PEARL & DEAN (PHIL.), INCORPORATED, Petitioner, vs.

SHOEMART,

Two years later, Metro Industrial Services, the company formerly contracted by Pearl

INCORPORATED, and NORTH EDSA MARKETING,

and Dean to fabricate its display units, offered to construct light boxes for

INCORPORATED, Respondents.
FACTUAL ANTECEDENTS
The May 22, 2001 decision of the Court of Appeals3 contained a summary of this

Shoemarts chain of stores. SMI approved the proposal and ten (10) light boxes were

dispute:
"Plaintiff-appellant Pearl and Dean (Phil.), Inc. is a corporation engaged in the
manufacture of advertising display units simply referred to as light boxes. These
units utilize specially printed posters sandwiched between plastic sheets and
illuminated with back lights. Pearl and Dean was able to secure a Certificate of
Copyright Registration dated January 20, 1981 over these illuminated display units.
The advertising light boxes were marketed under the trademark "Poster Ads". The
application for registration of the trademark was filed with the Bureau of Patents,
Trademarks and Technology Transfer on June 20, 1983, but was approved only on
September 12, 1988, per Registration No. 41165. From 1981 to about 1988, Pearl

subsequently fabricated by Metro Industrial for SMI. After its contract with Metro
Industrial was terminated, SMI engaged the services of EYD Rainbow Advertising
Corporation to make the light boxes. Some 300 units were fabricated in 1991. These
were delivered on a staggered basis and installed at SM Megamall and SM City.
Sometime in 1989, Pearl and Dean, received reports that exact copies of its light
boxes were installed at SM City and in the fastfood section of SM Cubao. Upon
investigation, Pearl and Dean found out that aside from the two (2) reported SM
branches, light boxes similar to those it manufactures were also installed in two (2)
other SM stores. It further discovered that defendant-appellant North Edsa Marketing
Inc. (NEMI), through its marketing arm, Prime Spots Marketing Services, was set up
primarily to sell advertising space in lighted display units located in SMIs different

and Dean employed the services of Metro Industrial Services to manufacture its

branches. Pearl and Dean noted that NEMI is a sister company of SMI.
In the light of its discoveries, Pearl and Dean sent a letter dated December 11, 1991

advertising displays.
Sometime in 1985, Pearl and Dean negotiated with defendant-appellant Shoemart,

to both SMI and NEMI enjoining them to cease using the subject light boxes and to

Inc. (SMI) for the lease and installation of the light boxes in SM City North Edsa.
Since SM City North Edsa was under construction at that time, SMI offered as an
alternative, SM Makati and SM Cubao, to which Pearl and Dean agreed. On
September 11, 1985, Pearl and Deans General Manager, Rodolfo Vergara, submitted
for signature the contracts covering SM Cubao and SM Makati to SMIs Advertising
Promotions and Publicity Division Manager, Ramonlito Abano. Only the contract for
SM Makati, however, was returned signed. On October 4, 1985, Vergara wrote

remove the same from SMIs establishments. It also demanded the discontinued use
of the trademark "Poster Ads," and the payment to Pearl and Dean of compensatory
damages in the amount of Twenty Million Pesos (P20,000,000.00).
Upon receipt of the demand letter, SMI suspended the leasing of two hundred
twenty-four (224) light boxes and NEMI took down its advertisements for "Poster
Ads" from the lighted display units in SMIs stores. Claiming that both SMI and
NEMI failed to meet all its demands, Pearl and Dean filed this instant case for

Abano inquiring about the other contract and reminding him that their agreement for

infringement of trademark and copyright, unfair competition and damages.

In denying the charges hurled against it, SMI maintained that it independently

installation of light boxes was not only for its SM Makati branch, but also for SM

developed its poster panels using commonly known techniques and available

Cubao. SMI did not bother to reply.

Instead, in a letter dated January 14, 1986, SMIs house counsel informed Pearl and

technology, without notice of or reference to Pearl and Deans copyright. SMI noted

Dean that it was rescinding the contract for SM Makati due to non-performance of
the terms thereof. In his reply dated February 17, 1986, Vergara protested the
unilateral action of SMI, saying it was without basis. In the same letter, he pushed for
the signing of the contract for SM Cubao.

that the registration of the mark "Poster Ads" was only for stationeries such as
letterheads, envelopes, and the like. Besides, according to SMI, the word "Poster
Ads" is a generic term which cannot be appropriated as a trademark, and, as such,
registration of such mark is invalid. It also stressed that Pearl and Dean is not entitled

to the reliefs prayed for in its complaint since its advertising display units contained
no copyright notice, in violation of Section 27 of P.D. 49. SMI alleged that Pearl and
Dean had no cause of action against it and that the suit was purely intended to malign
SMIs good name. On this basis, SMI, aside from praying for the dismissal of the
case, also counterclaimed for moral, actual and exemplary damages and for the
cancellation of Pearl and Deans Certification of Copyright Registration No. PD-R2558 dated January 20, 1981 and Certificate of Trademark Registration No. 4165
dated September 12, 1988.
NEMI, for its part, denied having manufactured, installed or used any advertising
display units, nor having engaged in the business of advertising. It repleaded SMIs
averments, admissions and denials and prayed for similar reliefs and counterclaims
as SMI."
The RTC of Makati City decided in favor of P & D:
Wherefore, defendants SMI and NEMI are found jointly and severally liable for
infringement of copyright under Section 2 of PD 49, as amended, and infringement
of trademark under Section 22 of RA No. 166, as amended, and are hereby penalized
under Section 28 of PD 49, as amended, and Sections 23 and 24 of RA 166, as
amended. Accordingly, defendants are hereby directed:
(1) to pay plaintiff the following damages:
(a) actual damages - P16,600,000.00,

(4) to permanently refrain from infringing the copyright on plaintiffs light

boxes and its trademark "Poster Ads".
Defendants counterclaims are hereby ordered dismissed for lack of merit.
SO ORDERED.4
On appeal, however, the Court of Appeals reversed the trial court:
Since the light boxes cannot, by any stretch of the imagination, be considered as
either prints, pictorial illustrations, advertising copies, labels, tags or box wraps, to
be properly classified as a copyrightable class "O" work, we have to agree with SMI
when it posited that what was copyrighted were the technical drawings only, and not
the light boxes themselves, thus:
42. When a drawing is technical and depicts a utilitarian object, a copyright over the
drawings like plaintiff-appellants will not extend to the actual object. It has so been
held under jurisprudence, of which the leading case isBaker vs. Selden (101 U.S. 841
(1879). In that case, Selden had obtained a copyright protection for a book entitled
"Seldens Condensed Ledger or Bookkeeping Simplified" which purported to explain
a new system of bookkeeping. Included as part of the book were blank forms and
illustrations consisting of ruled lines and headings, specially designed for use in
connection with the system explained in the work. These forms showed the entire
operation of a day or a week or a month on a single page, or on two pages following
each other. The defendant Baker then produced forms which were similar to the

representing profits

forms illustrated in Seldens copyrighted books. The Court held that exclusivity to

derived by defendants

the actual forms is not extended by a copyright. The reason was that "to grant a

as a result of infringe-

monopoly in the underlying art when no examination of its novelty has ever been

ment of plaintiffs copyright

made would be a surprise and a fraud upon the public; that is the province of letters

from 1991 to 1992

(b) moral damages - P1,000.000.00
(c) exemplary damages - P1,000,000.00
(d) attorneys fees - P1,000,000.00
plus
(e) costs of suit;
(2) to deliver, under oath, for impounding in the National Library, all light
boxes of SMI which were fabricated by Metro Industrial Services and EYD
Rainbow Advertising Corporation;
(3) to deliver, under oath, to the National Library, all filler-posters using the
trademark "Poster Ads", for destruction; and

patent, not of copyright." And that is precisely the point. No doubt aware that its
alleged original design would never pass the rigorous examination of a patent
application, plaintiff-appellant fought to foist a fraudulent monopoly on the public by
conveniently resorting to a copyright registration which merely employs a recordal
system without the benefit of an in-depth examination of novelty.
The principle in Baker vs. Selden was likewise applied in Muller vs. Triborough
Bridge Authority [43 F. Supp. 298 (S.D.N.Y. 1942)]. In this case, Muller had
obtained a copyright over an unpublished drawing entitled "Bridge Approach the
drawing showed a novel bridge approach to unsnarl traffic congestion". The

defendant constructed a bridge approach which was alleged to be an infringement of

Trademark Law as "an implicit permission to a manufacturer to venture into the

the new design illustrated in plaintiffs drawings. In this case it was held that

production of goods and allow that producer to appropriate the brand name of the

protection of the drawing does not extend to the unauthorized duplication of the

senior registrant on goods other than those stated in the certificate of registration."

object drawn because copyright extends only to the description or expression of the

The Supreme Court further emphasized the restrictive meaning of Section 20 when it

object and not to the object itself. It does not prevent one from using the drawings to

stated, through Justice Conrado V. Sanchez, that:

Really, if the certificate of registration were to be deemed as including goods not

construct the object portrayed in the drawing.

In two other cases, Imperial Homes Corp. v. Lamont, 458 F. 2d 895 and Scholtz

specified therein, then a situation may arise whereby an applicant may be tempted to

Homes, Inc. v. Maddox, 379 F. 2d 84, it was held that there is no copyright

register a trademark on any and all goods which his mind may conceive even if he

infringement when one who, without being authorized, uses a copyrighted

had never intended to use the trademark for the said goods. We believe that such

architectural plan to construct a structure. This is because the copyright does not

omnibus registration is not contemplated by our Trademark Law.

While we do not discount the striking similarity between Pearl and Deans registered

extend to the structures themselves.

In fine, we cannot find SMI liable for infringing Pearl and Deans copyright over the
technical drawings of the latters advertising display units.
xxx xxx xxx
The Supreme Court trenchantly held in Faberge, Incorporated vs. Intermediate
Appellate Court that the protective mantle of the Trademark Law extends only to the
goods used by the first user as specified in the certificate of registration, following
the clear mandate conveyed by Section 20 of Republic Act 166, as amended,
otherwise known as the Trademark Law, which reads:
SEC. 20. Certification of registration prima facie evidence of validity.- A certificate
of registration of a mark or trade-name shall be prima facie evidence of the validity
of the registration, the registrants ownership of the mark or trade-name, and of the
registrants exclusive right to use the same in connection with the goods, business or
servicesspecified in the certificate, subject to any conditions and limitations stated
therein." (underscoring supplied)
The records show that on June 20, 1983, Pearl and Dean applied for the registration
of the trademark "Poster Ads" with the Bureau of Patents, Trademarks, and

trademark and defendants-appellants "Poster Ads" design, as well as the parallel use
by which said words were used in the parties respective advertising copies, we
cannot find defendants-appellants liable for infringement of trademark. "Poster Ads"
was registered by Pearl and Dean for specific use in its stationeries, in contrast to
defendants-appellants who used the same words in their advertising display units.
Why Pearl and Dean limited the use of its trademark to stationeries is simply beyond
us. But, having already done so, it must stand by the consequence of the registration
which it had caused.
xxx xxx xxx
We are constrained to adopt the view of defendants-appellants that the words "Poster
Ads" are a simple contraction of the generic term poster advertising. In the absence
of any convincing proof that "Poster Ads" has acquired a secondary meaning in this
jurisdiction, we find that Pearl and Deans exclusive right to the use of "Poster Ads"
is limited to what is written in its certificate of registration, namely, stationeries.
Defendants-appellants cannot thus be held liable for infringement of the trademark

Technology Transfer. Said trademark was recorded in the Principal Register on

"Poster Ads".
There being no finding of either copyright or trademark infringement on the part of

September 12, 1988 under Registration No. 41165 covering the following products:

SMI and NEMI, the monetary award granted by the lower court to Pearl and Dean

stationeries such as letterheads, envelopes and calling cards and newsletters.

With this as factual backdrop, we see no legal basis to the finding of liability on the

has no leg to stand on.

xxx xxx xxx
WHEREFORE, premises considered, the assailed decision is REVERSED and SET

part of the defendants-appellants for their use of the words "Poster Ads", in the
advertising display units in suit. Jurisprudence has interpreted Section 20 of the

ASIDE, and another is rendered DISMISSING the complaint and counterclaims in

the above-entitled case for lack of merit.5

Dissatisfied with the above decision, petitioner P & D filed the instant petition

(3) can the owner of a registered trademark legally prevent others from

assigning the following errors for the Courts consideration:

A. THE HONORABLE COURT OF APPEALS ERRED IN RULING

using such trademark if it is a mere abbreviation of a term descriptive of his

THAT NO COPYRIGHT INFRINGEMENT WAS COMMITTED BY

RESPONDENTS SM AND NEMI;
B. THE HONORABLE COURT OF APPEALS ERRED IN RULING

goods, services or business?

ON THE ISSUE OF COPYRIGHT INFRINGEMENT
Petitioner P & Ds complaint was that SMI infringed on its copyright over the light
boxes when SMI had the units manufactured by Metro and EYD Rainbow

THAT NO INFRINGEMENT OF PEARL & DEANS TRADEMARK

Advertising for its own account. Obviously, petitioners position was premised on its

"POSTER ADS" WAS COMMITTED BY RESPONDENTS SM AND

belief that its copyright over the engineering drawings extended ipso facto to the

NEMI;
C. THE HONORABLE COURT OF APPEALS ERRED IN DISMISSING

light boxes depicted or illustrated in said drawings. In ruling that there was no

THE AWARD OF THE TRIAL COURT, DESPITE THE LATTERS

copyright infringement, the Court of Appeals held that the copyright was limited to

FINDING, NOT DISPUTED BY THE HONORABLE COURT OF

the drawings alone and not to the light box itself. We agree with the appellate court.
First, petitioners application for a copyright certificate as well as Copyright

APPEALS, THAT SM WAS GUILTY OF BAD FAITH IN ITS

Certificate No. PD-R2588 issued by the National Library on January 20, 1981

NEGOTIATION OF ADVERTISING CONTRACTS WITH PEARL &

clearly stated that it was for a class "O" work under Section 2 (O) of PD 49 (The

DEAN.
D. THE HONORABLE COURT OF APPEALS ERRED IN NOT

Intellectual Property Decree) which was the statute then prevailing. Said Section 2

HOLDING RESPONDENTS SM AND NEMI LIABLE TO PEARL &

DEAN FOR ACTUAL, MORAL & EXEMPLARY DAMAGES,
ATTORNEYS FEES AND COSTS OF SUIT.6
ISSUES
In resolving this very interesting case, we are challenged once again to put into
proper perspective four main concerns of intellectual property law patents,
copyrights, trademarks and unfair competition arising from infringement of any of
the first three. We shall focus then on the following issues:
(1) if the engineering or technical drawings of an advertising display unit
(light box) are granted copyright protection (copyright certificate of
registration) by the National Library, is the light box depicted in such
engineering drawings ipso facto also protected by such copyright?
(2) or should the light box be registered separately and protected by a patent
issued by the Bureau of Patents Trademarks and Technology Transfer (now
Intellectual Property Office) in addition to the copyright of the
engineering drawings?

expressly enumerated the works subject to copyright:

SEC. 2. The rights granted by this Decree shall, from the moment of creation, subsist
with respect to any of the following works:
xxx
xxx
xxx
(O) Prints, pictorial illustrations, advertising copies, labels, tags, and box wraps;
xxx
xxx
xxx
Although petitioners copyright certificate was entitled "Advertising Display Units"
(which depicted the box-type electrical devices), its claim of copyright infringement
cannot be sustained.
Copyright, in the strict sense of the term, is purely a statutory right. Being a mere
statutory grant, the rights are limited to what the statute confers. It may be obtained
and enjoyed only with respect to the subjects and by the persons, and on terms and
conditions specified in the statute.7 Accordingly, it can cover only the works falling
within the statutory enumeration or description.8
P & D secured its copyright under the classification class "O" work. This being so,
petitioners copyright protection extended only to the technical drawings and not to
the light box itself because the latter was not at all in the category of "prints, pictorial
illustrations, advertising copies, labels, tags and box wraps." Stated otherwise, even
as we find that P & D indeed owned a valid copyright, the same could have referred

only to the technical drawings within the category of "pictorial illustrations." It could

technical solution of a problem in any field of human activity which is new, involves

not have possibly stretched out to include the underlying light box. The strict

an inventive step and is industrially applicable.

ON THE ISSUE OF PATENT INFRINGEMENT
This brings us to the next point: if, despite its manufacture and commercial use of

application of the laws enumeration in Section 2 prevents us from giving petitioner

even a little leeway, that is, even if its copyright certificate was entitled "Advertising
Display Units." What the law does not include, it excludes, and for the good reason:
the light box was not a literary or artistic piece which could be copyrighted under the
copyright law. And no less clearly, neither could the lack of statutory authority to
make the light box copyrightable be remedied by the simplistic act of entitling the
copyright certificate issued by the National Library as "Advertising Display Units."
In fine, if SMI and NEMI reprinted P & Ds technical drawings for sale to the public
without license from P & D, then no doubt they would have been guilty of copyright
infringement. But this was not the case. SMIs and NEMIs acts complained of by P
& D were to have units similar or identical to the light box illustrated in the technical
drawings manufactured by Metro and EYD Rainbow Advertising, for leasing out to
different advertisers. Was this an infringement of petitioners copyright over the
technical drawings? We do not think so.
During the trial, the president of P & D himself admitted that the light box was
neither a literary not an artistic work but an "engineering or marketing
invention."10 Obviously, there appeared to be some confusion regarding what ought
or ought not to be the proper subjects of copyrights, patents and trademarks. In the
leading case of Kho vs. Court of Appeals,11 we ruled that these three legal rights are
completely distinct and separate from one another, and the protection afforded by

the light boxes without license from petitioner, private respondents cannot be held
legally liable for infringement of P & Ds copyright over itstechnical drawings of the
said light boxes, should they be liable instead for infringement of patent? We do not
think so either.
For some reason or another, petitioner never secured a patent for the light boxes. It
therefore acquired no patent rights which could have protected its invention, if in fact
it really was. And because it had no patent, petitioner could not legally prevent
anyone from manufacturing or commercially using the contraption. In Creser
Precision Systems, Inc. vs. Court of Appeals,12 we held that "there can be no
infringement of a patent until a patent has been issued, since whatever right one has
to the invention covered by the patent arises alone from the grant of patent. x x x
(A)n inventor has no common law right to a monopoly of his invention. He has the
right to make use of and vend his invention, but if he voluntarily discloses it, such as
by offering it for sale, the world is free to copy and use it with impunity. A patent,
however, gives the inventor the right to exclude all others. As a patentee, he has the
exclusive right of making, selling or using the invention.13 On the assumption that
petitioners advertising units were patentable inventions, petitioner revealed them
fully to the public by submitting the engineering drawings thereof to the National

one cannot be used interchangeably to cover items or works that exclusively pertain

Library.
To be able to effectively and legally preclude others from copying and profiting from

to the others:
Trademark, copyright and patents are different intellectual property rights that cannot

the invention, a patent is a primordial requirement. No patent, no protection. The

be interchanged with one another. A trademark is any visible sign capable of

distinguishing the goods (trademark) or services (service mark) of an enterprise and
shall include a stamped or marked container of goods. In relation thereto, a trade
name means the name or designation identifying or distinguishing an enterprise.
Meanwhile, the scope of a copyright is confined to literary and artistic works which
are original intellectual creations in the literary and artistic domain protected from
the moment of their creation. Patentable inventions, on the other hand, refer to any

ultimate goal of a patent system is to bring new designs and technologies into the
public domain through disclosure.14 Ideas, once disclosed to the public without the
protection of a valid patent, are subject to appropriation without significant
restraint.15
On one side of the coin is the public which will benefit from new ideas; on the other
are the inventors who must be protected. As held in Bauer & Cie vs.
ODonnel,16 "The act secured to the inventor the exclusive right to make use, and
vend the thing patented, and consequently to prevent others from exercising like

privileges without the consent of the patentee. It was passed for the purpose of

Therefore, not having gone through the arduous examination for patents, the

encouraging useful invention and promoting new and useful inventions by the

petitioner cannot exclude others from the manufacture, sale or commercial use of the

protection and stimulation given to inventive genius, and was intended to secure to

light boxes on the sole basis of its copyright certificate over the technical drawings.
Stated otherwise, what petitioner seeks is exclusivity without any opportunity for the

the public, after the lapse of the exclusive privileges granted the benefit of such
inventions and improvements."
The law attempts to strike an ideal balance between the two interests:
"(The p)atent system thus embodies a carefully crafted bargain for encouraging the
creation and disclosure of new useful and non-obvious advances in technology and
design, in return for the exclusive right to practice the invention for a number of
years. The inventor may keep his invention secret and reap its fruits indefinitely. In
consideration of its disclosure and the consequent benefit to the community, the

patent office (IPO) to scrutinize the light boxs eligibility as a patentable invention.
The irony here is that, had petitioner secured a patent instead, its exclusivity would
have been for 17 years only. But through the simplified procedure of copyrightregistration with the National Library without undergoing the rigor of defending
the patentability of its invention before the IPO and the public the petitioner
would be protected for 50 years. This situation could not have been the intention of

patent is granted. An exclusive enjoyment is guaranteed him for 17 years, but upon

the law.
In the oft-cited case of Baker vs. Selden21, the United States Supreme Court held

the expiration of that period, the knowledge of the invention inures to the people,

that only the expression of an idea is protected by copyright, not the idea itself. In

17

who are thus enabled to practice it and profit by its use."

The patent law has a three-fold purpose: "first, patent law seeks to foster and reward
invention; second, it promotes disclosures of inventions to stimulate further
innovation and to permit the public to practice the invention once the patent expires;
third, the stringent requirements for patent protection seek to ensure that ideas in the
public domain remain there for the free use of the public."18
It is only after an exhaustive examination by the patent office that a patent is issued.
Such an in-depth investigation is required because "in rewarding a useful invention,
the rights and welfare of the community must be fairly dealt with and effectively
guarded. To that end, the prerequisites to obtaining a patent are strictly observed and
when a patent is issued, the limitations on its exercise are equally strictly enforced.
To begin with, a genuine invention or discovery must be demonstrated lest in the
constant demand for new appliances, the heavy hand of tribute be laid on each slight
technological advance in art."19
There is no such scrutiny in the case of copyrights nor any notice published before its
grant to the effect that a person is claiming the creation of a work. The law confers
the copyright from the moment of creation20 and the copyright certificate is issued
upon registration with the National Library of a sworn ex-parte claim of creation.

that case, the plaintiff held the copyright of a book which expounded on a new
accounting system he had developed. The publication illustrated blank forms of
ledgers utilized in such a system. The defendant reproduced forms similar to those
illustrated in the plaintiffs copyrighted book. The US Supreme Court ruled that:
"There is no doubt that a work on the subject of book-keeping, though only
explanatory of well known systems, may be the subject of a copyright; but, then, it is
claimed only as a book. x x x. But there is a clear distinction between the books, as
such, and the art, which it is, intended to illustrate. The mere statement of the
proposition is so evident that it requires hardly any argument to support it. The same
distinction may be predicated of every other art as well as that of bookkeeping. A
treatise on the composition and use of medicines, be they old or new; on the
construction and use of ploughs or watches or churns; or on the mixture and
application of colors for painting or dyeing; or on the mode of drawing lines to
produce the effect of perspective, would be the subject of copyright; but no one
would contend that the copyright of the treatise would give the exclusive right to the
art or manufacture described therein. The copyright of the book, if not pirated from
other works, would be valid without regard to the novelty or want of novelty of its
subject matter. The novelty of the art or thing described or explained has nothing to
do with the validity of the copyright. To give to the author of the book an exclusive

property in the art described therein, when no examination of its novelty has

books, which have been made the subject of copyright. In describing the art, the

ever been officially made, would be a surprise and a fraud upon the public. That

illustrations and diagrams employed happened to correspond more closely than usual

is the province of letters patent, not of copyright. The claim to an invention of

with the actual work performed by the operator who uses the art. x x x The

discovery of an art or manufacture must be subjected to the examination of the

description of the art in a book, though entitled to the benefit of copyright, lays

Patent Office before an exclusive right therein can be obtained; and a patent

no foundation for an exclusive claim to the art itself. The object of the one is

from the government can only secure it.

The difference between the two things, letters patent and copyright, may be

explanation; the object of the other is use. The former may be secured by

illustrated by reference to the subjects just enumerated. Take the case of medicines.
Certain mixtures are found to be of great value in the healing art. If the discoverer
writes and publishes a book on the subject (as regular physicians generally do),
he gains no exclusive right to the manufacture and sale of the medicine; he gives
that to the public. If he desires to acquire such exclusive right, he must obtain a
patent for the mixture as a new art, manufacture or composition of matter. He
may copyright his book, if he pleases; but that only secures to him the exclusive
right of printing and publishing his book. So of all other inventions or
discoveries.
The copyright of a book on perspective, no matter how many drawings and
illustrations it may contain, gives no exclusive right to the modes of drawing
described, though they may never have been known or used before. By publishing
the book without getting a patent for the art, the latter is given to the public.
xxx
Now, whilst no one has a right to print or publish his book, or any material part
thereof, as a book intended to convey instruction in the art, any person may practice
and use the art itself which he has described and illustrated therein.The use of the
art is a totally different thing from a publication of the book explaining it. The
copyright of a book on bookkeeping cannot secure the exclusive right to make, sell

copyright. The latter can only be secured, if it can be secured at all, by letters
patent."
ON THE ISSUE OF TRADEMARK INFRINGEMENT
This issue concerns the use by respondents of the mark "Poster Ads" which
petitioners president said was a contraction of "poster advertising." P & D was able
to secure a trademark certificate for it, but one where the goods specified were
"stationeries such as letterheads, envelopes, calling cards and
newsletters."22 Petitioner admitted it did not commercially engage in or market these
goods. On the contrary, it dealt in electrically operated backlit advertising units and
the sale of advertising spaces thereon, which, however, were not at all specified in
the trademark certificate.
Under the circumstances, the Court of Appeals correctly cited Faberge Inc. vs.
Intermediate Appellate Court,23where we, invoking Section 20 of the old Trademark
Law, ruled that "the certificate of registration issued by the Director of Patents can
confer (upon petitioner) the exclusive right to use its own symbol only to those
goods specified in the certificate, subject to any conditions and limitations specified
in the certificate x x x. One who has adopted and used a trademark on his goods does
not prevent the adoption and use of the same trademark by others for products which
are of a different description."24 Faberge, Inc. was correct and was in fact recently

and use account books prepared upon the plan set forth in such book. Whether the art

reiterated in Canon Kabushiki Kaisha vs. Court of Appeals.25

Assuming arguendo that "Poster Ads" could validly qualify as a trademark, the

might or might not have been patented, is a question, which is not before us. It was

failure of P & D to secure a trademark registration for specific use on the light boxes

not patented, and is open and free to the use of the public. And, of course, in using

meant that there could not have been any trademark infringement since registration

the art, the ruled lines and headings of accounts must necessarily be used as incident

was an essential element thereof.1wphi1

ON THE ISSUE OF UNFAIR COMPETITION
If at all, the cause of action should have been for unfair competition, a situation

to it.
The plausibility of the claim put forward by the complainant in this case arises from
a confusion of ideas produced by the peculiar nature of the art described in the

which was possible even if P & D had no registration.26 However, while the

petitioners complaint in the RTC also cited unfair competition, the trial court did not

WHEREFORE, the petition is hereby DENIED and the decision of the Court of

find private respondents liable therefor. Petitioner did not appeal this particular point;

Appeals dated May 22, 2001 is AFFIRMED in toto. SO ORDERED.

hence, it cannot now revive its claim of unfair competition.

But even disregarding procedural issues, we nevertheless cannot hold respondents

SMITH KLINE BECKMAN CORPORATION, Petitioner, vs. THE

guilty of unfair competition.

By the nature of things, there can be no unfair competition under the law on
copyrights although it is applicable to disputes over the use of trademarks. Even a
name or phrase incapable of appropriation as a trademark or tradename may, by long
and exclusive use by a business (such that the name or phrase becomes associated
with the business or product in the mind of the purchasing public), be entitled to
protection against unfair competition.27In this case, there was no evidence that P &
Ds use of "Poster Ads" was distinctive or well-known. As noted by the Court of
Appeals, petitioners expert witnesses himself had testified that " Poster Ads was
too generic a name. So it was difficult to identify it with any company, honestly

HONORABLE COURT OF APPEALS and TRYCO PHARMA

CORPORATION, Respondents.
Smith Kline Beckman Corporation (petitioner), a corporation existing by virtue of
the laws of the state of Pennsylvania, United States of America (U.S.) and licensed to
do business in the Philippines, filed on October 8, 1976, as assignee, before the
Philippine Patent Office (now Bureau of Patents, Trademarks and Technology
Transfer) an application for patent over an invention entitled "Methods and
Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5
Propylthio-2-Benzimidazole Carbamate." The application bore Serial No. 18989.
On September 24, 1981, Letters Patent No. 145611 for the aforesaid invention was

speaking."28 This crucial admission by its own expert witness that "Poster Ads" could

issued to petitioner for a term of seventeen (17) years.

The letters patent provides in its claims2 that the patented invention consisted of a

not be associated with P & D showed that, in the mind of the public, the goods and

new compound named methyl 5 propylthio-2-benzimidazole carbamate and the

services carrying the trademark "Poster Ads" could not be distinguished from the

methods or compositions utilizing the compound as an active ingredient in fighting

goods and services of other entities.

This fact also prevented the application of the doctrine of secondary meaning.

infections caused by gastrointestinal parasites and lungworms in animals such as

"Poster Ads" was generic and incapable of being used as a trademark because it was

swine, sheep, cattle, goats, horses, and even pet animals.

Tryco Pharma Corporation (private respondent) is a domestic corporation that

used in the field of poster advertising, the very business engaged in by petitioner.

manufactures, distributes and sells veterinary products including Impregon, a drug

"Secondary meaning" means that a word or phrase originally incapable of exclusive

that has Albendazole for its active ingredient and is claimed to be effective against

appropriation with reference to an article in the market (because it is geographically

gastro-intestinal roundworms, lungworms, tapeworms and fluke infestation in

or otherwise descriptive) might nevertheless have been used for so long and so

carabaos, cattle and goats.

Petitioner sued private respondent for infringement of patent and unfair competition

exclusively by one producer with reference to his article that, in the trade and to that
branch of the purchasing public, the word or phrase has come to mean that the article
was his property.29 The admission by petitioners own expert witness that he himself
could not associate "Poster Ads" with petitioner P & D because it was "too generic"
definitely precluded the application of this exception.
Having discussed the most important and critical issues, we see no need to belabor
the rest.
All told, the Court finds no reversible error committed by the Court of Appeals when
it reversed the Regional Trial Court of Makati City.

before the Caloocan City Regional Trial Court (RTC).3 It claimed that its patent
covers or includes the substance Albendazole such that private respondent, by
manufacturing, selling, using, and causing to be sold and used the drug Impregon
without its authorization, infringed Claims 2, 3, 4, 7, 8 and 9 of Letters Patent No.
145614 as well as committed unfair competition under Article 189, paragraph 1 of the
Revised Penal Code and Section 29 of Republic Act No. 166 (The Trademark Law)

for advertising and selling as its own the drug Impregon although the same contained

On appeal, the Court of Appeals, by Decision of April 21, 1995,10 upheld the trial

petitioners patented Albendazole.5

On motion of petitioner, Branch 125 of the Caloocan RTC issued a temporary

courts finding that private respondent was not liable for any infringement of the

restraining order against private respondent enjoining it from committing acts of

patent infringement and unfair competition.6 A writ of preliminary injunction was
subsequently issued.7
Private respondent in its Answer8 averred that Letters Patent No. 14561 does not
cover the substance Albendazole for nowhere in it does that word appear; that even if
the patent were to include Albendazole, such substance is unpatentable; that the
Bureau of Food and Drugs allowed it to manufacture and market Impregon with
Albendazole as its known ingredient; that there is no proof that it passed off in any
way its veterinary products as those of petitioner; that Letters Patent No. 14561 is
null and void, the application for the issuance thereof having been filed beyond the
one year period from the filing of an application abroad for the same invention
covered thereby, in violation of Section 15 of Republic Act No. 165 (The Patent

patent of petitioner in light of the latters failure to show that Albendazole is the same
as the compound subject of Letters Patent No. 14561. Noting petitioners admission
of the issuance by the U.S. of a patent for Albendazole in the name of Smith Kline
and French Laboratories which was petitioners former corporate name, the appellate
court considered the U.S. patent as implying that Albendazole is different from
methyl 5 propylthio-2-benzimidazole carbamate. It likewise found that private
respondent was not guilty of deceiving the public by misrepresenting that Impregon
is its product.
The appellate court, however, declared that Letters Patent No. 14561 was not void as
it sustained petitioners explanation that Patent Application Serial No. 18989 which
was filed on October 8, 1976 was a divisional application of Patent Application
Serial No. 17280 filed on June 17, 1975 with the Philippine Patent Office, well
within one year from petitioners filing on June 19, 1974 of its Foreign Application

Law); and that petitioner is not the registered patent holder.

Private respondent lodged a Counterclaim against petitioner for such amount of

Priority Data No. 480,646 in the U.S. covering the same compound subject of Patent

actual damages as may be proven;P1,000,000.00 in moral damages; P300,000.00 in

Application Serial No. 17280.

Applying Section 17 of the Patent Law, the Court of Appeals thus ruled that Patent

exemplary damages; and P150,000.00 in attorneys fees.

Finding for private respondent, the trial court rendered a Decision dated July 23,

Application Serial No. 18989 was deemed filed on June 17, 1995 or still within one

1991,9 the dispositive portion of which reads:

WHEREFORE, in view of the foregoing, plaintiffs complaint should be, as it is

year from the filing of a patent application abroad in compliance with the one-year
rule under Section 15 of the Patent Law. And it rejected the submission that the

hereby, DISMISSED. The Writ of injunction issued in connection with the case is

compound in Letters Patent No. 14561 was not patentable, citing the

hereby ordered DISSOLVED.

The Letters Patent No. 14561 issued by the then Philippine Patents Office is hereby

jurisprudentially established presumption that the Patent Offices determination of

declared null and void for being in violation of Sections 7, 9 and 15 of the Patents
Law.
Pursuant to Sec. 46 of the Patents Law, the Director of Bureau of Patents is hereby
directed to cancel Letters Patent No. 14561 issued to the plaintiff and to publish such
cancellation in the Official Gazette.
Defendant Tryco Pharmaceutical Corporation is hereby awarded P330,000.00 actual
damages and P100,000.00 attorneys fees as prayed for in its counterclaim but said
amount awarded to defendant is subject to the lien on correct payment of filing fees.
SO ORDERED. (Underscoring supplied)

patentability is correct. Finally, it ruled that petitioner established itself to be the one
and the same assignee of the patent notwithstanding changes in its corporate name.
Thus the appellate court disposed:
WHEREFORE, the judgment appealed from is AFFIRMED with the
MODIFICATION that the orders for the nullification of Letters Patent No. 14561
and for its cancellation are deleted therefrom.
SO ORDERED.
Petitioners motion for reconsideration of the Court of Appeals decision having been
denied11 the present petition for review on certiorari12 was filed, assigning as errors
the following:

I. THE COURT OF APPEALS GRAVELY ERRED IN NOT FINDING

improvement or improved version of the latter thereby making both substances still

THAT ALBENDAZOLE, THE ACTIVE INGREDIENT IN TRYCOS

substantially the same.

With respect to the award of actual damages in favor of private respondent in the

"IMPREGON" DRUG, IS INCLUDED IN PETITIONERS LETTERS

PATENT NO. 14561, AND THAT CONSEQUENTLY TRYCO IS
ANSWERABLE FOR PATENT INFRINGEMENT.
II. THE COURT OF APPEALS GRAVELY ERRED IN AWARDING TO
PRIVATE RESPONDENT TRYCO PHARMA CORPORATION
P330,000.00 ACTUAL DAMAGES AND P100,000.00 ATTORNEYS
FEES.
Petitioner argues that under the doctrine of equivalents for determining patent

amount of P330,000.00 representing lost profits, petitioner assails the same as highly
speculative and conjectural, hence, without basis. It assails too the award
of P100,000.00 in attorneys fees as not falling under any of the instances
enumerated by law where recovery of attorneys fees is allowed.
In its Comment,14 private respondent contends that application of the doctrine of
equivalents would not alter the outcome of the case, Albendazole and methyl 5
propylthio-2-benzimidazole carbamate being two different compounds with different

infringement, Albendazole, the active ingredient it alleges was appropriated by

chemical and physical properties. It stresses that the existence of a separate U.S.

private respondent for its drug Impregon, is substantially the same as methyl 5

patent for Albendazole indicates that the same and the compound in Letters Patent

propylthio-2-benzimidazole carbamate covered by its patent since both of them are

No. 14561 are different from each other; and that since it was on account of a

meant to combat worm or parasite infestation in animals. It cites the "unrebutted"

divisional application that the patent for methyl 5 propylthio-2-benzimidazole

testimony of its witness Dr. Godofredo C. Orinion (Dr. Orinion) that the chemical

carbamate was issued, then, by definition of a divisional application, such a

formula in Letters Patent No. 14561 refers to the compound Albendazole. Petitioner

compound is just one of several independent inventions alongside Albendazole under

adds that the two substances substantially do the same function in substantially the

petitioners original patent application.

As has repeatedly been held, only questions of law may be raised in a petition for

same way to achieve the same results, thereby making them truly identical. Petitioner
thus submits that the appellate court should have gone beyond the literal wordings
used in Letters Patent No. 14561, beyond merely applying the literal infringement
test, for in spite of the fact that the word Albendazole does not appear in petitioners

review on certiorari before this Court. Unless the factual findings of the appellate
court are mistaken, absurd, speculative, conjectural, conflicting, tainted with grave
abuse of discretion, or contrary to the findings culled by the court of origin,15 this

letters patent, it has ably shown by evidence its sameness with methyl 5 propylthio-

Court does not review them.

From an examination of the evidence on record, this Court finds nothing infirm in

2-benzimidazole carbamate.
Petitioner likewise points out that its application with the Philippine Patent Office on

the appellate courts conclusions with respect to the principal issue of whether

account of which it was granted Letters Patent No. 14561 was merely a divisional

private respondent committed patent infringement to the prejudice of petitioner.

The burden of proof to substantiate a charge for patent infringement rests on the

application of a prior application in the U. S. which granted a patent for Albendazole.

Hence, petitioner concludes that both methyl 5 propylthio-2-benzimidazole
carbamate and the U.S.-patented Albendazole are dependent on each other and
mutually contribute to produce a single result, thereby making Albendazole as much
a part of Letters Patent No. 14561 as the other substance is.
Petitioner concedes in its Sur-Rejoinder13 that although methyl 5 propylthio-2benzimidazole carbamate is not identical with Albendazole, the former is an

plaintiff.16 In the case at bar, petitioners evidence consists primarily of its Letters
Patent No. 14561, and the testimony of Dr. Orinion, its general manager in the
Philippines for its Animal Health Products Division, by which it sought to show that
its patent for the compound methyl 5 propylthio-2-benzimidazole carbamate also
covers the substance Albendazole.
From a reading of the 9 claims of Letters Patent No. 14561 in relation to the other
portions thereof, no mention is made of the compound Albendazole. All that the

claims disclose are: the covered invention, that is, the compound methyl 5

though it performs the same function and achieves the same result.20 In other

propylthio-2-benzimidazole carbamate; the compounds being anthelmintic but

words, the principle or mode of operation must be the same or substantially the

nontoxic for animals or its ability to destroy parasites without harming the host

same.21
The doctrine of equivalents thus requires satisfaction of the function-means-and-

animals; and the patented methods, compositions or preparations involving the

compound to maximize its efficacy against certain kinds of parasites infecting
specified animals.
When the language of its claims is clear and distinct, the patentee is bound thereby
and may not claim anything beyond them.17 And so are the courts bound which may
not add to or detract from the claims matters not expressed or necessarily implied,
nor may they enlarge the patent beyond the scope of that which the inventor claimed
and the patent office allowed, even if the patentee may have been entitled to
something more than the words it had chosen would include.18
It bears stressing that the mere absence of the word Albendazole in Letters Patent

result test, the patentee having the burden to show that all three components of such
equivalency test are met.22
As stated early on, petitioners evidence fails to explain how Albendazole is in every
essential detail identical to methyl 5 propylthio-2-benzimidazole carbamate. Apart
from the fact that Albendazole is an anthelmintic agent like methyl 5 propylthio-2benzimidazole carbamate, nothing more is asserted and accordingly substantiated
regarding the method or means by which Albendazole weeds out parasites in
animals, thus giving no information on whether that method is substantially the same
as the manner by which petitioners compound works. The testimony of Dr. Orinion

No. 14561 is not determinative of Albendazoles non-inclusion in the claims of the

lends no support to petitioners cause, he not having been presented or qualified as an

patent. While Albendazole is admittedly a chemical compound that exists by a name

expert witness who has the knowledge or expertise on the matter of chemical

different from that covered in petitioners letters patent, the language of Letter Patent

compounds.
As for the concept of divisional applications proffered by petitioner, it comes into

No. 14561 fails to yield anything at all regarding Albendazole. And no extrinsic
evidence had been adduced to prove that Albendazole inheres in petitioners patent in
spite of its omission therefrom or that the meaning of the claims of the patent
embraces the same.
While petitioner concedes that the mere literal wordings of its patent cannot establish

play when two or more inventions are claimed in a single application but are of such
a nature that a single patent may not be issued for them.23 The applicant thus is
required "to divide," that is, to limit the claims to whichever invention he may elect,
whereas those inventions not elected may be made the subject of separate

private respondents infringement, it urges this Court to apply the doctrine of

applications which are called "divisional applications."24What this only means is that

equivalents.
The doctrine of equivalents provides that an infringement also takes place when a

petitioners methyl 5 propylthio-2-benzimidazole carbamate is an invention distinct

device appropriates a prior invention by incorporating its innovative concept and,

although with some modification and change, performs substantially the same
function in substantially the same way to achieve substantially the same result.19 Yet

from the other inventions claimed in the original application divided out,
Albendazole being one of those other inventions. Otherwise, methyl 5 propylthio-2benzimidazole carbamate would not have been the subject of a divisional application

again, a scrutiny of petitioners evidence fails to convince this Court of the

if a single patent could have been issued for it as well as Albendazole.1wphi1

The foregoing discussions notwithstanding, this Court does not sustain the award of

substantial sameness of petitioners patented compound and Albendazole. While both

actual damages and attorneys fees in favor of private respondent. The claimed actual

compounds have the effect of neutralizing parasites in animals, identity of result does

damages of P330,000.00 representing lost profits or revenues incurred by private

not amount to infringement of patent unless Albendazole operates in substantially the

respondent as a result of the issuance of the injunction against it, computed at the rate

same way or by substantially the same means as the patented compound, even

of 30% of its alleged P100,000.00 monthly gross sales for eleven months, were

supported by the testimonies of private respondents President25 and Executive Vice-

The primary purpose of the patent system is not the reward of the individual but the

President that the average monthly sale of Impregon wasP100,000.00 and that sales

advancement of the arts and sciences. The function of a patent is to add to the sum of

26

plummeted to zero after the issuance of the injunction. While indemnification for

useful knowledge and one of the purposes of the patent system is to encourage

actual or compensatory damages covers not only the loss suffered (damnum

dissemination of information concerning discoveries and inventions. This is a matter

emergens) but also profits which the obligee failed to obtain (lucrum cessans or

which is properly within the competence of the Patent Office the official action of

ganacias frustradas), it is necessary to prove the actual amount of damages with a

which has the presumption of correctness and may not be interfered with in the

reasonable degree of certainty based on competent proof and on the best evidence

absence of new evidence carrying thorough conviction that the Office has erred.

27

obtainable by the injured party. The testimonies of private respondents officers are

Since the Patent Office is an expert body preeminently qualified to determine

not the competent proof or best evidence obtainable to establish its right to actual or

questions of patentability, its findings must be accepted if they are consistent with the

compensatory damages for such damages also require presentation of documentary

evidence, with doubts as to patentability resolved in favor of the Patent Office. 1

Petitioner Angelita Manzano filed with the Philippine Patent Office on 19 February

evidence to substantiate a claim therefor.28

In the same vein, this Court does not sustain the grant by the appellate court of

1982 an action for the cancellation of Letters Patent No. UM-4609 for a gas burner

attorneys fees to private respondent anchored on Article 2208 (2) of the Civil Code,

registered in the name of respondent Melecia Madolaria who subsequently assigned

private respondent having been allegedly forced to litigate as a result of petitioners

the letters patent to New United Foundry and Manufacturing Corporation (UNITED

suit. Even if a claimant is compelled to litigate with third persons or to incur

FOUNDRY, for brevity). Petitioner alleged that (a) the utility model covered by the

expenses to protect its rights, still attorneys fees may not be awarded where no

letters patent, in this case, an LPG gas burner, was not inventive, new or useful; (b)

sufficient showing of bad faith could be reflected in a partys persistence in a case

the specification of the letters patent did not comply with the requirements of Sec.

other than an erroneous conviction of the righteousness of his cause.29 There exists

14, RA No. 165, as amended; (c) respondent Melecia Madolaria was not the original,

no evidence on record indicating that petitioner was moved by malice in suing

true and actual inventor nor did she derive her rights from the original, true and

private respondent.
This Court, however, grants private respondent temperate or moderate damages in

actual inventor of the utility model covered by the letters patent; and, (d) the letters

the amount of P20,000.00 which it finds reasonable under the circumstances, it

having suffered some pecuniary loss the amount of which cannot, from the nature of
the case, be established with certainty.30
WHEREFORE, the assailed decision of the Court of Appeals is hereby AFFIRMED
with MODIFICATION. The award of actual or compensatory damages and
attorneys fees to private respondent, Tryco Pharma Corporation, is DELETED;
instead, it is hereby awarded the amount of P20,000.00 as temperate or moderate

patent was secured by means of fraud or misrepresentation. In support of her petition

for cancellation petitioner further alleged that (a) the utility model covered by the
letters patent of respondent had been known or used by others in the Philippines for
more than one (1) year before she filed her application for letters patent on 9
December 1979; (b) the products which were produced in accordance with the utility
model covered by the letters patent had been in public use or on sale in the
Philippines for more than one (1) year before the application for patent therefor was

damages. SO ORDERED.

filed.
Petitioner presented the following documents which she correspondingly marked as

ANGELITA MANZANO, petitioner, vs. COURT OF APPEALS, and MELECIA

exhibits: (a) affidavit of petitioner alleging the existence of prior art, marked Exh.

MADOLARIA, as Assignor to NEW UNITED FOUNDRY MANUFACTURING

"A;" (b) a brochure distributed by Manila Gas Corporation disclosing a pictorial

CORPORATION, respondents.

representation of Ransome Burner made by Ransome Torch and Burner Company,

USA, marked Exh. "D;" and, (c) a brochure distributed by Esso Gasul or Esso

Private respondent, on the other hand, presented only one witness, Rolando

Standard Eastern, Inc., of the Philippines showing a picture of another similar burner

Madolaria, who testified, among others, that he was the General Supervisor of the

with top elevation view and another perspective view of the same burner, marked

UNITED FOUNDRY in the foundry, machine and buffing section; that in his early

Exh. "E."
Testifying for herself petitioner narrated that her husband Ong Bun Tua worked as a

years with the company, UNITED FOUNDRY was engaged in the manufacture of

helper in the UNITED FOUNDRY where respondent Melecia Madolaria used to be

affiliated with from 1965 to 1970; that Ong helped in the casting of an LPG burner
which was the same utility model of a burner for which Letters Patent No. UM-4609
was issued, and that after her husband's separation from the shop she organized
Besco Metal Manufacturing (BESCO METAL, for brevity) for the casting of LPG
burners one of which had the configuration, form and component parts similar to
those being manufactured by UNITED FOUNDRY. Petitioner presented in evidence
an alleged model of an LPG burner marked Exh. "K" and covered by the Letters
Patent of respondent, and testified that it was given to her in January 1982 by one of
her customers who allegedly acquired it from UNITED FOUNDRY. Petitioner also
presented in evidence her own model of an LPG burner called "Ransome" burner
marked Exh. "L," which was allegedly manufactured in 1974 or 1975 and sold by her
in the course of her business operation in the name of BESCO METAL. Petitioner

different kinds of gas stoves as well as burners based on sketches and specifications
furnished by customers; that the company manufactured early models of single-piece
types of burners where the mouth and throat were not detachable; that in the latter
part of 1978 respondent Melecia Madolaria confided in him that complaints were
being brought to her attention concerning the early models being manufactured; that
he was then instructed by private respondent to cast several experimental models
based on revised sketches and specifications; that private respondent again made
some innovations; that after a few months, private respondent discovered the solution
to all the defects of the earlier models and, based on her latest sketches and
specifications, he was able to cast several models incorporating the additions to the
innovations introduced in the models. Various tests were conducted on the latest
model in the presence and under the supervision of Melecia Madolaria and they
obtained perfect results. Rolando Madolaria testified that private respondent decided

claimed that this "Ransome" burner (Exh. "L") had the same configuration and

to file her application for utility model patent in December 1979.

On 7 July 1986 the Director of Patents Cesar C. Sandiego issued Decision No. 86-56

mechanism as that of the model which was patented in favor of private respondent

denying the petition for cancellation and holding that the evidence of petitioner was

Melecia Madolaria. Also presented by petitioner was a burner cup of an imported

not able to establish convincingly that the patented utility model of private

"Ransome" burner marked Exh "M" which was allegedly existing even before the

respondent was anticipated. Not one of the various pictorial representations of

patent application of private respondent.

Petitioner presented two (2) other witnesses, namely, her husband Ong Bun Tua and

business clearly and convincingly showed that the devices presented by petitioner

Fidel Francisco. Ong testified that he worked as a helper in the UNITED FOUNDRY
from 1965 to 1970 where he helped in the casting of LPG burners with the same
form, configuration and mechanism as that of the model covered by the Letters
Patent issued to private respondent. Francisco testified that he had been employed
with the Manila Gas Corporation from 1930 to 1941 and from 1952 up to 1969
where he retired as supervisor and that Manila Gas Corporation imported "Ransome"
burners way back in 1965 which were advertised through brochures to promote their
sale.

was identical or substantially identical with the utility model of the respondent. The
decision also stated that even assuming that the brochures depicted clearly each and
every element of the patented gas burner device so that the prior art and patented
device became identical although in truth they were not, they could not serve as
anticipatory bars for the reason that they were undated. The dates when they were
distributed to the public were not indicated and, therefore, were useless prior art
references. The records and evidence also do not support the petitioner's contention
that Letters Patent No. UM-4609 was obtained by means of fraud and/or

misrepresentation. No evidence whatsoever was presented by petitioner to show that

Esso Standard Eastern, Inc., are undated cannot overcome the fact of their circulation

the then applicant Melecia Madolaria withheld with intent to deceive material facts

before private respondent filed her application for utility model patent. Petitioner

which, if disclosed, would have resulted in the refusal by the Philippine Patent Office

thus asks this Court to take judicial notice of the fact that Esso Standard Eastern,

to issue the Letters Patent under inquiry.

Petitioner elevated the decision of the Director of Patents to the Court of Appeals

Inc., disappeared before 1979 and reappeared only during the Martial Law years as

which on 15 October 1993 affirmed the decision of the Director of Patents. Hence,
this petition for review on certiorari alleging that the Court of Appeals erred (a) in
relying on imaginary differences which in actuality did not exist between the model

Petrophil Corporation. Petitioner also emphasizes that the brochures indicated the
telephone number of Manila Gas Corporation as 5-79-81 which is a five (5)
numbered telephone number existing before 1975 because telephones in Metro

of private respondent covered by Letters Patent No. UM-4609 and the previously

Manila started to have six (6) numbers only after that year.
Petitioner further contends that the utility model of private respondent is absolutely

known model of Esso Standard Eastern, Inc., and Manila Gas Corporation, making

similar to the LPG burner being sold by petitioner in 1975 and 1976, and also to the

such imaginary differences grounded entirely on speculation, surmises and

"Ransome" burner depicted in the old brochures of Manila Gas Corporation and Esso

conjectures; (b) in rendering judgment based on misapprehension of facts; (c) in

Standard Eastern, Inc., fabricated by Ransome Torch and Burner Company of

relying mainly on the testimony of private respondent's sole witness Rolando

Oakland, California, USA, especially when considered through actual physical

Madolaria; and, (d) in not cancelling Letters Patent No. UM-4609 in the name of

examination, assembly and disassembly of the models of petitioner and private

private respondent.
Petitioner submits that the differences cited by the Court of Appeals between the

respondent. Petitioner faults the Court of Appeals for disregarding the testimonies of

utility model of private respondent and the models of Manila Gas Corporation and
Esso Standard Eastern, Inc., are more imaginary than real. She alleges that based on
Exhs. "E," "E-1," "F" and "F-1" or the brochures of Manila Gas Corporation and

Ong Bun Tua and Fidel Francisco for their failure to produce documents on the
alleged importation by Manila Gas Corporation of "Ransome" burners in 1965 which
had the same configuration, form and mechanism as that of the private respondent's

Esso Standard Eastern, Inc., presented by petitioner, the cup-shaped burner mouth

patented model.
Finally, it is argued that the testimony of private respondent's lone witness Rolando

and threaded hole on the side are shown to be similar to the utility model of private

Madolaria should not have been given weight by the Patent Office and the Court of

respondent. The exhibits also show a detachable burner mouth having a plurality of

Appeals because it contained mere after-thoughts and pretensions.

We cannot sustain petitioner. Section 7 of RA No. 165, as amended, which is the law

upwardly existing undulations adopted to act as gas passage when the cover is
attached to the top of said cup-shaped mouth all of which are the same as those in the
patented model. Petitioner also denies as substantial difference the short cylindrical
tube of the burner mouth appearing in the brochures of the burners being sold by
Manila Gas Corporation and the long cylindered tube of private respondent's model
of the gas burner.
Petitioner argues that the actual demonstration made during the hearing disclosed the

on patents, expressly provides

Sec. 7. Inventians patentable. Any invention of a new and useful machine,
manufactured product or substance, process or an improvement of any of
the foregoing, shall be patentable.
Further, Sec. 55 of the same law provides
Sec. 55. Design patents and patents for utility models. (a) Any new,
original and ornamental design for an article of manufacture and (b) any

similarities in form, operation and mechanism and parts between the utility model of

new model of implements or tools or of any industrial product or of part of

private respondent and those depicted in the brochures. The findings of the Patent

the same, which does not possess the quality of invention, but which is of

Office and the Court of Appeals that the brochures of Manila Gas Corporation and

practical utility by reason of its form, configuration, construction or

composition, may be protected by the author thereof, the former by a patent

identical or substantially identical in construction with the aforesaid utility

for a design and the latter by a patent for a utility model, in the same

model. It is relevant and material to state that in determining whether

manner and subject to the same provisions and requirements as relate to

novelty or newness is negatived by any prior art, only one item of the prior

patents for inventions insofar as they are applicable except as otherwise

art may be used at a time. For anticipation to occur, the prior art must show

herein provided.
The element of novelty is an essential requisite of the patentability of an invention or
discovery. If a device or process has been known or used by others prior to its
invention or discovery by the applicant, an application for a patent therefor should be

that each element is found either expressly or described or under principles

of inherency in a single prior art reference or that the claimed invention was
probably known in a single prior art device or practice. (Kalman v.

denied; and if the application has been granted, the court, in a judicial proceeding in

Kimberly Clark, 218 USPQ 781, 789)

Even assuming gratia arguendi that the aforesaid brochures do depict

which the validity of the patent is drawn in question, will hold it void and

clearly on all fours each and every element of the patented gas burner

ineffective. 2 It has been repeatedly held that an invention must possess the essential

device so that the prior art and the said patented device become identical,

elements of novelty, originality and precedence, and for the patentee to be entitled to

although in truth they are not, they cannot serve as anticipatory bars for the

the protection the invention must be new to the world.

In issuing Letters Patent No. UM-4609 to Melecia Madolaria for an "LPG Burner"
on 22 July 1981, the Philippine Patent Office found her invention novel and
patentable. 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. 4 Hence, a utility model shall not be considered "new" if before the
application for a patent it has been publicly known or publicly used in this country or
has been described in a printed publication or publications circulated within the
country, or if it is substantially similar to any other utility model so known, used or

reason that they are undated. The dates when they were distributed to the
public were not indicated and, therefore, they are useless prior art
references.
xxx xxx xxx
Furthermore, and more significantly, the model marked Exh. "K" does not
show whether or not it was manufactured and/or cast before the application
for the issuance of patent for the LPG burner was filed by Melecia
Madolaria.
With respect to Exh. "L," petitioner claimed it to be her own model of LPG
burner allegedly manufactured sometime in 1974 or 1975 and sold by her in
the course of her business operation in the name of Besco Metal

described within the country. 5

As found by the Director of Patents, the standard of evidence sufficient to overcome

Manufacturing, which burner was denominated as "Ransome" burner

xxx xxx xxx
But a careful examination of Exh. "L" would show that it does not bear the

the presumption of legality of the issuance of UM-4609 to respondent Madolaria was

word "Ransome" which is the burner referred to as the product being sold

not legally met by petitioner in her action for the cancellation of the patent. Thus the

by the Petitioner. This is not the way to prove that Exh. "L" anticipates

Director of Patents explained his reasons for the denial of the petition to cancel

Letters Patent No. UM-4609 through Exhs. "C" and "D." Another factor

private respondent's patent

Scrutiny of Exhs. "D" and "E" readily reveals that the utility model (LPG

working against the Petitioner's claims is that an examination of Exh. "L"

Burner) is not anticipated. Not one of the various pictorial representations of

burners clearly and convincingly show that the device presented therein is

would disclose that there is no indication of the time or date it was

manufactured. This Office, thus has no way of determining whether Exh.
"L" was really manufactured before the filing of the aforesaid application

which matured into Letters Patent No. UM-4609, subject matter of the

substantial evidence. Petitioner has failed to show compelling grounds for a reversal

cancellation proceeding.
At this juncture, it is worthwhile to point out that petitioner also presented

of the findings and conclusions of the Patent Office and the Court of Appeals.
The alleged failure of the Director of Patents and the Court of Appeals to accord

Exh. "M" which is the alleged burner cup of an imported "Ransome" burner.

evidentiary weight to the testimonies of the witnesses of petitioner showing

Again, this Office finds the same as unreliable evidence to show

anticipation is not a justification to grant the petition. Pursuant to the requirement of

anticipation. It observed that there is no date indicated therein as to when it

clear and convincing evidence to overthrow the presumption of validity of a patent, it

was manufactured and/or imported before the filing of the application for

has been held that oral testimony to show anticipation is open to suspicion and if

issuance of patent of the subject utility model. What is more, some

uncorroborated by cogent evidence, as what occurred in this case, it may be held

component parts of Exh. "M" are missing, as only the cup was presented so

insufficient. 9
Finally, petitioner would want this Court to review all over again the evidence she

that the same could not be compared to the utility model (subject matter of
this case) which consists of several other detachable parts in combination to
form the complete LPG burner.
xxx xxx xxx
It must likewise be pointed out that Ong Bun Tua testified on the brochures

presented before the Patent Office. She argues that contrary to the decision of the
Patent Office and the Court of Appeals, the evidence she presented clearly proves
that the patented model of private respondent is no longer new and, therefore, fraud

allegedly of Manila Gas and of Esso Gasul marked Exhs. "E" and "F" and

attended the acquisition of patent by private respondent.

It has been held that the question on priority of invention is one of fact. Novelty and

on the alleged fact that Manila Gas Corporation was importing from the

utility are likewise questions of fact. The validity of patent is decided on the basis of

United States "Ransome" burners. But the same could not be given credence

factual inquiries. Whether evidence presented comes within the scope of prior art is a

since he himself admitted during cross-examination that he has never been

factual issue to be resolved by the Patent Office. 10 There is question of fact when the

connected with Manila Gas Corporation. He could not even present any

doubt or difference arises as to the truth or falsehood of alleged facts or when the

importation papers relating to the alleged imported ransome burners.

query necessarily invites calibration of the whole evidence considering mainly the

Neither did his wife. 6

The above findings and conclusions of the Director of Patent were reiterated and
affirmed by the Court of Appeals. 7
The validity of the patent issued by the Philippine Patent Office in favor of private
respondent and the question over the inventiveness, novelty and usefulness of the
improved model of the LPG burner are matters which are better determined by the
Patent Office. The technical staff of the Philippine Patent Office composed of experts
in their field has by the issuance of the patent in question accepted private

credibility of witnesses, existence and relevance of specific surrounding

circumstances, their relation to each other and to the whole and the probabilities of
the situation. 11
Time and again we have held that it is not the function of the Supreme Court to
analyze or weigh all over again the evidence and credibility of witnesses presented
before the lower tribunal or office. The Supreme Court is not a trier of facts. Its
jurisdiction is limited to reviewing and revising errors of law imputed to the lower

respondent's model of gas burner as a discovery. There is a presumption that the

court, its findings of fact being conclusive and not reviewable by this Court.
WHEREFORE, the Petition is DENIED. The Decision of the Court of Appeals

Office has correctly determined the patentability of the model 8 and such action must

affirming that of the Philippine Patent Office is AFFIRMED. Costs against petitioner.

not be interfered with in the absence of competent evidence to the contrary.

The rule is settled that the findings of fact of the Director of Patents, especially when

SO ORDERED.

affirmed by the Court of Appeals, are conclusive on this Court when supported by

ROSARIO C. MAGUAN (formerly ROSARIO C. TAN), petitioner, vs. THE

of First Instance of Rizal, Pasig Branch, docketed as Civil Case No. 19908, for

HONORABLE COURT OF APPEALS and SUSANA LUCHAN, respondents.

Petitioner is doing business under the firm name and style of SWAN

infringing the aforesaid letters patent, and prayed, among others, that a writ of

MANUFACTURING" while private respondent is likewise doing business under the

preliminary injunction be immediately issued (Complaint, Rollo, p. 90).

In her answer, private respondent alleged that the products she is manufacturing and

firm name and style of "SUSANA LUCHAN POWDER PUFF

offering for sale are not Identical, or even only substantially Identical to the products

MANUFACTURING."
It is undisputed that petitioner is a patent holder of powder puff namely:
1. UM-423 (extended and/or renewed under Extension No. UM-109 for a period of 5

covered by petitioner's patents and, by way of affirmative defenses, further alleged

years from October 6, 1971)

2. UM-450 (extended and/or renewed under Extension No. UM110 for a period of 5
years from January 26, 1972)
3. UM 1184, for a period of 5years fromApril 5, 1974.(Petition, Rollo, pp. 6-7).
In a letter dated July 10, 1974 (Annex "D", Rollo, p. 86), petitioner informed private
respondent that the powder puffs the latter is manufacturing and selling to various
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

that petitioner's patents in question are void on the following grounds:

(1) at the time of filing of application for the patents involved, the utility models
applied for were not new and patentable under Sec. 55 of R.A. 165, as amended by
R.A. 864; and
(2) the person to whom the patents were issued was not the true and actual author of
the utility models applied for, and neither did she derive her rights from any true and
actual author of these utility models.
for the following reasons:
(a) since years prior to the filing of applications for the patents involved, powder
puffs of the kind applied for were then already existing and publicly being sold in the

Model No. 1184; petitioner explained such production and sale constitute

market; both in the Philippines and abroad; and

(b) applicant's claims in her applications, of "construction" or process of

infringement of said patents and therefore its immediate discontinuance is demanded,

manufacturing the utility models applied for, with respect to UM-423 and UM-450,

otherwise it will be compelled to take judicial action. (Rollo, pp. 7-8).

Private respondent replied stating that her products are different and countered that

were but a complicated and impractical version of an old, simple one which has been

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. (Taken from allegations
in the Answer, par. 4, Rollo, p. 93). And on July 25, 1974, private respondent assailed
the validity of the patents involved and filed with the Philippine Patent Office

well known to the cosmetics industry since years previous to her filing of
applications, and which belonged to no one except to the general public; and with
respect to UM1184; her claim in her application of a unitary powder puff, was but an
limitation of a product well known to the cosmetics industry since years previous to
her firing of application, and which belonged to no one except to the general public;

petitions for cancellation of (1) Utility Model Letter Patent Extension No. UM-109

(Answer, Rollo, pp. 93-94).

On September 18, 1974, the trial court issued an Order (Annex "K", Rollo, p. 125)

(Inter Partes Case No. 838, Susana Luchan v. Rosario C. Tan), (2) Utility Model

granting the preliminary injunction prayed for by petitioner. Consequently, the

Letters Patent No. UM-1184 (Inter Partes Case No. 839, Susana Luchan v. Rosario

corresponding writ was subsequently issued (Annex "K-1", Rollo, p. 131) enjoining

C. Tan), (3) Utility Model Letters Patent Extension No. UM-110 (Inter Partes Case

the herein private respondent (then defendant) and all other persons employed by her,

No. 840, Susana Luchan v. Rosario C. Tan. (Taken from allegations in the Answer,

her agents, servants and employees from directly or indirectly manufacturing,

par. 10, Rollo, pp. 94-95).

In view thereof, petitioner, on August 24, 1974, filed a complaint for damages with

making or causing to be made, selling or causing to be sold, or using or causing to be

injunction and preliminary injunction against private respondent with the then Court

used in accordance with, or embodying the utility models of the Philippine Patent

Office Utility Model Letters Patent Nos. 423 (Extension No. UM-109), No. 450

ln said decision respondent court stated that in disposing of the petition it tackled

(Extension No. UM-110), and Utility Model No. 1184 or from infringement upon or

only the issue of whether the court a quo acted with grave abuse of discretion in

violating said letters patent in any way whatsoever (Annex " K-1 ", Rollo, p. 131).
Private respondent questioned the propriety of the trial court's issuance of the Writ of

issuing the challenged orders. It made clear the question of whether the patents have

Preliminary Injunction arguing that since there is still a pending cancellation

proceedings before the Philippine Patent Office concerning petitioner's patents, such
cannot be the basis for preliminary injunction (Motion for Reconsideration, Rollo, p.
132).
In an Order dated September 11, 1975, the trial court denied private respondent's

been infringed or not was not determined considering the court a quohas yet to
decide the case on the merits (Ibid., p. 186).
Feeling aggrieved, private respondent moved to reconsider the afore-mentioned
Decision based on the following grounds:
I THAT THIS HONORABLE COURT ERRED IN NOT APPRECIATING THE
EXISTENCE OF A FAIR QUESTION OF INVALIDITY OF PRIVATE

motion for reconsideration (Annex "N", Rollo, p. 142).

In challenging these Orders private respondent filed a petition for certiorari with the

RESPONDENT'S PATENTS.
II THAT THIS HONORABLE COURT ERRED IN NOT REJECTING THE

respondent court on September 29, 1975 (Annex "D", Rollo, pp. 148-171) reiterating

THEORY OF RESPONDENT JUDGE THAT HE HAS NO JURISDICTION TO

among other things the invalidity of petitioner's patents and prayed that the trial court

INVALIDATE THE PATENTS UPON GROUND OF LACK OF NOVELTY OF

be restrained from enforcing or continuing to enforce the following:

(1) Order dated September 18, 1974, granting the preliminary injunction;
(2) Writ of preliminary injunction dated September 18, 1974; and
(3) Order dated September 11, 1974 denying petitioner's motion petition for

THE PRODUCTS PATENTED. (Motion for Reconsideration, Rollo, p. 190).

Reviewing on reconsideration, respondent court gave weight to private respondent's

reconsideration.
On October 15, 1975, the Writ of Preliminary Injunction was issued by the
respondent Court of Appeals as follows:
NOW, THEREFORE, you, respondents, and/or any person/persons
acting on your stead, are hereby ENJOINED to RESTRAIN from
enforcing or continuing to enforce, the proceedings complained of
in the petition to wit: 1) Order dated September 18, 1974, granting
the preliminary injunction; 2) Writ of Preliminary Injunction dated
September 18, 1974; and Order dated September 11, 1975, denying
petitioner's motion for reconsideration, all issued in connection
with Civil Case No. 19908, UNTIL FURTHER ORDERS FROM
THIS COURT. (Annex "P", Rollo, p. 1.73)
On February 16, 1976, respondent court promulgated a decision the dispositive
portion of which reads:
WHEREFORE, finding no merit in the herein petition, the same is
hereby dismissed and the preliminary injunction previously issued
by this Court is hereby set aside, with costs.
SO ORDERED. (CA Decision, Rollo, p. 189).

allegation that the latter's products are not identical or even only substantially
identical to the products covered by petitioner's patents. Said court noticed that
contrary to the lower courts position that the court a quo had no jurisdiction to
determine the question of invalidity of the patents, Section 45 and 46 of the Patent
Law allow the court to make a finding on the validity or invalidity of patents and in
the event there exists a fair question of its invalidity, the situation calls for a denial of
the writ of preliminary injunction pending the evaluation of the evidence presented
(Rollo, pp. 218-226). Thus, finding the lower court's position to have been opposed
to Patent Law, respondent court considered it a grave abuse of discretion when the
court a quo issued the writ being questioned without looking into the defenses
alleged by herein private respondent. Further, it considered the remedy of appeal,
under the circumstances, to be inadequate.
Thus, on July 6, 1976, respondent court made a complete turnabout from its original
decision and promulgated a Resolution, the dispositive portion of which reads:
WHEREFORE, our decision is hereby set aside. The writ of
certiorari is ordered issued. Accordingly, the challenged orders,
Exhibit H and H-1 and the order denying the motion for
reconsideration (Annex "K", Petition), are hereby set aside. The

writ of preliminary injunction previously ordered by this Court and

using, or selling by any person without the authorization of the patentee constitutes

ordered lifted by the Decision now being set aside is hereby

infringement of the patent (Sec. 37, R.A. 165). Any patentee whose rights have been

reinstated and made permanent. Without pronouncement as to

infringed upon may bring an action before the proper CFI now (RTC) and to secure

costs.
SO ORDERED. (CA Resolution, Rollo, p. 226).
In a Resolution dated November 4, 1976, respondent court, not persuaded by the
grounds embodied in the motion for reconsideration filed by herein petitioner
(Annex "V ", Rollo, p. 227), denied the same for lack of merit, thereby maintaining
the same stand it took in its July 6, 1976 Resolution (Rollo, p. 281). Hence, this
petition.
On December 3, 1976, without giving due course to the petition, this Court required

an injunction for the protection of his rights (Sec. 42, R.A. 165). Defenses in an
action for infringement are provided for in Section 45 of the same law which in fact
were availed of by private respondent in this case. Then, as correctly stated by
respondent Court of Appeals, this conclusion is reinforced by Sec. 46 of the same
law which provides that if the Court shall find the patent or any claim thereof invalid,
the Director shall on certification of the final judgment ... issue an order cancelling
the patent or the claims found invalid and shall publish a notice thereof in the

respondent to file her Comment (Rollo, p. 290) which was filed on December 16,

Official Gazette." Upon such certification, it is ministerial on the part of the patent

1976 (Rollo, pp. 291-316). Thereafter, petitioner filed her Reply (Rollo, p. 323) and

office to execute the judgment. (Rollo, pp. 221-222).

II.
The burden of proof to substantiate a charge of infringement is with the plaintiff. But

on May 30, 1977, the petition was given due course (Rollo, p. 345). Petitioner filed
her brief on July 14, 1977 (Rollo, p. 351) while private respondent filed her brief on
August 25, 1977 (Rollo, p. 359). Thereafter, petitioner having failed to file reply
brief, the Court resolved to declare the case submitted for decision on December 9,
1977 (Rollo, p. 359).
The assignment of errors raised by the petitioner in this case (Rollo, pp. 15-16) may
be reduced to three main issues:
(1) Whether or not in an action for infringement the Court a quo had jurisdiction to
determine the invalidity of the patents at issue which invalidity was still pending
consideration in the patent office.
(2) Whether or not the Court a quo committed grave abuse of discretion in the
issuance of a writ of preliminary injunction.
(3) Whether or not certiorari is the proper remedy.
The first issue has been laid to rest in a number of cases where the Court ruled that
"When a patent is sought to be enforced, the questions of invention, novelty or prior
use, and each of them, are open to judicial examination." (Vargas v. F.M. Yaptico &
Co. 40 Phil. 199 [1919]; Vargas v. Chua, 57 Phil. 790-791 [1933]; Frank and Gohn v.

where the plaintiff introduces the patent in evidence, and the same is in due form,
there is created a prima facie presumption of its correctness and validity. The
decision of the Commissioner (now Director) of Patent in granting the patent is
presumed to be correct. The burden of going forward with the evidence (burden of
evidence) then shifts to the defendant to overcome by competent evidence this legal
presumption.
The question then in the instant case is whether or not the evidence introduced by
private respondent herein is sufficient to overcome said presumption.
After a careful review of the evidence consisting of 64 exhibits and oral testimonies
of five witnesses presented by private respondents before the Court of First Instance
before the Order of preliminary injunction was issued as well as those presented by
the petitioner, respondent Court of Appeals was satisfied that there is a prima
facie showing of a fair question of invalidity of petitioner's patents on the ground of
lack of novelty. As pointed out by said appellate court said evidence appeared not to
have been considered at all by the court a quo for alleged lack of jurisdiction, on the

Kosuyana 59 Phil. 207 [1933]).

Under the present Patent Law, there is even less reason to doubt that the trial court

mistaken notion that such question in within the exclusive jurisdiction of the patent

has jurisdiction to declare the patents in question invalid. A patentee shall have the

office.
It has been repeatedly held that an invention must possess the essential elements of

exclusive right to make, use and sell the patented article or product and the making,

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

It will be noted that the validity of petitioner's patents is in question for want of

of the invention by a patentee for more than two years (now for more than one year

novelty. Private respondent contends that powder puffs Identical in appearance with

only under Sec. 9 of the Patent Law) before the date of his application for his patent,

that covered by petitioner's patents existed and were publicly known and used as

will be fatal to, the validity of the patent when issued. (Frank, et al. v. Kosuyama

early as 1963 long before petitioner was issued the patents in question. (List of

Vargas v. F.M. Yaptico & Co. and Vargas v. Chua, et al., supra).
The law provides:
SEC. 9. Invention not considered new or patentable. An

Exhibits, Rollo, pp. 194-199). As correctly observed by respondent Court of Appeals,

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

"since sufficient proofs have been introduced in evidence showing a fair question of
the invalidity of the patents issued for such models, it is but right that the evidence be
looked into, evaluated and determined on the merits so that the matter of whether the
patents issued were in fact valid or not may be resolved." (Rollo, pp. 286-287).
All these notwithstanding, the trial court nonetheless issued the writ of preliminary

printed publication in the Philippines or any foreign country more

injunction which under the circumstances should be denied.

For failure to determine first the validity of the patents before aforesaid issuance of

than one year before the application for a patent therefor; or if it

the writ, the trial court failed to satisfy the two requisites necessary if an injunction is

had been in public use or on sale in the Philippines for more than

to issue, namely: the existence of the right to be protected and the violation of said

one year before the application for a patent therefor; or if it is the

right. (Buayan Cattle Co., Inc. v. Quintillan, 128 SCRA 276).

Under the above established principles, it appears obvious that the trial court

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 (Vargas v. F.M. Yaptico & Co. supra) 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 (8 Deller's Walker on Patents p.
406). 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. (Ibid., p. 402)
In the same manner, under our jurisprudence, as a general rule because of the
injurious consequences a writ of injunction may bring, the right to the relief
demanded must be clear and unmistakable. (Sangki v. Comelec, 21 SCRA 1392;
December 26, 1967) and the dissolution of the writ is proper where applicant has
doubtful title to the disputed property. (Ramos v. C.A., 95 SCRA 359).
III.

committed a grave abuse of discretion which makes certiorari the appropriate

remedy.
As found by respondent Court of Appeals, the injunctive order of the trial court is of
so general a tenor that petitioner may be totally barred from the sale of any kind of
powder puff. Under the circumstances, respondent appellate court is of the view that
ordinary appeal is obviously inadequate. (Rollo, p. 288). A parallel was drawn from a
decision of the Supreme Court in the case of Sanchez v. Hon. Court of Appeals,69
SCRA 328 [1976] where the First Division of the Supreme Court ruled that "The
prerogative writ of certiorari may be applied for by proper petition notwithstanding
the existence of the regular remedy of an appeal in due cause when among other
reasons, the broader interests of justice so require or an ordinary appeal is not an
adequate remedy."
Private respondent maintains the position that the resolutions sought to be appealed
from had long become final and executory for failure of Hon. Reynaldo P. Honrado,
the trial court judge, to appeal by certiorari from the resolutions of respondent Court
of Appeals. (Rollo, pp. 291-292).
Such contention is untenable.

There is no dispute that petitioner has seasonably petitioned. On the other hand, it is

whatever damages the plaintiffs might be able to prove therein. The action therefore

elementary that the trial judge is a mere nominal party as clearly provided in Section

was based upon alleged infringement by the defendant of the rights and privileges

5, Rule 65 of the Revised Rules of Court where it shall be the duty of such person or

acquired by the plaintiffs over the aforesaid patent through the manufacture and sale

persons interested in sustaining the proceedings in court, "to appear and defend, both

by the former of machines similar to that covered by the aforesaid patent.

The plaintiffs appealed from the judgment rendered by the trial court dismissing their

in his or their own behalf and in behalf of the court or judge affected by the
proceedings."
Relative thereto "the judge whose order is under attack is merely a nominal party;
wherefore, a judge in his official capacity should not be made to appear as a party
seeking reversal of a decision that is unfavorable to the action taken by him." (Hon.
Alcasid v. Samson, 102 Phil. 735-736; Tarona v. Sayo, 67 SCRA 508, 524; Lim Se v.
Argel, 70 SCRA 378).
As to petitioner's claim of prescription, private respondent's contention that such

complaint, with cost, as well as the defendant's counterclaim of P10,000. The

defendant did not appeal.
In their amended complaint, the plaintiff alleged that their hemp stripping machines,
for which they obtained a patent, have the following characteristics: "A stripping
head, a horizontal table, a stripping knife supported upon such table, a tappering
spindle, a rest holder adjustably secured on the table portion, a lever and means of
compelling the knife to close upon the table, a pallet or rest in the bottom of the

refers to the filing of petitions for cancellation in the Patent Office under Sec. 28 of

table, a resilient cushion under such palletor rest." In spite of the fact that they filed

the Patent Law and not to a defense against an action for infringement under Sec. 45

an amended complaint from which the "spindle" or conical drum, which was the only

thereof which may be raised anytime, is evident under aforesaid law.

PREMISES CONSIDERED, the assailed resolutions of the Court of Appeals are

characteristic feature of the machine mentioned in the original complaint, was

hereby AFFIRMED. SO ORDERED.

eliminated, the plaintiffs insisted that the said part constitutes the essential difference
between the machine in question and other machines and that it was the principal

PATRICK HENRY FRANK and WILLIAM HENRY GOHN, plaintiffs-

consideration upon which their patent was issued. The said plaintiffs sustained their

appellants, vs. G. KOSUYAMA, defendant-appellee.

Patent No. 1519579 (Exhibit 117) on improvement in hemp stripping machines,

contention on this point even in their printed brief and memorandum filed in this

issued by the United States Patent Office on December 16,1924, and registered in the
Bureau of Commerce and Industry of the Philippine Islands on March 17,1925, was
the origin of this action brought by the plaintiffs herein who prayed that the judgment
be rendered against the defendant, ordering him thereby to refrain immediately from
the manufacture and sale of machines similar to the one covered by the patent: to
render an accounting of the profits realized from the manufacture and sale of the
machines in question; that in case of refusal or failure to render such accounting, the
defendants be ordered to pay the plaintiffs the sum of P60 as profit on each machine
manufactured or sold by him; that upon approval of the required bond, said
defendant be restrained from continuing the manufacture and sale of the same kind
of machines; that after the trial the preliminary injunction issued therein be declared
permanent and, lastly, that the said defendant be sentenced to pay the costs and

appeal.
During the trial, both parties presented voluminous evidence from which the trial
court arrived at the following conclusions:
In constructing their machine the plaintiffs did nothing but improve, to a
certain degree, those that were already in vogue and in actual us in hemp
producing provinces. It cannot be said that they have invented the "spindle"
inasmuch as this was already known since the year 1909 or 1910. Neither it
can be said that they have invented the stripping knife and the contrivance
which controls the movement and pressure thereof on the ground that
stripping knives together with their control sets were already in actual use in
the different stripping machines long before their machine appeared.
Neither can it be said that they invented the fly wheel because that part or
piece thereof, so essential in every machine from time immemorial, was

already known and actually employed in hemp stripping machines such as

noted that Adrian de Icsiar applied for a patent on an invention which resulted in the

those of Riesgo (Exhibit 4-A), Crumb (Exhibit 1-A), Icsiar (Exhibit A-

rejection by the United States Patent Office of the plaintiffs' original application for a

Suzara), Browne (Exhibit 28-A), McFie, etc., all of which were in use for

patent on the so called "spindle" or conical drum which was then in actual use in the

the benefit of hemp long before the appearance of the plaintiffs' machines in

Dringman and Icsiar hemp stripping machines.

Notwithstanding the foregoing facts, the trial court did not decree the annulment of

the market. Much less can it be said that they invented the pedal to raise the
knife in order to allow the hemp to be stripped to pass under it, on the
ground that the use of such contrivance has, likewise, been known since the
invention of the most primitive of hemp stripping machines.
On the other hand, although the plaintiffs alleged in their original complaint

the plaintiffs' patent and the herein defendant-appellee insists that the patent in
question should be declared null and void. We are of the opinion that it would be
improper and untimely to render a similar judgment, in view of the nature of the
action brought by the plaintiffs and in the absence of a cross-complaint to that effect.

that "the principal and important feature of said machine is a spindle upon

For the purposes of this appeal, suffice it to hold that the defendant is not civilly

which the hemp to be stripped is wound in the process of stripping,"

liable for alleged infringement of the patent in question.

In the light of sound logic, the plaintiffs cannot insist that the "spindle" was a

nevertheless, in their amended complaint of March 3, 1928, which was filed

after a portion of the evidence therein had already been submitted and it was
known that the use of the spindle was nothing new, they still made the
allegations appearing in paragraph 3 of their said amended complaint and
reproduced on pages 2,3,4 and 5 hereof, copying the same from the
application which they filed with the United States Patent Office, under
which they obtained their patent in question. The aforesaid application
clearly shows that what they applied for was not a patent for a "pioneer or
primary invention" but only for some "new and useful improvement in
hemp stripping machines."
We have carefully reviewed the evidence presented and have had the opportunity of
ascertaining the truth of the conclusions above stated. We agree with the trial court
that, strictly speaking, the hemp stripping machine of the plaintiffs does not
constitute an invention on the ground that it lacks the elements of novelty, originality
and precedence (48 C.J., sec. 101, p. 97, and 102, p. 98). In fact, before the plaintiffs
herein obtained their patent, they themselves had already publicly used the same kind
of machine for some months, at least, and, various other machines, having in general,
the same characteristics and important parts as that of the said plaintiffs, were known
in the Province of Davao. Machines known as Molo, Riesgo, Crumb, Icsiar, Browne
and McFie were already known in that locality and used by the owners of hemp
plantations before the machine of the plaintiffs came into existence. It may also be

patented invention on the ground that said part of the machine was voluntarily
omitted by them from their application, as evidenced by the photographic copy
thereof (Exhibit 41) wherein it likewise appears that the patent on Improved Hemp
Stripping Machines was issued minus the "spindle" in question. Were we to stress to
this part of the machine, we would be giving the patent obtained by the plaintiffs a
wider range than it actually has, which is contrary to the principles of interpretation
in matters relating to patents.
In support of their claim the plaintiffs invoke the doctrine laid down by this court in
the case of Frank and Gohn vs.Benito (51 Phil., 712), wherein it was held that the
therein defendant really infringed 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 above-cited case, however, cannot be invoked as a
precedent to justify a judgment in favor of the plaintiffs-appellants on the ground that
the facts in one case entirely different from those in the other. In the former case the
defendant did not set up the same special defenses as those alleged by the herein
defendant in his answer and the plaintiffs therein confined themselves to presenting
the patent, or rather a copy thereof, wherein the "spindle" was mentioned, and this
court took for granted 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 question was insistently mentioned in the decision rendered on

and in very rapidly increasing quant ies; that he has complied with the Philippine

appeal as the essential part of the plaintiffs' machine allegedly imitated by the then

statues relating to marking patented tiles sold by him; that the public has in general

defendant. In the case under consideration, it is obvious that the "spindle" is not an

acknowledged the validity of said Patent No. 658, and has respected plaintiff's right

integral part of the machine patented by the plaintiffs on the ground that it was

therein and thereunder; that the defendant Domiciano A. Aguas infringed Letters of

eliminated from their patent inasmuch as it was expressly excluded in their

Patent No. 658 by making, using and selling tiles embodying said patent invention

application, as evidenced by the aforesaid Exhibit 41.

Wherefore, reiterating that the defendant cannot be held civilly liable for alleged

and that defendant F. H. Aquino & Sons is guilty of infringement by making and

infringement of the patent upon which the present action is based on the ground that
there is no essential part of the machine manufactured and sold by him, which was
unknown to the public in the Province of Davao at the time the plaintiffs applied for
and obtained their patent for improved hemp stripping machines, the judgment
appealed from is hereby affirmed, with the costs against the plaintiffs-appellants. So
ordered.

furnishing to the defendant Domiciano A. Aguas the engravings, castings and devices
designed and intended of tiles embodying plaintiff;s patented invention; that he has
given direct and personal notice to the defendants of their said acts of infringement
and requested them to desist, but nevertheless, defendants have refused and
neglected to desist and have disregarded such request, and continue to so infringe
causing great and irreparable damage to plaintiff; that if the aforesaid infringement is
permitted to continue, further losses and damages and irreparable injury will be

DOMICIANO A. AGUAS, petitioner, vs. CONRADO G. DE LEON and COURT

sustained by the plaintiff; that there is an urgent need for the immediate issuance of a

OF APPEALS, respondents.
On April 14, 1962, Conrado G. de Leon filed in the Court of First Instance of Rizal at

preliminary injunction; that as a result of the defendants' wrongful conduct, plaintiff

Quezon City a complaint for infringement of patent against Domiciano A. Aguas and
F. H. Aquino and Sons alleging that being the original first and sole inventor of
certain new and useful improvements in the process of making mosaic pre-cast tiles,
he lawfully filed and prosecuted an application for Philippine patent, and having
complied in all respects with the statute and the rules of the Philippine Patent Office,
Patent No. 658 was lawfully granted and issued to him; that said invention was new,
useful, not known or used by others in this country before his invention thereof, not
patented or described in any printed publication anywhere before his invention
thereof, or more than one year prior to his application for patent thereof, not patented
in any foreign country by him or his legal representatives on application filed more
than one year prior to his application in this country; that plaintiff has the exclusive
license to make, use and sell throughout the Philippines the improvements set forth
in said Patent No. 658; that the invention patented by said Patent No. 658 is of great
utility and of great value to plaintiff and of great benefit to the public who has
demanded and purchased tiles embodying the said invention in very large quantities

has suffered and the defendants are liable to pay him, in addition to actual damages
and loss of profits which would be determined upon proper accounting, moral and
exemplary or corrective damages in the sum of P90,000.00; that plaintiff has been
compelled to go to court for the protection and enforcement of his and to engage the
service of counsel, thereby incurring attorney's fees and expenses of litigation in the
sum of P5,000.00. 2
On April 14, 1962, an order granting the plaintiff's petition for a Writ of Preliminary
Injunction was issued. 3
On May 23, 1962, the defendant Domiciano A. Aguas filed his answer denying the
allegations of the plaintiff and alleging that: the plaintiff 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 in the Philippines and
abroad years before the alleged invention by de Leon; that Letters Patent No. 658
was unlawfully acquired by making it appear in the application in relation thereto
that the process is new and that the plaintiff is the owner of the process when in truth
and in fact the process incorporated in the patent application has been known and
used in the Philippines by almost all tile makers long before the alleged use and

registration of patent by plaintiff Conrado G. de Leon; that the registration of the

alleged invention did not confer any right on the plaintiff because the registration
was unlawfully secured and was a result of the gross misrepresentation on the part of
the plaintiff that his alleged invention is a new and inventive process; that the
allegation of the plaintiff that Patent No. 658 is of great value to plaintiff and of great
benefit to the public is a mere conclusion of the plaintiff, the truth being that a) the
invention of plaintiff is neither inventive nor new, hence, it is not patentable, b)
defendant has been granted valid patents (Patents No. 108, 109, 110 issued on
December 21, 1961) on designs for concrete decorative wall tiles; and c) that he can
not be guilty of infringement because his products are different from those of the
plaintiff. 4
The trial court rendered a decision dated December 29, 1965, the dispositive portion
of which reads:
WHEREFORE, judgment is hereby rendered in favor of plaintiff
and against the defendants:
1. Declaring plaintiff's patent valid and infringed:
2. Granting a perpetual injunction restraining defendants, their
officers, agents, employees, associates, confederates, and any and
all persons acting under their authority from making and/or using
and/or vending tiles embodying said patented invention or adapted

(d) P5,000.00 by way of attorney's fees and

(e) costs of suit. 5
The defendant Domiciano Aguas appealed to the Court of Appeals, assigning the
following errors. 6
I
THE TRIAL COURT ERRED IN NOT HOLDING THAT
PLAINTIFF'S PATENT FOR THE 'PROCESS OF MAKING
MOSAIC PRE-CAST TILE' IS INVALID BECAUSE SAID
ALLEGED PROCESS IS NOT AN INVENTION OR
DISCOVERY AS THE SAME HAS ALREADY LONG BEEN
USED BY TILE MANUFACTURERS BOTH ABROAD AND IN
THIS COUNTRY.
II
THE TRIAL COURT ERRED IN HOLDING THAT THE
PATENT OF PLAINTIFF IS VALID BECAUSE IT IS AN
IMPROVEMENT OR THE AGE-OLD TILE MAKING SYSTEM.
III
THE TRIAL COURT ERRED IN NOT ORDERING THE
CANCELLATION OF PLAINTIFF-APPELLEE'S LETTERS
PATENT NO. 658, EXHIBIT L, IN ACCORDANCE WITH THE
PERTINENT PROVISIONS OF THE PATENT LAW, REPUBLIC

manufacturing, using or selling, engravings, castings and devises

ACT 165.
IV
THE TRIAL COURT ERRED IN HOLDING THAT

designed and intended for use in apparatus for the making of tiles

DEFENDANT DOMICIANO A. AGUAS IS GUILTY OF

embodying plaintiff's patented invention, and from offering or

INFRINGEMENT DESPITE THE FACT THAT PLAINTIFF'S

advertising so to do, and from aiding and abetting or in any way

PATENT IS NOT A VALID ONE.

V
THE TRIAL COURT ERRED IN NOT HOLDING THAT THE

to be used in combination embodying the same, and from making,

contributing to the infringement of said patent;

3. Ordering that each and all of the infringing tiles, engravings,
castings and devices, which are in the possession or under the
control of defendants be delivered to plaintiff;
4. Ordering the defendants to jointly and severally pay to the
plaintiff the following sums of money, to wit:
(a) P10,020.99 by way of actual damages;
(b) P50,000.00 by way of moral damages;
(c) P5,000.00 by way of exemplary damages;

DEFENDANT COULD NEVER BE GUILTY OF

INFRINGEMENT OF PLAINTIFF'S PATENT BECAUSE EVEN
IN MATTERS NOT PATENTED BY THE PLAINTIFF - LIKE
THE COMPOSITION AND PROPORTION OF INGREDIENTS
USED AND THE STRUCTURAL DESIGNS OF THE MOULD

AND THE TILE PRODUCED - THAT OF THE DEFENDANT

the Philippine Patent Office, and on May 5, 1960, said office

ARE DIFFERENT.
VI
THE TRIAL COURT ERRED IN NOT DISMISSING THE

issued in his favor Letters Patent No. 658 for a "new and useful

COMPLAINT AND IN HOLDING THE DEFENDANT,

INSTEAD OF THE PLAINTIFF, LIABLE FOR DAMAGES,
AND ATTORNEY'S FEES.
On August 5, 1969, the Court of Appeals affirmed the decision of the trial court, with
the modification that plaintiff-appellee's award of moral damages was reduced to
7

P3,000.00.
The petitioner assigns the following errors supposedly committed by the Court of
Appeals:
It is now respectfully submitted that the Court of Appeals
committed the following errors involving questions of law, to wit:
First error. When it did not conclude that the letters patent of the

improvement in the process of making mosaic pre-cast tiles" (Exh,

"L"); that defendant F.H. Aquino & Sons engraved the moulds
embodying plaintiff's patented improvement for the manufacture of
pre-cast tiles, plaintiff furnishing said defendant the actual model
of the tiles in escayola and explained to said engraver the plans,
specifications and the details of the engravings as he wanted them
to be made, including an explanation of the lip width, artistic slope
of easement and critical depth of the engraving that plaintiff
wanted for his moulds; that engraver Enrique Aquino knew that the
moulds he was engraving for plaintiff were the latter's very own,
which possession the new features and characteristics covered by

respondent although entitled on the cover page as a patent for

plaintiff's parent; that defendant Aguas personally, as a building

improvements, was in truth and in fact, on the basis of the body of

contractor, purchased from plaintiff, tiles shaped out of these

the same, a patent for the old and non-patentable process of

moulds at the back of which was imprinted plaintiff's patent

making mosaic pre-cast tiles;

Second error. When it did not conclude from the admitted facts

number (Exhs., "A" to "E"); that subsequently, through a

of the case, particularly the contents of the letters patent, Exh. L

and the pieces of physical evidence introduced consisting of
samples of the tiles and catalouges, that the alleged improvements
introduced by the respondent in the manufacture of mosaic pre-cast
tiles are not patentable, the same being not new, useful and
inventive.
Third error. As a corollary, when it sentenced the herein
petitioner to pay the damages enumerated in the decision of the
lower court (Record on Appeal, pp. 74-75), as confirmed by it (the
Court of Appeals), but with the modification that the amount of
P50,000.00 moral damages was reduced to P3,000.00. 8
The facts, as found by the Court of Appeals, are:
The basic facts borne out by the record are to the effect that on
December 1, 1959 plaintiff-appellee filed a patent application with

representative, Mr. Leonardo, defendant Aguas requested Aquino

to make engravings of the same type and bearing the
characteristics of plaintiff's moulds; that Mr. Aquino knew that the
moulds he was asked to engrave for defendant Aguas would be
used to produce cement tiles similar to plaintiff's; that the moulds
which F.H. Aquino & Sons eventually engraved for Aguas and for
which it charged Aguas double the rate it charged plaintiff De
Leon, contain the very same characteristic features of plaintiff's
mould and that Aguas used these moulds in the manufacture of his
tiles which he actually put out for sale to the public (Exhs. "1" to
"3" and Exhs. "A" to "E"); that both plaintiff's and defendant
Aguas' tiles are sculptured pre-cast wall tiles intended as a new
feature of construction and wag ornamentation substantially
Identical to each other in size, easement, lip width and critical

depth of the deepest depression; and that the only significant

an optimum height, so that the engraving thereon would be deep

difference between plaintiff's mould and that engraved by Aquino

enough to produce tiles for sculptured and decorative purposes,

for Aguas is that, whereas plaintiff's mould turns out tiles 4 x 4

strong optimum thickness of appellee's new tiles of only 1/8 of an

inches in size, defendant Aguas' mould is made to fit a 4-1/4 x 4-

inch at the deepest easement (Exhs. "D" and "D-1") is a most

1/4 inch tile.

The patent right of the private respondent expired on May 5, 1977. 10 The errors will
be discuss only to determine the right of said private respondent to damages.
The petitioner questioned the validity of the patent of the private respondent,
Conrado G. de Leon, on the ground that the process, subject of said patent, is not an
invention or discovery, or an improvement of the old system of making tiles. 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

critical feature, suggestive of discovery and inventiveness,

especially considering that, despite said thinness, the freshly
formed tile remains strong enough for its intended purpose.
While it is true that the matter of easement, lip width, depth,
protrusions and depressions are known to some sculptors, still, to
be able to produce a new and useful wall tile, by using them all
together, amounts to an invention. More so, if the totality of all
these features are viewed in combination with the Ideal

Philippine Patent Office to the private respondent, Conrado G. de Leon, to protect his

composition of cement, sodium silicate and screened fine sand.

By using his improved process, plaintiff has succeeded in

rights as the inventor of "an alleged new and useful improvement in the process of

producing a new product - a concrete sculptured tile which could

making mosaic pre-cast tiles." 11Indeed, Section 7, Republic Act No. 165, as

be utilized for walling and decorative purposes. No proof was

amended provides: "Any invention of a new and useful machine, manufactured

adduced to show that any tile of the same kind had been produced

product or substance, process, or an improvement of the foregoing, shall be

by others before appellee. Moreover, it appears that appellee has

patentable.
The Court of Appeals found that the private respondent has introduced an

been deriving considerable profit from his manufacture and sale of

improvement in the process of tile-making because:

... we find that plaintiff-appellee has introduced an improvement in
the process of tile-making, which proceeds not merely from
mechanical skill, said improvement consisting among other things,
in the new critical depth, lip width, easement and field of designs
of the new tiles. The improved lip width of appellee's tiles ensures
the durability of the finished product preventing the flaking off of
the edges. The easement caused by the inclination of the
protrusions of the patented moulds is for the purpose of facilitating
the removal of the newly processed tile from the female die.
Evidently, appellee's improvement consists in the solution to the
old critical problem by making the protrusions on his moulds attain

such tiles. This commercial success is evidence of patentability

(Walker on Patents, Dellers Edition, Vol. I, p. 237). 12
The validily of the patent issued by the Philippines Patent Office in favor of the
private respondent and the question over the inventiveness, novelty and usefulness of
the improved process therein specified and described are matters which are better
determined by the Philippines Patent Office. The technical staff of the Philippines
Patent Office, composed of experts in their field, have, by the issuance of the patent
in question, accepted the thinness of the private respondent's new tiles as a discovery.
There is a presumption that the Philippines Patent Office has correctly determined
the patentability of the improvement by the private respondent of the process in
question.
Anent this matter, the Court of Appeals said:
Appellant has not adduced evidence sufficient to overcome the
above established legal presumption of validity or to warrant

reversal of the findings of the lower court relative to the validity of

and ornamentation, which previously had not been achieved by tiles made out of the

the patent in question. In fact, as we have already pointed out, the

old process of tile making. De Leon's invention has therefore brought about a new

clear preponderance of evidence bolsters said presumption of

and useful kind of tile. The old type of tiles were usually intended for floors although

validity of appellee's patent. There is no indication in the records of

there is nothing to prevent one from using them for walling purposes. These tiles are

this case and this Court is unaware of any fact, which would tend

neither artistic nor ornamental. They are heavy and massive.

The respondent's improvement is indeed inventive and goes beyond the exercise of

to show that concrete wall tiles similar to those produced by

mechanical skill. He has introduced a new kind of tile for a new purpose. He has

appellee had ever been made by others before he started

improved the old method of making tiles and pre-cast articles which were not

manufacturing the same. In fact, during the trial, appellant was

challenged by appellee to present a tile of the same kind as those
produced by the latter, from any earlier source but, despite the fact
that appellant had every chance to do so, he could not present any.
There is, therefore, no concrete proof that the improved process of
tile-making described in appellee's patent was used by, or known
to, others previous to his discovery thereof. 13
The contention of the petitioner Aguas that the letters patent of de Leon was actually
a patent for the old and non-patentable process of making mosaic pre-cast tiles is
devoid of merit. De Leon never claimed to have invented the process of tile-making.

satisfactory because of an intolerable number of breakages, especially if deep

engravings are made on the tile. He has overcome the problem of producing
decorative tiles with deep engraving, but with sufficient durability. 15 Durability
inspite of the thinness and lightness of the tile, is assured, provided that a certain
critical depth is maintained in relation to the dimensions of the tile. 16
The petitioner also claims that changing the design from embossed to engraved tiles
is neither new nor inventive because the Machuca Tile Factory and the Pomona Tile
Manufacturing Company have been manufacturing decorative wall tiles that are
embossed as well as engraved; 17 that these tiles have also depth, lip width, easement
and field of designs; 18 and that the private respondent had copied some designs of

The Claims and Specifications of Patent No. 658 show that although some of the
steps or parts of the old process of tile making were described therein, there were
novel and inventive features mentioned in the process. Some of the novel features of
the private respondent's improvements are the following: critical depth, with

Pomona. 19
The Machuca tiles are different from that of the private respondent. The designs are
embossed and not engraved as claimed by the petitioner. There may be depressions
but these depressions are too shallow to be considered engraved. Besides, the

corresponding easement and lip width to such degree as leaves the tile as thin as 1/8
of an inch at its thinnest portion, Ideal composition of cement and fine river sand,

Machuca tiles are heavy and massive.

There is no similarity between the Pomona Tiles and de Leon's tiles. The Pomona

among other ingredients that makes possible the production of tough and durable

tiles are made of ceramics. 20The process involved in making cement tiles is different

wall tiles, though thin and light; the engraving of deep designs in such a way as to

from ceramic tiles. Cement tiles are made with the use of water, while in ceramics

make the tiles decorative, artistic and suitable for wall ornamentation, and the fact

fire is used. As regards the allegation of the petitioner that the private respondent

that the tiles can be mass produced in commercial quantities and can be conveniently

copied some designs of Pomona, suffice it to say that what is in issue here is the

14

stock-piled, handled and packed without any intolerable incidence of breakages.

The petitioner also contends that the improvement of respondent is not patentable

process involved in tile making and not the design.

In view of the foregoing, this Court finds that Patent No. 658 was legally issued, the

because it is not new, useful and inventive. This contention is without merit.
The records disclose that de Leon's process is an improvement of the old process of

process and/or improvement being patentable.

Both the trial court and the Court of Appeals found as a fact that the petitioner

tile making. The tiles produced from de Leon's process are suitable for construction

Domiciano A. Aguas did infringe de Leon's patent. There is no showing that this case

falls under one of the exceptions when this Court may overrule the findings of fact of
the Court of Appeals. The only issue then to be resolved is the amount of damages
that should be paid by Aguas.
In its decision the Court of Appeals affirmed the amount of damages awarded by the

reputed House of Pre-Cast, he is entitled to an award of moral

damages in the sum of P50,000.00. 23
In reducing the amount of moral damages the Court of Appeals said:
As regards the question of moral damages it has been shown that
as a result of the unlawful acts of infringment committed by

lower court with the modification that the respondent is only entitled to P3,000.00

defendants, plaintiff was unstandably very sad; he worried and

moral damages. 21
The lower court awarded the following damages: 22
a) P10,020.99 by way of actual damages;
b) P50,000.00 by way of moral damages;
c) P5,000.00 by way of exemplary damages;
d) P5,000.00 by way of attomey's fees and
e) Costs of suit
because:
An examination of the books of defendant Aguas made before a

became nervous and lost concentration on his work in connection

with his tile business (pp. 28, 30, t.s.n., Feb. 28, 1964). In addition,
plaintiff's character and reputation have been unnecessarily put in
question because defendants, by their acts of infringement have
created a doubt or suspicion in the public mind concerning the
truth and honesty of plaintiff's advertisements and public

Commissioner reveals that during the period that Aguas was

announcements of his valid patent. Necessarily, said acts of

manufacturing and selling tiles similar to plaintiff's, he made a

defendants have caused plaintiff considerable mental suffering,

gross income of P3,340.33, which can be safely be considered the

considering especially, the fact that he staked everything on his

amount by which he enriched himself when he infringed plaintiff's

pre-cast tile business (p. 36, t.s.n., Id.) The wantonness and evident

patent. Under Sec. 42 of the Patent Law any patentee whose rights

bad faith characterizing defendants' prejudicial acts against

have been infringed is entitled to damages which, according to the

plaintiff justify the assessment of moral damages in plaintiff's

circumstances of the case may be in a sum above the amount found

favor, though we do not believe the amount of P50,000.00 awarded

as actual damages sustained provided the award does not exceed

by the lower court is warranted by the circumstances. We feel that

three times the amount of such actual damages. Considering the

said amount should be reduced to P3,000.00 by way of

wantonness of the infringement committed by the defendants who

compensating appellee for his moral suffering. "Willful injury to

knew all the time about the existence of plaintiff's patent, the Court

property may be a legal ground for awarding moral damages if the

feels there is reason to grant plaintiff maximum damages in the

sum of P10,020.99. And in order to discourage patent
infringements and to give more teeth to the provisions of the patent
law thus promoting a stronger public policy committed to afford
greater incentives and protection to inventors, the Court hereby
awards plaintiff exemplary damages in the sum of P5,000.00 to be
paid jointly and severally by defendants. Considering the status of
plaintiff as a reputable businessman, and owner of the likewise

court should find that, under the circumstances such damages are
justly due" (Art. 2219 NCC).
There is no reason to reduce the amount of damages and attorneys fees awarded by
the trial court as modified by the Court of Appeals.
WHEREFORE, the decision of the Court of Appeals in CA G.R. No. 37824-R
appealed from is hereby affirmed, without pronouncement as to costs. SO
ORDERED.

PASCUAL GODINES, petitioner, vs. THE HONORABLE COURT OF

that the latter stop selling and manufacturing similar power tillers. Upon petitioner's

APPEALS, SPECIAL FOURTH DIVISION and SV-AGRO ENTERPRISES,

failure to comply with the demand, SV-Agro Industries filed before the Regional

INC.,respondents.
The patent involved in this case is Letters Patent No. UM-2236 issued by the

Trial Court a complaint for infringement of patent and unfair competition.

After trial, the court held Pascual Godines liable for infringement of patent and

Philippine Patent Office to one Magdalena S. Villaruz on July 15, 1976. It covers a

unfair competition. The dispositive portion of the decision reads as follows:

WHEREFORE, premises considered, JUDGMENT is hereby

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

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

on the top midportion of the vacuumatic housing float to which the main engine

against defendant as permanent;

2. Ordering defendant Pascual Godines to pay plaintiff the sum of

drive is detachedly installed; (8) a frontal frame extension above the quarter

Fifty Thousand Pesos (P50,000.00) as damages to its business

circularly shaped water covering hold (sic) in place the transmission case; (9) a V-

reputation and goodwill, plus the further sum of Eighty Thousand

belt connection to the engine main drive with transmission gear through the pulley,

Pesos (P80,000.00) for unrealized profits during the period

and (10) an idler pulley installed on the engine foundation." The patented hand

defendant was manufacturing and selling copied or imitation

tractor works in the following manner: "the engine drives the transmission gear thru

floating power tiller;

3. Ordering the defendant to pay the plaintiff, the further sum of

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.,

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

herein private respondent, from Magdalena Villaruz, its chairman and president, by

manufacture and sale of the power tillers as he made them only upon the special

virtue of a Deed of Assignment executed by the latter in its favor. On October 31,

order of his customers who gave their own specifications; hence, he could not be

1979, SV-Agro Industries caused the publication of the patent in Bulletin Today, a

liable for infringement of patent and unfair competition; and that those made by him

newspaper of general circulation.

In accordance with the patent, private respondent manufactured and sold the patented

were different from those being manufactured and sold by private respondent.
We find no merit in his arguments. The question of whether petitioner was

power tillers with the patent imprinted on them. In 1979, SV-Agro Industries suffered

manufacturing and selling power tillers is a question of fact better addressed to the

a decline of more than 50% in sales in its Molave, Zamboanga del Sur branch. Upon

lower courts. In dismissing the first argument of petitioner herein, the Court of

investigation, it discovered that power tillers similar to those patented by private

Appeals quoted the findings of the court, to wit:

It is the contention of defendant that he did not manufacture or

respondent were being manufactured and sold by petitioner herein. Consequently,

private respondent notified Pascual Godines about the existing patent and demanded

make imitations or copies of plaintiff's turtle power tiller as what

he merely did was to fabricate his floating power tiller upon

The fact that petitioner herein manufactured and sold power tillers without patentee's

specifications and designs of those who ordered them. However,

authority has been established by the courts despite petitioner's claims to the

this contention appears untenable in the light of the following

contrary.
The question now arises: Did petitioner's product infringe upon the patent of private

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

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).

jurisdiction of the Supreme Court in cases brought to it from the Court of Appeals in

Viewed from any perspective or angle, the power tiller of the

a petition for certiorari under Rule 45 of the Rules of Court is limited to the review

defendant is identical and similar to that of the turtle power tiller of

of errors of law, and that said appellate court's findings of fact are conclusive upon

plaintiff in form, configuration, design and appearance. The parts

this Court."

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

unimportant and insubstantial changes and substitutions in the patent which, though

transmission gears, a handle which is V-shaped and inclined

adding nothing, would be enough to take the copied matter outside the claim, and

upwardly, attached to the side of the vacuumatic housing float 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

supported by the upstanding G.I. pipes and an engine base at the

top midportion of the vacuumatic housing float to which the engine

welder of the Ozamis Engineering, and therefore actually involved

drive may be attached. In operation, the floating power tiller of the

in the making of the floating power tillers of defendant tried to

defendant operates also in similar manner as the turtle power tiller

explain the difference between the floating power tillers made by

of plaintiff. This was admitted by the defendant himself in court

the defendant. But a careful examination between the two power

that they are operating on the same principles. (TSN, August 19,

tillers will show that they will operate on the same fundamental

1987, p. 13) 10
Moreover, it is also observed that petitioner also called his power tiller as a floating

principles. And, according to establish jurisprudence, in

infringement of patent, similarities or differences are to be

power tiller. The patent issued by the Patent Office referred to a "farm implement but

determined, not by the names of things, but in the light of what

more particularly to a turtle hand tractor having a vacuumatic housing float on which

elements do, and substantial, rather than technical, identity in the

the engine drive is held in place, the operating handle, the harrow housing with its

test. More specifically, it is necessary and sufficient to constitute

operating handle and the paddy wheel protective covering." 11 It appears from the

equivalency that the same function can be performed in

foregoing observation of the trial court that these claims of the patent and the

substantially the same way or manner, or by the same or

features of the patented utility model were copied by petitioner. We are compelled to

substantially the same, principle or mode of operation; but where

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

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
16

shape.
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

This is a companion case to No. 11, Graham v. John Deere Co., decided this day
along with Nos. 37 and 43, Calmar, Inc. v. Cook Chemical Co. and ColgatePalmolive Co. v. Cook Chemical Co. The United States seeks review of a judgment
of the Court of Claims, holding valid and infringed a patent on a wet battery issued
to Adams. This suit under 28 U.S.C. 1498 (1964 ed.) was brought by Adams and
others holding an interest in the patent against the Government charging both
infringement and breach of an implied contract to pay compensation for the use of
the invention. The Government challenged the validity of the patent, denied that it
had been infringed or that any contract for its use had ever existed. The Trial
Commissioner held that the patent was valid and infringed in part, but that no
contract, express or implied, had been established. The Court of Claims adopted
these findings, initially reaching only the patent questions, 330 F.2d 622, 165 Ct.Cl.
576, but subsequently, on respondents' motion to amend the judgment, deciding the
contract claims as well. 330 F.2d at 634, 165 Ct.Cl. at 598. The United States sought

competition, the following shall be deemed guilty of unfair

certiorari on the patent validity issue only. We granted the writ, along with the others,

competition:
(a) Any person, who in selling his goods shall give them the

in order to settle the important issues of patentability presented by the four cases. 380

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.

U.S. 949. We affirm.

I
While this case is controlled on the merits by No. 11, Graham, ante, p. 383 U. S. 1,
respondents have raised threshold issues as to our jurisdiction which require separate
handling. They say that the petition for certiorari came too late, contending that the
90-day period for filing began with the date of the initial judgment, rather than the
date of the decision on the contract issue, citing FTC v. Minneapolis-Honeywell
Co., 344 U. S. 206 (1952). We cannot agree, first, because that case did not involve a
timely motion to amend the judgment, [Footnote 1] and, secondly, because here the
Government's liability was inextricably
Page 383 U. S. 42
linked with the alleged contract action, which was not determined until the latter
judgment.
Nor is there merit in respondents' contention that the Government failed to comply
with the requirements of our Rules 21(1) and 33 as to service, since these
requirements are not jurisdictional, no prejudice resulted, and the failure was

US V. ADAMS

inadvertent.

We turn now to the merits.

II
The Patent in Issue and Its Background
The patent under consideration, U.S. No. 2,322,210, was issued in 1943 upon an

constant regardless of the rate at which current was withdrawn. Furthermore, its

application filed in December, 1941, by Adams. It relates to a nonrechargeable, as

could be obtained over a wide range of currents. One disadvantage, however, was

opposed to a storage, electrical battery. Stated simply, the battery comprises two

that, once activated, the battery could not be shut off; the chemical reactions in the

electrodes -- one made of magnesium, the other of cuprous chloride -- which are

battery continued even though current was not withdrawn. Nevertheless, these

placed in a container. The electrolyte, or battery fluid, used may be either plain or

chemical reactions were highly exothermic, liberating large quantities of heat during

salt water.
The specifications of the patent state that the object of the invention is to provide

operation. As a result, the battery performed with little effect on its voltage or current

constant voltage and current without the use of acids, conventionally employed in
storage batteries, and without the generation of dangerous fumes. Another object is
"to provide a battery which is relatively light in weight with respect to capacity" and
which
"may be manufactured and distributed to the trade in a dry condition and rendered

capacity for generating current was exceptionally large in comparison to its size and
weight. The battery was also quite efficient in that substantially its full capacity

in very low temperatures. Relatively high temperatures would not damage the
battery. Consequently, the battery was operable from 65 below zero Fahrenheit to
200 Fahrenheit. See findings at 330 F.2d at 632, 165 Ct.Cl. at 591-592.
Less than a month after filing for his patent, Adams brought his discovery to the
attention of the Army and Navy. Arrangements were quickly made for

serviceable by merely filling the container with water."

Following the specifications, which also set out a specific embodiment of the

demonstrations
Page 383 U. S. 44
before the experts of the United States Army Signal Corps. The Signal Corps

invention, there appear 11 claims. Of these, principal reliance has been placed upon

scientists who observed the demonstrations and who conducted further tests

Claims 1 and 10, which read:

"1. A battery comprising a liquid container, a magnesium electropositive electrode

themselves did not believe the battery was workable. Almost a year later, in

inside the container and having an exterior terminal, a fused cuprous chloride
electronegative electrode, and a terminal connected with said electronegative
electrode. "
Page 383 U. S. 43
"10. In a battery, the combination of a magnesium electropositive electrode, and an

December, 1942, Dr. George Vinal, an eminent government expert with the National
Bureau of Standards, still expressed doubts. He felt that Adams was making
"unusually large claims" for "high watt hour output per unit weight," and he found
"far from convincing" the graphical data submitted by the inventor showing the
battery's constant voltage and capacity characteristics. He recommended, "Until the

electronegative electrode comprising cuprous chloride fused with a carbon catalytic

inventor can present more convincing data about the performance of his [battery]

agent."
For several years prior to filing his application for the patent, Adams had worked in

cell, I see no reason to consider it further."

However, in November, 1943, at the height of World War II, the Signal Corps

his home experimenting on the development of a wet battery. He found that when

concluded that the battery was feasible. The Government thereafter entered into

cuprous chloride and magnesium were used as electrodes in an electrolyte of either

contracts with various battery companies for its procurement. The battery was found

plain water or salt water, an improved battery resulted.

The Adams invention was the first practical, water-activated, constant potential

adaptable to many uses. Indeed, by 1956, it was noted that

"[t]here can be no doubt that the addition of water activated batteries to the family of

battery which could be fabricated and stored indefinitely without any fluid in its

power sources has brought about developments which would otherwise have been

cells. It was activated within 30 minutes merely by adding water. Once activated, the

technically or economically impractical."

battery continued to deliver electricity at a voltage which remained essentially

See Tenth Annual Battery Research and Development Conference, Signal Corps

as in all where zinc with sal ammoniac [ammonium chloride solution] is used,

Engineering Laboratories, Fort Monmouth, N.J., p. 25 (1956). Also, see Finding No.

consists in the absence of any local or internal action as long as the electric circuit is

24, 330 F.2d at 632, 165 Ct.Cl. at 592.

Surprisingly, the Government did not notify Adams of its changed views, nor of the

open; in other words, this battery does not work upon itself."
Hayes likewise discloses the De La Rue zinc-silver chloride cell, but with certain

use to which it was putting his device, despite his repeated requests. In 1955, upon

mechanical differences designed to restrict the battery from continuing to act upon

examination of a battery produced for the Government by the Burgess Company, he

itself.
The Wood patent is relied upon by the Government as teaching the substitution of

first learned of the Government's action. His request for compensation was denied in
1960, resulting in this suit.
Page 383 U. S. 45
III
The Prior Art
The basic idea of chemical generation of electricity is, of course, quite old. Batteries
trace back to the epic discovery by the Italian scientist Volta in 1795, who found that
when two dissimilar metals are placed in an electrically conductive fluid, an
electromotive force is set up and electricity generated. Essentially, the basic elements
of a chemical battery are a pair of electrodes of different electrochemical properties
and an electrolyte which is either a liquid (in "wet" batteries) or a moist paste of
various substances (in the so-called "drycell" batteries). Various materials which may
be employed as electrodes, various electrolyte possibilities, and many combinations

magnesium, as in the Adams patent, for zinc. Wood's patent, issued in 1928, states:
"It would seem that a relatively high voltage primary cell would be obtained by using
. . . magnesium as the . . . [positive] electrode, and I am aware that attempts have
been made to develop such a cell. As far as I am aware, however, these have all been
unsuccessful, and it has been generally accepted that magnesium could not be
commercially utilized as a primary cell electrode."
Wood recognized that the difficulty with magnesium electrodes is their susceptibility
to chemical corrosion by the action of acid or ammonium chloride electrolytes.
Wood's solution to this problem was to use a
"neutral electrolyte containing a strong soluble oxidizing agent adapted to reduce the
rate of corrosion of the magnesium electrode on open circuit."
There is no indication of its use with cuprous chloride, nor was there any indication

of these elements have been the object of considerable experiment for almost 175

that a magnesium battery could be water-activated.

The Codd treatise is also cited as authority for the substitution of magnesium.

years. See generally, Vinal, Primary Batteries (New York 1950).

At trial, the Government introduced in evidence 24 patents and treatises as

However, Codd simply lists magnesium in an electromotive series table, a tabulation

representing the art as it stood in 1938, the time of the Adams invention. [Footnote 2]
Here, however, the Government has relied primarily upon only six of these
references, [Footnote 3] which we may summarize as follows.
The Niaudet treatise describes the Marie Davy cell invented in 1860 and De La Rue's
variations on it. The battery comprises a zinc anode and a silver chloride cathode.
Although it seems to have been capable of working in an electrolyte of pure water,
Niaudet says the battery was of "little interest" until De La Rue used a solution of
ammonium chloride as an electrolyte. Niaudet also states that
"[t]he capital advantage of this battery,
Page 383 U. S. 46

of electrochemical substances in descending order of their relative electropositivity.

He also refers to magnesium in an example designed to show that various substances
are more electropositive than others, but the discussion involves a cell containing an
acid which would destroy magnesium within minutes. In short, Codd indicates, by
inference, only that magnesium is a theoretically
Page 383 U. S. 47
desirable electrode by virtue of its highly electropositive character. He does not teach
that magnesium could be combined in a water-activated battery, or that a battery
using magnesium would have the properties of the Adams device. Nor does he
suggest, as the Government indicates, that cuprous chloride could be substituted for
silver chloride. He merely refers to the cuprous ion -- a generic term which includes

an infinite number of copper compounds -- and in no way suggests that cuprous

be substituted for zinc and cuprous chloride for silver chloride. Hence, it argues that

chloride could be employed in a battery.

The Government then cites the Wensky patent, which was issued in Great Britain in

the
"combination of magnesium and cuprous chloride in the Adams battery was not

1891. The patent relates to the use of cuprous chloride as a depolarizing agent. The

patentable, because it represented either no change or an insignificant change as

specifications of his patent disclose a battery comprising zinc and copper electrodes,

compared the prior battery designs."

And, despite
"the fact that, wholly unexpectedly, the battery showed certain valuable operating

the cuprous chloride being added as a salt in an electrolyte solution containing zinc
chloride as well. While Wensky recognized that cuprous chloride could be used in a
constant-current cell, there is no indication that he taught a water-activated system or
that magnesium could be incorporated in his battery.
Finally, the Skrivanoff patent depended upon by the Government relates to a battery
designed to give intermittent, as opposed to continuous, service. While the patent
claims magnesium as an electrode, it specifies that the electrolyte to be used in
conjunction with it must be a solution of "alcoline, chloro-chromate, or a
permanganate strengthened with sulphuric acid." The cathode was a copper or carbon
electrode faced with a paste of "phosphoric acid, amorphous phosphorous, metallic
copper in spangles, and cuprous chloride." This paste is to be mixed with hot sulfuric
acid before applying to the electrode. The Government's expert testified in trial that
he had no information as to whether the cathode, as placed in the battery, would,
after having been mixed with the other chemicals prescribed, actually
Page 383 U. S. 48
contain cuprous chloride. Furthermore, respondents' expert testified without
contradiction that he had attempted to assemble a battery made in accordance with
Skrivanoff's teachings, but was met first with a fire when he sought to make the
cathode, and then with an explosion when he attempted to assemble the complete
battery.
IV
The Validity of the Patent
The Government challenges the validity of the Adams patent on grounds of lack of
novelty under 35 U.S.C. 102(a) (1964 ed.), as well as obviousness under 35 U.S.C.
103 (1964 ed.) As we have seen in Graham v. John Deere Co., ante, p. 383 U. S. 1,
novelty and nonobviousness -- as well as utility -- are separate tests of patentability,
and all must be satisfied in a valid patent.
The Government concludes that wet batteries comprising a zinc anode and silver
chloride cathode are old in the art, and that the prior art shows that magnesium may

advantages over other batteries, [these advantages] would certainly not justify a
patent on the essentially old formula."
There are several basic errors in the Government's position. First, the fact that the
Adams battery is water-activated sets his device apart from the prior art. It is true that
Claims 1 and 10, supra, do not mention a water electrolyte, but, as we have noted, a
stated object of the invention was to provide a battery rendered serviceable by the
mere addition of water. While the claims of a
Page 383 U. S. 49
patent limit the invention, and specifications cannot be utilized to expand the patent
monopoly, Burns v. Meyer, 100 U. S. 671, 100 U. S. 672 (1880); McCarty v. Lehigh
Valley R. Co., 160 U. S. 110, 160 U. S. 116 (1895), it is fundamental that claims are
to be construed in the light of the specifications, and both are to be read with a view
to ascertaining the invention, Seymour v. Osborne, 11 Wall. 516,78 U. S.
547 (1871); Schriber-Schroth Co. v. Cleveland Trust Co., 311 U. S.
211 (1940); Schering Corp. v. Gilbert, 153 F.2d 428 (1946). Taken together with the
stated object of disclosing a water-activated cell, the lack of reference to any
electrolyte in Claims 1 and 10 indicates that water alone could be used. Furthermore,
of the 11 claims in issue, three of the narrower ones include references to specific
electrolyte solutions comprising water and certain salts. The obvious implication
from the absence of any mention of an electrolyte -- a necessary element in any
battery -- in the other eight claims reinforces this conclusion. It is evident that
respondents' present reliance upon this feature was not the afterthought of an astute
patent trial lawyer. In his first contact with the Government less than a month after
the patent application was filed, Adams pointed out that "no acids, alkalines or any
other liquid other than plain water is used in this cell. Water does not have to be
distilled. . . ." Letter to Charles F. Kettering (January 7, 1942), R., pp. 415, 416. Also

see his letter to the Department of Commerce (March 28, 1942), R., p. 422. The
findings, approved and adopted by the Court of Claims, also fully support this
conclusion.
Nor is Sinclair & Carroll Co. v. Interchemical Corp., 325 U. S. 327 (1945), apposite

Page 383 U. S. 51
for zinc and cuprous chloride for silver chloride were merely equivalent
substitutions, it would follow that the resulting device -- Adams' -- would have
equivalent operating characteristics. But it does not. The court below found, and the

here. There, the patentee had developed a rapidly drying printing ink. All that was

Government apparently admits, that the Adams battery, "wholly unexpectedly," has

needed to produce such an ink was a solvent which evaporated quickly upon heating.

shown "certain valuable operating advantages over other batteries," while those from

Knowing that the boiling point of a solvent is an indication of its rate of

Page 383 U. S. 50
evaporation, the patentee merely made selections from a list of solvents and their

which it is claimed to have been copied were long ago discarded. Moreover, most of

boiling points. This was no more than "selecting the last piece to put into the last
opening in a jig-saw puzzle." 325 U.S. at 325 U. S. 335. Indeed, the Government's
reliance upon Sinclair & Carroll points up the fallacy of the underlying premise of
its case. The solvent in Sinclair & Carroll had no functional relation to the printing
ink involved. It served only as an inert carrier. The choice of solvent was dictated by
known, required properties. Here, however, the Adams battery is shown to embrace
elements having an interdependent functional relationship. It begs the question, and
overlooks the holding of the Commissioner and the Court of Claims, to state merely
that magnesium and cuprous chloride were individually known battery components.
If such a combination is novel, the issue is whether bringing them together as taught
by Adams was obvious in the light of the prior art.
We believe that the Court of Claims was correct in concluding that the Adams battery

the batteries relied upon by the Government were of a completely different type,
designed to give intermittent power and characterized by an absence of internal
action when not in use. Some provided current at voltages which declined fairly
proportionately with time. [Footnote 4] Others were so-called standard cells which,
though producing a constant voltage, were of use principally for calibration or
measurement purposes. Such cells cannot be used as sources of power. [Footnote 5]
For these reasons, we find no equivalency. [Footnote 6]
We conclude the Adams battery was also nonobvious. As we have seen, the operating
characteristics of the Adams battery have been shown to have been unexpected, and
to have far surpassed then-existing wet batteries. Despite the fact that each of the
elements of the Adams battery was well known in the prior art, to combine
Page 383 U. S. 52
them as did Adams required that a person reasonably skilled in the prior art must
ignore that (1) batteries which continued to operate on an open circuit and which

is novel. Skrivanoff disclosed the use of magnesium in an electrolyte completely

heated in normal use were not practical; and (2) water-activated batteries were

different from that used in Adams. As we have mentioned, it is even open to doubt

successful only when combined with electrolytes detrimental to the use of

whether cuprous chloride was a functional element in Skrivanoff. In view of the

magnesium. These long-accepted factors, when taken together, would, we believe,

unchallenged testimony that the Skrivanoff formulation was both dangerous and

deter any investigation into such a combination as is used by Adams. This is not to

inoperable, it seems anomalous to suggest that it is an anticipation of Adams. An

say that one who merely finds new uses for old inventions by shutting his eyes to

inoperable invention or one which fails to achieve its intended result does not

their prior disadvantages thereby discovers a patentable innovation. We do say,

negative novelty. Smith v. Snow, 294 U. S. 1, 294 U. S. 17 (1935). That in 1880

however, that known disadvantages in old devices which would naturally discourage

Skrivanoff may have been able to convince a foreign patent examiner to issue a

the search for new inventions may be taken into account in determining obviousness.
Nor are these the only factors bearing on the question of obviousness. We have seen

patent on his device has little significance in the light of the foregoing.
Nor is the Government's contention that the electrodes of Adams were mere

that, at the time Adams perfected his invention, noted experts expressed disbelief in

substitutions of preexisting battery designs supported by the prior art. If the use of

it. Several of the same experts subsequently recognized the significance of the

magnesium

Adams invention, some even patenting improvements on the same system.

Fischbach et al., U.S. Patent No. 2,636,060 (1953). Furthermore, in a crowded art

waterproofed, or in some other similar casing for purposes of insulation from the

replete with a century and a half of advancement, the Patent Office found not one

case. In the patent in suit Anthony calls attention to the existing difficulties and states

reference to cite against the Adams application. Against the subsequently issued

that his invention is for an improved protective casing which will prevent fluids from

improvement patents to Fischbach, supra, and to Chubb, U.S. Reissue Patent No.

leaking out of the cell and causing injury to the case or other dry cells within it. He

23,883 (1954), it found but three references prior to Adams -- none of which are

also adverts to the tendency of the cells to swell after a certain time and associates

relied upon by the Government.

We conclude that the Adams patent is valid. The judgment of the Court of Claims is

this swelling with the leaking. He states that the object of his invention is to protect

affirmed. It is so ordered.
Affirmed.

the side walls of the zinc cup by providing a strong metal sheath which will closely
and rigidly confine the cell to a given length and diameter and, while providing such
a sheath, to insulate it from both terminals so as to render unnecessary the use of an

GOODYEAR TIRE AND RUBBER CO. V. RAY-O-VAC CO.

This case involves the validity and alleged infringement of the Anthony Patent No.

insulating over or label to prevent the cell from short circuiting by contact with the

2,198,413, issued April 23, 1940. The District Court held the patent valid and

dry cell having circuit terminals at opposite ends, one electrode being a cylindrical

infringed and its judgment was affirmed by the Circuit Court of Appeals.
The patent, a very narrow one in a crowded art, is for a leakproof dry cell for a flash
light battery. The conventional dry cell embodies a cup-like zinc electrode acting as a
container for a central carbon electrode, electrolyte, and depolarizing mix. The
bottom enclosure is the terminal for one electrode, the top enclosure for the other.
The electrolyte is a viscous liquid composed of ammonium chloride, zinc chloride,
water and starch. Use of the battery causes erosion of the zinc and eventually the
mixture leaks through the container. A short circuit, or long continuous use, causes

side walls of the case. To accomplish his objects Anthony used the ordinary type of
zinc cup, the other a centrally placed carbon electrode, in electrolyte and
depolarizing mix, the bottom closure affording a terminal for one electrode and the
top for the other. Around this conventional combination he placed an insulating
material and an outside protecting metal sheath which would enclose the insulated
side walls of the zinc cup and tightly embrace both upper and lower closures to
prevent leakage.
The claims in suit are Nos. 1, 2, and 3. If 1 is good, 2 and 3 are also. We, therefore,

the formation of solids as the zinc is eaten away. The resultant expansion of the cell

quote 1:
'A leak-immunized flash light dry-cell provided with circuit terminals at opposite

contents, due to the weakness of the zinc walls, causes bulging, breaking, and

ends, comprising: a hollow cylindrical zinc metal electrode containing electrolyte; a

seepage. The escaping liquid tends to injure the metal walls of the flash light casing.
Dry cells have been used in flash lights for many years. The tendency of the cells to

centrally disposed carbon electrode and depolarizing-mix in said electrolyte; a

damage flash light containers by leakage, bulging, and freezing in the container had

closure for the cell provided with a terminal for the other electrode, electrically

long plagued the industry. So much so that most manufacturers attached warning

insulated from the first mentioned terminal; and a protecting sheet-metal sheath

notices to their flash light batteries advising users not to allow them to remain in the

insulated from both of said electrodes and enclosing the side walls of said metal

flash light for extended periods of non-use and to remove a celll promptly upon

electrode and tightly embracing said closures so as to prevent leakage of the

ascertaining that it was dead.

No patent in the prior art addressed itself to the problem of preventing both leakage

electrolyte from the unit.'

The District Judge made findings, which have support in the evidence, to the

and swelling in a dry cell. At the time of the Anthony application flash light cells

following effect: That the problem presented was old and no solution was attained

were commonly encased in a paper coating which might or might not be

prior to Anthony's invention; that the respondent began marketing the patented cell in

bottom closure for the cell affording a terminal for one of the electrodes; a top

1939 and was the first to guarantee its product against sticking in the flash light case;
that the cell met with immediate commercial success due to the advantages of its
construction and not to extensive advertising; that its advantages were recognized by
the Army and other governmental agencies and were demonstrated by reliable tests.
In his opinion he examined the prior art and showed that none of the workers in the
art had met the problems of leakage and swelling in the way suggested by Anthony
and that most of the cited patents had not in fact been addressed to these problems.
With respect to the charge of infringement, the court found, on sufficient evidence:

DIAMOND V. DIEHR
I The patent application at issue was filed by the respondents on August 6, 1975. The
claimed invention is a process for molding raw, uncured synthetic rubber into cured
precision products. The process uses a mold for precisely shaping the uncured
material under heat and pressure and then curing the synthetic rubber in the mold so
that the product will retain its shape and be functionally operative after the molding
is completed.

That the petitioners consciously copied the respondent's commercial cell, which was

Respondents claim that their process ensures the production of molded articles which

made in accordance with the claims of the patent; that the petitioners' cell infringed

are properly cured. Achieving the perfect cure depends upon several factors,

the claims in suit, since the petitioners' substitutions of structure and material were

including the thickness of the article to be molded, the temperature of the molding

no more than the choice of mechanical alternatives and did not avoid the practice of

process, and the amount of time that the article is allowed to remain in the press. It is

the principle disclosed by the patent.

The Circuit Court of Appeals reexamined the findings in the light of the evidence and

possible, using well-known time, temperature, and cure relationships, to calculate by

accepted them. It must be a strong case in which this court will set aside these
concurrent findings of two courts. 3 We think this is not such a case.
Viewed after the event, the means Anthony adopted seem simple and such as should

means of the Arrhenius equation [Footnote 2] when to open the press

Page 450 U. S. 178
and remove the cured product. Nonetheless, according to the respondents, the
industry has not been able to obtain uniformly accurate cures, because the

have been obvious to those who worked in the field, but this is not enough to

temperature of the molding press could not be precisely measured, thus making it

negative invention. 4 During a period of half a century, in which the use of flash light

difficult to do the necessary computations to determine cure time. [Footnote 3]

batteries increased enormously, and the manufacturers of flash light cells were

Because the temperature inside the press has heretofore been viewed as an

conscious of the defects in them, no one devised a method of curing such defects.

uncontrollable variable, the conventional industry practice has been to calculate the

Once the method was discovered it commended itself to the public as evidenced by

cure time as the shortest time in which all parts of the product will definitely be

marked commercial success. These factors were entitled to weight in determining

cured, assuming a reasonable amount of mold-opening time during loading and

whether the improvement amounted to invention and should, in a close case, tip the

unloading. But the shortcoming of this practice is that operating with an

scales in favor of patentability. 5Accepting, as we do, the findings below, we hold the

uncontrollable variable inevitably led in some instances to overestimating the mold-

patent valid and infringed.

The petitioners renew here contentions, based on asserted insufficiency of

opening time and overcuring the rubber, and in other instances to underestimating

description of the invention and on alleged file-wrapper estoppel, which the courts

that time and undercuring the product. [Footnote 4]

Respondents characterize their contribution to the art to reside in the process of

below overruled. We have considered these defenses but conclude that the proofs do

constantly measuring the actual temperature inside the mold. These temperature

not sustain them.

Decree affirmed.
Affirmed.

measurements are then automatically fed into a computer which repeatedly

recalculates the cure time by use of the Arrhenius equation.
Page 450 U. S. 179

When the recalculated time equals the actual time that has elapsed since the press

"Whoever invents or discovers any new and useful process, machine, manufacture,

was closed, the computer signals a device to open the press. According to the

or composition of matter, or any new and useful improvement thereof, may obtain a

respondents, the continuous measuring of the temperature inside the mold cavity, the

patent therefor, subject to the conditions and requirements of this title. [Footnote 6] "
Page 450 U. S. 182
In cases of statutory construction, we begin with the language of the statute. Unless

feeding of this information to a digital computer which constantly recalculates the

cure time, and the signaling by the computer to open the press are all new in the art.
The patent examiner rejected the respondents' claims on the sole ground that they
were drawn to nonstatutory subject matter under 35 U.S.C. 101. [Footnote 5] He
determined that those
Page 450 U. S. 180
steps in respondents' claims that are carried out by a computer under control of a
stored program constituted nonstatutory subject matter under this Court's decision
in Gottschalk v. Benson, 409 U. S. 63 (1972). The remaining steps -- installing rubber
in the press and the subsequent closing of the
Page 450 U. S. 181
press -- were "conventional and necessary to the process, and cannot be the basis of
patentability." The examiner concluded that respondents' claims defined and sought
protection of a computer program for operating a rubber-molding press.
The Patent and Trademark Office Board of Appeals agreed with the examiner, but the

otherwise defined, "words will be interpreted as taking their ordinary, contemporary

common meaning," Perrin v. United States, 444 U. S. 37, 444 U. S. 42 (1979), and,
in dealing with the patent laws, we have more than once cautioned that
"courts should not read into the patent laws limitations and conditions which the
legislature has not expressed.'" Diamond v. Chakrabarty, supra, at 447 U. S. 308,
quoting United States v. Dubilier Condenser Corp., 289 U. S. 178, 289 U. S.
199 (1933).
The Patent Act of 1793 defined statutory subject matter as "any new and useful art,
machine, manufacture or composition of matter, or any new or useful improvement
[thereof]." Act of Feb. 21, 1793, ch. 11, 1, 1 Stat. 318. Not until the patent laws
were recodified in 1952 did Congress replace the word "art" with the word "process."
It is that latter word which we confront today, and, in order to determine its meaning,

Court of Customs and Patent Appeals reversed. In re Diehr, 602 F.2d 892 (1979). The

we may not be unmindful of the Committee Reports accompanying the 1952 Act

court noted that a claim drawn to subject matter otherwise statutory does not become

which inform us that Congress intended statutory subject matter to "include anything

nonstatutory because a computer is involved. The respondents' claims were not

under the sun that is made by man." S.Rep. No.1979, 82d Cong., 2d Sess., 5 (1952);

directed to a mathematical algorithm or an improved method of calculation, but

H.R.Rep. No.1923, 82d Cong., 2d Sess., 6 (1952).

Although the term "process" was not added to 35 U.S.C. 101 until 1952, a process

rather recited an improved process for molding rubber articles by solving a practical
problem which had arisen in the molding of rubber products.
The Commissioner of Patents and Trademarks sought certiorari, arguing that the
decision of the Court of Customs and Patent Appeals was inconsistent with prior
decisions of this Court. Because of the importance of the question presented, we
granted the writ. 445 U.S. 926 (1980).

has historically enjoyed patent protection because it was considered a form of "art"
as that term was used in the 1793 Act. [Footnote 7] In defining the nature of a
patentable process, the Court stated:
"That a process may be patentable, irrespective of the
Page 450 U. S. 183
particular form of the instrumentalities used, cannot be disputed. . . . A process is a
mode of treatment of certain materials to produce a given result. It is an act, or a

II Last Term, in Diamond v. Chakrabarty, 447 U. S. 303 (1980), this Court discussed

series of acts, performed upon the subject matter to be transformed and reduced to a

the historical purposes of the patent laws, and, in particular, 35 U.S.C. 101. As

different state or thing. If new and useful, it is just as patentable as is a piece of

in Chakrabarty, we must here construe 35 U.S.C. 101, which provides:

machinery. In the language of the patent law, it is an art. The machinery pointed out
as suitable to perform the process may or may not be new or patentable; whilst the

process itself may be altogether new, and produce an entirely new result. The process

of itself is not patentable," Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 87 U. S.

requires
Page 450 U. S. 184
that certain things should be done with certain substances, and in a certain order; but

507 (1874).
"A principle, in the abstract, is a fundamental truth; an original cause; a motive; these

the tools to be used in doing this may be of secondary consequence."

Cochrane v. Deener, 94 U. S. 780, 94 U. S. 787-788 (1877).
Analysis of the eligibility of a claim of patent protection for a "process" did not

cannot be patented, as no one can claim in either of them an exclusive right."

Le Roy v. Tatham, 14 How. 156, 55 U. S. 175 (1853). Only last Term, we explained:
"[A] new mineral discovered in the earth or a new plant found in the wild is not

change with the addition of that term to 101. Recently, in Gottschalk v. Benson, 409

patentable subject matter|"

"[A] new mineral discovered in the earth or a new plant found in the wild is not

U. S. 63 (1972), we repeated the above definition recited in Cochrane v.

patentable subject matter. Likewise, Einstein could not patent his celebrated law that

Deener, adding:
"Transformation and reduction of an article 'to a different state or thing' is the clue to

E=mc^2; nor could Newton have patented the law of gravity. Such discoveries are

the patentability of a process claim that does not include particular machines."
409 U.S. at 409 U. S. 70.
Analyzing respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic rubber
products falls within the 101 categories of possibly patentable subject matter. That
respondents' claims involve the transformation of an article, in this case raw, uncured
synthetic rubber, into a different state or thing cannot be disputed. The respondents'
claims describe in detail a step-by-step method for accomplishing such, beginning
with the loading of a mold with raw, uncured rubber and ending with the eventual
opening of the press at the conclusion of the cure. Industrial processes such as this
are the types which have historically been eligible to receive the protection of our
patent laws. [Footnote 8]
Page 450 U. S. 185

'manifestations of . . . nature, free to all men and reserved exclusively to none.'"

Diamond v. Chakrabarty, 447 U.S. at 447 U. S. 309, quoting Funk Bros. Seed Co. v.
Kalo Inoculant Co., supra at 333 U. S. 130.
Our recent holdings in Gottschalk v. Benson, supra, and Parker v. Flook, supra, both
of which are computer-related, stand for no more than these long-established
principles. In Benson, we held unpatentable claims for an algorithm used to convert
binary code decimal numbers to equivalent pure binary numbers. The sole practical
application of the algorithm was in connection with the programming of a
Page 450 U. S. 186
general purpose digital computer. We defined "algorithm" as a "procedure for solving
a given type of mathematical problem," and we concluded that such an algorithm, or
mathematical formula, is like a law of nature, which cannot be the subject of a
patent. [Footnote 9]
Parker v. Flook, supra, presented a similar situation. The claims were drawn to a
method for computing an "alarm limit." An "alarm limit" is simply a number, and the

III

Court concluded that the application sought to protect a formula for computing this
number. Using this formula, the updated alarm limit could be calculated if several

Our conclusion regarding respondents' claims is not altered by the fact that, in

other variables were known. The application, however, did not purport to explain

several steps of the process, a mathematical equation and a programmed digital

discovery is not embraced within the statutory terms. Excluded from such patent

how these other variables were to be determined, [Footnote 10] nor

Page 450 U. S. 187
did it purport
"to contain any disclosure relating to the chemical processes at work, the monitoring

protection are laws of nature, natural phenomena, and abstract ideas. See Parker v.

of process variables, or the means of setting off an alarm or adjusting an alarm

Flook, 437 U. S. 584 (1978); Gottschalk v. Benson, supra at 409 U. S. 67; Funk

system. All that it provides is a formula for computing an updated alarm limit."
437 U.S. at 437 U. S. 586.

computer are used. This Court has undoubtedly recognized limits to 101, and every

Bros. Seed Co. v. Kalo Inoculant Co., 333 U. S. 127, 333 U. S. 130 (1948). "An idea

In contrast, the respondents here do not seek to patent a mathematical formula.

We think this statement in Mackay takes us a long way toward the correct answer in

Instead, they seek patent protection for a process of curing synthetic rubber. Their

this case. Arrhenius' equation is not patentable in isolation, but when a process for

process admittedly employs a well-known mathematical equation, but they do not

curing rubber is devised which incorporates in it a more efficient solution of the

seek to preempt the use of that equation. Rather, they seek only to foreclose from

equation, that process is, at the very least, not barred at the threshold by 101.
In determining the eligibility of respondents' claimed process for patent protection

others the use of that equation in conjunction with all of the other steps in their
claimed process. These include installing rubber in a press, closing the mold,
constantly determining the temperature of the mold, constantly recalculating the
appropriate cure time through the use of the formula and a digital computer, and
automatically opening the press at the proper time. Obviously, one does not need a
"computer" to cure natural or synthetic rubber, but if the computer use incorporated

under 101, their claims must be considered as a whole. It is inappropriate to dissect

the claims into old and new elements and then to ignore the presence of the old
elements in the analysis. This is particularly true in a process claim, because a new
combination of steps in a process may be patentable even though all the constituents
of the combination were well known and in common use before the combination was

"undercuring," the process as a whole does not thereby become unpatentable subject

made. The "novelty" of any element or steps in a process, or even of the

Page 450 U. S. 189
process itself, is of no relevance in determining whether the subject matter of a claim

matter.
Our earlier opinions lend support to our present conclusion that a claim drawn to

falls within the 101 categories of possibly patentable subject matter. [Footnote 12]
It has been urged that novelty is an appropriate consideration under 101.

subject matter otherwise statutory does not become nonstatutory simply because it

Presumably, this argument results from the language in 101 referring to any "new

uses a mathematical formula, computer program, or digital computer. In Gottschalk

and useful" process, machine, etc. Section 101, however, is a general statement of the

v. Benson, we noted: "It is said that the decision precludes a patent for any program

type of subject matter that is eligible for patent protection "subject to the conditions

servicing a computer. We do not 90 hold." 409 U.S. at 409 U. S. 71. Similarly,

and requirements of this title." Specific conditions for patentability follow, and 102

in Parker v. Flook, we stated that "a process is not unpatentable simply because it

covers in detail the conditions relating to novelty. [Footnote 13]

Page 450 U. S. 190
The question, therefore, of whether a particular invention is novel is "wholly apart

in the process patent significantly lessens the possibility of "overcuring" or

contains a law of nature or a mathematical algorithm." 437 U.S. at 437 U. S. 590. It

is now commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent protection. See,
e.g., 333 U. S. Seed
Page 450 U. S. 188
Co. v. Kalo Inoculant Co., 333 U. S. 127 (1948); Ebel Process Co. v. Minnesota &
Ontario Paper Co., 261 U. S. 45 (1923); Cochrane v. Deener, 94 U. S.
780 (1877) O'Reilly v. Morse, 15 How. 62 (1854); and Le Roy v. Tatham, 14 How.
156 (1853). As Justice Stone explained four decades ago:
"While a scientific truth, or the mathematical expression of it, is not a patentable
invention, a novel and useful structure created with the aid of knowledge of scientific
truth may be."
Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U. S. 86, 306 U. S.
94 (1939). [Footnote 11]

from whether the invention falls into a category of statutory subject matter." In re
Bergy, 596 F.2d 952, 961 (CCPA 1979) (emphasis deleted). See also Nickola v.
Peterson, 580 F.2d 898 (CA6 1978). The legislative history of the 1952 Patent Act is
in accord with this reasoning. The Senate Report stated:
"Section 101 sets forth the subject matter that can be patented, 'subject to the
conditions and requirements of this title.' The conditions under which a patent may
be obtained follow, and Section 102 covers the conditions relating to novelty."
S.Rep. No.1979, 82d Cong., 2d Sess., 5 (1952) (emphasis supplied). It is later stated
in the same Report:
"Section 102, in general, may be said to describe the statutory novelty required for
patentability, and includes,
Page 450 U. S. 191
in effect, an amplification and definition of 'new' in section 101."

Id. at 6. Finally, it is stated in the "Revision Notes":

"The corresponding section of [the] existing statute is split into two sections, section
101 relating to the subject matter for which patents may be obtained, and section 102
defining statutory novelty and stating other conditions for patentability."
Id. at 17. See also H.R.Rep. No.1923, 82d Cong., 2d Sess., 6, 7, and 17 (1952).
In this case, it may later be determined that the respondents' process is not deserving
of patent protection because it fails to satisfy the statutory conditions of novelty
under 102 or nonobviousness under 103. A rejection on either of these grounds
does not affect the determination that respondents' claims recited subject matter
which was eligible for patent protection under 101.
IV
We have before us today only the question of whether respondents' claims fall within
the 101 categories of possibly patentable subject matter. We view respondents'
claims as nothing more than a process for molding rubber products, and not as an

Because we do not view respondents' claims as an attempt to patent a mathematical

formula, but rather to be drawn to an industrial process
Page 450 U. S. 193
for the molding of rubber products, we affirm the judgment of the Court of Customs
and Patent Appeals. [Footnote 15] It is so ordered.
JESSIE G. CHING, petitioner, vs. WILLIAM M. SALINAS, SR., WILLIAM M.
SALINAS, JR., JOSEPHINE L. SALINAS, JENNIFER Y. SALINAS, ALONTO
SOLAIMAN SALLE, JOHN ERIC I. SALINAS, NOEL M. YABUT (Board of
Directors and Officers of WILAWARE PRODUCT
CORPORATION), respondents.
Jessie G. Ching is the owner and general manager of Jeshicris Manufacturing Co.,
the maker and manufacturer of a Utility Model, described as "Leaf Spring Eye
Bushing for Automobile" made up of plastic.
On September 4, 2001, Ching and Joseph Yu were issued by the National Library
Certificates of Copyright Registration and Deposit of the said work described therein

attempt to patent a mathematical formula. We recognize, of course, that, when a

as "Leaf Spring Eye Bushing for Automobile."4

On September 20, 2001, Ching requested the National Bureau of Investigation (NBI)

claim recites a mathematical formula (or scientific principle or phenomenon of

for police/investigative assistance for the apprehension and prosecution of illegal

nature), an inquiry must be made into whether the claim is seeking patent protection
for that formula in the abstract. A mathematical formula, as such, is not accorded the

manufacturers, producers and/or distributors of the works.5

After due investigation, the NBI filed applications for search warrants in the RTC of

protection of our patent laws, Gottschalk v. Benson, 409 U. S. 63 (1972), and this

Manila against William Salinas, Sr. and the officers and members of the Board of

principle cannot be circumvented by attempting to limit the use of the formula to a

Directors of Wilaware Product Corporation. It was alleged that the respondents

particular technological environment. Parker v. Flook, 437 U. S. 584 (1978).

therein reproduced and distributed the said models penalized under Sections 177.1

Similarly, insignificant post-solution activity will not transform

Page 450 U. S. 192
an unpatentable principle into a patentable process. Ibid. [Footnote 14] To hold

and 177.3 of Republic Act (R.A.) No. 8293. The applications sought the seizure of

otherwise would allow a competent draftsman to evade the recognized limitations on

the type of subject matter eligible for patent protection. On the other hand, when a
claim containing a mathematical formula implements or applies that formula in a
structure or process which, when considered as a whole, is performing a function

the following:
a.) Undetermined quantity of Leaf spring eye bushing for automobile that
are made up of plastic polypropylene;
b.) Undetermined quantity of Leaf spring eye bushing for automobile that
are made up of polyvinyl chloride plastic;
c.) Undetermined quantity of Vehicle bearing cushion that is made up of

which the patent laws were designed to protect (e.g., transforming or reducing an

polyvinyl chloride plastic;

d.) Undetermined quantity of Dies and jigs, patterns and flasks used in the

article to a different state or thing), then the claim satisfies the requirements of 101.

manufacture/fabrication of items a to d;

e.) Evidences of sale which include delivery receipts, invoices and official
receipts.6
The RTC granted the application and issued Search Warrant Nos. 01-2401 and 012402 for the seizure of the aforecited articles.7 In the inventory submitted by the NBI
agent, it appears that the following articles/items were seized based on the search

Appeals,11 the petitioner stated that a search warrant is merely a judicial process
designed by the Rules of Court in anticipation of a criminal case. Until his copyright
was nullified in a proper proceeding, he enjoys rights of a registered owner/holder
thereof.
On January 3, 2002, the trial court issued an Order12 granting the motion, and

warrants:
Leaf Spring eye bushing
a) Plastic Polypropylene
- C190 27 }
- C240 rear 40 }
- C240 front 41 } BAG 1
b) Polyvinyl Chloride Plastic
- C190 13 }
c) Vehicle bearing cushion
- center bearing cushion 11 }
Budder for C190 mold 8 }
Diesel Mold
a) Mold for spring eye bushing rear 1 set
b) Mold for spring eye bushing front 1 set
c) Mold for spring eye bushing for C190 1 set
d) Mold for C240 rear 1 piece of the set
e) Mold for spring eye bushing for L300 2 sets
f) Mold for leaf spring eye bushing C190 with metal 1 set
g) Mold for vehicle bearing cushion 1 set8
The respondents filed a motion to quash the search warrants on the following

quashed the search warrant on its finding that there was no probable cause for its

grounds:
2. The copyright registrations were issued in violation of the Intellectual Property

able to secure a similar copyright registration of a similar product from the National

Code on the ground that:

a) the subject matter of the registrations are not artistic or literary;
b) the subject matter of the registrations are spare parts of automobiles
meaning there (sic) are original parts that they are designed to replace.

issuance. The court ruled that the work covered by the certificates issued to the
petitioner pertained to solutions to technical problems, not literary and artistic as
provided in Article 172 of the Intellectual Property Code.
His motion for reconsideration of the order having been denied by the trial courts
Order of February 14, 2002, the petitioner filed a petition for certiorari in the CA,
contending that the RTC had no jurisdiction to delve into and resolve the validity of
the copyright certificates issued to him by the National Library. He insisted that his
works are covered by Sections 172.1 and 172.2 of the Intellectual Property Code.
The petitioner averred that the copyright certificates are prima facie evidence of its
validity, citing the ruling of the United States Court of Appeals in Wildlife Express
Corporation v. Carol Wright Sales, Inc.13 The petitioner asserted that the respondents
failed to adduce evidence to support their motion to quash the search warrants. The
petitioner noted that respondent William Salinas, Jr. was not being honest, as he was
Library on January 14, 2002.
On September 26, 2003, the CA rendered judgment dismissing the petition on its
finding that the RTC did not commit any grave abuse of its discretion in issuing the
assailed order, to wit:
It is settled that preliminarily, there must be a finding that a specific offense must

Hence, they are not original.9

The respondents averred that the works covered by the certificates issued by the

have been committed to justify the issuance of a search warrant. In a number of cases

National Library are not artistic in nature; they are considered automotive spare parts

decided by the Supreme Court, the same is explicitly provided, thus:

"The probable cause must be in connection with one specific offense, and the judge

and pertain to technology. They aver that the models are not original, and as such are
the proper subject of a patent, not copyright.10
In opposing the motion, the petitioner averred that the court which issued the search
warrants was not the proper forum in which to articulate the issue of the validity of
the copyrights issued to him. Citing the ruling of the Court inMalaloan v. Court of

must, before issuing the warrant, personally examine in the form of searching
questions and answers, in writing and under oath, the complainant and any witness
he may produce, on facts personally known to them and attach to the record their
sworn statements together with any affidavit submitted.

"In the determination of probable cause, the court must necessarily resolve whether

the authors intellectual creation, regardless of whether it is one with utilitarian

or not an offense exists to justify the issuance or quashal of the search warrant."
In the instant case, the petitioner is praying for the reinstatement of the search

functions or incorporated in a useful article produced on an industrial scale.

The petitioner also maintains that the law does not provide that the intended use or

warrants issued, but subsequently quashed, for the offense of Violation of Class

use in industry of an article eligible for patent bars or invalidates its registration

Designation of Copyrightable Works under Section 177.1 in relation to Section 177.3

under the Law on Copyright. The test of protection for the aesthetic is not beauty and

of Republic Act 8293, when the objects subject of the same, are patently not

utility, but art for the copyright and invention of original and ornamental design for

copyrightable.
It is worthy to state that the works protected under the Law on Copyright are: literary

design patents.16 In like manner, the fact that his utility designs or models for articles

or artistic works (Sec. 172) and derivative works (Sec. 173). The Leaf Spring Eye
Bushing and Vehicle Bearing Cushion fall on neither classification. Accordingly, if,
in the first place, the item subject of the petition is not entitled to be protected by the
law on copyright, how can there be any violation?14
The petitioners motion for reconsideration of the said decision suffered the same

of manufacture have been expressed in the field of automotive parts, or based on

something already in the public domain does not automatically remove them from
the protection of the Law on Copyright.17
The petitioner faults the CA for ignoring Section 218 of R.A. No. 8293 which gives
the same presumption to an affidavit executed by an author who claims copyright

fate. The petitioner forthwith filed the present petition for review on certiorari,

ownership of his work.

The petitioner adds that a finding of probable cause to justify the issuance of a search

contending that the revocation of his copyright certificates should be raised in a

warrant means merely a reasonable suspicion of the commission of the offense. It is

direct action and not in a search warrant proceeding.

The petitioner posits that even assuming ex argumenti that the trial court may resolve

not equivalent to absolute certainty or a finding of actual and positive cause.18 He

the validity of his copyright in a proceeding to quash a search warrant for allegedly
infringing items, the RTC committed a grave abuse of its discretion when it declared
that his works are not copyrightable in the first place. He claims that R.A. No. 8293,

assists that the determination of probable cause does not concern the issue of whether
or not the alleged work is copyrightable. He maintains that to justify a finding of
probable cause in the issuance of a search warrant, it is enough that there exists a

otherwise known as the Intellectual Property Code of the Philippines, which took

reasonable suspicion of the commission of the offense.

The petitioner contends that he has in his favor the benefit of the presumption that

effect on January 1, 1998, provides in no uncertain terms that copyright protection

his copyright is valid; hence, the burden of overturning this presumption is on the

automatically attaches to a work by the sole fact of its creation, irrespective of its

alleged infringers, the respondents herein. But this burden cannot be carried in a

15

mode or form of expression, as well as of its content, quality or purpose. The law

hearing on a proceeding to quash the search warrants, as the issue therein is whether

gives a non-inclusive definition of "work" as referring to original intellectual

there was probable cause for the issuance of the search warrant. The petitioner

creations in the literary and artistic domain protected from the moment of their

concludes that the issue of probable cause should be resolved without invalidating

creation; and includes original ornamental designs or models for articles of

his copyright.
In their comment on the petition, the respondents aver that the work of the petitioner

manufacture, whether or not registrable as an industrial design and other works of

applied art under Section 172.1(h) of R.A. No. 8293.lawphil.net
As such, the petitioner insists, notwithstanding the classification of the works as

is essentially a technical solution to the problem of wear and tear in automobiles, the
substitution of materials, i.e., from rubber to plastic matter of polyvinyl chloride, an

either literary and/or artistic, the said law, likewise, encompasses works which may

oil resistant soft texture plastic material strong enough to endure pressure brought

have a bearing on the utility aspect to which the petitioners utility designs were

about by the vibration of the counter bearing and thus brings bushings. Such work,

classified. Moreover, according to the petitioner, what the Copyright Law protects is

the respondents assert, is the subject of copyright under Section 172.1 of R.A. No.

8293. The respondents posit that a technical solution in any field of human activity

The RTC is mandated under the Constitution and Rules of Criminal Procedure to

which is novel may be the subject of a patent, and not of a copyright. They insist that

determine probable cause. The court cannot abdicate its constitutional obligation by

the certificates issued by the National Library are only certifications that, at a point

refusing to determine whether an offense has been committed.20 The absence of

in time, a certain work was deposited in the said office. Furthermore, the registration

probable cause will cause the outright nullification of the search warrant.21
For the RTC to determine whether the crime for infringement under R.A. No. 8293

of copyrights does not provide for automatic protection. Citing Section 218.2(b) of
R.A. No. 8293, the respondents aver that no copyright is said to exist if a party
categorically questions its existence and legality. Moreover, under Section 2, Rule 7
of the Implementing Rules of R.A. No. 8293, the registration and deposit of work is
not conclusive as to copyright outlay or the time of copyright or the right of the
copyright owner. The respondents maintain that a copyright exists only when the
work is covered by the protection of R.A. No. 8293.
The petition has no merit.
The RTC had jurisdiction to delve into and resolve the issue whether the petitioners

as alleged in an application is committed, the petitioner-applicant was burdened to

prove that (a) respondents Jessie Ching and Joseph Yu were the owners of
copyrighted material; and (b) the copyrighted material was being copied and
distributed by the respondents. Thus, the ownership of a valid copyright is essential. 22
Ownership of copyrighted material is shown by proof of originality and
copyrightability. By originality is meant that the material was not copied, and
evidences at least minimal creativity; that it was independently created by the author
and that it possesses at least same minimal degree of creativity.23 Copying is shown

utility models are copyrightable and, if so, whether he is the owner of a copyright

by proof of access to copyrighted material and substantial similarity between the two

over the said models. It bears stressing that upon the filing of the application for

works.24 The applicant must thus demonstrate the existence and the validity of his

search warrant, the RTC was duty-bound to determine whether probable cause

copyright because in the absence of copyright protection, even original creation may

existed, in accordance with Section 4, Rule 126 of the Rules of Criminal Procedure:
SEC. 4. Requisite for issuing search warrant. A search warrant shall not issue but

be freely copied.25
By requesting the NBI to investigate and, if feasible, file an application for a search

upon probable cause in connection with one specific offense to be determined

warrant for infringement under R.A. No. 8293 against the respondents, the petitioner

personally by the judge after examination under oath or affirmation of the

thereby authorized the RTC (in resolving the application), to delve into and

complainant and the witnesses he may produce, and, particularly, describing the

determine the validity of the copyright which he claimed he had over the utility

place to be searched and the things to be seized.

In Solid Triangle Sales Corporation v. The Sheriff of RTC QC, Br. 93,19 the Court

models. The petitioner cannot seek relief from the RTC based on his claim that he

held that in the determination of probable cause, the court must necessarily resolve
whether or not an offense exists to justify the issuance of a search warrant or the

was the copyright owner over the utility models and, at the same time, repudiate the
courts jurisdiction to ascertain the validity of his claim without running afoul to the

quashal of one already issued by the court. Indeed, probable cause is deemed to exist

doctrine of estoppel.
To discharge his burden, the applicant may present the certificate of registration

only where facts and circumstances exist which could lead a reasonably cautious and

covering the work or, in its absence, other evidence.26 A copyright certificate

prudent man to believe that an offense has been committed or is being committed.

provides prima facie evidence of originality which is one element of copyright

Besides, in Section 3, Rule 126 of the Rules of Criminal Procedure, a search warrant

validity. It constitutes prima facie evidence of both validity and ownership27 and the

may be issued for the search and seizure of personal property (a) subject of the

validity of the facts stated in the certificate.28 The presumption of validity to a

offense; (b) stolen or embezzled and other proceeds or fruits of the offense; or (c)

certificate of copyright registration merely orders the burden of proof. The applicant

used or intended to be used as the means of committing an offense.

should not ordinarily be forced, in the first instance, to prove all the multiple facts

that underline the validity of the copyright unless the respondent, effectively
29

one of its ends and a cylindrical metal jacket surrounding the peripheral walls of said

challenging them, shifts the burden of doing so to the applicant. Indeed, Section

body, with the bushing made of plastic that is either polyvinyl chloride or

218.2 of R.A. No. 8293 provides:

218.2. In an action under this Chapter:
(a) Copyright shall be presumed to subsist in the work or other subject

polypropylene.31 Likewise, the Vehicle Bearing Cushion is illustrated as a bearing

matter to which the action relates if the defendant does not put in issue the
question whether copyright subsists in the work or other subject matter; and
(b) Where the subsistence of the copyright is established, the plaintiff shall

cushion comprising a generally semi-circular body having a central hole to secure a

conventional bearing and a plurality of ridges provided therefore, with said cushion
bearing being made of the same plastic materials.32 Plainly, these are not literary or
artistic works. They are not intellectual creations in the literary and artistic domain,

be presumed to be the owner of the copyright if he claims to be the owner of

or works of applied art. They are certainly not ornamental designs or one having

the copyright and the defendant does not put in issue the question of his

decorative quality or value.

It bears stressing that the focus of copyright is the usefulness of the artistic design,

ownership.
A certificate of registration creates no rebuttable presumption of copyright validity

and not its marketability. The central inquiry is whether the article is a work of

where other evidence in the record casts doubt on the question. In such a case,

art.33 Works for applied art include all original pictorials, graphics, and sculptural

validity will not be presumed.30

To discharge his burden of probable cause for the issuance of a search warrant for

works that are intended to be or have been embodied in useful article regardless of

violation of R.A. No. 8293, the petitioner-applicant submitted to the RTC Certificate

factors such as mass production, commercial exploitation, and the potential

of Copyright Registration Nos. 2001-197 and 2001-204 dated September 3, 2001 and

availability of design patent protection.34

As gleaned from the description of the models and their objectives, these articles are

September 4, 2001, respectively, issued by the National Library covering work

useful articles which are defined as one having an intrinsic utilitarian function that is

identified as Leaf Spring Eye Bushing for Automobile and Vehicle Bearing Cushion

not merely to portray the appearance of the article or to convey information. Indeed,

both classified under Section 172.1(h) of R.A. No. 8293, to wit:

SEC. 172. Literary and Artistic Works. 172.1. Literary and artistic works,

while works of applied art, original intellectual, literary and artistic works are

hereinafter referred to as "works," are original intellectual creations in the literary

and artistic domain protected from the moment of their creation and shall include in
particular:
...
(h) Original ornamental designs or models for articles of manufacture, whether or not
registrable as an industrial design, and other works of applied art.
Related to the provision is Section 171.10, which provides that a "work of applied

copyrightable, useful articles and works of industrial design are not.35 A useful article
may be copyrightable only if and only to the extent that such design incorporates
pictorial, graphic, or sculptural features that can be identified separately from, and
are capable of existing independently of the utilitarian aspects of the article.
We agree with the contention of the petitioner (citing Section 171.10 of R.A. No.
8293), that the authors intellectual creation, regardless of whether it is a creation
with utilitarian functions or incorporated in a useful article produced on an industrial

art" is an artistic creation with utilitarian functions or incorporated in a useful article,

scale, is protected by copyright law. However, the law refers to a "work of applied art

whether made by hand or produced on an industrial scale.

But, as gleaned from the specifications appended to the application for a copyright

which is an artistic creation." It bears stressing that there is no copyright protection

certificate filed by the petitioner, the said Leaf Spring Eye Bushing for Automobile is
merely a utility model described as comprising a generally cylindrical body having a
co-axial bore that is centrally located and provided with a perpendicular flange on

for works of applied art or industrial design which have aesthetic or artistic features
that cannot be identified separately from the utilitarian aspects of the
article.36Functional components of useful articles, no matter how artistically

designed, have generally been denied copyright protection unless they are separable
37

from the useful article.

In this case, the petitioners models are not works of applied art, nor artistic works.
They are utility models, useful articles, albeit with no artistic design or value. Thus,
the petitioner described the utility model as follows:
LEAF SPRING EYE BUSHING FOR AUTOMOBILE
Known bushings inserted to leaf-spring eye to hold leaf-springs of automobile are
made of hard rubber. These rubber bushings after a time, upon subjecting them to so
much or intermittent pressure would eventually wore (sic) out that would cause the
wobbling of the leaf spring.
The primary object of this utility model, therefore, is to provide a leaf-spring eye
bushing for automobile that is made up of plastic.
Another object of this utility model is to provide a leaf-spring eye bushing for
automobiles made of polyvinyl chloride, an oil resistant soft texture plastic or
polypropylene, a hard plastic, yet both causes cushion to the leaf spring, yet strong
enough to endure pressure brought about by the up and down movement of said leaf
spring.
Yet, an object of this utility model is to provide a leaf-spring eye bushing for
automobiles that has a much longer life span than the rubber bushings.
Still an object of this utility model is to provide a leaf-spring eye bushing for
automobiles that has a very simple construction and can be made using simple and
ordinary molding equipment.
A further object of this utility model is to provide a leaf-spring eye bushing for

Referring now to the several views of the drawings wherein like reference numerals
designated same parts throughout, there is shown a utility model for a leaf-spring eye
bushing for automobile generally designated as reference numeral 10.
Said leaf-spring eye bushing 10 comprises a generally cylindrical body 11 having a
co-axial bore 12 centrally provided thereof.
As shown in Figs. 1 and 2, said leaf-spring eye bushing 10 is provided with a
perpendicular flange 13 on one of its ends and a cylindrical metal jacket 14
surrounding the peripheral walls 15 of said body 11. When said leaf-spring bushing
10 is installed, the metal jacket 14 acts with the leaf-spring eye (not shown), which is
also made of steel or cast steel. In effect, the bushing 10 will not be directly in
contact with steel, but rather the metal jacket, making the life of the bushing 10
longer than those without the metal jacket.
In Figure 2, the bushing 10 as shown is made of plastic, preferably polyvinyl
chloride, an oil resistant soft texture plastic or a hard polypropylene plastic, both are
capable to endure the pressure applied thereto, and, in effect, would lengthen the life
and replacement therefor.
Figure 3, on the other hand, shows the walls 16 of the co-axial bore 12 of said
bushing 10 is insertably provided with a steel tube 17 to reinforce the inner portion
thereof. This steel tube 17 accommodates or engages with the leaf-spring bolt (not
shown) connecting the leaf spring and the automobiles chassis.
Figures 4 and 5 show another embodiment wherein the leaf eye bushing 10 is
elongated and cylindrical as to its construction. Said another embodiment is also

automobile that is supplied with a metal jacket to reinforce the plastic eye bushing

made of polypropylene or polyvinyl chloride plastic material. The steel tube 17 and

when in engaged with the steel material of the leaf spring.

These and other objects and advantages will come to view and be understood upon a

metal jacket 14 may also be applied to this embodiment as an option thereof. 38

VEHICLE BEARING CUSHION
Known bearing cushions inserted to bearing housings for vehicle propeller shafts are

reading of the detailed description when taken in conjunction with the accompanying
drawings.
Figure 1 is an exploded perspective of a leaf-spring eye bushing according to the
present utility model;
Figure 2 is a sectional view taken along line 2-2 of Fig. 1;
Figure 3 is a longitudinal sectional view of another embodiment of this utility model;
Figure 4 is a perspective view of a third embodiment; and
Figure 5 is a sectional view thereof.

made of hard rubber. These rubber bushings after a time, upon subjecting them to so
much or intermittent pressure would eventually be worn out that would cause the
wobbling of the center bearing.
The primary object of this utility model therefore is to provide a vehicle-bearing
cushion that is made up of plastic.
Another object of this utility model is to provide a vehicle bearing cushion made of
polyvinyl chloride, an oil resistant soft texture plastic material which causes cushion

to the propellers center bearing, yet strong enough to endure pressure brought about

third, the provisions on utility model dispense with its substantive examination45 and

by the vibration of the center bearing.

Yet, an object of this utility model is to provide a vehicle-bearing cushion that has a

prefer for a less complicated system.

Being plain automotive spare parts that must conform to the original structural

much longer life span than rubber bushings.

Still an object of this utility model is to provide a vehicle bearing cushion that has a

design of the components they seek to replace, the Leaf Spring Eye Bushing and

very simple construction and can be made using simple and ordinary molding
equipment.
These and other objects and advantages will come to view and be understood upon a
reading of the detailed description when taken in conjunction with the accompanying
drawings.
Figure 1 is a perspective view of the present utility model for a vehicle-bearing
cushion; and
Figure 2 is a sectional view thereof.
Referring now to the several views of the drawing, wherein like reference numeral
designate same parts throughout, there is shown a utility model for a vehicle-bearing
cushion generally designated as reference numeral 10.
Said bearing cushion 10 comprises of a generally semi-circular body 11, having
central hole 12 to house a conventional bearing (not shown). As shown in Figure 1,
said body 11 is provided with a plurality of ridges 13 which serves reinforcing means
thereof.
The subject bearing cushion 10 is made of polyvinyl chloride, a soft texture oil and
chemical resistant plastic material which is strong, durable and capable of enduring
severe pressure from the center bearing brought about by the rotating movement of
the propeller shaft of the vehicle.39
A utility model is a technical solution to a problem in any field of human activity
which is new and industrially applicable. It may be, or may relate to, a product, or
40

process, or an improvement of any of the aforesaid. Essentially, a utility model

refers to an invention in the mechanical field. This is the reason why its object is
sometimes described as a device or useful object.41 A utility model varies from an
invention, for which a patent for invention is, likewise, available, on at least three
aspects: first, the requisite of "inventive step"42 in a patent for invention is not
required; second, the maximum term of protection is only seven years43 compared to
a patent which is twenty years,44 both reckoned from the date of the application; and

Vehicle Bearing Cushion are not ornamental. They lack the decorative quality or
value that must characterize authentic works of applied art. They are not even artistic
creations with incidental utilitarian functions or works incorporated in a useful
article. In actuality, the personal properties described in the search warrants are
mechanical works, the principal function of which is utility sans any aesthetic
embellishment.
Neither are we to regard the Leaf Spring Eye Bushing and Vehicle Bearing Cushion
as included in the catch-all phrase "other literary, scholarly, scientific and artistic
works" in Section 172.1(a) of R.A. No. 8293. Applying the principle of ejusdem
generis which states that "where a statute describes things of a particular class or
kind accompanied by words of a generic character, the generic word will usually be
limited to things of a similar nature with those particularly enumerated, unless there
be something in the context of the state which would repel such inference,"46 the Leaf
Spring Eye Bushing and Vehicle Bearing Cushion are not copyrightable, being not of
the same kind and nature as the works enumerated in Section 172 of R.A. No. 8293.
No copyright granted by law can be said to arise in favor of the petitioner despite the
issuance of the certificates of copyright registration and the deposit of the Leaf
Spring Eye Bushing and Vehicle Bearing Cushion. Indeed, inJoaquin, Jr. v.
Drilon47 and Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated,48 the
Court ruled that:
Copyright, in the strict sense of the term, is purely a statutory right. It is a new or
independent right granted by the statute, and not simply a pre-existing right regulated
by it. Being a statutory grant, the rights are only such as the statute confers, and may
be obtained and enjoyed only with respect to the subjects and by the persons, and on
terms and conditions specified in the statute. Accordingly, it can cover only the
works falling within the statutory enumeration or description.
That the works of the petitioner may be the proper subject of a patent does not entitle
him to the issuance of a search warrant for violation of copyright laws. In Kho v.
Court of Appeals49 and Pearl & Dean (Phil.), Incorporated v. Shoemart,

Incorporated,50 the Court ruled that "these copyright and patent rights are completely

are concerned, such as artistic jewelry, enamels, glassware, and tapestries, as well as

distinct and separate from one another, and the protection afforded by one cannot be

all works belonging to the fine arts, such as paintings, drawings and sculpture. "
So we have a contemporaneous and long-continued construction of the statutes by

used interchangeably to cover items or works that exclusively pertain to the others."
The Court expounded further, thus:
Trademark, copyright and patents are different intellectual property rights that cannot
be interchanged with one another. A trademark is any visible sign capable of
distinguishing the goods (trademark) or services (service mark) of an enterprise and
shall include a stamped or marked container of goods. In relation thereto, a trade
name means the name or designation identifying or distinguishing an enterprise.
Meanwhile, the scope of a copyright is confined to literary and artistic works which
are original intellectual creations in the literary and artistic domain protected from
the moment of their creation. Patentable inventions, on the other hand, refer to any
technical solution of a problem in any field of human activity which is new, involves
an inventive step and is industrially applicable.
The petitioner cannot find solace in the ruling of the United States Supreme Court

the agency charged to administer them that would allow the registration of such a
statuette as is in question here.52
The High Court went on to state that "[t]he dichotomy of protection for the aesthetic
is not beauty and utility but art for the copyright and the invention of original and
ornamental design for design patents." Significantly, the copyright office
promulgated a rule to implement Mazer to wit:
[I]f "the sole intrinsic function of an article is its utility, the fact that the work is
unique and attractively shaped will not qualify it as a work of art."
In this case, the bushing and cushion are not works of art. They are, as the petitioner
himself admitted, utility models which may be the subject of a patent.
IN LIGHT OF ALL THE FOREGOING, the instant petition is hereby DENIED
for lack of merit. The assailed Decision and Resolution of the Court of Appeals in
CA-G.R. SP No. 70411 are AFFIRMED. Search Warrant Nos. 01-2401 and 01-2402

in Mazer v. Stein51 to buttress his petition. In that case, the artifacts involved in that

issued on October 15, 2001 are ANNULLED AND SET ASIDE. Costs against the

case were statuettes of dancing male and female figures made of semi-vitreous china.

petitioner. SO ORDERED.

The controversy therein centered on the fact that although copyrighted as "works of
art," the statuettes were intended for use and used as bases for table lamps, with

CRESER PRECISION SYSTEMS, INC., petitioner, vs. COURT OF APPEALS

electric wiring, sockets and lampshades attached. The issue raised was whether the

AND FLORO INTERNATIONAL CORP., respondents.

Private respondent is a domestic corporation engaged in the manufacture, production,

statuettes were copyright protected in the United States, considering that the

distribution and sale of military armaments, munitions, airmunitions and other

copyright applicant intended primarily to use them as lamp bases to be made and

similar materials. 2
On January 23, 1990, private respondent was granted by the Bureau of Patents,

sold in quantity, and carried such intentions into effect. At that time, the Copyright
Office interpreted the 1909 Copyright Act to cover works of artistic craftsmanship
insofar as their form, but not the utilitarian aspects, were concerned. After reviewing
the history and intent of the US Congress on its copyright legislation and the
interpretation of the copyright office, the US Supreme Court declared that the
statuettes were held copyrightable works of art or models or designs for works of art.
The High Court ruled that:
"Works of art (Class G) (a) In General. This class includes works of artistic
craftsmanship, in so far as their form but not their mechanical or utilitarian aspects

Trademarks and Technology Transfer (BPTTT), a Letters Patent No. UM6938 3 covering an aerial fuze which was published in the September-October-1990,
Vol. III, No. 5 issue of the Bureau of Patent's Official Gazette. 4
Sometime in November 1993, private respondent, through its president, Mr. Gregory
Floro, Jr., discovered that petitioner submitted samples of its patented aerial fuze to
the Armed Forces of the Philippines (AFP) for testing. He learned that petitioner was
claiming the aforesaid aerial fuze as its own and planning to bid and manufacture the
same commercially without license or authority from private respondent. To protect
its right, private respondent on December 3, 1993, sent a letter 5 to petitioner advising

it of its existing patent and its rights thereunder, warning petitioner of a possible

On December 29, 1993, the trial court issued an Order 8 granting the issuance of a

court action and/or application for injunction, should it proceed with the scheduled

writ of preliminary injunction against private respondent the dispositive portion of

testing by the military on December 7, 1993.

In response to private respondent's demand, petitioner filed on December 8, 1993 a

which reads:
WHEREFORE, plaintiffs application for the issuance of a writ of

complaint 6 for injunction and damages arising from the alleged infringement before

preliminary injunction is granted and, upon posting of the

the Regional Trial Court of Quezon City, Branch 88. The complaint alleged, among

corresponding bond by plaintiff in the amount of PHP 200,000.00,

others: that petitioner is the first, true and actual inventor of an aerial fuze

let the writ of preliminary injunction be issued by the branch Clerk

denominated as "Fuze, PDR 77 CB4" which it developed as early as December 1981

of this Court enjoining the defendant and any and all persons

under the Self-Reliance Defense Posture Program (SRDP) of the AFP; that sometime

acting on its behalf or by and under its authority, from

in 1986, petitioner began supplying the AFP with the said aerial fuze; that private

manufacturing, marketing and/or selling aerial fuzes identical, to

respondent's aerial fuze is identical in every respect to the petitioner's fuze; and that

those of plaintiff, and from profiting therefrom, and/or from

the only difference between the two fuzes are miniscule and merely cosmetic in

performing any other act in connection therewith until further

nature. Petitioner prayed that a temporary restraining order and/or writ of preliminary
injunction be issued enjoining private respondent including any and all persons
acting on its behalf from manufacturing, marketing and/or profiting therefrom,
and/or from performing any other act in connection therewith or tending to prejudice
and deprive it of any rights, privileges and benefits to which it is duly entitled as the
first, true and actual inventor of the aerial fuze.
On December 10, 1993, the trial court issued a temporary restraining order.
Thereafter, hearings were held on the application of petitioner for the issuance of a
writ of preliminary injunction, with both parties presenting their evidence. After the
hearings, the trial court directed the parties to submit their respective memoranda in
support of their positions.
On December 27, 1993, private respondent submitted its memorandum 7 alleging that

orders from this Court.

Private respondent moved for reconsideration but this was denied by the trial court in
its Order 9 of May 11, 1994, pertinent portions of which read:
For resolution before this Court is the Motion for Reconsideration
filed by the defendant and the plaintiff's Opposition thereto. The
Court finds no sufficient cause to reconsider its order dated
December 29, 1993. During the hearing for the issuance of the
preliminary injunction, the plaintiff has amply proven its
entitlement to the relief prayed for. It is undisputed that the
plaintiff has developed itsaerial fuze way back in 1981 while the
defendant began manufacturing the same only in 1987. Thus, it is
only logical to conclude that it was the plaintiff's aerial fuze that

petitioner has no cause of action to file a complaint for infringement against it since

was copied or imitated which gives the plaintiff the right to have

it has no patent for the aerial fuze which it claims to have invented; that petitioner's

the defendant enjoined "from manufacturing, marketing and/or

available remedy is to file a petition for cancellation of patent before the Bureau of

sellingaerial fuzes identical to those of the plaintiff, and from

Patents; that private respondent as the patent holder cannot be stripped of its property

profiting therefrom and/or performing any other act in connection

right over the patented aerial fuze consisting of the exclusive right to manufacture,

therewith until further orders from this Court." With regards to the

use and sell the same and that it stands to suffer irreparable damage and injury if it is

defendant's assertion that an action for infringement may only be

enjoined from the exercise of its property rights over its patent.

brought by "anyone possessing right, title or interest to the

patented invention," (Section 42, RA 165) qualified by Sec. 10, RA

165 to include only "the first true and actual inventor, his heirs,

d. The trial court acted in grave abuse of discretion and/or in

legal representatives or assignees, "this court finds the foregoing to

excess of jurisdiction in granting the preliminary injunction, it

be untenable. Sec. 10 merely enumerates the persons who may

being disruptive of the status quo; and

e. The trial court acted in grave abuse of discretion and/or in excess

have an invention patented which does not necessarily limit to

these persons the right to institute an action for infringement.
Defendant further contends that the order in issue is disruptive of
the status quo. On the contrary, the order issued by the Court in
effect maintained the status quo. The last actual, peaceable
uncontested status existing prior to this controversy was the
plaintiff manufacturing and selling its ownaerial fuzes PDR 77
CB4 which was ordered stopped through the defendant's letter.
With the issuance of the order, the operations of the plaintiff
continue. Lastly, this court believes that the defendant will not
suffer irreparable injury by virtue of said order. The defendant's
claim is primarily hinged on its patent (Letters Patent No. UM6983) the validity of which is being questioned in this case.
WHEREFORE, premises considered, the Motion for
Reconsideration is hereby denied for lack of merit.
SO ORDERED.
Aggrieved, private respondent on June 27, 1994, filed a petition for certiorari,
mandamus and prohibition 10 before respondent Court of Appeals raising as grounds
the following:
a. Petitioner has no cause of action for infringement against private

of jurisdiction in granting the preliminary injunction thereby

depriving private respondent of its property rights over the
patentedaerial fuze and cause it irreparable damages.
On November 9, 1994, the respondent court rendered the now assailed decision
reversing the trial court's Order of December 29, 1993 and dismissing the complaint
filed by petitioner.
The motion for reconsideration was also denied on January 17, 1995. 11 Hence, this
present petition.
It is petitioner's contention that it can file, under Section 42 of the Patent Law (R.A.
165), an action for infringement not as a patentee but as an entity in possession of a
right, title or interest in and to the patented invention. It advances the theory that
while the absence of a patent may prevent one from lawfully suing another for
infringement of said patent, such absence does not bar the first true and actual
inventor of the patented invention from suing another who was granted a patent in a
suit for declaratory or injunctive relief recognized under American patent laws. This
remedy, petitioner points out, may be likened to a civil action for infringement under
Section 42 of the Philippine Patent Law.
We find the above arguments untenable.
Section 42 of R.A. 165, otherwise known as the Patent Law, explicitly provides:
Sec. 42. Civil action for infringement. Any patentee, or anyone

respondent, the latter not having any patent for the aerial

possessing any right, title or interest in and to the patented

fuze which it claims to have invented and developed and allegedly

invention, whose rights have been infringed, may bring a civil

infringed by private respondent;

b. the case being an action for cancellation or invalidation of

action before the proper Court of First Instance (now Regional

private respondent's Letters Patent over its own aerial fuze, the
proper venue is the Office of the Director of Patents;
c. The trial court acted in grave abuse of discretion and/or in excess
of jurisdiction in finding that petitioner has fully established its
clear title or right to preliminary injunction;

Trial court), to recover from the infringer damages sustained by

reason of the infringement and to secure an injunction for the
protection of his right. . . .
Under the aforequoted law, only the patentee or his successors-in-interest may file an
action for infringement. The phrase "anyone possessing any right, title or interest in
and to the patented invention" upon which petitioner maintains its present suit, refers
only to the patentee's successors-in-interest, assignees or grantees since actions for

infringement of patent may be brought in the name of the person or persons

or impugn the validity of the private respondent's letters patent by claiming that it is

interested, whether as patentee, assignees, or as grantees, of the exclusive

the true and actual inventor of the aerial fuze.

Thus, as correctly ruled by the respondent Court of Appeals in its assailed decision:

right.

12

Moreover, there can be no infringement of a patent until a patent has been

issued, since whatever right one has to the invention covered by the patent arises
alone from the grant of patent. 13 In short, a person or entity who has not been
granted letters patent over an invention and has not acquired any light or title thereto
either as assignee or as licensee, has no cause of action for infringement because the
right to maintain an infringement suit depends on the existence of the patent. 14
Petitioner admits it has no patent over its aerial fuze. Therefore, it has no legal basis
or cause of action to institute the petition for injunction and damages arising from the
alleged infringement by private respondent. While petitioner claims to be the first
inventor of the aerial fuze, still it has no right of property over the same upon which
it can maintain a suit unless it obtains a patent therefor. Under American
jurisprudence, an inventor has no common-law right to a monopoly of his invention.
He has the right to make, use and vend his own invention, but if he voluntarily
discloses it, such as by offering it for sale, the world is free to copy and use it with
impunity. A patent, however, gives the inventor the right to exclude all others. As a
patentee, he has the exclusive right of making, using or selling the invention. 15
Further, the remedy of declaratory judgment or injunctive suit on patent invalidity
relied upon by petitioner cannot be likened to the civil action for infringement under
Section 42 of the Patent Law. The reason for this is that the said remedy is available

"since the petitioner (private respondent herein) is the patentee of the disputed
invention embraced by letters of patent UM No. 6938 issued to it on January 23,
1990 by the Bureau of Patents, it has in its favor not only the presumption of validity
of its patent, but that of a legal and factual first and true inventor of the invention."
In the case of Aguas vs. De Leon, 16 we stated that:
The validity of the patent issued by the Philippine Patent Office in
favor of the private respondent and the question over the
investments, novelty and usefulness of the improved process
therein specified and described are matters which are better
determined by the Philippines Patent Office. The technical Staff of
the Philippines Patent Office, composed of experts in their field,
have, by the issuance of the patent in question, accepted the
thinness of the private respondent's new tiles as a discovery. There
is a presumption that the Philippine Patent Office has correctly
determined the patentability of the improvement by the private
respondent of the process in question.
In fine, in the absence of error or abuse of power or lack of jurisdiction or grave
abuse of discretion, we sustain the assailed decision of the respondent Court of

only to the patent holder or his successors-in-interest. Thus, anyone who has no

Appeal.
WHEREFORE, the decision of the Court of Appeals is hereby AFFIRMED. No

patent over an invention but claims to have a right or interest thereto can not file an

pronouncement as to costs. SO ORDERED.

action for declaratory judgment or injunctive suit which is not recognized in this
jurisdiction. Said person, however, is not left without any remedy. He can, under

PHIL PHARMAWEALTH, INC., Petitioner, vs. PFIZER, INC. and PFIZER

Section 28 of the aforementioned law, file a petition for cancellation of the patent

(PHIL.) INC., Respondents.

The instant case arose from a Complaint3 for patent infringement filed against

within three (3) years from the publication of said patent with the Director of Patents

petitioner Phil Pharmawealth, Inc. by respondent companies, Pfizer, Inc. and Pfizer

and raise as ground therefor that the person to whom the patent was issued is not the

(Phil.), Inc., with the Bureau of Legal Affairs of the Intellectual Property Office

true and actual inventor. Hence, petitioner's remedy is not to file an action for

(BLA-IPO). The Complaint alleged as follows: x x x x

6. Pfizer is the registered owner of Philippine Letters Patent No. 21116 (the "Patent")

injunction or infringement but to file a petition for cancellation of private

respondent's patent. Petitioner however failed to do so. As such, it can not now assail

which was issued by this Honorable Office on July 16, 1987. The patent is valid until
July 16, 2004. The claims of this Patent are directed to "a method of increasing the

effectiveness of a beta-lactam antibiotic in a mammalian subject, which comprises

temporary restraining order and a preliminary injunction that would prevent herein

co-administering to said subject a beta-lactam antibiotic effectiveness increasing

petitioner, its agents, representatives and assigns, from importing, distributing,

amount of a compound of the formula IA." The scope of the claims of the Patent

selling or offering the subject product for sale to any entity in the Philippines.
In an Order5 dated July 15, 2003 the BLA-IPO issued a preliminary injunction which

extends to a combination of penicillin such as ampicillin sodium and beta-lactam

antibiotic like sulbactam sodium.
7. Patent No. 21116 thus covers ampicillin sodium/sulbactam sodium (hereafter
"Sulbactam Ampicillin"). Ampicillin sodium is a specific example of the broad betalactam antibiotic disclosed and claimed in the Patent. It is the compound which
efficacy is being enhanced by co-administering the same with sulbactam sodium.
Sulbactam sodium, on the other hand, is a specific compound of the formula IA
disclosed and claimed in the Patent.
8. Pfizer is marketing Sulbactam Ampicillin under the brand name "Unasyn." Pfizer's
"Unasyn" products, which come in oral and IV formulas, are covered by Certificates
of Product Registration ("CPR") issued by the Bureau of Food and Drugs ("BFAD")

was effective for ninety days from petitioner's receipt of the said Order.
Prior to the expiration of the ninety-day period, respondents filed a Motion for
Extension of Writ of Preliminary Injunction6 which, however, was denied by the
BLA-IPO in an Order7 dated October 15, 2003.
Respondents filed a Motion for Reconsideration but the same was also denied by the
BLA-IPO in a Resolution8dated January 23, 2004.
Respondents then filed a special civil action for certiorari with the CA assailing the
October 15, 2003 and January 23, 2004 Resolutions of the BLA-IPO. Respondents
also prayed for the issuance of a preliminary mandatory injunction for the
reinstatement and extension of the writ of preliminary injunction issued by the BLA-

under the name of complainants. The sole and exclusive distributor of "Unasyn"

IPO.
While the case was pending before the CA, respondents filed a Complaint9 with the

products in the Philippines is Zuellig Pharma Corporation, pursuant to a Distribution

Regional Trial Court (RTC) of Makati City for infringement and unfair competition

Services Agreement it executed with Pfizer Phils. on January 23, 2001.

9. Sometime in January and February 2003, complainants came to know that

with damages against herein petitioner. In said case, respondents prayed for the

respondent [herein petitioner] submitted bids for the supply of Sulbactam Ampicillin
to several hospitals without the consent of complainants and in violation of the

issuance of a temporary restraining order and preliminary injunction to prevent

herein petitioner from importing, distributing, selling or offering for sale sulbactam
ampicillin products to any entity in the Philippines. Respondents asked the trial court

complainants' intellectual property rights. x x x x

10. Complainants thus wrote the above hospitals and demanded that the latter

that, after trial, judgment be rendered awarding damages in their favor and making

immediately cease and desist from accepting bids for the supply [of] Sulbactam

the injunction permanent.

On August 24, 2004, the RTC of Makati City issued an Order10 directing the issuance

Ampicillin or awarding the same to entities other than complainants. Complainants,

in the same letters sent through undersigned counsel, also demanded that respondent
immediately withdraw its bids to supply Sulbactam Ampicillin.
11. In gross and evident bad faith, respondent and the hospitals named in paragraph 9
hereof, willfully ignored complainants' just, plain and valid demands, refused to

of a temporary restraining order conditioned upon respondents' filing of a bond.

In a subsequent Order11 dated April 6, 2005, the same RTC directed the issuance of a
writ of preliminary injunction "prohibiting and restraining [petitioner], its agents,
representatives and assigns from importing, distributing or selling Sulbactam

comply therewith and continued to infringe the Patent, all to the damage and

Ampicillin products to any entity in the Philippines."

Meanwhile, on November 16, 2004, petitioner filed a Motion to Dismiss12 the

prejudice of complainants. As registered owner of the Patent, Pfizer is entitled to

petition filed with the CA on the ground of forum shopping, contending that the case

protection under Section 76 of the IP Code. x x x x

Respondents prayed for permanent injunction, damages and the forfeiture and
impounding of the alleged infringing products. They also asked for the issuance of a

filed with the RTC has the same objective as the petition filed with the CA, which is
to obtain an injunction prohibiting petitioner from importing, distributing and selling
Sulbactam Ampicillin products.

On January 18, 2005, the CA issued its questioned Resolution13 approving the bond

Section 37 of Republic Act No. (RA) 165,17 which was the governing law at the time

posted by respondents pursuant to the Resolution issued by the appellate court on

of the issuance of respondents' patent, provides:

Section 37. Rights of patentees. A patentee shall have the exclusive right to make,

March 23, 2004 which directed the issuance of a temporary restraining order
conditioned upon the filing of a bond. On even date, the CA issued a temporary
restraining order14 which prohibited petitioner "from importing, distributing, selling
or offering for sale Sulbactam Ampicillin products to any hospital or to any other
entity in the Philippines, or from infringing Pfizer Inc.'s Philippine Patent No. 21116

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 term of the patent; and such making, using, or selling by any
person without the authorization of the patentee constitutes infringement of the

and impounding all the sales invoices and other documents evidencing sales by

patent.18
It is clear from the above-quoted provision of law that the exclusive right of a

[petitioner] of Sulbactam Ampicillin products."

On February 7, 2005, petitioner again filed a Motion to Dismiss15 the case for being

patentee to make, use and sell a patented product, article or process exists only

moot and academic, contending that respondents' patent had already lapsed. In the
same manner, petitioner also moved for the reconsideration of the temporary
restraining order issued by the CA on the same basis that the patent right sought to be
protected has been extinguished due to the lapse of the patent license and on the
ground that the CA has no jurisdiction to review the order of the BLA-IPO as said
jurisdiction is vested by law in the Office of the Director General of the IPO.
On April 11, 2005, the CA rendered its presently assailed Resolution denying the

during the term of the patent. In the instant case, Philippine Letters Patent No. 21116,
which was the basis of respondents in filing their complaint with the BLA-IPO, was
issued on July 16, 1987. This fact was admitted by respondents themselves in their
complaint. They also admitted that the validity of the said patent is until July 16,
2004, which is in conformity with Section 21 of RA 165, providing that the term of a
patent shall be seventeen (17) years from the date of issuance thereof. Section 4,
Rule 129 of the Rules of Court provides that an admission, verbal or written, made

Motion to Dismiss, dated November 16, 2004, and the motion for reconsideration, as

by a party in the course of the proceedings in the same case, does not require proof

well as Motion to Dismiss, both dated February 7, 2005.

Hence, the present petition raising the following issues:
a) Can an injunctive relief be issued based on an action of patent

and that the admission may be contradicted only by showing that it was made

infringement when the patent allegedly infringed has already lapsed?

b) What tribunal has jurisdiction to review the decisions of the Director of
Legal Affairs of the Intellectual Property Office?
c) Is there forum shopping when a party files two actions with two
seemingly different causes of action and yet pray for the same relief?16
In the first issue raised, petitioner argues that respondents' exclusive right to
monopolize the subject matter of the patent exists only within the term of the patent.
Petitioner claims that since respondents' patent expired on July 16, 2004, the latter no
longer possess any right of monopoly and, as such, there is no more basis for the
issuance of a restraining order or injunction against petitioner insofar as the disputed
patent is concerned.
The Court agrees.

through palpable mistake or that no such admission was made. In the present case,
there is no dispute as to respondents' admission that the term of their patent expired
on July 16, 2004. Neither is there evidence to show that their admission was made
through palpable mistake. Hence, contrary to the pronouncement of the CA, there is
no longer any need to present evidence on the issue of expiration of respondents'
patent.
On the basis of the foregoing, the Court agrees with petitioner that after July 16,
2004, respondents no longer possess the exclusive right to make, use and sell the
articles or products covered by Philippine Letters Patent No. 21116.
Section 3, Rule 58, of the Rules of Court lays down the requirements for the issuance
of a writ of preliminary injunction, viz:
(a) That the applicant is entitled to the relief demanded, and the whole or
part of such relief consists in restraining the commission or continuance of

the acts complained of, or in requiring the performance of an act or acts,

rendered by the Director of the BLA-IPO. However, what is being questioned before

either for a limited period or perpetually;

(b) That the commission, continuance or non-performance of the act or acts

the CA is not a decision, but an interlocutory order of the BLA-IPO denying

complained of during the litigation would probably work injustice to the

applicant; or
(c) That a party, court, or agency or a person is doing, threatening, or
attempting to do, or is procuring or suffering to be done, some act or acts
probably in violation of the rights of the applicant respecting the subject of
the action or proceeding, and tending to render the judgment ineffectual.
In this connection, pertinent portions of Section 5, Rule 58 of the same Rules provide
that if the matter is of extreme urgency and the applicant will suffer grave injustice
and irreparable injury, a temporary restraining order may be issued ex parte.
From the foregoing, it can be inferred that two requisites must exist to warrant the

respondents' motion to extend the life of the preliminary injunction issued in their
favor.
RA 8293 is silent with respect to any remedy available to litigants who intend to
question an interlocutory order issued by the BLA-IPO. Moreover, Section 1(c), Rule
14 of the Rules and Regulations on Administrative Complaints for Violation of Laws
Involving Intellectual Property Rights simply provides that interlocutory orders shall
not be appealable. The said Rules and Regulations do not prescribe a procedure
within the administrative machinery to be followed in assailing orders issued by the
BLA-IPO pending final resolution of a case filed with them. Hence, in the absence of
such a remedy, the provisions of the Rules of Court shall apply in a suppletory

issuance of an injunctive relief, namely: (1) the existence of a clear and unmistakable

manner, as provided under Section 3, Rule 1 of the same Rules and Regulations.

right that must be protected; and (2) an urgent and paramount necessity for the writ

Hence, in the present case, respondents correctly resorted to the filing of a special

to prevent serious damage.19

In the instant case, it is clear that when the CA issued its January 18, 2005 Resolution

civil action for certiorari with the CA to question the assailed Orders of the BLA-

approving the bond filed by respondents, the latter no longer had a right that must be
protected, considering that Philippine Letters Patent No. 21116 which was issued to
them already expired on July 16, 2004. Hence, the issuance by the CA of a temporary
restraining order in favor of the respondents is not proper.
In fact, the CA should have granted petitioner's motion to dismiss the petition for
certiorari filed before it as the only issue raised therein is the propriety of extending
the writ of preliminary injunction issued by the BLA-IPO. Since the patent which
was the basis for issuing the injunction, was no longer valid, any issue as to the
propriety of extending the life of the injunction was already rendered moot and
academic.
As to the second issue raised, the Court, is not persuaded by petitioner's argument

IPO, as they cannot appeal therefrom and they have no other plain, speedy and
adequate remedy in the ordinary course of law. This is consistent with Sections
120 and 4,21 Rule 65 of the Rules of Court, as amended.
In the first place, respondents' act of filing their complaint originally with the BLAIPO is already in consonance with the doctrine of primary jurisdiction.
This Court has held that:
[i]n cases involving specialized disputes, the practice has been to refer the same to an
administrative agency of special competence in observance of the doctrine of
primary jurisdiction. The Court has ratiocinated that it cannot or will not determine a
controversy involving a question which is within the jurisdiction of the
administrative tribunal prior to the resolution of that question by the administrative
tribunal, where the question demands the exercise of sound administrative discretion

that, pursuant to the doctrine of primary jurisdiction, the Director General of the IPO

requiring the special knowledge, experience and services of the administrative

and not the CA has jurisdiction to review the questioned Orders of the Director of the

tribunal to determine technical and intricate matters of fact, and a uniformity of

BLA-IPO.
It is true that under Section 7(b) of RA 8293, otherwise known as the Intellectual

ruling is essential to comply with the premises of the regulatory statute administered.

Property Code of the Philippines, which is the presently prevailing law, the Director
General of the IPO exercises exclusive appellate jurisdiction over all decisions

The objective of the doctrine of primary jurisdiction is to guide a court in

determining whether it should refrain from exercising its jurisdiction until after an

administrative agency has determined some question or some aspect of some

Government.25 Hence, the CA, and not the IPO Director General, has jurisdiction to

question arising in the proceeding before the court. It applies where the claim is

determine whether the BLA-IPO committed grave abuse of discretion in denying

originally cognizable in the courts and comes into play whenever enforcement of the

respondents' motion to extend the effectivity of the writ of preliminary injunction

claim requires the resolution of issues which, under a regulatory scheme, has been

which the said office earlier issued.

Lastly, petitioner avers that respondents are guilty of forum shopping for having filed

placed within the special competence of an administrative body; in such case, the
judicial process is suspended pending referral of such issues to the administrative
body for its view.22
Based on the foregoing, the Court finds that respondents' initial filing of their
complaint with the BLA-IPO, instead of the regular courts, is in keeping with the
doctrine of primary jurisdiction owing to the fact that the determination of the basic
issue of whether petitioner violated respondents' patent rights requires the exercise
by the IPO of sound administrative discretion which is based on the agency's special
competence, knowledge and experience.
However, the propriety of extending the life of the writ of preliminary injunction
issued by the BLA-IPO in the exercise of its quasi-judicial power is no longer a
matter that falls within the jurisdiction of the said administrative agency, particularly
that of its Director General. The resolution of this issue which was raised before the
CA does not demand the exercise by the IPO of sound administrative discretion
requiring special knowledge, experience and services in determining technical and
intricate matters of fact. It is settled that one of the exceptions to the doctrine of
primary jurisdiction is where the question involved is purely legal and will ultimately
have to be decided by the courts of justice.23 This is the case with respect to the issue
raised in the petition filed with the CA.
Moreover, as discussed earlier, RA 8293 and its implementing rules and regulations
do not provide for a procedural remedy to question interlocutory orders issued by the
BLA-IPO. In this regard, it bears to reiterate that the judicial power of the courts, as
provided for under the Constitution, includes the authority of the courts to determine
in an appropriate action the validity of the acts of the political departments.24 Judicial
power also includes the duty of the courts of justice to settle actual controversies
involving rights which are legally demandable and enforceable, and to determine
whether or not there has been a grave abuse of discretion amounting to lack or excess
of jurisdiction on the part of any branch or instrumentality of the

separate actions before the IPO and the RTC praying for the same relief.
The Court agrees.
Forum shopping is defined as the act of a party against whom an adverse judgment
has been rendered in one forum, of seeking another (and possibly favorable) opinion
in another forum (other than by appeal or the special civil action of certiorari), or the
institution of two (2) or more actions or proceedings grounded on the same cause on
the supposition that one or the other court would make a favorable disposition.26
The elements of forum shopping are: (a) identity of parties, or at least such parties
that represent the same interests in both actions; (b) identity of rights asserted and
reliefs prayed for, the reliefs being founded on the same facts; (c) identity of the two
preceding particulars, such that any judgment rendered in the other action will,
regardless of which party is successful, amount to res judicata in the action under
consideration.27
There is no question as to the identity of parties in the complaints filed with the IPO
and the RTC.
Respondents argue that they cannot be held guilty of forum shopping because their
complaints are based on different causes of action as shown by the fact that the said
complaints are founded on violations of different patents.
The Court is not persuaded.
Section 2, Rule 2 of the Rules of Court defines a cause of action as the act or
omission by which a party violates a right of another. In the instant case, respondents'
cause of action in their complaint filed with the IPO is the alleged act of petitioner in
importing, distributing, selling or offering for sale Sulbactam Ampicillin products,
acts that are supposedly violative of respondents' right to the exclusive sale of the
said products which are covered by the latter's patent. However, a careful reading of
the complaint filed with the RTC of Makati City would show that respondents have
the same cause of action as in their complaint filed with the IPO. They claim that
they have the exclusive right to make, use and sell Sulbactam Ampicillin products
and that petitioner violated this right. Thus, it does not matter that the patents upon

which the complaints were based are different. The fact remains that in both

In the instant case, the prayer of respondents in their complaint filed with the IPO is

complaints the rights violated and the acts violative of such rights are identical.
In fact, respondents seek substantially the same reliefs in their separate complaints

as follows: A. Immediately upon the filing of this action, issue an ex parte order (a)

with the IPO and the RTC for the purpose of accomplishing the same objective.
It is settled by this Court in several cases that the filing by a party of two apparently
different actions but with the same objective constitutes forum shopping. 28 The Court
discussed this species of forum shopping as follows:
Very simply stated, the original complaint in the court a quo which gave rise to the
instant petition was filed by the buyer (herein private respondent and his
predecessors-in-interest) against the seller (herein petitioners) to enforce the alleged
perfected sale of real estate. On the other hand, the complaint in the Second Case
seeks to declare such purported sale involving the same real property "as
unenforceable as against the Bank," which is the petitioner herein. In other words, in
the Second Case, the majority stockholders, in representation of the Bank, are
seeking to accomplish what the Bank itself failed to do in the original case in the trial
court. In brief, the objective or the relief being sought, though worded differently, is
the same, namely, to enable the petitioner Bank to escape from the obligation to sell
the property to respondent.29
In Danville Maritime, Inc. v. Commission on Audit,30 the Court ruled as follows:
In the attempt to make the two actions appear to be different, petitioner impleaded
different respondents therein PNOC in the case before the lower court and the COA
in the case before this Court and sought what seems to be different reliefs. Petitioner
asks this Court to set aside the questioned letter-directive of the COA dated October
10, 1988 and to direct said body to approve the Memorandum of Agreement entered
into by and between the PNOC and petitioner, while in the complaint before the
lower court petitioner seeks to enjoin the PNOC from conducting a rebidding and
from selling to other parties the vessel "T/T Andres Bonifacio," and for an extension
of time for it to comply with the paragraph 1 of the memorandum of agreement and
damages. One can see that although the relief prayed for in the two (2) actions are
ostensibly different, the ultimate objective in both actions is the same, that is, the
approval of the sale of vessel in favor of petitioner, and to overturn the letter
directive of the COA of October 10, 1988 disapproving the sale.31

temporarily restraining respondent, its agents, representatives and assigns from

importing, distributing, selling or offering for sale Sulbactam Ampicillin products to
the hospitals named in paragraph 9 of this Complaint or to any other entity in the
Philippines, or from otherwise infringing Pfizer Inc.'s Philippine Patent No. 21116;
and (b) impounding all the sales invoices and other documents evidencing sales by
respondent of Sulbactam Ampicillin products.
B. After hearing, issue a writ of preliminary injunction enjoining respondent, its
agents, representatives and assigns from importing, distributing, selling or offering
for sale Sulbactam Ampicillin products to the hospitals named in paragraph 9 of the
Complaint or to any other entity in the Philippines, or from otherwise infringing
Pfizer Inc.'s Philippine Patent No. 21116; and
C. After trial, render judgment: (i) declaring that respondent has infringed Pfizer
Inc.'s Philippine Patent No. 21116 and that respondent has no right whatsoever over
complainant's patent; (ii) ordering respondent to pay complainants the following
amounts:
(a) at least P1,000,000.00 as actual damages;
(b) P700,000.00 as attorney's fees and litigation expenses;
(d) P1,000,000.00 as exemplary damages; and
(d) costs of this suit.
(iii) ordering the condemnation, seizure or forfeiture of respondent's infringing goods
or products, wherever they may be found, including the materials and implements
used in the commission of infringement, to be disposed of in such manner as may be
deemed appropriate by this Honorable Office; and
(iv) making the injunction permanent.32
In an almost identical manner, respondents prayed for the following in their
complaint filed with the RTC: (a) Immediately upon the filing of this action, issue an
ex parte order: (1) temporarily restraining Pharmawealth, its agents, representatives
and assigns from importing, distributing, selling or offering for sale infringing
sulbactam ampicillin products to various government and private hospitals or to any
other entity in the Philippines, or from otherwise infringing Pfizer Inc.'s Philippine
Patent No. 26810.

(2) impounding all the sales invoices and other documents evidencing sales by

It bears to reiterate that what is truly important to consider in determining whether

pharmawealth of sulbactam ampicillin products; and

(3) disposing of the infringing goods outside the channels of commerce.
(b) After hearing, issue a writ of preliminary injunction:
(1) enjoining Pharmawealth, its agents, representatives and assigns from importing,

forum shopping exists or not is the vexation caused the courts and parties-litigant by

distributing, selling or offering for sale infringing sulbactam ampicillin products to

process creating the possibility of conflicting decisions being rendered by the

various government hospitals or to any other entity in the Philippines, or from

different fora upon the same issue.341avvphi1

Thus, the Court agrees with petitioner that respondents are indeed guilty of forum

otherwise infringing Patent No. 26810;

(2) impounding all the sales invoices and other documents evidencing sales by
Pharmawealth of sulbactam ampicillin products; and
(3) disposing of the infringing goods outside the channels of commerce.
(c) After trial, render judgment:
(1) finding Pharmawealth to have infringed Patent No. 26810 and declaring
Pharmawealth to have no right whatsoever over plaintiff's patent;
(2) ordering Pharmawealth to pay plaintiffs the following amounts:
(i) at least P3,000,000.00 as actual damages;
(ii) P500,000.00 as attorney's fees and P1,000,000.00 as litigation expenses;
(iii) P3,000,000.00 as exemplary damages; and
(iv) costs of this suit.
(3) ordering the condemnation, seizure or forfeiture of Pharmawealth's infringing
goods or products, wherever they may be found, including the materials and
implements used in the commission of infringement, to be disposed of in such
manner as may be deemed appropriate by this Honorable Court; and
(4) making the injunction permanent.33
It is clear from the foregoing that the ultimate objective which respondents seek to

a party who asks different courts and/or administrative agencies to rule on the same
or related causes and/or to grant the same or substantially the same reliefs, in the

shopping.
Jurisprudence holds that if the forum shopping is not considered willful and
deliberate, the subsequent case shall be dismissed without prejudice, on the ground
of either litis pendentia or res judicata.35 However, if the forum shopping is willful
and deliberate, both (or all, if there are more than two) actions shall be dismissed
with prejudice.36 In the present case, the Court finds that respondents did not
deliberately violate the rule on non-forum shopping. Respondents may not be totally
blamed for erroneously believing that they can file separate actions simply on the
basis of different patents. Moreover, in the suit filed with the RTC of Makati City,
respondents were candid enough to inform the trial court of the pendency of the
complaint filed with the BLA-IPO as well as the petition for certiorari filed with the
CA. On these bases, only Civil Case No. 04-754 should be dismissed on the ground
of litis pendentia.
WHEREFORE, the petition is PARTLY GRANTED. The assailed Resolutions of

achieve in their separate complaints filed with the RTC and the IPO, is to ask for

the Court of Appeals, dated January 18, 2005 and April 11, 2005, in CA-G.R. No.

damages for the alleged violation of their right to exclusively sell Sulbactam

82734, are REVERSED and SET ASIDE. The petition for certiorari filed with the

Ampicillin products and to permanently prevent or prohibit petitioner from selling

Court of Appeals is DISMISSED for being moot and academic.

Civil Case No. 04-754, filed with the Regional Trial Court of Makati City, Branch

said products to any entity. Owing to the substantial identity of parties, reliefs and
issues in the IPO and RTC cases, a decision in one case will necessarily amount
to res judicata in the other action.

138, is likewise DISMISSED on the ground of litis pendentia.

SO ORDERED.