PATENTS: DIGESTS

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 !nowled"e and one of the purposes of the patent
system is to encoura"e dissemination of information
concernin" discoveries and inventions
#A$TS:
An"elita %an&ano filed PP' an action for the
cancellation of (etters Patent for a "as burner re"istered in
the name of respondent %elecia %adolaria who
subse)uently assi"ned the letters patent to New *nited
#oundry and %anufacturin" $orporation +*NITED #'*ND,-.
for brevity/ Petitioner alle"ed that +a/ the utility model
covered by the letters patent. in this case. an (PG "as
burner. was not inventive. new or useful0 +b/ the
specification of the letters patent did not comply with the
re)uirements of Sec 12. ,A No 134. as amended0 +c/
respondent %elecia %adolaria was not the ori"inal. true and
actual inventor nor did she derive her ri"hts from the
ori"inal. true and actual inventor of the utility model
covered by the letters patent0 and. +d/ the letters patent
was secured by means of fraud or misrepresentation
Testifyin" for herself petitioner narrated that her
husband 'n" 5un Tua wor!ed as a helper in the *NITED
#'*ND,- where respondent %elecia %adolaria used to be
affiliated with from 1634 to 16780 that 'n" helped in the
castin" of an (PG burner which was the same utility model
of a burner and that after her husband9s separation from the
shop she or"ani&ed 5esco %etal %anufacturin" +5ES$'
%ETA(. for brevity/ for the castin" of (PG burners one of
which had the confi"uration. form and component parts
similar to those bein" manufactured by *NITED #'*ND,-
Petitioner presented two +:/ other witnesses.
namely. her husband 'n" 5un Tua and #idel #rancisco
Private respondent. on the other hand. presented
only one witness. ,olando %adolaria. who testified. amon"
others. that he was the General Supervisor of the *NITED
#'*ND,-
Director of Patents $esar $ Sandie"o denied the
petition for cancellation and holdin" that the evidence of
petitioner was not able to establish convincin"ly that the
patented utility model of private respondent was
anticipated
Petitioner elevated the decision of the Director of
Patents to the $ourt of Appeals which affirmed the decision
of the Director of Patents ;ence. this petition for review on
certiorari.
ISS*E:
<hether the dismissal is proper where the patent
applied for has no substantial difference between the model
to be patented and those sold by petitioner
;E(D:
The element of novelty is an essential re)uisite of the
patentability of an invention or discovery If a device or
process has been !nown or used by others prior to its
invention or discovery by the applicant. an application for a
patent therefor should be denied0 and if the application has
been "ranted. the court. in a =udicial proceedin" in which
the validity of the patent is drawn in )uestion. will hold it
void and ineffective It has been repeatedly held that an
invention must possess the essential elements of novelty.
ori"inality and precedence. and for the patentee to be
entitled to the protection the invention must be new to the
world
;owever. The validity of the patent issued by the
Philippine Patent 'ffice in favor of private respondent and
the )uestion over the inventiveness. novelty and usefulness
of the improved model of the (PG burner are matters which
are better determined by the Patent 'ffice The technical
staff of the Philippine Patent 'ffice composed of e>perts in
their field has by the issuance of the patent in )uestion
accepted private respondent9s model of "as burner as a
discovery There is a presumption that the 'ffice 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 findin"s of fact of the
Director of Patents. especially when affirmed by the $ourt of
Appeals. are conclusive on this $ourt when supported by
substantial evidence Petitioner has failed to show
compellin" "rounds for a reversal of the findin"s and
conclusions of the Patent 'ffice and the $ourt of Appeals
Petition DIS%ISSED
MAGUAN v CA
146 SCRA 107
#A$TS:
Petitioner is doin" business under the firm name
and style of S<AN %AN*#A$T*,ING? while private
respondent is li!ewise doin" business under the firm name
and style of ?S*SANA (*$;AN P'<DE, P*##
%AN*#A$T*,ING@ And holder
petitioner informed private respondent that the
powder puffs the latter is manufacturin" and sellin" 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
,e"istration $ertification Nos E>tension *%A186. E>tension
*%A118 and *tility %odel No 11B20 petitioner e>plained
such production and sale constitute infrin"ement of said
patents and therefore its immediate discontinuance is
demanded. otherwise it will be compelled to ta!e =udicial
action
Private respondent replied statin" that her
products are different and countered that petitionerCs
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 ri"hts derived from such author
Petitioner filed a complaint for dama"es with
in=unction and preliminary in=unction a"ainst private
respondent with the then $ourt of #irst Instance of ,i&al
The trial court issued an 'rder "rantin" the
preliminary in=unction prayed for by petitioner
$onse)uently. the correspondin" writ was subse)uently
issued
In challen"in" these 'rders private respondent
filed a petition for certiorari with the respondent court but
was denied ;ence this petition
ISS*E:
+1/ <hether or not in an action for infrin"ement the $ourt a
quo had =urisdiction to determine the invalidity of the
patents at issue which invalidity was still pendin"
consideration in the patent office
+:/ <hether or not the $ourt a quo committed "rave abuse
of discretion in the issuance of a writ of preliminary
in=unction
+D/ <hether or not certiorari is the proper remedy
;E(D:
1/ The first issue has been laid to rest in a number of cases
where the $ourt ruled that ?<hen a patent is sou"ht to be
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PATENTS: DIGESTS
enforced. the )uestions of invention. novelty or prior use.
and each of them. are open to =udicial e>amination?
*nder the present Patent (aw. there is even less
reason to doubt that the trial court has =urisdiction to
declare the patents in )uestion invalid A patentee shall
have the e>clusive ri"ht to ma!e. use and sell the patented
article or product and the ma!in". usin". or sellin" by any
person without the authori&ation of the patentee constitutes
infrin"ement of the patent +Sec D7. ,A 134/ Any patentee
whose ri"hts have been infrin"ed upon may brin" an action
before the proper $#I now +,T$/ and to secure an in=unction
for the protection of his ri"hts
:/ The burden of proof to substantiate a char"e of
infrin"ement is with the plaintiff 5ut 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 $ommissioner
+now Director/ of Patent in "rantin" the patent is presumed
to be correct The burden of "oin" forward with the
evidence +burden of evidence/ then shifts to the defendant
to overcome by competent evidence this le"al presumption
The )uestion 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 consistin" of
32 e>hibits and oral testimonies of five witnesses presented
by private respondents before the $ourt of #irst Instance
before the 'rder of preliminary in=unction was issued as well
as those presented by the petitioner. respondent $ourt of
Appeals was satisfied that there is a prima facie showin" of
a fair )uestion of invalidity of petitionerCs patents on the
"round of lac! 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 alle"ed lac! of =urisdiction. on
the mista!en notion that such )uestion in within the
e>clusive =urisdiction of the patent office
It has been repeatedly held that an invention must
possess the essential elements of novelty . ori"inality and
precedence and for the patentee to be entitled to
protection. the invention must be new to the world
Accordin"ly. a sin"le instance of public use of the invention
by a patentee for more than two years +now for more than
one year only under Sec 6 of the Patent (aw/ 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 petitionerCs
patents is in )uestion for want of novelty Private
respondent contends that powder puffs Identical in
appearance with that covered by petitionerCs patents
e>isted and were publicly !nown and used as early as 163D
lon" before petitioner was issued the patents in )uestion
+(ist of E>hibits. ,ollo. pp 162A166/ As correctly observed
by respondent $ourt of Appeals. ?since sufficient proofs
have been introduced in evidence showin" a fair )uestion of
the invalidity of the patents issued for such models. it is but
ri"ht that the evidence be loo!ed 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?
+,ollo. pp :B3A:B7/
All these notwithstandin". the trial court
nonetheless issued the writ of preliminary in=unction which
under the circumstances should be denied
#or failure to determine first the validity of the
patents before aforesaid issuance of the writ. the trial court
failed to satisfy the two re)uisites necessary if an in=unction
is to issue. namely: the e>istence of the ri"ht to be
protected and the violation of said ri"ht +5uayan $attle $o.
Inc v Fuintillan. 1:B S$,A :73/
*nder the above established principles. it appears
obvious that the trial court committed a "rave abuse of
discretion which ma!es certiorari the appropriate remedy
As found by respondent $ourt of Appeals. the
in=unctive order of the trial court is of so "eneral a tenor that
petitioner may be totally barred from the sale of any !ind of
powder puff *nder the circumstances. respondent appellate
court is of the view that ordinary appeal is obviously
inade)uate
VARGAS v YAPTICO & CO
40 PHIL 195
#A$TS:
An"el Gar"as. a farmer ac)uainted with local
conditions and alive to the commercial possibilities. too! it
upon himself to produce. with the native plow as the model.
an improved. ad=ustable plow ;e made application for a
*nited States patent to cover his soAcalled invention The
letters patent were issued by the *nited States Patent 'ffice
in favor of Gar"as Acertified copy of the patent was filed in
the Division of Patents. $opyri"hts. and Trademar!s of the
E>ecutive 5ureau. Government of the Philippine Islands The
patent and its re"istry was also published in the newspaper.
El Tiempo
Since 1618. Gar"as has en"a"ed in the
manufacture of these plows in the city of Iloilo. Philippine
Islands 'n the plows there was first stamped the words
?Patent Applied #or.? later after the patent had been
"ranted. chan"ed to ?Patented %ar 1:. 161:? Ninety per
cent of the plows in use in the Gisayas +Iloilo and vicinity/
are said to be Gar"as plows
Durin" this same period. the firm of # % -aptico H
$o +(td/. was en"a"ed in the foundry business in the $ity
of Iloilo It openly held itself out as a manufacturer of plow
parts It has in fact produced points. shares. shoes. and heel
pieces in a considerable amount adapted to replace wornA
out parts of the Gar"as plow
Such was the e>istin" situation when. in the early
part of 161B. the owner of the patent. and thus the proper
party to institute =udicial proceedin"s. be"an action in the
$ourt of #irst Instance of Iloilo to en=oin the alle"ed
infrin"ement of *S Patent No 18:8:D: by the defendant #
% -aptico H $o +(td/. and to recover the dama"es suffered
by reason of this infrin"ement The court issued the
preliminary in=unction as prayed for The defendant. in
addition to a "eneral denial. alle"ed. as special defenses.
that the patent lac!ed novelty or invention. that there was
no priority of ideas or device in the principle and
construction of the plow. and that the plow. whose
manufacture it was sou"ht to have en=oined by the plaintiff.
had already been in public use for more than two years
before the application of the plaintiff for his patent The
parties subse)uently entered into a stipulation that the
court should first resolve the )uestion of whether or not
there had been an infraction of the patent. reservin" the
resultant )uestion of dama"es for later decision After the
ta!in" of evidence. includin" the presentation of e>hibits.
the trial =ud"e. the ;onorable Antonio Gillareal. in a very
e>haustive and learned decision. rendered =ud"ment in
favor of the defendant and a"ainst the plaintiff. declarin"
null and without effect the patent in )uestion and dismissin"
the suit with costs a"ainst the plaintiff The preliminary
in=unction theretofore issued was dissolved
#rom this =ud"ment the plaintiff has appealed
ISS*E:
+1/ The =ud"ment of the trial court in findin" the patent
"ranted plaintiff void for lac! of novelty and invention
should be affirmed0
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PATENTS: DIGESTS
+:/ The patent "ranted plaintiff is void from the public use of
his plow for over two years prior to his application for a
patent. and
+D/ If the patent is valid. there has been no contributory
infrin"ement by defendant
;E(D:
+1/ <hen a patent is sou"ht to be enforced. ?the )uestion of
invention. novelty. or prior use. and each of them. are open
to =udicial e>amination? The burden of proof to substantiate
a char"e of infrin"ement is with the plaintiff <here.
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 $ommissioner
of Patents in "rantin" the patent is always presumed to be
correct The burden then shifts to the defendant to
overcome by competent evidence this le"al presumption
<ith all due respect. therefore. for the critical and e>pert
e>amination of the invention by the *nited States Patent
'ffice. the )uestion of the validity of the patent is one for
=udicial determination. and since a patent has been
submitted. the e>act )uestion is whether the defendant has
assumed the burden of proof as to anyone of his defenses
As herein before stated. the defendant relies on
three special defenses 'ne such defense. on which the
=ud"ment of the lower court is principally "rounded. and to
which appellant devotes the ma=or portion of his vi"orous
ar"ument. concerns the element of novelty. invention. or
discovery. that "ives e>istence to the ri"ht to a patent 'n
this point the trial court reached the conclusion that ?the
patented plow of the plaintiff. E>hibit D. is not different from
the native plow. E>hibit :. e>cept in the material. in the
form. in the wei"ht and the "rade of the result. the said
differences "ivin" it neither a new function nor a new result
distinct from the function and the result obtained from the
native plow0 conse)uently. its production does not
presuppose the e>ercise of the inventive faculty but merely
of mechanical s!ill. which does not "ive a ri"ht to a patent
of an invention under the provisions of the Patent (aw? In
thus findin". the court may have been ri"ht. since the
Gar"as plow does not appear to be such a ?combination? as
contains a novel assembla"e of parts e>hibitin" invention
A second line of defense relates to the fact that
defendant has never made a complete Gar"as plow. but
only points. shares. shoes. and heel pieces. to serve as
repairs DefendantCs contention is. that in common with
other foundries. he has for years cast lar"e numbers of plow
points and shares suitable for use either on the native
wooden plow. or on the Gar"as plow A difference has lon"
been reco"ni&ed between repairin" and reconstructin" a
machine If. for instance. partial in=uries. whether they occur
from accident or from wear and tear. to a machine for
a"ricultural purposes. are made this is only reAfittin" the
machine for use. and thus permissible Even under the more
ri"orous doctrine of (eeds H $atlin $o vs Gictor Tal!in"
%achine $o +I1686J. :1D *S. D:4/. it may be possible that
all the defendant has done is to manufacture and sell
isolated parts to be used to replace wornAout parts
The third defense is. that under the provisions of
the statute. an inventorCs creation must not have been in
public use or on sale in the *nited States +and the Philippine
Islands/ for more than two years prior to his application
<ithout. therefore. committin" ourselves as to the first two
defenses. we propose to base our decision on the one =ust
su""ested as more easily disposin" of the case +See :8 ,
$ (. 1128A112:/ <e do so with full consciousness of the
doubt which arose in the mind of the trial court. but with the
belief that since it has been shown that the invention was
used in public at Iloilo by others than Gar"as. the inventor.
more than two years before the application for the patent.
the patent is invalid
Althou"h we have spent some time in arrivin" at
this point. yet havin" reached it. the )uestion in the case is
sin"le and can be brou"ht to a narrow compass *nder the
En"lish Statute of %onopolies +:1 Kac $h. D/. and under the
*nited States Patent Act of #ebruary :1. 176D. later
amended to be as herein )uoted. it was always the rule. as
stated by (ord $o!e. Kustice Story and other authorities. that
to entitle a man to a patent. the invention must be new to
the world As said by the *nited States Supreme $ourt. ?it
has been repeatedly held by this court that a single instance
of public use of the invention by a patentee for more than
two years before the date of his application for his patent
will be fatal to the validity of the patent when issued?
'n the facts. we thin! the testimony shows such a
public use of the Gar"as plow as to render the patent invalid
Nicolas ,oces. a farmer. testified that he had bou"ht twenty
Gar"as plows. of which E>hibit 4 was one. in December.
16870 and E>hibit 4. the court found. was a plow completely
identical with that for which the plaintiff had received a
patent The minor e>ception. and this in itself corroborative
of ,ocesC testimony. is that the handle of plow E>hibit 4 is
mar!ed with the letters ?A G? and not with the words ?Patent
Applied #or? or ?Patented %ar1:. 161:? Salvador (i&arra"a.
a cler! in a business house. testified that he had received
plows similar to E>hibits D. 4. and 2. for sale on commission
on %ay. 168B. from 5onifacio Araneta. partner of Gar"as in
the plow business Lo Pao Lo. a blac!smith. testified that he
had made fifty plow frames in 1684 for Gar"as and Araneta.
of which E>hibit 2 is one0 E>hibit 2. the court found. is a
plow identical with that patented by Gar"as. but without
share and mouldAboard Alfred 5erwin. an employee in the
office of Attorney Kohn 5ordman. testified that on September
:1. 168B. he had !nowled"e of a transaction wherein Gar"as
and Araneta desired to obtain money to invest in a plow
factory Geor"e ,amon Saul. a mechanic of the ?Taller
Gisayas? of Strachan and %ac%urray. testified that he had
made Gar"as plow points and shares of the present form
upon order of Araneta and Gar"as in 1683 and 1687 <illiam
%ac%urray. proprietor of the ?Taller Gisayas.? corroborated
the evidence of the witness Saul by the e>hibition of the
account a"ainst Gar"as and Araneta wherein. under date of
December 1D. 1683. appears the item ?1: new soft steel
plow shares for"ed and bored for rivets as per sample?
A"ainst all this. was the testimony of the plaintiff An"el
Gar"as who denied that Saul could have been seen the
Gar"as plow in 1687 and 1687. who denied that ,oces
purchased the Gar"as plow in 1687. who denied that
(i&arra"a could have acted as an a"ent to sell two plows in
November. 168B. who denied any remembrance of the loan
mentioned by 5erwin as havin" been ne"otiated in
September. 168B. who denied that Lo Pao Lo made fifty
plows one of which is E>hibit 2. for Araneta and Gar"as in
1684 Plaintiff introduced his boo!s to substantiate his oral
testimony It is hardly believable that five or si> witnesses
for the defense would deliberately per=ure themselves under
oath 'ne mi"ht. but that all to"ether. of different
nationalities. would enter into such a conspiracy. is to
suppose the improbable
Tested by the principles which "o to ma!e the law.
we thin! a preponderance of the evidence is to the effect
that for more than two years before the application for the
ori"inal letters patent. or before Kuly ::. 168B. there was. by
the consent and allowance of Gar"as. a public use of the
invention covered by them
To conclude. we are not certain but that appellee
has proved every one of his defenses <e are certain that
he has at least demonstrated the public use of the Gar"as
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PATENTS: DIGESTS
plow over two years prior to the application for a patent
Such bein" the case. althou"h on a different "round. we
must sustain the =ud"ment of the lower court. without
pre=udice to the determination of the dama"es resultin"
from the "rantin" of the in=unction. with the costs of this
instance a"ainst the appellant So ordered
FRANK v KOSUYAMA
59 PHIL 206
#A$TS:
Patent on improvement in hemp strippin"
machines. issued by the *nited States Patent 'ffice and
re"istered in the 5ureau of $ommerce and Industry of the
Philippine. was the ori"in of this action brou"ht by the
plaintiffs herein who prayed that the =ud"ment be rendered
a"ainst the defendant. orderin" him thereby to refrain
immediately from the manufacture and sale of machines
similar to the one covered by the patent: to render an
accountin" of the profits reali&ed from the manufacture and
sale of the machines in )uestion0 that in case of refusal or
failure to render such accountin". the defendants be
ordered to pay the plaintiffs the sum of P38 as profit on
each machine manufactured or sold by him0 that upon
approval of the re)uired bond. said defendant be restrained
from continuin" the manufacture and sale of the same !ind
of machines0 that after the trial the preliminary in=unction
issued therein be declared permanent and. lastly. that the
said defendant be sentenced to pay the costs and whatever
dama"es the plaintiffs mi"ht be able to prove therein The
action therefore was based upon alle"ed infrin"ement by
the defendant of the ri"hts and privile"es ac)uired by the
plaintiffs over the aforesaid patent throu"h the manufacture
and sale by the former of machines similar to that covered
by the aforesaid patent
The plaintiffs appealed from the =ud"ment rendered
by the trial court dismissin" their complaint. with cost. as
well as the defendantCs counterclaim of P18.888 The
defendant did not appeal
In their amended complaint. the plaintiff alle"ed
that their hemp strippin" machines. for which they obtained
a patent. have the followin" characteristics: ?A strippin"
head. a hori&ontal table. a strippin" !nife supported upon
such table. a tapperin" spindle. a rest holder ad=ustably
secured on the table portion. a lever and means of
compellin" the !nife to close upon the table. a pallet or rest
in the bottom of the table. a resilient cushion under such
palletor rest? 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 ori"inal complaint. was eliminated. the
plaintiffs insisted that the said part constitutes the essential
difference between the machine in )uestion and other
machines and that it was the principal consideration upon
which their patent was issued The said plaintiffs sustained
their contention on this point even in their printed brief and
memorandum filed in this appeal
Durin" the trial. both parties presented voluminous
evidence from which the trial court concluded that in
constructin" their machine the plaintiffs did nothin" but
improve. to a certain de"ree. those that were already in
vo"ue and in actual us in hemp producin" provinces It
cannot be said that they have invented the ?spindle?
inasmuch as this was already !nown since the year 1686 or
1618 Neither it can be said that they have invented the
strippin" !nife and the contrivance which controls the
movement and pressure thereof on the "round that
strippin" !nives to"ether with their control sets were
already in actual use in the different strippin" machines
lon" before their machine appeared
ISS*E:
<hether there is an infrin"ement on the patents
;E(D:
The trial court did not decree the annulment of the
plaintiffsC patent and the herein defendantAappellee insists
that the patent in )uestion should be declared null and void
<e are of the opinion that it would be improper and
untimely to render a similar =ud"ment. in view of the nature
of the action brou"ht by the plaintiffs and in the absence of
a crossAcomplaint to that effect #or the purposes of this
appeal. suffice it to hold that the defendant is not civilly
liable for alle"ed infrin"ement of the patent in )uestion
In the li"ht of sound lo"ic. the plaintiffs cannot
insist that the ?spindle? was a patented invention on the
"round that said part of the machine was voluntarily
omitted by them from their application. as evidenced by the
photo"raphic copy thereof +E>hibit 21/ wherein it li!ewise
appears that the patent on Improved ;emp Strippin"
%achines was issued minus the ?spindle? in )uestion <ere
we to stress to this part of the machine. we would be "ivin"
the patent obtained by the plaintiffs a wider ran"e than it
actually has. which is contrary to the principles of
interpretation in matters relatin" to patents
In support of their claim the plaintiffs invo!e the
doctrine laid down by this court in the case of #ran! and
Gohn vs. 5enito +41 Phil. 71:/. wherein it was held that the
therein defendant really infrin"ed upon the patent of the
therein plaintiffs It may be noted that the plaintiffs in the
former and those of the latter case are the same and that
the patent then involved is the very same one upon which
the present action of the plaintiffs is based The aboveAcited
case. however. cannot be invo!ed as a precedent to =ustify a
=ud"ment in favor of the plaintiffsAappellants on the "round
that the facts in one case entirely different from those in the
other In the former case the defendant did not set up the
same special defenses as those alle"ed by the herein
defendant in his answer and the plaintiffs therein confined
themselves to presentin" the patent. or rather a copy
thereof. wherein the ?spindle? was mentioned. and this
court too! for "ranted their claim that it was one of the
essential characteristics thereof which was imitated or
copied by the then defendant Thus it came to pass that the
?spindle? in )uestion was insistently mentioned in the
decision rendered on appeal as the essential part of the
plaintiffsC machine alle"edly imitated by the then defendant
In the case under consideration. it is obvious that the
?spindle? is not an inte"ral part of the machine patented by
the plaintiffs on the "round that it was eliminated from their
patent inasmuch as it was e>pressly e>cluded in their
application. as evidenced by the aforesaid E>hibit 21
<herefore. reiteratin" that the defendant cannot
be held civilly liable for alle"ed infrin"ement of the patent
upon which the present action is based on the "round that
there is no essential part of the machine manufactured and
sold by him. which was un!nown to the public in the
Province of Davao at the time the plaintiffs applied for and
obtained their patent for improved hemp strippin"
machines. the =ud"ment appealed from is hereby affirmed.
with the costs a"ainst the plaintiffsAappellants So ordered
VARGAS v CHUA
57 PHIL 784
#A$TS:
An"el Gar"as. the plaintiff herein. brou"ht this
action to restrain the appellants and the other defendant
entity. $ham Samco H Sons. their a"ents and mandatories.
from continuin" the manufacture and sale of plows similar
to his plow described in his patent No 1.487.4D8 issued by
the *nited States Patent 'ffice on September :. 16:20 and
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PATENTS: DIGESTS
to compel all of said defendants. after renderin" an
accountin" of the profits obtained by them from the sale of
said plows from September :. 16:2. to pay him dama"es
e)uivalent to double the amount of such profits
The trial court rendered a =ud"ement in favor of
plaintiffs and a"ainst the defendant
It appears from the bill of e>ceptions that $ham
Samco H Sons did not appeal
ISS*E:
<hether the plow. E>hibit #. constitutes a real
invention or an improvement for which a patent may be
obtained. or if. on the contrary. it is substantially the same
plow represented by E>hibit DA$hua the patent for which
was declared null and void in the aforementioned case of
Vargas vs. F. M. Yaptico !o." supra.
;E(D:
The appellee is not entitled to the protection he
see!s for the simple reason that his plow. E>hibit #. does not
constitute an invention in the le"al sense. and because.
accordin" to the evidence. the same type of plows had been
manufactured in this country and had been in use in many
parts of the Philippine Archipela"o. especially in the
Province of Iloilo. lon" before he obtained his last patent
In the above mentioned case of Vargas vs. F. M.
Yaptico !o." we said:
<hen a patent is sou"ht to be enforced. ?the
)uestions of invention. novelty. or prior use. and each of
them. are open to =udicial e>amination? The burden of proof
to substantiate a char"e of infrin"ement is with the plaintiff
<here. however. the plaintiff introduces the patent in
evidence. if it is the due form. it affords a prima facie
presumption of its correctness and validity The decision of
the $ommissioner of Patents in "rantin" the patent is
always presumed to be correct The burden then shifts to
the defendant to overcome by competent evidence this
le"al presumption <ith all due respects. therefore. for the
critical and e>pert e>amination of the invention by the
*nited States Patent 'ffice. the )uestion of the validity of
the patent is one for =udicial determination. and since a
patent has been submitted. the e>act )uestion is whether
the defendant has assumed the burden of proof as to
anyone of his defenses
<e repeat that in view of the evidence presented.
and particularly of the e>amination we have made of the
plows. we cannot escape the conclusion that the plow upon
which the appelleeCs contention is based. does not
constitute an invention and. conse)uently. the privile"e
invo!ed by him is untenable and the patent ac)uired by him
should be declared ineffective
The =ud"ment appealed from is hereby reversed
and the appellants are absolved from the complaint. with
costs of this instance a"ainst the appellee So ordered
AGUAS v ! L!ON
111 SCRA 2"8
#A$TS:
$onrado G de (eon filed in the $ourt of #irst
Instance of ,i&al at Fue&on $ity a complaint for
infrin"ement of patent a"ainst Domiciano A A"uas and # ;
A)uino and Sons alle"in" that bein" the ori"inal first and
sole inventor of certain new and useful improvements in the
process of ma!in" mosaic preAcast tiles. he lawfully filed and
prosecuted an application for Philippine patent. and havin"
complied in all respects with the statute and the rules of the
Philippine Patent 'ffice. Patent No 34B was lawfully "ranted
and issued to him0 that said invention was new. useful. not
!nown or used by others in this country before his invention
thereof
That the defendant Domiciano A A"uas infrin"ed
(etters of Patent No 34B by ma!in". usin" and sellin" tiles
embodyin" said patent invention and that defendant # ;
A)uino H Sons is "uilty of infrin"ement by ma!in" and
furnishin" to the defendant Domiciano A A"uas the
en"ravin"s. castin"s and devices desi"ned and intended of
tiles embodyin" plaintiff0s patented invention0 that he has
"iven direct and personal notice to the defendants of their
said acts of infrin"ement and re)uested them to desist. but
nevertheless. defendants have refused and ne"lected to
desist and have disre"arded such re)uest. and continue to
so infrin"e causin" "reat and irreparable dama"e to
plaintiff0 that if the aforesaid infrin"ement is permitted to
continue. further losses and dama"es and irreparable in=ury
will be sustained by the plaintiff0 that there is an ur"ent
need for the immediate issuance of a preliminary in=unction
The court "ranted the in=unction And li!ewise held
in favor of the plaintiff and a"ainst the defendant
ISS*E:
<hether the process. sub=ect of said patent. is not
an invention or discovery. or an improvement of the old
system of ma!in" tiles
;E(D:
The validily of the patent issued by the Philippines
Patent 'ffice in favor of the private respondent and the
)uestion over the inventiveness. novelty and usefulness of
the improved process therein specified and described are
matters which are better determined by the Philippines
Patent 'ffice The technical staff of the Philippines Patent
'ffice. composed of e>perts in their field. have. by the
issuance of the patent in )uestion. accepted the thinness of
the private respondentCs new tiles as a discovery There is a
presumption that the Philippines Patent 'ffice has correctly
determined the patentability of the improvement by the
private respondent of the process in )uestion
The contention of the petitioner A"uas that the
letters patent of de (eon was actually a patent for the old
and nonApatentable process of ma!in" mosaic preAcast tiles
is devoid of merit De (eon never claimed to have invented
the process of tileAma!in" The $laims and Specifications of
Patent No 34B show that althou"h some of the steps or
parts of the old process of tile ma!in" were described
therein. there were novel and inventive features mentioned
in the process
In view of the fore"oin". this $ourt finds that Patent
No 34B was le"ally issued. the process andMor improvement
bein" patentable
PA,LE DAGIS H $' v D'$T',9S P;A,%A
1:2 S$,A 114
#A$TS:
Par!e Davis H $ompany. petitioner herein. is a
forei"n corporation is the owner of a patent entitled
?Process for the %anufacturin" of Antibiotics? +(etters Patent
No 48/ The patent relates to a chemical compound
represented by a formula commonly called chloramphenicol
The patent contains ten claims. nine of which are process
claims. and the other is a product claim to the chemical
substance chloramphenicol
,espondent DoctorsC Pharmaceuticals. Inc. on the
other hand. is a domestic corporation which applied for a
S'TE('. %S E 4
PATENTS: DIGESTS
petition with the Director of Patents. which was later
amended. prayin" that it be "ranted a compulsory license
under (etters Patent No 48 "ranted to Par!e Davis H
$ompany based on the followin" "rounds: +1/ the patented
invention relates to medicine and is necessary for public
health and safety0 +:/ Par!e Davis H $ompany is unwillin" to
"rant petitioner a voluntary license under said patent by
reason of which the production and manufacture of needed
medicine containin" chloramphenicol has been unduly
restrained to a certain e>tent that it is becomin" a
monopoly0 +D/ the demand for medicine containin"
chloramphenicol is not bein" met to an ade)uate e>tent and
on reasonable prices0 and +2/ the patented invention is not
bein" wor!ed in the Philippines on a commercial scale In its
petition. DoctorsC Pharmaceuticals. Inc prayed that it be
authori&ed to manufacture. use. and sell its own products
containin" chloramphenicol as well as choose its own brand
or trademar!
Par!e Davis H $ompany filed a written opposition
settin" up the followin" affirmative defenses: +1/ a
compulsory license may only be issued to one who will wor!
the patent and respondent does not intend to wor! it itself
but merely to import the patented product0 +:/ respondent
has not re)uested any license to wor! the patented
invention in the Philippines0 +D/ respondent is not competent
to wor! the patented invention0 +2/ to "rant respondent the
re)uested license would be a"ainst public interest and
would only serve its monetary interest0 and +3/ the patented
invention is not necessary for public health and safety
the Director of Patents rendered a decision
"rantin" to respondent the license prayed for ;ence this
petition
ISS*E:
<hether or not the Director of Patents erred =n
orderin" the "rant of compulsory license
;E(D:
Each of the circumstances mentioned in the law as
"rounds stands alone and is independent of the others And
from them we can see that in order that any person may be
"ranted a license under a particular patented invention
relatin" to medicine under Section D2+d/. it is sufficient that
the application be made after the e>piration of three years
from the date of the "rant of the patent and that the
Director should find that a case for "rantin" such license has
been made out Since in the instant case it is admitted by
petitioner that the chemical substance chloramphenicol is a
medicine. while (etters Patent No 48 coverin" said
substance were "ranted to Par!e Davis H $ompany on
#ebruary 6. 1648. and the instant application for license
under said patent was only filed in 1638. verily the period
that had elapsed then is more than three years. and so the
conditions for the "rant of the license had been fulfilled <e
find. therefore. no error in the decision of the Director of
Patents on this aspect of the controversy
S'TE('. %S E 3