FIRST DIVISION

[G.R. No. 113388. September 5, 1997]

ANGELITA MANZANO, petitioner, vs. COURT OF APPEALS, and
MELECIA MADOLARIA, as Assignor to NEW UNITED FOUNDRY
MANUFACTURING CORPORATION, respondents.

FACTS:
The petitioner filed an action for the cancellation of Letters of Patent
covering a gas burner registered in the name of respondent Melecia
Madolaria who subsequently assigned the letter of patent to United Foundry.
Petitioner alleged that the private respondent was not the original, true and
actual inventor nor did she derive her rights from the original, true and
actual inventor of the utility model covered by the letter of patent; further
alleged that the utility model covered by the subject letter of patent had
been known or used by others in the Philippines for than one (1) year before
she filed her application for letter of patent on Dec 1979. For failure to
present substantive proof of her allegations, the lower court and Court of
Appeals denied the action for cancellation. Hence, the present petition.
ISSUE:
Whether or not the respondent court wrongfully denied
cancellation of letter of patent registered under the private respondent.

the

HELD:
No. The issuance of such patent creates a presumption which yields
only to clear and cogent evidence that the patentee was the original and first
inventor. The burden of proving want of novelty is on him who avers it and
the burden is a heavy one which is met only by clear and satisfactory proof
which overcomes every reasonable doubt. Clearly enough, the petitioner
failed to present clear and satisfactory proof to overcome every reasonable
doubt to afford the cancellation of the patent to the private respondent.

Aguas vs. De Leon

111 SCRA 238 (1982)
FACTS:
This is a petition for certiorari to review the decision of the Court of
Appeals.
On April 14, 1962, respondent Conrado de Leon filed in the CFI of
Rizal at Quezon City a complaint for infringement of patent against petitioner
Domiciano Aguas and F.H. Aquino and Sons alleging among others that being
the original first and sole inventor of certain new and useful improvements in
the process of making mosaic pre-cast tiles, and thereafter lawfully acquired
from the Philippine Patent Office, Patent No. 658, the latter infringed the
same by making, using and selling tiles embodying said patent invention. A
writ of Preliminary Injuction was subsequently issued.

Petitioner Aguas, in his answer, denied the allegations and instead

averred inter alia that respondent De Leon is neither the original first nor sole
inventor of the improvements in the process of making mosaic pre-cast tiles,
the same having been used by several tile-making factories both here and
abroad years before the alleged invention by De Leon; hence, it is not
patentable.
The trial court and the Court of Appeals, upon appeal rendered
judgment in favor of respondent de Leon. Thus, this petition.
ISSUE:
Whether or not the alleged invention or discovery of respondent is
patentable.
HELD:
Yes. x x x It should be noted that the private respondent does not
claim to be the discoverer or inventor of the old process of tile-making. He
only claims to have introduced an improvement of said process. In fact,
Letters Patent No. 658 was issued by the Philippine Patent Office to the
private respondent Conrado G. De Leon, to protect his rights as the inventor
of an alleged new and useful improvement in the process of making precast tiles. Indeed, section 7, Republic Act No. 165, as amended provides:
Any invention of a new and useful machine, manufactured product or
substance, process, or an improvement of the foregoing, shall be
patentable.
ROSARIO C. MAGUAN vs. COURT OF APPEALS
G.R. L-45101, November 28, 1986, SECOND DIVISION, PARAS, J.
Petitioner Rosario C. Maguan is doing business under the firm name
and style of SWAN MANUFACTURING" while private respondent Susana
Luchan is likewise doing business under the firm name and style of "SUSANA
LUCHAN POWDER PUFF MANUFACTURING." The petitioner informed private
respondent that the powder puffs the latter is manufacturing and selling to
various enterprises particularly those in the cosmetics industry, resemble
identical or substantially identical powder puffs of which the former is a
patent holder under Registration Certification Nos. Extension UM-109,
Extension UM-110 and Utility Model No. 1184; petitioner explained such
production and sale constitute infringement of said patents and therefore its
immediate discontinuance is demanded, otherwise it will be compelled to
take judicial action. Private respondent replied stating that her products are
different and countered that petitioner's patents are void because the utility
models applied for were not new and patentable and the person to whom the
patents were issued was not the true and actual author nor were her rights
derived from such author.
Maguan filed a complaint for damages with injunction and preliminary
injunction against Luchan with the then Court of First Instance of Rizal. The
trial court issued an Order granting the preliminary injunction prayed for.
Consequently, the corresponding writ was subsequently issued. It having
denied the Motion for Reconsideration, the private respondent filed a petition
for certiorari before the Court of Appeals. The Preliminary injunction issued
by the trial court was affirmed by the CA but it later on dismissed the petition
and set aside the preliminary injunction previously issued by the trial court.

ISSUE:
Whether Maguan has a right to file an action before the CFI for
injunction due to infringement of her patent.
HELD:
When a patent is sought to be enforced, the questions of
invention, novelty or prior use, and each of them, are open to
judicial examination.
Under the present Patent Law, there is even less reason to doubt that
the trial court has jurisdiction to declare the patents in question invalid. A
patentee shall have the exclusive right to make, use and sell the patented
article or product and the making, using, or selling by any person without the
authorization of the patentee constitutes infringement of the patent (Sec. 37,
R.A. 165). Any patentee whose rights have been infringed upon may bring an
action before the proper CFI now (RTC) and to secure an injunction for the
protection of his rights (Sec. 42, R.A. 165).
The burden of proof to substantiate a charge of infringement is with
the plaintiff. But where the plaintiff introduces the patent in evidence, and
the same is in due form, there is created a prima facie presumption of its
correctness and validity. The decision of the Commissioner (now Director) of
Patent in granting the patent is presumed to be correct. The burden of going
forward with the evidence (burden of evidence) then shifts to the defendant
to overcome by competent evidence this legal presumption.
The question then in the instant case is whether or not the evidence
introduced by private respondent herein is sufficient to overcome said
presumption. Respondent Court of Appeals was satisfied that there is a
prima facie showing of a fair question of invalidity of petitioner's patents on
the ground of lack of novelty. As pointed out by said appellate court said
evidence appeared not to have been considered at all by the court a quo for
alleged lack of jurisdiction, on the mistaken notion that such question is
within the exclusive jurisdiction of the patent office. It has been repeatedly
held that an invention must possess the essential elements of novelty,
originality and precedence and for the patentee to be entitled to protection,
the invention must be new to the world. Accordingly, a single instance of
public use of the invention by a patentee for more than two years (now for
more than one year only under Sec. 9 of the Patent Law) before the date of
his application for his patent, will be fatal to, the validity of the patent when
issued.
SEC. 9. Invention not considered new or patentable.
An invention shall not be considered new or
capable of being patented 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 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 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 if it is the subject matter of a validity issued
patent in the Philippines granted on an application

filed before the filing of the application for patent

therefor.
Thus, more specifically, 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.
For failure to determine first the validity of the patents before aforesaid
issuance of the writ, the trial court failed to satisfy the two requisites
necessary if an injunction is to issue, namely: the existence of the right to be
protected and the violation of said right.

GODINEZ V CA
Through this petition for review in certiorari of a decision of the Court of Appeals
affirming the decision of the trial court, petitioner Pascual Godines seeks to reverse
the adverse decision of the Court a quo that he was liable for infringement of patent
and unfair competition. The dispositive portion of the assailed decision is hereby
quoted to wit:
WHEREFORE, with the elimination of the award for attorney's fees, the judgment
appealed from is hereby AFFIRMED, with costs against appellant. 1
The patent involved in this case is Letters Patent No. UM-2236 issued by the
Philippine Patent Office to one Magdalena S. Villaruz on July 15, 1976. It covers a
utility model for a hand tractor or power tiller, the main components of which are
the following: "(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 Vbelt connection to the engine main drive with transmission gear through the pulley,
and (10) an idler pulley installed on the engine foundation." 2 The patented hand
tractor works in the following manner: "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." 3
The above mentioned patent was acquired by SV-Agro Industries Enterprises, Inc.,
herein private respondent, from Magdalena Villaruz, its chairman and president, by
virtue of a Deed of Assignment executed by the latter in its favor. On October 31,
1979, SV-Agro Industries caused the publication of the patent in Bulletin Today, a
newspaper of general circulation.
In accordance with the patent, private respondent manufactured and sold the
patented power tillers with the patent imprinted on them. 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 by private respondent were being manufactured and sold by petitioner

herein. Consequently, private respondent notified Pascual 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 Regional Trial Court a complaint for infringement of patent
and unfair competition.
After trial, the court held Pascual Godines liable for infringement of patent and
unfair competition. The dispositive portion of the decision reads as follows:
WHEREFORE, premises considered, JUDGMENT is hereby rendered in favor of the
plaintiff SV-Agro Industries Enterprises, Inc., and against defendant Pascual Godines:
1. Declaring the writ of preliminary injunction issued by this Court against defendant
as permanent;
2. Ordering defendant Pascual Godines to pay plaintiff the sum of Fifty Thousand
Pesos (P50,000.00) as damages to its business reputation and goodwill, plus the
further sum of Eighty Thousand Pesos (P80,000.00) for unrealized profits during the
period defendant was manufacturing and selling copied or imitation floating power
tiller;
3. Ordering the defendant to pay the plaintiff, the further sum of Eight Thousand
Pesos (P8,000.00) as reimbursement of attorney's fees and other expenses of
litigation; and to pay the costs of the suit.
SO ORDERED. 4
The decision was affirmed by the appellate court.
Thereafter, this petition was filed. Petitioner maintains the defenses which he raised
before the trial and appellate courts, to wit: that he was not engaged in the
manufacture and sale of the power tillers as he made them only upon the special
order of his customers who gave their own specifications; hence, he could not be
liable for infringement of patent and unfair competition; and that those made by
him were different from those being manufactured and sold by private respondent.
We find no merit in his arguments. The question of whether petitioner was
manufacturing and selling power tillers is a question of fact better addressed to the
lower courts. In dismissing the first argument of petitioner herein, the Court of
Appeals quoted the findings of the court, to wit:
It is the contention of defendant that he did not manufacture or make imitations or
copies of plaintiff's turtle power tiller as what he merely did was to fabricate his
floating power tiller upon specifications and designs of those who ordered them.
However, this contention appears untenable in the light of the following
circumstances: 1) he admits in his Answer that he has been manufacturing power
tillers or hand tractors, selling and distributing them long before plaintiff started
selling its turtle power tiller in Zamboanga del Sur and Misamis Occidental, meaning
that defendant is principally a manufacturer of power tillers, not upon specification
and design of buyers, but upon his own specification and design; 2) it would be
unbelievable that defendant would fabricate power tillers similar to the turtle power
tillers of plaintiff upon specifications of buyers without requiring a job order where
the specification and designs of those ordered are specified. No document was (sic)
ever been presented showing such job orders, and it is rather unusual for defendant
to manufacture something without the specification and designs, considering that
he is an engineer by profession and proprietor of the Ozamis Engineering shop. On
the other hand, it is also highly unusual for buyers to order the fabrication of a
power tiller or hand tractor and allow defendant to manufacture them merely based
on their verbal instructions. This is contrary to the usual business and
manufacturing practice. This is not only time consuming, but costly because it
involves a trial and error method, repeat jobs and material wastage. Defendant

judicially admitted two (2) units of the turtle power tiller sold by him to Policarpio
Berondo. 5
Of general acceptance is the rule imbedded in our jurisprudence that ". . . the
jurisdiction of the Supreme Court in cases brought to it from the Court of Appeals in
a petition for certiorari under Rule 45 of the Rules of Court is limited to the review of
errors of law, and that said appellate court's findings of fact are conclusive upon this
Court." 6
The fact that petitioner herein manufactured and sold power tillers without
patentee's authority has been established by the courts despite petitioner's claims
to the contrary.
The question now arises: Did petitioner's product infringe upon the patent of private
respondent?
Tests have been established to determine infringement. These are (a) literal
infringement; and (b) the doctrine of equivalents. 7 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." 8 To determine whether the particular item falls within the literal
meaning of the patent claims, the court must juxtapose the claims of the patent and
the accused product within the overall context of the claims and specifications, to
determine whether there is exact identity of all material elements. 9
The trial court made the following observation:
Samples of the defendant's floating power tiller have been produced and inspected
by the court and compared with that of the turtle power tiller of the plaintiff (see
Exhibits H to H-28). In appearance and form, both the floating power tillers of the
defendant and the turtle power tiller of the plaintiff are virtually the same.
Defendant admitted to the Court that two (2) of the power inspected on March 12,
1984, were manufactured and sold by him (see TSN, March 12, 1984, p. 7). The
three power tillers were placed alongside with each other. At the center was the
turtle power tiller of plaintiff, and on both sides thereof were the floating power
tillers of defendant (Exhibits H to H-2). Witness Rodrigo took photographs of the
same power tillers (front, side, top and back views for purposes of comparison (see
Exhibits H-4 to H-28). Viewed from any perspective or angle, the power tiller of the
defendant is identical and similar to that of the turtle power tiller of plaintiff in form,
configuration, design and appearance. The parts or components thereof are virtually
the same. 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. This was
admitted by the defendant himself in court that they are operating on the same
principles. (TSN, August 19, 1987, p. 13) 10
Moreover, it is also observed that petitioner also called his power tiller as a floating
power tiller. The patent issued by the Patent Office referred to a "farm implement
but more particularly to a turtle hand tractor having a vacuumatic housing float on
which the engine drive is held in place, the operating handle, the harrow housing
with its operating handle and the paddy wheel protective covering." 11 It appears
from the foregoing observation of the trial court that these claims of the patent and
the features of the patented utility model were copied by petitioner. We are
compelled to arrive at no other conclusion but that there was infringement.
Petitioner's argument that his power tillers were different from private respondent's
is that of a drowning man clutching at straws.

Recognizing that the logical fallback position of one in the place of defendant is to
aver that his product is different from the patented one, courts have adopted the
doctrine of equivalents which recognizes that minor modifications in a patented
invention are sufficient to put the item beyond the scope of literal infringement. 12
Thus, according to this doctrine, "(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." 13 The reason
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. Such imitation would leave room for
indeed encourage the unscrupulous copyist to make unimportant and
insubstantial changes and substitutions in the patent which, though adding nothing,
would be enough to take the copied matter outside the claim, and hence outside
the reach of the law. 14
In this case, the trial court observed:
Defendant's witness Eduardo Caete, employed for 11 years as welder of the
Ozamis Engineering, and therefore actually involved in the making of the floating
power tillers of defendant tried to explain the difference between the floating power
tillers made by the defendant. But a careful examination between the two power
tillers will show that they will operate on the same fundamental principles. And,
according to establish jurisprudence, in infringement of patent, similarities or
differences are to be determined, not by the names of things, but in the light of
what elements do, and substantial, rather than technical, identity in the test. More
specifically, it is necessary and 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. . . . 15
It also stated:
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. . . .
The law will protect a patentee against imitation of his patent by other forms and
proportions. If two devices do the same work in substantially the same way, and
accomplish substantially the same result, they are the same, even though they
differ in name, form, or shape. 16
We pronounce petitioner liable for infringement in accordance with Section 37 of
Republic Act No. 165, as amended, providing, inter alia:
Sec. 37. Right of Patentees. A patentee shall have the exclusive right to make,
use and sell the patented machine, article or product, and to use the patented
process for the purpose of industry or commerce, throughout the territory of the
Philippines for the terms of the patent; and such making, using, or selling by any
person without the authorization of the Patentee constitutes infringement of the
patent. (Emphasis ours)
As far as the issue regarding unfair competition is concerned, suffice it to say that
Republic Act No. 166, as amended, provides, inter alia:
Sec. 29. Unfair competition, rights and remedies. . . .
xxx xxx xxx

In particular, and without in any way limiting the scope of unfair competition, the
following shall be deemed guilty of unfair competition:
(a) Any person, who in selling his goods shall give them the general appearance of
goods of another manufacturer or dealer, either as to the goods themselves or in
the wrapping of the packages in which they are contained, or the devices or words
thereon, or in any other feature of their appearance, which would be likely to
influence purchasers that the goods offered are those of a manufacturer or dealer
other than the actual manufacturer or dealer, or who otherwise clothes the goods
with such appearance as shall deceive the public and defraud another of his
legitimate trade. . . .
xxx xxx xxx
Considering the foregoing, we find no reversible error in the decision of the Court of
Appeals affirming with modification the decision of the trial court.
WHEREFORE, premises considered, the decision of the Court of Appeals is hereby
AFFIRMED and this petition DENIED for lack of merit.
Cresser Precision Systems v. CAOnly the patentee may file for infringement. There
can be no infringement of a patent until a patent has been issuedsince whatever
right one has to the invention conferred by the patent arises alone from a grant of
patent.Smith Kline v. CAArticle 5 of the Paris Convention unequivocally and
explicitly respects the right of the member countries to adoptlegislative measures
to provide for grant of compulsory licenses to prevent abuses which might result
from the exerciseof the exclusive rights conferred by the patent.Parke Davis v.
Doctors PharmaceuticalsFact of existence of 2 different substances of medicine of
which the court could not take judicial notice of norcompetent to so find in the
absence of evidence, and the existence of two patents require presentation of
evidence toshow whether the substances are the same or not.Godinez v. CATests to
determine infringement are; 1) Doctrine of Literal Infringement 2) Doctrine of
Equivalents. The reason for thedoctrine of equivalents is that to permit the imitation
of a patented invention which does not copy any literal detailwould be to convert
the protection of the patent grant into hollow and useless thing.Smith Kline
Beckman v. CAThe doctrine of equivalents thus requires satisfaction of the
functions-means-and-result test, the patentee having theburden to show that all
three components of such equivalency test are met.Manzano v. CAThere is a
presumption that the Philippine Patent Office has correctly determined the
patentability of the model andsuch action must not be interfered with, in the
absence of competent evidence to the contrary.
Maguan v. CAAn invention must
possess the essential elements of novelty, originality, and precedence and for the
patentee to beentitled to protection, the invention must be new to the world. A
single instance of public use of the invention by apatentee for more than two
years(now more than 1 year under Sec.9 of Patent Law) before the date of
application forhis patent will be fatal to the validity of the patent when issued.

GREAVES, CHEN WOO CHIN, YOSHIMI IWASAKI, FABIO CARLI,

MORTIMER THOMPSON, MALCOLM JOHN LAW, MICHIBAZU
OCHI, KENJI SHIGEMATSU, ENI SHINOZAKI, ROBERT CABIAKMAN, ARTHUR SPRENGER, REMY SIMOND and HEINRICH
EVBERGGER, petitioners, vs. THE HONORABLE COURT OF
APPEALS (SPECIAL FIFTH DIVISION) and THE BUREAU OF
PATENTS,
TRADEMARKS
AND
TECHNOLOGY
TRANSFER, respondents.
RESOLUTION

PARDO, J.:
Petitioners appeal via certiorari from the decision of the Court of Appeals dismissing
their appeal from the resolution of the Director of Patents that denied with finality their
petition for revival of patent applications.
[1]

On different dates, petitioners applied to the Bureau of Patents, Trademarks and

Technology Transfer for registration of patents. They hired the law firm Siguion Reyna,
Montecillo and Ongsiako to process their patent applications in the Philippines,
respectively identified as follows:

Applicant

Serial No.

(1) Michibazu Ochi, Kenji Shigematsu and

Eni Shinozaki- Issuance of letters patent

23354

[2]

for Hackling Drum Room or Chamber

at the Self-Feeding Equipment for
Threshing of Upper Hackling System
(2) Robert Cabi-Akman, Arthur Sprenger

29630

[3]

and Remy Simond- Issuance of letters

patent for Colour Value Measurement
(3) Heinrich Evbergger- Issuance of letters

29898

[4]

patent for Tool for Moulding the Top Past

of a Plastic Container
(4) Mortimer Thompson- Issuance of

30112

[5]

letters patent for Tamper Evident Closures

and Packages
(5) Yoshimi Iwasaki- Issuance of letters

30548

[6]

patent for Method Generation for Hot Gas

by Incinerators
(6 )John Bernard Watkins, Harry Greaves

30819

[7]

and Chen Woo Chin- Issuance of letters

patent for Preservation Composition
(7) Fabio Carli- Issuance of letters patent

31968

[8]

for Pharmaceutical Compositions

(8) Lothar Schuartz, Friedel Verderberg,

31974

[9]

Rudolf Kuehne, and Dieter Fischer- Issuance

of letters patent for Process for Producing
Copper-Laminated Base Material for Printed
Circuit Boards
(9) Malcolm John Law- Issuance of letters

32050

[10]

patent for Electrodeposition of Chromium and

Chromium Bearing Alloys.

[11]

Petitioners patent applications lacked certain requirements and the Bureau

informed the law firm about it, through correspondences called Office Actions. As
petitioners law firm did not respond to these office actions within the prescribed time,
notices of abandonment were sent on the following dates:

Serial Nos.
(1) 23354

Date of Office Action

March 20, 1987

Date of Abandonment
July 21, 1987

(2) 29630
(3) 29898

June 18, 1986

October 21, 1986

June 11, 1987

June 22, 1987

(4) 30112

June 3, 1987

August 6, 1987

(5) 30548

June 10, 1987

August 18, 1987

(6) 30819

January 28, 1987

July 28, 1987

(7) 31968

January 14, 1987

July 15, 1987

(8) 31974
(9) 32050

July 23, 1987

March 31, 1987

September 24, 1987

June 1, 1987

[12]

On December 7, 1987, two employees of the law firm, George Bangkas and Rafael
Rosas were dismissed from employment. Prior to the dismissal, these employees
worked with the patent group of the law firm and had the duty, among others, of getting
the firms letters and correspondence from the Bureau of Patents.
Immediately after their dismissal, the law firm conducted an inventory of all the
documents entrusted to them. It was then that the firm learned about the notices of
abandonment.
Thereafter, petitioners, through the law firm, filed with the Bureau of Patents
separate petitions for revival of the patent applications on the following dates:

Serial Nos.

Date Petition Filed

(1) 23354

March 3, 1988

(2) 29630

March 3, 1988

(3) 30122

January 15, 1988/February 29, 1988

(4) 30548

January 25, 1988/March 1, 1988

(5) 30819

May 27, 1988/July 15, 1988

(6) 31968

January 21, 1988/March 1, 1988

(7) 31974

March 14, 1988

(8) 32050

March 17, 1988

For Serial No. 29898, the applicant abandoned his application, for which reason no
petition for revival was filed.
[13]

On January 31, 1991, Director Luis M. Duka, Jr. of the Bureau of Patents denied
all the petitions for revival because they were filed out of time. The dispositive portion
specifically provides:

WHEREFORE, in consideration of the foregoing premises, all the petitions

for revival of the above-captioned abandoned applications
bearing Serial Nos. 23354, 29630, 29898, 30112, 30548, 30819, 31968,
31974, and 32050, are hereby denied and no further petitions nor requests for
reconsideration hereof shall be entertained hereafter.
SO ORDERED.

Makati, Metro Manila, Philippines, this 31st day of January 1991.

LUIS M. DUKA, JR.
Director III
On February 14, 1991, petitioners appealed the above resolution of the Bureau of
Patents to the Court of Appeals.
[14]

[15]

On August 13, 1992, the Court of Appeals dismissed the consolidated appeal for
being filed beyond the 15-day reglementary period to appeal. There was an
unreasonable delay before the petitions to revive applications were filed. Moreover,
petitioners patent applications could not be a proper subject of a consolidated appeal
because they covered separate and distinct subjects and had been treated by the
Bureau of Patents as separate and individual applications. Specifically the decision
provides:

WHEREFORE, for reasons above stated and in the light of the applicable
law on the matter, this petition for review on appeal from the order/decision of
the Director of Bureau of Patents is hereby DISMISSED with costs against the
appellants.
SO ORDERED.
On September 14, 1992, petitioners moved for reconsideration of the Court of Appeals
decision, which the court denied on January 7, 1994. The appellate court found no
cogent reason to justify the reversal or modification of its decision.
Aggrieved, petitioners filed the instant petition for review on certiorari.
[16]

[17]

[18]

At issue is the validity of the Court of Appeals dismissal of the consolidated appeal
of petitioners from the Director of Patents denial of the revival of their patent
applications.
Petitioners contend that the Court of Appeals committed grave abuse of discretion
when it held that the consolidated appeal was filed out of time. They were appealing
from the resolution of the Director of Patents dated January 31, 1991, which denied the
petition for revival of the patent applications. They received a copy of the resolution,
through their patent attorneys, on February 7, 1991, and filed the consolidated appeal
seven (7) days after, or on February 14, 1991. According to petitioners, these dates
clearly established that their appeal was seasonably filed.
The contention is not meritorious. If the facts above-mentioned were the sole basis
of determining whether the appeal was filed on time, petitioners argument would be
correct. However, petitioners lost sight of the fact that the petition could not be granted
because of laches. Prior to the filing of the petition for revival of the patent application
with the Bureau of Patents, an unreasonable period of time had lapsed due to the
negligence of petitioners counsel. By such inaction, petitioners were deemed to have
forfeited their right to revive their applications for patent.
Facts show that the patent attorneys appointed to follow up the applications for patent
registration had been negligent in complying with the rules of practice prescribed by the
Bureau of Patents. The firm had been notified about the abandonment as early as June
1987, but it was only after December 7, 1987, when their employees Bangkas and
Rosas had been dismissed, that they came to know about it. This clearly showed that
petitioners counsel had been remiss in the handling of their clients applications.
[19]

A lawyers fidelity to the cause of his client requires him to be ever mindful of
the responsibilities that should be expected of him. A lawyer shall not neglect
a legal matter entrusted to him. In the instant case, petitioners patent
attorneys not only failed to take notice of the notices of abandonment, but they
failed to revive the application within the four-month period, as provided in the
rules of practice in patent cases. These applications are deemed forfeited
upon the lapse of such period.
[20]

[21]

Hence, we can not grant the present petition. The Court of Appeals did not err or
gravely abuse its discretion in dismissing the petition for review.
[22]

WHEREFORE, the Court DENIES the petition for lack of merit. The Court
AFFIRMS the decision of the Court of Appeals in CA-G. R. SP No. 24175.
No costs.
SO ORDERED.
Davide, Jr., C.J., (Chairman), Puno, Kapunan, and Ynares-Santiago, JJ., concur.

FIRST DIVISION

[G.R. No. 113407. July 12, 2000]

LOTHAR SCHUARTZ, FRIEDEL VERDERBERG, UDOLF KUEHNE,

DIETER FISCHER, JOHN BERNARD WATKINS, HARRY
GREAVES, CHEN WOO CHIN, YOSHIMI IWASAKI, FABIO CARLI,
MORTIMER THOMPSON, MALCOLM JOHN LAW, MICHIBAZU
OCHI, KENJI SHIGEMATSU, ENI SHINOZAKI, ROBERT CABIAKMAN, ARTHUR SPRENGER, REMY SIMOND and HEINRICH
EVBERGGER, petitioners, vs. THE HONORABLE COURT OF
APPEALS (SPECIAL FIFTH DIVISION) and THE BUREAU OF
PATENTS,
TRADEMARKS
AND
TECHNOLOGY
TRANSFER, respondents.
RESOLUTION
PARDO, J.:

Petitioners appeal via certiorari from the decision of the Court of Appeals
dismissing their appeal from the resolution of the Director of Patents that
denied with finality their petition for revival of patent applications.
[1]

On different dates, petitioners applied to the Bureau of Patents, Trademarks and

Technology Transfer for registration of patents. They hired the law firm Siguion Reyna,
Montecillo and Ongsiako to process their patent applications in the Philippines,
respectively identified as follows:

Applicant

Serial No.

(1) Michibazu Ochi, Kenji Shigematsu and

Eni Shinozaki- Issuance of letters patent
for Hackling Drum Room or Chamber
at the Self-Feeding Equipment for
Threshing of Upper Hackling System

23354

(2) Robert Cabi-Akman, Arthur Sprenger

and Remy Simond- Issuance of letters
patent for Colour Value Measurement

29630

(3) Heinrich Evbergger- Issuance of letters

patent for Tool for Moulding the Top Past
of a Plastic Container

29898

(4) Mortimer Thompson- Issuance of

[3]

30112

[5]

[4]

[2]

letters patent for Tamper Evident Closures

and Packages
(5) Yoshimi Iwasaki- Issuance of letters
patent for Method Generation for Hot Gas
by Incinerators

30548

[6]

(6 )John Bernard Watkins, Harry Greaves

and Chen Woo Chin- Issuance of letters
patent for Preservation Composition

30819

(7) Fabio Carli- Issuance of letters patent

for Pharmaceutical Compositions

31968

(8) Lothar Schuartz, Friedel Verderberg,

Rudolf Kuehne, and Dieter Fischer- Issuance
of letters patent for Process for Producing
Copper-Laminated Base Material for Printed
Circuit Boards

31974

(9) Malcolm John Law- Issuance of letters

patent for Electrodeposition of Chromium and
Chromium Bearing Alloys.

32050

[7]

[8]

[9]

[10]

[11]

Petitioners patent applications lacked certain requirements and the Bureau

informed the law firm about it, through correspondences called Office Actions. As
petitioners law firm did not respond to these office actions within the prescribed time,
notices of abandonment were sent on the following dates:

Serial Nos.
(1) 23354
(2) 29630
(3) 29898

Date of Office Action

Date of Abandonment

March 20, 1987

June 18, 1986
June 11, 1987

July 21, 1987

October 21, 1986
June 22, 1987

(4) 30112

June 3, 1987

August 6, 1987

(5) 30548

June 10, 1987

August 18, 1987

(6) 30819

January 28, 1987

July 28, 1987

(7) 31968

January 14, 1987

July 15, 1987

(8) 31974
(9) 32050

July 23, 1987

March 31, 1987

September 24, 1987

June 1, 1987

[12]

On December 7, 1987, two employees of the law firm, George Bangkas and Rafael
Rosas were dismissed from employment. Prior to the dismissal, these employees
worked with the patent group of the law firm and had the duty, among others, of getting
the firms letters and correspondence from the Bureau of Patents.
Immediately after their dismissal, the law firm conducted an inventory of all the
documents entrusted to them. It was then that the firm learned about the notices of
abandonment.
Thereafter, petitioners, through the law firm, filed with the Bureau of Patents
separate petitions for revival of the patent applications on the following dates:

Serial Nos.

Date Petition Filed

(1) 23354

March 3, 1988

(2) 29630

March 3, 1988

(3) 30122

January 15, 1988/February 29, 1988

(4) 30548

January 25, 1988/March 1, 1988

(5) 30819

May 27, 1988/July 15, 1988

(6) 31968

January 21, 1988/March 1, 1988

(7) 31974

March 14, 1988

(8) 32050

March 17, 1988

For Serial No. 29898, the applicant abandoned his application, for which
reason no petition for revival was filed.
[13]

On January 31, 1991, Director Luis M. Duka, Jr. of the Bureau of Patents denied
all the petitions for revival because they were filed out of time. The dispositive portion
specifically provides:

WHEREFORE, in consideration of the foregoing premises, all the petitions

for revival of the above-captioned abandoned applications
bearing Serial Nos. 23354, 29630, 29898, 30112, 30548, 30819, 31968,
31974, and 32050, are hereby denied and no further petitions nor requests for
reconsideration hereof shall be entertained hereafter.
SO ORDERED.
Makati, Metro Manila, Philippines, this 31st day of January 1991.
LUIS M. DUKA, JR.
Director III
On February 14, 1991, petitioners appealed the above resolution of the
Bureau of Patents to the Court of Appeals.
[14]

[15]

On August 13, 1992, the Court of Appeals dismissed the consolidated appeal for
being filed beyond the 15-day reglementary period to appeal. There was an
unreasonable delay before the petitions to revive applications were filed. Moreover,
petitioners patent applications could not be a proper subject of a consolidated appeal
because they covered separate and distinct subjects and had been treated by the
Bureau of Patents as separate and individual applications. Specifically the decision
provides:

WHEREFORE, for reasons above stated and in the light of the applicable
law on the matter, this petition for review on appeal from the order/decision of
the Director of Bureau of Patents is hereby DISMISSED with costs against the
appellants.
SO ORDERED.
On September 14, 1992, petitioners moved for reconsideration of the Court of
Appeals decision, which the court denied on January 7, 1994. The appellate
court found no cogent reason to justify the reversal or modification of its
decision.
Aggrieved, petitioners filed the instant petition for review on certiorari.
[16]

[17]

[18]

At issue is the validity of the Court of Appeals dismissal of the consolidated appeal
of petitioners from the Director of Patents denial of the revival of their patent
applications.
Petitioners contend that the Court of Appeals committed grave abuse of discretion
when it held that the consolidated appeal was filed out of time. They were appealing
from the resolution of the Director of Patents dated January 31, 1991, which denied the
petition for revival of the patent applications. They received a copy of the resolution,
through their patent attorneys, on February 7, 1991, and filed the consolidated appeal
seven (7) days after, or on February 14, 1991. According to petitioners, these dates
clearly established that their appeal was seasonably filed.
The contention is not meritorious. If the facts above-mentioned were the sole basis
of determining whether the appeal was filed on time, petitioners argument would be
correct. However, petitioners lost sight of the fact that the petition could not be granted
because of laches. Prior to the filing of the petition for revival of the patent application
with the Bureau of Patents, an unreasonable period of time had lapsed due to the
negligence of petitioners counsel. By such inaction, petitioners were deemed to have
forfeited their right to revive their applications for patent.

Facts show that the patent attorneys appointed to follow up the applications
for patent registration had been negligent in complying with the rules of
practice prescribed by the Bureau of Patents. The firm had been notified
about the abandonment as early as June 1987, but it was only after
December 7, 1987, when their employees Bangkas and Rosas had been
dismissed, that they came to know about it. This clearly showed that
petitioners counsel had been remiss in the handling of their clients
applications.
[19]

A lawyers fidelity to the cause of his client requires him to be ever mindful of
the responsibilities that should be expected of him. A lawyer shall not neglect
a legal matter entrusted to him. In the instant case, petitioners patent
attorneys not only failed to take notice of the notices of abandonment, but they
failed to revive the application within the four-month period, as provided in the
rules of practice in patent cases. These applications are deemed forfeited
upon the lapse of such period.
[20]

[21]

Hence, we can not grant the present petition. The Court of Appeals did not
err or gravely abuse its discretion in dismissing the petition for review.
[22]

WHEREFORE, the Court DENIES the petition for lack of merit. The Court
AFFIRMS the decision of the Court of Appeals in CA-G. R. SP No. 24175.
No costs.
SO ORDERED.
Davide, Jr., C.J., (Chairman), Puno, Kapunan, and Ynares-Santiago, JJ., concur

Creser Precision Systems Inc. v CA and Floro

International Co. GR NO. 118708, February 2,
1998
Facts:
Respondent was granted by the Bureau of Patents, Trademarks and Technology Transfer
(BPTTT) a Letter of patent for its aerial fuze on January 23, 1990. Sometime in 1993,
respondent discovered that the petitioner submitted samples of its patented aerial fuze to the
AFP for testing claiming to be his own. To protect its right, respondent sent letter of warning to

petitioner on a possible court action should it proceed its testing by the AFP. In response the
petitioner filed a complaint for injunction and damages arising from alleged infringement before
the RTC asserting that it is the true and actual inventor of the aerial fuze which it developed on
1981 under the Self Reliance Defense Posture Program of the AFP. It has been supplying the
military of the aerial fuze since then and that the fuze of the respondent is similar as that of the
petitioner. Petitioner prayed for restraining order and injunction from marketing,
manufacturing and profiting from the said invention by the respondent. The trial court ruled in
favor of the petitioner citing the fact that it was the first to develop the aerial fuze since
1981 thsu it concludes that it is the petitioners aerial fuze that was copied by the respondent.
Moreover, the claim of respondent is solely based on its letter of patent which validity is being
questioned. On appeal, respondent argued that the petitioner has no cause of action since he has
no right to assert there being no patent issued to his aerial fuze. The Court of Appeals reversed
the decision of the trial court dismissing the complaint of the petitioner. It was the contention of
the petitioner that it can file under Section 42 of the Patent Law an action for infringement not
as a patentee but as an entity in possession of a right, title or interest to the patented invention.
It theorizes that while the absence of a patent prevents one from lawfully suing another for
infringement of said patent, such absence does not bar the true and actual inventor of the
patented invention from suing another in the same nature as a civil action for infringement.

Issue:
Whether or not the petitioner has the right to assail the validity of the patented work of the
respondent?
Ruling:
The court finds the argument of the petitioner untenable. Section 42 of the Law on Patent (RA
165) provides that only the patentee or his successors-in-interest may file an action against
infringement. What the law contemplates in the phrase anyone possessing any right, title or
interest in and to the patented invention refers only to the patentees successors-in-interest,
assignees or grantees since the action onpatent infringement may be brought only in the name
of the person granted with the patent. There can be no infringement of a patent untila
patent has been issued since the right one has over the invention covered by the patent arises
from the grant of the patent alone. Therefore, a person who has not been granted letter of patent
over an invention has not acquired right or title over the invention and thus has no cause of
action for infringement. Petitioner admitted to have no patent over his invention. Respondents
aerial fuze is covered byletter of patent issued by the Bureau of Patents thus it has in his favor
not only the presumption of validity of its patent but that of a legal and factual first and true
inventor of the invention.

CASE DIGEST: CARLOS GSELL vs. VALERIANO VELOSO YAP-JUE

FACTS:

The principal case to which these proceedings are ancillary, was an action to enjoin
infringement of a patented process for manufacture of curved handles for canes, parasols, and
umbrellas. In that case, plaintiff established his title to a valid patent covering the process in
question, and obtained against this defendant a judgment, granting a perpetual injunction
restraining its infringement, which judgment was affirmed by this Court on appeal. The order
was couched in the following terms:

It is ordered that the defendant abstain from manufacturing canes and umbrellas with a curved
handle by means of a lamp or blowpipe fed with mineral oil or petroleum, which process was
protected by patent no. 19288, issued in favor of Henry Gsell, and by him transferred to Carlos
Gsell.

Thereafter the defendant continued to manufacture curved cane handles for walking
sticks and umbrellas by a process in all respects identical with that used by the plaintiff under
his patent, except only that he substituted for a lamp fed with petroleum or mineral oil, a lamp
fed with alcohol.

The trial court found the defendant not guilty of contempt as charged; and this court, on
appeal, held that The violation, if there has been any, was not of such a character that it could
be made patent by the mere annunciation of the acts performed by the defendant, which are
alleged to constitute the said violation. Consequently, the contempt with which the accused is
charged has not been fully and satisfactorily proved, and the order appealed from should
accordingly be affirmed in so far as it holds that the defendant is not guilty of contempt.

Substantially, the same question is submitted in these new proceedings as that

submitted in the former case.

ISSUE:

Whether the use of a patented process by a third person, without license or authority
therefore, constitutes an infringement when the alleged infringer has substituted in lieu of some
unessential part of the patented process a well-known mechanical equivalent.

HELD:

Counsel for plaintiff invokes the doctrine of mechanical equivalents in support of his
contention, and indeed that doctrine is applicable to the facts of the case. This doctrine is
founded upon sound rules of reason and logic, and unless restrained or modified by law in
particular jurisdiction, is of universal application, so that it matters not whether a patent be
issued by one sovereignty or another, the doctrine may properly be invoked to protect the
patentee from colorable invasions of his patent under the guise of a substitution of some part of
his invention by some well-known mechanical equivalent.

The use of a process in all respects identical with a process protected by a valid patent,
save only that a well-known mechanical equivalent is substituted in lieu of some particular part
of the patented process is an infringement upon the rights of the owner of the patent, which will
be enjoined in appropriate proceeding, and the use of such process, after the order enjoining its
use has been issued, is a contempt, under the provision of section 172 of the Code of Civil
Procedure.

Smith Kline Beckman Co. v Court of Appeals

and Tryco Pharma GR No. 126627, August 14,
2003
Facts:
Petitioner Smith Kline Beckman Co., licensed to do business in the Philippines, filed on October
8, 1976 as assignee before the Bureau of Patents an application for patent on its invention called
Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5
Propylthio-2-Benzimidazole Carbanate. A Letters of Patent was issued to the petitioner on
September 24, 1981 for a period of 17 years. The patent provides that the patented invention
consists of Methyl 5 Propylthio-2-Benzimidazole Carbanate used as an active ingredient in
treating gastrointestinal parasites and lung worms in animals. The respondent Tryco Pharma
manufactures, distributes and sells veterinary product, one of which is the Impregon, a drug
having Albendazole as its active ingredient effective against gastrointestinal worms in animals.
Petitioner now sues the respondent for patent infringement and unfair competition before the
RTC as it claims that their patent includes the substance Albendazole used by the respondent
and they sold and used the drug Impregon without the petitionersauthorization and committed
unfair competition for selling as its own the drug that substantially functions to achieve the
same result. Petitioner further contends that under the doctrine of equivalents in determining
patent infringement, the active substance Albendazole used by the respondent is substantially
the same as Methyl 5 Propylthio-2-Benzimidazole Carbanate covered by its patent with the same
use of combating worm infestations in animals. It prodded the court to go beyond the literal
words used in the Letter of Patent issued to them to consider that the words Methyl 5
Propylthio-2-Benzimidazole Carbanate and Albendazole are the same. Respondent avers that
the Letter of Patents issued to petitioner does not cover Albendazole in that the word does not
appear on it. Even if the patent were to include Albendazole it is unpatentable. They
secured approval from the Bureau of Foods and Drugs to manufacture and market Impregon
with the Albendazole as its active ingredients. The petitioner has no proof that they passed their
veterinary products as that of the petitioner.

Issue:
Whether or not respondent is guilty of patent infringement?
Ruling:
The Supreme Court held that it did not. When the language of the claim is clear and distinct, the
patentee is bound thereby and may not claim anything beyond them. The language of the Letter
of Patents issued to the petitioner failed to yield anything that it includes Albendazole. The
doctrine of equivalents does not apply in the case at bar because it requires that for infringement
to take place, the device should appropriate a prior invention by incorporating its innovative
concept and although there are some modifications and change they perform substantially the
same results. The petitioners evidence failed to adduce that substantial sameness on both the
chemicals they used. While both compounds produce the same effects of
neutralizing parasites in animals, the identity of result does not amount to infringement. The
petitioner has the burden to show that it satisfies the function-means-and-result-test required
by the doctrine of equivalents. Nothing has been substantiated on how Albendazole can weed
the parasites out from animals which is similar to the manner used by the petitioner in using
their own patented chemical compound.