Vous êtes sur la page 1sur 1

Boothe vs Director of Patents | G.R. No.

L-24919
January 28, 1980 | Melencio-Herrera, J.
Facts: Petitioners James Boothe and John Morton II, who are American citizens and
chemists, invented an antibiotic designated as tetracycline. In February 19, 1954,
petitioners applied for Letters of Patent covering such invention and claiming the right of
priority granted to foreign applications under Section 15 of the Patent Law (R.A. 165). In
April 14, 1954, petitioners filed a legalized copy of their application in the United States
for the same invention which showed that it was filed on March 16, 1953. However, in
an interference proceeding in the United States in 1958; the Letters patent for a similar
invention was awarded to Pfizer and Co. Despite such pronouncement, petitioners still
requested that their application be granted on the basis of the claims originally filed by
them.
The Patent Examiner rejected all of petitioners claims by reason of the
pronouncement in favour of Pfizer and Co. and that the Specification filed by petitioners
were incomplete since it appears that the Specification in petitioners US application did
not completely appear in their local application. Petitioners then submitted two complete
copies of their Specification but was rejected in 1959 by the Chief Patent Examiner.
Petitioners moved for reconsideration on the ground that their application falls under the
exception provided in Rule 47 of the Revised Rules of Practice in Patent Cases since their
submissions are not new matters but a mere minor informalities. Again, such was
rejected by the Chief Patent Examiner ruling that the Patent Law provides for a deadline
for filing which cannot be extended otherwise the latter shall be rendered useless.
Petitioner appealed to respondent Director of Patents who ruled that the
application shall be considered as an ordinary application for petitioner failed to file
within the period to claim priority right under the law since it was only in April 14, 1954
when petitioner completed its application. Petitioner now avers that they are granted
priority rights under convention and treaty but was denied but respondent. Hence, the
instant petition.
Issue: Whether or not petitioners are entitled to priority right in the application of patent
under R.A. 165.
Held: No. Under Rule 47 and 48 of the Revised Rules of Practice in Patent cases, an
application is deemed complete when all the required parts to comply with the rules are
submitted except that minor informalities may be waived subject to subsequent
correction, whenever required. The filing date of the applicant is the date on which the
complete application is received in the Patent Office.
The submission made by petitioner on March 5, 1954 was far from complete since
its defect was one of substance and not merely one of form. Their invention was not
completely determinable therefrom due to the incompleteness of the Specification. It
was only the time petitioners submitted the additional pages of Specifications and
Claims to the Patent Office when the application was deemed complete. In order to be
entitled to the priority right under the Patent Law which provided that the local
application must be filed within 12 months from the date of the foreign application and
such application must be complete. The facts show that the application of petitioners
was only deemed completed in April 14, 1954 which was outside the one-year period
from its application in March 16, 1953.
Hence, petitioners are no longer entitled to the priority right in the application of
patent under the Patent Law.