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PATENTS: DIGESTS

MANZANO v CA However, The validity of the patent issued by the


278 SCRA 688 Philippine Patent Office in favor of private respondent and
The primary purpose of the patent system is not the question over the inventiveness, novelty and usefulness
the reward of the individual but the advancement of the arts of the improved model of the LPG burner are matters which
and sciences. The function of a patent is to add to the sum are better determined by the Patent Office. The technical
of useful knowledge and one of the purposes of the patent staff of the Philippine Patent Office composed of experts in
system is to encourage dissemination of information their field has by the issuance of the patent in question
concerning discoveries and inventions. accepted private respondent’s model of gas burner as a
discovery. There is a presumption that the Office has
FACTS: correctly determined the patentability of the model and such
Angelita Manzano filed PPO an action for the action must not be interfered with in the absence of
cancellation of Letters Patent for a gas burner registered in competent evidence to the contrary.
the name of respondent Melecia Madolaria who The rule is settled that the findings of fact of the
subsequently assigned the letters patent to New United Director of Patents, especially when affirmed by the Court of
Foundry and Manufacturing Corporation (UNITED FOUNDRY, Appeals, are conclusive on this Court when supported by
for brevity). Petitioner alleged that (a) the utility model substantial evidence. Petitioner has failed to show
covered by the letters patent, in this case, an LPG gas compelling grounds for a reversal of the findings and
burner, was not inventive, new or useful; (b) the conclusions of the Patent Office and the Court of Appeals.
specification of the letters patent did not comply with the Petition DISMISSED.
requirements of Sec. 14, RA No. 165, as amended; (c) MAGUAN v CA
respondent Melecia Madolaria was not the original, true and 146 SCRA 107
actual inventor nor did she derive her rights from the FACTS:
original, true and actual inventor of the utility model Petitioner is doing business under the firm name
covered by the letters patent; and, (d) the letters patent and style of SWAN MANUFACTURING" while private
was secured by means of fraud or misrepresentation. respondent is likewise doing business under the firm name
Testifying for herself petitioner narrated that her and style of "SUSANA LUCHAN POWDER PUFF
husband Ong Bun Tua worked as a helper in the UNITED MANUFACTURING.” And holder
FOUNDRY where respondent Melecia Madolaria used to be petitioner informed private respondent that the
affiliated with from 1965 to 1970; that Ong helped in the powder puffs the latter is manufacturing and selling to
casting of an LPG burner which was the same utility model various enterprises particularly those in the cosmetics
of a burner and that after her husband’s separation from the industry, resemble Identical or substantially Identical
shop she organized Besco Metal Manufacturing (BESCO powder puffs of which the former is a patent holder under
METAL, for brevity) for the casting of LPG burners one of Registration Certification Nos. Extension UM-109, Extension
which had the configuration, form and component parts UM-110 and Utility Model No. 1184; petitioner explained
similar to those being manufactured by UNITED FOUNDRY. such production and sale constitute infringement of said
Petitioner presented two (2) other witnesses, patents and therefore its immediate discontinuance is
namely, her husband Ong Bun Tua and Fidel Francisco. demanded, otherwise it will be compelled to take judicial
Private respondent, on the other hand, presented action
only one witness, Rolando Madolaria, who testified, among Private respondent replied stating that her
others, that he was the General Supervisor of the UNITED products are different and countered that petitioner's
FOUNDRY. patents are void because the utility models applied for were
Director of Patents Cesar C. Sandiego denied the not new and patentable and the person to whom the
petition for cancellation and holding that the evidence of patents were issued was not the true and actual author nor
petitioner was not able to establish convincingly that the were her rights derived from such author.
patented utility model of private respondent was Petitioner filed a complaint for damages with
anticipated. injunction and preliminary injunction against private
Petitioner elevated the decision of the Director of respondent with the then Court of First Instance of Rizal
Patents to the Court of Appeals which affirmed the decision The trial court issued an Order granting the
of the Director of Patents. Hence, this petition for review on preliminary injunction prayed for by petitioner.
certiorari. Consequently, the corresponding writ was subsequently
issued.
ISSUE: In challenging these Orders private respondent
Whether the dismissal is proper where the patent filed a petition for certiorari with the respondent court but
applied for has no substantial difference between the model was denied. Hence this petition.
to be patented and those sold by petitioner.
ISSUE:
HELD: (1) Whether or not in an action for infringement the Court a
The element of novelty is an essential requisite of the quo had jurisdiction to determine the invalidity of the
patentability of an invention or discovery. If a device or patents at issue which invalidity was still pending
process has been known or used by others prior to its consideration in the patent office.
invention or discovery by the applicant, an application for a (2) Whether or not the Court a quo committed grave abuse
patent therefor should be denied; and if the application has of discretion in the issuance of a writ of preliminary
been granted, the court, in a judicial proceeding in which injunction.
the validity of the patent is drawn in question, will hold it (3) Whether or not certiorari is the proper remedy.
void and ineffective. It has been repeatedly held that an
invention must possess the essential elements of novelty, HELD:
originality and precedence, and for the patentee to be 1) The first issue has been laid to rest in a number of cases
entitled to the protection the invention must be new to the where the Court ruled that "When a patent is sought to be
world.

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PATENTS: DIGESTS

enforced, the questions of invention, novelty or prior use, Under the above established principles, it appears
and each of them, are open to judicial examination." obvious that the trial court committed a grave abuse of
Under the present Patent Law, there is even less discretion which makes certiorari the appropriate remedy.
reason to doubt that the trial court has jurisdiction to As found by respondent Court of Appeals, the
declare the patents in question invalid. A patentee shall injunctive order of the trial court is of so general a tenor that
have the exclusive right to make, use and sell the patented petitioner may be totally barred from the sale of any kind of
article or product and the making, using, or selling by any powder puff. Under the circumstances, respondent appellate
person without the authorization of the patentee constitutes court is of the view that ordinary appeal is obviously
infringement of the patent (Sec. 37, R.A. 165). Any patentee inadequate.
whose rights have been infringed upon may bring an action VARGAS v YAPTICO & CO
before the proper CFI now (RTC) and to secure an injunction 40 PHIL 195
for the protection of his rights. FACTS:
Angel Vargas, a farmer acquainted with local
2) The burden of proof to substantiate a charge of conditions and alive to the commercial possibilities, took it
infringement is with the plaintiff. But where the plaintiff upon himself to produce, with the native plow as the model,
introduces the patent in evidence, and the same is in due an improved, adjustable plow. He made application for a
form, there is created a prima facie presumption of its United States patent to cover his so-called invention. The
correctness and validity. The decision of the Commissioner letters patent were issued by the United States Patent Office
(now Director) of Patent in granting the patent is presumed in favor of Vargas .Acertified copy of the patent was filed in
to be correct. The burden of going forward with the the Division of Patents, Copyrights, and Trademarks of the
evidence (burden of evidence) then shifts to the defendant Executive Bureau, Government of the Philippine Islands. The
to overcome by competent evidence this legal presumption. patent and its registry was also published in the newspaper,
The question then in the instant case is whether or El Tiempo.
not the evidence introduced by private respondent herein is Since 1910, Vargas has engaged in the
sufficient to overcome said presumption. manufacture of these plows in the city of Iloilo, Philippine
After a careful review of the evidence consisting of Islands. On the plows there was first stamped the words
64 exhibits and oral testimonies of five witnesses presented "Patent Applied For," later after the patent had been
by private respondents before the Court of First Instance granted, changed to "Patented Mar. 12, 1912." Ninety per
before the Order of preliminary injunction was issued as well cent of the plows in use in the Visayas (Iloilo and vicinity)
as those presented by the petitioner, respondent Court of are said to be Vargas plows.
Appeals was satisfied that there is a prima facie showing of During this same period, the firm of F. M. Yaptico &
a fair question of invalidity of petitioner's patents on the Co. (Ltd.), was engaged in the foundry business in the City
ground of lack of novelty. As pointed out by said appellate of Iloilo. It openly held itself out as a manufacturer of plow
court said evidence appeared not to have been considered parts. It has in fact produced points, shares, shoes, and heel
at all by the court a quo for alleged lack of jurisdiction, on pieces in a considerable amount adapted to replace worn-
the mistaken notion that such question in within the out parts of the Vargas plow.
exclusive jurisdiction of the patent office. Such was the existing situation when, in the early
It has been repeatedly held that an invention must part of 1918, the owner of the patent, and thus the proper
possess the essential elements of novelty , originality and party to institute judicial proceedings, began action in the
precedence and for the patentee to be entitled to Court of First Instance of Iloilo to enjoin the alleged
protection, the invention must be new to the world. infringement of U.S. Patent No. 1020232 by the defendant F.
Accordingly, a single instance of public use of the invention M Yaptico & Co. (Ltd.), and to recover the damages suffered
by a patentee for more than two years (now for more than by reason of this infringement. The court issued the
one year only under Sec. 9 of the Patent Law) before the preliminary injunction as prayed for. The defendant, in
date of his application for his patent, will be fatal to, the addition to a general denial, alleged, as special defenses,
validity of the patent when issued. that the patent lacked novelty or invention, that there was
It will be noted that the validity of petitioner's no priority of ideas or device in the principle and
patents is in question for want of novelty. Private construction of the plow, and that the plow, whose
respondent contends that powder puffs Identical in manufacture it was sought to have enjoined by the plaintiff,
appearance with that covered by petitioner's patents had already been in public use for more than two years
existed and were publicly known and used as early as 1963 before the application of the plaintiff for his patent. The
long before petitioner was issued the patents in question. parties subsequently entered into a stipulation that the
(List of Exhibits, Rollo, pp. 194-199). As correctly observed court should first resolve the question of whether or not
by respondent Court of Appeals, "since sufficient proofs there had been an infraction of the patent, reserving the
have been introduced in evidence showing a fair question of resultant question of damages for later decision. After the
the invalidity of the patents issued for such models, it is but taking of evidence, including the presentation of exhibits,
right that the evidence be looked into, evaluated and the trial judge, the Honorable Antonio Villareal, in a very
determined on the merits so that the matter of whether the exhaustive and learned decision, rendered judgment in
patents issued were in fact valid or not may be resolved." favor of the defendant and against the plaintiff, declaring
(Rollo, pp. 286-287). null and without effect the patent in question and dismissing
All these notwithstanding, the trial court the suit with costs against the plaintiff. The preliminary
nonetheless issued the writ of preliminary injunction which injunction theretofore issued was dissolved.
under the circumstances should be denied. From this judgment the plaintiff has appealed.
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 ISSUE:
is to issue, namely: the existence of the right to be (1) The judgment of the trial court in finding the patent
protected and the violation of said right. (Buayan Cattle Co., granted plaintiff void for lack of novelty and invention
Inc. v. Quintillan, 128 SCRA 276). should be affirmed;

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PATENTS: DIGESTS

(2) The patent granted plaintiff is void from the public use of more than two years before the application for the patent,
his plow for over two years prior to his application for a the patent is invalid.
patent, and Although we have spent some time in arriving at
(3) If the patent is valid, there has been no contributory this point, yet having reached it, the question in the case is
infringement by defendant. single and can be brought to a narrow compass. Under the
English Statute of Monopolies (21 Jac. Ch., 3), and under the
HELD: United States Patent Act of February 21, 1793, later
(1) When a patent is sought to be enforced, "the question of amended to be as herein quoted, it was always the rule, as
invention, novelty, or prior use, and each of them, are open stated by Lord Coke, Justice Story and other authorities, that
to judicial examination." The burden of proof to substantiate to entitle a man to a patent, the invention must be new to
a charge of infringement is with the plaintiff. Where, the world. As said by the United States Supreme Court, "it
however, the plaintiff introduces the patent in evidence, if it has been repeatedly held by this court that a single instance
is in due form, it affords a prima facie presumption of its of public use of the invention by a patentee for more than
correctness and validity. The decision of the Commissioner two years before the date of his application for his patent
of Patents in granting the patent is always presumed to be will be fatal to the validity of the patent when issued."
correct. The burden then shifts to the defendant to On the facts, we think the testimony shows such a
overcome by competent evidence this legal presumption public use of the Vargas plow as to render the patent invalid
.With all due respect, therefore, for the critical and expert Nicolas Roces, a farmer, testified that he had bought twenty
examination of the invention by the United States Patent Vargas plows, of which Exhibit 5 was one, in December,
Office, the question of the validity of the patent is one for 1907; and Exhibit 5, the court found, was a plow completely
judicial determination, and since a patent has been identical with that for which the plaintiff had received a
submitted, the exact question is whether the defendant has patent. The minor exception, and this in itself corroborative
assumed the burden of proof as to anyone of his defenses of Roces' testimony, is that the handle of plow Exhibit 5 is
As herein before stated, the defendant relies on marked with the letters "A V" and not with the words "Patent
three special defenses. One such defense, on which the Applied For" or "Patented Mar.12, 1912." Salvador Lizarraga,
judgment of the lower court is principally grounded, and to a clerk in a business house, testified that he had received
which appellant devotes the major portion of his vigorous plows similar to Exhibits D, 5, and 4, for sale on commission
argument, concerns the element of novelty, invention, or on May, 1908, from Bonifacio Araneta, partner of Vargas in
discovery, that gives existence to the right to a patent. On the plow business. Ko Pao Ko, a blacksmith, testified that he
this point the trial court reached the conclusion that "the had made fifty plow frames in 1905 for Vargas and Araneta,
patented plow of the plaintiff, Exhibit D, is not different from of which Exhibit 4 is one; Exhibit 4, the court found, is a
the native plow, Exhibit 2, except in the material, in the plow identical with that patented by Vargas, but without
form, in the weight and the grade of the result, the said share and mould-board. Alfred Berwin, an employee in the
differences giving it neither a new function nor a new result office of Attorney John Bordman, testified that on September
distinct from the function and the result obtained from the 21, 1908, he had knowledge of a transaction wherein Vargas
native plow; consequently, its production does not and Araneta desired to obtain money to invest in a plow
presuppose the exercise of the inventive faculty but merely factory. George Ramon Saul, a mechanic of the "Taller
of mechanical skill, which does not give a right to a patent Visayas" of Strachan and MacMurray, testified that he had
of an invention under the provisions of the Patent Law." In made Vargas plow points and shares of the present form
thus finding, the court may have been right, since the upon order of Araneta and Vargas in 1906 and 1907 .William
Vargas plow does not appear to be such a "combination" as MacMurray, proprietor of the "Taller Visayas," corroborated
contains a novel assemblage of parts exhibiting invention. the evidence of the witness Saul by the exhibition of the
A second line of defense relates to the fact that account against Vargas and Araneta wherein, under date of
defendant has never made a complete Vargas plow, but December 13, 1906, appears the item "12 new soft steel
only points, shares, shoes, and heel pieces, to serve as plow shares forged and bored for rivets as per sample."
repairs. Defendant's contention is, that in common with Against all this, was the testimony of the plaintiff Angel
other foundries, he has for years cast large numbers of plow Vargas who denied that Saul could have been seen the
points and shares suitable for use either on the native Vargas plow in 1907 and 1907, who denied that Roces
wooden plow, or on the Vargas plow. A difference has long purchased the Vargas plow in 1907, who denied that
been recognized between repairing and reconstructing a Lizarraga could have acted as an agent to sell two plows in
machine. If, for instance, partial injuries, whether they occur November, 1908, who denied any remembrance of the loan
from accident or from wear and tear, to a machine for mentioned by Berwin as having been negotiated in
agricultural purposes, are made this is only re-fitting the September, 1908, who denied that Ko Pao Ko made fifty
machine for use, and thus permissible. Even under the more plows one of which is Exhibit 4, for Araneta and Vargas in
rigorous doctrine of Leeds & Catlin Co. vs. Victor Talking 1905. Plaintiff introduced his books to substantiate his oral
Machine Co. ([1909], 213 U.S., 325), it may be possible that testimony .It is hardly believable that five or six witnesses
all the defendant has done is to manufacture and sell for the defense would deliberately perjure themselves under
isolated parts to be used to replace worn-out parts. oath. One might, but that all together, of different
The third defense is, that under the provisions of nationalities, would enter into such a conspiracy, is to
the statute, an inventor's creation must not have been in suppose the improbable.
public use or on sale in the United States (and the Philippine Tested by the principles which go to make the law,
Islands) for more than two years prior to his application we think a preponderance of the evidence is to the effect
.Without, therefore, committing ourselves as to the first two that for more than two years before the application for the
defenses, we propose to base our decision on the one just original letters patent, or before July 22, 1908, there was, by
suggested as more easily disposing of the case. (See 20 R. the consent and allowance of Vargas, a public use of the
C. L., 1140-1142.) We do so with full consciousness of the invention covered by them.
doubt which arose in the mind of the trial court, but with the To conclude, we are not certain but that appellee
belief that since it has been shown that the invention was has proved every one of his defenses. We are certain that
used in public at Iloilo by others than Vargas, the inventor, he has at least demonstrated the public use of the Vargas

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plow over two years prior to the application for a patent. ISSUE:
Such being the case, although on a different ground, we Whether there is an infringement on the patents
must sustain the judgment of the lower court, without
prejudice to the determination of the damages resulting HELD:
from the granting of the injunction, with the costs of this The trial court did not decree the annulment of the
instance against the appellant. So ordered. plaintiffs' patent and the herein defendant-appellee insists
FRANK v KOSUYAMA that the patent in question should be declared null and void.
59 PHIL 206 We are of the opinion that it would be improper and
FACTS: untimely to render a similar judgment, in view of the nature
Patent on improvement in hemp stripping of the action brought by the plaintiffs and in the absence of
machines, issued by the United States Patent Office and a cross-complaint to that effect. For the purposes of this
registered in the Bureau of Commerce and Industry of the appeal, suffice it to hold that the defendant is not civilly
Philippine, was the origin of this action brought by the liable for alleged infringement of the patent in question.
plaintiffs herein who prayed that the judgment be rendered In the light of sound logic, the plaintiffs cannot
against the defendant, ordering him thereby to refrain insist that the "spindle" was a patented invention on the
immediately from the manufacture and sale of machines ground that said part of the machine was voluntarily
similar to the one covered by the patent: to render an omitted by them from their application, as evidenced by the
accounting of the profits realized from the manufacture and photographic copy thereof (Exhibit 41) wherein it likewise
sale of the machines in question; that in case of refusal or appears that the patent on Improved Hemp Stripping
failure to render such accounting, the defendants be Machines was issued minus the "spindle" in question. Were
ordered to pay the plaintiffs the sum of P60 as profit on we to stress to this part of the machine, we would be giving
each machine manufactured or sold by him; that upon the patent obtained by the plaintiffs a wider range than it
approval of the required bond, said defendant be restrained actually has, which is contrary to the principles of
from continuing the manufacture and sale of the same kind interpretation in matters relating to patents.
of machines; that after the trial the preliminary injunction In support of their claim the plaintiffs invoke the
issued therein be declared permanent and, lastly, that the doctrine laid down by this court in the case of Frank and
said defendant be sentenced to pay the costs and whatever Gohn vs. Benito (51 Phil., 712), wherein it was held that the
damages the plaintiffs might be able to prove therein. The therein defendant really infringed upon the patent of the
action therefore was based upon alleged infringement by therein plaintiffs. It may be noted that the plaintiffs in the
the defendant of the rights and privileges acquired by the former and those of the latter case are the same and that
plaintiffs over the aforesaid patent through the manufacture the patent then involved is the very same one upon which
and sale by the former of machines similar to that covered the present action of the plaintiffs is based. The above-cited
by the aforesaid patent. case, however, cannot be invoked as a precedent to justify a
The plaintiffs appealed from the judgment rendered judgment in favor of the plaintiffs-appellants on the ground
by the trial court dismissing their complaint, with cost, as that the facts in one case entirely different from those in the
well as the defendant's counterclaim of P10,000. The other. In the former case the defendant did not set up the
defendant did not appeal. same special defenses as those alleged by the herein
In their amended complaint, the plaintiff alleged defendant in his answer and the plaintiffs therein confined
that their hemp stripping machines, for which they obtained themselves to presenting the patent, or rather a copy
a patent, have the following characteristics: "A stripping thereof, wherein the "spindle" was mentioned, and this
head, a horizontal table, a stripping knife supported upon court took for granted their claim that it was one of the
such table, a tappering spindle, a rest holder adjustably essential characteristics thereof which was imitated or
secured on the table portion, a lever and means of copied by the then defendant. Thus it came to pass that the
compelling the knife to close upon the table, a pallet or rest "spindle" in question was insistently mentioned in the
in the bottom of the table, a resilient cushion under such decision rendered on appeal as the essential part of the
palletor rest." In spite of the fact that they filed an amended plaintiffs' machine allegedly imitated by the then defendant.
complaint from which the "spindle" or conical drum, which In the case under consideration, it is obvious that the
was the only characteristic feature of the machine "spindle" is not an integral part of the machine patented by
mentioned in the original complaint, was eliminated, the the plaintiffs on the ground that it was eliminated from their
plaintiffs insisted that the said part constitutes the essential patent inasmuch as it was expressly excluded in their
difference between the machine in question and other application, as evidenced by the aforesaid Exhibit 41.
machines and that it was the principal consideration upon Wherefore, reiterating that the defendant cannot
which their patent was issued. The said plaintiffs sustained be held civilly liable for alleged infringement of the patent
their contention on this point even in their printed brief and upon which the present action is based on the ground that
memorandum filed in this appeal. there is no essential part of the machine manufactured and
During the trial, both parties presented voluminous sold by him, which was unknown to the public in the
evidence from which the trial court concluded that in Province of Davao at the time the plaintiffs applied for and
constructing their machine the plaintiffs did nothing but obtained their patent for improved hemp stripping
improve, to a certain degree, those that were already in machines, the judgment appealed from is hereby affirmed,
vogue and in actual us in hemp producing provinces. It with the costs against the plaintiffs-appellants. So ordered.
cannot be said that they have invented the "spindle" VARGAS v CHUA
inasmuch as this was already known since the year 1909 or 57 PHIL 784
1910. Neither it can be said that they have invented the FACTS:
stripping knife and the contrivance which controls the Angel Vargas, the plaintiff herein, brought this
movement and pressure thereof on the ground that action to restrain the appellants and the other defendant
stripping knives together with their control sets were entity, Cham Samco & Sons, their agents and mandatories,
already in actual use in the different stripping machines from continuing the manufacture and sale of plows similar
long before their machine appeared. to his plow described in his patent No. 1,507,530 issued by
the United States Patent Office on September 2, 1924; and

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to compel all of said defendants, after rendering an and issued to him; that said invention was new, useful, not
accounting of the profits obtained by them from the sale of known or used by others in this country before his invention
said plows from September 2, 1924, to pay him damages thereof.
equivalent to double the amount of such profits. That the defendant Domiciano A. Aguas infringed
The trial court rendered a judgement in favor of Letters of Patent No. 658 by making, using and selling tiles
plaintiffs and against the defendant. embodying said patent invention and that defendant F. H.
It appears from the bill of exceptions that Cham Aquino & Sons is guilty of infringement by making and
Samco & Sons did not appeal. furnishing to the defendant Domiciano A. Aguas the
engravings, castings and devices designed and intended of
ISSUE: tiles embodying plaintiff;s patented invention; that he has
Whether the plow, Exhibit F, constitutes a real given direct and personal notice to the defendants of their
invention or an improvement for which a patent may be said acts of infringement and requested them to desist, but
obtained, or if, on the contrary, it is substantially the same nevertheless, defendants have refused and neglected to
plow represented by Exhibit 3-Chua the patent for which desist and have disregarded such request, and continue to
was declared null and void in the aforementioned case of so infringe causing great and irreparable damage to
Vargas vs. F. M. Yaptico & Co., supra. plaintiff; that if the aforesaid infringement is permitted to
continue, further losses and damages and irreparable injury
HELD: will be sustained by the plaintiff; that there is an urgent
The appellee is not entitled to the protection he need for the immediate issuance of a preliminary injunction.
seeks for the simple reason that his plow, Exhibit F, does not The court granted the injunction. And likewise held
constitute an invention in the legal sense, and because, in favor of the plaintiff and against the defendant.
according to the evidence, the same type of plows had been
manufactured in this country and had been in use in many ISSUE:
parts of the Philippine Archipelago, especially in the Whether the process, subject of said patent, is not
Province of Iloilo, long before he obtained his last patent. an invention or discovery, or an improvement of the old
In the above mentioned case of Vargas vs. F. M. system of making tiles.
Yaptico & Co., we said:
When a patent is sought to be enforced, "the HELD:
questions of invention, novelty, or prior use, and each of The validily of the patent issued by the Philippines
them, are open to judicial examination." The burden of proof Patent Office in favor of the private respondent and the
to substantiate a charge of infringement is with the plaintiff. question over the inventiveness, novelty and usefulness of
Where, however, the plaintiff introduces the patent in the improved process therein specified and described are
evidence, if it is the due form, it affords a prima facie matters which are better determined by the Philippines
presumption of its correctness and validity. The decision of Patent Office. The technical staff of the Philippines Patent
the Commissioner of Patents in granting the patent is Office, composed of experts in their field, have, by the
always presumed to be correct. The burden then shifts to issuance of the patent in question, accepted the thinness of
the defendant to overcome by competent evidence this the private respondent's new tiles as a discovery. There is a
legal presumption. With all due respects, therefore, for the presumption that the Philippines Patent Office has correctly
critical and expert examination of the invention by the determined the patentability of the improvement by the
United States Patent Office, the question of the validity of private respondent of the process in question.
the patent is one for judicial determination, and since a The contention of the petitioner Aguas that the
patent has been submitted, the exact question is whether letters patent of de Leon was actually a patent for the old
the defendant has assumed the burden of proof as to and non-patentable process of making mosaic pre-cast tiles
anyone of his defenses. is devoid of merit. De Leon never claimed to have invented
We repeat that in view of the evidence presented, the process of tile-making. The Claims and Specifications of
and particularly of the examination we have made of the Patent No. 658 show that although some of the steps or
plows, we cannot escape the conclusion that the plow upon parts of the old process of tile making were described
which the appellee's contention is based, does not therein, there were novel and inventive features mentioned
constitute an invention and, consequently, the privilege in the process.
invoked by him is untenable and the patent acquired by him In view of the foregoing, this Court finds that Patent
should be declared ineffective. No. 658 was legally issued, the process and/or improvement
The judgment appealed from is hereby reversed being patentable.
and the appellants are absolved from the complaint, with
costs of this instance against the appellee. So ordered.

PARKE DAVIS & CO v DOCTOR’S PHARMA


AGUAS v DE LEON 124 SCRA 115
111 SCRA 238 FACTS:
FACTS: Parke Davis & Company, petitioner herein, is a
Conrado G. de Leon filed in the Court of First foreign corporation is the owner of a patent entitled
Instance of Rizal at Quezon City a complaint for "Process for the Manufacturing of Antibiotics" (Letters Patent
infringement of patent against Domiciano A. Aguas and F. H. No. 50) The patent relates to a chemical compound
Aquino and Sons alleging that being the original first and represented by a formula commonly called chloramphenicol.
sole inventor of certain new and useful improvements in the The patent contains ten claims, nine of which are process
process of making mosaic pre-cast tiles, he lawfully filed and claims, and the other is a product claim to the chemical
prosecuted an application for Philippine patent, and having substance chloramphenicol.
complied in all respects with the statute and the rules of the Respondent Doctors' Pharmaceuticals, Inc., on the
Philippine Patent Office, Patent No. 658 was lawfully granted other hand, is a domestic corporation which applied for a

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petition with the Director of Patents, which was later


amended, praying that it be granted a compulsory license
under Letters Patent No. 50 granted to Parke Davis &
Company based on the following grounds: (1) the patented
invention relates to medicine and is necessary for public
health and safety; (2) Parke Davis & Company is unwilling to
grant petitioner a voluntary license under said patent by
reason of which the production and manufacture of needed
medicine containing chloramphenicol has been unduly
restrained to a certain extent that it is becoming a
monopoly; (3) the demand for medicine containing
chloramphenicol is not being met to an adequate extent and
on reasonable prices; and (4) the patented invention is not
being worked in the Philippines on a commercial scale. In its
petition, Doctors' Pharmaceuticals, Inc. prayed that it be
authorized to manufacture, use, and sell its own products
containing chloramphenicol as well as choose its own brand
or trademark.
Parke Davis & Company filed a written opposition
setting up the following affirmative defenses: (1) a
compulsory license may only be issued to one who will work
the patent and respondent does not intend to work it itself
but merely to import the patented product; (2) respondent
has not requested any license to work the patented
invention in the Philippines; (3) respondent is not competent
to work the patented invention; (4) to grant respondent the
requested license would be against public interest and
would only serve its monetary interest; and (6) the patented
invention is not necessary for public health and safety.
the Director of Patents rendered a decision
granting to respondent the license prayed for .Hence this
petition.

ISSUE:
Whether or not the Director of Patents erred jn
ordering the grant of compulsory license

HELD:
Each of the circumstances mentioned in the law as
grounds stands alone and is independent of the others. And
from them we can see that in order that any person may be
granted a license under a particular patented invention
relating to medicine under Section 34(d), it is sufficient that
the application be made after the expiration of three years
from the date of the grant of the patent and that the
Director should find that a case for granting such license has
been made out. Since in the instant case it is admitted by
petitioner that the chemical substance chloramphenicol is a
medicine, while Letters Patent No. 50 covering said
substance were granted to Parke Davis & Company on
February 9, 1950, and the instant application for license
under said patent was only filed in 1960, verily the period
that had elapsed then is more than three years, and so the
conditions for the grant of the license had been fulfilled. We
find, therefore, no error in the decision of the Director of
Patents on this aspect of the controversy.

SOTELO, MS | 6