G.R. No.

14101           September 24, 1919

Case #1

ANGEL VARGAS, plaintiff-appellant,
vs.
F. M. YAPTICO & CO. (Ltd.), defendant-appellee.

Facts: Angel Vargas - a farmer acquainted with local conditions and alive to the commercial
possibilities, took it upon himself to produce, with the native plow as the model, an improved,
adjustable plow.

He made application for a United States patent to cover his so-called invention.

Letters patent were issued by the United States Patent Office in favor of Vargas . A certified
copy of the patent was filed in the Division of Patents, Copyrights, and Trademarks of the
Executive Bureau, Government of the Philippine Islands. The patent and its registry was also
published.

Since 1910, Vargas has engaged in the manufacture of these plows in the city of Iloilo,
Philippine Islands. On the plows there was first stamped the words "Patent Applied For," later
after the patent had been granted, changed to "Patented Mar. 12, 1912." Ninety per cent of the
plows in use in the Visayas (Iloilo and vicinity) are said to be Vargas plows.

The firm of F. M. Yaptico & Co. (Ltd.), was engaged in the foundry business in the City of
Iloilo. It openly held itself out as a manufacturer of plow parts. It has in fact produced points,
shares, shoes, and heel pieces in a considerable amount adapted to replace worn-out parts of the
Vargas plow.

The owner of the patent, and thus the proper party to institute judicial proceedings, began action
in the Court of First Instance of Iloilo to enjoin the alleged infringement of U.S. Patent No.
1020232 by the defendant F. M Yaptico & Co. (Ltd.), and to recover the damages suffered.

The court issued the preliminary injunction as prayed for. The defendant, in addition to a general
denial, alleged, as special defenses, that the patent lacked novelty or invention, that there was
no priority of ideas or device in the principle and construction of the plow, and that the
plow, whose manufacture it was sought to have enjoined by the plaintiff, had already been
in public use for more than two years before.

The parties subsequently entered into a stipulation that the court should first resolve the question
of whether or not there had been an infraction of the patent, reserving the resultant question of
damages for later decision. After the taking of evidence, including the presentation of exhibits,
the trial judge, the Honorable Antonio Villareal, in a very exhaustive and learned decision,
rendered judgment in favor of the defendant and against the plaintiff, declaring null and without
effect the patent in question
From this judgment the plaintiff has appealed, specifying five errors. The principal assignment
No. 1 is, that the trial court erred in finding that the patented invention of the plaintiff is lacking
in novelty and invention.

Defendant, in reply, relies on three propositions, namely:

(1) The judgment of the trial court in finding the patent granted plaintiff void for lack of novelty
and invention should be affirmed;

(2) The patent granted plaintiff is void from the public use of his plow for over two years prior
to his application for a patent, and

(3) If the patent is valid, there has been no contributory infringement by defendant.

Act No. 2235 of the Philippine Legislature, enacted on February 10, 1913, in effect makes the
United States Patent Laws applicable in the Philippine Islands. It provides that "owners of
patents, including design patents, which have been issued or may hereafter be issued, duly
registered in the United States Patent Office under the laws of the United States relating to
the grant of patents, shall receive in the Philippine Islands the protection accorded them in
the United States.

Issue: WON the patent is invalid.

Held: Yes, the patent is invalid. The trial court decision is sustained. When a patent is sought to
be enforced, "the question of invention, novelty, or prior use, and each of them, are open to
judicial examination." The burden of proof to substantiate a charge of infringement is with the
plaintiff. Where, however, the plaintiff introduces the patent in evidence, if it is in due form, it
affords a prima facie presumption of its correctness and validity. The decision of the
Commissioner of Patents in granting the patent is always presumed to be correct. The burden
then shifts to the defendant to overcome by competent evidence this legal presumption.

The defendant relies on three special defenses. One such defense, on which the judgment of the
lower court is principally grounded, and to which appellant devotes the major portion of his
vigorous argument, concerns the element of novelty, invention, or discovery. A second line of
defense relates to the fact that defendant has never made a complete Vargas plow, but only
points, shares, shoes, and heel pieces, to serve as repairs. Defendant's contention is, that in
common with other foundries, he has for years cast large numbers of plow points and shares
suitable for use either on the native wooden plow, or on the Vargas plow.

The third defense is, that under the provisions of the statute, an inventor's creation must not have
been in public use or on sale in the United States (and the Philippine Islands) for more than two
years prior to his application. The inventor, more than two years before the application for the
patent, the patent is invalid. To entitle a man to a patent, the invention must be new to the world
As said by the United States Supreme Court, "it has been repeatedly held by this court that
a single instance of public use of the invention by a patentee for more than two years before the
date of his application for his patent will be fatal to the validity of the patent when issued."
We think the testimony shows such a public use of the Vargas plow as to render the patent
invalid Nicolas Roces, a farmer, testified that he had bought twenty Vargas plows. It was a plow
completely identical with that for which the plaintiff had received a patent. We think a
preponderance of the evidence is to the effect that for more than two years before the application
for the original letters patent, or before July 22, 1908, there was, by the consent and allowance of
Vargas, a public use of the invention covered by them. We are not certain but that appellee has
proved every one of his defenses. We are certain that he has at least demonstrated the public use
of the Vargas plow over two years prior to the application for a patent. Such being the case,
although on a different ground, we must sustain the judgment of the lower court,

G.R. No. L-36650             January 27, 1933

Case #2

ANGEL VARGAS, plaintiff-appellee,
vs.
PETRONILA CHUA, ET AL., defendants-appellants.

Angel Vargas, the plaintiff herein, brought this action to restrain the appellants and the other
defendant entity, Cham Samco & Sons, their agents and mandatories, from continuing the
manufacture and sale of plows similar to his plow described in his patent No. 1,507,530

In addition to the evidence presented, the parties submitted the following stipulation of facts:

Cham Samco & Sons, is a commercial partnership duly organized under the laws of the Philippine
Islands, with their principal office in the City of Manila, and that the defendants Cham Samco, Cham
Siong E, Cham Ai Chia and Lee Cham Say, all of age and residents of the City of Manila, are the
partners of the firm Cham Samco & Sons.

The parties take for granted that the complaint in this case is amended in the sense that it includes
Coo Paoco as party defendant in his capacity as husband of the defendant, Petronila Chua, with
Attorney Jose F. Orozco also representing him, and that he renounces his rights to receive
summons in this case by reproducing the answer of his codefendant, Petronila Chua.

That the plaintiff Vargas is the registered owner and possessor of United States Patent No.
1,507,530 on certain plow improvements, a certified copy of which was registered in the Bureau of
Commerce and industry of the Government of the Philippine

That the plaintiff Vargas is now and has been engaged, since the issuance of his patent, in the
manufacture and sale of plows of the kind, type and design covered by the aforementioned patent,
said plows being of different sizes and numbered in accordance therewith from 1 to 5.
That, since the filing of the complaint to date, the defendant, Petronila Chua, has been
manufacturing and selling plows of the kind, type and

That, since the filing of the complaint to date, the defendant, Coo Teng Hee, doing business in Iloilo
under the name of Coo Kun & Sons Hardware Co., has been obtaining his plows from the defendant
Petronila Chua.

Without prejudice to the plaintiff's right to ask the defendants to render an accounting in case the
court deem it proper, the parties agree that the defendant Coo Teng Hee, doing business under the
name of Coo Kun & Sons Hardware Co., has been selling to his customers in his store on J. Ma.
Basa Street in Iloilo, plows of the kind, type and design represented, having bought said plows from
his codefendant, Petronila Chua, who manufactures them in her factory on Iznart Street, Iloilo.

That the Cham Samco & Sons, in the ordinary course of business, bought the store "El Progreso"
owned by Yao Ki & Co., of Iloilo, a lot of 50 plows, of the form, type and design of Exhibit B-1, as
shown by Invoice C-1, and that it has been selling them in its store on Sto. Cristo St., Manila.

That, on September 19, 1928, the defendant Cham Samco & Sons, sold in its store on Sto. Cristo
St., Manila, the plow Exhibit B-1, for the sale of which invoice Exhibit D was issued.

That the plows manufactured by the plaintiff in accordance with his patent, Exhibit A, are commonly
known to the trade in Iloilo, as well as in other parts of the Philippines, as "Arados Vargas", and that
the plaintiff is the sole manufacturer of said plows.

FIRST ERROR

The trial court erred in declaring that the Vargas plow is distinct from the old model Vargas
plow, Exhibit 2-Chua, covered by the former Patent No. 1,020,232, which had been declared
null and void by this court.

SECOND ERROR

The trial court erred in mistaking the improvement on the plow for the plow itself.

Issue: WON the plow is a real invention or improvement

Held: No, it is not. The evidence shows that Exhibit F is the kind of plows the plaintiff, Angel Vargas,
manufactures, for which Patent No. 1,507,530, Exhibit A, was issued in his favor. Exhibits B, B-1 and
B-2 are samples of the plows which the herein appellants, Coo Pao and Petronila Chua, have been
manufacturing since 1918, and Exhibit 3-Chua represents the plow for which, on March 12, 1912,
the appellee obtained a patent from the United States Patent Office, which was declared null and
void by the Supreme Court in the case of Vargas

With these facts in view, the principal and perhaps the only question we are called upon to decide is
whether the plow, Exhibit F, constitutes a real invention or an improvement for which a
patent may be obtained, or if, on the contrary, it is substantially the same plow represented
by Exhibit 3-Chua the patent for which was declared null and void in the aforementioned case
of Vargas

We have carefully examined all the plows presented as exhibits as well as the designs of those
covered by the patent, and we are convinced that no substantial difference exists between the plow,
Exhibit F, and the plow, Exhibit 3-Chua which was originally patented by the appellee, Vargas. The
only difference noted by us is the suppression of the bolt and the three holes on the metal strap
attached to the handle bar. These holes and bolt with its nut were suppressed in Exhibit F in which
the beam is movable as in the original plow.

In view of the foregoing, we are firmly convinced that the appellee is not entitled to the protection he
seeks for the simple reason that his plow, Exhibit F, does not constitute an invention in the legal
sense, and because, according to the evidence, the same type of plows had been manufactured in
this country and had been in use in many parts of the Philippine Archipelago, especially in the
Province of Iloilo, long before he obtained his last patent.

We repeat that in view of the evidence presented, and particularly of the examination we have made
of the plows, we cannot escape the conclusion that the plow upon which the appellee's contention is
based, does not constitute an invention and, consequently, the privilege invoked by him is untenable
and the patent acquired by him should be declared ineffective.

The judgment appealed from is hereby reversed and the appellants are absolved from the complaint,
with costs of this instance against the appellee. So ordered.
G.R. No. L-38010         December 21, 1933

Case #3

PATRICK HENRY FRANK and WILLIAM HENRY GOHN, plaintiffs-appellants,

vs.
G. KOSUYAMA, defendant-appellee.

Patent No. 1519579 (Exhibit 117) on improvement in hemp stripping machines and
registered in the Bureau of Commerce and Industry of the Philippine Islands was the
origin of this ordering him thereby to refrain immediately from the manufacture and sale
of machines similar to the one covered by the patent. The plaintiffs appealed from the
judgment rendered by the trial court dismissing their complaint, with cost, as well as the
defendant's counterclaim of P10,000. The defendant did not appeal.

The plaintiff alleged that their hemp stripping machines, for which they obtained a
patent, have the following characteristics: "A stripping head, a horizontal table, a
stripping knife supported upon such table, a tappering spindle, a rest holder adjustably
secured on the table portion, a lever and means of compelling the knife to close upon
the table, a pallet or rest in the bottom of the table, a resilient cushion under such
palletor rest." In spite of the fact that they filed an amended complaint from which the
"spindle" or conical drum, which was the only characteristic feature of the machine
mentioned in the original complaint, was eliminated, the plaintiffs insisted that the said
part constitutes the essential difference between the machine in question and other
machines and that it was the principal consideration upon which their patent was
issued.

Trial court conclusion:

In constructing their machine the plaintiffs did nothing but improve, to a certain
degree, those that were already in vogue and in actual us in hemp producing
provinces. It cannot be said that they have invented the "spindle" inasmuch as
this was already known since the year 1909 or 1910. Neither it can be said that
they have invented the stripping knife and the contrivance which controls the
movement and pressure thereof on the ground that stripping knives together with
their control sets were already in actual use in the different stripping machines
long before their machine appeared.

On the other hand, although the plaintiffs alleged in their original complaint that
"the principal and important feature of said machine is a spindle upon which the
hemp to be stripped is wound in the process of stripping," nevertheless, in their
amended complaint which was filed after a portion of the evidence therein had
already been submitted and it was known that the use of the spindle was nothing
new, they still made the allegations copying the same from the application which
they filed with the United States Patent Office, under which they obtained their
patent in question. The aforesaid application clearly shows that what they applied
 for was not a patent for a "pioneer or primary invention" but only for some "new
and useful improvement in hemp stripping machines."

Issue: WON the hemp stripping machine constitutes as an invention on the

ground that it lacks originality.

Held: No, it is not. We agree with the trial court that, strictly speaking, the hemp
stripping machine of the plaintiffs does not constitute an invention on the ground that it
lacks the elements of novelty, originality and precedence. In fact, before the plaintiffs
herein obtained their patent, they themselves had already publicly used the same kind
of machine for some months, at least, and, various other machines, having in general,
the same characteristics and important parts as that of the said plaintiffs, were known in
the Province of Davao. Machines known as Molo, Riesgo, Crumb, Icsiar, Browne and
McFie were already known in that locality and used by the owners of hemp plantations
before the machine of the plaintiffs came into existence.

Notwithstanding the foregoing facts, the trial court did not decree the annulment of the
plaintiffs' patent and the herein defendant-appellee insists that the patent in question
should be declared null and void. We are of the opinion that it would be improper and
untimely to render a similar judgment, in view of the nature of the action brought by the
plaintiffs and in the absence of a cross-complaint to that effect. For the purposes of this
appeal, suffice it to hold that the defendant is not civilly liable for alleged infringement of
the patent in question.

In the light of sound logic, the plaintiffs cannot insist that the "spindle" was a patented
invention on the ground that said part of the machine was voluntarily omitted by them
from their application, as evidenced by the photographic copy thereof (Exhibit 41)
wherein it likewise appears that the patent on Improved Hemp Stripping Machines was
issued minus the "spindle" in question.

Wherefore, reiterating that the defendant cannot be held civilly liable for alleged
infringement of the patent upon which the present action is based on the ground that
there is no essential part of the machine manufactured and sold by him, which was
unknown to the public in the Province of Davao at the time the plaintiffs applied for and
obtained their patent for improved hemp stripping machines, the judgment appealed
from is hereby affirmed, with the costs against the plaintiffs-appellants. So ordered.
G.R. L-45101 November 28, 1986

Case #4

ROSARIO C. MAGUAN (formerly ROSARIO C. TAN), petitioner,

vs.
THE HONORABLE COURT OF APPEALS and SUSANA LUCHAN, respondents.

Maguan is doing business under the firm name and style of SWAN MANUFACTURING"
while private respondent Luchan is likewise doing business under the firm name and
style of "SUSANA LUCHAN POWDER PUFF MANUFACTURING."

It is undisputed that Maguan is a patent holder of powder puff namely: 1. UM-423

(extended and/or renewed under Extension No. UM-109 for a period of 5 years from
October 6, 1971) 2. UM-450 (extended and/or renewed under Extension No. UM110 for
a period of 5 years from January 26, 1972) 3. UM 1184, for a period of 5years fromApril
5, 1974.(Petition, Rollo, pp. 6-7).

Maguan informed Luchan that the powder puffs the latter is manufacturing and selling to
various enterprises particularly those in the cosmetics industry, resemble Identical or
substantially Identical powder puffs of which the former is a patent holder under
Registration Certification Nos. Extension UM-109, Extension UM-110 and Utility Model
No. 1184; petitioner explained such production and sale constitute infringement of said
patents and therefore its immediate discontinuance is demanded.

Luchan replied stating that her products are different and countered that petitioner's
patents are void because the utility models applied for were not new and patentable and
the person to whom the patents were issued was not the true and actual author nor
were her rights derived from such author.

In view thereof, petitioner filed a complaint for damages with injunction and preliminary
injunction against Luchan with the then Court of First Instance of Rizal, Pasig Branch

In her answer, Luchan alleged that the products she is manufacturing and offering for
sale are not Identical, or even only substantially Identical to the products covered by
petitioner's patents and, by way of affirmative defenses, further alleged that petitioner's
patents in question are void for the following reasons: (a) since years prior to the filing of
applications for the patents involved, powder puffs of the kind applied for were then
already existing and publicly being sold in the market; both in the Philippines and
abroad; and

The trial court issued an Order granting the preliminary injunction prayed for by
petitioner. Consequently, the corresponding writ was subsequently issued enjoining the
herein private respondent (then defendant) and all other persons employed by her, her
agents, servants and employees from directly or indirectly manufacturing
Private respondent questioned the propriety of the trial court's issuance of the Writ of
Preliminary Injunction arguing that since there is still a pending cancellation proceedings

The trial court denied private respondent's motion for reconsideration

In challenging these Orders private respondent filed a petition for certiorari with the CA
reiterating among other things the invalidity of petitioner's patents.

CA issued a writ of Preliminary Injunction to restrain respondents from enforxing or

continuing to enforce the writ

ln said decision respondent court stated that in disposing of the petition it tackled only the issue of
whether the court a quo acted with grave abuse of discretion in issuing the challenged orders. It
made clear the question of whether the patents have been infringed or not was not determined
considering the court a quo has yet to decide the case on the merits

Feeling aggrieved, private respondent moved to reconsider.

Reviewing on reconsideration, respondent court gave weight to private respondent's allegation that
the latter's products are not identical or even only substantially identical to the products covered by
petitioner's patents. Said court noticed that contrary to the lower courts position that the court a
quo had no jurisdiction to determine the question of invalidity of the patents, Section 45 and 46 of the
Patent Law allow the court to make a finding on the validity or invalidity of patents and in the event
there exists a fair question of its invalidity, the situation calls for a denial of the writ of preliminary
injunction pending the evaluation of the evidence presented Thus, finding the lower court's position
to have been opposed to Patent Law, respondent court considered it a grave abuse of discretion
when the court a quo issued the writ being questioned without looking into the defenses alleged by
herein private respondent. Further, it considered the remedy of appeal, under the circumstances, to
be inadequate.

Thus, the CA made a complete turnabout from its original decision and promulgated a Resolution,
issuing a writ of certiorari.

CA was not persuaded by the grounds embodied in the motion for reconsideration filed by herein
petitioner, denied the same for lack of merit, thereby maintaining the same stand it took in its July 6,
1976 Resolution (Rollo, p. 281). Hence, this petition.

Issues
WON in an action for infringement the Court a quo had jurisdiction to determine
the invalidity of the patents at issue which invalidity was still pending

WON the Court a quo committed grave abuse of discretion in the issuance of a

writ of preliminary injunction

I.

The first issue has been laid to rest in a number of cases where the Court ruled that
"When a patent is sought to be enforced, the questions of invention, novelty or prior
use, and each of them, are open to judicial examination."
Under the present Patent Law, there is even less reason to doubt that the trial court has
jurisdiction to declare the patents in question invalid. A patentee shall have the
exclusive right to make, use and sell the patented article or product and the making,
using, or selling by any person without the authorization of the patentee constitutes
infringement of the patent (Sec. 37, R.A. 165). Any patentee whose rights have been
infringed upon may bring an action before the proper CFI now (RTC) and to secure an
injunction for the protection of his rights (Sec. 42, R.A. 165). Defenses in an action for
infringement are provided for in Section 45 of the same law which in fact were availed of
by private respondent in this case. Then, as correctly stated by respondent Court of
Appeals, this conclusion is reinforced by Sec. 46 of the same law which provides that if
the Court shall find the patent or any claim thereof invalid, the Director shall on
certification of the final judgment ... issue an order cancelling the patent or the claims
found invalid and shall publish a notice thereof in the Official Gazette." Upon such
certification, it is ministerial on the part of the patent office to execute the judgment.

In cases of infringement of patent no preliminary injunction will be granted unless the patent
is valid and... infringed beyond question and the record conclusively proves the defense is
sham.

II.

The burden of proof to substantiate a charge of infringement is with the plaintiff. But
where the plaintiff introduces the patent in evidence, and the same is in due form, there
is created a prima facie presumption of its correctness and validity.

The question then in the instant case is whether or not the evidence introduced by
private respondent herein is sufficient to overcome said presumption.

After a careful review of the evidence consisting of 64 exhibits and oral testimonies of
five witnesses presented by private respondents before the Court of First Instance
before the Order of preliminary injunction was issued as well as those presented by the
petitioner, respondent Court of Appeals was satisfied that there is a prima facie  showing
of a fair question of invalidity of petitioner's patents on the ground of lack of novelty. As
pointed out by said appellate court said evidence appeared not to have been
considered at all by the court a quo for alleged lack of jurisdiction, on the mistaken
notion that such question in within the exclusive jurisdiction of the patent office.

It has been repeatedly held that an invention must possess the essential elements of
novelty , originality and precedence and for the patentee to be entitled to protection, the
invention must be new to the world.

III.

It will be noted that the validity of petitioner's patents is in question for want of novelty.
Private respondent contends that powder puffs Identical in appearance with that
covered by petitioner's patents existed and were publicly known and used as early as
1963 long before petitioner was issued the patents in question. (List of Exhibits, Rollo,
pp. 194-199). As correctly observed by respondent Court of Appeals, "since sufficient
proofs have been introduced in evidence showing a fair question of the invalidity of the
patents issued for such models, it is but right that the evidence be looked into,
evaluated and determined on the merits so that the matter of whether the patents
issued were in fact valid or not may be resolved."

All these notwithstanding, the trial court nonetheless issued the writ of preliminary
injunction which under the circumstances should be denied.

For failure to determine first the validity of the patents before aforesaid issuance of the
writ, the trial court failed to satisfy the two requisites necessary if an injunction is to
issue, namely: the existence of the right to be protected and the violation of said right.

Such contention is untenable.

As to petitioner's claim of prescription, private respondent's contention that such refers

to the filing of petitions for cancellation in the Patent Office under Sec. 28 of the Patent
Law and not to a defense against an action for infringement under Sec. 45 thereof
which may be raised anytime, is evident under aforesaid law.

PREMISES CONSIDERED, the assailed resolutions of the Court of Appeals are hereby
AFFIRMED.

The first issue has been laid to rest in a number of cases where the Court ruled that "When a
patent is sought to be enforced, the questions of invention, novelty or prior use, and each of
them, are open to judicial examination." (Vargas v. F.M. Yaptico & Co. 40 Phil. 199 [1919];
Vargas v. Chua, 57 Phil. 790-791 [1933]; Frank and Gohn v. Kosuyana 59 Phil. 207 [1933]).

Under the present Patent Law, there is even less reason to doubt that the trial court has
jurisdiction to declare the patents in question invalid. A patentee shall have the exclusive
right to make, use and sell the patented article or product and the making, using, or selling
by any person without the authorization of the patentee constitutes infringement of the
patent (Sec. 37, R.A. 165). Any patentee whose rights have been infringed upon may bring an
action before the proper CFI now (RTC) and to secure an injunction for the protection of his
rights (Sec. 42, R.A. 165). Defenses in an action for infringement are provided for in Section
45 of the same law which in fact were availed of by private respondent in this case. Then, as
correctly stated by respondent Court of Appeals, this conclusion is reinforced by Sec. 46 of
the same law which provides that if the Court shall find the patent or any claim thereof
invalid, the Director shall on certification of the final judgment ... issue an order cancelling
the patent or the claims found invalid and shall publish a notice thereof in the Official
Gazette." Upon such certification, it is ministerial on the part of the patent office to execute
the judgment. (Rollo, pp. 221-222).

II.

The burden of proof to substantiate a charge of infringement is with the plaintiff. But where
the plaintiff introduces the patent in evidence, and the same is in due form, there is created
a prima facie presumption of its correctness and validity. The decision of the Commissioner
(now Director) of Patent in granting the patent is presumed to be correct. The burden of going
forward with the evidence (burden of evidence) then shifts to the defendant to overcome by
competent evidence this legal presumption.

The question then in the instant case is whether or not the evidence introduced by private
respondent herein is sufficient to overcome said presumption.

After a careful review of the evidence consisting of 64 exhibits and oral testimonies of five
witnesses presented by private respondents before the Court of First Instance before the
Order of preliminary injunction was issued as well as those presented by the petitioner,
respondent Court of Appeals was satisfied that there is a prima facie showing of a fair
question of invalidity of petitioner's patents on the ground of lack of novelty. As pointed out
by said appellate court said evidence appeared not to have been considered at all by the
court a quo for alleged lack of jurisdiction, on the mistaken notion that such question in
within the exclusive jurisdiction of the patent office.

It has been repeatedly held that an invention must possess the essential elements of
novelty , originality and precedence and for the patentee to be entitled to protection, the
invention must be new to the world. Accordingly, a single instance of public use of the
invention by a patentee for more than two years (now for more than one year only under Sec.
9 of the Patent Law) before the date of his application for his patent, will be fatal to, the
validity of the patent when issued. (Frank, et al. v. Kosuyama Vargas v. F.M. Yaptico & Co.
and Vargas v. Chua, et al., supra).

The law provides:

SEC. 9. Invention not considered new or patentable. — An invention shall not

be considered new or capable of being patented if it was known or used by
others in the Philippines before the invention thereof by the inventor named in
an application for patent for the invention; or if it was patented or described in
any printed publication in the Philippines or any foreign country more than one
year before the application for a patent therefor; or if it had been in public use
or on sale in the Philippines for more than one year before the application for a
patent therefor; or if it is the subject matter of a validity issued patent in the
Philippines granted on an application filed before the filing of the application
for patent therefor.

Thus, more specifically, under American Law from which our Patent Law was derived (Vargas
v. F.M. Yaptico & Co. supra) it is generally held that in patent cases a preliminary injunction
will not issue for patent infringement unless the validity of the patent is clear and beyond
question. The issuance of letters patent, standing alone, is not sufficient to support such
drastic relief (8 Deller's Walker on Patents p. 406). In cases of infringement of patent no
preliminary injunction will be granted unless the patent is valid and infringed beyond
question and the record conclusively proves the defense is sham. (Ibid., p. 402)

In the same manner, under our jurisprudence, as a general rule because of the injurious
consequences a writ of injunction may bring, the right to the relief demanded must be clear
and unmistakable. (Sangki v. Comelec, 21 SCRA 1392; December 26, 1967) and the
dissolution of the writ is proper where applicant has doubtful title to the disputed property.
(Ramos v. C.A., 95 SCRA 359).

III.
It will be noted that the validity of petitioner's patents is in question for want of novelty.
Private respondent contends that powder puffs Identical in appearance with that covered by
petitioner's patents existed and were publicly known and used as early as 1963 long before
petitioner was issued the patents in question. (List of Exhibits, Rollo, pp. 194-199). As
correctly observed by respondent Court of Appeals, "since sufficient proofs have been
introduced in evidence showing a fair question of the invalidity of the patents issued for such
models, it is but right that the evidence be looked into, evaluated and determined on the
merits so that the matter of whether the patents issued were in fact valid or not may be
resolved." (Rollo, pp. 286-287).

All these notwithstanding, the trial court nonetheless issued the writ of preliminary injunction
which under the circumstances should be denied.

For failure to determine first the validity of the patents before aforesaid issuance of the writ,
the trial court failed to satisfy the two requisites necessary if an injunction is to issue,
namely: the existence of the right to be protected and the violation of said right. (Buayan
Cattle Co., Inc. v. Quintillan, 128 SCRA 276).

Under the above established principles, it appears obvious that the trial court committed a
grave abuse of discretion which makes certiorari the appropriate remedy.

As found by respondent Court of Appeals, the injunctive order of the trial court is of so
general a tenor that petitioner may be totally barred from the sale of any kind of powder puff.
Under the circumstances, respondent appellate court is of the view that ordinary appeal is
obviously inadequate. (Rollo, p. 288). A parallel was drawn from a decision of the Supreme
Court in the case of Sanchez v. Hon. Court of Appeals, 69 SCRA 328 [1976] where the First
Division of the Supreme Court ruled that "The prerogative writ of certiorari may be applied for
by proper petition notwithstanding the existence of the regular remedy of an appeal in due
cause when among other reasons, the broader interests of justice so require or an ordinary
appeal is not an adequate remedy."

Private respondent maintains the position that the resolutions sought to be appealed from
had long become final and executory for failure of Hon. Reynaldo P. Honrado, the trial court
judge, to appeal by certiorari from the resolutions of respondent Court of Appeals. (Rollo, pp.
291-292).

Such contention is untenable.

There is no dispute that petitioner has seasonably petitioned. On the other hand, it is
elementary that the trial judge is a mere nominal party as clearly provided in Section 5, Rule
65 of the Revised Rules of Court where it shall be the duty of such person or persons
interested in sustaining the proceedings in court, "to appear and defend, both in his or their
own behalf and in behalf of the court or judge affected by the proceedings."

Relative thereto "the judge whose order is under attack is merely a nominal party; wherefore,
a judge in his official capacity should not be made to appear as a party seeking reversal of a
decision that is unfavorable to the action taken by him." (Hon. Alcasid v. Samson, 102 Phil.
735-736; Tarona v. Sayo, 67 SCRA 508, 524; Lim Se v. Argel, 70 SCRA 378).

As to petitioner's claim of prescription, private respondent's contention that such refers to

the filing of petitions for cancellation in the Patent Office under Sec. 28 of the Patent Law and
not to a defense against an action for infringement under Sec. 45 thereof which may be
raised anytime, is evident under aforesaid law.

PREMISES CONSIDERED, the assailed resolutions of the Court of Appeals are hereby
AFFIRMED

Manzano v. CA
G.R. No. 113388, September 5, 1997

Topic: Concept of Novelty

Facts: Manzano filed with the Philippine Patent Office an action for the cancellation of Letters
Patent for a gas burner registered in the name of Melecia Madolaria. Manzano alleged, among
others, that:
a. The utility model covered by the letters patent was not inventive, new or useful; 
b. Madolaria was not the original, true and actual inventor nor did she derive her rights
from the original, true and actual inventor of the utility model covered by the letters
patent; and
c. The letters patent was secured by means of fraud or misrepresentation; and
d. The utility model covered by the letters patent of Madolaria had been known or used by
others in the Philippines for more than 1 year before she filed her application for letters
patent.
Manzano presented the following documents: a) affidavit alleging the existence of prior art; b) a
brochure distributed by Manila Gas Corporation disclosing a pictorial representation of
Ransome Burner made by Ransome Torch and Burner Company, USA; and, (c) a brochure
distributed by Esso Gasul or Esso Standard Eastern, Inc., of the Philippines showing a picture of
another similar burner with top elevation view and another perspective view of the same burner.
Madolaria, with the help of Rolando Madolaria, stated that they discovered the solution to all
the defects of the earlier models and, based on sketches and specifications, they were able to cast
several models incorporating the additions to the innovations introduced in the models. 

Manzano narrated that her husband Ong Bun Tua worked as a

helper in the UNITED FOUNDRY where respondent Melecia Madolaria
used to be affiliated with from 1965 to 1970; that Ong helped in the
casting of an LPG burner which was the same utility model of a
burner for which Letters Patent No. UM-4609 was issued, and that
after her husbands separation from the shop she organized Besco
Metal Manufacturing (BESCO METAL, for brevity) for the casting of
LPG burners one of which had the configuration, form and
component parts similar to those being manufactured by UNITED
FOUNDRY.
Private respondent, on the other hand, presented only one witness,
Rolando Madolaria, who testified that he was the General
Supervisor of the UNITED FOUNDRY in the foundry, machine and
buffing section; that in his early years with the company, UNITED
FOUNDRY was engaged in the manufacture of different kinds of gas
stoves as well as burners based on sketches and specifications
furnished by customers; that the company manufactured early
models of single-piece types of burners where the mouth and throat
were not detachable; that in the latter part of 1978 respondent
Melecia Madolaria confided in him that complaints were being
brought to her attention concerning the early models being
manufactured; that he was then instructed by private respondent to
cast several experimental models based on revised sketches and
specifications; that private respondent again made some
innovations; that after a few months, private respondent discovered
the solution to all the defects of the earlier models and, based on
her latest sketches and specifications, he was able to cast several
models incorporating the additions to the innovations introduced in
the models. Various tests were conducted on the latest model in the
presence and under the supervision of Melecia Madolaria and they
obtained perfect results. Rolando Madolaria testified that private
respondent decided to file her application for utility model patent in
December 1979.

Director of Patents issued Decision denying the petition for

cancellation and holding that the evidence of petitioner was not able
to establish convincingly that the patented utility model of private
respondent was anticipated. Not one of the various pictorial
representations of business clearly and convincingly showed that
the devices presented by petitioner was identical or substantially
identical with the utility model of the respondent. The decision also
stated that even assuming that the brochures depicted clearly each
and every element of the patented gas burner device so that the
prior art and patented device became identical although in truth
they were not, they could not serve as anticipatory bars for the
reason that they were undated. The dates when they were
distributed to the public were not indicated and, therefore, were
useless prior art references. The records and evidence also do not
support the petitioners contention that Letters Patent No. UM-4609
was obtained by means of fraud and/or misrepresentation. No
evidence whatsoever was presented by petitioner to show that the
then applicant Melecia Madolaria withheld with intent to deceive
material facts which, if disclosed, would have resulted in the refusal
by the Philippine Patent Office to issue the Letters Patent under
inquiry.

Petitioner elevated the decision of the Director of Patents to the

Court of Appeals which affirmed the decision of the Director of
Patents. Hence, this petition for review on certiorari alleging that
the Court of Appeals erred (a) in relying on imaginary differences
which in actuality did not exist between the model of private
respondent covered by Letters Patent No. UM-4609 and the
previously known model of Esso Standard Eastern, Inc., and Manila
Gas Corporation, making such imaginary differences grounded
entirely on speculation, surmises and conjectures; (b) in rendering
judgment based on misapprehension of facts; (c) in relying mainly
on the testimony of private respondents sole witness Rolando
Madolaria; and, (d) in not canceling Letters Patent No. UM-4609 in
the name of private respondent.

WON THE GAS BURNERS WERE PATENTABLE.

We cannot sustain petitioner. Section 7 of RA No. 165, as amended,

which is the law on patents, expressly provides -

Sec. 7. Inventions patentable. Any invention of a new and useful

machine, manufactured product or substance, process or an
improvement of any of the foregoing, shall be patentable.

Further, Sec. 55 of the same law provides -

Sec. 55. Design patents and patents for utility models. - (a) Any
new, original and ornamental design for an article of manufacture
and (b) any new model of implements or tools or of any industrial
product or of part of the same, which does not possess the quality
of invention, but which is of practical utility by reason of its form,
configuration, construction or composition, may be protected by the
author thereof, the former by a patent for a design and the latter by
a patent for a utility model, in the same manner and subject to the
same provisions and requirements as relate to patents for
inventions insofar as they are applicable except as otherwise herein
provided.

The element of novelty is an essential requisite of the patentability

of an invention or discovery. If a device or process has been known
or used by others prior to its invention or discovery by the
applicant, an application for a patent therefor should be denied; and
if the application has been granted, the court, in a judicial
proceeding in which the validity of the patent is drawn in question,
will hold it void and ineffective. It has been repeatedly held that an
invention must possess the essential elements of novelty, originality
and precedence, and for the patentee to be entitled to the
protection the invention must be new to the world.3 chanroblesvirtuallawlibrary

In issuing Letters Patent No. UM-4609 to Melecia Madolaria for an

LPG Burner on 22 July 1981, the Philippine Patent Office found her
invention novel and patentable. The issuance of such patent creates
a presumption which yields only to clear and cogent evidence that
the patentee was the original and first inventor. The burden of
proving want of novelty is on him who avers it and the burden is a
heavy one which is met only by clear and satisfactory proof which
overcomes every reasonable doubt.4 Hence, a utility model shall not
be considered new if before the application for a patent it has been
publicly known or publicly used in this country or has been
described in a printed publication or publications circulated within
the country, or if it is substantially similar to any other utility model
so known, used or described within the country.5 chanroblesvirtuallawlibrary

As found by the Director of Patents, the standard of evidence

sufficient to overcome the presumption of legality of the issuance of
UM-4609 to respondent Madolaria was not legally met by petitioner
in her action for the cancellation of the patent. Thus the Director of
Patents explained his reasons for the denial of the petition to cancel
private respondents patent -

Scrutiny of Exhs. D and E readily reveals that the utility model (LPG
Burner) is not anticipated. Not one of the various pictorial
representations of burners clearly and convincingly show that the
device presented therein is identical or substantially identical in
construction with the aforesaid utility model. It is relevant and
material to state that in determining whether novelty or newness is
negatived by any prior art, only one item of the prior art may be
used at a time. For anticipation to occur, the prior art must show
that each element is found either expressly or described or under
principles of inherency in a single prior art reference or that the
claimed invention was probably known in a single prior art device or
practice. (Kalman v. Kimberly Clark, 218 USPQ 781, 789)

Even assuming gratia arguendi that the aforesaid brochures do

depict clearly on all fours each and every element of the patented
gas burner device so that the prior art and the said patented device
become identical, although in truth they are not, they cannot serve
as anticipatory bars for the reason that they are undated. The dates
when they were distributed to the public were not indicated and,
therefore, they are useless prior art references.

xxxx

Furthermore, and more significantly, the model marked Exh. K does

not show whether or not it was manufactured and/or cast before the
application for the issuance of patent for the LPG burner was filed
by Melecia Madolaria.

With respect to Exh. L, petitioner claimed it to be her own model of

LPG burner allegedly manufactured sometime in 1974 or 1975 and
sold by her in the course of her business operation in the name of
Besco Metal Manufacturing, which burner was denominated as
Ransome burner

xxxx

But a careful examination of Exh. L would show that it does not bear
the word Ransome which is the burner referred to as the product
being sold by the Petitioner. This is not the way to prove that Exh. L
anticipates Letters Patent No. UM-4609 through Exhs. C and D.
Another factor working against the Petitioners claims is that an
examination of Exh. L would disclose that there is no indication of
the time or date it was manufactured. This Office, thus has no way
of determining whether Exh. L was really manufactured before the
filing of the aforesaid application which matured into Letters Patent
No. UM-4609, subject matter of the cancellation proceeding.

At this juncture, it is worthwhile to point out that petitioner also

presented Exh. M which is the alleged burner cup of an imported
Ransome burner. Again, this Office finds the same as unreliable
evidence to show anticipation. It observed that there is no date
indicated therein as to when it was manufactured and/or imported
before the filing of the application for issuance of patent of the
subject utility model. What is more, some component parts of Exh.
M are missing, as only the cup was presented so that the same
could not be compared to the utility model (subject matter of this
case) which consists of several other detachable parts in
combination to form the complete LPG burner.

xxxx

It must likewise be pointed out that Ong Bun Tua testified on the
brochures allegedly of Manila Gas and of Esso Gasul marked Exhs. E
and F and on the alleged fact that Manila Gas Corporation was
importing from the United States Ransome burners. But the same
could not be given credence since he himself admitted during cross-
examination that he has never been connected with Manila Gas
Corporation. He could not even present any importation papers
relating to the alleged imported ransome burners. Neither did his
wife.6 chanroblesvirtuallawlibrary

The above findings and conclusions of the Director of Patent were

reiterated and affirmed by the Court of Appeals.7 chanroblesvirtuallawlibrary

The validity of the patent issued by the Philippine Patent Office in

favor of private respondent and the question over the
inventiveness, novelty and usefulness of the improved model of the
LPG burner are matters which are better determined by the Patent
Office. The technical staff of the Philippine Patent Office composed
of experts in their field has by the issuance of the patent in question
accepted private respondents model of gas burner as a discovery.
There is a presumption that the Office has correctly determined the
patentability of the model8 and such action must not be interfered
with in the absence of competent evidence to the contrary.
The rule is settled that the findings of fact of the Director of Patents,
especially when affirmed by the Court of Appeals, are conclusive on
this Court when supported by substantial evidence. Petitioner has
failed to show compelling grounds for a reversal of the findings and
conclusions of the Patent Office and the Court of Appeals.

The alleged failure of the Director of Patents and the Court of

Appeals to accord evidentiary weight to the testimonies of the
witnesses of petitioner showing anticipation is not a justification to
grant the petition. Pursuant to the requirement of clear and
convincing evidence to overthrow the presumption of validity of a
patent, it has been held that oral testimony to show anticipation is
open to suspicion and if uncorroborated by cogent evidence, as
what occurred in this case, it may be held insufficient.9 chanroblesvirtuallawlibrary

Finally, petitioner would want this Court to review all over again the
evidence she presented before the Patent Office. She argues that
contrary to the decision of the Patent Office and the Court of
Appeals, the evidence she presented clearly proves that the
patented model of private respondent is no longer new and,
therefore, fraud attended the acquisition of patent by private
respondent.

It has been held that the question on priority of invention is one of

fact. Novelty and utility are likewise questions of fact. The validity of
patent is decided on the basis of factual inquiries. Whether evidence
presented comes within the scope of prior art is a factual issue to be
resolved by the Patent Office.10 There is question of fact when the
doubt or difference arises as to the truth or falsehood of alleged
facts or when the query necessarily invites calibration of the whole
evidence considering mainly the credibility of witnesses, existence
and relevance of specific surrounding circumstances, their relation
to each other and to the whole and the probabilities of the
situation.11
chanroblesvirtuallawlibrary

Time and again we have held that it is not the function of the
Supreme Court to analyze or weigh all over again the evidence and
credibility of witnesses presented before the lower tribunal or office.
The Supreme Court is not a trier of facts. Its jurisdiction is limited to
reviewing and revising errors of law imputed to the lower court, its
findings of fact being conclusive and not reviewable by this Court.

WHEREFORE, the Petition is DENIED. The Decision of the Court of

Appeals affirming that of the Philippine Patent Office is AFFIRMED.
Costs against petitioner.

Issue: Is the gas burner patentable?

Ruling: Yes. The element of novelty is an essential requisite of the patentability of an invention
or discovery. If a device or process has been known or used by others prior to its invention or
discovery by the applicant, an application for a patent therefor should be denied; and if the
application has been granted, the court, in a judicial proceeding in which the validity of the
patent is drawn in question, will hold it void and ineffective. It has been repeatedly held that an
invention must possess the essential elements of novelty, originality and precedence, and for the
patentee to be entitled to the protection the invention must be new to the world.
In issuing Letters Patent No. UM-4609 to Melecia Madolaria for an "LPG Burner" on 22 July
1981, the Philippine Patent Office found her invention novel and patentable. The issuance of
such patent creates a presumption which yields only to clear and cogent evidence that the
patentee was the original and first inventor. The burden of proving want of novelty is on him
who avers it and the burden is a heavy one which is met only by clear and satisfactory proof
which overcomes every reasonable doubt. Hence, a utility model shall not be considered "new" if
before the application for a patent it has been publicly known or publicly used in this country or
has been described in a printed publication or publications circulated within the country, or if it
is substantially similar to any other utility model so known, used or described within the
country.
As found by the Director of Patents, the standard of evidence sufficient to overcome the
presumption of legality of the issuance of UM-4609 to respondent Madolaria was not legally
met by petitioner in her action for the cancellation of the patent. Thus, the Director of Patents
explained his reasons for the denial of the petition to cancel private respondent's patent —
Scrutiny of Exhs. "D" and "E" readily reveals that the utility model (LPG Burner) is not
anticipated. Not one of the various pictorial representations of burners clearly and convincingly
show that the device presented therein is identical or substantially identical in construction with
the aforesaid utility model. It is relevant and material to state that in determining whether
novelty or newness is negatived by any prior art, only one item of the prior art may be used at a
time. For anticipation to occur, the prior art must show that each element is found either
expressly or described or under principles of inherency in a single prior art reference or that the
claimed invention was probably known in a single prior art device or practice. 
Even assuming gratia arguendi that the aforesaid brochures do depict clearly on all fours each
and every element of the patented gas burner device so that the prior art and the said patented
device become identical, although in truth they are not, they cannot serve as anticipatory bars
for the reason that they are undated. The dates when they were distributed to the public were
not indicated and, therefore, they are useless prior art references.
ANGELITA MANZANO VS COURT OF APPEALS
ANGELITA MANZANO VS COURT OF APPEALS
G.R. NO. 113388
September 5, 1997
PONENTE: Bellosillo, J.

FACTS:
Petitioner Manzano filed with Philippine Patent Office an action for the cancellation of Letters Patent for a
gas burner registered in the name of private respondent Madolaria who subsequently assigned the same
to private respondent United Foundry. Petitioner alleged that the utility model covered by the letters
patent was not inventive, new, or useful, the specification did not comply with the requirements of R.A.
No. 165, that respondent was not the original, true, and actual inventor nor did she derive her rights from
the same, and that respondent was guilty of fraud or misrepresentation in applying for the letters patent.

Petitioner also alleged that the utility model in question had already been in use and on sale (petitioner
herself being a distributor/seller of the said gas burners) in the Philippines for more than one year before
the respondent filed for the application. Petitioner presented two undated brochures of two different Gas
companies (Manila Gas Corp. & Esso Gasul) which allegedly depicts an identical gas burner as the one
covered in respondent’s letters patent. Respondent presented her husband as lone witness to testify that
respondent, thru complaints of customers, devised a way to solve the defects in the gas burners, and
respondent’s innovation is now the subject of the letters patent.

The Director of Patents denied the petition for cancellation, which was affirmed by the CA, on the ground
that petitioner was not able to convincingly establish that the patented utility model was not novel.
Petitioner failed to overcome her burden and overturn the presumption of legality of the issuance of letters
patent and that respondent withheld material facts with intent to deceive which, if disclosed, would have
resulted in the refusal by the PPO to issue the letters patent. Hence, this appeal.

ISSUE: WON the CA erred in upholding the decision of the Director of Patents.

RULING: NO. In issuing Letters Patent to respondent Madolaria for an LPG Burner, the PPO found her
invention novel and patentable. The issuance of such patent creates a presumption which yields only to
clear and cogent evidence that the patentee was the original and first inventor. The burden of proving
want of novelty is on him who avers it and the burden is a heavy one which is met only by clear and
satisfactory proof which overcomes every reasonable doubt.

As found by the Director of Patents, the standard of evidence sufficient to overcome the presumption of
legality of the issuance of letters patent to respondent Madolaria was not legally met by petitioner in her
action for the cancellation of the patent. The findings and conclusions of the Director of Patent were
reiterated and affirmed by the Court of Appeals. The rule is settled that the findings of fact of the Director
of Patents, especially when affirmed by the Court of Appeals, are conclusive on this Court when
supported by substantial evidence.

The validity of the patent issued by the PPO in favor of private respondent and the question over the
inventiveness, novelty and usefulness of the improved model of the LPG burner are matters which are
better determined by the PPO. The technical staff of the Philippine Patent Office composed of experts in
their field has by the issuance of the patent in question accepted private respondents model of gas burner
as a discovery. There is a presumption that the Office has correctly determined the patentability of the
model and such action must not be interfered with in the absence of competent evidence to the contrary.

Aguas v. De Leon
G.R. No. L-32160 January 30, 1982
Topic: Concept of Inventive Steps

Facts: Conrado de Leon filed a complaint for infringement of patent against Domiciano Aguas
and F. H. Aquino and Sons alleging that he is the original first and sole inventor of certain new
and useful improvements in the process of making mosaic pre-cast tiles. He said that Aguas
infringed his right by making, using and selling tiles embodying said patent invention and, that
F. H. Aquino & Sons is also guilty of infringement by making and furnishing to Aguas the
engravings, castings and devices designed and intended of tiles embodying his patented
invention.

Aguas denied the allegations of de Leon and alleged that the latter is neither the original first
nor sole inventor of the improvements in the process of making mosaic pre-cast tiles, the same
having been used by several tile-making factories in the Philippines and abroad years before his
alleged invention thereof. Further, Aguas alleged that the process, subject of said patent, is not
an invention or discovery, nor an improvement of the old system of making tiles as de Leon does
not claim to be the discoverer or inventor of the old process of tile-making. He only claims to
have introduced an improvement of said process.

RTC rendered a decision in favor of plaintiff and against the defendants declaring plaintiff's patent
valid and infringed. The defendant Domiciano Aguas appealed to the Court of Appeals.

The Court of Appeals affirmed the decision of the trial court ruling that the petitioner Domiciano A.
Aguas did infringe de Leon's patent.

Issue: Is the tile-making process patentable?

Ruling: YES. The contention of the petitioner Aguas that the letters patent of de Leon was
actually a patent for the old and non-patentable process of making mosaic pre-cast tiles is
devoid of merit. De Leon never claimed to have invented the process of tile-making. The Claims
and Specifications of Patent No. 658 show that although some of the steps or parts of the old
process of tile making were described therein, there were novel and inventive features
mentioned in the process. Some of the novel features of the private respondent's improvements
are the following: critical depth, with corresponding easement and lip width to such degree as
leaves the tile as thin as 1/8 of an inch at its thinnest portion, ideal composition of cement and
fine river sand, among other ingredients that makes possible the production of tough and
durable wall tiles, though thin and light; the engraving of deep designs in such a way as to make
the tiles decorative, artistic and suitable for wall ornamentation, and the fact that the tiles can be
mass produced in commercial quantities and can be conveniently stock-piled, handled and
packed without any intolerable incidence of breakages.

The records disclose that de Leon's process is an improvement of the old process of tile making.
The tiles produced from de Leon's process are suitable for construction and ornamentation,
which previously had not been achieved by tiles made out of the old process of tile making . De
Leon's invention has therefore brought about a new and useful kind of tile. The old type of tiles
were usually intended for floors although there is nothing to prevent one from using them for
walling purposes. These tiles are neither artistic nor ornamental. They are heavy and massive.
The respondent's improvement is indeed inventive and goes beyond the exercise of mechanical
skill. He has introduced a new kind of tile for a new purpose. He has improved the old method of
making tiles and pre-cast articles which were not satisfactory because of an intolerable number
of breakages, especially if deep engravings are made on the tile. He has overcome the problem of
producing decorative tiles with deep engraving, but with sufficient durability. Durability inspite
of the thinness and lightness of the tile, is assured, provided that a certain critical depth is
maintained in relation to the dimensions of the tile.

Ching v. Salinas, Sr.

G.R. No. 161295, June 29, 2005

Topic: Registration of Utility Models

Facts: Ching is the owner and general manager of Jeshicris Manufacturing Co., the maker and
manufacturer of a Utility Model, described as "Leaf Spring Eye Bushing for Automobile" made
up of plastic.
In 2001, Ching and Joseph Yu were issued by the National Library Certificates of Copyright
Registration and Deposit of the said work described therein as "Leaf Spring Eye Bushing for
Automobile." Thereafter, Ching requested the National Bureau of Investigation (NBI) for
police/investigative assistance for the apprehension and prosecution of illegal manufacturers,
producers and/or distributors of the works. After due investigation, the NBI filed applications
for search warrants in the RTC against William Salinas, Sr. and the officers and members of the
Board of Directors of Wilaware Product Corporation. It was alleged that the respondents therein
reproduced and distributed the said models penalized under Sections 177.1 and 177.3 of the IP
Code. The RTC granted the application and issued a search warrant. 
The respondents filed a motion to quash the search warrants, alleging that the works covered by
the certificates issued by the National Library are not artistic in nature; they are considered
automotive spare parts and pertain to technology. They aver that the models are not original,
and as such are the proper subject of a patent, not copyright. 
The RTC quashed the search warrant on its finding that there was no probable cause for its
issuance. The court ruled that the work covered by the certificates issued to Ching pertained to
solutions to technical problems, not literary and artistic as provided in Article 172 of the
Intellectual Property Code. The CA affirmed the same. 
Undaunted, Ching insists that the IP Code provides in no uncertain terms that copyright
protection automatically attaches to a work by the sole fact of its creation, irrespective of its
mode or form of expression, as well as of its content, quality or purpose. The law gives a non-
inclusive definition of "work" as referring to original intellectual creations in the literary and
artistic domain protected from the moment of their creation; and includes original ornamental
designs or models for articles of manufacture, whether or not registrable as an industrial design
and other works of applied art under Section 172.1(h) of the IP Code.

Issue: Can the Leaf Spring Eye Bushing be protected by the copyright issued
therefor?

Ruling: No. It bears stressing that the focus of copyright is the usefulness of the artistic design,
and not its marketability. The central inquiry is whether the article is a work of art. Works
for applied art include all original pictorials, graphics, and sculptural works that are intended to
be or have been embodied in useful article regardless of factors such as mass production,
commercial exploitation, and the potential availability of design patent protection. 
 As gleaned from the description of the models and their objectives, these articles are useful
articles which are defined as one having an intrinsic utilitarian function that is not merely to
portray the appearance of the article or to convey information. Indeed, while works of applied
art, original intellectual, literary and artistic works are copyrightable, useful articles and works
of industrial design are not. A useful article may be copyrightable only if and only to the extent
that such design incorporates pictorial, graphic, or sculptural features that can be identified
separately from, and are capable of existing independently of the utilitarian aspects of the
article.
We agree with the contention of the petitioner (citing Section 171.10 of R.A. No. 8293), that the
author’s intellectual creation, regardless of whether it is a creation with utilitarian functions or
incorporated in a useful article produced on an industrial scale, is protected by copyright law.
However, the law refers to a "work of applied art which is an artistic creation." It bears stressing
that there is no copyright protection for works of applied art or industrial design which have
aesthetic or artistic features that cannot be identified separately from the utilitarian aspects of
the article. Functional components of useful articles, no matter how artistically designed, have
generally been denied copyright protection unless they are separable from the useful article. 
In this case, the petitioner’s models are not works of applied art, nor artistic
works. They are utility models, useful articles, albeit with no artistic design or
value. 
Neither are we to regard the Leaf Spring Eye Bushing and Vehicle Bearing Cushion as included
in the catch-all phrase "other literary, scholarly, scientific and artistic works" in Section 172.1(a)
of R.A. No. 8293. Applying the principle of ejusdem generis which states that "where a statute
describes things of a particular class or kind accompanied by words of a generic character, the
generic word will usually be limited to things of a similar nature with those particularly
enumerated, unless there be something in the context of the state which would repel such
inference," the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not copyrightable,
being not of the same kind and nature as the works enumerated in Section 172 of R.A. No. 8293.
No copyright granted by law can be said to arise in favor of the petitioner despite the issuance of
the certificates of copyright registration and the deposit of the Leaf Spring Eye Bushing and
Vehicle Bearing Cushion. 
In this case, the bushing and cushion are not works of art. They are, as the petitioner himself
admitted, utility models which may be the subject of a patent.
 
8
JAMES HOWARD BOOTHE and JOHN MORTON, II,  vs. THE DIRECTOR OF PATENTS

G.R. L-24919 January 28, 1980

MELENCIO-HERRERA, J.:

FACTS: 

Petitioner’s claim:  (chemists, citizens and residents of the United States claim to be the inventors of a
new antibiotic popularly known as "aureomycin".)

 They filed an application for Letters of Patent on February 19, 1954 covering invention of
a new antibiotic to Director of Patents (DOP) claiming the right of priority granted to foreign
applicants under section 15 of the Patent Law (Applications Previously Filed Abroad).
(acknowledged on March 6, 1954. )
 They also filed with DOP a legalized copy of their Application for Letters Patent in the
United States for the same invention on April 14, 1954. It indicated that the application in
the United States was filed on March 16, 1963.  This latter date is of crucial importance to
petitioners' cause under section 15 of the Patent Law.

 According to them, based on the Section 15 of the Patent Law, they would be entitled to the
priority date of March 16, 1953 if their application is considered filed in the Philippines as of
March 5, 1954, since the latter date would fall within the one-year period prior to March 5,
1954.

 They informed DOP that Letters Patent for a similar invention as theirs was awarded to
Pfizer and Co., which had filed its application ahead and that they failed to obtain any
U.S. patent for their own invention. They, however, observed and requested: “In the
Philippines, however, Pfizer and Co. did not file or else filed an application after the above
application has already been filed. 

 PATENT EXAMINER:  (Paper No. 6)  Nueva España, rejected all of petitioners' claims and
stated that the "Specification" they had submitted was "incomplete”.

 Petitioners requested for clarification of Paper No. 6, particularly as to why their Specification
was considered incomplete.

SUPERVISING PATENT EXAMINER: De Castro said that the present application cannot
therefore be granted priority date under section 15 are requested by applicant since  the
specification ends on Page 9 with the incomplete sentence. It appears from a comparison
between the submitted 9 pages of the specification and 2 pages of the claims on one hand
and the corresponding pages of the legalized copy of the U.S. application on the other that
the present application does not correspond with the said certified copy of the U.S. 

 Petitioners submitted two complete copies of the Specification, which included nine
additional pages, and reiterated their request for priority right in the Philippines.  

CHIEF PATENT EXAMINER: (Paper No. 20) Mapili rejected the additional nine pages of
Specification submitted by petitioners, and ruled that the filing of the alleged complete copy
Of the specification is an attempt to effect a remedy to the previous finding of
incompleteness as stated in the Paper 6. 

 Petitioners moved for reconsideration on the ground that their application falls under the
exception provided for in Rule 47 of the Revised Rules of Practice in Patent Cases in that the
missing nine pages submitted by them are not really new matter but a mere "minor
informality."

CHIEF PATENT EXAMINER: (Paper No. 22) denied petitioners' Motion for Reconsideration
and the findings of Examiner de Castro,: It ruled that the basis of the examiner's finding is
applicant's verification on file, exclusive of what is in an alleged corresponding application in
the US as evidenced by a certified copy of record. Also, the only use of such certified a copy
is to give proof to an earlier filing date as provided for such section 15 of the Patent Law and
 to use the inventors' oath therein to complete the form requirements relative to his
application in a dance with the provisions of section 13(3) of the same law.

 Adversely affected, petitioners appealed to dent Director of Patents. In their Brief filed with
DOP, petitioners prayed for 1) revocation of the of the Chief Patent Examiner, 2) admission
of their Specification submitted on July 3, 1962; and 3) allowance of their application on the
merits.

Respondent’s claim:

 DOP sustained the appeal and ruled that the additional pages to the specification are hereby
admitted, but the application shall not be extended priority rights under section 15 of
the Patent Law. DOP opined that the portions subsequently supplied in the local application
are not new matter a comparison between the foreign and local applications showed that the
foreign application included the missing portions of the local one. However, DOP qualified
that petitioners' application may be considered complete only on April 14, 1954 when
the certified copy of the foreign application was submitted. 
 DOP claimed that the application is to be considered an ordinary application, not entitled to
the right of priority granted by section 15 of the Patent Law, inasmuch as said application
was not complete within the meaning of Rules 47 and 48 of the Revised Rules of Practice in
Patent Case when first filed on March 5, 1954.

Petitioners: filed a Motion for Partial Reconsideration questioning that portion of DOP’s ruling barring
them from entitlement to the right of priority under section 15 of the Patent Law contending that their
appeal centered merely on the issue of whether or not the additional nine pages of Specification they
had submitted should be treated as new matter.

Respondent Director : denied reconsideration for lack of merit, and explained that “It should be
emphasized that under Rule 262 (b) of the Revised Rules of Practice in Patent Cases, it is stated
that should the Director have any knowledge of any ground not involved in the appeal for rejecting
any claim, he may include in his decision a statement to that effect with his reasons for so holding,
which statement shall constitute a rejection of the claim. Priority claims are covered by the rule”.

Petitioners : filed a Second Motion for reconsideration on the ground that priority rights are governed by
convention and treaty, while invention claims are governed exclusively by the Statute and Rules of
Practice. 

Respondent Director denied that Motion for lack of merit. Hence, this recourse.

On June 9, 1968, Republic Act No. 5434 was enacted providing that final Orders and Decisions of
the Director of Patents in ex parte and inter partes proceedings are appealable to the Court of
Appeals. Since no provision for retroactivity exists in said Act this Tribunal has resolved to retain
jurisdiction over this case.

ISSUES: 

Whether or not the Respondent Director of Patents erred in holding that petitioner’s application
may not be treated as filed under Section 15 of Patent Law. – NO.
 Whether or not the powers of the Director of Patents are only confined to matters or in cases
appealed from. - NO

Whether or not the Respondent Director of Patents misconstrued and misapplied Rules 47, 48
and 262(b) of the Revised Rules of Practice in Patent Cases. - NO

RULING:

The facts unfolded call for an affirmance of respondent Director's rulings.

Explicit in Rule 262 of the Revised Rules of Practice in Patent Cases is the power and authority of
DOP to decide petitioners' appeal in the manner that he did, and we quote:

262. Decision by the Director. — (a) The Director, in his decision, may affirm or reverse the
decision of the Principal Examiner in whole or in part on the ground and on the claims specified
by the Examiner. The affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the Principal Examiner on that claim, except as
to any ground specifically reversed.

(b) Should the Director have knowledge of any grounds not involved in the appeal for rejecting
any claim he may include in his decision a statement to that effect with his reasons for so holding
which statement shall constitute a rejection of the claims. ...

In other words, DOP is empowered to consider grounds which may have come to his knowledge
other than those specifically raised in an appeal. He need not confine himself only to issues invoked.
Besides, the question of new matter is inextricably linked with the right of priority on which petitioners
have anchored their application.

It is also far-fetched for petitioners to claim that in ruling on petitioners' right of priority, DOP had
contravened Rule 254 of the Revised Rules of Practice in Patent cases, which provides that the
Director of Patents exercises no direct control, direction and supervision over the Principal Examiner
and the Executive Examiner. What DOP exercised was his authority to review the decisions of
Patent Examiners, as explicitly provided for in the last paragraph of the same Rules 254, as follows:

The only supervision which the Director of Patent may lawfully exercise over the Principal
Examiners and the Executive Examiner is a general supervision, exercised through a review of
the recommendations they may make for the grant of a patent, and through a review of their
decision by petition and appeal.

Similarly untenable is petitioners' contention that respondent Director had misconstrued and
misapplied Rules 47 and 48 of the Revised Rules of Practice in Patent Cases. The said Rules
provide:

47. Application accepted and filed for examination only when complete — An application for an
invention patent will not be accepted and placed upon the files for examination until all its
required parts, complying with the rules relating thereto are received except that 'certain minor
informalities may be waived subject to subsequent correction, whenever required.

If the papers and parts are incomplete, or so defective that they cannot be accepted as a
complete application for examination, the applicant will be notified; the papers will be held four
 months for completion and if not by then completed, will be stored as an abandoned incomplete
application and eventually destroyed or otherwise disposed of.

48. Serial number and filing date of application — Complete applications are numbered in regular
order, and the applicant win be informed of the serial number and filing date of the application by
a filing receipt. The filing date of the applicant is the, date on which the complete application,
acceptable for placing on the files for examination, is received in the Patent Office; or the date on
which the last part completing such application is received, in the case of an incomplete or
defective application completed within four months. The Executive Examiner shall be in charge of
fixing the filing date and serial number of an application.

Under the aforecited provisions, it is imperative that the application be complete in order that it may
be accepted. It is essential to the validity of Letters Patent that the specifications be full, definite, and
specific.  The purpose of requiring a definite and accurate description of the process is to apprise the
public of what the patentee claims as his invention, to inform the Courts as to what they are called
upon to construe, and to convey to competing manufacturers and dealers information of exactly what
they are bound to avoid.

The specification which petitioners submitted on March 5, 1954 was far from complete. That
defect was one of substance and not merely one of form. What petitioners claimed as their
invention was not completely determinable therefrom. Petitioners' application could be deemed as
complete only on July 2, 1963 when they submitted the additional pages on the Specifications and
Claims. Respondent Director, therefore, did not err in converting petitioners' application into an
ordinary application filed on April 14, 1954, not only for their having failed to complete their
application within the four-month period provided for by Rules 47 and 48, Revised Rules of Practice
in Patent Cases, and as required of them by Paper No. 6, but also for their having failed to file a
complete application within twelve months from March 16, 1953, the date of the foreign application
For, to be entitled to the filing date of the patent application, an invention disclosed in a previously
filed application must be described within the instant application in such a manner as to enable one
skilled in the art to use the same for a legally adequate utility.  
 9
E.I DUPONT DE NEMOURS AND CO., (assignee of inventors Carino, Duncia and Wong) vs.
DIRECTOR EMMA C. FRANCISCO (in her capacity as DIRECTOR GENERAL OF THE
INTELLECTUAL PROPERTY OFFICE), DIRECTOR EPIFANIO M. VELASCO (in his capacity as
the DIRECTOR OF THE BUREAU OF PATENTS, and THERAPHARMA, INC.

G.R. No. 174379, August 31, 2016

LEONEN, J.:
A patent is granted to provide rights and protection to the inventor after an invention is disclosed to
the public. It also seeks to restrain and prevent unauthorized persons from unjustly profiting from a
protected invention. However, ideas not covered by a patent are free for the public to use and
exploit. Thus, there are procedural rules on the application and grant of patents established to
protect against any infringement. To balance the public interests involved, failure to comply with
strict procedural rules will result in the failure to obtain a patent.
FACTS:
E.I. Dupont Nemours’ Claim (American corporation organized under the laws of the State of Delaware.  It
is the assignee of inventors Carini, Duncia, and Wong, all citizens of the United States of America.)

It filed Philippine Patent Application for losartan before the Bureau of Patents,
Trademarks, and Technology Transfer.  (The product was produced and marketed by Merck,
Sharpe, and Dohme Corporation (Merck), E.I. Dupont Nemours' licensee, under the brand
names Cozaar and Hyzaar. )
The patent application was handled by Atty. Mapili, a local resident agent who handled a
majority of E.I. Dupont Nemours' patent applications in the Philippines from 1972 to 1996. 
Its new counsel, Ortega, Del Castillo, Bacorro, Odulio, Calma, and Carbonell, sent the
Intellectual Property Office a letter requesting that an office action be issued on Philippine
Patent Application.

 Patent Examiner: Bulihan of Intellectual Property Office sent Paper No. 2 which stated that the
appointed attorney on record was the late Atty. Mapili and that the reconstituted documents provided
no documents that will show that the authority to prosecute the instant application is now transferred
to the present counsel. No official revocation on record is available. Therefore, an official revocation
of the Power of Attorney of the former counsel and the appointment of the present by the applicant is
therefore required.
E.I. Dupont Nemours submitted a Power of Attorney executed by Miriam Meconnahey, authorizing
Ortega, Castillo, Del Castillo, Bacorro, Odulio, Calma, and Carbonell to prosecute and handle its
patent applications. It also filed a Petition for Revival with Cost of Philippine Patent Application. It
argued that its former counsel did not inform it about the abandonment of the application, and it was
not aware that former counsel had already died.    It argued that it only had actual notice of the
abandonment on January 30, 2002, the date of Paper No. 2.  Thus, it argued that its Petition for
Revival was properly filed under Section 113 of the 1962 Revised Rules of Practice before the
Philippines Patent Office in Patent Cases (1962 Revised Rules of Practice). 
Director of Patents denied the Petition for Revival for having been filed out of time. It stated that the
Petition for Revival was filed beyond the reglementary period. Since the law and rules do not give
 the Director of Patents to stretch the period for revival, the Office is constrained to apply Rule 115 to
the instant case. 
E.I. Dupont Nemours appealed the denial to the Director-General of the Intellectual Property
Office. In the Decision, Director-General Emma C. Francisco denied the appeal and affirmed the
Resolution of the Director of Patents. Hence, it filed before the Court of Appeals a Petition for
Review seeking to set aside the Intellectual Property Office's Decision dated October 22, 2003.  
Court of Appeals: granted the Petition for Review by saying that there is sufficient justification to relax
the application of the above-cited doctrine in this case, and to afford petitioner some relief from the
gross negligence committed by its former lawyer, Atty. Mapili.
Office of the Solicitor General: (on behalf of the Intellectual Property Office) moved for reconsideration.
Therapharma, Inc. moved for leave to intervene and admit the Attached Motion for
Reconsideration and argued that the Court of Appeals' Decision directly affects its "vested"
rights to sell its own product.  It alleged that it filed before the Bureau of Food and Drugs its own
application for a losartan product "Lifezar," a medication for hypertension, which the Bureau
granted. It argued that it made a search of existing patent applications for similar products before its
application, and that no existing patent registration was found since E.I. Dupont Nemours'
application for its losartan product was considered abandoned by the Bureau of Patents,
Trademarks, and Technology Transfer. It alleged that sometime in 2003 to 2004, there was an
exchange of correspondence between Therapharma, Inc. and Merck. In this exchange, Merck
informed Therapharma, Inc. that it was pursuing a patent on the losartan products in the Philippines
and that it would pursue any legal action necessary to protect its product.
Court of Appeals: issued the Resolution granting the Motion for Leave to Intervene. It ruled that it has
interest in the revival of E.I. Dupont Nemours' patent application since it was the local competitor for
the losartan product.  Even if the Petition for Review was premised on the revival of the patent
application, Therapharma, Inc.' s intervention was not premature since E.I. Dupont Nemours,
through Merck, already threatened Therapharma, Inc. with legal action if it continued to market its
losartan product.
E.I. Dupont Nemours moved for reconsideration on February 22, 2006, assailing the Court of Appeals'
January 31, 2006 Resolution. 
Court of Appeals resolved both Motions for Reconsideration and rendered the Amended
Decision reversing its August 31, 2004 Decision. It ruled that the public interest would be prejudiced
by the revival of E.I. Dupont Nemours' application. It found that losartan was used to treat
hypertension, "a chronic ailment afflicting an estimated 12.6 million Filipinos," and noted that the
presence of competition lowered the price for losartan products.  It also found that the revival of the
application prejudiced Therapharma, Inc.' s interest, in that it had already invested more than
P20,000,000.00 to develop its own losartan product and that it acted in good faith when it marketed
its product. That it erroneously based its August 31, 2004 Decision on E.I Dupont Nemours'
allegation that it took seven (7) to 13 years for the Intellectual Property Office to act on a patent
application.  While it might have taken that long to issue the patent, it did not take that long for the
Intellectual Property Office to act on application. Citing Schuartz v. Court of Appeals, it found that
both E.I. Dupont Nemours and Atty. Mapili were inexcusably negligent in prosecuting the patent
application. 
E.I. Dupont Nemours filed before this Court this Petition for Review on Certiorari. Both respondents
Intellectual Property Office and Therapharma, Inc. were directed to comment on the comment on the
Petition. Upon submission of their respective Comments,  petitioner was directed to file its
50

Consolidated Reply.  Thereafter, the parties were directed to file their respective memoranda.  
ISSUES:

Whether or not the petitioner's patent application should be revived. NO

RULING:
An abandoned patent application may only be revived within four (4) months from the date of
abandonment. No extension of this period is provided by the 1962 Revised Rules of Practice.
Section 113 states:

113. Revival of abandoned application.-An application abandoned for failure to prosecute

may be revived as a pending application if it is shown to the satisfaction of the Director that
the delay was unavoidable. An abandoned application may be revived as a pending
application within four months from the date of abandonment upon good cause shown and
upon the payment of the required fee of ₱25. An application not revived within the specified
period shall be deemed forfeited.

Under Chapter VII, Section 1 ll(a) of the 1962 Revised Rules of Practice, a patent application is
deemed abandoned if the applicant fails to prosecute the application within four months from the
date of the mailing of J the notice of the last action by the Bureau of Patents, Trademarks, and
Technology Transfer, and not from applicant's actual notice. Section 11 l(a) states:

Chapter VII. TIME FOR RESPONSE BY APPLICANT; ABANDONMENT OF APPLICATION

111. Abandonment for failure to respond within the time limit.-

(a) If an applicant fails to prosecute his application within four months after the date when
the last official notice of action by the Office was mailed to him, or within such time as may
be fixed (rule 112), the application will become abandoned.

According to the records of the Bureau of Patents, Trademarks, and Technology Transfer Chemical
Examining Division, petitioner filed Philippine Patent Application No. 35526 on July 10, 1987. It was
assigned to an examiner on June 7, 1988. An Office Action was mailed to petitioner's agent, Atty.
Mapili, on July 19, 1988. Because petitioner failed to respond within the allowable period, the
application was deemed abandoned on September 20, 1988. Under Section 113, petitioner had until
January 20, 1989 to file for a revival of the patent application. Its Petition for Revival, however, was
filed on May 30, 2002,  13 years after the date of abandonment.
Section 113 has since been superseded by Section 133.4 of the Intellectual Property Code, Rule
930 of the Rules and Regulations on Inventions, and Rule 929 of the Revised Implementing Rules
and Regulations for Patents, Utility Models and Industrial Design. The period of four (4) months from
the date of abandonment, however, remains unchanged. The Intellectual Property Code even
provides for a shorter period of three (3) months within which to file for revival:

SECTION 133. Examination and Publication. –

....
133.4. An abandoned application may be revived as a pending application within three (3)
months from the date of abandonment, upon good cause shown and the payment of the
required fee.

Rule 930 of the Rules and Regulations on Inventions provides:

Rule 930. Revival of application. - An application deemed withdrawn for failure to prosecute
may be revived as a pending application within a period of four (4) months from the mailing
date of the notice of withdrawal if it is shown to the satisfaction of the Director that the failure
was due to fraud, accident, mistake or excusable negligence.
A petition to revive an application deemed withdrawn must be accompanied by (1) a showing
of the cause of the failure to prosecute, (2) a complete proposed response, and (3) the
required fee.
 An application not revived in accordance with this rule shall be deemed forfeited.

Rule 929 of the Revised Implementing Rules and Regulations for Patents, Utility Models and
Industrial Design provides:

Rule 929. Revival of Application. - An application deemed withdrawn for failure to prosecute

may be revived as a pending application within a period of four (4) months from the mailing
date of the notice of withdrawal if it is shown to the satisfaction of the Director that the failure
was due to fraud, accident, mistake, or excusable negligence. A petition to revive an
application deemed withdrawn shall be accompanied by:
(a) A showing of a justifiable reason for the failure to prosecute;
(b) A complete proposed response; and
(c) Full payment of the required fee.
No revival shall be granted to an application that has been previously revived with cost.
An application not revived in accordance with this Rule shall be deemed forfeited.

Even if the delay was unavoidable, or the failure to prosecute was due to fraud, accident, mistake, or
excusable negligence, or the Petition was accompanied by a complete proposed response, or all
fees were paid, the Petition would still be denied since these regulations only provide a four (4 )-
month period within which to file for the revival of the application. The rules do not provide any
exception that could extend this four (4)-month period to 13 years.
Petitioner’s patent application, therefore, should not be revived since it was filed beyond the
allowable period.
 10
SMITH KLINE BECKMAN CORPORATION, vs. THE HONORABLE COURT OF APPEALS and
TRYCO PHARMA CORPORATION, 
G. R. No. 126627               August 14, 2003
CARPIO-MORALES, J.:
FACTS:
Smith Kline Beckman Corporation (SKBC) (corporation existing by virtue of the laws of the state of
Pennsylvania, USA and licensed to do business in the Philippines). 
It filed on October 8, 1976, as assignee, before the Bureau of Patents, Trademarks and
Technology Transfer an application for patent over an invention entitled "Methods and
Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-
Benzimidazole Carbamate." Letters Patent No. 14561 for the aforesaid invention was issued to
petitioner for a term of seventeen (17) years. The letters patent provides in its claims that the
patented invention consisted of a new compound named methyl 5 propylthio-2-benzimidazole
carbamate and the methods or compositions utilizing the compound as an active ingredient in
fighting infections caused by gastrointestinal parasites and lungworms in animals such as swine,
sheep, cattle, goats, horses, and even pet animals.
Tryco Pharma Corporation (TPC) (domestic corporation that manufactures, distributes and sells
veterinary products including Impregon, a drug that has Albendazole for its active ingredient and is
claimed to be effective against gastro-intestinal roundworms, lungworms, tapeworms and fluke
infestation in carabaos, cattle and goats.)
SKBC sued TPC for infringement of patent and unfair competition before the Caloocan City
Regional Trial Court (RTC). It claimed that its patent covers or includes the substance Albendazole
such that TPC, by manufacturing, selling, using, and causing to be sold and used the drug Impregon
without its authorization, infringed Claims 2, 3, 4, 7, 8 and 9 of Letters Patent No. 14561 as well as
committed unfair competition under Article 189, paragraph 1 of the Revised Penal Code and Section
29 of Republic Act No. 166 (The Trademark Law) for advertising and selling as its own the drug
Impregon although the same contained petitioner’s patented Albendazole. 
RTC Caloocan, upon motion of SKBC, issued a temporary restraining order against private respondent
enjoining it from committing acts of patent infringement and unfair competition and a writ of
preliminary injunction was subsequently issued. 
TPC in its Answer averred that Letters Patent No. 14561 does not cover the substance Albendazole for
nowhere in it does that word appear; that even if the patent were to include Albendazole, such
substance is unpatentable; that the Bureau of Food and Drugs allowed it to manufacture and market
Impregon with Albendazole as its known ingredient; that there is no proof that it passed off in any
way its veterinary products as those of petitioner; that Letters Patent No. 14561 is null and void, the
application for the issuance thereof having been filed beyond the one year period from the filing of
an application abroad for the same invention covered thereby, in violation of Section 15 of Republic
Act No. 165 (The Patent Law); and that petitioner is not the registered patent holder.
TPC lodged a Counterclaim against SKBC for such amount of actual damages as may be proven;
₱1,000,000.00 in moral damages; ₱300,000.00 in exemplary damages; and ₱150,000.00 in
attorney’s fees.
 RTC: ruled in favor of TPC  and rendered that the Letters Patent No. 14561 issued by the then
Philippine Patents Office is hereby declared null and void for being in violation of Sections 7, 9 and
15 of the Patents Law. The Director of Bureau of Patents is hereby directed to cancel Letters Patent
No. 14561 issued to the plaintiff and to publish such cancellation in the Official Gazette.
CA: AFFIRMED with the MODIFICATION the RTC’s decision but orders for the nullification of Letters
Patent No. 14561 and for its cancellation are deleted therefrom. It upheld the trial court’s finding that
TPC was not liable for any infringement of the patent of petitioner in light of the latter’s failure to
show that Albendazole is the same as the compound subject of Letters Patent No. 14561.  However,
declared that Letters Patent No. 14561 was not void as it sustained petitioner’s explanation that
Patent Application Serial No. 18989 which was filed on October 8, 1976 was a divisional application
of Patent Application Serial No. 17280 filed on June 17, 1975 with the Philippine Patent Office, well
within one year from petitioner’s filing on June 19, 1974 of its Foreign Application Priority Data No.
480,646 in the U.S. covering the same compound subject of Patent Application Serial No. 17280.  
MR: denied
SKBC: argues that under the doctrine of equivalents for determining patent infringement,
Albendazole, the active ingredient it alleges was appropriated by private respondent for its drug
Impregon, is substantially the same as methyl 5 propylthio-2-benzimidazole carbamate covered by
its patent since both of them are meant to combat worm or parasite infestation in animals. Petitioner
concludes that both methyl 5 propylthio-2-benzimidazole carbamate and the U.S.-patented
Albendazole are dependent on each other and mutually contribute to produce a single result,
thereby making Albendazole as much a part of Letters Patent No. 14561 as the other substance is.
Petitioner concedes in its Sur-Rejoinder that although methyl 5 propylthio-2-benzimidazole
 

carbamate is not identical with Albendazole, the former is an improvement or improved version of
the latter thereby making both substances still substantially the same.
TPC: contends that application of the doctrine of equivalents would not alter the outcome of the
case, Albendazole and methyl 5 propylthio-2-benzimidazole carbamate being two different
compounds with different chemical and physical properties. 
ISSUE: 
Whether private respondent TPC committed patent infringement to the prejudice of petitioner.
RULING: NO
The compound albendazole was not claimed in the patent of the petitioner. From a reading of the 9
claims of Letters Patent No. 14561 in relation to the other portions thereof, no mention is made of
the compound Albendazole. All that the claims disclose are: the covered invention, that is, the
compound methyl 5 propylthio-2-benzimidazole carbamate; the compound’s being anthelmintic but
nontoxic for animals or its ability to destroy parasites without harming the host animals; and the
patented methods, compositions or preparations involving the compound to maximize its efficacy
against certain kinds of parasites infecting specified animals.
When the language of its claims is clear and distinct, the patentee is bound thereby and may not
claim anything beyond them. And so are the courts bound which may not add to or detract from the
 

claims matters not expressed or necessarily implied, nor may they enlarge the patent beyond the
scope of that which the inventor claimed and the patent office allowed, even if the patentee may
have been entitled to something more than the words it had chosen would include. 
It bears stressing that the mere absence of the word Albendazole in Letters Patent No. 14561 is not
determinative of Albendazole’s non-inclusion in the claims of the patent. While Albendazole is
admittedly a chemical compound that exists by a name different from that covered in petitioner’s
letters patent, the language of Letter Patent No. 14561 fails to yield anything at all regarding
Albendazole. And no extrinsic evidence had been adduced to prove that Albendazole inheres in
petitioner’s patent in spite of its omission therefrom or that the meaning of the claims of the patent
embraces the same.
The doctrine of equivalent is not applicable in the instant case for the failure of petitioner to prove
substantial sameness of petitioner’s compound and albendazole.
The doctrine of equivalents provides that an infringement also takes place when a device
appropriates a prior invention by incorporating its innovative concept and, although with some
modification and change, performs substantially the same function in substantially the same way to
achieve substantially the same result. Yet again, a scrutiny of petitioner’s evidence fails to convince
this Court of the substantial sameness of petitioner’s patented compound and Albendazole. While
both compounds have the effect of neutralizing parasites in animals, identity of result does not
amount to infringement of patent unless Albendazole operates in substantially the same way or by
substantially the same means as the patented compound, even though it performs the same function
and achieves the same result. In other words, the principle or mode of operation  must be the
 

same or substantially the same. 

The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the
patentee having the burden to show that all three components of such equivalency test are met. 22

As stated early on, petitioner’s evidence fails to explain how Albendazole is in every essential detail
identical to methyl 5 propylthio-2-benzimidazole carbamate. Apart from the fact that Albendazole is
an anthelmintic agent like methyl 5 propylthio-2-benzimidazole carbamate, nothing more is asserted
and accordingly substantiated regarding the method or means by which Albendazole weeds out
parasites in animals, thus giving no information on whether that method is substantially the same as
the manner by which petitioner’s compound works. The testimony of Dr. Orinion lends no support to
petitioner’s cause, he not having been presented or qualified as an expert witness who has the
knowledge or expertise on the matter of chemical compounds.