DOMICIANO A. AGUAS, petitioner, vs. CONRADO G. DE LEON and COURT OF APPEALS, respondents. [G.R. No.

L-32160 January 30, 1982, FERNANDEZ, J.:] FACTS: 1. April 14, 1962: Conrado G. de Leon filed in the CFI of Rizal a complaint for infringement of patent against Domiciano A. Aguas and F. H. Aquino and Sons a. He alleged that he is the original first and sole inventor of certain new and useful improvements in the process of making mosaic pre-cast tiles b. he lawfully filed and prosecuted an application for Philippine patent, and having complied in all respects with the statute and the rules of the Philippine Patent Office, which was granted to him. c. He has exclusive license to make, use and sell throughout the Philippines the improvement d. defendant F. H. Aquino & Sons is guilty of infringement by making and furnishing to the defendant Domiciano A. Aguas the engravings, castings and devices designed and intended of tiles embodying plaintiff;s patented invention 2. CFI granted De Leons petition for a Writ of Preliminary Injunction 3. Aguas answer denying the allegations of De Leon, alleging that: a. improvements in the process of making mosaic pre-cast tile has been used by several tile-making factories in the Philippines and abroad years before the alleged invention by de Leon b. Letters Patent No. 658 was unlawfully acquired by making it appear in the application in relation thereto that the process is new and that the plaintiff is the owner of the process c. registration was unlawfully secured and was a result of the gross misrepresentation on the part of De Leon d. he can not be guilty of infringement because his products are different from those of the plaintiff 4. TC favored De Leon declaring that the Patent is valid and was infringed 5. Aguas appealed to the CA a. CA affirmed decision of TC b. CAs facts of the case: i. Aguas actual model of the tiles in escayola and explained to said engraver the plans, specifications and the details of the engravings as he wanted them to be made, including an explanation of the lip width, artistic slope of easement and critical depth of the engraving that plaintiff wanted for his moulds 1. engraver Enrique Aquino knew that the moulds he was engraving for plaintiff were the latter's very own, which possession the new features and characteristics covered by plaintiff's parent; ii. Aguas personally, as a building contractor, purchased from plaintiff, tiles shaped out of these moulds at the back of which was imprinted plaintiff's patent number iii. Aguas requested Aquino to make engravings of the same type and bearing the characteristics of plaintiff's moulds; that Mr. Aquino knew that the moulds he was asked to engrave for defendant Aguas would be used to produce cement tiles similar to plaintiff's iv. the moulds which F.H. Aquino & Sons eventually engraved for Aguas and for which it charged Aguas double the rate it charged plaintiff De Leon, contain the very same characteristic features of plaintiff's mould and that Aguas used these
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moulds in the manufacture of his tiles which he actually put out for sale to the public v. both plaintiff's and defendant Aguas' tiles are sculptured pre-cast wall tiles intended as a new feature of construction and wag ornamentation substantially Identical to each other in size, easement, lip width and critical depth of the deepest depression; and that the only significant difference between plaintiff's mould and that engraved by Aquino for Aguas is that, whereas plaintiff's mould turns out tiles 4 x 4 inches in size, defendant Aguas' mould is made to fit a 4-1/4 x 4-1/4 inch tile. 6. patent right of the private respondent expired on May 5, 1977. ISSUE: W/N the Letters Patent granted to De Leon is valid thus entitling him damages for its infringement. HELD: 1. 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. a. De Leon never claimed to have invented the process of tile-making. He only claimed additional process 2. The improvement introduced by De Leon is new, useful and inventive. a. 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. b. The old type of tiles were usually intended for floors although there is nothing to prevent one from using them for walling purposes. c. These tiles are neither artistic nor ornamental. They are heavy and massive. d. He has overcome the problem of producing decorative tiles with deep engraving, but with sufficient durability. 3. Compared to Machuca tiles, the designs of de Leon are embossed and not engraved There may be depressions but these depressions are too shallow to be considered engraved. Besides, the Machuca tiles are heavy and massive. 4. Compared to Pomona titles which are made of ceramic, the de Leon tiles are made of cement 5. By using his improved process, plaintiff has succeeded in producing a new product - a concrete sculptured tile which could be utilized for walling and decorative purposes. No proof was adduced to show that any tile of the same kind had been produced by others before appellee. 6. The validity of the patent issued by the Philippines Patent Office in favor of the private respondent and the question over the inventiveness, novelty and usefulness of the improved process therein specified and described are matters which are better determined by the Philippines Patent Office. a. There is a presumption that the Philippines Patent Office has correctly determined the patentability of the improvement by the private respondent of the process in question being composed of experts in their field.

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JAMES HOWARD BOOTHE and JOHN MORTON, II, petitioners, vs. THE DIRECTOR OF PATENTS, respondent. [G.R. L-24919 January 28, 1980, MELENCIO-HERRERA, J.:] FACTS: 1. Petitioners James Howard Boothe and John Morton II are chemist and US residents who a. They claim that they invented a new antibiotic designated as "tetracycline" i. a new derivative of chlortetracycline (popularly known as "aureomycin") 2. February 19, 1954: petitioners applied for Letters Patent covering said invention to respondent Director of Patents a. They were claiming the right of priority granted to foreign applicants under section 15 of the Patent Law 3. March 6, 1954: Receipt of petitioners' application was acknowledged by respondent Director 4. April 14 1954: Director legalized a copy of their Application a. Important as stated in art 15 for it would entitle petitioners 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. 5. It was found out 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. 6. Patent Examiner, Lydia Nueva Espaa, rejected all of petitioners' claims where it stated the following: a. that a local Patent obtained by Pfizer and Co., presumably covering the same invention. b. "Specification" they had submitted was "incomplete" i. As follow-up petitioners submitted two complete copies of the Specification, which included nine additional pages, and reiterated their request for priority right in the Philippines. c. responsive action should be filed them four months from date of mailing 7. Chief Patent Examiner Nicanor Mapili issued Paper No. 20 rejecting the additional nine pages of Specification submitted by petitioners a. The added 9 pages refers to a new matter \ 8. Mr was filled contending that it is not a new matter but a mere minor informality a. MR denied: passing of incomplete requirements cannot be extended by amendment at a later date. 9. Petitioners appealed to which was granted a. application shall not be extended priority rights under section 15 of the Patent Law Let the filing date of this application be changed from March 5, 1954 to April 14, 1954. b. Remanded to the Chief Patent Examiner for proper action and for further examination on the merits 10. Director found out that between the foreign and local applications showed that the foreign application included the missing portions of the local one. ISSUE: 1. the scope of the powers of the Director of Patents in cases appealed to him 2. W/N the Director was correct of his application of Rules 47, 48 and 262(b) of the Revised Rules of Practice in Patent Cases. HELD: Decision of respondent Director of Patents AFFIRMED
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1. Director 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 a. IN THE CASE: the question of new matter is inextricably linked with the right of priority on which petitioners have anchored their application 2. Director of Patents exercises no direct control, direction and supervision over the Principal Examiner and the Executive Examiner. What respondent Director exercised was his authority to review the decisions of Patent Examiners, as explicitly provided for in the last paragraph of the same Rules 254 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. 3. petitioners' contention is untenable that respondent Director had misconstrued and misapplied Rules 47 and 48 of the Revised Rules of Practice in Patent Cases a. 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. b. 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. c. IN THE CASE: 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.

ELIDAD C. KHO, doing business under the name and style of KEC COSMETICS LABORATORY,petitioner, vs. HON. COURT OF APPEALS, SUMMERVILLE GENERAL MERCHANDISING and COMPANY, and ANG TIAM CHAY, respondents. [G.R. No. 115758. March 19, 2002, DE LEON, JR., J.:] FACTS: 1. Elidad C. Kho filed a complaint for injunction and damages against the respondents Summerville General Merchandising and Company (Summerville, for brevity) and Ang Tiam Chay. He alleges: a. She is the registered owner of the copyrights Chin Chun Su and Oval Facial Cream Container/Case b. she also has patent rights on Chin Chun Su & Device and Chin Chun Su for medicated cream after purchasing the same from Quintin Cheng, the registered owner c. Summerville advertised and sold petitioners cream products under the brand name Chin Chun Su, in similar containers that petitioner uses, thereby misleading the public, and resulting in the decline in the petitioners business sales and income; d. Summerville should be enjoined from allegedly infringing on the copyrights and patents of the Kho 2. Summerville alleges: a. Summerville is the exclusive and authorized importer, re-packer and distributor of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan b. Taiwanese manufacturing company authorized Summerville to register its trade name Chin Chun Su Medicated Cream with the Philippine Patent Office and other appropriate governmental agencies
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c. KEC Cosmetics Laboratory of the petitioner obtained the copyrights through misrepresentation and falsification; d. authority of Quintin Cheng, assignee of the patent registration certificate, to distribute and market Chin Chun Su products in the Philippines had already been terminated by the said Taiwanese Manufacturing Company. 3. TC favored Kho and granted the preliminary injunction prayed for. a. Summervilled MR but denied 4. Summervilled filed petition for certiorari a. CA favored Summerville directing TC to proceed with trial b. CA ruled that: The registration of the trademark or brandname Chin Chun Su by KEC with the supplemental register of the Bureau of Patents, Trademarks and Technology Transfer cannot be equated with registration in the principal register, which is duly protected by the Trademark Law. c. MR filed by Kho but denied ISSUE: W/N Kho is entitled to the use of the trademark on Chin Chun Su and its container based on her copyright and patent over the same HELD: NO. Petition denied. 1. Trademark, copyright and patents differentiated: a. TRADEMARK: any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods i. trade name means the name or designation identifying or distinguishing an enterprise b. COPYRIGHT: confined to literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation c. PATENTABLE INVENTIONS: any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable 2. IN THE CASE: a. Kho has no right to support her claim for the exclusive use of the subject trade name and its container i. name and container of a beauty cream product are proper subjects of a trademark inasmuch as the same falls squarely within its definition. ii. to exclusively use the same in the sale of the beauty cream product, the user must sufficiently prove that she registered or used it before anybody else did. iii. Khos copyright and patent registration of the name and container would not guarantee her the right to the exclusive use of the same for the reason that they are not appropriate subjects of the said intellectual rights.

Mayo vs. Prometheus Lab Inc. (US Supreme Court, March 20, 2012) SOURCE1: FACTS: 1. Respondent, Prometheus Laboratories, Inc. (Prometheus), is the sole and exclusive licensee of the two patents at issue, which concern the use of thiopurine drugs to treat autoimmune diseases.
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2. 3. 4.

5.

a. When ingested, the body metabolizes the drugs, producing metabolites in the bloodstream. Because patients metabolize these drugs differently, doctors have found it difficult to determine whether a particular patients dose is too high, risking harmful side effects, or too low, and so likely ineffective. b. The patent claims here set forth processes embodying researchers findings that identify correlations between metabolite levels and likely harm or ineffectiveness with precision. c. Each claim recites (1) an administering stepinstructing a doctor to administer the drug to his patient(2) a determining steptelling the doctor to measure the resulting metabolite levels in the patients bloodand (3) a wherein stepdescribing the metabolite concentrations above which there is a likelihood of harmful side-effects and below which it is likely that the drug dosage is ineffective, and informing the doctor that metabolite concentrations above or below these thresholds indicate a need to decrease or increase (respectively) the drug dosage. Petitioners Mayo Collaborative Services and Mayo Clinic Rochester (Mayo) bought and used diagnostic tests based on Prometheus patents. But in 2004 Mayo announced that it intended to sell and market its own, somewhat different, diagnostic test. Prometheus sued Mayo contending that Mayos test infringed its patents. The District Court found that the test infringed the patents but granted summary judgment to Mayo, reasoning that the processes claimed by the patents effectively claim natural laws or natural phenomenanamely, the correlations between thiopurine metabolite levels and the toxicity and efficacy of thiopurine drugsand therefore are not patentable. The Federal Circuit reversed, finding the processes to be patent eligible under the Circuits machine or transformation test. On remand from this Court for reconsideration in light of Bilski v. Kappos, which clarified that the machine or transformation test is not a definitive test of patent eligibility, the Federal Circuit reaffirmed its earlier conclusion.

ISSUE: W/N Prometheus process is eligible for patent. Held: NO 1. the laws of nature recited by Prometheus patent claimsthe relationships between concentrations of certain metabolites in the blood and the likelihood that a thiopurine drug dosage will prove ineffective or cause harmare not themselves patentable, a. the claimed processes are not patentable unless they have additional features that provide practical assurance that the processes are genuine applications of those laws rather than drafting efforts designed to monopolize the correlations. b. The three additional steps in the claimed processes here are not themselves natural laws but neither are they sufficient to transform the nature of the claims . c. The administering step simply identifies a group of people who will be interested in the correlations, namely, doctors who used thiopurine drugs to treat patients suffering from autoimmune disorders. i. Doctors had been using these drugs for this purpose long before these patents existed. And a prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the use of the formula to a particular technological environment. ii. The wherein clauses simply tell a doctor about the relevant natural laws, adding, at most, a suggestion that they should consider the test results when making their treatment decisions. The determining step tells a doctor to measure patients metabolite levels, through whatever process the doctor wishes to use. Because methods for making such determinations were well known in the
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art, this step simply tells doctors to engage in well-understood, routine, conventional activity previously engaged in by scientists in the field. 1. Such activity is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law. Parker v. Flook, 437 U. S. 584. d. Considering the three steps as an ordered combination adds nothing to the laws of nature that is not already present when the steps are considered separately. e. (1) Diehr and Flook, the cases most directly on point, both addressed processes using mathematical formulas that, like laws of nature, are not themselves patentable. In Diehr, the overall process was patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole. 450 U. S., at 187. These additional steps transformed the process into an inventive application of the formula. But in Flook, the additional steps of the process did not limit the claim to a particular application, and the particular chemical processes at issue were all well known, to the point where, putting the formula to the side, there was no inventive concept in the claimed application of the formula. 437 U. S., at 594. Here, the claim presents a case for patentability that is weaker than Diehrs patent-eligible claim and no stronger than Flooks unpatentable one. The three steps add nothing specific to the laws of nature other than what is well-understood, routine, conventional activity, previously engaged in by those in the field. Pp. 1113. (2) Further support for the view that simply appending conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patentable is provided in OReilly v. Morse, 15 How. 62, 114115; Neilson v. Harford, Websters Patent Cases 295, 371; Bilski, supra, at ______; and Benson, supra, at 64, 65, 67. Pp. 1416. (3) This Court has repeatedly emphasized a concern that patent law not inhibit future discovery by improperly tying up the use of laws of nature and the like. See, e.g., Benson, 409 U. S., at 67, 68. Rewarding with patents those who discover laws of nature might encourage their discovery. But because those laws and principles are the basic tools of scientific and technological work, id., at 67, there is a danger that granting patents that tie up their use will inhibit future innovation, a danger that becomes acute when a patented process is no more than a general instruction to apply the natural law, or otherwise forecloses more future invention than the underlying discovery could reasonably justify. The patent claims at issue implicate this concern. In telling a doctor to measure metabolite levels and to consider the resulting measurements in light of the correlations they describe, they tie up his subsequent treatment decision regardless of whether he changes his dosage in the light of the inference he draws using the correlations. And they threaten to inhibit the development of more refined treatment recommendations that combine Prometheus correlations with later discoveries. This reinforces the conclusion that the processes at issue are not patent eligible, while eliminating any temptation to depart from case law precedent. Pp. 1619. (c) Additional arguments supporting Prometheus positionthat the process is patent eligible because it passes the machine or transformation test; that, because the particular laws of nature that the claims embody are narrow and specific, the patents should be upheld; that the Court should not invalidate these patents under 101 because the Patent Acts other validity requirements will screen out overly broad patents; and that a principle of law denying patent coverage here will discourage investment in discoveries of new diagnostic laws of naturedo not lead to a different conclusion. Pp. 1924.
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SOURCE2: In an opinion published earlier today, the Supreme Court unanimously held that claims directed to the relationship between the concentrations of blood metabolites and response to a therapeutic drug in two patents owned by Prometheus Laboratories, Inc. were unpatentable, stating that they "effectively claim the underlying laws of nature themselves." This is a reversal of the Federal Circuit's decision, which held that the claims did indeed encompass patentable subject matter. Prometheus Laboratories, Inc. (Prometheus) is the sole licensee of two patents (U.S. Patent Nos. 6,355,623 and6,680,302) claiming methods for determining optimal dosages of thiopurine drugs used to treat gastrointestinal and non-gastrointestinal autoimmune diseases. The patents generally claim methods reciting the steps of: (a) administering a thiopurine drug to a subject, and (b) determining the levels of the drug or the drug's metabolites in red blood cells in the subject. The measured metabolite levels are then compared to pre-determined metabolite levels, wherein measured metabolite levels in the patient that are outside the pre-determined range indicate a need to increase or decrease the level of drug to be administered so as to minimize toxicity and maximize treatment efficacy . The Court sought to determine whether the claims did more than merely describe laws of nature. It asked specifically, "do the patent claims add enough to their statements of the correlations to allow the processes they describe to qualify as patent-eligible processes that apply natural laws?" The Court generally focused its analysis on two specific cases: Diamond v. Diehr, 450 U.S. 175 (1981) (granting claims which encompassed natural phenomena) and Parker v. Flook, 437 U.S. 854 (1978) (invalidating claims encompassing natural phenomena). In analogizing the Prometheus claims to those in Flook, the Court stated that the steps recited in the claimed method add nothing specific to the laws of nature other than what is well-understood, routine, conventional activity, previously engaged in by those in the field" and thus, the claims encompassed non-patentable subject matter. The general message conveyed by the Court seems to be two-fold. First, if "the steps in claimed processes (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field," such claims likely encompass nonpatentable subject matter. And second, the Court demonstrated general concern that "upholding the patents would risk disproportionately tying up the use of the underlying natural laws, inhibiting their use in the making of further discoveries." How this message affects the thousands of existing patents in the field of personal medicine remains to be seen. However, going forward, patent practitioners would be wise to revisit this ruling when drafting claims to medical diagnostic methods.

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