Pearl and Dean Inc. vs Shoemart Inc.

(patent/copyright)

FACTS:Pearl and Dean Inc. is a corporation engaged in the manufacture of advertising display units called light boxes. In January 1981, Pearl and Dean was able to acquire copyrights over the designs of the display units. In 1988, their trademark application for Poster Ads was approved; they used the same trademark to advertise their light boxes. In 1985, Pearl and Dean negotiated with Shoemart Inc. (SM) so that the former may be contracted to install light boxes in the ad spaces of SM. Eventually, SM rejected Pearl and Deans proposal. Two years later, Pear and Dean received report that light boxes exactly the same as theirs are being used by SM in their ad spaces. They demanded SM to stop using the light boxes and at the same time asked for damages amounting to P20 M. SM refused to pay damages though they struck down the light boxes. Pearl and Dean eventually sued SM. SM argued that it did not infringe on Pearl and Deans trademark because Pearl and Deans trademark is only applicable to envelopes and stationeries and not to the type of ad spaces owned by SM. SM also averred that Poster Ads is a generic term hence it is not subject to trademark registration. SM also averred that the actual light boxes are not copyrightable. The RTC ruled in favor of Pearl and Dean. But the Court of Appeals ruled in favor of SM. ISSUE: Whether or not the Court of Appeals is correct. HELD: Yes. The light boxes cannot, by any stretch of the imagination, be considered as either prints, pictorial illustrations, advertising copies, labels, tags or box wraps, to be properly classified as a copyrightable; what was copyrighted were the technical drawings only, and not the light boxes themselves. In other cases, it was held that there is no copyright infringement when one who, without being authorized, uses a copyrighted architectural plan to construct a structure. This is because the copyright does not extend to the structures themselves. On the trademark infringement allegation, the words Poster Ads are a simple contraction of the generic term poster advertising. In the absence of any convincing proof that Poster Ads has acquired a secondary meaning in this

jurisdiction, Pearl and Deans exclusive right to the use of Poster Ads is limited to what is written in its certificate of registration, namely, stationeries.

Aguas vs. De Leon

(patentability) FACTS: This is a petition for certiorari to review the decision of the Court of Appeals. On April 14, 1962, respondent Conrado de Leon filed in the CFI of Rizal at Quezon City a complaint for infringement of patent against petitioner Domiciano Aguas and F.H. Aquino and Sons alleging among others that being the original first and sole inventor of certain new and useful improvements in the process of making mosaic pre-cast tiles, and thereafter lawfully acquired from the Philippine Patent Office, Patent No. 658, the latter infringed the same by making, using and selling tiles embodying said patent invention. A writ of Preliminary Injuction was subsequently issued.Petitioner Aguas, in his answer, denied the allegations and instead averred inter alia that respondent De Leon is neither the original first nor sole inventor of the improvements in the process of making mosaic pre-cast tiles, the same having been used by several tile-making factories both here and abroad years before the alleged invention by De Leon; hence, it is not patentable.The trial court and the Court of Appeals, upon appeal rendered judgment in favor of respondent de Leon. Thus, this petition.

ISSUE: Whether or not the alleged invention or discovery of respondent is patentable.

HELD: Yes. x x x It should be noted that the private respondent does not claim to be the discoverer or inventor of the old process of tile-making. He only claims to have introduced an improvement of said process. In fact, Letters Patent No. 658 was issued by the Philippine Patent Office to the private respondent Conrado G. De Leon, to protect his rights as the inventor of an alleged new and useful improvement in the process of making pre-cast tiles. Indeed, section 7, Republic Act No. 165, as amended provides: Any invention of a new and useful machine, manufactured product or substance, process, or an improvement of the foregoing, shall be patentable.

MAGUAN v CA (novelty as requisite of patentability) 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 UM110 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.

Smith Kline & French Laboratories vs Court of Appeals & Danlex

Law on Intellectual Property Law on Patents Compulsory License FACTS: In August 1989, Danlex Research Laboratories petitioned before Bureau of Patents, Trademarks and Technology Transfer (BPTTT) that it may be granted a compulsory license for the use and manufacture of the pharmaceutical product Cimetidine. Cimetidine is useful as an antihistamine and in the treatment of ulcers. Cimetidine is originally patented to Smith Kline and French Laboratories in

1978, and the said patent is still in force at the time of application by Danlex Research. The BPTTT granted the application of Danlex Research together with a provision that Danlex Research should be paying 2.5% of the net wholesale price as royalty payment to Smith Kline. This was affirmed by the Court of Appeals. Smith Kline assailed the grant as it argued, among others, that the same is an invalid exercise of police power because there is no overwhelming public necessity for such grant considering that Smith Kline is able to provide an adequate supply of it to satisfy the needs of the Philippine market; that a provision in the Philippine Patent Laws is violative of the Paris Convention to which the Philippines is a signatory. To explain the second contention, Smith Kline states that the Paris Convention only allows compulsory licensing if the original licensee (patent holder) has failed to work on the patent; that therefore, the provision in the Philippine Patent Laws which adds other grounds for the granting of compulsory license i.e. monopoly, is invalid and contrary to the Paris Convention. ISSUE: Whether or not Smith Kline is correct. HELD: No. The granting is a valid exercise of police power. Cimetidine is medicinal in nature, and therefore necessary for the promotion of public health and safety. On the second contention, Section A(2) of Article 5 [of the Paris Convention] unequivocally and explicitly respects the right of member countries to adopt legislative measures to provide for the grant of compulsory licenses to prevent abuses which might result from the exercise of the exclusive rights conferred by the patent. An example provided of possible abuses is failure to work; however, as such, is merely supplied by way of an example, it is plain that the treaty does not preclude the inclusion of other forms of categories of abuses. The legislative intent in the grant of a compulsory license was not only to afford others an opportunity to provide the public with the quantity of the patented product, but also to prevent the growth of monopolies. Certainly, the growth of monopolies was among the abuses which Section A, Article 5 of the Convention foresaw, and which our Congress likewise wished to prevent in enacting. Smith Kline Beckman Co. v Court of Appeals and Tryco Pharma (Doctrine of equivalents must satisfy function-means-and-result test)

GR No. 126627, August 14, 2003

Facts: Petitioner Smith Kline Beckman Co., licensed to do business in the Philippines, filed on October 8, 1976 as assignee before the Bureau of Patents an application for patent on its invention called Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbanate. A Letters of Patent was issued to the petitioner on September 24, 1981 for a period of 17 years. The patent provides that the patented invention consists of Methyl 5 Propylthio-2Benzimidazole Carbanate used as an active ingredient in treating gastrointestinal parasites and lung worms in animals. The respondent Tryco Pharma manufactures, distributes and sells veterinary product, one of which is the Impregon, a drug having Albendazole as its active ingredient effective against gastrointestinal worms in animals. Petitioner now sues the respondent for patent infringement and unfair competition before the RTC as it claims that their patent includes the substance Albendazole used by the respondent and they sold and used the drug Impregon without the petitioners authorization and committed unfair competition for selling as its own the drug that substantially functions to achieve the same result. Petitioner further contends that under the doctrine of equivalents in determining patent infringement, the active substance Albendazole used by the respondent is substantially the same as Methyl 5 Propylthio-2Benzimidazole Carbanate covered by its patent with the same use of combating worm infestations in animals. It prodded the court to go beyond the literal words used in the Letter of Patent issued to them to consider that the words Methyl 5 Propylthio-2-Benzimidazole Carbanate and Albendazole are the same. Respondent avers that the Letter of Patents issued to petitioner does not cover Albendazole in that the word does not appear on it. Even if the patent were to include Albendazole it is unpatentable. They secured approval from the Bureau of Foods and Drugs to manufacture and market Impregon with the Albendazole as its active ingredients. The petitioner has no proof that they passed their veterinary products as that of the petitioner. Creser Precision Systems Inc. v CA and Floro International Co.

(Who may sue for infringement) Posted by Evelyn 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-ininterest 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 byletter 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.
MANZANO v CA 278 SCRA 688 The primary purpose of the patent system is not the reward of the individual but the advancement of the arts and sciences. The function of a patent is to add to the sum of useful knowledge and one of the purposes of the patent system is to encourage dissemination of information concerning discoveries and inventions.

FACTS: Angelita Manzano filed PPO an action for the cancellation of Letters Patent for a gas burner registered in the name of respondent Melecia Madolaria who subsequently assigned the letters patent to New United Foundry and Manufacturing Corporation (UNITED FOUNDRY, for brevity). Petitioner alleged that (a) the utility model covered by the letters patent, in this case, an LPG gas burner, was not inventive, new or useful; (b) the specification of the letters patent did not comply with the requirements of Sec. 14, RA No. 165, as amended; (c) respondent Melecia Madolaria was not the original, true and actual inventor nor did she derive her rights from the original, true and actual inventor of the utility model covered by the letters patent; and, (d) the letters patent was secured by means of fraud or misrepresentation.

Testifying for herself petitioner narrated that her husband Ong Bun Tua worked as a helper in the UNITED FOUNDRY where respondent Melecia Madolaria used to be affiliated with from 1965 to 1970; that Ong helped in the casting of an LPG burner which was the same utility model of a burner and that after her husbands separation from the shop she organized Besco Metal Manufacturing (BESCO METAL, for brevity) for the casting of LPG burners one of which had the configuration, form and component parts similar to those being manufactured by UNITED FOUNDRY. Petitioner presented two (2) other witnesses, namely, her husband Ong Bun Tua and Fidel Francisco. Private respondent, on the other hand, presented only one witness, Rolando Madolaria, who testified, among others, that he was the General Supervisor of the UNITED FOUNDRY. Director of Patents Cesar C. Sandiego denied the petition for cancellation and holding that the evidence of petitioner was not able to establish convincingly that the patented utility model of private respondent was anticipated. Petitioner elevated the decision of the Director of Patents to the Court of Appeals which affirmed the decision of the Director of Patents. Hence, this petition for review on certiorari.

ISSUE: Whether the dismissal is proper where the patent applied for has no substantial difference between the model to be patented and those sold by petitioner.

HELD: The element of novelty is an essential requisite of the patentability of an invention or discovery. If a device or process has been known or used by others prior to its invention or discovery by the applicant, an application for a patent therefor should be denied; and if the application has been granted, the court, in a judicial proceeding in which the validity of the patent is drawn in question, will hold it void and ineffective. It has been repeatedly held that an invention must possess the essential elements of novelty, originality and precedence, and for the patentee to be entitled to the protection the invention must be new to the world. However, The validity of the patent issued by the Philippine Patent Office in favor of private respondent and the question over the inventiveness, novelty and usefulness of the improved model of the LPG burner are matters which are better determined by the Patent Office. The technical staff of the Philippine Patent Office composed of experts in their field has by the issuance of the patent in question accepted private respondents model of gas burner as a discovery. There is a presumption that the Office has correctly determined the patentability of the model and such action must not be interfered with in the absence of competent evidence to the contrary. The rule is settled that the findings of fact of the Director of Patents, especially when affirmed by the Court of Appeals, are conclusive on this Court when supported by substantial evidence. Petitioner has failed to show compelling grounds for a reversal of the findings and conclusions of the Patent Office and the Court of Appeals. Petition DISMISSED.