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IV.

LAW ON PATENTS 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
A. Legislative History the letters patent; and, (d) the letters patent was secured by means of fraud or
1. Republic Act No. 165 - AN ACT CREATING A PATENT OFFICE, PRESCRIBING ITS misrepresentation.
POWERS AND DUTIES, REGULATING THE ISSUANCE OF PATENTS, AND
APPROPRIATING FUNDS THEREFOR Testifying for herself petitioner narrated that her husband Ong Bun Tua worked as a helper
2. Republic Act No. 8293 ("IPC") 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
239.1. All Acts and parts of Acts inconsistent herewith, more particularly Republic Act No. utility model of a burner and that after her husbands separation from the shop she
165, as amended; Republic Act No. 166, as amended; and Articles 188 and 189 of the organized Besco Metal Manufacturing (BESCO METAL, for brevity) for the casting of LPG
Revised Penal Code; Presidential Decree No. 49, including Presidential Decree No. 285, as burners one of which had the configuration, form and component parts similar to those
amended, are hereby repealed.Sec. being manufactured by UNITED FOUNDRY.

SECTION 235. Applications Pending on Effective Date of Act. Petitioner presented two (2) other witnesses, namely, her husband Ong Bun Tua and Fidel
Francisco.
235.1. All applications for patents pending in the Bureau of Patents, Trademarks and
Technology Transfer shall be proceeded with and patents thereon granted in accordance Private respondent, on the other hand, presented only one witness, Rolando Madolaria,
with the Acts under which said applications were filed, and said Acts are hereby continued who testified, among others, that he was the General Supervisor of the UNITED FOUNDRY.
to be enforced, to this extent and for this purpose only, notwithstanding the foregoing Director of Patents Cesar C. Sandiego denied the petition for cancellation and holding that
general repeal thereof: Provided, That applications for utility models or industrial designs the evidence of petitioner was not able to establish convincingly that the patented utility
pending at the effective date of this Act, shall be proceeded with in accordance with the model of private respondent was anticipated.
provisions of this Act, unless the applicants elect to prosecute said applications in Petitioner elevated the decision of the Director of Patents to the Court of Appeals which
accordance with the Acts under which they were filed. affirmed the decision of the Director of Patents. Hence, this petition for review on certiorari.

SECTION 236. Preservation of Existing Rights. Nothing herein shall adversely affect ISSUE:
the rights on the enforcement of rights in patents, utility models, industrial designs, marks Whether the dismissal is proper where the patent applied for has no substantial difference
and works, acquired in good faith prior to the effective date of this Act. between the model to be patented and those sold by petitioner. YES.

3. RA No. 9502 (Universally Accessible Cheaper and Quality Medicines Act of 2008) HELD:
(Amended IPC) 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
B. Purpose application has been granted, the court, in a judicial proceeding in which the validity of the
patent 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,
MANZANO v CA 278 SCRA 688 and for the patentee to be entitled to the protection the invention must be new to the world.
The primary purpose of the patent system is not the reward of the individual but the However, The validity of the patent issued by the Philippine Patent Office in favor of private
advancement of the arts and sciences. The function of a patent is to add to the sum of respondent and the question over the inventiveness, novelty and usefulness of the
useful knowledge and one of the purposes of the patent system is to encourage improved model of the LPG burner are matters which are better determined by the Patent
dissemination of information concerning discoveries and inventions. 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 respondents model of gas
burner as a discovery. There is a presumption that the Office has correctly determined the
FACTS: patentability of the model and such action must not be interfered with in the absence of
Angelita Manzano filed PPO an action for the cancellation of Letters Patent for a gas burner competent evidence to the contrary.
registered in the name of respondent Melecia Madolaria who subsequently assigned the The rule is settled that the findings of fact of the Director of Patents, especially when
letters patent to New United Foundry and Manufacturing Corporation (UNITED FOUNDRY, affirmed by the Court of Appeals, are conclusive on this Court when supported by
for brevity). Petitioner alleged that (a) the utility model covered by the letters patent, in this substantial evidence. Petitioner has failed to show compelling grounds for a reversal of the
case, an LPG gas burner, was not inventive, new or useful; (b) the specification of the findings and conclusions of the Patent Office and the Court of Appeals. Petition
letters patent did not comply with the requirements of Sec. 14, RA No. 165, as amended; (c) DISMISSED.
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(2) Petitioner was not able to secure a patent for its lightboxes, and cannot legally prevent
PEARL & DEAN PHIL INC. VS. SHOEMART anyone from manufacturing or commercially using the same. The light boxes cannot, by any
stretch of the imagination, be considered as either prints, pictorial illustrations, advertising
3-fold purpose copies, labels, tags or box wraps, to be properly classified as a copyrightable; what was
1.patent law seeks to foster and reward invention copyrighted were the technical drawings only, and not the light boxes themselves. In other
2. it promotes disclosures of inventions to stimulate further innovation and to permit cases, it was held that there is no copyright infringement when one who, without being
the public to practice the invention once the patent expires authorized, uses a copyrighted architectural plan to construct a structure. This is because
3. the stringent requirements for patent protection seek to ensure that ideas in the the copyright does not extend to the structures themselves. Patent has a three-fold purpose:
public domain a) to foster and reward invention; b) promotes disclosures of invention and permit public to
use the same upon expiration; c) stringent requirements for patent protection to ensure in
Trademark, copyright and patents are different intellectual property rights that cannot be the public domain remain there for free use of the public. Since petitioner was not able to go
interchanged with one another. A trademark is any visible sign capable of distinguishing the through such examination, it cannot exclude others from manufacturing, or selling such
goods or services of an enterprise and shall include a stamped or marked container of lightboxes. No patent, no protection.
goods. The scope of a copyright is confined to literary and artistic works which are original
intellectual creations in the literary and artistic domain. Patentable inventions refer to any (3) The certificate of registration issued by the Director of Patents gives exclusive right to
technical solution of a problem in any field of human activity which is new, involves an use its own symbol only to the description specified in the certificate. It cannot prevent
inventive step and is industrially applicable. others to use the same trademark with a different description.
FACTS:
Pearl and Dean is a corporation in the manufacture of advertising display units also known (4) "Poster Ads" is a general term that cannot be associated specifically to Pearl and Dean,
as light boxes, which were manufactured by Metro Industrial Services. A copyright thus it cannot be considered to use such term to be unfair competition against the petitioner.
Registration was obtained in 1981. These were marketed in the name of "Poster Ads". They
also applied for a registration of trademark with the Bureau of Patents in 1983, but was only C. Patents : Coverage
approved in 19988. In 1985, petitioner had n agreement with respondent Shoemart Inc
(SMI) to install these light boxes in their Makati and Cubao branch, Only the Makati branch PATENTABLE MATTERS
was able to sigh the agreement. In 1986, the contract was rescinded unilaterally by SMI,
and instead contracted with Metro Industrial Services. They installed these lightboxes in 1. Inventions
different SM city branches, including Cubao and Makati, with association with North Edsa SECTION 21. Patentable Inventions. Any technical solution of a problem in any field of
Marketing Inc (NEMI), SMI's sister company. Petitioner requested SMI and NEMI to put human activity which is new, involves an inventive step and is industrially applicable shall be
down their installations of the light boxes, and payment of compensatory damages worth patentable. It may be, or may relate to, a product, or process, or an improvement of any of
P20M. Claiming that respondents failed to comply, they filed a case for infringement of the foregoing.
trademark and copyright, unfair competition and damages. RTC ruled in favor of petitioner,
but CA reversed. Product patent Process Patent
Product Manufacturing process
ISSUES: Gives greater protection for the inventor Gives less protection for the inventor
(1) Whether there was a copyright infringement Product patent system preferred by Process patent system preferred by
(2) Whether there was a patent infringement developed countries / TRIPS more developing countries less investors
(3) Whether there was a trademark infringement investors
(4) Whether there was unfair competition
WHY?
RULING: No to all. The process patent gives more opportunity for re-engineering. There can be several
(1) Copyright is a statutory right, subject to the terms and conditions specified in the statute. manufacturers to produce the same product using several processes.
Therefore, it can only cover the works falling within the statutory enumeration or description.
Since the copyright was classified under class "O" works, which includes "prints, pictorial On the other hand, product patent, the product is protected regardless of the process
illustrations, advertising copies, labels, tags and box wraps," and does not include the light on how to produce such product.
box itself. A lightbox, even admitted by the president of petitioner company, was neither a
literary nor an artistic work but an engineering or marketing invention, thus not included Standards:
under a copyright.
a. Novelty or NEW (not original)

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SECTION 23. Novelty. An invention shall not be considered new if it forms part of a prior ROSARIO C. MAGUAN (formerly ROSARIO C. TAN) vs. CA and SUSANA LUCHAN
art.
Submitted on December 9, 1977 for Our decision is this petition for review on certiorari of
SECTION 24. Prior Art. Prior art shall consist of: the two Resolutions of the Court of Appeals, the first dated July 6, 1976, setting aside its
Decision of February 16, 1976 in CA-G.R. No. SP-04706, titled "SUSANA LUCHAN v. Hon.
24.1. Everything which has been made available to the public anywhere in the world, before HONRADO, et al." wherein it ruled for the dismissal of the petition for lack of merit and at
the filing date or the priority date of the application claiming the invention; and the same time nullifying the writ of preliminary injunction it had previously issued; and the
second, dated November 4, 1976, denying the motion for reconsideration of the first
24.2. The whole contents of an application for a patent, utility model, or industrial design resolution above-mentioned.
registration, published in accordance with this Act, filed or effective in the Philippines, with a
filing or priority date that is earlier than the filing or priority date of the application: Provided, Petitioner is doing business under the firm name and style of SWAN MANUFACTURING"
That the application which has validly claimed the filing date of an earlier application under while private respondent is likewise doing business under the firm name and style of
Section 31 of this Act, shall be prior art with effect as of the filing date of such earlier "SUSANA LUCHAN POWDER PUFF MANUFACTURING."
application: Provided further, That the applicant or the inventor identified in both
applications are not one and the same. (Sec. 9, R.A. No. 165a) It is undisputed that petitioner is a patent holder of powder puff namely:

prior use 1. UM-423 (extended and/or renewed under Extension No. UM-109 for a period of 5
years from October 6, 1971)
prior publication
2. UM-450 (extended and/or renewed under Extension No. UM110 for a period of 5
Enabling disclosure test when the prior use makes available the necessary years from January 26, 1972)
information about the invention / not secret or uninformative
3. UM 1184, for a period of 5years fromApril 5, 1974.(Petition, Rollo, pp. 6-7).
EXAMPLE
Invention: THUMBDRIVE In a letter dated July 10, 1974 (Annex "D", Rollo, p. 86), petitioner informed private
respondent that the powder puffs the latter is manufacturing and selling to various
Cited prior art: enterprises particularly those in the cosmetics industry, resemble Identical or substantially
i) storage device seated within the PC Identical powder puffs of which the former is a patent holder under Registration Certification
ii) storage device with connection cable Nos. Extension UM-109, Extension UM-110 and Utility Model No. 1184; petitioner explained
iii) software protection key to storage device 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. (Rollo,
HELD: THUMBDRIVE is NOVEL pp. 7-8).

SECTION 25. Non-Prejudicial Disclosure. Private respondent replied stating that her products are different and countered that
25.1. The disclosure of information contained in the application during the twelve (12) petitioner's patents are void because the utility models applied for were not new and
months preceding the filing date or the priority date of the application shall not prejudice the patentable and the person to whom the patents were issued was not the true and actual
applicant on the ground of lack of novelty if such disclosure was made by: author nor were her rights derived from such author. (Taken from allegations in the Answer,
a. The inventor; par. 4, Rollo, p. 93). And on July 25, 1974, private respondent assailed the validity of the
b. A patent office and the information was contained (a) in another application filed by the patents involved and filed with the Philippine Patent Office petitions for cancellation of (1)
inventor and should not have been disclosed by the office, or (b) in an application filed Utility Model Letter Patent Extension No. UM-109 (Inter Partes Case No. 838, Susana
without the knowledge or consent of the inventor by a third party which obtained the Luchan v. Rosario C. Tan), (2) Utility Model Letters Patent No. UM-1184 (Inter Partes Case
information directly or indirectly from the inventor; or No. 839, Susana Luchan v. Rosario C. Tan), (3) Utility Model Letters Patent Extension No.
c. A third party which obtained the information directly or indirectly from the inventor. UM-110 (Inter Partes Case No. 840, Susana Luchan v. Rosario C. Tan. (Taken from
allegations in the Answer, par. 10, Rollo, pp. 94-95).
25.2. For the purposes of Subsection 25.1, "inventor" also means any person who, at the
filing date of application, had the right to the patent. (n) In view thereof, petitioner, on August 24, 1974, filed a complaint for damages with injunction
and preliminary injunction against private respondent with the then Court of First Instance of
G.R. L-45101 November 28, 1986 Rizal, Pasig Branch, docketed as Civil Case No. 19908, for infringing the aforesaid letters

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patent, and prayed, among others, that a writ of preliminary injunction be immediately In challenging these Orders private respondent filed a petition for certiorari with the
issued (Complaint, Rollo, p. 90). respondent court on September 29, 1975 (Annex "D", Rollo, pp. 148-171) reiterating among
other things the invalidity of petitioner's patents and prayed that the trial court be restrained
In her answer, private respondent alleged that the products she is manufacturing and from enforcing or continuing to enforce the following:
offering for sale are not Identical, or even only substantially Identical to the products
covered by petitioner's patents and, by way of affirmative defenses, further alleged that (1) Order dated September 18, 1974, granting the preliminary injunction;
petitioner's patents in question are void on the following grounds:
(2) Writ of preliminary injunction dated September 18, 1974; and
(1) at the time of filing of application for the patents involved, the utility models applied
for were not new and patentable under Sec. 55 of R.A. 165, as amended by R.A. 864; and (3) Order dated September 11, 1974 denying petitioner's motion petition for
reconsideration.
(2) the person to whom the patents were issued was not the true and actual author of
the utility models applied for, and neither did she derive her rights from any true and actual On October 15, 1975, the Writ of Preliminary Injunction was issued by the respondent Court
author of these utility models. of Appeals as follows:

for the following reasons: NOW, THEREFORE, you, respondents, and/or any person/persons acting on your stead,
are hereby ENJOINED to RESTRAIN from enforcing or continuing to enforce, the
(a) since years prior to the filing of applications for the patents involved, powder puffs proceedings complained of in the petition to wit: 1) Order dated September 18, 1974,
of the kind applied for were then already existing and publicly being sold in the market; both granting the preliminary injunction; 2) Writ of Preliminary Injunction dated September 18,
in the Philippines and abroad; and 1974; and Order dated September 11, 1975, denying petitioner's motion for reconsideration,
all issued in connection with Civil Case No. 19908, UNTIL FURTHER ORDERS FROM
(b) applicant's claims in her applications, of "construction" or process of manufacturing THIS COURT. (Annex "P", Rollo, p. 1.73)
the utility models applied for, with respect to UM-423 and UM-450, were but a complicated
and impractical version of an old, simple one which has been well known to the cosmetics On February 16, 1976, respondent court promulgated a decision the dispositive portion of
industry since years previous to her filing of applications, and which belonged to no one which reads:
except to the general public; and with respect to UM1184; her claim in her application of a
unitary powder puff, was but an limitation of a product well known to the cosmetics industry WHEREFORE, finding no merit in the herein petition, the same is hereby dismissed and the
since years previous to her firing of application, and which belonged to no one except to the preliminary injunction previously issued by this Court is hereby set aside, with costs.
general public; (Answer, Rollo, pp. 93-94).
SO ORDERED. (CA Decision, Rollo, p. 189).
On September 18, 1974, the trial court issued an Order (Annex "K", Rollo, p. 125) granting ln said decision respondent court stated that in disposing of the petition it tackled only the
the preliminary injunction prayed for by petitioner. Consequently, the corresponding writ was issue of whether the court a quo acted with grave abuse of discretion in issuing the
subsequently issued (Annex "K-1", Rollo, p. 131) enjoining the herein private respondent challenged orders. It made clear the question of whether the patents have been infringed or
(then defendant) and all other persons employed by her, her agents, servants and not was not determined considering the court a quo has yet to decide the case on the merits
employees from directly or indirectly manufacturing, making or causing to be made, selling (Ibid., p. 186).
or causing to be sold, or using or causing to be used in accordance with, or embodying the
utility models of the Philippine Patent Office Utility Model Letters Patent Nos. 423 (Extension Feeling aggrieved, private respondent moved to reconsider the afore-mentioned Decision
No. UM-109), No. 450 (Extension No. UM-110), and Utility Model No. 1184 or from based on the following grounds:
infringement upon or violating said letters patent in any way whatsoever (Annex " K-1 ",
Rollo, p. 131). I THAT THIS HONORABLE COURT ERRED IN NOT APPRECIATING THE EXISTENCE
OF A FAIR QUESTION OF INVALIDITY OF PRIVATE RESPONDENT'S PATENTS.
Private respondent questioned the propriety of the trial court's issuance of the Writ of
Preliminary Injunction arguing that since there is still a pending cancellation proceedings II THAT THIS HONORABLE COURT ERRED IN NOT REJECTING THE THEORY OF
before the Philippine Patent Office concerning petitioner's patents, such cannot be the basis RESPONDENT JUDGE THAT HE HAS NO JURISDICTION TO INVALIDATE THE
for preliminary injunction (Motion for Reconsideration, Rollo, p. 132). PATENTS UPON GROUND OF LACK OF NOVELTY OF THE PRODUCTS PATENTED.
(Motion for Reconsideration, Rollo, p. 190).
In an Order dated September 11, 1975, the trial court denied private respondent's motion for
reconsideration (Annex "N", Rollo, p. 142). Reviewing on reconsideration, respondent court gave weight to private respondent's
allegation that the latter's products are not identical or even only substantially identical to the
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products covered by petitioner's patents. Said court noticed that contrary to the lower courts of them, are open to judicial examination." (Vargas v. F.M. Yaptico & Co. 40 Phil. 199
position that the court a quo had no jurisdiction to determine the question of invalidity of the [1919]; Vargas v. Chua, 57 Phil. 790-791 [1933]; Frank and Gohn v. Kosuyana 59 Phil. 207
patents, Section 45 and 46 of the Patent Law allow the court to make a finding on the [1933]).
validity or invalidity of patents and in the event there exists a fair question of its invalidity,
the situation calls for a denial of the writ of preliminary injunction pending the evaluation of Under the present Patent Law, there is even less reason to doubt that the trial court has
the evidence presented (Rollo, pp. 218-226). Thus, finding the lower court's position to have jurisdiction to declare the patents in question invalid. A patentee shall have the exclusive
been opposed to Patent Law, respondent court considered it a grave abuse of discretion right to make, use and sell the patented article or product and the making, using, or selling
when the court a quo issued the writ being questioned without looking into the defenses by any person without the authorization of the patentee constitutes infringement of the
alleged by herein private respondent. Further, it considered the remedy of appeal, under the patent (Sec. 37, R.A. 165). Any patentee whose rights have been infringed upon may bring
circumstances, to be inadequate. an action before the proper CFI now (RTC) and to secure an injunction for the protection of
his rights (Sec. 42, R.A. 165). Defenses in an action for infringement are provided for in
Thus, on July 6, 1976, respondent court made a complete turnabout from its original Section 45 of the same law which in fact were availed of by private respondent in this case.
decision and promulgated a Resolution, the dispositive portion of which reads: Then, as correctly stated by respondent Court of Appeals, this conclusion is reinforced by
Sec. 46 of the same law which provides that if the Court shall find the patent or any claim
WHEREFORE, our decision is hereby set aside. The writ of certiorari is ordered issued. thereof invalid, the Director shall on certification of the final judgment ... issue an order
Accordingly, the challenged orders, Exhibit H and H-1 and the order denying the motion for cancelling the patent or the claims found invalid and shall publish a notice thereof in the
reconsideration (Annex "K", Petition), are hereby set aside. The writ of preliminary injunction Official Gazette." Upon such certification, it is ministerial on the part of the patent office to
previously ordered by this Court and ordered lifted by the Decision now being set aside is execute the judgment. (Rollo, pp. 221-222).
hereby reinstated and made permanent. Without pronouncement as to costs.
II. The burden of proof to substantiate a charge of infringement is with the plaintiff. But
SO ORDERED. (CA Resolution, Rollo, p. 226). 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
In a Resolution dated November 4, 1976, respondent court, not persuaded by the grounds Commissioner (now Director) of Patent in granting the patent is presumed to be correct. The
embodied in the motion for reconsideration filed by herein petitioner (Annex "V ", Rollo, p. burden of going forward with the evidence (burden of evidence) then shifts to the defendant
227), denied the same for lack of merit, thereby maintaining the same stand it took in its to overcome by competent evidence this legal presumption.
July 6, 1976 Resolution (Rollo, p. 281). Hence, this petition.
The question then in the instant case is whether or not the evidence introduced by private
On December 3, 1976, without giving due course to the petition, this Court required respondent herein is sufficient to overcome said presumption.
respondent to file her Comment (Rollo, p. 290) which was filed on December 16, 1976
(Rollo, pp. 291-316). Thereafter, petitioner filed her Reply (Rollo, p. 323) and on May 30, After a careful review of the evidence consisting of 64 exhibits and oral testimonies of five
1977, the petition was given due course (Rollo, p. 345). Petitioner filed her brief on July 14, witnesses presented by private respondents before the Court of First Instance before the
1977 (Rollo, p. 351) while private respondent filed her brief on August 25, 1977 (Rollo, p. Order of preliminary injunction was issued as well as those presented by the petitioner,
359). Thereafter, petitioner having failed to file reply brief, the Court resolved to declare the respondent Court of Appeals was satisfied that there is a prima facie showing of a fair
case submitted for decision on December 9, 1977 (Rollo, p. 359). 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
The assignment of errors raised by the petitioner in this case (Rollo, pp. 15-16) may be court a quo for alleged lack of jurisdiction, on the mistaken notion that such question in
reduced to three main issues: within the exclusive jurisdiction of the patent office.

(1) Whether in an action for infringement the Court a quo had jurisdiction to determine It has been repeatedly held that an invention must possess the essential elements of
the invalidity of the patents at issue which invalidity was still pending consideration in the novelty , originality and precedence and for the patentee to be entitled to protection, the
patent office. 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
(2) Whether the Court a quo committed grave abuse of discretion in the issuance of a Sec. 9 of the Patent Law) before the date of his application for his patent, will be fatal to, the
writ of preliminary injunction. validity of the patent when issued. (Frank, et al. v. Kosuyama Vargas v. F.M. Yaptico & Co.
and Vargas v. Chua, et al., supra).
(3) Whether certiorari is the proper remedy.
The law provides:
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
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SEC. 9. Invention not considered new or patentable. An invention shall not be considered Division of the Supreme Court ruled that "The prerogative writ of certiorari may be applied
new or capable of being patented if it was known or used by others in the Philippines before for by proper petition notwithstanding the existence of the regular remedy of an appeal in
the invention thereof by the inventor named in an application for patent for the invention; or due cause when among other reasons, the broader interests of justice so require or an
if it was patented or described in any printed publication in the Philippines or any foreign ordinary appeal is not an adequate remedy."
country more than one year before the application for a patent therefor; or if it had been in
public use or on sale in the Philippines for more than one year before the application for a Private respondent maintains the position that the resolutions sought to be appealed from
patent therefor; or if it is the subject matter of a validity issued patent in the Philippines had long become final and executory for failure of Hon. Reynaldo P. Honrado, the trial court
granted on an application filed before the filing of the application for patent therefor. judge, to appeal by certiorari from the resolutions of respondent Court of Appeals. (Rollo,
pp. 291-292).
Thus, more specifically, under American Law from which our Patent Law was derived
(Vargas v. F.M. Yaptico & Co. supra) it is generally held that in patent cases a preliminary Such contention is untenable.
injunction will not issue for patent infringement unless the validity of the patent is clear and
beyond question. The issuance of letters patent, standing alone, is not sufficient to support There is no dispute that petitioner has seasonably petitioned. On the other hand, it is
such drastic relief (8 Deller's Walker on Patents p. 406). In cases of infringement of patent elementary that the trial judge is a mere nominal party as clearly provided in Section 5, Rule
no preliminary injunction will be granted unless the patent is valid and infringed beyond 65 of the Revised Rules of Court where it shall be the duty of such person or persons
question and the record conclusively proves the defense is sham. (Ibid., p. 402) interested in sustaining the proceedings in court, "to appear and defend, both in his or their
own behalf and in behalf of the court or judge affected by the proceedings."
In the same manner, under our jurisprudence, as a general rule because of the injurious
consequences a writ of injunction may bring, the right to the relief demanded must be clear Relative thereto "the judge whose order is under attack is merely a nominal party;
and unmistakable. (Sangki v. Comelec, 21 SCRA 1392; December 26, 1967) and the wherefore, a judge in his official capacity should not be made to appear as a party seeking
dissolution of the writ is proper where applicant has doubtful title to the disputed property. reversal of a decision that is unfavorable to the action taken by him." (Hon. Alcasid v.
(Ramos v. C.A., 95 SCRA 359). Samson, 102 Phil. 735-736; Tarona v. Sayo, 67 SCRA 508, 524; Lim Se v. Argel, 70 SCRA
378).
III. 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 As to petitioner's claim of prescription, private respondent's contention that such refers to
petitioner's patents existed and were publicly known and used as early as 1963 long before the filing of petitions for cancellation in the Patent Office under Sec. 28 of the Patent Law
petitioner was issued the patents in question. (List of Exhibits, Rollo, pp. 194-199). As and not to a defense against an action for infringement under Sec. 45 thereof which may be
correctly observed by respondent Court of Appeals, "since sufficient proofs have been raised anytime, is evident under aforesaid law.
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 PREMISES CONSIDERED, the assailed resolutions of the Court of Appeals are hereby
merits so that the matter of whether the patents issued were in fact valid or not may be AFFIRMED.
resolved." (Rollo, pp. 286-287).
MAGUAN v CA 146 SCRA 107
All these notwithstanding, the trial court nonetheless issued the writ of preliminary injunction FACTS:
which under the circumstances should be denied.
Petitioner is doing business under the firm name and style of SWAN MANUFACTURING"
For failure to determine first the validity of the patents before aforesaid issuance of the writ, while private respondent is likewise doing business under the firm name and style of
the trial court failed to satisfy the two requisites necessary if an injunction is to issue, "SUSANA LUCHAN POWDER PUFF MANUFACTURING. And holder petitioner informed
namely: the existence of the right to be protected and the violation of said right. (Buayan private respondent that the powder puffs the latter is manufacturing and selling to various
Cattle Co., Inc. v. Quintillan, 128 SCRA 276). 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
Under the above established principles, it appears obvious that the trial court committed a Nos. Extension UM-109, Extension UM-110 and Utility Model No. 1184; petitioner explained
grave abuse of discretion which makes certiorari the appropriate remedy. 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.
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. Private respondent replied stating that her products are different and countered that
Under the circumstances, respondent appellate court is of the view that ordinary appeal is petitioner's patents are void because the utility models applied for were not new and
obviously inadequate. (Rollo, p. 288). A parallel was drawn from a decision of the Supreme patentable and the person to whom the patents were issued was not the true and actual
Court in the case of Sanchez v. Hon. Court of Appeals, 69 SCRA 328 [1976] where the First author nor were her rights derived from such author. Petitioner filed a complaint for
6
damages with injunction and preliminary injunction against private respondent with the then invention by a patentee for more than two years (now for more than one year only under
Court of First Instance of Rizal. The trial court issued an Order granting the preliminary Sec. 9 of the Patent Law) before the date of his application for his patent, will be fatal to, the
injunction prayed for by petitioner. Consequently, the corresponding writ was subsequently validity of the patent when issued.
issued. In challenging these Orders private respondent filed a petition for certiorari with the
respondent court but was denied. Hence this petition. 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
ISSUE: petitioner's patents existed and were publicly known and used as early as 1963 long before
(1) Whether in an action for infringement the Court a quo had jurisdiction to determine the petitioner was issued the patents in question. (List of Exhibits, Rollo, pp. 194-199). As
invalidity of the patents at issue which invalidity was still pending consideration in the patent correctly observed by respondent Court of Appeals, "since sufficient proofs have been
office. introduced in evidence showing a fair question of the invalidity of the patents issued for such
(2) Whether the Court a quo committed grave abuse of discretion in the issuance of a writ of models, it is but right that the evidence be looked into, evaluated and determined on the
preliminary injunction. merits so that the matter of whether the patents issued were in fact valid or not may be
(3) Whether certiorari is the proper remedy. resolved." (Rollo, pp. 286-287).

HELD: All these notwithstanding, the trial court nonetheless issued the writ of preliminary injunction
1) The first issue has been laid to rest in a number of cases where the Court ruled that which under the circumstances should be denied.
"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." 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,
Under the present Patent Law, there is even less reason to doubt that the trial court has namely: the existence of the right to be protected and the violation of said right. (Buayan
jurisdiction to declare the patents in question invalid. A patentee shall have the exclusive Cattle Co., Inc. v. Quintillan, 128 SCRA 276). Under the above established principles, it
right to make, use and sell the patented article or product and the making, using, or selling appears obvious that the trial court committed a grave abuse of discretion which makes
by any person without the authorization of the patentee constitutes infringement of the certiorari the appropriate remedy. As found by respondent Court of Appeals, the injunctive
patent (Sec. 37, R.A. 165). Any patentee whose rights have been infringed upon may bring order of the trial court is of so general a tenor that petitioner may be totally barred from the
an action before the proper CFI now (RTC) and to secure an injunction for the protection of sale of any kind of powder puff. Under the circumstances, respondent appellate court is of
his rights. the view that ordinary appeal is obviously inadequate.

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 VARGAS v YAPTICO & CO 40 PHIL 195
created a prima facie presumption of its correctness and validity. The decision of the FACTS:
Commissioner (now Director) of Patent in granting the patent is presumed to be correct. The Angel Vargas, a farmer acquainted with local conditions and alive to the commercial
burden of going forward with the evidence (burden of evidence) then shifts to the defendant possibilities, took it upon himself to produce, with the native plow as the model, an
to overcome by competent evidence this legal presumption. 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
The question then in the instant case is whether the evidence introduced by private of Vargas .Acertified copy of the patent was filed in the Division of Patents, Copyrights, and
respondent herein is sufficient to overcome said presumption. Trademarks of the Executive Bureau, Government of the Philippine Islands. The patent and
its registry was also published in the newspaper, El Tiempo.
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 Since 1910, Vargas has engaged in the manufacture of these plows in the city of Iloilo,
Order of preliminary injunction was issued as well as those presented by the petitioner, Philippine Islands. On the plows there was first stamped the words "Patent Applied For,"
respondent Court of Appeals was satisfied that there is a prima facie showing of a fair later after the patent had been granted, changed to "Patented Mar. 12, 1912." Ninety per
question of invalidity of petitioner's patents on the ground of lack of novelty. As pointed out cent of the plows in use in the Visayas (Iloilo and vicinity) are said to be Vargas plows.
by said appellate court said evidence appeared not to have been considered at all by the During this same period, the firm of F. M. Yaptico & Co. (Ltd.), was engaged in the foundry
court a quo for alleged lack of jurisdiction, on the mistaken notion that such question in business in the City of Iloilo. It openly held itself out as a manufacturer of plow parts. It has
within the exclusive jurisdiction of the patent office. in fact produced points, shares, shoes, and heel pieces in a considerable amount adapted
to replace worn-out parts of the Vargas plow.
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 Such was the existing situation when, in the early part of 1918, the owner of the patent, and
invention must be new to the world. Accordingly, a single instance of public use of the thus the proper party to institute judicial proceedings, began action in the Court of First
7
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 A second line of defense relates to the fact that defendant has never made a complete
infringement. The court issued the preliminary injunction as prayed for. The defendant, in Vargas plow, but only points, shares, shoes, and heel pieces, to serve as repairs.
addition to a general denial, alleged, as special defenses, that the patent lacked novelty or Defendant's contention is, that in common with other foundries, he has for years cast large
invention, that there was no priority of ideas or device in the principle and construction of the numbers of plow points and shares suitable for use either on the native wooden plow, or on
plow, and that the plow, whose manufacture it was sought to have enjoined by the plaintiff, the Vargas plow. A difference has long been recognized between repairing and
had already been in public use for more than two years before the application of the plaintiff reconstructing a machine. If, for instance, partial injuries, whether they occur from accident
for his patent. The parties subsequently entered into a stipulation that the court should first or from wear and tear, to a machine for agricultural purposes, are made this is only re-fitting
resolve the question of whether or not there had been an infraction of the patent, reserving the machine for use, and thus permissible. Even under the more rigorous doctrine of Leeds
the resultant question of damages for later decision. After the taking of evidence, including & Catlin Co. vs. Victor Talking Machine Co. ([1909], 213 U.S., 325), it may be possible that
the presentation of exhibits, the trial judge, the Honorable Antonio Villareal, in a very all the defendant has done is to manufacture and sell isolated parts to be used to replace
exhaustive and learned decision, rendered judgment in favor of the defendant and against worn-out parts.
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. The third defense is, that under the provisions of the statute, an inventor's creation must not
From this judgment the plaintiff has appealed. 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
ISSUES: easily disposing of the case. (See 20 R. C. L., 1140-1142.) We do so with full
(1) The judgment of the trial court in finding the patent granted plaintiff void for lack of consciousness of the doubt which arose in the mind of the trial court, but with the belief that
novelty and invention should be affirmed; since it has been shown that the invention was used in public at Iloilo by others than
(2) The patent granted plaintiff is void from the public use of his plow for over two years prior Vargas, the inventor, more than two years before the application for the patent, the patent is
to his application for a patent, and invalid.
(3) If the patent is valid, there has been no contributory infringement by defendant.
On the facts, we think the testimony shows such a public use of the Vargas plow as to
HELD: render the patent invalid Nicolas Roces, a farmer, testified that he had bought twenty
(1) When a patent is sought to be enforced, "the question of invention, novelty, or prior use, Vargas plows, of which Exhibit 5 was one, in December, 1907; and Exhibit 5, the court
and each of them, are open to judicial examination." The burden of proof to substantiate a found, was a plow completely identical with that for which the plaintiff had received a patent.
charge of infringement is with the plaintiff. Where, however, the plaintiff introduces the The minor exception, and this in itself corroborative of Roces' testimony, is that the handle
patent in evidence, if it is in due form, it affords a prima facie presumption of its correctness of plow Exhibit 5 is marked with the letters "A V" and not with the words "Patent Applied
and validity. The decision of the Commissioner of Patents in granting the patent is always For" or "Patented Mar.12, 1912." Salvador Lizarraga, a clerk in a business house, testified
presumed to be correct. The burden then shifts to the defendant to overcome by competent that he had received plows similar to Exhibits D, 5, and 4, for sale on commission on May,
evidence this legal presumption .With all due respect, therefore, for the critical and expert 1908, from Bonifacio Araneta, partner of Vargas in the plow business. Ko Pao Ko, a
examination of the invention by the United States Patent Office, the question of the validity blacksmith, testified that he had made fifty plow frames in 1905 for Vargas and Araneta, of
of the patent is one for judicial determination, and since a patent has been submitted, the which Exhibit 4 is one; Exhibit 4, the court found, is a plow identical with that patented by
exact question is whether the defendant has assumed the burden of proof as to anyone of Vargas, but without share and mould-board. Alfred Berwin, an employee in the office of
his defenses Attorney John Bordman, testified that on September 21, 1908, he had knowledge of a
As herein before stated, the defendant relies on three special defenses. One such defense, transaction wherein Vargas and Araneta desired to obtain money to invest in a plow factory.
on which the judgment of the lower court is principally grounded, and to which appellant George Ramon Saul, a mechanic of the "Taller Visayas" of Strachan and MacMurray,
devotes the major portion of his vigorous argument, concerns the element of novelty, testified that he had made Vargas plow points and shares of the present form upon order of
invention, or discovery, that gives existence to the right to a patent. On this point the trial Araneta and Vargas in 1906 and 1907 .William MacMurray, proprietor of the "Taller
court reached the conclusion that "the patented plow of the plaintiff, Exhibit D, is not Visayas," corroborated the evidence of the witness Saul by the exhibition of the account
different from the native plow, Exhibit 2, except in the material, in the form, in the weight and against Vargas and Araneta wherein, under date of December 13, 1906, appears the item
the grade of the result, the said differences giving it neither a new function nor a new result "12 new soft steel plow shares forged and bored for rivets as per sample." Against all this,
distinct from the function and the result obtained from the native plow; consequently, its was the testimony of the plaintiff Angel Vargas who denied that Saul could have been seen
production does not presuppose the exercise of the inventive faculty but merely of the Vargas plow in 1907 and 1907, who denied that Roces purchased the Vargas plow in
mechanical skill, which does not give a right to a patent of an invention under the provisions 1907, who denied that Lizarraga could have acted as an agent to sell two plows in
of the Patent Law." In thus finding, the court may have been right, since the Vargas plow November, 1908, who denied any remembrance of the loan mentioned by Berwin as having
does not appear to be such a "combination" as contains a novel assemblage of parts been negotiated in September, 1908, who denied that Ko Pao Ko made fifty plows one of
exhibiting invention. which is Exhibit 4, for Araneta and Vargas in 1905. Plaintiff introduced his books to
8
substantiate his oral testimony. It is hardly believable that five or six witnesses for the competent evidence this legal presumption. With all due respects, therefore, for the critical
defense would deliberately perjure themselves under oath. One might, but that all together, and expert examination of the invention by the United States Patent Office, the question of
of different nationalities, would enter into such a conspiracy, is to suppose the improbable. the validity of the patent is one for judicial determination, and since a patent has been
Tested by the principles which go to make the law, we think a preponderance of the submitted, the exact question is whether the defendant has assumed the burden of proof as
evidence is to the effect that for more than two years before the application for the original to anyone of his defenses.
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. We repeat that in view of the evidence presented, and particularly of the examination we
have made of the plows, we cannot escape the conclusion that the plow upon which the
To conclude, we are not certain but that appellee has proved every one of his defenses. We appellee's contention is based, does not constitute an invention and, consequently, the
are certain that he has at least demonstrated the public use of the Vargas plow over two privilege invoked by him is untenable and the patent acquired by him should be declared
years prior to the application for a patent. Such being the case, although on a different ineffective.
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 The judgment appealed from is hereby reversed and the appellants are absolved from the
this instance against the appellant. So ordered. complaint, with costs of this instance against the appellee. So ordered.

VARGAS v CHUA 57 PHIL 784 (same) FRANK v KOSUYAMA 59 PHIL 206


FACTS: FACTS:
Angel Vargas, the plaintiff herein, brought this action to restrain the appellants and Patent on improvement in hemp stripping machines, issued by the United States Patent
the other defendant entity, Cham Samco & Sons, their agents and mandatories, from Office and registered in the Bureau of Commerce and Industry of the Philippine, was the
continuing the manufacture and sale of plows similar to his plow described in his patent No. origin of this action brought by the plaintiffs herein who prayed that the judgment be
1,507,530 issued by the United States Patent Office on September 2, 1924; and to compel rendered against the defendant, ordering him thereby to refrain immediately from the
all of said defendants, after rendering an accounting of the profits obtained by them from the manufacture and sale of machines similar to the one covered by the patent: to render an
sale of said plows from September 2, 1924, to pay him damages equivalent to double the accounting of the profits realized from the manufacture and sale of the machines in
amount of such profits. question; that in case of refusal or failure to render such accounting, the defendants be
ordered to pay the plaintiffs the sum of P60 as profit on each machine manufactured or sold
The trial court rendered a judgement in favor of plaintiffs and against the defendant. by him; that upon approval of the required bond, said defendant be restrained from
It appears from the bill of exceptions that Cham Samco & Sons did not appeal. continuing the manufacture and sale of the same kind of machines; that after the trial the
preliminary injunction issued therein be declared permanent and, lastly, that the said
ISSUE: defendant be sentenced to pay the costs and whatever damages the plaintiffs might be able
Whether the plow, Exhibit F, constitutes a real invention or an improvement for which a to prove therein. The action therefore was based upon alleged infringement by the
patent may be obtained, or if, on the contrary, it is substantially the same plow represented defendant of the rights and privileges acquired by the plaintiffs over the aforesaid patent
by Exhibit 3-Chua the patent for which was declared null and void in the aforementioned through the manufacture and sale by the former of machines similar to that covered by the
case of Vargas vs. F. M. Yaptico & Co., supra. aforesaid patent.
The plaintiffs appealed from the judgment rendered by the trial court dismissing their
HELD: complaint, with cost, as well as the defendant's counterclaim of P10,000. The defendant did
The appellee is not entitled to the protection he seeks for the simple reason that his plow, not appeal.
Exhibit F, does not constitute an invention in the legal sense, and because, according to the In their amended complaint, the plaintiff alleged that their hemp stripping machines, for
evidence, the same type of plows had been manufactured in this country and had been in which they obtained a patent, have the following characteristics: "A stripping head, a
use in many parts of the Philippine Archipelago, especially in the Province of Iloilo, long horizontal table, a stripping knife supported upon such table, a tappering spindle, a rest
before he obtained his last patent. holder adjustably secured on the table portion, a lever and means of compelling the knife to
close upon the table, a pallet or rest in the bottom of the table, a resilient cushion under
In the above mentioned case of Vargas vs. F. M. Yaptico & Co., we said: such palletor rest." In spite of the fact that they filed an amended complaint from which the
When a patent is sought to be enforced, "the questions of invention, novelty, or prior use, "spindle" or conical drum, which was the only characteristic feature of the machine
and each of them, are open to judicial examination." The burden of proof to substantiate a mentioned in the original complaint, was eliminated, the plaintiffs insisted that the said part
charge of infringement is with the plaintiff. Where, however, the plaintiff introduces the constitutes the essential difference between the machine in question and other machines
patent in evidence, if it is the due form, it affords a prima facie presumption of its and that it was the principal consideration upon which their patent was issued. The said
correctness and validity. The decision of the Commissioner of Patents in granting the patent plaintiffs sustained their contention on this point even in their printed brief and memorandum
is always presumed to be correct. The burden then shifts to the defendant to overcome by filed in this appeal.
9
During the trial, both parties presented voluminous evidence from which the trial court
concluded that in constructing their machine the plaintiffs did nothing but improve, to a b. Inventiveness (or non-obviousness)
certain degree, those that were already in vogue and in actual us in hemp producing
provinces. It cannot be said that they have invented the "spindle" inasmuch as this was Section 26, IPC, as amended by RA No. 9502 (Universally Accessible Cheaper and Quality
already known since the year 1909 or 1910. Neither it can be said that they have invented Medicines Act of 2008)
the stripping knife and the contrivance which controls the movement and pressure thereof
on the ground that stripping knives together with their control sets were already in actual
use in the different stripping machines long before their machine appeared. AGUAS v DE LEON 111 SCRA 238
FACTS:
ISSUE: Whether there is an infringement on the patents
Conrado G. de Leon filed in the Court of First Instance of Rizal at Quezon City a complaint
HELD: for infringement of patent against Domiciano A. Aguas and F. H. Aquino and Sons alleging
The trial court did not decree the annulment of the plaintiffs' patent and the herein that being the original first and sole inventor of certain new and useful improvements in the
defendant-appellee insists that the patent in question should be declared null and void. We process of making mosaic pre-cast tiles, he lawfully filed and prosecuted an application for
are of the opinion that it would be improper and untimely to render a similar judgment, in Philippine patent, and having complied in all respects with the statute and the rules of the
view of the nature of the action brought by the plaintiffs and in the absence of a cross- Philippine Patent Office, Patent No. 658 was lawfully granted and issued to him; that said
complaint to that effect. For the purposes of this appeal, suffice it to hold that the defendant invention was new, useful, not known or used by others in this country before his invention
is not civilly liable for alleged infringement of the patent in question. thereof.
In the light of sound logic, the plaintiffs cannot insist that the "spindle" was a patented
invention on the ground that said part of the machine was voluntarily omitted by them from That the defendant Domiciano A. Aguas infringed Letters of Patent No. 658 by making,
their application, as evidenced by the photographic copy thereof (Exhibit 41) wherein it using and selling tiles embodying said patent invention and that defendant F. H. Aquino &
likewise appears that the patent on Improved Hemp Stripping Machines was issued minus Sons is guilty of infringement by making and furnishing to the defendant Domiciano A.
the "spindle" in question. Were we to stress to this part of the machine, we would be giving Aguas the engravings, castings and devices designed and intended of tiles embodying
the patent obtained by the plaintiffs a wider range than it actually has, which is contrary to plaintiff;s patented invention; that he has given direct and personal notice to the defendants
the principles of interpretation in matters relating to patents. of their said acts of infringement and requested them to desist, but nevertheless, defendants
In support of their claim the plaintiffs invoke the doctrine laid down by this court in the case have refused and neglected to desist and have disregarded such request, and continue to
of Frank and Gohn vs. Benito (51 Phil., 712), wherein it was held that the therein defendant so infringe causing great and irreparable damage to plaintiff; that if the aforesaid
really infringed upon the patent of the therein plaintiffs. It may be noted that the plaintiffs in infringement is permitted to continue, further losses and damages and irreparable injury will
the former and those of the latter case are the same and that the patent then involved is the be sustained by the plaintiff; that there is an urgent need for the immediate issuance of a
very same one upon which the present action of the plaintiffs is based. The above-cited preliminary injunction.
case, however, cannot be invoked as a precedent to justify a judgment in favor of the
plaintiffs-appellants on the ground that the facts in one case entirely different from those in The court granted the injunction. And likewise held in favor of the plaintiff and against the
the other. In the former case the defendant did not set up the same special defenses as defendant.
those alleged by the herein defendant in his answer and the plaintiffs therein confined
themselves to presenting the patent, or rather a copy thereof, wherein the "spindle" was ISSUE: Whether the process, subject of said patent, is not an invention or discovery, or an
mentioned, and this court took for granted their claim that it was one of the essential improvement of the old system of making tiles.
characteristics thereof which was imitated or copied by the then defendant. Thus it came to
pass that the "spindle" in question was insistently mentioned in the decision rendered on HELD:
appeal as the essential part of the plaintiffs' machine allegedly imitated by the then The validily of the patent issued by the Philippines Patent Office in favor of the private
defendant. In the case under consideration, it is obvious that the "spindle" is not an integral respondent and the question over the inventiveness, novelty and usefulness of the
part of the machine patented by the plaintiffs on the ground that it was eliminated from their improved process therein specified and described are matters which are better determined
patent inasmuch as it was expressly excluded in their application, as evidenced by the by the Philippines Patent Office. The technical staff of the Philippines Patent Office,
aforesaid Exhibit 41. composed of experts in their field, have, by the issuance of the patent in question, accepted
Wherefore, reiterating that the defendant cannot be held civilly liable for alleged the thinness of the private respondent's new tiles as a discovery. There is a presumption
infringement of the patent upon which the present action is based on the ground that there that the Philippines Patent Office has correctly determined the patentability of the
is no essential part of the machine manufactured and sold by him, which was unknown to improvement by the private respondent of the process in question.
the public in the Province of Davao at the time the plaintiffs applied for and obtained their
patent for improved hemp stripping machines, the judgment appealed from is hereby The contention of the petitioner Aguas that the letters patent of de Leon was actually a
affirmed, with the costs against the plaintiffs-appellants. So ordered. patent for the old and non-patentable process of making mosaic pre-cast tiles is devoid of
10
merit. De Leon never claimed to have invented the process of tile-making. The Claims and Section 31 Right of Priority: Provided, That the application for industrial design shall be
Specifications of Patent No. 658 show that although some of the steps or parts of the old filed within six (6) months from the earliest filing date of the corresponding foreign
process of tile making were described therein, there were novel and inventive features application;
mentioned in the process. Section 33 Appointment of Agent or Representative;
In view of the foregoing, this Court finds that Patent No. 658 was legally issued, the process Section 51 Refusal of the Application;
and/or improvement being patentable. Sections 56 to 60 Surrender, Correction of and Changes in Patent;
Chapter VII Remedies of a Person with a Right to Patent;
Manzano v. CA, 278 SCRA 688 supra Chapter VIII Rights of Patentees and Infringement of Patents; and
Chapter XI Assignment and Transmission of Rights.
c. Industrial Application
Lay-Out Designs (Topographies of Integrated Circuits)
SECTION 27. Industrial Applicability. An invention that can be produced and used in RA 9150 amending RA 8293
any industry shall be industrially applicable.
Layout Designs (Topographies) of Integrated Circuits Regulations
2. Utility Model
UNPATENTABLE MATTERS
SECTION 109. Special Provisions Relating to Utility Models.
109.1. Section 22, IPC, as amended by RA No. 9502 (Universally Accessible Cheaper and Quality
a. An invention qualifies for registration as a utility model if it is new and industrially Medicines Act of 2008)
applicable.
b. Section 21, "Patentable Inventions", shall apply except the reference to inventive step as Secs. 8-9, RA 165
a condition of protection.
Sec. 74, RA 165
3. Industrial Designs
Article 27, Agreement on Trade-Related Aspects of Intellectual Property (TRIPS)
SECTION 112. Definition of Industrial Design. An industrial design is any composition
of lines or colors or any three-dimensional form, whether or not associated with lines or Diamond v. Chakrabarty, 447 U.S. 303, 100 S. Ct. 2204
colors: Provided, That such composition or form gives a special appearance to and can
serve as pattern for an industrial product or handicraft. Brief Fact Summary.

SECTION 113. Substantive Conditions for Protection. Chakrabarty (Plaintiff) sought to patent a live, man-made microorganism.
113.1. Only industrial designs that are new or original shall benefit from protection under
this Act. Synopsis of Rule of Law.
113.2. Industrial designs dictated essentially by technical or functional considerations to
obtain a technical result or those that are contrary to public order, health or morals shall not A live, man-made microorganism is a non-naturally occurring composition and therefore
be protected. may be patented.

SECTION 119. Application of Other Sections and Chapters. Facts.


119.1. The following provisions relating to patents shall apply mutatis mutandis to an
industrial design registration: Genetic engineer Ananda Mohan Chakrabarty, working for General Electric, had developed
Section 21 Novelty; a bacterium (derived from the Pseudomonas genus and now known as Pseudomonas
Section 24 Prior art: Provided, That the disclosure is contained in printed documents or putida) capable of breaking down crude oil, which he proposed to use in treating oil spills.
in any tangible form; General Electric filed a patent application for the bacterium in the United States listing
Section 25 Non-prejudicial Disclosure; Chakrabarty as the inventor, but the application was rejected by a patent examiner,
Section 27 Inventions Created Pursuant to a Commission; because under patent law at that time, living things were generally understood to not be
Section 28 Right to a Patent; patentable subject matter under Section 101 of Title 35 U.S.C.
Section 29 First to File Rule;
The Board of Patent Appeals and Interferences agreed with the original decision; however,
the United States Court of Customs and Patent Appeals overturned the case in
11
Chakrabarty's favor, writing, "the fact that micro-organisms are alive is without legal that it had to legislate in order to make agricultural human-made inventions patentable,
significance for purposes of the patent law." Sidney A. Diamond, Commissioner of Patents and, because the legislation Congress enacted is limited, it follows that Congress never
and Trademarks, appealed to the Supreme Court. intended to make items outside the scope of the legislation patentable.

Chakrabarty (Plaintiff) developed a new species of bacterium capable of metabolizing


hydrocarbons in a manner unknown in naturally occurring organisms using recombinant
DNA processes. The microorganisms exhibited great promise in the treatment of oil spills.
Plaintiff applied for a patent, which was denied by the Patent Office (Defendant) on the
basis that the microorganisms were products of nature and therefore unpatentable. The
Board of Appeals affirmed. The Court of Customs and Patent Appeals reversed, and the
United States Supreme Court granted review.

Issue. May a live, man-made microorganism be patented?

Held.

(Burger, C.J.) Yes. A live, man-made microorganism is a non-naturally occurring


composition and therefore may be patented. Resolution of this issue is, regardless of its
philosophical implications, strictly a matter of statutory construction. The relevant statute
here, 35 U.S.C. 101, defines as patentable any new and useful manufacture or
composition of matter, among other things. It is a basic rule of construction that words are
given their natural, ordinary meanings. There can be little doubt that microorganisms
produced by recombinant DNA technology may be said to be manufactured and to be
compositions of matter. For purposes of patent law, the fact they are alive is not relevant.
Although it is true that naturally-occurring products may not be patented, a genetically-
engineered microorganism is not naturally occurring. While this Court recognizes that
recombinant DNA technology is a controversial field, it is ill-equipped to balance the
competing values and interests manifested therein; this is a task for Congress. Since the
patent laws clearly include materials such as are at issue here within their scope, and no
specific law exists to exclude it, the only appropriate holding is that recombinant DNA-
produced microorganisms are patentable. Affirmed.

Dissent.

(Brennan, J.) Congress, in enacting the Plant Patent Act in 1930 and the Plant Variety
Protection Act in 1970, has indicated that bacteria are excluded from patentability. Patent
protection must not be extended further than Congress intended. Congress has not left a
legislative vacuum regarding the type of patent at issue. The Plant Patent Act gives patent
protection to developers of certain asexually reproduced plants. The Plant Variety
Protection Act extends protection to certain new plant varieties capable of sexual
reproduction. Therefore, contrary to the majoritys assertion, the patent at issue does not
pose the problem of unanticipated inventions. In these two Acts, Congress has addressed
the general problem of patenting animate inventions and has chosen carefully limited
language granting protection to some kinds of discoveries, but specifically excluding others.
These Acts show strong evidence of a congressional limitation that excludes bacteria from
patentability. The Acts evidence Congresss understanding, at least since 1930, that 101
does not include living organisms. If newly developed living organisms not naturally
occurring had been patentable under 101, the plants included in the scope of the 1930 and
1970 Acts could have been patented without new legislation. Therefore, Congress believed
12