Morado, Princess Angelica P.

Intellectual Property Law (Sa 1:00-2:00)

August 19, 2017

Topic: Patentability

Cases:
Maguan v CA
G.R. No. L-45101, November 28, 1986

Manzano v CA
G.R. No. 113388, September 5, 1997

Aguas v De Leon
G.R. No. L-31260, January 30, 1982

1. Maguan v CA

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."

It is undisputed that petitioner is a patent holder of some powder puff. 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; 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. In view thereof, petitioner filed a complaint for damages with
injunction and preliminary injunction against private respondent for infringing the aforesaid letters
patent, and prayed, among others, that a writ of preliminary injunction be immediately issued.

Issue: Whether or not petitioner's patents are valid.

Ruling: There is a prima facie showing of a fair question of invalidity of petitioner's patents on the
ground of lack of novelty.

Ratio: 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.

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.

The issuance of letters patent, standing alone, is not sufficient to support such drastic relief. In cases of
infringement of patent no preliminary injunction will be granted unless the patent is valid and infringed
beyond question and the record conclusively proves the defense is sham.

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

Comments:
Under the Patent Law, a patentee has the exclusive right to make, use and sell the patented article or
product. The making, using, or selling by any person without the authorization of the patentee
constitutes infringement of the patent. However, for the patentee to be entitled to protection, the
invention must be new to the world. In this case, sufficient proofs have been introduced in evidence
showing a fair question of the invalidity of the patents issued for such models.

The importance of this case is that the issuance of letters patent, standing alone, is not sufficient to
support a drastic relief of preliminary injunction enjoining persons, who are alleged to be infringing the
rights of another, from making, using, or selling the said products.

2. Manzano v CA

Facts: Petitioner Manzano filed with the Philippine Patent Office an action for the cancellation of
Letters Patent No. UM-4609 for a gas burner registered in the name of respondent Melecia Madolaria
who subsequently assigned the letters patent to United Foundry.

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) respondent Melecia Madolaria was not the
original, true and actual inventor nor did she derive her rights from the original, true and actual
inventor of the utility model covered by the letters patent; and, (d) the letters 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 filed.

On 7 July 1986 the Director of Patents issued the Decision denying 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. Not one of the various pictorial representations of
business clearly and convincingly showed that the devices presented by petitioner was identical or
substantially identical with the utility model of the respondent.

Issue: Whether or not the invention in question is novel and patentable.

Ruling: Yes.
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 standard of evidence sufficient
to overcome the presumption of legality of the issuance of UM-4609 to respondent Madolaria was not
legally met by petitioner in her action for the cancellation of the patent.

Ratio: 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.

Section 7 of RA No. 165, as amended, which is the law 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 new model of implements or tools or of any
industrial product or of part of the same, which does not possess the quality of invention, but
which is of practical utility by reason of its form, configuration, construction or composition,
may be protected by the author thereof, the former by a patent for a design and the latter by a
patent for a utility model, in the same manner and subject to the same provisions and
requirements as relate to patents for inventions insofar as they are applicable except as
otherwise 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 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.

Comments:
The Patent Office is an expert body preeminently qualified to determine questions of patentability, its
findings must be accepted if they are consistent with the evidence, with doubts as to patentability
resolved in its favor.

To overcome the presumption that the patentee was the original and first inventor, the person who
avers it must prove the want of novelty by clear and satisfactory proof which overcomes every
reasonable doubt.

In this case, petitioner failed to do so.

3. Aguas v De Leon

Facts: De Leon filed in the Court of First Instance of Rizal at Quezon City a complaint for
infringement of patent against Aguas and Aquino and F.H. Sons. An order granting the plaintiff's
petition for a Writ of Preliminary Injunction against the defendants was issued.

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 De Leon.

Trial Court rendered a decision in favor of De Leon, which was affirmed by the Court of Appeals.

Issue: Whether or not Patent No. 658 was legally issued

Ruling: Yes.
This Court finds that Patent No. 658 was legally issued, the process and/or improvement being
patentable.
Both the trial court and the Court of Appeals found as a fact that the petitioner Domiciano A. Aguas did
infringe de Leon's patent. The records disclose that de Leon's process is an improvement of the old
process of tile making.

Ratio:
Section 7, Republic Act No. 165, as amended provides: "Any invention of a new and useful machine,
manufactured product or substance, process, or an improvement of the foregoing, shall be patentable.

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. 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 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, among other ingredients that makes possible the production
of tough and durable wall tiles, though thin and light; the engraving of deep designs in such a way as to
make the tiles decorative, artistic and suitable for wall ornamentation, and the fact that the tiles can be
mass produced in commercial quantities and can be conveniently stock-piled, handled and packed
without any intolerable incidence of breakages.

The tiles produced from de Leon's process are suitable for construction and ornamentation, which
previously had not been achieved by tiles made out of the old process of tile making.

Comments:
Where the improvement is inventive and different from the old process, the improvement is patentable.
So, a person need not be an inventor of something to protect his rights. As section 7 provides, even
improvements are patentable.

In this case, De Leon has improved the old process of tile making. His new process creates a new and
useful kind of tile.