California Western School of Law

Lindeen, Gordon R., III

English

In re Hilmer and the Paris Convention: An Interpretation of the Right of Foreign Priority for Patents of Invention

Law Review, California Western

California
Western
International
Law Journal
INDEX
VOLUME 19
(1988-89)
Published by the Caliofrnia Western Internatioal Law Journal
San Diego, California
© Copyright (1989)
California Western School of Law
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Library, California Western

BOOKS RECEIVED
FOREIGN TRADE, INVESTMENT AND THE LAW IN THE PEOPLE'S RE-
PUBLIC OF CHINA. Edited by Michael J. Moser. New York,
New York: Oxford University Press. 1987. Pp. 603. $45.00.
NEITHER CONFIRM NOR DENY: THE NUCLEAR SHIPS DISPUTE BE-
TWEEN NEW ZEALAND AND THE UNITED STATES. By Stuart Mc-
Millan. New York, New York: Praeger Press. 1987. Pp. 177.
$37.95.
NUCLEAR WEAPONS AND SCIENTIFIC RESPONSIBILITY. By C.G.
Weeramantry. Wolfeboro, New Hampshire: Longwood Publish-
ing Group. 1987. Pp. 227. $25.00.
STRENGTHENING THE UNITED NATIONS: A BIBLIOGRAPHY ON U.N.
REFORM AND WORLD FEDERALISM. Compiled by Joseph Preston
Baratha. Westport, Connecticut: Greenwood Press, Inc. 1987.
Pp. 311. $45.00.
TELECOMMUNICATIONS SYSTEMS AND SERVICES DIRECTORY: AN IN-
TERNATIONAL DESCRIPTIVE GUIDE TO MORE THAN 2,000 TELE-
COMMUNICATIONS ORGANIZATIONS, SYSTEMS, AND SERVICES. Ed-
ited by John Kroll. Detroit, Michigan: Gale Research Company.
1988. Pp. 1125. $285.00
THE BRITISH YEARBOOK OF INTERNATIONAL LAW 1985. Edited by
Ian Brownlie and Derek Bowett. New York, New York: Oxford
University Press. 1987. Pp. 556. $116.00.
THE EXCLUSIVE ECONOMIC ZONE IN INTERNATIONAL LAW. By
David Attard. New York, New York: Oxford University Press.
1987. Pp. 350. $78.00.
THE JUDICIAL BAY. By Gayl Westerman. New York, New York:
Oxford University Press. 1987. Pp. 290. $39.95.
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THE LAW OF WAR. By Ingrid Detter de Lupis. New York, New
York: Cambridge University Press. 1987. Pp. 411. $64.50.
THE QUESTION OF THE COMMONS. By Bonnie M. McCay and
James M. Acheson. Tuscon, Arizona: University of Arizona
Press. 1987. Pp. 439. $35.00.
YEARBOOK OF EUROPEAN LAW 1986. Edited by F.G. Jacobs. New
York, New York: Oxford University Press. 1987. Pp. 492. $98.00
2
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Books Received

Santana, Jesse I.

The Proverbia Catch-22: The Unconstitutionality of Section Five of the Immigration Marriage Fraud Amendments of 1986

Vanden Heuvel, Tim J.

The Bail Reform Act of 1984 and Witness Coercion

Griffith, Michael

Orloff, Chet

California Western Law Review 
Volume 24 
Number 2 Bicentennial Constitutional and Legal 
History Symposium 
Article 8 
1988 
Historical Societies and Legal History 
Michael Griffith 
Chet Orloff 
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Recommended Citation 
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Review: Vol. 24 : No. 2 , Article 8. 
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information, please contact alm@cwsl.edu. 
Historical Societies and Legal History
MICHAEL GRIFFITH* and CHET ORLOFF**
We often hear, especially during this bicentennial era, that
more than half of the Founding Fathers were lawyers. What is
much less often noted, however, is that most of them were histori-
ans. Knowing the great stakes for which they were playing, these
men banked the nation's future on what they had learned from
the past.
Interesting as it is, this is hardly a startling fact for us. What is
significant, from the historical agency administrator's point of
view, are the steps that these men took to preserve the story of the
historical events in which they took part, particularly within their
own states.
I. HISTORICAL SOCIETIES IN GENERAL
Two years after the passage of the Judiciary Act of 1789, the
first state historical society was established in Massachusetts.
During the next few decades there followed, in quick succession,
the creation of other historical societies. The founders of some of
these societies were people who were also among the nation's
founders. They were present to record the first person narratives
of the participants in the great events of the day and to organize
permanent institutions that would preserve and continue to collect
the history of their states.
Historical societies tracked the movement of Americans west-
ward, documenting the birth and growth of each new state. Soon
after the incorporation of state societies, counties too, saw the
benefit of preserving their origins, and local historical societies
leaped up across each state. During periods of intense interest in,
and appreciation for, the nation's history-including the early
twentieth century, the mid-1970s, and the late 1980s-there has
been a dramatic rise in the number and variety of historical orga-
nizations. Today, there are more than nine thousand historical
agencies in the United States, ranging in size from large national
institutions to small local societies.
Although their collections contain much of the evidence chroni-
* Archivist for the United States District Court for the Northern District of
California.
** Executive Director of the Ninth Judicial Circuit Historical Society.
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CALIFORNIA WESTERN LAW REVIEW
cling the nation's history, historical agencies have long been re-
garded as amateur organizations, in contrast to the professional
realm of academe. Usually staffed by volunteers with little or no
professional training, historical societies have been characterized
as being beyond the pale of respectable historical endeavor. How-
ever, a little more than a decade ago, the concept and the impor-
tance of public history-history practiced outside of the tradi-
tional field of college departments-was suddenly grasped by
faculty advisors.
The reasons for this sudden appreciation of history practiced
outside the classroom are many. Certainly, the lack of jobs in the
classroom and the expanding opportunities outside contributed. In
addition, there was the recognition that the work of handling im-
portant documents and records, fragile artifacts, and the histories
of private companies and public agencies warranted well-trained
scholars and technicians. Programs for training public histori-
ans-professionals who work in corporations, government bureaus,
cultural resource offices, media production firms, and historical
agencies-began to crop up in universities nationwide. Historians
who worked outside of the groves of academe began to gain re-
spectability. French historian Henry Rousso, currently visiting at
Harvard, observed:
I've looked at Harvard for evidence of a new American school of
history and found most people reworking the Annales approach.
It may well be that public history, which is prospering else-
where, is after all a bona fide new American school of history.'
The diversity of historical societies is astounding. The directory
of the American Association for State and Local History lists
hundreds of subjects preserved and promulgated by these agen-
cies. Yet, despite their widely differing interests, most historical
societies share a common modus operandi.
The foremost function of historical societies has been the collec-
tion and preservation of historical materials-manuscripts and
printed works, artifacts, oral histories, paintings, and photographs.
In doing this, curators and conservators, archivists and librarians
have worked, to create their own professional niches and to estab-
lish their own bodies of theory and practice.
Publishing has always been a major component of most histori-
cal agencies. The earliest societies issued proceedings and transac-
tions, which included first person narratives, interviews, and arti-
cles. These early, and usually irregularly issued, publications
evolved into the journals that most larger societies now produce.
1. Meeting of the National Council on Public History, Washington, D.C., April 24,
1987.
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HISTORICAL SOCIETIES
Today, historical societies are among the most prolific publishers
of historical books and monographs in the country.
Three years before the Constitutional Convention Charles Wil-
son Peale's museum opened in Philadelphia. Since then exhibits
have played an increasingly more prominent role in the narration
and interpretation of American history. Exhibits may be perma-
nent or temporary, stationary or traveling. They may simply de-
scribe and illustrate an event, an era, or a lifestyle or they may
interpret events and, in rare cases, express a particular viewpoint.
Historical societies also serve an educational role. In addition to
the uses to which their collections and publications are put in pre-
paring scholars, historical agencies inform and educate the gen-
eral public, through their exhibits and other public programs such
as lectures, symposia, seminars and the like. All of the familiar
state and county societies provide opportunities for school classes
to visit museums and historic sites, while some also offer in-school
programs.
II. LEGAL HISTORICAL SOCIETIES
The 1976 Bicentennial was the genesis for thousands of historical
groups nationwide. From this celebration we can trace the origin
and development of two leading legal historical societies-the Su-
preme Court Historical Society and the United States District
Court for the Northern District of California Historical Society.
Additionally, the publication of the histories of several of the fed-
eral circuits was prompted by the Bicentennial celebration.
Inspired by these efforts, and by the approaching bicentennial
of the Constitution, nearly a score of courts and judicial re-
gions-the state supreme courts and federal districts and cir-
cuits-have organized their own historical societies during the
past five years.
The following is a review of the approaches that the courts and
bars are taking through their historical societies to develop the
regional legal history of the United States. This Article will re-
view the range of programs being developed and offered by these
groups, provide examples and illustrations of them, and describe
how these programs are being carried out within the Ninth Cir-
cuit, and especially by the Ninth Judicial Circuit Historical Soci-
ety and by the Northern District's historical society.
A. Essay Contests-The Historical Society of the United States
District Court for the District of New Jersey's major program this
year is an essay contest soliciting essays on the history of the fed-
eral trial courts in the District of New Jersey. This contest pro-
vides students with an opportunity to become active in New
1988]
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CALIFORNIA WESTERN LAW REVIEW
Jersey's Constitutional commemoration and to win a $2,500
award. Essay competitions have long served a bridge between
schools and historical societies.
B. Meetings-As non-profit corporations, legal historical socie-
ties are obliged to hold occasional meetings of their boards and
members. Most use these as opportunities to provide programs for
their members and the public. Societies also sponsor symposia,
such as the Historical Society of the United States District Court
for the Eastern District of Pennsylvania's 1986 symposium on le-
gal history. This past year, the Northern District's society
presented a four part series on the Constitution. It also has
presented two, well-attended, "Then and Now" programs in which
panels of eminent, veteran practitioners discussed changes in the
legal world.
C. Oral History Programs-Nearly every legal historical soci-
ety has established an oral history program. This is an effort to
interview the members of the courts and eminent members of the
bar. The Eleventh Circuit Historical Society and the Eastern
Pennsylvania society are videotaping all of their senior judges, and
are commissioning professional oral historians to do the inter-
views. The Ninth Judicial Circuit Historical Society is taking an-
other approach: it is soliciting volunteer interviews from through-
out the circuit to gather oral histories, For judges, the Society is
recruiting former law clerks or former partners; for lawyers, it is
working with their partners and associates. In two cases, judges
dictated their own oral histories. The Society has developed a
packet for interviewers, which includes long lists of questions as
well as an overview of the process and technique of oral history.
The Society's purpose here is to involve in its oral history program
lawyers and judges who are interested in working in a historical
program rather than to rely upon the work of an oral historian,
which the society cannot presently afford.
D. Exhibits-Several historical societies have produced sub-
stantial exhibits illuminating the history of law and the courts. In
1986, the Oregon Historical Society presented an international ex-
hibition titled Magna Carta: Liberty Under the Law, which in-
cluded one of the four extant original copies of the Magna Carta
and followed the development of the Common Law from the thir-
teenth through the eighteenth centuries. In New York City, the
Appellate Division of the First Judicial Department has produced
three exhibits, the most recent being Law and the Theater: New
York City, 1880-1912. The Second Circuit's Historical Commit-
tee, in conjunction with the Northern District of California soci-
ety, has produced an exhibit titled The Fields and the Law, on
Justice Stephen J. Field, David Dudley Field, and other members
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HISTORICAL SOCIETIES
of the Field family, and it has traveled from New York to San
Francisco and Los Angeles. The Ninth Judicial Circuit Historical
Society recently produced The Constitution and the Courts, a dis-
play describing and illustrating the founding of the federal courts
and the early years of the Ninth Circuit. Even county historical
societies offer legal history exhibits: the Chester (Pennsylvania)
County Historical Society this September opened Writs, Petitions,
and Indictments: Documents of the Courts of Chester County.
E. Publications-Of all the types of programs offered by legal
historical societies, the greatest investment in time, funds, and
personnel goes into publication. A quick review of the variety of
these publications will illustrate the range of interests and charac-
ter of the various organizations.
1. Newsletters-Nearly every historical society, legal and
otherwise, publishes a newsletter. These house organs provide in-
formation to members and the larger public about the society's
activities while, as mentioned earlier, also publishing short articles
about court personnel, personalities in the bar, historic court-
houses, and other substantive matters of general interest.
2. Calendars-The Historical Society for the United States
District Court for the Eastern District of Pennsylvania publishes a
calendar every year. For 1987, the theme of the monthly illustra-
tions is "those who labored in 1787 through the heat of a Phila-
delphia summer to secure for themselves and their descendants
the blessings of liberty." Nearly every day is a note of historical
importance in the Constitution's founding and later history.
3. Yearbooks--Since 1976, the Supreme Court Historical So-
ciety has produced an annual illustrated yearbook, a collection of
articles with such titles as The Case of the Missing Bodies, The
Circuit Riding Justices and Court Nominations and Presidential
Cronyism. The Yearbook is sent to Society members and libraries.
4. Books-In addition to the Supreme Court Historical Soci-
ety, other legal historical societies publish books. The Second Cir-
cuit's Historical Committee has been particularly active. Its just-
released Egbert Benson: First Judge of the Second Circuit (1801-
1802) is the Committee's third publication. The Ninth Judicial
Circuit Historical Society and the United States District Court
for the Northern District of California Historical Society recently
copublished Authorized By No Law, a book on the 1856 Commit-
tee of Vigilance and the Circuit Court for the Districts of Califor-
nia. Although not part of any historical society's effort, the Third,
Fifth, Sixth, Seventh and Eighth circuits published their histories
produced under the auspices of the bicentennial Committee of the
Judicial Conference of the United States, as have the United
States District Court for the District of Columbia and the United
1988]
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CALIFORNIA WESTERN LAW REVIEW
States Court of Claims.
5. Journals-There are two legal history journals now being
published in the United States. Law and History Review has been
published by the American Society for Legal History and the Cor-
nell Law School since 1982. Since Fall 1987, however, its publica-
tion offices have been located at the University of Illinois College
of Law. The American Journal of Legal History has been pub-
lished since 1957 by Temple University School of Law. These two
journals publish scholarly articles covering a broad range of legal
history, from ancient to modern, and are international in scope.
The Ninth Judicial Circuit History Society has begun publish-
ing a new illustrated journal called Western Legal History. This
journal will explore and analyze the role of law in the history of
the American West. With the help of an editorial board, the Soci-
ety is soliciting articles that will interest a diverse readership, in-
cluding scholars, judges, attorneys, historians, and members of the
public. It will be a semi-annual publication until enough funds
and manuscripts allow for quarterly publication.
F. Collections-The principal assets of most historical societies
are collections including: artifacts, photographs, manuscripts, tape
recordings, and published books. To date, most legal historical so-
cieties in the country have chosen to keep their collecting activities
to a minimum, preferring to focus on publishing, exhibits pro-
grams, and oral histories which do not result in substantial physi-
cal holdings. In the case of court historical societies, much of what
might be considered their collections--court and case records-is
maintained by the clerks of the courts. The United States District
Court for the Northern District of California has a full-time ar-
chivist to manage that court's collections, one of the few such po-
sitions in the nation.
III. THE NINTH JUDICIAL CIRCUIT HISTORICAL SOCIETY
The Ninth Judicial Circuit Historical Society, as with most le-
gal historical societies, has chosen to encourage prospective donors
of materials to place their papers with established historical repos-
itories. Such repositories have the staff and facilities for maintain-
ing historical records and objects, and for making them accessible
to researchers. At this time, no legal historical society is so
equipped or adequately funded to provide such service.
In partnership with state historical societies and state archives,
the Ninth Judicial Circuit Historical Society is developing an in-
ventory of archival materials: manuscripts, personal collections,
court records, and law firm records that are accessible to the pub-
lic. The goal of this long-term and ambitious project is to provide
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1988] HISTORICAL SOCIETIES 361
researchers with a cumulative, comprehensive, and coherent guide
to law and court-related matter held by regional historical reposi-
tories. Accompanying this effort is the hope that other State and
Circuit historical societies will follow suit thus creating many
comprehensive guides to legal historical matter.
7
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Historical Societies and Legal History

McCauliff, C.M.A.

Constitutional Jurisprudence of History and Natural Law: Complementary or Rival Modes of Discourse?

Irons, Peter

Clio on the Stand: The Promise and Perils of Historical Review

Flink, Frank B.

SYMPOSIUM ON RECENT DEVELOPMENT
OF INDUSTRIAL PROPERTY RIGHTS IN
LATIN AMERICAN COUNTRIES*
INTRODUCTION* *
The protection of industrial property' rights outside of the
United States is vitally important to American companies seeking
to utilize international markets and labor pools, as well as to all
nations which wish to foster and support international trade.' For
* Professor Chin Kim of California Western School of Law was the chairperson and
organizer of the symposium. Professor Kim has written extensively in the areas of
comparative, foreign and international law. A.B., Florida Southern College; LL.B., Korea
University; M.C.L., George Washington University; M.S. in Library Service, Columbia
University; LL.M., J.S.D., Yale University; APSA Congressional Fellow; Order of the Coif.
•* Introduction by Frank B. Flink, Jr., an attorney with the Commercial Litigation
Branch, Civil Division, United States Department of Justice. The views expressed in this
introduction and accompanying papers are not necessarily those of the Department of Jus-
tice. B.S., University of Kansas; J.D., California Western School of Law.
1. "Industrial property" is defined in Article I of the Paris Convention:
(3) Industrial property shall be understood in the broadest sense and shall apply
not only to industry and commerce proper, but likewise to agricultural and extrac-
tive industries and to all manufactured or natural products, for example, wines,
grain, tobacco leaf, fruit, cattle, minerals, mineral waters, beer, flowers, and flour.
(4) Patents shall include the various kinds of industrial patents recognized by the
laws of the countries of the Union, such as patents of importation, patents of im-
provement, patents and certificates of addition, etc.
Paris Convention for the Protection of Industrial Property (Stockholm Revision), July 14,
1967, 21 U.S.T. 1629, T.I.A.S. No. 6923.
In comparison, "intellectual property" according to Article 2 (viii) of the WIPO Conven-
tion includes the
rights relating to:
- literary, artistic and scientific works,
-performances or performing artists, phonograms, and broadcasts,
- inventions in all fields of human endeavor,
- scientific discoveries,
- industrial designs,
- trademarks, service marks, and commercial names and designations,
- protection against unfair competition,
and all other rights resulting from intellectual activity in the industrial, scientific or
artistic fields.
Convention Establishing the World Intellectual Property Organization (WIPO), July 14,
1967, 21 U.S.T. 1749, T.I.A.S. No. 6932.
2. See Mossinghoff, The Importance of Intellectual Property Protection in Interna-
tional Trade, 7 B.C. INT'L & COMP. L. REv. 235 (1984). This article provides a good insight
into the critical nature of this subject in the United States and other countries. The article
discusses eight areas where patent and trademark protection is integral to handling U.S.
trade and industry problems. First, patents are incentives to technological innovation. Sec-
ond, patents provide information on technology and markets. Third, patent statistics show
competition and trading trends. Fourth, the U.S. patent system protects against copying by
1
Flink: Symposium on Recent Development of Industrial Property Rights in
Published by CWSL Scholarly Commons,
INTRODUCTION
instance, a United States based company which is considering ex-
panding into markets in Latin America needs to become familiar
with the myriad of industrial property laws in those countries to
protect its investments and competitive edge. This symposium was
designed to introduce the variety of laws involved and to point out
some of the similarities and differences in the laws of the countries
involved.
3
I. SCOPE OF THE SYMPOSIUM
This symposium was held on May 31, 1986, at California West-
ern School of Law. To help with the task of comparing and con-
trasting the problems involved, the speakers were requested to ad-
dress three general areas as they related to each of the countries
involved.
First, the speakers were to examine important new court or legis-
lative actions concerning national legal issues in their various coun-
tries. The second subject area concerned each country's experience
with the Paris Convention and other relevant bilateral treaties.
Naturally, much of the discussion focused on the areas where each
country's own national laws varied from the treaties involved. For
instance, both the Brazilian and Mexican papers discuss the impor-
tant areas of nonuse cancellation of patents and compulsory licens-
foreign competitors. Fifth, foreign patent systems aid U.S. firms in entering foreign markets.
Sixth, intellectual property provides important international licence fee income. Seventh,
trademarks provide international product recognition. Eighth, effective patent protection is
important for economic growth in developing countries.
3. This symposium covers only a few of the many problem areas involved. However,
one area which is covered in several papers is the working requirements of patents. Basically,
a patent is a right given to the holder of a patent to exclude others from making, using or
selling the invention covered by the patent. In the United States, this right is granted by the
federal government for a period of seventeen years. 35 U.S.C. §§ 150-157 (1982 & Supp. III
1985). Further, in the United States, the patentee does not have to utilize or "work" the
patent to maintain this protection. Wine Ry. Appliance Co. v. Enterprise Ry. Equip. Co., 25
F.2d 236, 238 (6th Cir. 1928).
On the other hand, many countries require that the patent be "worked" for the patentee to
maintain the right to its exclusive use. See Kassman, Intellectual Property, International
Business and the Export Trading Company-Some Basic Training, 2 B.U. INT'L L. REV.
231 (1983). Specifically, the Paris Convention makes allowance for this in Article 5A:
(2) Each country of the Union shall have the right . . . [to grant] compulsory
licenses to prevent the abuses which might result from the exercise of the exclusive
rights conferred by the patent, for example, failure to work [the patent].
(3) Forfeiture of the patent shall not be provided for except in cases where the
grant of compulsory licenses would not have been sufficient to prevent the said
abuses. No proceedings for the forfeiture or revocation of a patent may be instituted
before the expiration of two years from the grant of the first compulsory licence.
Paris Convention, supra note I.
The advantage to the countries that require working of the patents is that one could not
preclude local production of articles simply by acquiring a patent in that country.
19871
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CALIFORNIA WESTERN INTERNATIONAL LAW JOURNAL
ing. These areas are important because the stricter the provisions
requiring the use of a patent or compulsory licensing, the greater
the ability of a country to prevent an outside entity from foreclos-
ing production within the country.
The third area covered in these papers includes some specific top-
ics of current interest in the field of industrial property. These in-
clude the protection of biotechnology advances, advances in com-
puter technology, trade secret licensing and cross-licensing
provisions in technology transfer agreements. Generally, these are
the areas where technology or industrial advances are changing the
face of the laws which protect industrial property. All of the papers
reflect an emphasis on one or more of these areas as noted below.
II. AREAS DISCUSSED IN THE INDIVIDUAL PAPERS
The Argentine paper focuses on the national patent and trade-
mark laws rather than international treaties. It includes a discus-
sion of the Argentina Trademark Act of 1981 as well as recent
developments in the much older patent rules dating from 1864. The
discussion of the Trademark Act includes comments on the applica-
tion procedure for obtaining trademarks. It then highlights several
"novel" features in the Trademark Act including the requirement
of trademark use to avoid forfeiture, other cancellation and com-
pulsory assignment features and criminal sanctions for-trademark
misuse. The Argentine patent law section includes a discussion of
the consequences of nonworking patents in light of the Paris Con-
vention compulsory licensing provisions. The paper concludes with
discussions of the newer areas of biotechnology, computer software,
trade names and unfair competition laws.
The Brazilian paper begins with an interesting discussion of com-
pulsory licensing with exclusivity in industrialized countries as com-
pared to developing countries. This section focuses on recent talks
on the revision of the Paris Convention and a variety of forces at
work in Brazil which affect the application of this convention
within Brazil. The paper moves on to touch other areas including
trademark and trade secret protection and again the new areas of
computer software and biological invention protection problems.
The Chilean paper provides an in-depth look at the recent
changes in Chilean trademark regulations. It reviews both proce-
dural aspects, such as a streamlined application procedure, and the
jurisprudence aspects of these regulations. Examples discussed are
the ability to file opposition or annulment claims, limitations on ex-
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INTRODUCTION
pressions used as trademarks and the use of advertising phrases.
The analysis of trademark law then extends to an examination of
possible defects in the present law and the proposed modifications
to the law to alleviate some of these deficiencies. Following this, the
paper provides several short comments on some of the international
treaties and conventions, biogenetic products, computer technology
and trade secret licensing.
Like several of the other papers, the Mexican paper examines
some of the conflicts between Mexican national laws and interna-
tional treaties, and subsequently notes some of the solutions which
have been found to rectify these conflicts. First, the paper points to
the apparent requirement in the national law (LIM) that trade-
marks be of Mexican origin, although this part of the law has been
suspended. Second, the paper explains that the LIM has a more
burdensome patent working requirement for the owner to maintain
patent protection than is required in the Paris Convention. The ar-
ticle then notes several areas that a new revision of the LIM should
address to stay in keeping with technology and modern legal re-
quirements. This paper also concludes by discussing several of the
symposium topics including biogenetic products, computer technol-
ogy, trade secret licensing and cross-licensing provisions in technol-
ogy transfer agreements.
The last paper addresses Venezuelan nonuse cancellation of
trademarks. This paper differs from the others because it limits its
discussion to this one portion of the greater symposium topic. How-
ever, because it is limited in breadth, this paper treats this topic in
greater depth than the other papers.
CONCLUSION
We sincerely hope the reader will find these papers of interest.
Please direct any inquiries about the authors or the papers to the
California Western International Law Journal.
19871
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Symposium on Recent Development of Industrial Property Rights in Latin American Countries: Introduction

Siemsen, Peter D.

RECENT DEVELOPMENT OF INDUSTRIAL
PROPERTY RIGHTS IN BRAZIL
PETER D. SIEMSEN*
JOSE ANTONIO B.L. FARIA CORREA**
Brazil is one of the founding members of the Paris Convention of
1883 and has ratified the Revisions of this Convention up to the
Hague Revision in 1925. None of the later Revisions of the Con-
vention were ratified by Brazil.
In the 1970's, Brazil was one of the leading countries requesting
a revision of the Paris Convention to make its contents more palat-
able to the developing countries by including more advantageous
conditions for such countries. After several years of meetings, the
Geneva discussions reached a deadlock in 1984.
One of the most crucial problems lies in Article 5A which pro-
vides for penalties in the case of abusive "nonworking" of the pat-
ented invention. The industrialized and developing countries have
been unable to reach an understanding on such penalties. Presently,
the Paris Convention provides for compulsory licenses and, if this is
insufficient, for cancellation of the nonworked patent.
Two problems arose in the course of discussions regarding the
last revision. One was the demand of the developing countries for
compulsory licenses to be granted with exclusivity, a claim which
obviously was unacceptable to the industrialized countries. An ex-
clusive license excludes everyone, including the inventor, from ex-
ploiting the invention. On the other hand, the developing countries
contended that compulsory licenses without exclusivity are useless.
In a country with a lack of capital, where means to industrialize
are still in an early stage, it would be nearly impossible to establish
an industry capable of competing with the large international enter-
prises. Exclusivity is necessary to guarantee the success of such a
new local industry.
There was less heat in the discussions concerning cancellation
due to nonworking. While the industrialized countries expressed the
* Lawyer and patent agent practicing in Rio de Janeiro, Brazil, senior partner at
Dannemann, Siernsen, Bigler & ipanema Moreira.
00 Lawyer practicing in Rio de Janeiro, Brazil, at the office of Dannemann, Siemsen,
Bigler & lpanerna Moreira.
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Siemsen: Recent Development of Industrial Property Rights in Brazil
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PROPERTY RIGHTS--BRAZIL
desire to eliminate totally any type of cancellation, the developing
countries maintained a position in favor of the existing provisions of
the Paris Convention.
What the deadlock showed is that both sides have justifiable ar-
guments but, either because of political reactions, emotional reac-
tions or lack of imagination, practically no efforts were made to
find new solutions which could have overcome the deadlock and
which could have benefited all parties involved.
Suspicions of the patent systems, and consequently of the Paris
Convention, began in the 1960's, raised mostly by those developing
countries which began industrializing. Brazil was one of them. In
1961, Brazil provoked the study by the United Nations called "The
Role of Patents in the Transfer of Technology to Developing Coun-
tries." 1 The study was concluded in 1964 and became one of the
most important documents evaluating the advantages of the patent
system. However, the reaction continued in Brazil and, in the late
1960's, went as far as contemplating eventual withdrawal from the
Paris Convention. At the same time, patents for pharmaceuticals
and food stuffs were abolished.
Only reform of the industrial property system in the early 1970's
started to change Brazil's outlook. Agreements with WIPO and
with other patent offices abroad, mainly with the German Patent
Office, provided for personnel training. Services became more effi-
cient and decisions gradually improved.
The major problem with the Patent Office during this period was
its tendency to ignore most of the provisions of the Paris Conven-
tion, limiting itself to applying the national law in the areas of pat-
ents, firm names, well-known marks, surnames and unfair competi-
tion. Fortunately, the courts carefully scrutinized this approach and
more and more questionable decisions of the Patent Office were ju-
dicially reversed.'
The approach of the French Government, which was extremely
concerned about the increasing piracy of well-known French marks
was interesting. The lack of application of the provisions of the
I. UNITED NATIONS DEP'T OF ECONOMIC AND SOCIAL AFFAIRS, REPORT OF THE
SECRECTARY GENERAL ON THE ROLE OF PATENTS IN THE TRANSFER OF TECHNOLOGY TO
DEVELOPING COUNTRIES, New York, 1964. This report originated from a project in 1961 by
Professor Alberto Guerreiro Ramos, a member of the permanent Brazilian delegation to the
XVI General Assembly.
2. Concordia Indastria de Roupas Ltda. vs. INPI. Appeal in writ of Mandamus no.
98.865. Decision rendered by the Federal Court of Appeals, Judicial Gazette of Mar. 3,
1983, page 1886.
19871
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Paris Convention by the Brazilian Patent Office resulted in a situa-
tion undoubtedly favoring attempts of pirates to unduly acquire
third party marks. The Brazilian Government was then approached
by the French Government and an agreement was negotiated in
1983 through which the Brazilian and the French Patent Offices
would maintain continuous relations, including two annual meet-
ings between their officers to discuss and solve problems of mutual
interest in the area of industrial property.3 The effect of this agree-
ment was extremely positive. Officers of both sides became more
aware of the problems and peculiarities of each other's country so
that the quality of the decisions improved within a very short
period.
Until the middle 1960's, the Brazilian Patent Office, on the ad-
ministrative level, took the Paris Convention into consideration, in-
terpreting its provisions and applying it when deciding cases. As
stated, after the reform of the industrial property laws, the Patent
Office became very hesitant in applying the Paris Convention and
this hesitation has been maintained until now. The result has been
an increase of court actions requesting revision of decisions ren-
dered by the National Institute of Industrial Property. The purpose
of such actions is to have the courts apply the provisions contained
in the Paris Convention.
Regarding trademarks, the rulings of the courts have been in-
creasingly favorable in recognizing the validity of the concepts con-
tained in the Paris Convention; however, this has not been the case
in the area of patents. Before we comment on some of the most
recent decisions, it has to be said that the conflicts about the work-
ing of patents are really more of a political nature than of a juridi-
cal one.
The requirement to work a patent in a country where the patent
was granted is one of the formal obligations placed on the patentee,
as has been expressly stated since the original version of the Paris
Convention. The controversies concerning patents generally refer
more to sanctions and, therefore, the critical issue concerns inter-
preting Article 5 of the Paris Convention to determine when sanc-
tions are to be enforced.
The Paris Convention, in the Hague text, provides that cancella-
tion is only applicable if compulsory licensing is insufficient to avoid
nonworking abuse by the patentee without justification. There has
3. Agreement on Industrial Property, Mar. 3, 1983, Brazil-France, Decree no.
88.145, Official Gazette of Mar. 4, 1983, page 3546.
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only been one decision of first impression in Brazil, a ruling that
cancellation for nonworking is only appropriate if it has been veri-
fied through a legal administrative procedure that the grant of a
compulsory license to exploit the patented invention would not solve
the problem." This decision was later reversed by the Federal Court
of Appeals.
The Brazilian law treats compulsory licensing separate from can-
cellation due to nonworking.' A compulsory license may be granted
within the first three years from the grant of the patent when pub-
lic interest so demands or when the invention has not been effec-
tively worked. Cancellation after four years can be due to nonwork-
ing or after five years can be due to nonworking if a voluntary
license has been granted. Absence of working must be justified with
"force majeure" reasons.
Therefore, the Patent Office and the courts have interpreted the
laws to mean that sanctions are appropriate when the patent be-
comes subject to cancellation procedures and the time for compul-
sory licensing has already passed. The penalty is applicable because
nonworking of a patent is considered a hindrance to economic de-
velopment, thereby affecting public interest.6 There has only been
one case where the Patent Office revised a first instance decision
cancelling a patent for nonworking. In the appeal, the justification
duly demonstrated was that it was inviable economically to exploit
the patented invention in Brazil." Contrary to this decision, the
INPI cancelled a patent covering a method of manufacturing of a
composition because the method was not worked in the country.
The composition was formulated with imported ingredients, but
justifications of an economic nature for not working this procedure
were not considered acceptable. 8
The most unfortunate decision was one where a patentee had of-
fered its patent for exploitation to various interested parties, but
none of the negotiations came to a successful conclusion in spite of
4. C. Van der Lely N.V. and Lely do Brasil S.A. vs. INPI. Writ of Mandamus to
reinstate patent no. 63.874, Official Gazette of Dec. 15, 1976, page 66. Reversed by the
Federal Court of Appeals.
5. INDUSTRIAL PROPERTY CODE, arts. 33-38, 48, 49, 52-54 (Braz.).
6. Merck & Co., Inc. vs. INPI. Writ of Mandamus no. 86.426. Decision rendered by
the Federal Court of Appeals, Judicial Gazette of Mar. 31, 1985, page 3514; Bayer AG vs.
INPI. Civil Appeal no. 58.205. Decision rendered by the Federal Court of Appeals, Judicial
Gazette of Mar. 21, 1985, page 3514.
7. FMC Corp. vs. Biagro Velsicol Produtos para Agricultura Ltda.-Brazilian patent
no. 82808. Decision published in the Patent Journal of Nov. 11, 1980.
8. Monsanto Co. vs. Agricur Defensivos Agricolas Ltda.-Brazilian patent no.
6677387. Decision published in the Patent Journal of June 4, 1985.
19871
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the patentee's efforts. The courts accepted neither the arguments of
justified reasons nor "force majeure" to excuse the inaction of the
patentee to work its patent and confirmed the decisions of the Bra-
zilian Patent Office cancelling the patent for nonworking.'
Two types of compulsory licenses have been granted in recent
years: one for reasons of public interest1 and one for nonworking of
a patented invention composed of a manufacturing process of an
active ingredient and compositions formulated with that ingredient.
In one case in the latter category, the process of manufacturing the
active ingredient was not being executed in the country and the
compositions were formulated with imported active ingredients.
Once again, the Patent Office did not accept arguments trying to
show justified reasons, nor accepting them as "force majeure."' 1
In the area of trademarks and firm names, the courts have taken
a much more comprehensive stand. The first important decision ap-
plying Article 6bis of the Paris Convention was rendered by the
Supreme Court in 1963. The decision recognized rights from a
well-known trademark ("DAUM"), which had not been registered
in Brazil, avoiding its undue appropriation by third parties.
More recently, protection of surnames and names of firms estab-
lished abroad were recognized by the courts in the cases of
"LACOSTE" and "CARELLO." s The recent decision in the case
of "CARTIER" confirmed the "LACOSTE" and "CARELLO"
rulings that "CARTIER," being a surname, is entitled to protec-
tion under Article 8 of the Paris Convention."'
Some comments regarding the treatment of trade secrets and
9. John McMullen Associated, Inc. vs. INPI. Writ of Mandamus to reinstate patent
no. 78.584. Decision rendered by the Federal Court of Appeals, Judicial Gazette of May 12,
1977, page 3041.
10. Certificate of Recordal no. 5196/76-Patentee: National Research Development
Corporation. Licensee: Instituto Riograndense de Febre Aftosa Ltda. Patent no. 71.767 for
"Process for the Culture of Virus for Vaccines." Decision published in the Patent Journal of
Aug. 3, 1976, page 184.
1I. Monsanto Co. vs. Nortox Agro-Quimica S.A. Request for compulsory license. Bra-
zilian patent no. 7107076.
12. Daum & Cie. vs. Carnevale & Cia. Ltda., Marco de Bellis & Cia. and the Union.
Civil Appeal no. 9.615. Decision rendered by the Supreme Court, Judicial Gazette of Sept.
19, 1963, page 881.
13. La Chemise Lacoste vs. Textil Lacoste Ltda. Civil Appeal no. 68.352. Decision
rendered by the Federal Court of Appeals, Judicial Gazette of Dec. 9, 1982, page 12721;
Fausto Carello & C.S.P.A. vs. Dinafloy Carello S/A Metalurgica. Civil Appeal no. 27.261-I.
Decision rendered by the Court of Justice of the State of Sao Paulo, Judicial Gazette of
Mar. 22, 1983.
14. Cartier Soci6t6 Anonyme and other and INPI vs. Silvids Vestuirios Ltda. and
other. Civil Appeal no. 98.531. Decision rendered by the Federal Court of Appeals, Judicial
Gazette of Dec. 12, 1985.
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software in Brazil may be of interest. The concept of trade secrets
is expressly contemplated in the Brazilian legislation on unfair
competition." Subsection XI of this statute refers to confidential
information in the industrial area, while subsection XII refers to
commercial secrets.
The unauthorized disclosure of confidential information by a per-
son to whom it has been entrusted is defined as a crime and may
result in imprisonment for a period ranging from three months to a
year. Besides the criminal proceedings, the injured party may also
claim losses and damages under section 189 of the Decree law in
question and section 159 of the Civil Code."6 Due to a lack of juris-
prudence in this area, there is no clear definition regarding the as-
sessment of losses and damages for the violation of a trade secret.
On its face, these statutes provide that the obligation of secrecy
is only binding on the persons to whom the confidential information
has been entrusted. Such an obligation may be expressly provided
in an agreement, result from the nature of the service or may be
implicit in a situation in which, by virtue of service, one has access
to confidential information.
In Brazil, trade secrets do not actually come under the concept of
property rights. The concept is that the holder of a secret enjoys the
right erga omnes to claim its observance by all those to whom it
has been disclosed on a confidential basis. As regards licensing, it
should be noted that although the concept of trade secrets is ex-
pressly recognized by the Brazilian legislation, the INPI does not
admit the possibility of characterizing "know-how" as secret. It
only considers the information confidential for five years counted
from the date the given information has been released. Under the
current practice, royalty rates for "know-how" agreements may
reach a maximum of five percent of the net sales price, depending
on the area involved and on the local demand for such technology.
On the other hand, no defined rules exist in Brazil with respect to
computer software. Although in principle copyright protection
should be available, in practice, serious objections have been raised
to the enforcement of such a copyright, primarily a result of eco-
nomic reasons. Consequently, the Brazilian authorities hesitate to
recognize this right. So far, Brazilian courts have not handed down
any decision on the few pending cases. While the matter is not duly
regulated by law, the Brazilian authorities in this area have been
15. Decree law no. 7.903, art. 178, subsecs. Xl & XII (Braz., Aug. 27, 1945).
16. C.C. § 159 (Braz. 1916) & Decree law no. 7.903, art. 189 (Braz., Aug. 27, 1945).
1987]
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CALIFORNIA WESTERN INTERNATIONAL LAW JOURNAL
treating the importation of computer software in the category of
transfer of technology. For this reason, any agreement providing for
the licensing of computer software between a foreign company and
a local company is subject to approval by a joint commission com-
posed of representatives of the Special Bureau for Informatics and
the INPI. These contracts are subject to the usual requirements
applying to transfer of technology agreements which are basically
defined in Normative Act no. 15/75.
At the moment, studies for legislation to protect software are
well advanced and, in spite of the usual contradictions met in many
countries on the juridical nature of software, it is expected that a
bill will be presented to Congress soon.
Another area of interest is the studies relating to protection of
biogenetic inventions. Although these studies are still in a very
early stage, biogenetic research is growing in the country in both
universities and private enterprises. The Brazilian Patent Office is
consequently aware of the importance of the subject and a commit-
tee has been formed to examine together with other governmental
entities potential solutions.
The above comments give a brief summary on the present states
of the protection of industrial property in Brazil. These new areas
are already receiving attention from governmental authorities who
expect to define the respective legal situations in the near future.
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Recent Development of Industrial Property Rights in Brazil