SMITH KLINE BECKMAN CORPORATION, Petitioner,

vs.
THE HONORABLE COURT OF APPEALS and TRYCO
PHARMA CORPORATION, Respondents.
DECISION
CARPIO-MORALES, J.:
Smith Kline Beckman Corporation (petitioner), a corporation
existing by virtue of the laws of the state of Pennsylvania,
United States of America (U.S.) and licensed to do business in
the Philippines, filed on October 8, 1976, as assignee, before
the Philippine Patent Office (now 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." The application bore
Serial No. 18989.

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.
Private respondent lodged a Counterclaim against petitioner
for such amount of actual damages as may be
proven;P1,000,000.00 in moral damages; P300,000.00 in
exemplary damages; and P150,000.00 in attorneys fees.
Finding for private respondent, the trial court rendered a
9
Decision dated July 23, 1991, the dispositive portion of which
reads:
WHEREFORE, in view of the foregoing, plaintiffs complaint
should be, as it is hereby, DISMISSED. The Writ of injunction
issued in connection with the case is hereby ordered
DISSOLVED.

On September 24, 1981, Letters Patent No. 14561 for the

aforesaid invention was issued to petitioner for a term of
seventeen (17) years.

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 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 (private respondent) is a 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.
Petitioner sued private respondent for infringement of patent
and unfair competition before the Caloocan City Regional Trial
3
Court (RTC). It claimed that its patent covers or includes the
substance Albendazole such that private respondent, by
manufacturing, selling, using, and causing to be sold and used
the drug Impregon without its authorization, infringed Claims 2,
4
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 petitioners
5
patented Albendazole.
On motion of petitioner, Branch 125 of the Caloocan RTC
issued a temporary restraining order against private
respondent enjoining it from committing acts of patent
6
infringement and unfair competition. A writ of preliminary
7
injunction was subsequently issued.
8

Private respondent 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

Pursuant to Sec. 46 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.
Defendant Tryco Pharmaceutical Corporation is hereby
awarded P330,000.00 actual damages and P100,000.00
attorneys fees as prayed for in its counterclaim but said
amount awarded to defendant is subject to the lien on correct
payment of filing fees.
SO ORDERED. (Underscoring supplied)
On appeal, the Court of Appeals, by Decision of April 21,
10
1995, upheld the trial courts finding that private respondent
was not liable for any infringement of the patent of petitioner in
light of the latters failure to show that Albendazole is the same
as the compound subject of Letters Patent No. 14561. Noting
petitioners admission of the issuance by the U.S. of a patent
for Albendazole in the name of Smith Kline and French
Laboratories which was petitioners former corporate name, the
appellate court considered the U.S. patent as implying that
Albendazole is different from methyl 5 propylthio-2benzimidazole carbamate. It likewise found that private
respondent was not guilty of deceiving the public by
misrepresenting that Impregon is its product.
The appellate court, however, declared that Letters Patent No.
14561 was not void as it sustained petitioners 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 petitioners
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.
Applying Section 17 of the Patent Law, the Court of Appeals
thus ruled that Patent Application Serial No. 18989 was
deemed filed on June 17, 1995 or still within one year from the
filing of a patent application abroad in compliance with the one-

year rule under Section 15 of the Patent Law. And it rejected

the submission that the compound in Letters Patent No. 14561
was not patentable, citing the jurisprudentially established
presumption that the Patent Offices determination of
patentability is correct. Finally, it ruled that petitioner
established itself to be the one and the same assignee of the
patent notwithstanding changes in its corporate name. Thus
the appellate court disposed:
WHEREFORE, the judgment appealed from is AFFIRMED with
the MODIFICATION that the orders for the nullification of
Letters Patent No. 14561 and for its cancellation are deleted
therefrom.
SO ORDERED.
Petitioners motion for reconsideration of the Court of Appeals
11
decision having been denied the present petition for review
12
on certiorari was filed, assigning as errors the following:
I. THE COURT OF APPEALS GRAVELY ERRED IN
NOT FINDING THAT ALBENDAZOLE, THE ACTIVE
INGREDIENT IN TRYCOS "IMPREGON" DRUG, IS
INCLUDED IN PETITIONERS LETTERS PATENT
NO. 14561, AND THAT CONSEQUENTLY TRYCO IS
ANSWERABLE FOR PATENT INFRINGEMENT.
II. THE COURT OF APPEALS GRAVELY ERRED IN
AWARDING TO PRIVATE RESPONDENT TRYCO
PHARMA CORPORATION P330,000.00 ACTUAL
DAMAGES AND P100,000.00 ATTORNEYS FEES.
Petitioner 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. It cites the "unrebutted" testimony of its
witness Dr. Godofredo C. Orinion (Dr. Orinion) that the
chemical formula in Letters Patent No. 14561 refers to the
compound Albendazole. Petitioner adds that the two
substances substantially do the same function in substantially
the same way to achieve the same results, thereby making
them truly identical. Petitioner thus submits that the appellate
court should have gone beyond the literal wordings used in
Letters Patent No. 14561, beyond merely applying the literal
infringement test, for in spite of the fact that the word
Albendazole does not appear in petitioners letters patent, it
has ably shown by evidence its sameness with methyl 5
propylthio-2-benzimidazole carbamate.
Petitioner likewise points out that its application with the
Philippine Patent Office on account of which it was granted
Letters Patent No. 14561 was merely a divisional application of
a prior application in the U. S. which granted a patent for
Albendazole. Hence, 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.
13

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.
With respect to the award of actual damages in favor of private
respondent in the amount of P330,000.00 representing lost
profits, petitioner assails the same as highly speculative and
conjectural, hence, without basis. It assails too the award
of P100,000.00 in attorneys fees as not falling under any of
the instances enumerated by law where recovery of attorneys
fees is allowed.
14

In its Comment, private respondent contends that application

of the doctrine of equivalents would not alter the outcome of
the case, Albendazole and methyl 5 propylthio-2benzimidazole carbamate being two different compounds with
different chemical and physical properties. It stresses that the
existence of a separate U.S. patent for Albendazole indicates
that the same and the compound in Letters Patent No. 14561
are different from each other; and that since it was on account
of a divisional application that the patent for methyl 5
propylthio-2-benzimidazole carbamate was issued, then, by
definition of a divisional application, such a compound is just
one of several independent inventions alongside Albendazole
under petitioners original patent application.
As has repeatedly been held, only questions of law may be
raised in a petition for review on certiorari before this Court.
Unless the factual findings of the appellate court are mistaken,
absurd, speculative, conjectural, conflicting, tainted with grave
abuse of discretion, or contrary to the findings culled by the
15
court of origin, this Court does not review them.
From an examination of the evidence on record, this Court
finds nothing infirm in the appellate courts conclusions with
respect to the principal issue of whether private respondent
committed patent infringement to the prejudice of petitioner.
The burden of proof to substantiate a charge for patent
16
infringement rests on the plaintiff. In the case at bar,
petitioners evidence consists primarily of its Letters Patent No.
14561, and the testimony of Dr. Orinion, its general manager in
the Philippines for its Animal Health Products Division, by
which it sought to show that its patent for the compound methyl
5 propylthio-2-benzimidazole carbamate also covers the
substance Albendazole.
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-2benzimidazole carbamate; the compounds 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
17
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
18
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 Albendazoles 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 petitioners
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 petitioners patent in spite of its omission therefrom or that
the meaning of the claims of the patent embraces the same.
While petitioner concedes that the mere literal wordings of its
patent cannot establish private respondents infringement, it
urges this Court to apply the doctrine of equivalents.
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
19
the same result. Yet again, a scrutiny of petitioners evidence
fails to convince this Court of the substantial sameness of
petitioners 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
20
achieves the same result. In other words, the principle or
mode of operation must be the same or substantially the
21
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
22
met.
As stated early on, petitioners 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-2benzimidazole 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 petitioners compound works.
The testimony of Dr. Orinion lends no support to petitioners
cause, he not having been presented or qualified as an expert
witness who has the knowledge or expertise on the matter of
chemical compounds.
As for the concept of divisional applications proffered by
petitioner, it comes into play when two or more inventions are
claimed in a single application but are of such a nature that a
23
single patent may not be issued for them. The applicant thus
is required "to divide," that is, to limit the claims to whichever
invention he may elect, whereas those inventions not elected
may be made the subject of separate applications which are
24
called "divisional applications." What this only means is that
petitioners methyl 5 propylthio-2-benzimidazole carbamate is
an invention distinct from the other inventions claimed in the
original application divided out, Albendazole being one of those
other inventions. Otherwise, methyl 5 propylthio-2benzimidazole carbamate would not have been the subject of a
divisional application if a single patent could have been issued
for it as well as Albendazole.1wphi1

The foregoing discussions notwithstanding, this Court does not

sustain the award of actual damages and attorneys fees in
favor of private respondent. The claimed actual damages
of P330,000.00 representing lost profits or revenues incurred
by private respondent as a result of the issuance of the
injunction against it, computed at the rate of 30% of its
alleged P100,000.00 monthly gross sales for eleven months,
were supported by the testimonies of private respondents
25
President and Executive Vice-President that the average
monthly sale of Impregon wasP100,000.00 and that sales
26
plummeted to zero after the issuance of the injunction. While
indemnification for actual or compensatory damages covers
not only the loss suffered (damnum emergens) but also profits
which the obligee failed to obtain (lucrum cessans or ganacias
frustradas), it is necessary to prove the actual amount of
damages with a reasonable degree of certainty based on
competent proof and on the best evidence obtainable by the
27
injured party. The testimonies of private respondents officers
are not the competent proof or best evidence obtainable to
establish its right to actual or compensatory damages for such
damages also require presentation of documentary evidence to
28
substantiate a claim therefor.
In the same vein, this Court does not sustain the grant by the
appellate court of attorneys fees to private respondent
anchored on Article 2208 (2) of the Civil Code, private
respondent having been allegedly forced to litigate as a result
of petitioners suit. Even if a claimant is compelled to litigate
with third persons or to incur expenses to protect its rights, still
attorneys fees may not be awarded where no sufficient
showing of bad faith could be reflected in a partys persistence
in a case other than an erroneous conviction of the
29
righteousness of his cause. There exists no evidence on
record indicating that petitioner was moved by malice in suing
private respondent.
This Court, however, grants private respondent temperate or
moderate damages in the amount of P20,000.00 which it finds
reasonable under the circumstances, it having suffered some
pecuniary loss the amount of which cannot, from the nature of
30
the case, be established with certainty.
WHEREFORE, the assailed decision of the Court of Appeals is
hereby AFFIRMED with MODIFICATION. The award of actual
or compensatory damages and attorneys fees to private
respondent, Tryco Pharma Corporation, is DELETED; instead,
it is hereby awarded the amount of P20,000.00 as temperate
or moderate damages.
SO ORDERED.

LOTHAR SCHUARTZ, FRIEDEL VERDERBERG, UDOLF

KUEHNE, DIETER FISCHER, JOHN BERNARD WATKINS,
HARRY GREAVES, CHEN WOO CHIN, YOSHIMI IWASAKI,
FABIO CARLI, MORTIMER THOMPSON, MALCOLM JOHN
LAW, MICHIBAZU OCHI, KENJI SHIGEMATSU, ENI
SHINOZAKI, ROBERT CABI-AKMAN, ARTHUR SPRENGER,
REMY SIMOND and HEINRICH EVBERGGER, petitioners,
vs.
THE HONORABLE COURT OF APPEALS (SPECIAL FIFTH
DIVISION) and THE BUREAU OF PATENTS, TRADEMARKS
AND TECHNOLOGY TRANSFER, respondents.

did not respond to these office actions within the prescribed

time, notices of abandonment were sent on the following dates:
1wphi1
Serial
Nos.

Date of Office
Action

Date of
Abandonment

(1) 23354

March 20, 1987

July 21, 1987

(2) 29630

June 18, 1986

October 21, 1986

(3) 29898

June 11, 1987

June 22, 1987

(4) 30112

June 3, 1987

August 6, 1987

(5) 30548

June 10, 1987

August 18, 1987

Petitioners appeal via certiorari from the decision of the Court

of Appeals dismissing their appeal from the resolution of the
Director of Patents that denied with finality their petition for
revival of patent applications.

(6) 30819

January 28, 1987

July 28, 1987

(7) 31968

January 14, 1987

July 15, 1987

(8) 31974

July 23, 1987

September 24, 1987

On different dates, petitioners applied to the Bureau of Patents,

Trademarks and Technology Transfer for registration of
patents. They hired the law firm Siguion Reyna, Montecillo and
Ongsiako to process their patent applications in the
Philippines, respectively identified as follows:

(9) 32050

March 31, 1987

June 1, 1987

RESOLUTION
PARDO, J.:
1

Applicant
(1)

Michibazu Ochi, Kenji Shigematsu and Eni

Shinozaki- Issuance of letters patent for "Hackling
Drum Room or Chamber at the Self-Feeding
Equipment for Threshing of Upper Hackling System"

(2)

Robert Cabi-Akman, Arthur Sprenger and Remy

Simond- Issuance of letters patent for "Colour Value
Measurement"

(3)

Heinrich Evbergger- Issuance of letters patent for

"Tool for Moulding the Top Past of a Plastic
Container"

12

On December 7, 1987, two employees of the law firm, George

Bangkas and Rafael Rosas were dismissed from employment.
Prior to the dismissal, these employees worked with the patent
group of the law firm and had the duty, among others, of
Serial
No.the firms letters and correspondence from the Bureau
getting
of Patents.
2
23354
Immediately after their dismissal, the law firm conducted an
inventory of all the documents entrusted to them. It was then
that the firm learned about the notices of abandonment.
3
29630
Thereafter, petitioners, through the law firm, filed with the
Bureau of Patents separate petitions for revival of the patent
applications
on the following dates:
4
29898
Serial Nos.
5

Date Petition Filed

(4)

Mortimer Thompson- Issuance of letters patent for

"Tamper Evident Closures and Packages"

30112 (1) 23354

March 3, 1988

(5)

Yoshimi Iwasaki- Issuance of letters patent for

"Method Generation for Hot Gas by Incinerators"

30548

(2) 29630

March 3, 1988

(3) 30122

January 15, 1988/February 29, 1988

John Bernard Watkins, Harry Greaves and Chen

Woo Chin- Issuance of letters patent for
"Preservation Composition"

30819 (4) 30548

(7)

Fabio Carli- Issuance of letters patent for

"Pharmaceutical Compositions"

31968 (6) 31968

(8)

Lothar Schuartz, Friedel Verderberg, Rudolf Kuehne,

and Dieter Fischer- Issuance of letters patent for
"Process for Producing Copper-Laminated Base
Material for Printed Circuit Boards"

31974

(6)

(9)

Malcolm John Law- Issuance of letters patent for

"Electrodeposition of Chromium and Chromium
11
Bearing Alloys."

Petitioners patent applications lacked certain requirements

and the Bureau informed the law firm about it, through
correspondences called Office Actions. As petitioners law firm

(5) 30819
8

January 25, 1988/March 1, 1988

May 27, 1988/July 15, 1988
January 21, 1988/March 1, 1988

(7) 31974

March 14, 1988

(8) 32050

March 17, 1988

For Serial No. 29898, the applicant abandoned his application,

10 reason no petition for revival was filed. 13
for
which
32050
On January 31, 1991, Director Luis M. Duka, Jr. of the Bureau
of Patents denied all the petitions for revival because they
were filed out of time. The dispositive portion specifically
provides:

"WHEREFORE, in consideration of the foregoing premises, all

the petitions for revival of the above-captioned abandoned
applications bearing Serial Nos. 23354, 29630, 29898, 30112,
30548, 30819, 31968, 31974, and 32050, are hereby denied
and no further petitions nor requests for reconsideration hereof
shall be entertained hereafter.
"SO ORDERED.
"Makati, Metro Manila, Philippines, this 31st day of January
1991.
LUIS M. DUKA, JR.
14
Director III"
On February 14, 1991, petitioners appealed the above
15
resolution of the Bureau of Patents to the Court of Appeals.
On August 13, 1992, the Court of Appeals dismissed the
consolidated appeal for being filed beyond the 15-day
reglementary period to appeal. There was an unreasonable
delay before the petitions to revive applications were filed.
Moreover, petitioners patent applications could not be a proper
subject of a consolidated appeal because they covered
separate and distinct subjects and had been treated by the
Bureau of Patents as separate and individual applications.
Specifically the decision provides:
"WHEREFORE, for reasons above stated and in the light of the
applicable law on the matter, this petition for review on appeal
from the order/decision of the Director of Bureau of Patents is
hereby DISMISSED with costs against the appellants.1wphi1
SO ORDERED."

of petitioners counsel. By such inaction, petitioners were

deemed to have forfeited their right to revive their applications
for patent.
Facts show that the patent attorneys appointed to follow up the
applications for patent registration had been negligent in
complying with the rules of practice prescribed by the Bureau
of Patents. The firm had been notified about the abandonment
as early as June 1987, but it was only after December 7, 1987,
when their employees Bangkas and Rosas had been
dismissed, that they came to know about it. This clearly
showed that petitioners counsel had been remiss in the
19
handling of their clients applications.
"A lawyers fidelity to the cause of his client requires him to be
ever mindful of the responsibilities that should be expected of
him. A lawyer shall not neglect a legal matter entrusted to
20
him." In the instant case, petitioners patent attorneys not
only failed to take notice of the notices of abandonment, but
they failed to revive the application within the four-month
period, as provided in the rules of practice in patent cases.
These applications are deemed forfeited upon the lapse of
21
such period.
22

Hence, we can not grant the present petition. The Court of

Appeals did not err or gravely abuse its discretion in dismissing
the petition for review.
WHEREFORE, the Court DENIES the petition for lack of merit.
The Court AFFIRMS the decision of the Court of Appeals in
CA-G. R. SP No. 24175.
No costs.

16

On September 14, 1992, petitioners moved for reconsideration

of the Court of Appeals decision, which the court denied on
January 7, 1994. The appellate court found no cogent reason
17
to justify the reversal or modification of its decision.
Aggrieved, petitioners filed the instant petition for review
18
on certiorari.
At issue is the validity of the Court of Appeals dismissal of the
consolidated appeal of petitioners from the Director of Patents
denial of the revival of their patent applications.
Petitioners contend that the Court of Appeals committed grave
abuse of discretion when it held that the consolidated appeal
was filed out of time. They were appealing from the resolution
of the Director of Patents dated January 31, 1991, which
denied the petition for revival of the patent applications. They
received a copy of the resolution, through their patent
attorneys, on February 7, 1991, and filed the consolidated
appeal seven (7) days after, or on February 14, 1991.
According to petitioners, these dates clearly established that
their appeal was seasonably filed.
The contention is not meritorious. If the facts above-mentioned
were the sole basis of determining whether the appeal was
filed on time, petitioners argument would be correct. However,
petitioners lost sight of the fact that the petition could not be
granted because of laches. Prior to the filing of the petition for
revival of the patent application with the Bureau of Patents, an
unreasonable period of time had lapsed due to the negligence

SO ORDERED.

KENNETH ROY SAVAGE/K ANGELIN EXPORT TRADING,

owned and managed by GEMMA DEMORALSAVAGE, petitioners,
vs.
JUDGE APRONIANO B. TAYPIN, Presiding Judge, RTCBR. 12, Cebu City, CEBU PROVINCIAL PROSECUTOR'S
OFFICE, NATIONAL BUREAU OF INVESTIGATION, Region
VII, Cebu City, JUANITA NG MENDOZA, MENDCO
DEVELOPMENT CORPORATION, ALFREDO SABJON and
DANTE SOSMEA,respondents.

BELLOSILLO, J.:
Petitioners KENNETH ROY SAVAGE and K ANGELIN
EXPORT TRADING, owned and managed by GEMMA
DEMORAL-SAVAGE, seek to nullify the search warrant issued
by respondent Judge Aproniano B. Taypin of the Regional Trial
Court, Br. 12 Cebu City, which resulted in the seizure of certain
pieces of wrought iron furniture from the factory of petitioners
located in Biasong, Talisay, Cebu. Their motion to quash the
search warrant was denied by respondent Judge as well as
their motion to reconsider the denial. Hence, this petition
for certiorari.
The antecedent facts: Acting on a complaint lodged by private
respondent Eric Ng Mendoza, president and general manager
of Mendco Development Corporation
1
(MENDCO), Supervising Agent Jose Ermie Monsanto of the
National Bureau of Investigation (NBI) filed an application for
search warrant with the Regional Trial Court of Cebu
2
City. The application sought the authorization to search the
premises of K Angelin Export International located in Biasong,
Talisay, Cebu, and to seize the pieces of wrought iron furniture
found therein which were allegedly the object of unfair
competition involving design patents, punishable under Art.
189 of the Revised Penal Code as amended. The assailed
Search Warrant No. 637-10-1697-12 was issued by
respondent Judge on 16 October 1997 and executed in the
3
afternoon of the following day by NBI agents. Seized from the
factory were several pieces of furniture, indicated in the
Inventory Sheet attached to the Return of Search Warrant, and
all items seized have remained in NBI custody up to the
4
present.
On 30 October 1997 petitioners moved to quash the search
warrant alleging that: (a) the crime they were accused of did
not exist; (b) the issuance of the warrant was not based on
probable cause; (c) the judge failed to ask the witnesses
searching questions; and, (d) the warrant did not particularly
5
describe the things to be seized.
On 10 November 1997 petitioners filed a Supplemental Motion
to Quash where they additionally alleged that the assailed
warrant was applied for without a certification against forum
6
shopping. On 30 January 1998 respondent Judge denied the
7
Motion to Quash and the Supplemental Motion to Quash. On
2 March 1998 petitioners moved to reconsider the denial of
their motion to quash and alleged substantially the same
grounds found in their original Motion to Quash but adding
thereto two (2) new grounds, namely: (a) respondent court has
no jurisdiction over the subject-matter; and, (b) respondent
court failed to "substantiate" the order sought to be
8
9
reconsidered. The denial of their last motion prompted
petitioners to come to this Court.

The principal issues that must be addressed in this petition are:

(a) questions involving jurisdiction over the offense; (b) the
need for a certification of non-forum shopping; and, (c) the
existence of the crime.
Petitioners claim that respondent trial court had no jurisdiction
over the offense since it was not designated as a special court
for Intellectual Property Rights (IPR), citing in support thereof
Supreme Court Administrative Order No. 113-95 designating
certain branches of the Regional Trial Courts, Metropolitan
Trial Courts and Municipal Trial Courts in Cities as Special
Courts for IPR. The courts enumerated therein are mandated
to try and decide violations of IPR including Art. 189 of the
Revised Penal Code committed within their respective
territorial jurisdictions. The sala of Judge Benigno G. Gaviola of
the RTC-Br. 9, Cebu City, was designated Special Court for
10
IPR for the 7th Judicial Region. Subsequently Supreme
Court Administrative Order No. 104-96 was issued providing
that jurisdiction over all violations of IPR was thereafter
11
confined to the Regional Trial Courts.
The authority to issue search warrants was not among those
mentioned in the administrative orders. But the Court has
consistently ruled that a search warrant is merely a process
issued by the court in the exercise of its ancillary jurisdiction
and not a criminal action which it may entertain pursuant to its
12
original jurisdiction. The authority to issue search warrants is
inherent in all courts and may be effected outside their
1
territorial jurisdiction. In the instant case, the premises
searched located in Biasong, Talisay, Cebu, are well within the
14
territorial jurisdiction of the respondent court.
Petitioners apparently misconstrued the import of the
designation of Special Courts for IPR. Administrative Order No.
113-95 merely specified which court could "try and decide"
cases involving violations of IPR. It did not, and could not, vest
exclusive jurisdiction with regard to all matters (including the
issuance of search warrants and other judicial processes) in
any one court. Jurisdiction is conferred upon courts by
substantive law; in this case, BP Blg.129, and not by a
15
procedural rule, much less by an administrative order. The
power to issue search warrants for violations of IPR has not
been exclusively vested in the courts enumerated in Supreme
Court Administrative Order No.113-95.
Petitioners next allege that the application for a search warrant
should have been dismissed outright since it was not
accompanied by a certification of non-forum shopping, citing as
authority therefor Washington Distillers, Inc. v. Court of
16
Appeals. In that case, we sustained the quashal of the
search warrant because the applicant had been guilty of forum
shopping as private respondent sought a search warrant from
the Manila Regional Trial Court only after he was denied by the
courts of Pampanga. The instant case differs significantly, for
here there is no allegation of forum-shopping, only failure to
acquire a certification against forum-shopping. The Rules of
Court as amended requires such certification only from
17
initiatory pleadings, omitting any mention of "applications." In
contrast, Supreme Court Circular 04-94, the old rule on the
matter, required such certification even from "applications." Our
ruling in Washington Distillers required no such certification
from applications for search warrants. Hence, the absence of
such certification will not result in the dismissal of an
application for search warrant.
The last question to be resolved is whether unfair competition
involving design patents punishable under Art. 189 of the

Revised Penal Code exists in this case. Prosecutor Ivan

Herrero seems to agree as he filed the corresponding
18
Information against petitioners on 17 March 1998. However,
since the IPR Code took effect on 1 January 1998 any
discussion contrary to the view herein expressed would be
pointless. The repealing clause of the Code provides
All Acts and parts of Acts inconsistent
herewith, more particularly, Republic Act No.
165, as amended; Republic Act No. 166, as
amended; and Articles 188 and 189 of the
Revised Penal Code; Presidential Decree
No. 49, including Presidential Decree No.
285, as amended, are hereby repealed
19
(emphasis ours).
The issue involving the existence of "unfair competition" as a
felony involving design patents, referred to in Art. 189 of the
Revised Penal Code, has been rendered moot and academic
by the repeal of the article.
The search warrant cannot even be issued by virtue of a
possible violation of the IPR Code. The assailed acts
specifically alleged were the manufacture and fabrication of
wrought iron furniture similar to that patented by MENDCO,
without securing any license or patent for the same, for the
purpose of deceiving or defrauding Mendco and the buying
20
public. The Code defines "unfair competition" thus
168.2. Any person who shall employ
deception or any other means contrary to
good faith by which he shall pass off the
goods manufactured by him or in which he
deals, or his business, or services for those
of the one having established such goodwill,
or shall commit any acts calculated to
produce said result, shall be guilty of unfair
competition, and shall be subject to an action
therefor.
168.3. In particular, and without in any way
limiting the scope of protection against unfair
competition, the following shall be deemed
guilty of unfair competition:
(a) Any person who is selling his goods and
gives them the general appearance of goods
of another manufacturer or dealer, either as
to the goods themselves or in the wrapping
of the packages in which they are contained,
or the devices or words thereon, or in any
other feature of their appearance which
would be likely to influence purchasers to
believe that the goods offered are those of a
manufacturer or dealer, other than the actual
manufacturer or dealer, or who otherwise
clothes the goods with such appearance as
shall deceive the public and defraud another
of his legitimate trade, or any subsequent
vendor of such goods or any agent of any
vendor engaged in selling such goods with a
like purpose;
(b) Any person who by any artifice, or
device, or who employs any other means
calculated to induce the false belief that such
person is offering the services of another

who has identified such services in the mind

of the public; or
(c) Any person who shall make any false
statement in the course of trade or who shall
commit any other act contrary to good faith
of a nature calculated to discredit goods,
21
businesses or services of another.
There is evidently no mention of any crime of "unfair
competition" involving design patents in the controlling
provisions on Unfair Competition. It is therefore unclear
whether the crime exists at all, for the enactment of RA 8293
did not result in the reenactment of Art. 189 of the Revised
Penal Code. In the face of this ambiguity, we must strictly
construe the statute against the State and liberally in favor of
22
the accused, for penal statutes cannot be enlarged or
extended by intendment, implication or any equitable
2
consideration. Respondents invoke jurisprudence to support
their contention that "unfair competition" exists in this
24
case. However, we are prevented from applying these
principles, along with the new provisions on Unfair Competition
found in the IPR Code, to the alleged acts of the petitioners, for
such acts constitute patent infringement as defined by the
same Code
Sec. 76. Civil Action for Infringement.
76.1. The making, using, offering for sale,
selling, or importing a patented product or a
product obtained directly or indirectly from a
patented process, or the use of a patented
process without authorization of the patentee
25
constitutes patent infringement.
Although this case traces its origins to the year 1997 or before
the enactment of the IPR Code, we are constrained to invoke
the provisions of the Code. Article 22 of the Revised Penal
Code provides that penal laws shall be applied retrospectively,
if such application would be beneficial to the
26
accused. Since the IPR Code effectively obliterates the
possibility of any criminal liability attaching to the acts alleged,
then that Code must be applied here.
In the issuance of search warrants, the Rules of Court requires
a finding of probable cause in connection with one specific
offense to be determined personally by the judge after
examination of the complainant and the witnesses he may
produce, and particularly describing the place to be searched
27
and the things to be seized. Hence, since there is no crime
to speak of, the search warrant does not even begin to fulfill
these stringent requirements and is therefore defective on its
face. The nullity of the warrant renders moot and academic the
other issues raised in petitioners' Motion to Quash and Motion
for Reconsideration. Since the assailed search warrant is null
and void, all property seized by virtue thereof should be
returned to petitioners in accordance with established
28
jurisprudence.
In petitioners' Reply with Additional Information they allege that
the trial court denied their motion to transfer their case to a
Special Court for IPR. We have gone through the records and
we fail to find any trace of such motion or even a copy of the
order denying it. All that appears in the records is a copy of an
order granting a similar motion filed by a certain Minnie Dayon
29
with regard to Search Warrant No. 639-10-1697-12. This
attachment being immaterial we shall give it no further
attention.

WHEREFORE, the Order of the Regional Trial Court, Br. 12,

Cebu City, dated 30 January 1998, denying the Motion to
Quash Search Warrant No. 637-10-1697-12 dated 30 October
1997 and the Supplemental Motion to Quash dated 10
November 1997 filed by petitioners, as well as the Order dated
8 April 1998 denying petitioners' Motion for Reconsideration
dated 2 March 1998, is SET ASIDE. Search Warrant No. 63710-1697-12 issued on 16 October 1997 is ANNULLED and
SET ASIDE, and respondents are ordered to return to
petitioners the property seized by virtue of the illegal search
warrant.

G.R. No. 118708 February 2, 1998

CRESER PRECISION SYSTEMS, INC., petitioner,
vs.
COURT OF APPEALS AND FLORO INTERNATIONAL
CORP., respondents.

MARTINEZ, J.:

profiting therefrom, and/or from performing any other act in

connection therewith or tending to prejudice and deprive it of
any rights, privileges and benefits to which it is duly entitled as
the first, true and actual inventor of the aerial fuze.
On December 10, 1993, the trial court issued a temporary
restraining order. Thereafter, hearings were held on the
application of petitioner for the issuance of a writ of preliminary
injunction, with both parties presenting their evidence. After the
hearings, the trial court directed the parties to submit their
respective memoranda in support of their positions.

This petition for review on certiorari assails the decision of the

Court of Appeals dated November 9, 1994 in C.A.-G.R. SP No.
34425 entitled "Floro International Corp. vs. Hon. Tirso D.C
Cruz and Creser Precision System, Inc.", the dispositive
portion of which reads:
WHEREFORE, THE PETITION IS HEREBY
GRANTED. THE COMPLAINT FOR
INJUNCTION AND DAMAGES, CIVIL CASE
NO. 93-1856 BEFORE THE RESPONDENT
JUDGE IS HEREBY ORDERED
DISMISSED AND HIS ORDERS THEREIN
OF DECEMBER 29, 1993 AND MAY 11,
1994 ARE ORDERED SET ASIDE.
Private respondent is a domestic corporation engaged in the
manufacture, production, distribution and sale of military
armaments, munitions, airmunitions and other similar
2
materials.
On January 23, 1990, private respondent was granted by the
Bureau of Patents, Trademarks and Technology Transfer
3
(BPTTT), a Letters Patent No. UM-6938 covering an aerial
fuze which was published in the September-October-1990, Vol.
4
III, No. 5 issue of the Bureau of Patent's Official Gazette.
Sometime in November 1993, private respondent, through its
president, Mr. Gregory Floro, Jr., discovered that petitioner
submitted samples of its patented aerial fuze to the Armed
Forces of the Philippines (AFP) for testing. He learned that
petitioner was claiming the aforesaid aerial fuze as its own and
planning to bid and manufacture the same commercially
without license or authority from private respondent. To protect
its right, private respondent on December 3, 1993, sent a
5
letter to petitioner advising it of its existing patent and its
rights thereunder, warning petitioner of a possible court action
and/or application for injunction, should it proceed with the
scheduled testing by the military on December 7, 1993.
In response to private respondent's demand, petitioner filed on
6
December 8, 1993 a complaint for injunction and damages
arising from the alleged infringement before the Regional Trial
Court of Quezon City, Branch 88. The complaint alleged,
among others: that petitioner is the first, true and actual
inventor of an aerial fuze denominated as "Fuze, PDR 77 CB4"
which it developed as early as December 1981 under the SelfReliance Defense Posture Program (SRDP) of the AFP; that
sometime in 1986, petitioner began supplying the AFP with the
said aerial fuze; that private respondent's aerial fuze is
identical in every respect to the petitioner's fuze; and that the
only difference between the two fuzes are miniscule and
merely cosmetic in nature. Petitioner prayed that a temporary
restraining order and/or writ of preliminary injunction be issued
enjoining private respondent including any and all persons
acting on its behalf from manufacturing, marketing and/or

On December 27, 1993, private respondent submitted its

7
memorandum alleging that petitioner has no cause of action
to file a complaint for infringement against it since it has no
patent for the aerial fuze which it claims to have invented; that
petitioner's available remedy is to file a petition for cancellation
of patent before the Bureau of Patents; that private respondent
as the patent holder cannot be stripped of its property right
over the patented aerial fuze consisting of the exclusive right to
manufacture, use and sell the same and that it stands to suffer
irreparable damage and injury if it is enjoined from the exercise
of its property rights over its patent.
On December 29, 1993, the trial court issued an
8
Order granting the issuance of a writ of preliminary injunction
against private respondent the dispositive portion of which
reads:
WHEREFORE, plaintiffs application for the
issuance of a writ of preliminary injunction is
granted and, upon posting of the
corresponding bond by plaintiff in the amount
of PHP 200,000.00, let the writ of preliminary
injunction be issued by the branch Clerk of
this Court enjoining the defendant and any
and all persons acting on its behalf or by and
under its authority, from manufacturing,
marketing and/or selling aerial
fuzes identical, to those of plaintiff, and from
profiting therefrom, and/or from performing
any other act in connection therewith until
further orders from this Court.
Private respondent moved for reconsideration but this was
9
denied by the trial court in its Order of May 11, 1994,
pertinent portions of which read:
For resolution before this Court is the Motion
for Reconsideration filed by the defendant
and the plaintiff's Opposition thereto. The
Court finds no sufficient cause to reconsider
its order dated December 29, 1993. During
the hearing for the issuance of the
preliminary injunction, the plaintiff has amply
proven its entitlement to the relief prayed for.
It is undisputed that the plaintiff has
developed itsaerial fuze way back in 1981
while the defendant began manufacturing
the same only in 1987. Thus, it is only logical
to conclude that it was the plaintiff's aerial
fuze that was copied or imitated which gives
the plaintiff the right to have the defendant
enjoined "from manufacturing, marketing
and/or sellingaerial fuzes identical to those of
the plaintiff, and from profiting therefrom
and/or performing any other act in

connection therewith until further orders from

this Court." With regards to the defendant's
assertion that an action for infringement may
only be brought by "anyone possessing right,
title or interest to the patented invention,"
(Section 42, RA 165) qualified by Sec. 10,
RA 165 to include only "the first true and
actual inventor, his heirs, legal
representatives or assignees, "this court
finds the foregoing to be untenable. Sec. 10
merely enumerates the persons who may
have an invention patented which does not
necessarily limit to these persons the right to
institute an action for infringement.
Defendant further contends that the order in
issue is disruptive of the status quo. On the
contrary, the order issued by the Court in
effect maintained the status quo. The last
actual, peaceable uncontested status
existing prior to this controversy was the
plaintiff manufacturing and selling its
ownaerial fuzes PDR 77 CB4 which was
ordered stopped through the defendant's
letter. With the issuance of the order, the
operations of the plaintiff continue. Lastly,
this court believes that the defendant will not
suffer irreparable injury by virtue of said
order. The defendant's claim is primarily
hinged on its patent (Letters Patent No. UM6983) the validity of which is being
questioned in this case.
WHEREFORE, premises considered, the
Motion for Reconsideration is hereby denied
for lack of merit.
SO ORDERED.
Aggrieved, private respondent on June 27, 1994, filed a
10
petition for certiorari, mandamus and prohibition before
respondent Court of Appeals raising as grounds the following:
a. Petitioner has no cause of action for
infringement against private respondent, the
latter not having any patent for the aerial
fuze which it claims to have invented and
developed and allegedly infringed by private
respondent;
b. the case being an action for cancellation
or invalidation of private respondent's Letters
Patent over its own aerial fuze, the proper
venue is the Office of the Director of Patents;
c. The trial court acted in grave abuse of
discretion and/or in excess of jurisdiction in
finding that petitioner has fully established its
clear title or right to preliminary injunction;
d. The trial court acted in grave abuse of
discretion and/or in excess of jurisdiction in
granting the preliminary injunction, it being
disruptive of the status quo; and
e. The trial court acted in grave abuse of
discretion and/or in excess of jurisdiction in

granting the preliminary injunction thereby

depriving private respondent of its property
rights over the patentedaerial fuze and
cause it irreparable damages.
On November 9, 1994, the respondent court rendered the now
assailed decision reversing the trial court's Order of December
29, 1993 and dismissing the complaint filed by petitioner.
The motion for reconsideration was also denied on January 17,
11
1995. Hence, this present petition.
It is petitioner's contention that it can file, under Section 42 of
the Patent Law (R.A. 165), an action for infringement not as a
patentee but as an entity in possession of a right, title or
interest in and to the patented invention. It advances the theory
that while the absence of a patent may prevent one from
lawfully suing another for infringement of said patent, such
absence does not bar the first true and actual inventor of the
patented invention from suing another who was granted a
patent in a suit for declaratory or injunctive relief recognized
under American patent laws. This remedy, petitioner points
out, may be likened to a civil action for infringement under
Section 42 of the Philippine Patent Law.
We find the above arguments untenable.
Section 42 of R.A. 165, otherwise known as the Patent Law,
explicitly provides:
Sec. 42. Civil action for infringement. Any
patentee, or anyone possessing any right,
title or interest in and to the patented
invention, whose rights have been infringed,
may bring a civil action before the proper
Court of First Instance (now Regional Trial
court), to recover from the infringer damages
sustained by reason of the infringement and
to secure an injunction for the protection of
his right. . . .
Under the aforequoted law, only the patentee or his
successors-in-interest may file an action for infringement. The
phrase "anyone possessing any right, title or interest in and to
the patented invention" upon which petitioner maintains its
present suit, refers only to the patentee's successors-ininterest, assignees or grantees since actions for infringement
of patent may be brought in the name of the person or persons
interested, whether as patentee, assignees, or as grantees, of
12
the exclusive right. Moreover, there can be no infringement
of a patent until a patent has been issued, since whatever right
one has to the invention covered by the patent arises alone
13
from the grant of patent. In short, a person or entity who has
not been granted letters patent over an invention and has not
acquired any light or title thereto either as assignee or as
licensee, has no cause of action for infringement because the
right to maintain an infringement suit depends on the existence
14
of the patent.
Petitioner admits it has no patent over its aerial fuze.
Therefore, it has no legal basis or cause of action to institute
the petition for injunction and damages arising from the alleged
infringement by private respondent. While petitioner claims to
be the first inventor of the aerial fuze, still it has no right of
property over the same upon which it can maintain a suit
unless it obtains a patent therefor. Under American

jurisprudence, an inventor has no common-law right to a

monopoly of his invention. He has the right to make, use and
vend his own invention, but if he voluntarily discloses it, such
as by offering it for sale, the world is free to copy and use it
with impunity. A patent, however, gives the inventor the right to
exclude all others. As a patentee, he has the exclusive right of
15
making, using or selling the invention.
Further, the remedy of declaratory judgment or injunctive suit
on patent invalidity relied upon by petitioner cannot be likened
to the civil action for infringement under Section 42 of the
Patent Law. The reason for this is that the said remedy is
available only to the patent holder or his successors-in-interest.
Thus, anyone who has no patent over an invention but claims
to have a right or interest thereto can not file an action for
declaratory judgment or injunctive suit which is not recognized
in this jurisdiction. Said person, however, is not left without any
remedy. He can, under Section 28 of the aforementioned law,
file a petition for cancellation of the patent within three (3)
years from the publication of said patent with the Director of
Patents and raise as ground therefor that the person to whom
the patent was issued is not the true and actual inventor.
Hence, petitioner's remedy is not to file an action for injunction
or infringement but to file a petition for cancellation of private
respondent's patent. Petitioner however failed to do so. As
such, it can not now assail or impugn the validity of the private
respondent's letters patent by claiming that it is the true and
actual inventor of the aerial fuze.
Thus, as correctly ruled by the respondent Court of Appeals in
its assailed decision: "since the petitioner (private respondent
herein) is the patentee of the disputed invention embraced by
letters of patent UM No. 6938 issued to it on January 23, 1990
by the Bureau of Patents, it has in its favor not only the
presumption of validity of its patent, but that of a legal and
factual first and true inventor of the invention."
In the case of Aguas vs. De Leon,

16

we stated that:

The validity of the patent issued by the

Philippine Patent Office in favor of the
private respondent and the question over the
investments, novelty and usefulness of the
improved process therein specified and
described are matters which are better
determined by the Philippines Patent Office.
The technical Staff of the Philippines Patent
Office, composed of experts in their field,
have, by the issuance of the patent in
question, accepted the thinness of the
private respondent's new tiles as a
discovery. There is a presumption that the
Philippine Patent Office has correctly
determined the patentability of the
improvement by the private respondent of
the process in question.
In fine, in the absence of error or abuse of power or lack of
jurisdiction or grave abuse of discretion, we sustain the
assailed decision of the respondent Court of Appeal.
WHEREFORE, the decision of the Court of Appeals is hereby
AFFIRMED. No pronouncement as to costs.
SO ORDERED.

G.R. No. 113388 September 5, 1997

ANGELITA MANZANO, petitioner,
vs.
COURT OF APPEALS, and MELECIA MADOLARIA, as
Assignor to NEW UNITED FOUNDRY MANUFACTURING
CORPORATION, respondents.

BELLOSILLO, J.:
The primary purpose of the patent system is not the reward of
the individual but the advancement of the arts and sciences.
The function of a patent is to add to the sum of useful
knowledge and one of the purposes of the patent system is to
encourage dissemination of information concerning discoveries
and inventions. This is a matter which is properly within the
competence of the Patent Office the official action of which has
the presumption of correctness and may not be interfered with
in the absence of new evidence carrying thorough conviction
that the Office has erred. Since the Patent Office is an expert
body preeminently qualified to determine questions of
patentability, its findings must be accepted if they are
consistent with the evidence, with doubts as to patentability
1
resolved in favor of the Patent Office.
Petitioner Angelita Manzano filed with the Philippine Patent
Office on 19 February 1982 an action for the cancellation of
Letters Patent No. UM-4609 for a gas burner registered in the
name of respondent Melecia Madolaria who subsequently
assigned the letters patent to New United Foundry and
Manufacturing Corporation (UNITED FOUNDRY, for brevity).
Petitioner alleged that (a) the utility model covered by the
letters patent, in this case, an LPG gas burner, was not
inventive, new or useful; (b) the specification of the letters
patent did not comply with the requirements of Sec. 14, RA No.
165, as amended; (c) respondent Melecia 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, (d) the letters patent
was secured by means of fraud or misrepresentation. In
support of her petition for cancellation petitioner further alleged
that (a) the utility model covered by the letters patent of
respondent had been known or used by others in the
Philippines for more than one (1) year before she filed her
application for letters patent on 9 December 1979; (b) the
products which were produced in accordance with the utility
model covered by the letters patent had been in public use or
on sale in the Philippines for more than one (1) year before the
application for patent therefor was filed.
Petitioner presented the following documents which she
correspondingly marked as exhibits: (a) affidavit of petitioner
alleging the existence of prior art, marked Exh. "A;" (b) a
brochure distributed by Manila Gas Corporation disclosing a
pictorial representation of Ransome Burner made by Ransome
Torch and Burner Company, USA, marked Exh. "D;" 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, marked Exh. "E."
Testifying for herself petitioner 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 husband's
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. Petitioner presented in evidence an
alleged model of an LPG burner marked Exh. "K" and covered
by the Letters Patent of respondent, and testified that it was
given to her in January 1982 by one of her customers who
allegedly acquired it from UNITED FOUNDRY. Petitioner also
presented in evidence her own model of an LPG burner called
"Ransome" burner marked Exh. "L," which was allegedly
manufactured in 1974 or 1975 and sold by her in the course of
her business operation in the name of BESCO METAL.
Petitioner claimed that this "Ransome" burner (Exh. "L") had
the same configuration and mechanism as that of the model
which was patented in favor of private respondent Melecia
Madolaria. Also presented by petitioner was a burner cup of an
imported "Ransome" burner marked Exh "M" which was
allegedly existing even before the patent application of private
respondent.
Petitioner presented two (2) other witnesses, namely, her
husband Ong Bun Tua and Fidel Francisco. Ong testified that
he worked as a helper in the UNITED FOUNDRY from 1965 to
1970 where he helped in the casting of LPG burners with the
same form, configuration and mechanism as that of the model
covered by the Letters Patent issued to private respondent.
Francisco testified that he had been employed with the Manila
Gas Corporation from 1930 to 1941 and from 1952 up to 1969
where he retired as supervisor and that Manila Gas
Corporation imported "Ransome" burners way back in 1965
which were advertised through brochures to promote their sale.
Private respondent, on the other hand, presented only one
witness, Rolando Madolaria, who testified, among others, 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.
On 7 July 1986 the Director of Patents Cesar C. Sandiego
issued Decision No. 86-56 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
petitioner's 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 on 15 October 1993 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 respondent's sole witness
Rolando Madolaria; and, (d) in not cancelling Letters Patent
No. UM-4609 in the name of private respondent.
Petitioner submits that the differences cited by the Court of
Appeals between the utility model of private respondent and
the models of Manila Gas Corporation and Esso Standard
Eastern, Inc., are more imaginary than real. She alleges that
based on Exhs. "E," "E-1," "F" and "F-1" or the brochures of
Manila Gas Corporation and Esso Standard Eastern, Inc.,
presented by petitioner, the cup-shaped burner mouth and
threaded hole on the side are shown to be similar to the utility
model of private respondent. The exhibits also show a
detachable burner mouth having a plurality of upwardly existing
undulations adopted to act as gas passage when the cover is
attached to the top of said cup-shaped mouth all of which are
the same as those in the patented model. Petitioner also
denies as substantial difference the short cylindrical tube of the
burner mouth appearing in the brochures of the burners being
sold by Manila Gas Corporation and the long cylindered tube of
private respondent's model of the gas burner.
Petitioner argues that the actual demonstration made during
the hearing disclosed the similarities in form, operation and
mechanism and parts between the utility model of private
respondent and those depicted in the brochures. The findings
of the Patent Office and the Court of Appeals that the
brochures of Manila Gas Corporation and Esso Standard
Eastern, Inc., are undated cannot overcome the fact of their
circulation before private respondent filed her application for
utility model patent. Petitioner thus asks this Court to take
judicial notice of the fact that Esso Standard Eastern, Inc.,
disappeared before 1979 and reappeared only during the
Martial Law years as Petrophil Corporation. Petitioner also
emphasizes that the brochures indicated the telephone number
of Manila Gas Corporation as 5-79-81 which is a five (5)
numbered telephone number existing before 1975 because
telephones in Metro Manila started to have six (6) numbers
only after that year.

Petitioner further contends that the utility model of private

respondent is absolutely similar to the LPG burner being sold
by petitioner in 1975 and 1976, and also to the "Ransome"
burner depicted in the old brochures of Manila Gas Corporation
and Esso Standard Eastern, Inc., fabricated by Ransome
Torch and Burner Company of Oakland, California, USA,
especially when considered through actual physical
examination, assembly and disassembly of the models of
petitioner and private respondent. Petitioner faults the Court of
Appeals for disregarding the testimonies of Ong Bun Tua and
Fidel Francisco for their failure to produce documents on the
alleged importation by Manila Gas Corporation of "Ransome"
burners in 1965 which had the same configuration, form and
mechanism as that of the private respondent's patented model.
Finally, it is argued that the testimony of private respondent's
lone witness Rolando Madolaria should not have been given
weight by the Patent Office and the Court of Appeals because
it contained mere after-thoughts and pretensions.
We cannot sustain petitioner. Section 7 of RA No. 165, as
amended, which is the law on patents, expressly provides
Sec. 7. Inventians 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
2
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
3
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
4
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
5
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.
(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.
xxx xxx xxx
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

application which matured into Letters Patent No. UM4609, 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.
xxx xxx xxx
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.
6
Neither did his wife.
The above findings and conclusions of the Director of Patent
7
were reiterated and affirmed by the Court of Appeals.
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 respondent's model of
gas burner as a discovery. There is a presumption that the
Office has correctly determined the patentability of the
8
model 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.

xxx xxx xxx

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
Petitioner's 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

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
9
insufficient.
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
10
Office. 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
11
situation.
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.