Creser

Precision Systems Inc. v CA and Floro International Co. GR NO. 118708, February 2, 1998
Facts:
Respondent was granted by the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) a Letter of patent
for its aerial fuze on January 23, 1990. Sometime in 1993, respondent discovered that the petitioner submitted
samples of its patented aerial fuze to the AFP for testing claiming to be his own. To protect its right, respondent sent
letter of warning to petitioner on a possible court action should it proceed its testing by the AFP. In response the
petitioner filed a complaint for injunction and damages arising from alleged infringement before the RTC asserting
that it is the true and actual inventor of the aerial fuze which it developed on 1981 under the Self Reliance Defense
Posture Program of the AFP. It has been supplying the military of the aerial fuze since then and that the fuze of the
respondent is similar as that of the petitioner. Petitioner prayed for restraining order and injunction from marketing,
manufacturing and profiting from the said invention by the respondent. The trial court ruled in favor of the petitioner
citing the fact that it was the first to develop the aerial fuze since 1981 thsu it concludes that it is the petitioners
aerial fuze that was copied by the respondent. Moreover, the claim of respondent is solely based on its letter of
patent which validity is being questioned. On appeal, respondent argued that the petitioner has no cause of action
since he has no right to assert there being no patent issued to his aerial fuze. The Court of Appeals reversed the
decision of the trial court dismissing the complaint of the petitioner. It was the contention of the petitioner that it can
file under Section 42 of the Patent Law an action for infringement not as a patentee but as an entity in possession of a
right, title or interest to the patented invention. It theorizes that while the absence of a patent prevents one from
lawfully suing another for infringement of said patent, such absence does not bar the true and actual inventor of the
patented invention from suing another in the same nature as a civil action for infringement.
Issue:
Whether or not the petitioner has the right to assail the validity of the patented work of the respondent?
Ruling:
The court finds the argument of the petitioner untenable. Section 42 of the Law on Patent (RA 165) provides that only
the patentee or his successors-in-interest may file an action against infringement. What the law contemplates in the
phrase anyone possessing any right, title or interest in and to the patented invention refers only to the patentees
successors-in-interest, assignees or grantees since the action on patent infringement may be brought only in the
name of the person granted with the patent. There can be no infringement of a patent until a patent has been issued
since the right one has over the invention covered by the patent arises from the grant of the patent alone. Therefore,
a person who has not been granted letter of patent over an invention has not acquired right or title over the
invention and thus has no cause of action for infringement. Petitioner admitted to have no patent over his invention.
Respondents aerial fuze is covered by letter of patent issued by the Bureau of Patents thus it has in his favor not only
the presumption of validity of its patent but that of a legal and factual first and true inventor of the invention.



MAGUAN v CA
146 SCRA 107
FACTS:

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

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

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

Petitioner filed a complaint for damages with injunction and preliminary injunction against private
respondent with the then Court of First Instance of Rizal

The trial court issued an Order granting the preliminary injunction prayed for by petitioner. Consequently,
the corresponding writ was subsequently issued.

In challenging these Orders private respondent filed a petition for certiorari with the respondent court but
was denied. Hence this petition.

ISSUE:
(1) Whether or not in an action for infringement the Court a quo had jurisdiction to determine the invalidity of the
patents at issue which invalidity was still pending consideration in the patent office.
(2) Whether or not the Court a quo committed grave abuse of discretion in the issuance of a writ of preliminary
injunction.
(3) Whether or not certiorari is the proper remedy.

HELD:
1) The first issue has been laid to rest in a number of cases where the Court ruled that "When a patent is sought to be
MAGUAN v CA
146 SCRA 107
FACTS:

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

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

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

Petitioner filed a complaint for damages with injunction and preliminary injunction against private
respondent with the then Court of First Instance of Rizal

The trial court issued an Order granting the preliminary injunction prayed for by petitioner. Consequently,
the corresponding writ was subsequently issued.

In challenging these Orders private respondent filed a petition for certiorari with the respondent court but
was denied. Hence this petition.

ISSUE:
(1) Whether or not in an action for infringement the Court a quo had jurisdiction to determine the invalidity of the
patents at issue which invalidity was still pending consideration in the patent office.
(2) Whether or not the Court a quo committed grave abuse of discretion in the issuance of a writ of preliminary
injunction.
(3) Whether or not certiorari is the proper remedy.

HELD:
1) The first issue has been laid to rest in a number of cases where the Court ruled that "When a patent is sought to be
enforced, the questions of invention, novelty or prior use, and each of them, are open to judicial examination."
Under the present Patent Law, there is even less reason to doubt that the trial court has jurisdiction to
declare the patents in question invalid. A patentee shall have the exclusive right to make, use and sell the patented
article or product and the making, using, or selling by any person without the authorization of the patentee
constitutes infringement of the patent (Sec. 37, R.A. 165). Any patentee whose rights have been infringed upon may
bring an action before the proper CFI now (RTC) and to secure an injunction for the protection of his rights.

2) The burden of proof to substantiate a charge of infringement is with the plaintiff. But where the plaintiff introduces
the patent in evidence, and the same is in due form, there is created a prima facie presumption of its correctness and
validity. The decision of the Commissioner (now Director) of Patent in granting the patent is presumed to be correct.
The burden of going forward with the evidence (burden of evidence) then shifts to the defendant to overcome by
competent evidence this legal presumption.
The question then in the instant case is whether or not the evidence introduced by private respondent
herein is sufficient to overcome said presumption.
After a careful review of the evidence consisting of 64 exhibits and oral testimonies of five witnesses
presented by private respondents before the Court of First Instance before the Order of preliminary injunction was
issued as well as those presented by the petitioner, respondent Court of Appeals was satisfied that there is a prima
facie showing of a fair question of invalidity of petitioner's patents on the ground of lack of novelty. As pointed out by

said appellate court said evidence appeared not to have been considered at all by the court a quo for alleged lack of
jurisdiction, on the mistaken notion that such question in within the exclusive jurisdiction of the patent office.
It has been repeatedly held that an invention must possess the essential elements of novelty , originality
and precedence and for the patentee to be entitled to protection, the invention must be new to the world.
Accordingly, a single instance of public use of the invention by a patentee for more than two years (now for more
than one year only under Sec. 9 of the Patent Law) before the date of his application for his patent, will be fatal to,
the validity of the patent when issued.
It will be noted that the validity of petitioner's patents is in question for want of novelty. Private respondent
contends that powder puffs Identical in appearance with that covered by petitioner's patents existed and were
publicly known and used as early as 1963 long before petitioner was issued the patents in question. (List of Exhibits,
Rollo, pp. 194-199). As correctly observed by respondent Court of Appeals, "since sufficient proofs have been
introduced in evidence showing a fair question of the invalidity of the patents issued for such models, it is but right
that the evidence be looked into, evaluated and determined on the merits so that the matter of whether the patents
issued were in fact valid or not may be resolved." (Rollo, pp. 286-287).
All these notwithstanding, the trial court nonetheless issued the writ of preliminary injunction which under
the circumstances should be denied.
For failure to determine first the validity of the patents before aforesaid issuance of the writ, the trial court
failed to satisfy the two requisites necessary if an injunction is to issue, namely: the existence of the right to be
protected and the violation of said right. (Buayan Cattle Co., Inc. v. Quintillan, 128 SCRA 276).
Under the above established principles, it appears obvious that the trial court committed a grave abuse of
discretion which makes certiorari the appropriate remedy.
As found by respondent Court of Appeals, the injunctive order of the trial court is of so general a tenor that
petitioner may be totally barred from the sale of any kind of powder puff. Under the circumstances, respondent
appellate court is of the view that ordinary appeal is obviously inadequate.

VARGAS v YAPTICO & CO
40 PHIL 195
FACTS:
Angel Vargas, a farmer acquainted with local conditions and alive to the commercial possibilities, took it
upon himself to produce, with the native plow as the model, an improved, adjustable plow. He made application for a
United States patent to cover his so-called invention. The letters patent were issued by the United States Patent
Office in favor of Vargas .Acertified copy of the patent was filed in the Division of Patents, Copyrights, and Trademarks
of the Executive Bureau, Government of the Philippine Islands. The patent and its registry was also published in the
newspaper, El Tiempo.
Since 1910, Vargas has engaged in the manufacture of these plows in the city of Iloilo, Philippine Islands. On
the plows there was first stamped the words "Patent Applied For," later after the patent had been granted, changed
to "Patented Mar. 12, 1912." Ninety per cent of the plows in use in the Visayas (Iloilo and vicinity) are said to be
Vargas plows.
During this same period, the firm of F. M. Yaptico & Co. (Ltd.), was engaged in the foundry business in the
City of Iloilo. It openly held itself out as a manufacturer of plow parts. It has in fact produced points, shares, shoes,
and heel pieces in a considerable amount adapted to replace worn-out parts of the Vargas plow.
Such was the existing situation when, in the early part of 1918, the owner of the patent, and thus the
proper party to institute judicial proceedings, began action in the Court of First Instance of Iloilo to enjoin the alleged
infringement of U.S. Patent No. 1020232 by the defendant F. M Yaptico & Co. (Ltd.), and to recover the damages
suffered by reason of this infringement. The court issued the preliminary injunction as prayed for. The defendant, in
addition to a general denial, alleged, as special defenses, that the patent lacked novelty or invention, that there was
no priority of ideas or device in the principle and construction of the plow, and that the plow, whose manufacture it
was sought to have enjoined by the plaintiff, had already been in public use for more than two years before the
application of the plaintiff for his patent. The parties subsequently entered into a stipulation that the court should
first resolve the question of whether or not there had been an infraction of the patent, reserving the resultant
question of damages for later decision. After the taking of evidence, including the presentation of exhibits, the trial
judge, the Honorable Antonio Villareal, in a very exhaustive and learned decision, rendered judgment in favor of the
defendant and against the plaintiff, declaring null and without effect the patent in question and dismissing the suit
with costs against the plaintiff. The preliminary injunction theretofore issued was dissolved.
From this judgment the plaintiff has appealed.
ISSUE:
(1) The judgment of the trial court in finding the patent granted plaintiff void for lack of novelty and invention should
be affirmed;

(2) The patent granted plaintiff is void from the public use of his plow for over two years prior to his application for a
patent, and
(3) If the patent is valid, there has been no contributory infringement by defendant.

HELD:
(1) When a patent is sought to be enforced, "the question of invention, novelty, or prior use, and each of them, are
open to judicial examination." The burden of proof to substantiate a charge of infringement is with the plaintiff.
Where, however, the plaintiff introduces the patent in evidence, if it is in due form, it affords a prima facie
presumption of its correctness and validity. The decision of the Commissioner of Patents in granting the patent is
always presumed to be correct. The burden then shifts to the defendant to overcome by competent evidence this
legal presumption .With all due respect, therefore, for the critical and expert examination of the invention by the
United States Patent Office, the question of the validity of the patent is one for judicial determination, and since a
patent has been submitted, the exact question is whether the defendant has assumed the burden of proof as to
anyone of his defenses
As herein before stated, the defendant relies on three special defenses. One such defense, on which the
judgment of the lower court is principally grounded, and to which appellant devotes the major portion of his vigorous
argument, concerns the element of novelty, invention, or discovery, that gives existence to the right to a patent. On
this point the trial court reached the conclusion that "the patented plow of the plaintiff, Exhibit D, is not different
from the native plow, Exhibit 2, except in the material, in the form, in the weight and the grade of the result, the said
differences giving it neither a new function nor a new result distinct from the function and the result obtained from
the native plow; consequently, its production does not presuppose the exercise of the inventive faculty but merely of
mechanical skill, which does not give a right to a patent of an invention under the provisions of the Patent Law." In
thus finding, the court may have been right, since the Vargas plow does not appear to be such a "combination" as
contains a novel assemblage of parts exhibiting invention.
A second line of defense relates to the fact that defendant has never made a complete Vargas plow, but
only points, shares, shoes, and heel pieces, to serve as repairs. Defendant's contention is, that in common with other
foundries, he has for years cast large numbers of plow points and shares suitable for use either on the native wooden
plow, or on the Vargas plow. A difference has long been recognized between repairing and reconstructing a machine.
If, for instance, partial injuries, whether they occur from accident or from wear and tear, to a machine for agricultural
purposes, are made this is only re-fitting the machine for use, and thus permissible. Even under the more rigorous
doctrine of Leeds & Catlin Co. vs. Victor Talking Machine Co. ([1909], 213 U.S., 325), it may be possible that all the
defendant has done is to manufacture and sell isolated parts to be used to replace worn-out parts.
The third defense is, that under the provisions of the statute, an inventor's creation must not have been in
public use or on sale in the United States (and the Philippine Islands) for more than two years prior to his application
.Without, therefore, committing ourselves as to the first two defenses, we propose to base our decision on the one
just suggested as more easily disposing of the case. (See 20 R. C. L., 1140-1142.) We do so with full consciousness of
the doubt which arose in the mind of the trial court, but with the belief that since it has been shown that the
invention was used in public at Iloilo by others than Vargas, the inventor, more than two years before the application
for the patent, the patent is invalid.
Although we have spent some time in arriving at this point, yet having reached it, the question in the case is
single and can be brought to a narrow compass. Under the English Statute of Monopolies (21 Jac. Ch., 3), and under
the United States Patent Act of February 21, 1793, later amended to be as herein quoted, it was always the rule, as
stated by Lord Coke, Justice Story and other authorities, that to entitle a man to a patent, the invention must be new
to the world. As said by the United States Supreme Court, "it has been repeatedly held by this court that a single
instance of public use of the invention by a patentee for more than two years before the date of his application for his
patent will be fatal to the validity of the patent when issued."
On the facts, we think the testimony shows such a public use of the Vargas plow as to render the patent
invalid Nicolas Roces, a farmer, testified that he had bought twenty Vargas plows, of which Exhibit 5 was one, in
December, 1907; and Exhibit 5, the court found, was a plow completely identical with that for which the plaintiff had
received a patent. The minor exception, and this in itself corroborative of Roces' testimony, is that the handle of plow
Exhibit 5 is marked with the letters "A V" and not with the words "Patent Applied For" or "Patented Mar.12, 1912."
Salvador Lizarraga, a clerk in a business house, testified that he had received plows similar to Exhibits D, 5, and 4, for
sale on commission on May, 1908, from Bonifacio Araneta, partner of Vargas in the plow business. Ko Pao Ko, a
blacksmith, testified that he had made fifty plow frames in 1905 for Vargas and Araneta, of which Exhibit 4 is one;
Exhibit 4, the court found, is a plow identical with that patented by Vargas, but without share and mould-board.
Alfred Berwin, an employee in the office of Attorney John Bordman, testified that on September 21, 1908, he had
knowledge of a transaction wherein Vargas and Araneta desired to obtain money to invest in a plow factory. George
Ramon Saul, a mechanic of the "Taller Visayas" of Strachan and MacMurray, testified that he had made Vargas plow

points and shares of the present form upon order of Araneta and Vargas in 1906 and 1907 .William MacMurray,
proprietor of the "Taller Visayas," corroborated the evidence of the witness Saul by the exhibition of the account
against Vargas and Araneta wherein, under date of December 13, 1906, appears the item "12 new soft steel plow
shares forged and bored for rivets as per sample." Against all this, was the testimony of the plaintiff Angel Vargas who
denied that Saul could have been seen the Vargas plow in 1907 and 1907, who denied that Roces purchased the
Vargas plow in 1907, who denied that Lizarraga could have acted as an agent to sell two plows in November, 1908,
who denied any remembrance of the loan mentioned by Berwin as having been negotiated in September, 1908, who
denied that Ko Pao Ko made fifty plows one of which is Exhibit 4, for Araneta and Vargas in 1905. Plaintiff introduced
his books to substantiate his oral testimony .It is hardly believable that five or six witnesses for the defense would
deliberately perjure themselves under oath. One might, but that all together, of different nationalities, would enter
into such a conspiracy, is to suppose the improbable.
Tested by the principles which go to make the law, we think a preponderance of the evidence is to the
effect that for more than two years before the application for the original letters patent, or before July 22, 1908,
there was, by the consent and allowance of Vargas, a public use of the invention covered by them.
To conclude, we are not certain but that appellee has proved every one of his defenses. We are certain that
he has at least demonstrated the public use of the Vargas plow over two years prior to the application for a patent.
Such being the case, although on a different ground, we must sustain the judgment of the lower court, without
prejudice to the determination of the damages resulting from the granting of the injunction, with the costs of this
instance against the appellant. So ordered.

ROMA DRUG AND ROMEO RODRIGUEZ VS. RTC OF GUAGUA, PAMPANGA (APRIL 16, 2009)
NBI operatives and inspectors of the BFAD conducted a raid on petitioner Roma Drug, a drug store located at San
Matias, Guagua, Pampanga. The team seized several imported medicines which were manufactured by SmithKline.
The seized medicines were imported directly from abroad and not purchased through the local SmithKline, the
authorized Philippine distributor of these products.
A complaint against Rodriguez for violation of Section 4 (in relation to Sections 3 and 5) of Republic Act No. 8203, also
known as the Special Law on Counterfeit Drugs (SLCD) was filed. The section prohibits the sale of counterfeit drugs,
which under Section 3 (b) (3), includes "an unregistered imported drug product." The term "unregistered" signifies
the lack of registration with the Bureau of Patent, Trademark and Technology Transfer of a trademark, tradename or
other identification mark of a drug in the name of a natural or juridical person, the process of which is governed
under Part III of the Intellectual Property Code.
Rodriguez then filed a Petition for Prohibition on the ground that Sections 3 (b) (3), 4 and 5 of the SLCD are
unconstitutional and in contravention of (1) the equal protection clause of the Bill of Rights; (2) Section 11, Article XIII,
which mandates that the State make "essential goods, health and other social services available to all the people at
affordable cost;" and (3) Section 15, Article II, which states that it is the policy of the State "to protect and promote
the right to health of the people and instill health consciousness among them.
In this case, there was no doubt that the subject seized drugs were identical in content with their Philippine-
registered counterparts. There was also no claim that they were adulterated in any way or mislabeled at least. Their
classification as "counterfeit" is based solely on the fact that they were imported from abroad and not purchased
from the Philippine- registered owner of the patent or trademark of the drugs.
The Supreme court however held that such questions have in fact been mooted with the passage in 2008 of Republic
Act No. 9502, also known as the "Universally Accessible Cheaper and Quality Medicines Act of 2008". It may be that
Rep. Act No. 9502 did not expressly repeal any provision of the SLCD. However, it is clear that the SLCD's classification
of "unregistered imported drugs" as "counterfeit drugs", and of corresponding criminal penalties therefore are
irreconcilably in the imposition conflict with RA 9502 since the latter indubitably grants private third persons the
unqualified right to import or otherwise use such drugs.


Had the appellate court proceeded to directly confront the constitutionality of the assailed provisions of the SLCD, it
is apparent that it would have at least placed in doubt the validity of the provisions. As written, the law makes a
criminal of any person who imports an unregistered drug regardless of the purpose, even if the medicine can spell life
or death for someone in the Philippines. It does not accommodate the situation where the drug is out of stock in the
Philippines, beyond the reach of a patient who urgently depends on it. It does not allow husbands, wives, children,
siblings, parents to import the drug in behalf of their loved ones too physically ill to travel and avail of the meager
personal use exemption allotted by the law. It discriminates, at the expense of health, against poor Filipinos without
means to travel abroad to purchase less expensive medicines in favor of their wealthier brethren able to do so. Less
urgently perhaps, but still within the range of constitutionally protected behavior, it deprives Filipinos to choose a less

expensive regime for their health care by denying them a plausible and safe means of purchasing medicines at a
cheaper cost.
The absurd results from this far-reaching ban extend to implications that deny the basic decencies of humanity. The
law would make criminals of doctors from abroad on medical missions of such humanitarian organizations such as the
International Red Cross, the International Red Crescent, Medicin Sans Frontieres, and other like-minded groups who
necessarily bring their own pharmaceutical drugs when they embark on their missions of mercy. After all, they are
disabled from invoking the bare "personal use" exemption afforded by the SLCD.
Even worse is the fact that the law is not content with simply banning, at civil costs, the importation of unregistered
drugs. It equates the importers of such drugs, many of whom motivated to do so out of altruism or basic human love,
with the malevolents who would alter or counterfeit pharmaceutical drugs for reasons of profit at the expense of
public safety. Note that the SLCD is a special law, and the traditional treatment of penal provisions of special laws is
that of malum prohibitumor punishable regardless of motive or criminal intent. For a law that is intended to help
save lives, the SLCD has revealed itself as a heartless, soulless legislative piece.
The challenged provisions of the SLCD apparently proscribe a range of constitutionally permissible behavior. It is
laudable that with the passage of Rep. Act No. 9502, the State has reversed course and allowed for a sensible and
compassionate approach with respect to the importation of pharmaceutical drugs urgently necessary for the peoples
constitutionally- recognized right to health.