent term as a function of the perceived importance of an invention, at the most to three years. After some initial negative experience Werner Siemens did not even bother to file patents in Germany, but filed them in England for example. The proximity to Austria enabled the members of the Association to attend in high numbers.

The Vienna Congress on Patents was a great success for the supporter of an assimilated patent system. Their main sources for an assimilated patent system took into account English, US American, Belgium patent law and the proposals of the Association of German Engineers, as a German Patent law did not exist at the time (but was introduced 4 years later on the insistence of Werner von Siemens and the Association of German Engineers). It totally ignored French patent law, as the French patent law did not provide for patent examiniation. For constitutional reasons, France did not want State authorities to be involved in Patent Examination. There was a mistrust that a state employee would not be able to appreciate an invention and reject too many applications. For the French delegation the examination of novelty and inventive step was reserved for national courts. It was totally the inventors’ risk if he wanted to sue a third party on basis of an unexamined patent application.

Panorama Paris World fair in 1878

Although of limited influence, largely because of its unofficial nature, the Vienna Congress placed patent protection on the international diplomatic agenda and provided a negotiating basis for the more influential Paris Conferences of 1878, 1880 and 1883 [13].The next occasion for a continuation of the Vienna Congress was the next World fair, which took place 1878 in Paris.

With regard to filing a European patent application the Paris Convention is primarily known for granting a priority right for a patent application that has been filed not longer ago than a year before the European patent application

However the Paris Concention grants more right to the residents of the contracting member states than just the priority right:

• Right of national treatment (equal protection of nationals and foreigners)


• Tempory protection for goods shown on specificly announced international exhibitions and trade shows

Founding Members of the Paris Convention

The concept of priority was introduced as an international treaty by the Paris Convention in 1883.

The original version of the Paris Convention fom 1883 consisted of 19 Articles. After it was clear, that it was too complex to agree to common international (or multi-national) laws for intellectual properties, the fathers of the Paris Convention agreed to a minimum common understanding what was at the time the most annoying subjects to be taken care of.

In the original Article 1 of the Paris Convention the founding members are listed and it is stated that the founding members form a Union for the protection of intellectual property:

Signing states of Paris Convention in 1883

The Paris Convention of 1883 primarily comprised provisions for

• the grant of a priority right for patents (Art. 2 - 4);
• (Art. 5);
• "Telle quelle" clause that any trade mark filed in a country of origin in the Union will be protected as it was filed in all the other countries of the Union (Art. 6);
• The protection of tradenames does not require an application (Art. 9);
• Treatment of misleading denomminations (Art. 10);
• (Art. 11)
• Installing in each Union state a centralized service for filing applications and publication of patents, industrial designs and trademarks;
• An International Office to be established in Switzerland (Art. 13) and financed by the member states of the Union;
• Periodic Revisions of the Paris Convention (Art. 14);
• Every state that is not a member of the Union may apply by diplomatic channels to become a member (Art. 16);

States which acceded to Paris Convention in 1883

The USA, who got the ball rolling with their thread to boycott the Vienna trade fair in 1873, was constitutionally unable to accede to the Convention in 1883 because the US Supreme Court had held in 1879 that the Federal Trademarks Acts of 1870 and 1876 were unconstitutional, because legislation on trade marks was beyond the Federal Government’s power to “promote the progress of science and the useful arts”. With a Reservation added the the Paris convention, that that the provisions of the Convention shall not be applicable except within the limits of the constitutional powers of the contracting parties, the USA acceded with effect of 30 May 1887. [22]

"Seemingly contradictory to the fact that German engineers had initially been among the stronger promoters of an international agreement, the German trade associations were ambigious towards the entry into the union." It is argued that this related to the circumstance that the inner structure of the union was modelled after the French patent system [18] In contrast to the Vienna patent congress, where the German and Austrian delegates were in the majority, Germany and Austria had lost their influence in the Paris conference. The German Federal Government instead tried to accomplish their objects by bilateral agreements, which proved to be as not as effective as an international treaty.[19]. One of the key persons for blocking a participation of Germany to the negotiations was obviously Werner von Siemens, who was the main driver for a German Imperial Patent Law. Against the odds that in a new German Reich (founded in 1871) there were more important laws to pass than a unified patent law for the German Reich. The trade-off Werner von Siemens proposed in the draft of the "Patentschutzverein" (Association for Patent Protection) to the Imperial Government to overcome the criticizm of the German supporters of free trade was to grant, to anybody paying a reasonable licence fees a compulsory license, independent whether the inventor was working the invention or not. Only in the first five years the patentee could refuse this license as long as the patentee could provide sufficient domestic use. [19] This was in strong contrast to the French and American belief that the inventor rights should not be curtailed for the lifetime of a patent. Although this request was modified in the parliamentary debate, and a compulsory license was only available if the inventor did not put his invention into use at all, it is comprehensible that Siemens did not want to participate in the negotiations of international accepted minimum requirements of patent law, when such minimum standards may have forced to amend a relatively young German Imperial Patent Law for which he fought so hard, putting at risk that opponents to the the Imperial German Patent Law may use this opportunity to question the usefulness of the patent law once again.

After provisions for a compulsory licence had been introduced to the Paris Convention in the revision conference in Brussels in 1900, Germany finally joined the Union in 1903 and Austria and Hungary in 1909. The Paris Convention, was subsequently revised at Washington in 1911, again at The Hague in 1925, at London in 1934, at Lisbon in 1958 and at Stockholm in 1967, and was amended in 1979.

Any state may join the Paris Convention. The most recent states who submitted their declaration to join the Paris Convention are The Islamic Republic of Afghanistan (2017) and New Zealand (2018). In total there are now 177 Contracting Parties in the Paris Convention (June 2020).

Sources and Remarks

[2] The International Patent Congress in Vienna, 1873 by A. Hildebrant.  [GoogleBooks]

[3] Peter Le Neve Foster, in an Appendix included in the First report of the Royal Commission, Reports by the Juries on the Subjects of the Thirty Classes into which the Exhibition was Divided (London: William Clowes & Sons, 1852), p. 109

[4] The 1883 Paris Convention and the Impossible Unification of Industrial Property [PDF], Gabriel Galvez-Behar

[5] "Der Erfinderschutz und die Reform der Patentgesetze. Amtlicher Bericht über den Internationalen Patent-Congress zur Erörterung der Frage des Patentschutzes", Carl Pieper, Dresden 1873, page 3.

[6] "Der Erfinderschutz und die Reform der Patentgesetze." page 2.

[7] "Der Erfinderschutz und die Reform der Patentgesetze." page 1.

[8] "Der Erfinderschutz und die Reform der Patentgesetze." page 2.

[9] "Der Erfinderschutz und die Reform der Patentgesetze." page 1.

[10] Werner von Siemens, "Lebenserinnerungen"

[XX] Some authors compare this with a grace period. According to the definition of the European IP Helpdesk a "grace period" is a specific period of time preceding the filing of a patent application, during which certain types of disclosures of the invention (for which the patent application is filed) do not destroy its novelty. For example, under America Invents Act § 102(b)(1)(A), an inventor has one year from the time he or she discloses an invention within which to file a patent application. The inventor's disclosure does not destroy the novelty of his or her patent application. As the inventor did not actively file an application to secure his priority claim, it seems to be pertinent to speak of an act of grace, which only exist in a few other countries.

This is different to the provisions espacially put in place for the Great Exhibition. The inventor or designer had to ask actively for an exhibition certificate in order to be exempt from destroying novelty of his invention by disclosing the invention or the new design in the Great Exhibition. Consequently, this kind of exemption is called today an exhibition priority and made it into the Paris Convention as Art. 11 "The countries of the Union shall, in conformity with their domestic legislation, grant temporary protection to patentable inventions, utility models, industrial designs, and trademarks, in respect of goods exhibited at official or officially recognized international exhibitions held in the territory of any of them."

[23]  Hiding Behind Nationality: The Temporary Presence Exception and Patent Infringement Avoidance by J. Jonas Anderson; 15 Mich. Telecom,. & Tech. L. Rev 1 (2008)

[16] Navigating Paris Convention Article 4(C)(4 The International Right of Priority in the United States and Abroad by Rebecca Simmons; Boston University School of Law and Patent Agent Hamilton, Brook, Smith & Reynolds, P.C.

[17]  Patent History Materials Index - Patent Materials from Scientific Americanvol 50 new series (Jan 1884 - Jun 1884); no 2, p 17, 12 January 1884

[ETP] "The Economics of the International Patent System" by Edith Tilton Penrose, Greenwood Press, Publishers,ISBN 10 0837166535.

[18] The indebtedness to the inventive genius": Global Expositions and the Development of an International Patent Protection, by Margrit Seckelmann in "Identity and universality", A commemoration of 150 years of Universal Exhibitions, Bulletin 2001, Bureau International des Expositions, page 138.

[19] The indebtedness to the inventive genius": Global Expositions and the Development of an International Patent Protection, by Margrit Seckelmann in "Identity and universality", A commemoration of 150 years of Universal Exhibitions, Bulletin 2001, Bureau International des Expositions, page 138.

[20] Revidirter Entwurf eines Patent-Gesetzes für das Deutsche Reich nebst Motiven, Deutscher Patentschutzverein, p. 31.

[21] The Paris Convention of Industrial Property from 1883 to 1993, WIPO publication No. 875 (E)[PDF], ISBN 92-805-0099-6, The International Bureau of Intellectual Property, Geneva, 1983, including : "The First Hundred Years of the Paris Convention for the Protection of Industrial Property" by Arpad Bogsch, Director General of the World Intellectual Property Organization"

[22] WIPO NATIONAL SEMINAR ON INTELLECTUAL PROPERTY [PDF] organized by the World Intellectual Property Organization (WIPO) in cooperation with the Cairo University, Arab Republic of Egypt Cairo, February 17 to 19, 2003.

[15] The History of the Patent Harmonization Treaty: Economic Self-Interest as an Influence by R. Carl Moy; Mitchell Hamline school of Law