!"#$%"&' )*%+ ,# -"'./0"/ 12/3&&4* 54#%/36&37* 849.

3/4:4*&;

57%&/3*4:
The applicant uoes not have to uesciibe exactly the subject mattei claimeu, the uesciiption
must cleaily allow peisons of oiuinaiy skill in the ait to iecognize that applicant inventeu
what is claimeu.

The puipose of the "wiitten uesciiption" iequiiement is bioauei than to meiely explain how
to "make anu use"; the applicant must also convey with ieasonable claiity to those skilleu in
the ait that, as of the filing uate sought, he oi she was in possession of the invention. The
invention is, foi puiposes of the "wiitten uesciiption" inquiiy, whatevei is now claimeu.

The piopei test is whethei the uiawings conveyeu with ieasonable claiity to those of
oiuinaiy skill that applicant hau in fact inventeu the cathetei ieciteu in those claims

<"%0=/7.*>? 1:3='& '4@6 .*>4/#&"*> &'4 %"#4;
Nahuikai's ABC >4#3=* "66@3%"&37* 4*&3&@4> 57.D@4 E.:4* F"&'4&4/ compiises of a paii of
tubes (lumens) uesigneu to allow bloou to be iemoveu fiom an aiteiy, piocesseu in an
appaiatus that iemoves impuiities, anu ietuineu close to the place of iemoval. Piioi ait
catheteis utilizeu concentiic ciiculai lumens, while Nahuikai's employs joineu semi-ciiculai
tubes that come to a single tapeieu tip. Auvantageously, the punctuie aiea of Nahuikai's
semiciiculai cathetei is 42% less than that of a coaxial cathetei caiiying the same quantity of
bloou, anu its conical tip yielus low iates of injuiy to the bloou. The piioi ait coaxial catheteis
aie now obsolete

This case involves an appeal of Sakhaiam B. Nahuikai anu Quinton Instiuments Company
(collectively Nahuikai) fiom the paitial final juugment of the 0niteu States Bistiict Couit foi
the gianting of paitial summaiy juugment to vas-Cath Incoipoiateu anu its licensee uambio,
Inc. (collectively vas-Cath). The uistiict couit ueclaieu Nahuikai's &G7 H*3&4> I&"&4# .&3@3&J
6"&4*&# K7#+ LMNOBMPQR 1SPQR 6"&4*&; "*> LMORQMCLC 1SCLC 6"&4*&;M &3&@4> T57.D@4 E.:4*
F"&'4&4/MT 3*,"@3> "# "*&3%36"&4> .*>4/ SS 0.S.C. Sec. 1u2(b). The uistiict couit concluueu
that none of the twenty-one claims of the two utility patents was entitleu to the benefit of the
filing uate of Nahuikai's eailiei-fileu 0niteu States uesign patent application Seiial No.
SS6,u81 ('u81 uesign application), which compiiseu the same uiawings as the utility patents,
D4%".#4 &'4 >4#3=* "66@3%"&37* >3> *7& 6/7,3>4 " TG/3&&4* >4#%/36&37* 7U &'4 3*,4*&37*T
as iequiieu by SS 0.S.C. Sec. 112, fiist paiagiaph.

V"%&#?
0n Naich 8, 1982, uefenuant Nahuikai fileu the 'ABC >4#3=* "66@3%"&37* 4*&3&@4> W57.D@4
E.:4* F"&'4&4/X. The application was latei abanuoneu on Novembei Su, 1984. Aftei filing
the 'u81 uesign application, Nahuikai also fileu a Canauian Inuustiial Besign application
compiising the same uiawings plus auuitional textual uesciiption. 0n August 9, 1982,
Canauian Inuustiial Besign Su,u89 1F"*">3"* SABR; issueu on that application.

0n 0ctobei 1, 1984, Nahuikai fileu Seiial No. 6S6,6u1 (SOAC .&3@3&J "66@3%"&37*) which
claimeu the benefit of the filing uate of the 'u81 uesign application, having been uenominateu
a "continuation" theieof. 0n }anuaiy 29, 1986, Nahuikai fileu Seiial No. 82S,S92 1SNRQ .&3@3&J
"66@3%"&37*;, again claiming the benefit of the filing uate of the 'u81 uesign application (the
'S92 utility application was uenominateu a continuation of the '6u1 utility application).
Notably, both utility applications incluueu the same uiawings as the 'u81 uesign application.
Y'4 SOAC "*> SNRQ .&3@3&J "66@3%"&37*# 3##.4> 3* CRBO "*> CRBZM /4#64%&3,4@JM "# &'4 SPQR
"*> SCLC 6"&4*&#M &'4 #.D[4%&# 7U &'3# "664"@+

!"#$F"&' #.4> -"'./0"/ 3* \.*4 CRBBM #4403*= " >4%@"/"&7/J [.>=:4*& &'"& &'4
%"&'4&4/# 3& :"*.U"%&./4> >3> *7& 3*U/3*=4 -"'./0"/S# SPQR "*> SCLC .&3@3&J 6"&4*&#
D4%".#4 #.%' 6"&4*&# G4/4 D7&' 3*,"@3> "# "*&3%36"&4> DJ &'4 F"*">3"* SABR. vas-Cath's
anticipation theoiy was piemiseu on the aigument that the 'S29 anu '141 patents weie not
entitleu unuei SS 0.S.C. Sec. 12u to the filing uate of the SABC >4#3=* "66@3%"&37* D4%".#4 3&#
>/"G3*=# >3> *7& 6/7,3>4 "* ">49."&4 TG/3&&4* >4#%/36&37*T of the claimeu invention as
iequiieu by SS 0.S.C. Sec. 112, fiist paiagiaph.

)IIH]? WN the uistiict couit eiieu in concluuing, on summaiy juugment that the uisclosuie
of the 'u81 uesign application, namely, &'4 >/"G3*=# G3&'7.& :7/4M ">49."&4@J :44&# &'4
TG/3&&4* >4#%/36&37*T /49.3/4:4*& so as to entitle Nahuikai to the benefit of the 1982 filing
uate of the 'u81 uesign application foi his two utility patents anu theieby anteuates Canauian
'u89. (yes they eiieu, hence case was iemanueu back to ueteimine questions of fact)

^4@>: "The uistiict couit's giant of summaiy juugment, holuing all claims of the 'S29 anu '141
patents invaliu as anticipateu is heieby ieveiseu as to all the claims, anu the case iemanueu
foi fuithei pioceeuings consistent heiewith."

The lowei couit eiieu in gianting a paitial summaiy juugment when 3& 3:67#4> "*
4//7*47.# @4="@ #&"*>"/> 3* >4&4/:3*3*= %7:6@3"*%4 G3&' &'4 TG/3&&4* >4#%/36&37*T
/49.3/4:4*&+ "The uistiict couit stateu that although the 'u81 uesign uiawings in question
"alloweu piactice" |i.e., enableuj, they uiu not necessaiily show what the invention is. To show
one example of an invention, even a woiking mouel, is not to uesciibe what is novel oi
impoitant."
We finu the >3#&/3%& %7./&S# %7*%4/* G3&' TG'"& &'4 3*,4*&37* 3#T 3# :3#6@"%4>M "*> 3&#
/49.3/4:4*& &'"& &'4 SABC >/"G3*=# T>4#%/3D4 G'"& 3# *7,4@ 7/ 3:67/&"*&T @4="@ 4//7/.
Theie is "no legally iecognizable oi piotecteu 'essential' element, 'gist' oi 'heait' of the
invention in a combination patent. The instant claims uo not iecite only a paii of semi-ciiculai
lumens, oi a conical tip, oi a iatio at which the tip tapeis, oi the shape, size, anu placement of
the inlets anu outlets; they claim a uouble lumen cathetei having a combination of those
featuies. That combination invention is what the 'u81 uiawings show. As the uistiict couit
itself iecognizeu, "what Nahuikai eventually patenteu is exactly what the pictuies in seiial
'u81 show."

A long line of cases suppoit the holuing that unuei piopei ciicumstances, >/"G3*=# "@7*4
:"J 6/7,3>4 " TG/3&&4* >4#%/36&37*T 7U "* 3*,4*&37* "# /49.3/4> DJ I4%+ CCQ. A faiily
unifoim stanuaiu foi ueteimining compliance with the "wiitten uesciiption" iequiiement has
been maintaineu thioughout: "_@&'7.=' `&'4 "66@3%"*&a >74# *7& '",4 &7 >4#%/3D4 4b"%&@J
&'4 #.D[4%& :"&&4/ %@"3:4>M +++ &'4 >4#%/36&37* :.#& %@4"/@J "@@7G 64/#7*# 7U 7/>3*"/J
#03@@ 3* &'4 "/& &7 /4%7=*3c4 &'"& `'4 7/ #'4a 3*,4*&4> G'"& 3# %@"3:4>

The puipose of the "wiitten uesciiption" iequiiement is bioauei than to meiely explain how
to "make anu use"; the applicant must also convey with ieasonable claiity to those skilleu in
the ait that, as of the filing uate sought, he oi she was in possession of the invention. The
invention is, foi puiposes of the "wiitten uesciiption" inquiiy, whatevei is now claimeu.

What is neeueu to meet the uesciiption iequiiement will necessaiily vaiy uepenuing on the
natuie of the invention claimeu.

Summaiy juugment was theiefoie inappiopiiate. Auuitionally, the possibility that the 'u81
uiawings may pioviue an auequate Sec. 112 "wiitten uesciiption" of the subject mattei of
some of the claims but not otheis shoulu have been consiueieu. 0n iemanu, the uistiict couit
shoulu sepaiately analyze whethei the "wiitten uesciiption" iequiiement has been met as to
the subject mattei of each claim of the '141 anu 'S29 patents.



The Gentry Gallery vs. The Berkline Corp (1998)
Doctrines:
To fulfill the written description requirement, the patent specification must clearly allow persons
of ordinary skill in the art to recognize that the inventor invented what is claimed.
While an applicant may generally be allowed claims that cover more than specific embodiments
shown, the claims cannot broaden a specific and essential element of the invention
Facts:
Gentry owns the '244 patent, a unit of a sectional sofa in which two independent reclining seats
("recliners") face in the same direction. Sectional sofas are typically organized in an L-shape with "arms"
at the exposed ends of the linear sections. Because recliners usually have had adjustment controls on their
arms, sectional sofas were able to contain two recliners only if they were located at the exposed ends of
the linear sections. Due to the typical L-shaped configuration of sectional sofas, the recliners face in
different directions. Such an arrangement was "not usually comfortable when the occupants are watching
tv because one or both occupants must turn their heads to watch the same tv set. Furthermore, the
separation of the two reclining seats at opposite ends of a sectional sofa is not conducive to intimate
conversation."

The invention of the patent solved this supposed dilemma by placing a "console" between two
recliners which face in the same direction. This console "accommodates the controls for both reclining
seats," eliminating the need to position each recliner at an exposed end of a linear section. Accordingly,
both recliners can then be located on the same linear section allowing two people to recline while
watching television and facing in the same direction. See Claim 1
1
.

Gentry sued Berkline, alleging that Berkline infringed the patent by manufacturing and selling
sectional sofas having two recliners facing in the same direction. In the allegedly infringing sofas, the
recliners were separated by a seat which has a back cushion that may be pivoted down onto the seat, so
that the seat back may serve as a tabletop between the recliners. In response to Gentry's complaint,
Berkline asserted that the 244 patent was invalid.

Berkline requested a motion for summary judgment of non-infringement, and asserted that the
244 patent was invalid and unenforceable. District Court granted Berklines motion for summary
judgment of non-infringement. However, the district court held that the 244 patent was valid. District
court relied on a statement made by the inventor named in the patent, James Sproule. Based on Sproule's
argument, the court concluded that, Berkline's sofas "contain[ ] a drop-down tray identical to the one
employed by the Brennan product (this was the prior art reference)" and therefore did not have a "fixed
console" and did not literally infringe the patent. Gentry appealed.

Issues:
1. W/N the grant of the motion for summary judgment for non-infringement is proper.
2. W/N the 244 patent was valid

Held/Ratio:
1. YES. Berkline does not infringe the patent. A determination of infringement requires a two-step
analysis. "First, the claim must be properly construed to determine its scope and meaning.
Second, the claim as properly construed must be compared to the accused device or process."

1
A sectional sofa comprising:
a pair of reclining seats disposed in parallel relationship with one another in a double reclining seat sectional sofa section being without an arm at
one end ...,
each of said reclining seats having a backrest and seat cushions and movable between upright and reclined positions ...,
a fixed console disposed in the double reclining seat sofa section between the pair of reclining seats and with the console and reclining seats
together comprising a unitary structure,
said console including an armrest portion for each of the reclining seats; said arm rests remaining fixed when the reclining seats move from one
to another of their positions,
and a pair of control means, one for each reclining seat; mounted on the double reclining seat sofa section ....
Because there is no dispute concerning the structure of the accused device, our infringement
analysis involves only claim construction, which is based upon the claim language, the written
description portion of the specification, the prosecution history, and extrinsic evidence. Our
present analysis of infringement under the doctrine of equivalents involves prosecution history
estoppel.

We agree with Gentry that the term "fixed" requires only that the console be rigidly
secured to its two adjacent recliners. The term "fixed" and the explanatory clause "with the
console and reclining seats together comprising a unitary structure" were added during
prosecution to overcome a rejection based on a sectional sofa in which the seats were not rigidly
attached. Thus, because the term "console" clearly refers to the complete section between the
recliners, the term "fixed" merely requires that the console be rigidly attached to the recliners.
However, Berkline's sofas do not have a "console." The prosecution history indicates that the
term "console" is not met by a sofa section having a seat back that folds down to serve as a table
top, as in Brennan's seat or Berkline's sofas.

The tray units in Brennan (the prior art reference) are not "consoles" as that term is used
in the patent, regardless of the term's ordinary meaning or the way in which Gentry now urges us
to interpret it. The relevant feature of Berkline's sofas, a center seat back that may be folded
down to provide a table top between the adjacent recliners, is indistinguishable from the
comparable feature in Brennan, a fold-down tray table. Thus, we conclude that Berkline's sofas
do not contain the claimed "console." The claims are therefore not literally infringed.

2. NO. The244 patent was invalid. The Court agreed with Berkline that the 244 patent's
disclosure does not support claims in which the location of the recliner controls is other than on
the console. To fulfill the written description requirement, the patent specification "must clearly
allow persons of ordinary skill in the art to recognize that [the inventor] invented what is
claimed."

In this case, the original disclosure clearly identifies the console as the only possible location
for the controls. It provides for only the most minor variation in the location of the
controls, noting that the control "may be mounted on top or side surfaces of the console
rather than on the front wall ... without departing from this invention." No similar variation
beyond the console is even suggested. Additionally, the only discernible purpose for the console
is to house the controls. Thus, locating the controls anywhere but on the console is outside
the stated purpose of the invention. Moreover, consistent with this disclosure, Sproule's (the
inventor of the 244 patent) broadest original claim was directed to a sofa comprising, "control
means located upon the center console to enable each of the pair of reclining seats to move
separately between the reclined and upright positions."

While an applicant may generally be allowed claims that cover more than specific embodiments
shown, the claims cannot broaden a specific and essential element of the invention. Because one
can add claims to a pending application directed to adequately described subject matter, Sproule
admitted at trial that he did not consider placing the controls outside the console until he became
aware that some of Gentrys competitors were doing so. The disclosure is limited to sofas in
which the recliner control is located on the console. In the present case, because the inventor
considered the location of the recliner controls on the console as an essential element of his
invention, his original disclosure served to limit the permissible breadth of his later-drafted
claims

Orthokinetics Inc. v. Safety Travel Chairs, Inc. 806 F.2d 1565 (Fed. Cir. 1986)
FACTS: Orthokinetics made pediatric wheelchairs. They invented and received a
patents on "Orthopedic Chair With Scoliosis Pads and Travel Chair, a wheelchair
improvement that made it easy to load people, especially children into and out of cars.
The Travel chair patent reads:
1. In a wheel chair having a seat portion, a front leg portion, and a rear wheel
assembly, the improvement wherein said front leg portion is so dimensioned as to be
insertable through the space between the doorframe of an automobile and one of the
seats thereof whereby said front leg is placed in support relation to the automobile and
will support the seat portion from the automobile in the course of subsequent
movement of the wheel chair into the automobile, and the retractor means for
assisting the attendant in retracting said rear wheel assembly upwardly independently
of any change in the position of the front leg portion with respect to the seat portion
while the front leg portion is supported on the automobile and to a position which
clears the space beneath the rear end of the chair and permits the chair seat portion
and retracted rear wheel assembly to be swung over and set upon said automobile
seat.
Claim 2 eliminates the language added by reissue in claim 1 and adds
wherein said wheel chair has a chair frame including back portion extending
upwardly from said seat portion and a front leg portion extending downwardly from
said seat portion and wherein said rear wheel assembly includes a rear wheel frame
that extends forwardly from said rear wheels and wherein said means for retracting
said rear wheel assembly includes means pivotally connecting the front of said rear
wheel frame to said chair frame, and a retractable strut connecting between said rear
wheel assembly and said chair frame to support the wheel chair on the rear wheel
assembly and to retract the rear wheel assembly upwardly under the chair seat portion
by swinging said rear wheel frame upwardly.
Claim 3 limits the rear wheel frame of claim 2 to one which "comprises an upwardly
arched undercarriage extending between said chair frame and rear wheels." Claim 4
limits the arch of the undercarriage of claim 3 to one which "substantially matches the
angle between said seat portion and said front leg portion whereby said undercarriage
swings into close proximity to said leg portion and seat portion when said rear wheel
assembly is retracted." Claim 5 limits the chair frame of claim 3 to one which
"comprises spaced support tubes, said upwardly arched undercarriage fitting between
said tubes when the undercarriage is retracted." All five claims asserted are
independent claims.
The patent claimed "wherein said front leg portion is so dimensioned as to be
insertable through the space between the doorframe of an automobile and one of the
seats thereof." The claim did not specify any range of sizes that would fit into a car, or
suggest what size range of cars the invention was designed to be used with.

Orthokinetics introduced the Travel Chair to the market in November of 1973. In
1978, Safety Travel Chairs, Inc. (STC) began to sell similar chairs manufactured by
Entron, Inc.
Orthokinetics sued STC, Entron. It alleged willful infringement of claims 5 and 6 of
the wheelchair with scoliosis pads patent and claims 1-5 of the travel chair patent.
STC argued that Orthokinetics' patent was invalid because it did not "particularly
point out and distinctly claim the invention," as required by 35 U.S.C. 112 2. STC
argued that the dimensions of the wheelchair would be dependent on the dimensions
of the car that the wheelchair is built for. Since the dimensions of the car are not part
of the patent, it would impossible for someone reading the patent to figure out how to
make a properly-sized wheelchair.
Orthokinetics argued that it was pretty obvious that you had to measure the car
to properly size the wheelchair and that someone skilled in the art would be able to do
that without having to have it explicitly spelled out in the patent.
The Trial Court found for STC. Orthokinetics appealed. The Trial Court found
that Orthokinetics' claim did not describe the invention in "full, clear, concise, and
exact" terms. Therefore the patent is invalid due to indefiniteness.
HELD: The Appellate Court reversed and remanded. The Appellate Court found that
the Trial Court had erred when they discounted Orthokinetics' expert witness'
testimony that someone skilled in the art would know how to measure the car. The
test for definitiveness is not whether there is a better, more specific way to have
drafted the claim. The test is simply whether it is definitive enough so that someone
skilled in the art could figure it out.
A decision on whether a claim is invalid under Sec. 112, 2d p, requires a
determination of whether those skilled in the art would understand what is claimed
when the claim is read in light of the specification.
It is undisputed that the claims require that one desiring to build and use a travel chair
must measure the space between the selected automobile's doorframe and its seat and
then dimension the front legs of the travel chair so they will fit in that particular space
in that particular automobile. Orthokinetics' witnesses, who were skilled in the art,
testified that such a task is evident from the specification and that one of ordinary skill
in the art would easily have been able to determine the appropriate dimensions. The
jury had the right to credit that testimony and no reason exists for the district court to
have simply discounted that testimony as "conclusory".
The claims were intended to cover the use of the invention with various types of
automobiles. That a particular chair on which the claims read may fit within some
automobiles and not others is of no moment. The phrase "so dimensioned" is as
accurate as the subject matter permits, automobiles being of various sizes. As long as
those of ordinary skill in the art realized that the dimensions could be easily obtained,
Sec. 112, 2d p requires nothing more. The patent law does not require that all possible
lengths corresponding to the spaces in hundreds of different automobiles be listed in
the patent, let alone that they be listed in the claims.
PATENTS DIGESTS ALS2014B ATTY. BARANDA

ALS2014B Page 58 of 99
Albana v. Director of Patents (1953)
Facts:
Pending examination of the patent application of Tapinio and Feliciano, Meliton Albaa filed a motion to
intervene claiming that the applicant-inventors had "sold and assigned to him the right to contract or deal the sale of their
invention called Fel-Tap Meter Guard and Detector through the Corporation that they were then organizing under his
direction and to fix and decide on the purchase price of it.
Albaa prayed that (1) Tapinio be compelled to sign their contract, which was already signed by Feliciano
(2) have such contract acknowledged before a notary public, (3) have it recorded in the Patent Office and Register of
Deeds, and (4) patent be issued in his name and in the name of the inventors.
The motion to intervene was denied on the ground that the Director of Patents has no jurisdiction on the question
submitted to him. Albaa filed an amended motion to intervene, now claiming "that he is the assignee of the inventors of
the undivided part interests in the invention..." The amended motion was still denied on the ground that the assignment
made to the movant is not one of exclusive right to make, use and sell the electrical contrivance for which patent is
applied for; that it is just an authority to act as the selling agent for the inventors and to receive compensation; and that not
being entitled to have his name included as one of the patentees, the movant has no right to intervene.
Issue:
1. W/N Director of Patent has jurisdiction/ authority to act on Albaa's motion. NO.
Held/Ratio:
1. What Albaa attempted to secure by his motion to intervene is beyond the jurisdiction and authority of the
Director of Patents to grant. Despite the amendment to the first motion, still it remains that the alleged assignment
is not of the invention but it is an agreement whereby he is to act as selling agent for the inventors of the patent
and of the invention while receiving compensation therefor. This is clearly supported by the clauses found in their
contract.
Assignments of patents and inventions be recorded in books and records kept for the purpose in the Patent Office
if presented in due form; but Albaa does not ask for the registration of the alleged agreement between him and
the inventors, and because it is not in due form it cannot be recorded. Under the provisions of the Patent Law, the
Director of Patents has no power and authority to compel the applicant-inventors to do what Albaa is asking
them to perform. What he asked the Director of Patents to do for him is essentially a judicial function which
would require the determination or finding by a court of competent jurisdiction as to whether there was a meeting
of the minds of the contracting parties before it could compel the applicant-inventors to perform what he prays the
court to order them to do. Aside from want of authority and power, the Director of Patents lacks the means to
make such determination and finding which would be necessary before he could act on the appellant's motion.

Boothe v. Director of Patents

Facts:
Boothe, a US citizen, claims to be the inventor of an antibiotic called tetracycline, a
derivative of aureomycin. On March 5, 1964, Boothe applied for a patent on the said invention,
claiming the right of priority granted to foreign applicants (Sec. 15, RA 165). Boothe also filed with
the director a copy of their application for a letters patent in the USA, filed on March 16, 1963.
Section 15 RA 165 states that an application for a patent here in the Philippines by any
person who has previously applied for the same patent in a foreign country, if such foreign
country affords similar privileges to PH citizens, shall be treated as if it were filed in this country
on the date that it was filed in the foreign country. Provided, that the application in this
country is filed within twelve months from the earliest date on which such foreign
application was filed.
Under this section, Boothe would have until March 16, 1954 to file for his
patent here in the Philippines. Boothe's application in the US however, failed to mature into
patents because the patent was awarded to Pfizer which had filed its application in the US ahead
of Boothe. Here in the Philippines however, Boothe filed for the patent before Pfizer. Boothe
therefore requested that his Philippine patent be granted.
The patent examiner rejected all of Boothe's claims and disallowed the use of priority
rights, because the "specification" Boothe had submitted was incomplete (if she asks,
incomplete because a certain page did not correspond with the subsequent page). Boothe
thereafter submitted another copy of the specification, this time with nine additional pages. It was
still rejected because the additional pages were considered by the examiner to be minor
informality.
The director finally decided on the matter and admitted the additional pages to the
specification, but was firm in denying Boothe priority rights. The filing date of Boothe's
application was set to April 14, 1964 (instead of March 16, 1963), and remanded to the patent
examiner for proper action. Boothe contends that the actual filing of the application was on
March 5, 1964, well within the deadline (March 16, 1964).

Issue:
W/N there was timely filing of the application in order to merit priority rights? No.

Ratio:
Under Rules 47 and 48 or the Revised Rules of Practice in Patent Cases, it is imperative
that the application be comeplete in order that it may be accepted. It is essential to the validity of
letters patent that the sepcifications be full, definite, and specific. The purpose of requiring a
definite and accurate description of the invention is to apprise the public of what the patentee
claims as his invention, to inform the courts as to what they are called upon to construe, and to
convey to competing manufacturers what they are bound to avoid.
In this case, the specification submitted on March 5, 1964 was far from
complete, the defect was therefore one of substance not of form. Boothe's application
can only therefore be deemed complete on July 2, 1964 when they submitted the additional nine
pages of the specifications and claims. The director therefore did not err in converting Boothe's
application into an ordinary application for having failed to file a complete application within 12
months from the date in the foreign application.


Today is Friday, February 21, 2014
Republic of the Philippines
SUPREME COURT
Manila
EN BANC
G.R. No. L-27793 March 15, 1928
PATRICK HENRY FRANK and WILLIAM HENRY GOHN, plaintiff-appellees,
vs.
CONSTANCIO BENITO, defendant-appellant.
Abad Santos, Camus, Delgado and Recto for appellant.
J. W. Ferrier for appellees.
STATEMENT
Plaintiffs allege that they are the owners of a patent covering hemp-stripping machine No. 1519579 issued to them
by the United States Patent Office of December 16, 1924, and duly registered in the Bureau of Commerce and
Industry of the Philippine Islands under the provisions of Act No. 2235 of the Philippine Legislature on March 17,
1925. That the important feature of the machine "is a spindle upon which the hemp to be stripped is wound in the
process of stripping." That plaintiffs have for some time been manufacturing the machine under the patent. That the
defendant manufactured a hemp-stripping machine in which, without authority from the plaintiffs, he has embodied
and used such spindles and their method of application and use, and is exhibiting his machine to the public for the
purpose of inducing its purchase. That the use by the defendant of such spindles and the principle of their
application to the stripping of hemp is in violation of, and in conflict with, plaintiffs' patent, together with its conditions
and specifications. That the defendant's machine is an infringement upon the patent granted the plaintiffs, and
plaintiffs pray for an injunction that the defendant be required to account to plaintiffs for any profits he may have
made by reason of such infringement, and for a temporary injunction restraining him in the manufacture of other
machines of the same kind of its exhibition, and that upon the final hearing, the injunction be made permanent.
The defendant demurred to the complaint upon the ground that the facts alleged therein do not constitute a cause of
action, that it is ambiguous and vague, and that it was error to make William Henry Gohn plaintiff.
After the demurrer was overruled, the defendant filed an answer in which he denied all of the material allegations of
the complaint, except those which are hereinafter admitted, and as a special defense alleges:
First. That the defendant has never had at any time nor does he have any knowledge of any suppose
invention of the plaintiffs of whatever kind of hemp-stripping machine, whether patented or not, which has
circulated or not in the Philippine Islands for the sale thereof or its private exploitation.
Second. That not having had any knowledge of any kind of hemp-stripping machine supposed to have been
invented by the plaintiffs, it never occurred to the defendant to imitate the unknown invention of the plaintiffs.
Third. That the hemp-stripping machine of the plaintiffs, known as "La Constancia," patent of which is duly
registered, has its characteristics and original invention belonging to the defendant which consist of two
pinions with horizontal grooves which form the tool for extracting the fibers between a straight knife upon
another which is cylindrical and provided with teeth and on the center of said two pinions there is a flying
wheel its transmission belt connecting it with the motor.
As a counterclaim, the defendant alleges:
First. That he reproduces in this paragraph each and every allegation contained in the preceding special
defense, as though the same were literally copied here.
Second. That by the filing of the complaint of the plaintiffs and the issuance, as a consequence thereof, of a
writ of injunction in this case, unduly obtained by the said plaintiffs through false and fraudulent
writ of injunction in this case, unduly obtained by the said plaintiffs through false and fraudulent
representations, the defendant has suffered damages in the sum of five thousand pesos (P5,000), Philippine
currency.
Wherefore, the defendant prays this court that he be absolved from the herein complaint, and that the
plaintiffs be ordered jointly and severally to pay the sum of five thousand pesos (P5,000), Philippine currency,
as damages, with legal interest thereon from the filing of this action until fully paid; with the costs of this case,
as well as any other remedy that may be proper in law and equity.
The lower court rendered judgment in legal effect granting the plaintiffs the injunction prayed for in their complaint,
and absolving them from defendant's counterclaim, and judgment against the defendant for costs.
The defendant's motion for a new trial was overruled, and on appeal, he contends that the court erred in holding the
same spindles used by the parties in this case, though different in material and form, have the same utility and
efficiency and that they are the same, and in finding that spindles used by the defendant are an imitation of those of
the plaintiffs, and in finding that the defendant infringed upon plaintiffs' patent, and in not rendering judgment against
the plaintiffs, requiring them to pay defendant P5,000 as damages, and in enjoining the appellant from the
manufacture, use and sale of this hemp-stripping machine.
JOHNS, J.:
It is conceded that on December 16, 1924, the United States Patent Office issued to the plaintiffs the patent in
question No. 1519579, and it was duly registered in the Bureau of Commerce and Industry of the Philippine Islands
on March 17, 1925. After such registration the patent laws, as they exist in the United States for such patent, are
then applied to and are in force and effect in the Philippine Islands. (Vargas vs. F. M. Yaptico & Co., 40 Phil., 195.) In
the instant case, the original patent is in evidence, and that decision further holds that:
The burden of proof to substantiate a charge of infringement is with the plaintiff. Where, however, the plaintiff
introduces the patent in evidence, if it is in due form, it affords a prima facie presumption of its correctness
and validity. The decision of the Commissioner of Patents in granting the patent is always presumed to be
correct. The burden the shifts to the defendant to overcome by competent evidence this legal presumption.
That is to say, the patent, which in the instant case is in due form, having been introduced in evidence,
"affords a prima facie presumption of its correctness and validity." Hence, this is not a case of a conflict
between two different patents. In the recent of Temco Electric Motor Co. vs. Apco Mfg. Co., decided by the
Supreme Court of the United States on January 3, 1928, Advance Sheet No. 5, p. 192, the syllabus says:
An improper cannot appropriate the basic patent of another, and if he does so without license is an infringer,
and may be used as such.
And on page 195 of the opinion, it is said:
It is well established that an improver cannot appropriate the basic patent of another and that the improver
without a license is an infringer and may be sued as such.
Citing a number of Federal decisions.
The plans and specifications upon which the patent was issued recite:
Our invention relates to hemp stripping machines and it consists in the combinations, constructions and
arrangements herein described and claimed.
An object of our invention is to provide a machine affording facilities whereby the operation of stripping hemp
leaves may be accomplished mechanically, thereby obviating the strain incident to the performance of hemp
stripping operations manually.
And on page 3 of the application for patent, it is said:
Obviously, our invention is susceptible of embodiment in forms other than the illustrated herein and we
therefore consider as our own all modifications of the form of device herein disclosed which fairly fall within
the spirit and scope of our invention as claimed.
We claim:
1. In a hemp stripping machine, a stripping head having a supporting portion on which the hemp leaves may
rest and having also an upright bracket portion, a lever of angular formation pivotally attached substantially at
rest and having also an upright bracket portion, a lever of angular formation pivotally attached substantially at
the juncture of the arms thereof of the bracket portion of the stripping head, whereby one arm of the lever
overlies the supporting portion of the stripping head, a blade carried by said one arm of the lever for
cooperating with said supporting, means connected with the other arm of the lever and actuating the latter to
continously urge the blade toward said supporting portion of the stripping head, and a rotatable spindle
positioned adjacent to said stripping head, said spindle being adapted to be engaged by hemp leaves
extending across said supporting portion of the stripping head underneath said blade and being operable to
draw said hemp leaves in the direction of their length between said supporting portion of the stripping head
and said blade.
2. In a hemp stripping machine, a stripping head having a horizontal table portion, a rest supported upon said
table portion, a stripping knife supported upon the table for movement into and out of position to cooperate
with the rest to strip hemp leaves drawn between the knife and the rest, and power driven means adapted to
be engaged with said hemp leaves and to pull the latter between the knife and rest, said power driven means
including a rotating spindle, said spindle being free at one end and tapering regularly toward its free end.
3. In a hemp stripping machine, a stripping head having a horizontal table portion and an upright bracket
portion a rest holder adjustably on the table portion, a rest resiliently supported by the holder, a knife carrying
lever of angular formation and being pivotally attached substantially at the juncture of the arms thereof to the
bracket portion of the stripping head, whereby one arm of the lever overlies the rest, a blade adjustably
supported on said one arm, for cooperating with said rest and gravity means connected with the other arm of
the lever and actuating the latter to continously urge the blade toward the rest.
The spindle upon which the patent was obtained, together with the spindle upon which the defendant relies are
exhibits in the record and were before the court at the time this case was argued. The spindle of the plaintiffs was
made of wood, conical in shape and with a smooth surface. That of the defendant was somewhat similar in shape,
but was made of metal with rough surface, and the defendant claims that his spindle was more effective and would
do better work than that of the plaintiffs. Be that as it may, the plaintiffs have a patent for their machine, and the
defendant does not have a patent, and the basic principle of plaintiffs' patent is the spindle upon which they rely,
together with its specified manner and mode of operation, and in the final analysis, it must be conceded that the
basic principle of the spindle upon which the defendant relies is founded upon the basic principle of the spindle for
which the plaintiffs have a patent. Assuming, without deciding, that the defendant's spindle is an improvement upon
and is a better spindle than that of the plaintiffs, yet, under the authority above cited, the defendant had no legal
right to appropriate the basic principle upon which the plaintiffs obtained their patent. The plaintiffs having obtained
their patent, which was duly registered in the Philippines Islands, the defendant cannot infringe upon its basic
principle.
The defendant contends that the basic principle of the spindle was a very old one in mechanics, and that there was
nothing new or novel in the application of it by the plaintiffs. Be that as it may, the plaintiffs applied for and obtained
their patent with its specifications which are attached to, and made part of, the patent, and the proof is conclusive
that the defendant is infringing upon the basic principle of the spindle as it is defined and specified in plaintiffs'
patent.
The judgment of the lower court is affirmed, with costs. So ordered.
Johnson, Malcolm, Villamor, Ostrand, Romualdez and Villa-Real, JJ., concur.
The Lawphil Project - Arellano Law Foundation
Frank vs. Benito

Emergency Recitation:
FRANK and GOHN had a US patent over a hemp-stripping machine (with a distinct feature of a
wooden spindle) which they also had duly registered in the Philippines.
They claim that BENITO infringed their patent when he manufactured and sold substantially the
same machine (with a similar spindle but made of metal) with essentially the same utility.
BENITO claims that he never knew of the patent, never intended to imitate it, and his spindle was
more efficient.
ISSUE: W/N the patent was infringed ! YES
FRANK and GOHNs patent is the spindle upon which they rely, together with its specified
manner and mode of operation, and in the final analysis, it must be conceded that the basic
principle of the spindle upon which the BENITO relies is founded upon the basic principle of the
spindle for which FRANK and GOHN have a patent.
BENITO contends that the basic principle of the spindle was a very old one in mechanics, and
that there was nothing new or novel in the application of it by the plaintiffs. Be that as it may, the
plaintiffs applied for and obtained their patent with its specifications which are attached to, and
made part of, the patent, and the proof is conclusive that the defendant is infringing upon the
basic principle of the spindle as it is defined and specified in plaintiffs' patent.

FACTS:
Patrick Henry FRANK and William Henry GOHN were owners of a patent covering hemp-
stripping machine No. 1519579 issued to them by the United States Patent Office of December
16, 1924, and duly registered in the Bureau of Commerce and Industry of the Philippine Islands
under the provisions of Act No. 2235
The important feature of the machine "is a spindle upon which the hemp to be stripped is wound
in the process of stripping."
Specifications of the patent:
o 1. In a hemp stripping machine, a stripping head having a supporting portion on which
the hemp leaves may rest and having also an upright bracket portion, a lever of angular
formation pivotally attached substantially at the juncture of the arms thereof of the
bracket portion of the stripping head, whereby one arm of the lever overlies the
supporting portion of the stripping head, a blade carried by said one arm of the lever for
cooperating with said supporting, means connected with the other arm of the lever and
actuating the latter to continously urge the blade toward said supporting portion of the
stripping head, and a rotatable spindle positioned adjacent to said stripping head, said
spindle being adapted to be engaged by hemp leaves extending across said supporting
portion of the stripping head underneath said blade and being operable to draw said hemp
leaves in the direction of their length between said supporting portion of the stripping
head and said blade.
o 2. In a hemp stripping machine, a stripping head having a horizontal table portion, a rest
supported upon said table portion, a stripping knife supported upon the table for
movement into and out of position to cooperate with the rest to strip hemp leaves drawn
between the knife and the rest, and power driven means adapted to be engaged with said
hemp leaves and to pull the latter between the knife and rest, said power driven means
including a rotating spindle, said spindle being free at one end and tapering regularly
toward its free end.
o 3. In a hemp stripping machine, a stripping head having a horizontal table portion and an
upright bracket portion a rest holder adjustably on the table portion, a rest resiliently
supported by the holder, a knife carrying lever of angular formation and being pivotally
attached substantially at the juncture of the arms thereof to the bracket portion of the
stripping head, whereby one arm of the lever overlies the rest, a blade adjustably
supported on said one arm, for cooperating with said rest and gravity means connected
with the other arm of the lever and actuating the latter to continuously urge the blade
toward the rest.
Essentially, the patent claim is over a spindle made of wood, conical in shape and with a smooth
surface.
Defendant Constancio BENITO, on the other hand, had a spindle somewhat similar in shape, but
was made of metal with rough surface. BENITO claims his spindle was more effective and would
do better work than that of the plaintiffs.
BENITO manufactured a hemp-stripping machine in which, without authority from the plaintiffs,
he has embodied and used such spindles and their method of application and use, and is
exhibiting his machine to the public for the purpose of inducing its purchase.
Plaintiff contend that the BENITOs machine is an infringement upon the patent granted the
plaintiffs, and plaintiffs pray for an injunction that the defendant be required to account to
plaintiffs for any profits he may have made by reason of such infringement, and for a temporary
injunction restraining him in the manufacture of other machines of the same kind of its exhibition,
and that upon the final hearing, the injunction be made permanent.
BENITO demurred to the complaint upon the ground that the facts alleged therein do not
constitute a cause of action, that it is ambiguous and vague, and that it was error to make William
Henry Gohn plaintiff
Demurrer was overruled and BENITO filed an answer stating:
o He never had knowledge of any supposed invention of the plaintiffs of whatever kind of
hemp-stripping machine
o He never intended to imitate the unknown invention of the plaintiffs
o That the hemp-stripping machine of the plaintiffs, known as "La Constancia," patent of
which is duly registered, has its characteristics and original invention belonging to the
defendant which consist of two pinions with horizontal grooves which form the tool for
extracting the fibers between a straight knife upon another which is cylindrical and
provided with teeth and on the center of said two pinions there is a flying wheel its
transmission belt connecting it with the motor.
The lower court rendered judgment in legal effect granting the plaintiffs the injunction prayed for
in their complaint, and absolving them from defendant's counterclaim, and judgment against the
defendant for costs.
BENITO appeals and contends that the court erred in holding the same spindles used by the
parties in this case, though different in material and form, have the same utility and efficiency and
that they are the same, and in finding that spindles used by the defendant are an imitation of those
of the plaintiffs, and in finding that the defendant infringed upon plaintiffs' patent, and in not
rendering judgment against the plaintiffs, requiring them to pay defendant P5,000 as damages,
and in enjoining the appellant from the manufacture, use and sale of this hemp-stripping machine.

ISSUE: W/N the Plaintiffs patent was infringed ! YES

HELD: The judgment of the lower court is affirmed, with costs. So ordered.

RATIO:

Rule of Evidence: The burden of proof to substantiate a charge of infringement is with the plaintiff.
Where, however, the plaintiff introduces the patent in evidence, if it is in due form, it affords a prima
facie presumption of its correctness and validity. The decision of the Commissioner of Patents in granting
the patent is always presumed to be correct. The burden the shifts to the defendant to overcome by
competent evidence this legal presumption.

Be that as it may, the plaintiffs have a patent for their machine, and the defendant does not have a patent,
and the basic principle of plaintiffs' patent is the spindle upon which they rely, together with its specified
manner and mode of operation, and in the final analysis, it must be conceded that the basic principle of
the spindle upon which the defendant relies is founded upon the basic principle of the spindle for which
the plaintiffs have a patent.

Assuming, without deciding, that the defendant's spindle is an improvement upon and is a better spindle
than that of the plaintiffs, yet, under the authority above cited, the defendant had no legal right to
appropriate the basic principle upon which the plaintiffs obtained their patent. The plaintiffs having
obtained their patent, which was duly registered in the Philippines Islands, the defendant cannot infringe
upon its basic principle.
The defendant contends that the basic principle of the spindle was a very old one in mechanics, and that
there was nothing new or novel in the application of it by the plaintiffs. Be that as it may, the plaintiffs
applied for and obtained their patent with its specifications which are attached to, and made part of, the
patent, and the proof is conclusive that the defendant is infringing upon the basic principle of the spindle
as it is defined and specified in plaintiffs' patent.




PATENTS DIGESTS ALS2014B ATTY. BARANDA

ALS2014B Page 32 of 99
Frank v. Kosuyama (1933)
Facts:
The case involves a patent on improvement in hemp stripping machines, issued by the US PATENT OFFICE,
but registered in the BUREAU OF COMMERCE AND INDUSTRY of the Philippines.
Frank and Gohn filed a case against Kosuyama.
They asked for the following:
1. that Kosuyama be ordered to refrain from manufacturing and selling machines similar to their patent
2. render an accounting for all the profits from his machine sales, or, in the alternative, to pay P60 as profit
on each machine sold by him
3. that he pay costs and damages against Frank and Gohn.
In spite of the fact that they filed an amended complaint from which the spindle or conical drum, which was the
only characteristic feature of the machine mentioned in the original complaint, was eliminated, the plaintiffs insisted that
the said part constitutes the essential difference between the machine in question and other machines and that it was the
principal consideration upon which their patent was issued.
The TRIAL COURT analyzed each of the parts of the machines and came up with the conclusion that Frank and
Gohn merely made minor improvements on machines already in use at the time:
It cannot be said that they have invented the spindle inasmuch as this was already known since the year 1909 or
1910.
Neither can it be said that they have invented 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.
Neither can it be said that they invented the flywheel because that part or piece thereof, so essential in every
machine from time immemorial, was already known and actually employed in hemp stripping machines.
Much less can it be said that they invented the pedal to raise the knife in order to allow the hemp to be stripped to
pass under it, on the ground that the use of such contrivance has, likewise, been known since the invention of the
most primitive of hemp stripping machines
Issue:
1. Did Kosuyama infringe on the patent?
Held/Ratio:
1. The SC agrees with the trial court, that, strictly speaking, the hemp stripping machine of the plaintiffs does not
constitute an invention on the ground that it lacks the elements of novelty, originality and precedence. Thus,
Kosuyama cannot be held civilly liable for alleged infringement of the patent as there is no essential part of the
machine manufactured and sold by him, which was unknown to the public in the Province of Davao at the time
the plaintiffs applied for and obtained their patent for improved hemp stripping machines.
OTHER NOTES
Frank and Gohn relied on an earlier case involving their same patent, but against another defendant, in which the
SC ruled in their favor. The SC said that the former case was not applicable because Kosuyama, in this latter case, alleged
different special defenses. Moreover, in the earlier case, the decision relied on the presence of the spindle element of the
machine which was copied by the earlier defendant. However, in this case, it was discovered that the spindle is not even
an integral part of the machine, and that it was even eliminated from the patent application, as shown by evidence
presented during the trial.
PATENTS DIGESTS ALS2014B ATTY. BARANDA

ALS2014B Page 76 of 99
Gsell v. Yap Jue (1909)
Facts:
The plaintiff, Henry Gsell, was able to establish his title to a valid patent covering the manufacture of curved
handles for canes, parasols, and umbrellas. Thus, the court granted a perpetual injunction restraining defendant from
manufacturing canes and umbrellas with a curved handle by means of a lamp or blowpipe fed with mineral oil or
petroleum, since that process was already covered by the patent.
The patent of Gsell is for the industrial product "cane handles for walking sticks and umbrellas, curved by
means of a small lamp or blowpipe, fed by petroleum or mineral fuel."
Process:
After the canes have been cut for cane or umbrella handles, the outsides are thoroughly cleaned. This operation
having been performed, they are then trimmed and the interior cleaned by means of a gimlet of about 15 centimeters in
length operated by a wheel, by means of which the knots inside are broken. There is then introduced to a depth of about
15 centimeters a piece of very clean bamboo, which completely fills the hole made by the gimlet, thereby giving to the
cane the necessary strength to resist the heat of the lamp or blowpipe without breaking or cracking.
Despite the court order, defendant still proceeded to manufacture curved cane handled for walking sticks and
umbrellas by a process identical to that covered by the patent, except that he substituted for a lamp fed with petroleum
or mineral oil, lamp fed with alcohol. So Gsell instituted contempt proceedings against defendant for disobeying the
order of the court. The trial court ruled that the act was not contrary to the precise terms of the prohibition since the
defendant used an alcohol-burning lamp instead of a coal or mineral oil-burning lamp. It was held that defendant was not
guilty of contempt since Gsell failed to prove the facts.
But the defendant still continued to use the patented process with the substitution of the mineral-oil burning lamp
for a lamp fed by alcohol.
Issue:
1. W/N there was infringement of Gsells patent when the defendant substituted alcohol for petroleum or mineral oil
Held/Ratio:
1. YES. Gsell has established the existence of two facts: (1) That the use of the lamp fed with petroleum or mineral
oil was an unessential part of the patented process the use of which by the defendant was prohibited by the said
judgment; and (2) that alcohol is an equivalent and proper substitute, well known as such, for mineral oil or
petroleum in connection with the said process.
It was clearly proven at the trial, that kerosene and alcohol blast lamps are agencies for producing and applying
heat, well known throughout the world long prior to 1906, the date of the issue of the patent; that it is and for
many years has been known that one may for all ordinary purposes be used in the place of the other.
It is true that defendant's blast lamp is fed with alcohol, and its shape varies in unimportant details, for the purpose
of accommodating the principle, by which the flame is secured, to the different physical and chemical
composition of the fuel used therein; but the principle on which it works, its mode of application, and its
general design distinguish it in no essential particular from that used by the plaintiff.
The doctrine of mechanical equivalents was also invoked by Gsell and the Court ruled that it is applicable in
this case. The doctrine may properly be invoked to protect the patentee from colorable invasions of his
patent under the guise of substitution of some part of his invention by some well known mechanical
equivalent.
As quoted by the Court from a U.S. case: the inventor of an ordinary machine is, by his letters patent, protected
against all mere formal alterations and against the substitution of mere mechanical equivalents. Why should not
the inventor of a new combination receive the same protection? If he can not, then will his patent not be worth the
parchment on which it is written.
PATENTS DIGESTS ALS2014B ATTY. BARANDA

ALS2014B Page 77 of 99
No one infringes a patent for a combination who does not employ all of the ingredients of the combination; but if
he employs all the ingredients, or adopts mere formal alterations, or substitutes, for one ingredient another which
was well known at the date of the patent as a proper substitute for the one withdrawn, and which performs
substantially the same function as the one withdrawn, he does infringe.
An alteration in a patented combination which merely substitutes another old ingredient for one of the ingredients
in the patented combination, is an infringement of the patent, if the substitute performs the same function and was
well known at the date of the patent as a proper substitute for the omitted ingredient.
PATENTS DIGESTS ALS2014B ATTY. BARANDA

ALS2014B Page 28 of 99
VII. Requirements for patentability

A. Novelty
Maguan v. CA (1986) (powder puff)
Doctrine:
SEC. 9. Invention not considered new or patentable. An invention shall not be considered new or capable of
being patented:
a. If it was known or used by others in the Philippines before the invention thereof by the inventor named in
an application for patent for the invention; or
b. If it was patented or described in any printed publication in the Philippines or any foreign country more
than one year before the application for a patent therefor; or
c. If it had been in public use or on sale in the Philippines for more than one year before the application for a
patent therefor; or
d. If it is the subject matter of a validly issued patent in the Philippines granted on an application filed before
the filing of the application for patent therefor.
Facts:
Petitioner Rosario Maguan is doing business under Swan Manufacturing and is a patent holder of powder
puff.
3
In a letter, petitioner informed private respondent Luchan (of Susana Luchan Powder Puff Manufacturing) that the
powder puff it was manufacturing and selling, particularly those to the cosmetics industry, resemble were identical or
substantially identical to the powder puff petitioner had patented therefore the production and sale of the same by the
latter constituted infringement. In her defense, respondent stated the following: First, that her powder puff was different;
second, that the petitioners patents were void because the utility models applied for were not new and patentable,
and lastly, that the person to whom the patent was issued was not the true and actual owner nor were her rights derived
from that author. Specifically, respondent further alleged:
a. Years prior to the application for the patents, powder puffs of that kind already existed and publicly sold in the
market both in the Philippines and abroad
b. Applicants claim for the construction or process of manufacturing the utility models were but a complicated
and impractical version of an old simple one which has been well known in the cosmetics industry (as early as
1963) thereby belonging to no one except the general public.
Hence, petitioner filed a complaint for damages with injunction and preliminary injunction. The trial court
granted the writs prayed for. Upon petition for certiorari, the CA issued a writ of preliminary injunction enjoining the
orders of the trial court but subsequently dismissed the case for lack of merit (issue decided was only whether the court
acted with grave abuse of discretion, not on whether the patents had been infringed). However upon reconsideration,
injunction was granted.
Issues:
1. W/N in an action for infringement the court had jurisdiction to determine the invalidity of the patents at issue
which invalidity was still pending in consideration in the Patent Office
2. W/N the court committed grave abuse of discretion in the issuance of the writ of preliminary injunction
3. W/N certiorari was the proper remedy

3. 1. UM-423 (extended and/or renewed under Extension No. UM-109 for a period of 5 years from October 6, 1971)
2. UM-450 (extended and/or renewed under Extension No. UM110 for a period of 5 years from January 26, 1972)
3. UM 1184, for a period of 5years from April 5, 1974.
PATENTS DIGESTS ALS2014B ATTY. BARANDA

ALS2014B Page 29 of 99
Held/Ratio:
1. YES. When a patent is sought to be enforced, the questions of invention, novelty or prior use, are open to
judicial examination. Under the Patent Law, the trial court has jurisdiction to declare 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 (Sec. 42, R.A. 165). Under Sec.
46 of the same law, if the Court shall find the patent or any claim thereof invalid, the Director shall on
certification of the final judgment ... issue an order cancelling the patent or the claims found invalid and shall
publish a notice thereof in the Official Gazette. Upon such certification, it is ministerial on the part of the patent
office to execute the judgment
2. YES. The validity of petitioners patents is in question for want of novelty. Trial court committed grave abuse of
discretion when it failed to determine the validity of the patents before issuance of the writ. For an injunction to
issue, 2 requisites must be satisfied: First, the existence of the right to be protected and second, the violation of
said right.
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 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
After review of 64 exhibits and oral testimonies of 5 witnesses, there is a prima facie showing of a fair
question of invalidity of petitioners patents on the ground of lack of novelty. The 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. 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.
Under American Law from which our Patent Law was derived it is generally held that in patent cases a
preliminary 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 such drastic relief. In cases of
infringement of patent no preliminary injunction will be granted unless the patent is valid and infringed
beyond question and the record conclusively proves the defense is sham.
3. YES. For an injunction to issue, 2 requisites must be satisfied: First, the existence of the right to be protected, and
second, the violation of said right. In this case, the injunctive order is so general that the petitioner may be totally
barred from the sale of any kind of powder puff. Under the circumstances, ordinary appeal is inadequate. In the
past, the Court has recognized that a petition for certiorari may be applied for by the proper petition
notwithstanding the existence of the regular remedy of an appeal when among other reasons, the broader interests
of justice so require or an ordinary appeal is not an adequate remedy.
PATENTS DIGESTS ALS2014B ATTY. BARANDA

ALS2014B Page 78 of 99
Godines v. Court of Appeals (1993)
Doctrine:
according to the doctrine of equivalents, (a)n infringement also occurs when a device appropriates a prior
invention by incorporating its innovative concept and, albeit with some modification and change, performs
substantially the same function in substantially the same way to achieve substantially the same result.
Facts:
Villaruz had a patent. It covers a utility model for a hand tractor or power tiller.
10

The above mentioned patent was acquired by SV-Agro Industries Enterprises, Inc., herein private respondent. On
October 31, 1979, SV-Agro Industries caused the publication of the patent in a newspaper of general circulation.
In accordance with the patent, SV-Argo manufactured and sold the patented power tillers. In 1979, SV-Agro
Industries suffered a decline of more than 50% in sales in its Molave, Zamboanga del Sur branch. Upon investigation, it
discovered that power tillers similar to those patented were being manufactured and sold by Godines (petitioner).
Consequently, SV-Argo notified Godines about the existing patent and demanded that the latter stop selling and
manufacturing similar power tillers. Upon petitioner's failure to comply with the demand, SV-Agro Industries filed before
the RTC a complaint for infringement of patent and unfair competition.
Godines defense was that the hand tractors that he made by him were different.
SV- Argo won in the RTC and CA
Issue:
1. W/N there was infringement?
Held/Ratio:
1. Yes, Tests have been established to determine infringement. These are (a) literal infringement; and (b) the
doctrine of equivalents. In using literal infringement as a test, ". . . resort must be had, in the first instance, to the
words of the claim. If accused matter clearly falls within the claim, infringement is made out and that is the end of
it."
Samples of the Godines floating power tiller have been produced and inspected by the trial court and compared
with that of the turtle power tiller of SV-Argo. In appearance and form, both the floating power tillers of the
defendant and the turtle power tiller of the plaintiff are virtually the same.
11

Also according to the doctrine of equivalents, (a)n infringement also occurs when a device appropriates a prior
invention by incorporating its innovative concept and, albeit with some modification and change, performs
substantially the same function in substantially the same way to achieve substantially the same result. The reason

10. Components: "(1) a vacuumatic house float; (2) a harrow with adjustable operating handle; (3) a pair of paddy wheels; (4) a
protective water covering for the engine main drive; (5) a transmission case; (6) an operating handle; (7) an engine foundation on
the top midportion of the vacuumatic housing float to which the main engine drive is detachedly installed; (8) a frontal frame
extension above the quarter circularly shaped water covering hold (sic) in place the transmission case; (9) a V-belt connection
to the engine main drive with transmission gear through the pulley, and (10) an idler pulley installed on the engine foundation." 2
Who it works: "the engine drives the transmission gear thru the V-belt, a driven pulley and a transmission shaft. The engine drives
the transmission gear by tensioning of the V-belt which is controlled by the idler pulley. The V-belt drives the pulley attached to
the transmission gear which in turn drives the shaft where the paddy wheels are attached. The operator handles the hand tractor
through a handle which is inclined upwardly and supported by a pair of substanding pipes and reinforced by a U-shaped G.I. pipe
at the V-shaped end."
11. Both have the circularly-shaped vacuumatic housing float, a paddy in front, a protective water covering, a transmission box
housing the transmission gears, a handle which is V-shaped and inclined upwardly, attached to the side of the vacuumatic housing
float and supported by the upstanding G.I. pipes and an engine base at the top midportion of the vacuumatic housing float to
which the engine drive may be attached. In operation, the floating power tiller of the defendant operates also in similar manner as
the turtle power tiller of plaintiff.
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for the doctrine of equivalents is that to permit the imitation of a patented invention which does not copy any
literal detail would be to convert the protection of the patent grant into a hollow and useless thing.
In this case, the trial court observed that, between the two power tillers operate on the same fundamental
principles. And it is sufficient to constitute equivalency that the same function can be performed in substantially
the same way or manner, or by the same or substantially the same, principle or mode of operation; but where
these tests are satisfied, mere differences of form or name are immaterial.
Also to establish an infringement, it is not essential to show that the defendant adopted the device or process in
every particular; Proof of an adoption of the substance of the thing will be sufficient. "In one sense," said Justice
Brown, "it may be said that no device can be adjudged an infringement that does not substantially correspond with
the patent. But another construction, which would limit these words to exact mechanism described in the patent,
would be so obviously unjust that no court could be expected to adopt it.
EXTRA INFO: The court refused Godines defense that he only made hand tractors based on the specifications of the
customer (ala contractor), because as observed by the RTC Godines own answer admitted manufacturing the hand
tractors, plus it highly unlikely that Godines built hand tractors based on the customers verbal instruction only, without
written instructions. Also SV-Argos hand tractor were called turtle power tiller while Godines was floating power tiller.
Also the case is really short.
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Del Rosario v. Court of Appeals (1996)
Doctrines:
Any new model of implements or tools of any industrial product even if not possessed of the quality of invention
but which is of practical utility is entitled to a patent for utility model.
Where a party introduces the patent in evidence, if it is in due form, it affords a prima facie presumption of its
correctness and validitythe decision of the Director of Patents in granting the patent is always presumed to be
correct, and the burden then shifts to the other party to overcome this presumption by competent evidence.
A utility model shall not be considered new if before the application for a patent it has been publicly known or
publicly used in this country or has been described in a printed publication or publications circulated within the
country, or if it is substantially similar to any other utility model so known, used or described within the country.
A patentee shall have the exclusive right to make, use and sell the patented machine, article or product for the
purpose of industry or commerce, throughout the territory of the Philippines for the term of the patent, and such
making, using or selling by any person without authorization of the patentee constitutes infringement of his
patent.
In order to infringe a patent, a machine or device must perform the same function, or accomplish the same result
by identical or substantially identical means and the principle or mode of operation must be substantially the
same.
Facts:
On 18 January 1993, Roberto del Rosario (Petitioner), holder of two Letters Patent dated 1983 and 1986 for audio
equipment commonly known as the sing-along system or karaoke, filed a complaint for patent infringement against Janito
Corporation (Respondent). Respondent allegedly manufactured and sold sing-along systems bearing the trademark
miyata or miyata karaoke substantially similar if not identical to the sing-along system covered by the patents.
Petitioner sought the issuance of a writ of preliminary injunction, which the trial court granted. However, the
Court of Appeals reversed, saying there was no infringement of the patents, reasoning that the karaoke system was a
universal product manufactured, advertised, and marketed in most countries of the world long before the Petitioners
patents were issued. Hence, Petitioner went to the SC.
Issue:
1. Is the petitioner entitled to the writ of preliminary injunction?
Held/Ratio:
1. YES. There are only two requisites to be satisfied for an injunction to issue, namely, the existence of a right to be
protected, and that the facts against which the injunction is to be directed are violative of said right.
In this case, Petitioner is shown to be a holder of Letters Patents for utility models. In the issuance of patents, the
Director of Patents determines whether the patent is new and whether the machine or device is the proper subject
of patent. In passing on an application, the Director decides not only questions of law but also questions of fact,
i.e. whether there has been a prior public use or sale of the article sought to be patented. Where the Letters Patent
are introduced in evidence and are in due form, it affords a prima facie presumption of its correctness and validity.
The decision of the Director is presumed correct, and the burden shifts to the respondent to overcome such
presumption.
Under the [then] Patent Law, a utility model shall not be considered new if before the application for a patent, it
has been publicly known or publicly used in this country or has been described in a printed publication or
publications circulated within the country, or if it is substantially similar to any other utility model so known,
used, or described within the country. Respondent failed to present evidence to show that the utility models
covered by Petitioners patents were not new. The witness stated in court that there were a lot of sing-along
systems sold prior to the patents, but his testimony was destroyed on cross examination upon showing that the
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alleged dates when they were supposedly sold publicly were all inaccurate or fabricated, and no other evidence
was presented to back up such claims.
The rights of the Petitioner have been sufficiently established. Petitioner as patentee shall have the exclusive right
to make, use, and sell the patented machine, article, or product for the purpose of industry or commerce,
throughout the territory of the Philippines for the term of the patent, and such making, using, or selling by any
person without authorization of the patentee constitutes patent infringement. Petitioner likewise established that
Respondent was manufacturing a similar sing-along system which infringed Petitioners patented models.
While Respondent tried to show the differences between its miyata equipment and petitioners products,
Respondent merely focused on the differences with the first patent, ignoring the second, which was an
improvement of the first. It was shown that Respondents equipment involved substantially the same modes or
operation and produce substantially the same if not identical results when used. Respondent likewise did not
present a comparison of his own and Petitioners equipment to refute such finding.
Thus, the issuance of a writ of preliminary injunction is justified.