IV.
LAW ON PATENTS respondent Melecia Madolaria was not the original, true and actual inventor nor did she
A. Legislative History
1. Republic Act No. 165 - AN ACT CREATING A PATENT OFFICE, PRESCRIBING ITS
POWERS AND DUTIES, REGULATING THE ISSUANCE OF PATENTS, AND
APPROPRIATING FUNDS THEREFOR
2. Republic Act No. 8293 ("IPC")
239.1. All Acts and parts of Acts inconsistent herewith, more particularly Republic Act No.
165, as amended; Republic Act No. 166, as amended; and Articles 188 and 189 of the
Revised Penal Code; Presidential Decree No. 49, including Presidential Decree No. 285, as
amended, are hereby repealed.Sec.
SECTION 235. Applications Pending on Effective Date of Act.
235.1. All applications for patents pending in the Bureau of Patents, Trademarks and
Technology Transfer shall be proceeded with and patents thereon granted in accordance
with the Acts under which said applications were filed, and said Acts are hereby continued
to be enforced, to this extent and for this purpose only, notwithstanding the foregoing
general repeal thereof: Provided, That applications for utility models or industrial designs
pending at the effective date of this Act, shall be proceeded with in accordance with the
provisions of this Act, unless the applicants elect to prosecute said applications in
accordance with the Acts under which they were filed.
SECTION 236. Preservation of Existing Rights. Nothing herein shall adversely affect
the rights on the enforcement of rights in patents, utility models, industrial designs, marks
and works, acquired in good faith prior to the effective date of this Act.
3. RA No. 9502 (Universally Accessible Cheaper and Quality Medicines Act of 2008)
(Amended IPC)
B. Purpose
MANZANO v CA 278 SCRA 688
The primary purpose of the patent system is not the reward of the individual but the
advancement of the arts and sciences. The function of a patent is to add to the sum of
useful knowledge and one of the purposes of the patent system is to encourage
dissemination of information concerning discoveries and inventions.
FACTS:
Angelita Manzano filed PPO an action for the cancellation of Letters Patent for a gas burner
registered in the name of respondent Melecia Madolaria who subsequently assigned the
letters patent to New United Foundry and Manufacturing Corporation (UNITED FOUNDRY,
for brevity). Petitioner alleged that (a) the utility model covered by the letters patent, in this
case, an LPG gas burner, was not inventive, new or useful; (b) the specification of the
letters patent did not comply with the requirements of Sec. 14, RA No. 165, as amended; (c)
derive her rights from the original, true and actual inventor of the utility model covered by
the letters patent; and, (d) the letters patent was secured by means of fraud or
misrepresentation.
Testifying for herself petitioner narrated that her husband Ong Bun Tua worked as a helper
in the UNITED FOUNDRY where respondent Melecia Madolaria used to be affiliated with
from 1965 to 1970; that Ong helped in the casting of an LPG burner which was the same
utility model of a burner and that after her husbands separation from the shop she
organized Besco Metal Manufacturing (BESCO METAL, for brevity) for the casting of LPG
burners one of which had the configuration, form and component parts similar to those
being manufactured by UNITED FOUNDRY.
Petitioner presented two (2) other witnesses, namely, her husband Ong Bun Tua and Fidel
Francisco.
Private respondent, on the other hand, presented only one witness, Rolando Madolaria,
who testified, among others, that he was the General Supervisor of the UNITED FOUNDRY.
Director of Patents Cesar C. Sandiego denied the petition for cancellation and holding that
the evidence of petitioner was not able to establish convincingly that the patented utility
model of private respondent was anticipated.
Petitioner elevated the decision of the Director of Patents to the Court of Appeals which
affirmed the decision of the Director of Patents. Hence, this petition for review on certiorari.
ISSUE:
Whether the dismissal is proper where the patent applied for has no substantial difference
between the model to be patented and those sold by petitioner. YES.
HELD:
The element of novelty is an essential requisite of the patentability of an invention or
discovery. If a device or process has been known or used by others prior to its invention or
discovery by the applicant, an application for a patent therefor should be denied; and if the
application has been granted, the court, in a judicial proceeding in which the validity of the
patent is drawn in question, will hold it void and ineffective. It has been repeatedly held that
an invention must possess the essential elements of novelty, originality and precedence,
and for the patentee to be entitled to the protection the invention must be new to the world.
However, The validity of the patent issued by the Philippine Patent Office in favor of private
respondent and the question over the inventiveness, novelty and usefulness of the
improved model of the LPG burner are matters which are better determined by the Patent
Office. The technical staff of the Philippine Patent Office composed of experts in their field
has by the issuance of the patent in question accepted private respondents model of gas
burner as a discovery. There is a presumption that the Office has correctly determined the
patentability of the model and such action must not be interfered with in the absence of
competent evidence to the contrary.
The rule is settled that the findings of fact of the Director of Patents, especially when
affirmed by the Court of Appeals, are conclusive on this Court when supported by
substantial evidence. Petitioner has failed to show compelling grounds for a reversal of the
findings and conclusions of the Patent Office and the Court of Appeals. Petition
DISMISSED.
1
 (2) Petitioner was not able to secure a patent for its lightboxes, and cannot legally prevent
PEARL & DEAN PHIL INC. VS. SHOEMART anyone from manufacturing or commercially using the same. The light boxes cannot, by any
stretch of the imagination, be considered as either prints, pictorial illustrations, advertising
3-fold purpose copies, labels, tags or box wraps, to be properly classified as a copyrightable; what was
1.patent law seeks to foster and reward invention copyrighted were the technical drawings only, and not the light boxes themselves. In other
2. it promotes disclosures of inventions to stimulate further innovation and to permit cases, it was held that there is no copyright infringement when one who, without being
the public to practice the invention once the patent expires authorized, uses a copyrighted architectural plan to construct a structure. This is because
3. the stringent requirements for patent protection seek to ensure that ideas in the the copyright does not extend to the structures themselves. Patent has a three-fold purpose:
public domain a) to foster and reward invention; b) promotes disclosures of invention and permit public to
use the same upon expiration; c) stringent requirements for patent protection to ensure in
Trademark, copyright and patents are different intellectual property rights that cannot be the public domain remain there for free use of the public. Since petitioner was not able to go
interchanged with one another. A trademark is any visible sign capable of distinguishing the through such examination, it cannot exclude others from manufacturing, or selling such
goods or services of an enterprise and shall include a stamped or marked container of lightboxes. No patent, no protection.
goods. The scope of a copyright is confined to literary and artistic works which are original
intellectual creations in the literary and artistic domain. Patentable inventions refer to any (3) The certificate of registration issued by the Director of Patents gives exclusive right to
technical solution of a problem in any field of human activity which is new, involves an use its own symbol only to the description specified in the certificate. It cannot prevent
inventive step and is industrially applicable. others to use the same trademark with a different description.
FACTS:
Pearl and Dean is a corporation in the manufacture of advertising display units also known (4) "Poster Ads" is a general term that cannot be associated specifically to Pearl and Dean,
as light boxes, which were manufactured by Metro Industrial Services. A copyright thus it cannot be considered to use such term to be unfair competition against the petitioner.
Registration was obtained in 1981. These were marketed in the name of "Poster Ads". They
also applied for a registration of trademark with the Bureau of Patents in 1983, but was only C. Patents : Coverage
approved in 19988. In 1985, petitioner had n agreement with respondent Shoemart Inc
(SMI) to install these light boxes in their Makati and Cubao branch, Only the Makati branch PATENTABLE MATTERS
was able to sigh the agreement. In 1986, the contract was rescinded unilaterally by SMI,
and instead contracted with Metro Industrial Services. They installed these lightboxes in 1. Inventions
different SM city branches, including Cubao and Makati, with association with North Edsa SECTION 21. Patentable Inventions. Any technical solution of a problem in any field of
Marketing Inc (NEMI), SMI's sister company. Petitioner requested SMI and NEMI to put human activity which is new, involves an inventive step and is industrially applicable shall be
down their installations of the light boxes, and payment of compensatory damages worth patentable. It may be, or may relate to, a product, or process, or an improvement of any of
P20M. Claiming that respondents failed to comply, they filed a case for infringement of the foregoing.
trademark and copyright, unfair competition and damages. RTC ruled in favor of petitioner,
but CA reversed. Product patent Process Patent
Product Manufacturing process
ISSUES: Gives greater protection for the inventor Gives less protection for the inventor
(1) Whether there was a copyright infringement Product patent system preferred by Process patent system preferred by
(2) Whether there was a patent infringement developed countries / TRIPS more developing countries less investors
(3) Whether there was a trademark infringement investors
(4) Whether there was unfair competition
WHY?
RULING: No to all. The process patent gives more opportunity for re-engineering. There can be several
(1) Copyright is a statutory right, subject to the terms and conditions specified in the statute. manufacturers to produce the same product using several processes.
Therefore, it can only cover the works falling within the statutory enumeration or description.
Since the copyright was classified under class "O" works, which includes "prints, pictorial On the other hand, product patent, the product is protected regardless of the process
illustrations, advertising copies, labels, tags and box wraps," and does not include the light on how to produce such product.
box itself. A lightbox, even admitted by the president of petitioner company, was neither a
literary nor an artistic work but an engineering or marketing invention, thus not included Standards:
under a copyright.
a. Novelty or NEW (not original)

2
SECTION 23. Novelty. An invention shall not be considered new if it forms part of a prior
art.
SECTION 24. Prior Art. Prior art shall consist of:
24.1. Everything which has been made available to the public anywhere in the world, before
the filing date or the priority date of the application claiming the invention; and
24.2. The whole contents of an application for a patent, utility model, or industrial design
registration, published in accordance with this Act, filed or effective in the Philippines, with a
filing or priority date that is earlier than the filing or priority date of the application: Provided,
That the application which has validly claimed the filing date of an earlier application under
Section 31 of this Act, shall be prior art with effect as of the filing date of such earlier
application: Provided further, That the applicant or the inventor identified in both
applications are not one and the same. (Sec. 9, R.A. No. 165a)
prior use
prior publication
Enabling disclosure test when the prior use makes available the necessary
information about the invention / not secret or uninformative
EXAMPLE
Invention: THUMBDRIVE
Cited prior art:
i) storage device seated within the PC
ii) storage device with connection cable
iii) software protection key to storage device
HELD: THUMBDRIVE is NOVEL
SECTION 25. Non-Prejudicial Disclosure.
25.1. The disclosure of information contained in the application during the twelve (12)
months preceding the filing date or the priority date of the application shall not prejudice the
applicant on the ground of lack of novelty if such disclosure was made by:
a. The inventor;
b. A patent office and the information was contained (a) in another application filed by the
inventor and should not have been disclosed by the office, or (b) in an application filed
without the knowledge or consent of the inventor by a third party which obtained the
information directly or indirectly from the inventor; or
c. A third party which obtained the information directly or indirectly from the inventor.
25.2. For the purposes of Subsection 25.1, "inventor" also means any person who, at the
filing date of application, had the right to the patent. (n)
G.R. L-45101 November 28, 1986
ROSARIO C. MAGUAN (formerly ROSARIO C. TAN) vs. CA and SUSANA LUCHAN
Submitted on December 9, 1977 for Our decision is this petition for review on certiorari of
the two Resolutions of the Court of Appeals, the first dated July 6, 1976, setting aside its
Decision of February 16, 1976 in CA-G.R. No. SP-04706, titled "SUSANA LUCHAN v. Hon.
HONRADO, et al." wherein it ruled for the dismissal of the petition for lack of merit and at
the same time nullifying the writ of preliminary injunction it had previously issued; and the
second, dated November 4, 1976, denying the motion for reconsideration of the first
resolution above-mentioned.
Petitioner is doing business under the firm name and style of SWAN MANUFACTURING"
while private respondent is likewise doing business under the firm name and style of
"SUSANA LUCHAN POWDER PUFF MANUFACTURING."
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
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 Model No. 1184; petitioner explained
such production and sale constitute infringement of said patents and therefore its immediate
discontinuance is demanded, otherwise it will be compelled to take judicial action. (Rollo,
pp. 7-8).
Private respondent replied stating that her products are different and countered that
petitioner's patents are void because the utility models applied for were not new and
patentable and the person to whom the patents were issued was not the true and actual
author nor were her rights derived from such author. (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 petitions for cancellation of (1)
Utility Model Letter Patent Extension No. UM-109 (Inter Partes Case No. 838, Susana
Luchan v. Rosario C. Tan), (2) Utility Model Letters Patent No. UM-1184 (Inter Partes Case
No. 839, Susana Luchan v. Rosario C. Tan), (3) Utility Model Letters Patent Extension No.
UM-110 (Inter Partes Case No. 840, Susana Luchan v. Rosario C. Tan. (Taken from
allegations in the Answer, par. 10, Rollo, pp. 94-95).
In view thereof, petitioner, on August 24, 1974, filed a complaint for damages with injunction
and preliminary injunction against private respondent with the then Court of First Instance of
Rizal, Pasig Branch, docketed as Civil Case No. 19908, for infringing the aforesaid letters
3
patent, and prayed, among others, that a writ of preliminary injunction be immediately
issued (Complaint, Rollo, p. 90).
In her answer, private respondent alleged that the products she is manufacturing and
offering for sale are not Identical, or even only substantially Identical to the products
covered by petitioner's patents and, by way of affirmative defenses, further alleged 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 market; both
in the Philippines and abroad; and
(b) applicant's claims in her applications, of "construction" or process of manufacturing
the utility models applied for, with respect to UM-423 and UM-450, were but a complicated
and impractical version of an old, simple one which has been 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; (Answer, Rollo, pp. 93-94).
On September 18, 1974, the trial court issued an Order (Annex "K", Rollo, p. 125) granting
the preliminary injunction prayed for by petitioner. Consequently, the corresponding writ was
subsequently issued (Annex "K-1", Rollo, p. 131) enjoining the herein private respondent
(then defendant) and all other persons employed by her, her agents, servants and
employees from directly or indirectly manufacturing, making or causing to be made, selling
or causing to be sold, or using or causing to be 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 (Extension No. UM-110), and Utility Model No. 1184 or from
infringement upon or 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
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 motion for
reconsideration (Annex "N", Rollo, p. 142).
In challenging these Orders private respondent filed a petition for certiorari with the
respondent court on September 29, 1975 (Annex "D", Rollo, pp. 148-171) reiterating among
other things the invalidity of petitioner's patents and prayed that the trial court 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
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).
ln said decision respondent court stated that in disposing of the petition it tackled only the
issue of whether the court a quo acted with grave abuse of discretion in issuing the
challenged orders. It made clear the question of whether the patents have been infringed or
not was not determined considering the court a quo has 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 RESPONDENT'S PATENTS.
II THAT THIS HONORABLE COURT ERRED IN NOT REJECTING THE THEORY OF
RESPONDENT JUDGE THAT HE HAS NO JURISDICTION TO INVALIDATE THE
PATENTS UPON GROUND OF LACK OF NOVELTY OF THE PRODUCTS PATENTED.
(Motion for Reconsideration, Rollo, p. 190).
Reviewing on reconsideration, respondent court gave weight to private respondent's
allegation that the latter's products are not identical or even only substantially identical to the
4
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 ordered lifted by the Decision now being set aside is
hereby reinstated and made permanent. Without pronouncement as to 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
respondent to file her Comment (Rollo, p. 290) which was filed on December 16, 1976
(Rollo, pp. 291-316). Thereafter, petitioner filed her Reply (Rollo, p. 323) and 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 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 the Court a quo committed grave abuse of discretion in the issuance of a
writ of preliminary injunction.
(3) Whether 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. Kosuyana 59 Phil. 207
[1933]).
Under the present Patent Law, there is even less reason to doubt that the trial court has
jurisdiction to declare the patents in question invalid. A patentee shall have the exclusive
right to make, use and sell the patented article or product and the making, using, or selling
by any person without the authorization of the patentee constitutes infringement of the
patent (Sec. 37, R.A. 165). Any patentee whose rights have been infringed upon may bring
an action before the proper CFI now (RTC) and to secure an injunction for the protection of
his rights (Sec. 42, R.A. 165). 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
Official Gazette." Upon such certification, it is ministerial on the part of the patent 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
where the plaintiff introduces the patent in evidence, and the same is in due form, there is
created a prima facie presumption of its correctness and validity. The decision of the
Commissioner (now Director) of Patent in granting the patent is presumed to be correct. The
burden of going forward with the evidence (burden of evidence) then shifts to the defendant
to overcome by competent evidence this legal presumption.
The question then in the instant case is whether or not the evidence introduced by private
respondent herein is sufficient to overcome said presumption.
After a careful review of the evidence consisting of 64 exhibits and oral testimonies of five
witnesses presented by private respondents before the Court of First Instance before the
Order of preliminary injunction was issued as well as those presented by the petitioner,
respondent Court of Appeals was satisfied that there is a prima facie showing of a fair
question of invalidity of petitioner's patents on the ground of lack of novelty. As pointed out
by said appellate court said evidence appeared not to have been considered at all by the
court a quo for alleged lack of jurisdiction, on the mistaken notion that such question in
within the exclusive jurisdiction of the patent office.
It has been repeatedly held that an invention must possess the essential elements of
novelty , originality and precedence and for the patentee to be entitled to protection, the
invention must be new to the world. Accordingly, a single instance of public use of the
invention by a patentee for more than two years (now for more than one year only under
Sec. 9 of the Patent Law) before the date of his application for his patent, will be fatal to, the
validity of the patent when issued. (Frank, et al. v. Kosuyama Vargas v. F.M. Yaptico & Co.
and Vargas v. Chua, et al., supra).
The law provides:
5
SEC. 9. Invention not considered new or patentable. An invention shall not be considered
new or capable of being patented if it was known or used by others in the Philippines before
the invention thereof by the inventor named in an application for patent for the invention; or
if it was patented or described in any printed publication in the Philippines or any foreign
country more than one year before the application for a patent therefor; or if it had been in
public use or on sale in the Philippines for more than one year before the application for a
patent therefor; or if it is the subject matter of a validity issued patent in the Philippines
granted on an application filed before the filing of the application for patent therefor.
Thus, more specifically, under American Law from which our Patent Law was derived
(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. It will be noted that the validity of petitioner's patents is in question for want of novelty.
Private respondent contends that powder puffs Identical in appearance with that covered by
petitioner's patents existed and were publicly known and used as early as 1963 long before
petitioner was issued the patents in question. (List of Exhibits, Rollo, pp. 194-199). As
correctly observed by respondent Court of Appeals, "since sufficient proofs have been
introduced in evidence showing a fair question of the invalidity of the patents issued for such
models, it is but right that the evidence be looked into, evaluated and determined on the
merits so that the matter of whether the patents issued were in fact valid or not may be
resolved." (Rollo, pp. 286-287).
All these notwithstanding, the trial court nonetheless issued the writ of preliminary injunction
which under the circumstances should be denied.
For failure to determine first the validity of the patents before aforesaid issuance of the writ,
the trial court failed to satisfy the two requisites necessary if an injunction is to issue,
namely: the existence of the right to be protected and the violation of said right. (Buayan
Cattle Co., Inc. v. Quintillan, 128 SCRA 276).
Under the above established principles, it appears obvious that the trial court committed a
grave abuse of discretion which makes certiorari the appropriate remedy.
As found by respondent Court of Appeals, the injunctive order of the trial court is of so
general a tenor that petitioner may be totally barred from the sale of any kind of powder puff.
Under the circumstances, respondent appellate court is of the view that ordinary appeal is
obviously inadequate. (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
elementary that the trial judge is a mere nominal party as clearly provided in Section 5, Rule
65 of the Revised Rules of Court where it shall be the duty of such person or persons
interested in sustaining the proceedings in court, "to appear and defend, both 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 refers to
the filing of petitions for cancellation in the Patent Office under Sec. 28 of the Patent Law
and not to a defense against an action for infringement under Sec. 45 thereof which may be
raised anytime, is evident under aforesaid law.
PREMISES CONSIDERED, the assailed resolutions of the Court of Appeals are hereby
AFFIRMED.
MAGUAN v CA 146 SCRA 107
FACTS:
Petitioner is doing business under the firm name and style of SWAN MANUFACTURING"
while private respondent is likewise doing business under the firm name and style of
"SUSANA LUCHAN POWDER PUFF MANUFACTURING. And holder petitioner informed
private respondent that the powder puffs the latter is manufacturing and selling to various
enterprises particularly those in the cosmetics industry, resemble Identical or substantially
Identical powder puffs of which the former is a patent holder under Registration Certification
Nos. Extension UM-109, Extension UM-110 and Utility Model No. 1184; petitioner explained
such production and sale constitute infringement of said patents and therefore its immediate
discontinuance is demanded, otherwise it will be compelled to take judicial action.
Private respondent replied stating that her products are different and countered that
petitioner's patents are void because the utility models applied for were not new and
patentable and the person to whom the patents were issued was not the true and actual
author nor were her rights derived from such author. Petitioner filed a complaint for
6
damages with injunction and preliminary injunction against private respondent with the then
Court of First Instance of Rizal. The trial court issued an Order granting the preliminary
injunction prayed for by petitioner. Consequently, the corresponding writ was subsequently
issued. In challenging these Orders private respondent filed a petition for certiorari with the
respondent court but was denied. Hence this petition.
ISSUE:
(1) Whether 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 the Court a quo committed grave abuse of discretion in the issuance of a writ of
preliminary injunction.
(3) Whether certiorari is the proper remedy.
HELD:
1) The first issue has been laid to rest in a number of cases where the Court ruled that
"When a patent is sought to be enforced, the questions of invention, novelty or prior use,
and each of them, are open to judicial examination."
Under the present Patent Law, there is even less reason to doubt that the trial court has
jurisdiction to declare the patents in question invalid. A patentee shall have the exclusive
right to make, use and sell the patented article or product and the making, using, or selling
by any person without the authorization of the patentee constitutes infringement of the
patent (Sec. 37, R.A. 165). Any patentee whose rights have been infringed upon may bring
an action before the proper CFI now (RTC) and to secure an injunction for the protection of
his rights.
2) The burden of proof to substantiate a charge of infringement is with the plaintiff. But
where the plaintiff introduces the patent in evidence, and the same is in due form, there is
created a prima facie presumption of its correctness and validity. The decision of the
Commissioner (now Director) of Patent in granting the patent is presumed to be correct. The
burden of going forward with the evidence (burden of evidence) then shifts to the defendant
to overcome by competent evidence this legal presumption.
The question then in the instant case is whether the evidence introduced by private
respondent herein is sufficient to overcome said presumption.
After a careful review of the evidence consisting of 64 exhibits and oral testimonies of five
witnesses presented by private respondents before the Court of First Instance before the
Order of preliminary injunction was issued as well as those presented by the petitioner,
respondent Court of Appeals was satisfied that there is a prima facie showing of a fair
question of invalidity of petitioner's patents on the ground of lack of novelty. As pointed out
by said appellate court said evidence appeared not to have been considered at all by the
court a quo for alleged lack of jurisdiction, on the mistaken notion that such question in
within the exclusive jurisdiction of the patent office.
It has been repeatedly held that an invention must possess the essential elements of
novelty , originality and precedence and for the patentee to be entitled to protection, the
invention must be new to the world. Accordingly, a single instance of public use of the
invention by a patentee for more than two years (now for more than one year only under
Sec. 9 of the Patent Law) before the date of his application for his patent, will be fatal to, the
validity of the patent when issued.
It will be noted that the validity of petitioner's patents is in question for want of novelty.
Private respondent contends that powder puffs Identical in appearance with that covered by
petitioner's patents existed and were publicly known and used as early as 1963 long before
petitioner was issued the patents in question. (List of Exhibits, Rollo, pp. 194-199). As
correctly observed by respondent Court of Appeals, "since sufficient proofs have been
introduced in evidence showing a fair question of the invalidity of the patents issued for such
models, it is but right that the evidence be looked into, evaluated and determined on the
merits so that the matter of whether the patents issued were in fact valid or not may be
resolved." (Rollo, pp. 286-287).
All these notwithstanding, the trial court nonetheless issued the writ of preliminary injunction
which under the circumstances should be denied.
For failure to determine first the validity of the patents before aforesaid issuance of the writ,
the trial court failed to satisfy the two requisites necessary if an injunction is to issue,
namely: the existence of the right to be protected and the violation of said right. (Buayan
Cattle Co., Inc. v. Quintillan, 128 SCRA 276). Under the above established principles, it
appears obvious that the trial court committed a grave abuse of discretion which makes
certiorari the appropriate remedy. As found by respondent Court of Appeals, the injunctive
order of the trial court is of so general a tenor that petitioner may be totally barred from the
sale of any kind of powder puff. Under the circumstances, respondent appellate court is of
the view that ordinary appeal is obviously inadequate.
VARGAS v YAPTICO & CO 40 PHIL 195
FACTS:
Angel Vargas, a farmer acquainted with local conditions and alive to the commercial
possibilities, took it upon himself to produce, with the native plow as the model, an
improved, adjustable plow. He made application for a United States patent to cover his so-
called invention. The letters patent were issued by the United States Patent Office in favor
of Vargas .Acertified copy of the patent was filed in the Division of Patents, Copyrights, and
Trademarks of the Executive Bureau, Government of the Philippine Islands. The patent and
its registry was also published in the newspaper, El Tiempo.
Since 1910, Vargas has engaged in the manufacture of these plows in the city of Iloilo,
Philippine Islands. On the plows there was first stamped the words "Patent Applied For,"
later after the patent had been granted, changed to "Patented Mar. 12, 1912." Ninety per
cent of the plows in use in the Visayas (Iloilo and vicinity) are said to be Vargas plows.
During this same period, the firm of F. M. Yaptico & Co. (Ltd.), was engaged in the foundry
business in the City of Iloilo. It openly held itself out as a manufacturer of plow parts. It has
in fact produced points, shares, shoes, and heel pieces in a considerable amount adapted
to replace worn-out parts of the Vargas plow.
Such was the existing situation when, in the early part of 1918, the owner of the patent, and
thus the proper party to institute judicial proceedings, began action in the Court of First
7
Instance of Iloilo to enjoin the alleged infringement of U.S. Patent No. 1020232 by the
defendant F. M Yaptico & Co. (Ltd.), and to recover the damages suffered by reason of this
infringement. The court issued the preliminary injunction as prayed for. The defendant, in
addition to a general denial, alleged, as special defenses, that the patent lacked novelty or
invention, that there was no priority of ideas or device in the principle and construction of the
plow, and that the plow, whose manufacture it was sought to have enjoined by the plaintiff,
had already been in public use for more than two years before the application of the plaintiff
for his patent. The parties subsequently entered into a stipulation that the court should first
resolve the question of whether or not there had been an infraction of the patent, reserving
the resultant question of damages for later decision. After the taking of evidence, including
the presentation of exhibits, the trial judge, the Honorable Antonio Villareal, in a very
exhaustive and learned decision, rendered judgment in favor of the defendant and against
the plaintiff, declaring null and without effect the patent in question and dismissing the suit
with costs against the plaintiff. The preliminary injunction theretofore issued was dissolved.
From this judgment the plaintiff has appealed.
ISSUES:
(1) The judgment of the trial court in finding the patent granted plaintiff void for lack of
novelty and invention should be affirmed;
(2) The patent granted plaintiff is void from the public use of his plow for over two years prior
to his application for a patent, and
(3) If the patent is valid, there has been no contributory infringement by defendant.
HELD:
(1) When a patent is sought to be enforced, "the question of invention, novelty, or prior use,
and each of them, are open to judicial examination." The burden of proof to substantiate a
charge of infringement is with the plaintiff. Where, however, the plaintiff introduces the
patent in evidence, if it is in due form, it affords a prima facie presumption of its correctness
and validity. The decision of the Commissioner of Patents in granting the patent is always
presumed to be correct. The burden then shifts to the defendant to overcome by competent
evidence this legal presumption .With all due respect, therefore, for the critical and expert
examination of the invention by the United States Patent Office, the question of the validity
of the patent is one for judicial determination, and since a patent has been submitted, the
exact question is whether the defendant has assumed the burden of proof as to anyone of
his defenses
As herein before stated, the defendant relies on three special defenses. One such defense,
on which the judgment of the lower court is principally grounded, and to which appellant
devotes the major portion of his vigorous argument, concerns the element of novelty,
invention, or discovery, that gives existence to the right to a patent. On this point the trial
court reached the conclusion that "the patented plow of the plaintiff, Exhibit D, is not
different from the native plow, Exhibit 2, except in the material, in the form, in the weight and
the grade of the result, the said differences giving it neither a new function nor a new result
distinct from the function and the result obtained from the native plow; consequently, its
production does not presuppose the exercise of the inventive faculty but merely of
mechanical skill, which does not give a right to a patent of an invention under the provisions
of the Patent Law." In thus finding, the court may have been right, since the Vargas plow
does not appear to be such a "combination" as contains a novel assemblage of parts
exhibiting invention.
A second line of defense relates to the fact that defendant has never made a complete
Vargas plow, but only points, shares, shoes, and heel pieces, to serve as repairs.
Defendant's contention is, that in common with other foundries, he has for years cast large
numbers of plow points and shares suitable for use either on the native wooden plow, or on
the Vargas plow. A difference has long been recognized between repairing and
reconstructing a machine. If, for instance, partial injuries, whether they occur from accident
or from wear and tear, to a machine for agricultural purposes, are made this is only re-fitting
the machine for use, and thus permissible. Even under the more rigorous doctrine of Leeds
& Catlin Co. vs. Victor Talking Machine Co. ([1909], 213 U.S., 325), it may be possible that
all the defendant has done is to manufacture and sell isolated parts to be used to replace
worn-out parts.
The third defense is, that under the provisions of the statute, an inventor's creation must not
have been in public use or on sale in the United States (and the Philippine Islands) for more
than two years prior to his application .Without, therefore, committing ourselves as to the
first two defenses, we propose to base our decision on the one just suggested as more
easily disposing of the case. (See 20 R. C. L., 1140-1142.) We do so with full
consciousness of the doubt which arose in the mind of the trial court, but with the belief that
since it has been shown that the invention was used in public at Iloilo by others than
Vargas, the inventor, more than two years before the application for the patent, the patent is
invalid.
On the facts, we think the testimony shows such a public use of the Vargas plow as to
render the patent invalid Nicolas Roces, a farmer, testified that he had bought twenty
Vargas plows, of which Exhibit 5 was one, in December, 1907; and Exhibit 5, the court
found, was a plow completely identical with that for which the plaintiff had received a patent.
The minor exception, and this in itself corroborative of Roces' testimony, is that the handle
of plow Exhibit 5 is marked with the letters "A V" and not with the words "Patent Applied
For" or "Patented Mar.12, 1912." Salvador Lizarraga, a clerk in a business house, testified
that he had received plows similar to Exhibits D, 5, and 4, for sale on commission on May,
1908, from Bonifacio Araneta, partner of Vargas in the plow business. Ko Pao Ko, a
blacksmith, testified that he had made fifty plow frames in 1905 for Vargas and Araneta, of
which Exhibit 4 is one; Exhibit 4, the court found, is a plow identical with that patented by
Vargas, but without share and mould-board. Alfred Berwin, an employee in the office of
Attorney John Bordman, testified that on September 21, 1908, he had knowledge of a
transaction wherein Vargas and Araneta desired to obtain money to invest in a plow factory.
George Ramon Saul, a mechanic of the "Taller Visayas" of Strachan and MacMurray,
testified that he had made Vargas plow points and shares of the present form upon order of
Araneta and Vargas in 1906 and 1907 .William MacMurray, proprietor of the "Taller
Visayas," corroborated the evidence of the witness Saul by the exhibition of the account
against Vargas and Araneta wherein, under date of December 13, 1906, appears the item
"12 new soft steel plow shares forged and bored for rivets as per sample." Against all this,
was the testimony of the plaintiff Angel Vargas who denied that Saul could have been seen
the Vargas plow in 1907 and 1907, who denied that Roces purchased the Vargas plow in
1907, who denied that Lizarraga could have acted as an agent to sell two plows in
November, 1908, who denied any remembrance of the loan mentioned by Berwin as having
been negotiated in September, 1908, who denied that Ko Pao Ko made fifty plows one of
which is Exhibit 4, for Araneta and Vargas in 1905. Plaintiff introduced his books to
8
substantiate his oral testimony. It is hardly believable that five or six witnesses for the
defense would deliberately perjure themselves under oath. One might, but that all together,
of different nationalities, would enter into such a conspiracy, is to suppose the improbable.
Tested by the principles which go to make the law, we think a preponderance of the
evidence is to the effect that for more than two years before the application for the original
letters patent, or before July 22, 1908, there was, by the consent and allowance of Vargas,
a public use of the invention covered by them.
To conclude, we are not certain but that appellee has proved every one of his defenses. We
are certain that he has at least demonstrated the public use of the Vargas plow over two
years prior to the application for a patent. Such being the case, although on a different
ground, we must sustain the judgment of the lower court, without prejudice to the
determination of the damages resulting from the granting of the injunction, with the costs of
this instance against the appellant. So ordered.
VARGAS v CHUA 57 PHIL 784 (same)
FACTS:
Angel Vargas, the plaintiff herein, brought this action to restrain the appellants and
the other defendant entity, Cham Samco & Sons, their agents and mandatories, from
continuing the manufacture and sale of plows similar to his plow described in his patent No.
1,507,530 issued by the United States Patent Office on September 2, 1924; and to compel
all of said defendants, after rendering an accounting of the profits obtained by them from the
sale of said plows from September 2, 1924, to pay him damages equivalent to double the
amount of such profits.
The trial court rendered a judgement in favor of plaintiffs and against the defendant.
It appears from the bill of exceptions that Cham Samco & Sons did not appeal.
ISSUE:
Whether the plow, Exhibit F, constitutes a real invention or an improvement for which a
patent may be obtained, or if, on the contrary, it is substantially the same plow represented
by Exhibit 3-Chua the patent for which was declared null and void in the aforementioned
case of Vargas vs. F. M. Yaptico & Co., supra.
HELD:
The appellee is not entitled to the protection he seeks for the simple reason that his plow,
Exhibit F, does not constitute an invention in the legal sense, and because, according to the
evidence, the same type of plows had been manufactured in this country and had been in
use in many parts of the Philippine Archipelago, especially in the Province of Iloilo, long
before he obtained his last patent.
In the above mentioned case of Vargas vs. F. M. Yaptico & Co., we said:
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." The burden of proof to substantiate a
charge of infringement is with the plaintiff. Where, however, the plaintiff introduces the
patent in evidence, if it is the due form, it affords a prima facie presumption of its
correctness and validity. The decision of the Commissioner of Patents in granting the patent
is always presumed to be correct. The burden then shifts to the defendant to overcome by
competent evidence this legal presumption. With all due respects, therefore, for the critical
and expert examination of the invention by the United States Patent Office, the question of
the validity of the patent is one for judicial determination, and since a patent has been
submitted, the exact question is whether the defendant has assumed the burden of proof as
to anyone of his defenses.
We repeat that in view of the evidence presented, and particularly of the examination we
have made of the plows, we cannot escape the conclusion that the plow upon which the
appellee's contention is based, does not constitute an invention and, consequently, the
privilege invoked by him is untenable and the patent acquired by him should be declared
ineffective.
The judgment appealed from is hereby reversed and the appellants are absolved from the
complaint, with costs of this instance against the appellee. So ordered.
FRANK v KOSUYAMA 59 PHIL 206
FACTS:
Patent on improvement in hemp stripping machines, issued by the United States Patent
Office and registered in the Bureau of Commerce and Industry of the Philippine, 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 whatever damages the plaintiffs might be able
to prove therein. The action therefore was based upon alleged infringement by the
defendant of the rights and privileges acquired by the plaintiffs over the aforesaid patent
through the manufacture and sale 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
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 table, a resilient cushion under
such palletor rest." In spite of the fact that they filed an amended complaint from which the
"spindle" or conical drum, which was the only characteristic feature of the machine
mentioned in the original complaint, was eliminated, the plaintiffs insisted that the said part
constitutes the essential difference between the machine in question and other machines
and that it was the principal consideration upon which their patent was issued. The said
plaintiffs sustained their contention on this point even in their printed brief and memorandum
filed in this appeal.
9
During the trial, both parties presented voluminous evidence from which the trial court
concluded that 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.
ISSUE: Whether there is an infringement on the patents
HELD:
The trial court did not decree the annulment of 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. For the purposes of this appeal, suffice it to hold that the defendant
is not civilly liable for alleged infringement of the patent in question.
In the light of sound logic, the plaintiffs cannot insist that the "spindle" was a 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
appeal as the essential part of the plaintiffs' machine allegedly imitated by the then
defendant. In the case under consideration, it is obvious that the "spindle" is not an integral
part of the machine patented by the plaintiffs on the ground that it was eliminated from their
patent inasmuch as it was expressly excluded in their application, as evidenced by the
aforesaid Exhibit 41.
Wherefore, reiterating that the defendant cannot be held civilly liable for alleged
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.
b. Inventiveness (or non-obviousness)
Section 26, IPC, as amended by RA No. 9502 (Universally Accessible Cheaper and Quality
Medicines Act of 2008)
AGUAS v DE LEON 111 SCRA 238
FACTS:
Conrado G. de Leon filed in the Court of First Instance of Rizal at 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.
That the defendant Domiciano A. Aguas infringed Letters of Patent No. 658 by making,
using and selling tiles embodying said patent invention and that defendant F. H. Aquino &
Sons is guilty of infringement by making and 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 sustained by the plaintiff; that there is an urgent need for the immediate issuance of a
preliminary injunction.
The court granted the injunction. And likewise held in favor of the plaintiff and against the
defendant.
ISSUE: Whether the process, subject of said patent, is not an invention or discovery, or an
improvement of the old system of making tiles.
HELD:
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.
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
10
merit. De Leon never claimed to have invented the process of tile-making. The Claims and Section 31 Right of Priority: Provided, That the application for industrial design shall be
Specifications of Patent No. 658 show that although some of the steps or parts of the old filed within six (6) months from the earliest filing date of the corresponding foreign
process of tile making were described therein, there were novel and inventive features application;
mentioned in the process. Section 33 Appointment of Agent or Representative;
In view of the foregoing, this Court finds that Patent No. 658 was legally issued, the process Section 51 Refusal of the Application;
and/or improvement being patentable. Sections 56 to 60 Surrender, Correction of and Changes in Patent;
Chapter VII Remedies of a Person with a Right to Patent;
Manzano v. CA, 278 SCRA 688 supra Chapter VIII Rights of Patentees and Infringement of Patents; and
Chapter XI Assignment and Transmission of Rights.
c. Industrial Application
Lay-Out Designs (Topographies of Integrated Circuits)
SECTION 27. Industrial Applicability. An invention that can be produced and used in RA 9150 amending RA 8293
any industry shall be industrially applicable.
Layout Designs (Topographies) of Integrated Circuits Regulations
2. Utility Model
UNPATENTABLE MATTERS
SECTION 109. Special Provisions Relating to Utility Models.
109.1. Section 22, IPC, as amended by RA No. 9502 (Universally Accessible Cheaper and Quality
a. An invention qualifies for registration as a utility model if it is new and industrially Medicines Act of 2008)
applicable.
b. Section 21, "Patentable Inventions", shall apply except the reference to inventive step as Secs. 8-9, RA 165
a condition of protection.
Sec. 74, RA 165
3. Industrial Designs
Article 27, Agreement on Trade-Related Aspects of Intellectual Property (TRIPS)
SECTION 112. Definition of Industrial Design. An industrial design is any composition
of lines or colors or any three-dimensional form, whether or not associated with lines or Diamond v. Chakrabarty, 447 U.S. 303, 100 S. Ct. 2204
colors: Provided, That such composition or form gives a special appearance to and can
serve as pattern for an industrial product or handicraft. Brief Fact Summary.

SECTION 113. Substantive Conditions for Protection. Chakrabarty (Plaintiff) sought to patent a live, man-made microorganism.
113.1. Only industrial designs that are new or original shall benefit from protection under
this Act. Synopsis of Rule of Law.
113.2. Industrial designs dictated essentially by technical or functional considerations to
obtain a technical result or those that are contrary to public order, health or morals shall not A live, man-made microorganism is a non-naturally occurring composition and therefore
be protected. may be patented.

SECTION 119. Application of Other Sections and Chapters. Facts.

119.1. The following provisions relating to patents shall apply mutatis mutandis to an
industrial design registration: Genetic engineer Ananda Mohan Chakrabarty, working for General Electric, had developed
Section 21 Novelty; a bacterium (derived from the Pseudomonas genus and now known as Pseudomonas
Section 24 Prior art: Provided, That the disclosure is contained in printed documents or putida) capable of breaking down crude oil, which he proposed to use in treating oil spills.
in any tangible form; General Electric filed a patent application for the bacterium in the United States listing
Section 25 Non-prejudicial Disclosure; Chakrabarty as the inventor, but the application was rejected by a patent examiner,
Section 27 Inventions Created Pursuant to a Commission; because under patent law at that time, living things were generally understood to not be
Section 28 Right to a Patent; patentable subject matter under Section 101 of Title 35 U.S.C.
Section 29 First to File Rule;
The Board of Patent Appeals and Interferences agreed with the original decision; however,
the United States Court of Customs and Patent Appeals overturned the case in
11
Chakrabarty's favor, writing, "the fact that micro-organisms are alive is without legal that it had to legislate in order to make agricultural human-made inventions patentable,
significance for purposes of the patent law." Sidney A. Diamond, Commissioner of Patents and, because the legislation Congress enacted is limited, it follows that Congress never
and Trademarks, appealed to the Supreme Court. intended to make items outside the scope of the legislation patentable.

Chakrabarty (Plaintiff) developed a new species of bacterium capable of metabolizing

hydrocarbons in a manner unknown in naturally occurring organisms using recombinant
DNA processes. The microorganisms exhibited great promise in the treatment of oil spills.
Plaintiff applied for a patent, which was denied by the Patent Office (Defendant) on the
basis that the microorganisms were products of nature and therefore unpatentable. The
Board of Appeals affirmed. The Court of Customs and Patent Appeals reversed, and the
United States Supreme Court granted review.

Issue. May a live, man-made microorganism be patented?

Held.

(Burger, C.J.) Yes. A live, man-made microorganism is a non-naturally occurring

composition and therefore may be patented. Resolution of this issue is, regardless of its
philosophical implications, strictly a matter of statutory construction. The relevant statute
here, 35 U.S.C. 101, defines as patentable any new and useful manufacture or
composition of matter, among other things. It is a basic rule of construction that words are
given their natural, ordinary meanings. There can be little doubt that microorganisms
produced by recombinant DNA technology may be said to be manufactured and to be
compositions of matter. For purposes of patent law, the fact they are alive is not relevant.
Although it is true that naturally-occurring products may not be patented, a genetically-
engineered microorganism is not naturally occurring. While this Court recognizes that
recombinant DNA technology is a controversial field, it is ill-equipped to balance the
competing values and interests manifested therein; this is a task for Congress. Since the
patent laws clearly include materials such as are at issue here within their scope, and no
specific law exists to exclude it, the only appropriate holding is that recombinant DNA-
produced microorganisms are patentable. Affirmed.

Dissent.

(Brennan, J.) Congress, in enacting the Plant Patent Act in 1930 and the Plant Variety
Protection Act in 1970, has indicated that bacteria are excluded from patentability. Patent
protection must not be extended further than Congress intended. Congress has not left a
legislative vacuum regarding the type of patent at issue. The Plant Patent Act gives patent
protection to developers of certain asexually reproduced plants. The Plant Variety
Protection Act extends protection to certain new plant varieties capable of sexual
reproduction. Therefore, contrary to the majoritys assertion, the patent at issue does not
pose the problem of unanticipated inventions. In these two Acts, Congress has addressed
the general problem of patenting animate inventions and has chosen carefully limited
language granting protection to some kinds of discoveries, but specifically excluding others.
These Acts show strong evidence of a congressional limitation that excludes bacteria from
patentability. The Acts evidence Congresss understanding, at least since 1930, that 101
does not include living organisms. If newly developed living organisms not naturally
occurring had been patentable under 101, the plants included in the scope of the 1930 and
1970 Acts could have been patented without new legislation. Therefore, Congress believed
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