ROSARIO C. MAGUAN (formerly ROSARIO C. TAN),
UM - 1184, for a period of 5 years from
petitioner, vs. THE HONORABLE COURT OF APPEALS
and SUSANA LUCHAN, respondents.
Ambrosio Padilla Law Offices for petitioner.
DECISION
PARAS, J p:
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. UM-110 for
a period of 5 years from January
26, 1972)
3.
April 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 (a) since years prior to the filing of
complaint for damages with injunction and preliminary applications for the patents
injunction against private respondent with the then Court of involved, powder puffs of the
First Instance of Rizal, Pasig Branch, docketed as Civil Case kind applied for were then
No. 19908, for infringing the aforesaid letters patent, and already existing and publicly
prayed, among others, that a writ of preliminary injunction be being sold in the market; both in
immediately issued (Complaint, Rollo, p. 90). the Philippines and abroad; and
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 (b) applicant's claims in her applications, of
on the following grounds: "construction" or process of
(1) at the time of filing of application for the manufacturing the utility models
patents involved, the utility applied for, with respect to UM-
models applied for were not new 423 and UM-450, were but a
and patentable under Sec. 55 of complicated and impractical
R.A. 165, as amended by R.A. version of an old, simple one
864; and 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
(2) the person to whom the patents were general public: and with respect
issued was not the true and to UM-1184; her claim, in her
actual author of the utility application of a unitary powder
models applied for, and neither puff, was but an imitation of a
did she derive her rights from product well known to the
any true and actual author of cosmetics industry since years
these utility models. previous to her filing of
application, and which belonged
to no one except to the general
public; (Answer, Rollo, pp. 93-
94).
for the following reasons:
On September 18, 1974, the trial court issued an Order (2) Writ of preliminary injunction dated
(Annex "K", Rollo, p. 125) granting the preliminary injunction September 18, 1974; and
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 (3) Order dated September 11, 1974
or causing to be made, selling or causing to be sold, or using denying petitioner's motion for
or causing to be used in accordance with, or embodying the reconsideration.
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 On October 15, 1975, the Writ of Preliminary Injunction was
whatsoever (Annex "K-1", Rollo, p. 131). issued by the respondent Court of Appeals as follows:
Private respondent questioned the propriety of the trial court's "NOW, THEREFORE, you, respondents,
issuance of the Writ of Preliminary Injunction arguing that and/or any person/persons
since there is still a pending cancellation proceedings before acting on your stead, are hereby
the Philippine Patent Office concerning petitioner's patents, ENJOINED to RESTRAIN from
such cannot be the basis for preliminary injunction (Motion for enforcing or continuing to
Reconsideration, Rollo, p. 132). enforce, the proceedings
In an Order dated September 11, 1975, the trial court denied complained of in the petition to
private respondent's motion for reconsideration (Annex "N", wit: 1) Order dated September
Rollo, p. 142). 18, 1974, granting the
In challenging these Orders private respondent filed a petition preliminary injunction; 2) Writ of
for certiorari with the respondent court on September 29, Preliminary Injunction dated
1975 (Annex "D", Rollo, pp. 148-171) reiterating among other September 18, 1974; and Order
things the invalidity of petitioner's patents and prayed that the dated September 11, 1976,
trial court be restrained from enforcing or continuing to denying petitioner's motion for
enforce the following: reconsideration, all issued in
(1) Order dated September 18, 1974, connection with Civil Case No.
granting the preliminary 19908, UNTIL FURTHER
injunction; ORDERS FROM THIS
COURT." (Annex "P", Rollo, p.
173)
On February 16, 1976, respondent court promulgated a THAT THIS HONORABLE COURT ERRED
decision the dispositive portion of which reads: IN NOT APPRECIATING THE
"WHEREFORE, finding no merit in the EXISTENCE OF A FAIR
herein petition, the same is QUESTION OF INVALIDITY OF
hereby dismissed and the PRIVATE RESPONDENT'S
preliminary injunction previously PATENTS.
issued by this Court is hereby
set aside, with costs.

II

"SO ORDERED." (CA Decision, Rollo, p.

189).

In said decision respondent court stated that in disposing of THAT THIS HONORABLE COURT ERRED
the petition it tackled only the issue of whether the court a quo IN NOT REJECTING THE
acted with grave abuse of discretion in issuing the challenged THEORY OF RESPONDENT
orders. It made clear the question of whether the patents JUDGE THAT HE HAS NO
have been infringed or not was not determined considering JURISDICTION TO
the court a quo has yet to decide the case on the merits (Ibid., INVALIDATE THE PATENTS
p. 186). UPON GROUND OF LACK OF
Feeling aggrieved, private respondent moved to reconsider NOVELTY OF THE
the afore-mentioned Decision based on the following PRODUCTS PATENTED.
grounds: (Motion for Reconsideration,
I 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
products covered by petitioner's patents. Said court noticed
that contrary to the lower court's 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 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. 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. LLpr
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
prosecuted 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:
"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. cdll
PREMISES CONSIDERED, the assailed resolutions of the
Court of Appeals are hereby AFFIRMED.
SO ORDERED.
Feria, Fernan, Gutierrez, Jr. and Feliciano, ** JJ ., concur.
Alampay, J ., no part.
||| (Maguan v. Court of Appeals, G.R. No. L-45101,
[November 28, 1986], 230 PHIL 204-215)
ANGEL VARGAS, plaintiff-appellant, vs. F. M. YAPTICO &
Co. (LTD.), defendant-appellee.
Charles C. Cohn for appellants.
John Bordman for appellee.
SYLLABUS
1. PROPERTY; PATENTS; LAW. —
Act No. 2235 of the Philippine Legislature,
enacted on February 10, 1913, in effect makes
the United States Patent Laws applicable in the
Philippine Islands.

2. ID.; ID.; VALIDITY; JUDICIARY. —

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."

3. ID.; ID.; ID.; ID.; BURDEN OF

PROOF. — 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.
4 ID.; ID.; ID.; "VARGAS PLOW;"
NOVELTY INVENTION, OR DISCOVERY — In
order to give existence to the right to a patent the
element of novelty, invention, or discovery must
be shown.
5. ID.; ID.; ID.; ID.; REPAIRS. — 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
refitting the machine for use, and thus
permissible.
6. ID.; ID.; ID.; ID.; PUBLIC USE OR
SALE. — To entitle patent, the invention must be
new to the world.
7. ID.; ID.; ID.; ID.; ID. — 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.
8. ID.; ID.; ID.; ID.; ID. — A single
instance of public use of the invention by a
patentee for more than two years before the date
of his application for his patent will be fatal to the
validity of the patent when issued.
9. ID.; ID.; ID.; ID.; ID. — Held: That
since a preponderance of the evidence ,is to the
effect that for more than two years before the
application for the original letters patent there
was, by the consent and allowance of the plaintiff,
a public use of the invention covered by them,
namely, of the so-called "Vargas Plow," the
patent is void.
DECISION
MALCOLM, J p:
Rude wooden implements for tilling the
soil have been in use in the Philippines, possibly
not since the Israelites "went down to sharpen
every man his share and his coulter," but certainly
for many years. Iron plows called "Urquijo" and
"Pony" have latterly been the vogue.
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. On July 22, 1910, he made
application for a United States patent to cover his
so-called invention. On March 12, 1912, letters
patent were issued by the United States Patent
Office in favor of Vargas. On April 24, 1912, a
certified 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
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, specifying five errors. The principal
assignment No. 1 is, that the trial court erred in
finding that the patented invention of the plaintiff
is lacking in novelty and invention. Defendant, in
reply, relies on three propositions, namely: (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.
Before resolving these rival
contentions, we should have before us the
relevant law. Act No. 2235 of the Philippine
Legislature, enacted on February 10, 1913, in
effect makes the United States Patent Laws
applicable in the Philippine Islands. It provides
that "owners of patents, including design patents,
which have been issued or may hereafter be
issued, duly registered in the United States
Patent Office under the laws of the United States
relating to the grant of patents, shall receive in the
Philippine Islands the protection accorded them
in the United States under said laws." (Sec. 1.)
Turning to the United States Patent Laws, we find
the Act of Congress of March 3, 1897,
amendatory of section 4886 of the United States
Revised Statutes, reading as follows:
"Any person who has
invented or discovered any new
and useful art, machine,
manufacture, or composition of
matter, or any new and useful
improvements thereof, not
known or used by others in this
country. before his invention or
discovery thereof, and not
patented or described in any
printed publication in this or any
foreign country, before his
invention or discovery thereof, or
more than two years prior to his
application, and not in public use
are on sale in this country for
more than two years prior to his
application, unless the same is
proved to have been
abandoned, may, upon payment
of the fees required by law, and
other due proceeding had,
obtain a patent therefor." (29
Stat. L., 692, 7 Fed. Stat. Ann.
[2d Ed.], p. 23.)
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 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.
(See Agawan Co. vs. Jordan [1869], 7 Wall., 583;
Blanchard vs. Putnam [186g], 8 Wall., 420;
Seymour vs. Osborne [1871], 11 Wall., 516;
Reckendorfer vs. Faber [1876], 92 U. S., 347; 20
R. C. L., 1112, 1168, 1169.)
 As hereinbefore 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. (See Stimpson vs. Woodman [1870],
10 Wall., 117 — rollers; Hicks vs. Kesley [1874],
18 Wall., 674 — wagons; Hails vs. Wormer
[1874], 20 Wall., 353 — stoves; Washburn &
Moen Mfg. Co. vs. Beat "Em All Barbed Wire Co.
[1892], 143 U. S., 275 — barbed wire; Lynch vs.
Dryden [1873], C. D., 73 — walking cultivators;
Torrey vs. Hancock [1910] 184 Fed., 61 — rotary
plows.)
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
foundaries, he has for four years cast large
numbers of plow points and shares suitable for
the use of either on the native wooden plow or on
the Vargas plow. A differences has long been
recognized between repairing and constructing 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. (Wilson vs. Simpson [1850], 9 How.,
109.) 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 defendants 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.
Although we have spent some time in
arriving at this point, yet, having reached it, the
question in the case is single and can be brought
to a narrow compass. Under the English Statute
of Monopolies (21 Jac. Ch., 3), and under the
United States Patent Act of February 21, 1793,
later amended to be as herein quoted, it was
always the rule, as stated by Lord Coke, Justice
Story and other authorities, that to entitle a man
to a patent, the invention must be new to the
world. (Pennock and Sellers vs. Dialogue [1829],
2 Pet., 1.) As said by the United States Supreme
Court, "it has been repeatedly held by this court
that a single instance of public use of the
invention by a patentee for more than two years
before the date of his application for his patent
will be fatal to the validity of the patent when
issued." (Worley vs. Lower Tobacco Co. [1882],
104 U. S., 340; McClurg vs. Kingsland [1843], 1
How., 202; Consolidated Fruit Jar Co. vs. Wright
[1877], 94 U. S., 92; Egbert vs. Lippmann [1881],
104 U. S., 333; Coffin vs. Ogden [1874], 18 Wall.,
120; Manning vs. Cape Ann Isinglass and Glue
Co. [1883], 108 U. S., 462; Andrews vs. Hovey
[1887], 123 U. S., 267; Campbell vs. City of New
York [1888], 1 L. R. A., 48.)
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 in 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 31, 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 the costs of this instance against the appellant.
seen the Vargas plow in 1906 and 1907, who So ordered.
denied that Roces purchased the Vargas plow in
1907, who denied that Lizarraga could have Arellano, C. J., Torres, Johnson, Araullo, Street, Avanceña
acted as an agent to sell two plows in November, and Moir, JJ., concur.
1908, who denied any remembrance of the loan ||| (Vargas v. F. M. Yaptico & Co. (Ltd.), G.R. No. 14101,
mentioned by Berwin as having been negotiated [September 24, 1919], 40 PHIL 195-203)
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 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
 1. PATENT FOR INVENTION;
PLOWS. — In view of the facts stated in the
decision, Held: That the appellee is not entitled to
the protection of his invention 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.

DECISION
IMPERIAL, J p:
The defendants Petronila Chua, Coo
Pao and Coo Teng Hee, appeal from the
judgment of the Court of First Instance of Manila,
the dispositive part of which reads as follows:

"Wherefore, judgment
is rendered in favor of the
plaintiff and against the
defendants, ordering each and
every one of them, their agents,
mandatories and attorneys, to
henceforth abstain from making,
manufacturing, selling or
offering for sale plows of the
type of those manufactured by
ANGEL VARGAS, plaintiff-appellee, vs. PETRONILA CHUA the plaintiff, and particularly
ET AL., defendants-appellants. plows of the model of Exhibits B,
Jose F. Orozco for appellants. B-1 and B-2, and to render to the
Jose Yulo for appellee. plaintiff a detailed accounting of
SYLLABUS the profits obtained by them
from the manufacture and sale
 of said type of plows within thirty
(30) days from the date of the
receipt by them of notice of this
decision, with costs against all of
the defendants."
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 same of said
plows from September 2, 1924, to pay him
damages equivalent to double the amount of
such profits.
It appears from the bill of exceptions
that Chan Samco & Sons did not appeal.
In addition to the evidence presented,
the parties submitted the following stipulation of
facts:
"The parties agree on
the following facts:
"1. That the plaintiff,
Angel Vargas, is of age and a
resident of the municipality of
Iloilo, Iloilo, Philippine Islands.
"2. That the defendant,
Petronila Chua, is also of age,
and is married to Coo Pao alias
Coo Paoco, and resides in Iloilo.
"3. That the defendant,
Coo Teng Hee, is also of age
and a resident of Iloilo, and is the
sole owner of the business
known as Coo Kun & Sons
Hardware Co. established in
Iloilo.
"4. That the defendant,
Cham Samco & Sons, is a
commercial partnership duly
organized under the laws of the
Philippine Islands, with their
principal office in the City of
Manila, and that the defendants
Cham Samco, Cham Siong E,
Cham Ai Chia and Lee Cham
Say, of all of age and residents
of the City of Manila, are the
partners of the firm Cham
Samco & Sons.
"5. The parties take for
granted that the complaint in this
case is amended in the sense
that it includes Coo Paoco as
party defendant in his capacity
as husband of the defendant,
Petronila Chua, with Attorney
Jose F. Orozco also
representing him, and that the
renounces his rights to receive
summons in this case by
reproducing the answer of his
codefendant, Petronila Chua.
"6. That the plaintiff is
the registered owner and
possessor of United States
Patent No. 1,507,530 on certain
plow improvements, issued by
the United States Patent Office
on September 2, 1924, a
certified copy of which was
registered in the Bureau of
Commerce and Industry of the
Government of the Philippine
Islands on October 17, 1924. A
certified copy of said patent is
attached to this stipulation of
facts as Exhibit A.
"7. That the plaintiff is
now and has been engaged,
since the issuance of his patent,
in the manufacture and sale of
plows of the kind, type and
design covered by the
aforementioned patent, said
plows being of different sizes
and numbered in accordance
therewith from 1 to 5.
"8. That, since the
filing of the complaint to date,
the defendant, Petronila Chua,
has been manufacturing and
selling plows of the kind, type
and design represented by
Exhibits B, B-1 and B-2, of
different sizes, designated by
Nos. 2, 4 and 5.
 "9. That, since the
filing of the complaint to date,
the defendant, Coo Teng Hee,
doing business in Iloilo under the
name of Coo Kun & Sons
Hardware Co., has been
obtaining his plows, of the form
and size of Exhibits B, B-1 and
B-2, from the defendant
Petronila Chua.
"10. Without prejudice
to the plaintiff's right to ask the
defendants to render an
accounting in case the court
deem it proper, the parties agree
that the defendant Coo Teng
Hee, doing business under the
name of Coo Kun & Sons
Hardware Co., has been selling
to his customers in his store on
J. Ma. Basa Street in Iloilo,
plows of the kind, type and
design represented by Exhibits
B, B-1, and B-2, having bought
said plows from his
codefendant, Petronila Chua,
who manufactures them in her
factory on Iznart Street, Iloilo.
"11. That, according to
the invoices marked Exhibits C
and C-2 dated March 13, 1928,
and June 19, 1928, respectively,
the defendant Cham Samco &
Sons, on the dates mentioned,
had, in the ordinary course of
business, bought of its
codefendant Coo Kun & Sons
Hardware Co., 90 plows of the
form, type and design of Exhibits
B, B-1 and B-2 which it has been
selling in its store on Sto. Cristo
Street, Manila.
"12. That the same
defendant Cham Samco &
Sons, in the ordinary course of
business, bought on March 17,
1928, of the store 'El Progreso'
owned by Yao Ki & Co., of Iloilo,
a lot of 50 plows, of the form,
type and design of Exhibit B-1,
as shown by Invoice C-1, and
that it has been selling them in
its store on Sto. Cristo St.,
Manila.
"13. That, on
September 19, 1928, the
defendant Cham Samco &
Sons, sold in its store on Sto.
Cristo St., Manila, and plow
Exhibit B-1, for the sale of which
invoice Exhibit D was issued.
"14. That, on
December 20, 1927, the plaintiff
herein, through his attorneys
Paredes, Buencamino & Yulo,
sent by registered mail to the
herein defendant, Coo Kun &
Sons Hardware Co., at Iloilo, the
original of the letter Exhibit E,
which was received by it on
September 28, 1927, according
to the receipt marked Exhibit E-
1 attached hereto.
"15. That the plows
manufactured by the plaintiff in
accordance with his patent,
Exhibit A, are commonly known
to the trade in Iloilo, as well as in
other parts of the Philippines, as
'Arados Vargas', and that the
plaintiff is the sole manufacturer
of said plows. A sample of these
plows is presented as Exhibit F.
"16. That the
document, Exhibit 1-Chua, is a
certified copy of the amended
complaint, the decision of the
Court of First Instance of Iloilo
and that of the Supreme Court
(R.G. No. 14101) in civil case
No. 3044 of Iloilo, entitled 'Angel
Vargas, plaintiff, vs. F.M.
Yaptico & Co., Ltd., defendant',
and that Exhibit 2-Chua et al. is
a certified copy of Patent No.
1,020,232, to which the
aforementioned complaint and
decision refer, issued in favor of
Angel Vargas by the United
States Patent Office on March
12, 1912, and that Exhibit 3-
Chua et al. represents the plow
manufactured by Angel Vargas
in accordance with his Patent
marked Exhibit 2-Chua et al."
The appellants assign the following
errors:
"FIRST ERROR
"The trial court erred in
declaring that the Vargas plow,
 Exhibit F (covered by Patent No.
1,507,530), is distinct from the
old model Vargas plow, Exhibit
2-Chua, covered by the former
Patent No. 1,020,232, which had
been declared null and void by
this court.
"SECOND ERROR
"The trial court erred in
mistaking the improvement on
the plow for the plow itself.
"THIRD ERROR
"The trial court erred in
rendering judgment in favor of
the plaintiff and against the
defendants.
"FOURTH ERROR
"The trial court erred in
not dismissing the complaint
with costs against the plaintiff."
The evidence shows that Exhibit F is
the kind of plows the plaintiff, Angel Vargas,
manufactures, for which Patent No. 1,507,530,
Exhibit A, was issued in his favor. Exhibits B, B-1
and B-2 are samples of the plows which the
herein appellants, Coo Pao and Petronila Chua,
have been manufacturing since 1918, and Exhibit
3-Chua represents the plow for which, on March
12, 1912, the appellee obtained a patent from the
United States Patent Office, which has declared
null and void by the Supreme Court in the case of
Vargas vs. F.M. Yap Tico & Co. (40 Phil., 195).
With these facts in view, the principal
and perhaps the only question we are called upon
to decide is 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.
We have carefully examined all the
plows presented as exhibits as well as the
designs of those covered by the patents, and we
are convinced that no substantial difference
exists between the plow, Exhibit F, and the plow,
Exhibit 3-Chua which was originally patented by
the appellee, Vargas. The only difference noted
by us is the suppression of the bolt and the three
holes on the metal strap attached to the handle
bar. These holes and bolt with its nut were
suppressed in Exhibit F in which the beam is
movable as in the original plow. The members of
this court, with the plows in view, arrived at the
conclusion that not only is there no fundamental
difference between the two plows but no
improvement whatever has been made on the
latest model, for the same working and
movement of the beam existed in the original
model with the advantage, perhaps, that its
graduation could be carried through with more
certainty by the use of the bolt which as has
already been stated, was adjustable and
movable.
As to the fact, upon which much
emphasis was laid, that deeper furrows can be
made with the new model, we have seen that the
same result can be had with the old implement.
In view of the foregoing, we are firmly
convinced that 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 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. (See Agawan Co.
vs. Jordan [1869], 7 Wall., 583;
Blanchard vs. Putnam [1869], 8
Wall., 420; Seymour vs.
Osborne [1871], 11 Wall., 516;
Reckendorfer vs. Faber [1876],
92 U.S., 347; 20 R.C.L., 1112,
1168, 1169.)
"Although we have
spent some time in arriving at
this point, yet, having reached it,
the question in the case is single
and can be brought to a narrow
compass. Under the English
Statute of Monopolies (21 Jac.
Ch., 3), and under the United
States Patent Act of February
21, 1793, later amended to be
as herein quoted, it was always
the rule, as stated by Lord Coke,
Justice Story and other
authorities, that to entitle a man
to a patent, the invention must
be new to the world. (Pennock
and Sellers vs. Dialogue [1829],
2 Pet., 1.) As said by the United
States Supreme Court, it has
been repeatedly held by this
court that a single instance of
public use of the invention by a
patentee for more than two
years before the date of his
application for his patent will be
fatal to the validity of the patent
when issued.' (Worley vs. Lower
Tobacco Co. [1882], 104 U.S.,
340; McClurg vs. Kingsland
[1843], 1 How., 202;
Consolidated Fruit Jar Co. vs.
Wright [1877], 94 U.S., 92;
Egbert vs. Lippman [1881], 104
U.S., 333; Coffin vs. Ogden
[1874], 18 Wall., 120; Manning
vs. Cape Ann Isinglass and Glue
Co. [1883], 108 U.S., 462;
Andrews vs. Hovey [1887], 123
U.S., 267; Campbell vs. City of
New York [1888], 1 L.R.A., 48.)"
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.
Avanceña, C.J., Street, Villamor, Ostrand, Villa-Real, Abad
Santos, Hull, Vickers and Butte, JJ., concur.
PATRICK HENRY FRANK and WILLIAM HENRY GOHN,
plaintiffs-appellants, vs. G. KOSUYAMA, defendant-
appellee.
J. W. Ferrier for appellants.
Pablo Lorenzo for appellee.
SYLLABUS
1. PATIENT; ESSENTIAL ELEMENTS.
— Strictly speaking, the hemp stripping machine
of the plaintiffs does not constitute an invention
on the ground that it lacks the element of novelty,
originality and precedence (48 C. J., sec. 101, p.
97, and sec. 102, p. 98).
2. ID.; KNOWLEDGE AND USE BY
THE PUBLIC. — Before the plaintiffs herein
obtained their patent, they themselves had
already publicly used the same kind of machine
for many 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.
3. ID.; ANNULMENT. — characteristics thereof which had been imitated
Notwithstanding all the facts herein stated, the
trial court did not annul the plaintiffs' patent and
the defendant herein insists that the patent in
question should be declared null and void. In view
of the nature of the action brought by the
plaintiffs, annulment does not lie in the absence
of a cross-complaint to that effect.
4. ID.; INFRINGEMENT. — The
defendant cannot be made civilly liable for
alleged infringement of the patent on which the
action is based on the ground that the machines
manufactured and sold by him did not have any
essential part unknown to the public in the
Province of Davao at the time the plaintiffs
applied for and obtained their patent for improved
abaca stripping machines.
5. APPLICABILITY OF THE
DOCTRINE OF "STARE DECISIS". — The
doctrine laid down in the case of Frank and Gohn
vs. Benito (51 Phil., 712), to the effect that the
defendant therein had actually infringed upon the
patent of the therein plaintiffs cannot be invoked
in this case. It is true that the then plaintiffs in the
former and those in the latter case are the same
but the defendant therein did not set up the
special defenses as alleged by the herein
defendant. Furthermore, the plaintiffs therein had
only confined themselves to presenting the
patent, or rather, a copy thereof, wherein mention
of the "spindle" was made, and this court took for
granted their claim that it was one of the essential
or copied by the therein defendant.
DECISION
IMPERIAL, J p:
Patent No. 1519579 (Exhibit 117) on
improvement in hemp stripping machines, 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
judgment be rendered against the defendant,
ordering him thereby to refrain immediately from
the manufacture and sale off 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 defendant 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 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 costs, as well as the
defendant's counterclaim of P10,000. The
defendant did not appeal.
In their amended complaint, the
plaintiffs 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 tapering 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 pallet or 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 differences
between the machine in question and other
machines and 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.
During the trial, both parties presented
voluminous evidence from which the trial court
arrived at the following conclusions:
"In considering their
machine the plaintiffs did
nothing but improve, to a certain
degree, those that were already
in vogue and in actual use 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
can it 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 machines appeared.
Neither can it be said that they
invented the flywheel 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 those of Riesgo (Exhibit 4-A),
Crumb (Exhibit 1-A), Icsiar
(Exhibit A-Suzara), Browne
(Exhibit 28-A), McFie, etc., all of
which were in use for the benefit
of hemp long before the
appearance of the plaintiffs'
machines in 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 that 'the
principal and important feature
of said machine is a spindle
upon which the hemp to be
stripped is wound in the process
of stripping,' 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 sec. 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
noted that Adrian de Icsiar applied for a patent on
an invention which resulted in the rejection by the
United States Patent Office of the plaintiffs'
original application for a patent on the so-called
"spindle" or conical drum which was then in
actual use in the Dringman and Icsiar hemp
stripping machines.
Notwithstanding the foregoing facts, 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 insists 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 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 in 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 are 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 an obtained their patent for improved
hemp stripping machines, the judgment appealed
from is hereby affirmed, with costs against the
plaintiffs-appellants. So ordered.
DOMICIANO A. AGUAS, petitioner, vs. CONRADO G. DE
LEON and COURT OF APPEALS, respondents.
Estanislao Fernandez for petitioner.
Cecilia P. de Leon for respondents.
SYNOPSIS
Private respondent, who had been granted and issued
Letters Patent No. 658 by the Philippines Patent Office for his
invention of certain new and useful improvements in the
process of making mosaic pre-cast tiles, filed a complaint for
infringement of patent against petitioner Domiciano Aguas
and F. H. Aquino & Sons. Petitioner Aguas, in his answer,
alleged that respondent's patent was unlawfully secured
through misrepresentations as the latter's invention is neither
inventive nor new and hence not patentable; and that he
cannot be held guilty of infringement because his products,
which had been duly patented, were different from those of
the private respondent. The trial court, finding respondent's
patent valid and infringed, ordered petitioner Aguas and F. H.
Aquino & Sons to pay respondent jointly and severally actual,
moral and exemplary damages and attorney's fees. Petitioner
appealed to the Court of Appeals questioning the validity of
the patent issued by the Philippines Patent Office and the
patentability of respondent's tile-making process. The
Appellate Court, however, sustained the trial court's decision
but greatly reduced the award of moral damages. Meanwhile,
private respondent's patent right expired, hence, in this
petition, only the right of said private respondent to damages
will be determined.
The Supreme Court, affirming the decision of the trial court
as modified by the Court of Appeals, held that petitioner's
evidence has not overcome the legal presumption on the
validity of respondent's patent; and that based on the records,
respondent's process is an improvement of the old process
of tile-making, hence, patentable.
Petition dismissed.
SYLLABUS
1. COMMERCIAL LAW; PATENT LAW (REPUBLIC ACT
NO. 165); MATTERS PATENTABLE THEREUNDER; A
CASE OF; IMPROVEMENT OF THE OLD PROCESS OF
TILE-MAKING IN CASE AT BAR. — Under Section 7,
Republic Act No. 165, as amended, "Any invention of a new
and useful machine, manufactured product or substance,
process or an improvement of the foregoing, shall be
patentable." In the case at bar, the contention of the petitioner
that the letters-patent of private respondent was actually a
patent for the old and non-patentable process of making
mosaic precast tiles is devoid of merit. It should be noted that
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 Philippines Patent
Office to the private respondent, to protect his rights as the
inventor of "an alleged new and useful improvement in the
process of making mosaic precast tiles."
2. ID.; ID.; PATENTS; VALIDITY BETTER DETERMINED BY
THE PHILIPPINES PATENT OFFICE. — The validity 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.
3. ID.; ID.; ID.; WHAT CONSTITUTES A PATENTABLE
PROCESS AND/OR IMPROVEMENT; CASE AT BAR. —
Petitioner's contention that the improvement of respondent is
not patentable because it is not new and useful and inventive
is without merit, where the records disclose that private
respondent's process is an improvement of the old process
of tile-making and that such improvement is indeed inventive
and goes beyond the exercise of mechanical skill by which
private respondent has introduced a new kind of tile for a new
purpose.
4. REMEDIAL LAW; APPEAL; FINALITY OF THE FINDINGS
OF FACT OF THE TRIAL COURT AND OF THE COURT OF
APPEALS; CASE AT BAR, NOT AN EXCEPTION. — Both
the trial court and the Court of Appeals found as a fact that
the petitioner did infringe private respondent'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.
5. COMMERCIAL LAW; PATENT LAW (REPUBLIC ACT
NO. 165); PATENTS; DAMAGES AWARDED UNDER
SECTION 42 OF THE PATENT LAW; SUSTAINED IN CASE
AT BAR. — The Supreme Court finds no reason to reduce
the amount of damages and attorneys fee awarded by the
trial court under Sec. 42 of the Patent Law which are as
follows; (a) P10,020.99 by way of actual damages; (b)
P50,000 by way of moral damages which was reduced by the
Court of Appeals to P3,000 by way of compensating appellee
for his moral suffering; (c) P5,000 by way of exemplary
damages; (d) P5,000 by way of attorney's fees and (e) costs
of suit.
DECISION
FERNANDEZ, J p:
This is a petition for certiorari to review the decision of the
Court of Appeals in CA G.R. No. 37824-R entitled "Conrado
G. de Leon, plaintiff-appellee vs. Domiciano Aguas and F. H.
Aquino and Sons, defendants-appellants," the dispositive
portion of which reads:
"WHEREFORE, with the modification that
plaintiff-appellee's award of
moral damages is hereby
reduced to P3,000.00, the
appealed judgment is hereby
affirmed, in all other respects,
with costs against appellants." 1
On April 14, 1962, 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
Philippines 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 therefor, 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 Letters 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 and in
very rapidly increasing quantities; that he has complied with
the Philippine statutes relating to marking patented tiles sold
by him; that the public has in general acknowledged the
validity of said Patent No. 658, and has respected plaintiff's
right therein and thereunder; that the defendant Domiciano A.
Aguas infringed Letters of Patent No. 658 by making, using
and selling tiles embodying said patented 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
for use and actually used in apparatus for the making 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; that as a
result of the defendants' wrongful conduct, plaintiff 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 patent rights as against the defendants'
act of infringement and to engage the services of counsel,
thereby incurring attorney's fees and expenses of litigation in "WHEREFORE, judgment is hereby
the sum of P5,000.00. 2 rendered in favor of plaintiff and
On April 14, 1962, an order granting the plaintiff's petition for against the defendants:
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- "1. De
cast tiles, the same having been used by several tile-making claring plaintiff's
factories in the Philippines and abroad years before the patent valid and
alleged invention by de Leon; that Letters Patent No. 658 was infringed;
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 "2. Gra
alleged invention did not confer any right on the plaintiff nting a perpetual
because the registration was unlawfully secured and was a injunction
result of the gross misrepresentation on the part of the plaintiff restraining
that his alleged invention is a new and inventive process; that defendants, their
the allegation of the plaintiff that Patent No. 658 is of great officers, agents,
value to plaintiff and of great benefit to the public is a mere employees,
conclusion of the plaintiff, the truth being that a) the invention associates,
of plaintiff is neither inventive nor new, hence, it is not confederates,
patentable; b) defendant has been granted valid patents and any and all
(Patents No. 108, 109, 110 issued on December 21, 1961) persons acting
on designs for concrete decorative wall tiles; and c) that he under their
can not be guilty of infringement because his products are authority from
different from those of the plaintiff. 4 making and/or
using and/or
The trial court rendered a decision dated December 29, 1965, vending tiles
the dispositive portion of which reads: LLpr embodying said
patented
invention or "3. Ord
adapted to be ering that each
used in and all of the
combination infringing tiles,
embodying the engravings,
same, and from castings and
making, devices, which
manufacturing, are in the
using or selling, possession or
engravings, under the control
castings and of defendants be
devices delivered to
designed and plaintiff;
intended for use
in apparatus for
the making of
tiles embodying
plaintiff's
patented
invention, and
"4. Ord
from offering or
ering the
advertising so to
defendants to
do, and from
jointly and
aiding and
severally pay to
abetting or in
the plaintiff the
any way
following sums
contributing to
of money, to wit:
the infringement
of said patent;
 (a) P10,020. "THE TRIAL
99 by way of actual COURT ERRED IN NOT
damages; HOLDING THAT
PLAINTIFF'S PATENT
FOR THE 'PROCESS
OF MAKING MOSAIC
PRE-CAST TILE' IS
(b) P50,000. INVALID BECAUSE
00 by way of moral SAID ALLEGED
damages; PROCESS IS NOT AN
INVENTION OR
DISCOVERY AS THE
SAME HAS ALREADY
(c) P5,000.0 LONG BEEN USED BY
0 by way of exemplary TILE
damages MANUFACTURERS
BOTH ABROAD AND IN
THIS COUNTRY.

(d) P5,000.0
0 by way of attorney's
fees and (e) costs of
suit." 5
"II

The defendant Domiciano Aguas appealed to the Court of

Appeals, assigning the following errors. 6
"I "THE TRIAL
COURT ERRED IN NOT
HOLDING THAT THE
PATENT OF PLAINTIFF
IS VALID BECAUSE IT
IS AN IMPROVEMENT
 OF THE AGE-OLD TILE "THE TRIAL
MAKING SYSTEM. COURT ERRED IN
HOLDING THAT
DEFENDANT
DOMICIANO A. AGUAS
IS GUILTY OF
INFRINGEMENT
DESPITE THE FACT
THAT PLAINTIFF'S
"III
PATENT IS NOT A
VALID ONE.

"THE TRIAL
COURT ERRED IN NOT
ORDERING THE
CANCELLATION OF
PLAINTIFF- "V
APPELLEE'S LETTERS
PATENT NO. 658,
EXHIBIT L, IN
ACCORDANCE WITH
THE PERTINENT "THE TRIAL
PROVISIONS OF THE COURT ERRED IN NOT
PATENT LAW, HOLDING THAT THE
REPUBLIC ACT 165. DEFENDANT COULD
NEVER BE GUILTY OF
INFRINGEMENT OF
PLAINTIFF'S PATENT
BECAUSE EVEN IN
MATTERS NOT
PATENTED BY THE
PLAINTIFF-LIKE THE
"IV
COMPOSITION AND
PROPORTION OF
 INGREDIENTS USED On August 5, 1969, the Court of Appeals affirmed the
AND THE decision of the trial court, with the modification that plaintiff-
STRUCTURAL appellee's award of moral damages was reduced to
DESIGNS OF THE P3,000.00. 7
MOULD AND THE TILE The petitioner assigns the following errors supposedly
PRODUCED — THAT committed by the Court of Appeals:
OF THE DEFENDANT "It is now respectfully submitted that the
ARE DIFFERENT. Court of Appeals committed the
following errors involving
questions of law, to wit:

"First error. — When it did not conclude that

"VI the letters patent of the
respondent although entitled on
the cover page as a patent for
improvements, was in truth and
in fact, on the basis of the body
"THE TRIAL
of the same, a patent for the old
COURT ERRED IN NOT
and non-patentable process of
DISMISSING THE
making mosaic pre-cast tiles;
COMPLAINT AND IN
HOLDING THE
DEFENDANT, INSTEAD
OF THE PLAINTIFF,
LIABLE FOR "Second error. — When it did not conclude
DAMAGES, AND from the admitted facts of the
ATTORNEY'S FEES." case, particularly the contents of
the letters patent, Exh. L, and
the pieces of physical evidence
introduced consisting of
samples of the tiles and
catalogues, 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." 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 the
Philippine Patent Office, and on
May 5, 1960, said office issued
in his favor Letters Patent No.
658 for a 'new and useful
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 said 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
possessed the new features and
characteristics covered by
plaintiff's patent; that defendant
Aguas personally, as a building
contractor, purchased from
plaintiff, tiles shaped out of these
moulds at the back of which was
imprinted plaintiff's patent
number (Exhs. "A" to "E"); that
subsequently, through a
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 Exh
"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 wall
ornamentation substantially
identical to each other in size,
easement, lip width and critica
depth of the deepest
depression; and that the only
significant difference between
plaintiff's mould and that
engraved by Aquino for Aguas is
that, whereas plaintiff's mould
turns out tiles 4 x 4 inches in
size, defendant Aguas' mould is
made to 4-1/4 x 4-1/4 inch tile."
9 appellee's tiles ensures the
The patent right of the private respondent expired on May 5,
1977. 10 The errors will be discussed only to determine the
right of said private respondent to damages. prLL
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 Philippine Patent Office to the private
respondent, Conrado G. de Leon, to protect his rights as the
inventor of "an alleged new and useful improvement in the
process of making mosaic pre-cast tiles." 11 Indeed, Section
7, Republic Act No. 165, as amended, provides: "Any
invention of a new and useful machine, manufactured product
or substance, process, or an improvement of the foregoing,
shall be patentable."
The Court of Appeals found that the private respondent has
introduced an 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
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
an optimum height, so that the
engraving thereon would be
deep enough to produce tiles for
sculptured and decorative
purposes, strong enough,
notwithstanding the deep
engravings, to be utilized for
walling purposes. The optimum
thickness of appellee's new tiles
of only 1/8 of an inch at the
deepest easement (Exhs. "D"
and "D-1") is a most 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
composition of cement, sodium
silicate and screened fine sand.
"By using his improved process, plaintiff has
succeeded in producing a new
product — a concrete sculptured
tile which could be utilized for
walling and decorative
purposes. No proof was
adduced to show that any tile of
the same kind had been
produced by others before
appellee. Moreover, it appears
that appellee has been deriving
considerable profit from his
manufacture and sale of such
tiles. This commercial success is
evidence of patentability (Walker
on Patents, Deller's Edition, Vol.
I, p. 237)." 12
The validity 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 the
patent in question. In fact, as we
have already pointed out, the
clear preponderance of
evidence bolsters said
presumption of validity of
appellee's patent. There is no
indication in the records of this
case — and this Court is
unaware of any fact, which
would tend to show that
concrete wall tiles similar to
those produced by appellee had
ever been made by others
before he started 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. 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 stockpiled, handled and packed without any
intolerable incidence of breakages. 14
The petitioner also contends that the improvement of
respondent is not patentable 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 tile-making. 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. De Leon's invention has therefore brought about a
new and useful kind of tile. The old type of tiles were usually
intended for floors although there is nothing to prevent one
from using them for walling purposes. These tiles are neither
artistic nor ornamental. They are heavy and massive.
The respondent's improvement is indeed inventive and goes
beyond the exercise of mechanical skill. He has introduced a
new kind of tile for a new purpose. He has improved the old
method of making tiles and precast articles which were not
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 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 Machuca tiles are heavy and
massive.
There is no similarity between the Pomona Tiles and de
Leon's tiles. The Pomona tiles are made of ceramics. 20 The
process involved in making cement tiles is different from
ceramic tiles. Cement tiles are made with the use of water,
while in ceramics fire is used. As regards the allegation of the
petitioner that the private respondent copied some designs of
Pomona, suffice it to say that what is in issue here is the
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 process and/or improvement being
patentable. Cdpr
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. 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 lower court with the modification
that the respondent is only entitled to P3,000.00 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 attorney's fees and
e) Costs of suit
because:
"An examination of the books of defendant
Aguas made before a protection to inventors, the Court
Commissioner reveals that
during the period that Aguas
was manufacturing and selling
tiles similar to plaintiff's, he
made a gross income of
P3,340.33, which can safely be
considered the amount by which
he enriched himself when he
infringed plaintiff's patent. Under
Sec. 42 of the Patent Law any
patentee whose rights have
been infringed is entitled to
damages which, according to
the circumstances of the case
may be in a sum above the
amount found as actual
damages sustained provided
the award does not exceed three
times the amount of such actual
damages. Considering the
wantonness of the infringement
committed by the defendants
who knew all the time about the
existence of plaintiff's patent, the
Court 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
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
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
infringement committed by
defendants, plaintiff was
understandably very sad; he
worried and 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
announcements of his valid
patent. Necessarily, said acts of
defendants have caused plaintiff
considerable mental suffering,
considering especially, the fact
that he staked everything on his
pre-cast tile business (p. 36,
t.s.n., Id.). The wantonness and
evident bad faith characterizing
defendants' prejudicial acts
against plaintiff justify the
assessment of moral damages
in plaintiff's favor, though we do
not believe the amount of
P50,000.00 awarded by the
lower court is warranted by the
circumstances. We feel that said
amount should be reduced to
P3,000.00 by way of
compensating appellee for his
moral suffering. 'Willful injury to
property may be a legal ground
for awarding moral damages if
the 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
attorney's 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.
Makasiar, Guerrero, Melencio-Herrera and Plana, JJ.,
concur.
Teehankee (Chairman), J., took no part.
ANGELITA MANZANO, petitioner, vs. COURT OF
APPEALS, and MELECIA MADOLARIA, as Assignor to
NEW UNITED FOUNDRY MANUFACTURING
CORPORATION, respondents.
O.F. Santos & P.C. Nolasco for petitioner.
Sioson, San Diego & Associates for private respondents.
SYNOPSIS
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 Madolaria
who subsequently assigned the letters patent to United
Foundry. Petitioner alleged that the gas burner was not
inventive, new or useful; that the specification of the letters
patent did not comply with the requirements of the law; that
respondent Madolaria was not the original inventor nor did
she derive her rights from the original inventor of the utility
model; and that the letters patent was secured by means of
fraud or misrepresentation. Petitioner further alleged that the
utility model had been known by others in the Philippines for
more than one (1) year before her application. The Director
of Patents denied the petition for cancellation 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 convincingly showed that the devices presented
by petitioner was identical with the utility model of the
respondent. Even assuming that the brochures depicted each
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 do
not support the petitioner's contention that the Letters Patent
was obtained by means of fraud and/or misrepresentation.
No evidence whatsoever was presented to show that
Madolaria withheld with intent to deceive material facts which,
if disclosed, would have resulted in the refusal by the
Philippine Patent Office to issue the Letters Patent under
inquiry.
The findings of fact of the Director of Patents 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. aATHES
SYLLABUS
1. COMMERCIAL LAW; LAW ON PATENTS;
PATENTABILITY OF A DISCOVERY; ELEMENT OF
NOVELTY IS ESSENTIAL. — 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. 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 reasonable
doubt. 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 described within the country.
2. REMEDIAL LAW; EVIDENCE; VALIDITY OF PATENTS;
FINDINGS OF THE PHILIPPINE PATENT OFFICE,
RESPECTED. — 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
respondent's 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. The alleged failure of
the Director of Patents and the Court of Appeals to accord
evidentiary weight to the testimonies of the witnesses of
petitioner showing anticipation is not a justification to grant
the petition. Pursuant to the requirement of clear and
convincing evidence to overthrow the presumption of validity
of a patent, it has been held that oral testimony to show
anticipation is open to suspicion and if uncorroborated by
cogent evidence, as what occurred in this case, it may be held
insufficient. The question on priority of invention is one of fact.
Novelty and utility are likewise questions of fact. The validity
of patent is decided on the basis of factual inquiries. Whether
evidence presented comes within the scope of prior art is a
factual issue to be resolved by the Patent Office. There is
question of fact when the doubt or difference arises as to the
truth or falsehood of alleged facts or when the query
necessarily invites calibration of the whole evidence
considering mainly the 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. 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 court, its findings
of fact being conclusive and not reviewable by this Court.
SEcITC
DECISION
BELLOSILLO, J p:
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. This is a matter which
is properly within the competence of the Patent Office, the
official action of which has the presumption of correctness
and may not be interfered with in the absence of new
evidence carrying thorough conviction that the Office has
erred. Since 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 favor of the Patent
Office. 1
Petitioner Angelita Manzano filed with the Philippine Patent
Office on 19 February 1982 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 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) 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. cdpr
Petitioner presented the following documents which she
correspondingly marked as exhibits: (a) affidavit of petitioner
alleging the existence of prior art, marked Exh. "A;" (b) a
brochure distributed by Manila Gas Corporation disclosing a
pictorial 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
Standard Eastern, Inc., of the Philippines showing a picture
of another similar burner with top elevation view and another
perspective view of the same burner, marked Exh. "E."
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 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 claimed that this
"Ransome" burner (Exh. "L") had the same configuration and
mechanism as that of the model which was patented in favor
of private respondent Melecia Madolaria. Also presented by
petitioner was a burner cup of an imported "Ransome" burner
marked Exh "M" which was allegedly existing even before the
patent application of private respondent.
Petitioner presented two (2) other witnesses, namely, her
husband Ong Bun Tua and 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.
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 in the foundry, machine and buffing section; that
in his early years with the company, UNITED FOUNDRY was
engaged in the manufacture of 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 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 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. 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 the then applicant Melecia
Madolaria withheld with intent to deceive material facts which,
if disclosed, would have resulted in the refusal by the
Philippine Patent Office to issue the Letters Patent under
inquiry.
Petitioner elevated the decision of the Director of Patents to
the Court of Appeals 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 of private respondent covered
by Letters Patent No. UM-4609 and the previously known
model of Esso Standard Eastern, Inc., and Manila Gas
Corporation, making such imaginary differences grounded
entirely on speculation, surmises and conjectures; (b) in
rendering judgment based on misapprehension of facts; (c)
in relying mainly on the testimony of private respondent's sole
witness Rolando Madolaria; and, (d) in not cancelling Letters
Patent No. UM-4609 in the name of private respondent.
Petitioner submits that the differences cited by the Court of
Appeals between the 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 Esso Standard Eastern, Inc.,
presented by petitioner, the cup-shaped burner mouth and
threaded hole on the side are shown to be similar to the utility
model of private respondent. The exhibits also show a
detachable burner mouth having a plurality of 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 Finally, it is argued that the testimony of private respondent's
tube of private respondent's model of the gas burner. lone witness Rolando Madolaria should not have been given
Petitioner argues that the actual demonstration made during weight by the Patent Office and the Court of Appeals because
the hearing disclosed the similarities in form, operation and it contained mere after-thoughts and pretensions.
mechanism and parts between the utility model of private We cannot sustain petitioner. Section 7 of RA No. 165, as
respondent and those depicted in the brochures. The findings amended, which is the law on patents, expressly provides —
of the Patent Office and the Court of Appeals that the Sec. 7. Inventions patentable. — Any
brochures of Manila Gas Corporation and Esso Standard invention of a new and useful
Eastern, Inc., are undated cannot overcome the fact of their machine, manufactured product
circulation before private respondent filed her application for or substance, process or an
utility model patent. Petitioner thus asks this Court to take improvement of any of the
judicial notice of the fact that Esso Standard Eastern, Inc., foregoing, shall be patentable.
disappeared before 1979 and reappeared only during the
Martial Law years as 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 Further, Sec. 55 of the same law provides —
because telephones in Metro Manila started to have six (6) Sec. 55. Design patents and patents for
numbers only after that year. utility models. — (a) Any new,
Petitioner further contends that the utility model of private original and ornamental design
respondent is absolutely similar to the LPG burner being sold for an article of manufacture and
by petitioner in 1975 and 1976, and also to the "Ransome" (b) any new model of
burner depicted in the old brochures of Manila Gas implements or tools or of any
Corporation and Esso Standard Eastern, Inc., fabricated by industrial product or of part of
Ransome Torch and Burner Company of Oakland, California, the same, which does not
USA, especially when considered through actual physical possess the quality of invention,
examination, assembly and disassembly of the models of but which is of practical utility by
petitioner and private respondent. Petitioner faults the Court reason of its form, configuration,
of Appeals for disregarding the testimonies of Ong Bun Tua construction or composition,
and Fidel Francisco for their failure to produce documents on may be protected by the author
the alleged importation by Manila Gas Corporation of thereof, the former by a patent
"Ransome" burners in 1965 which had the same for a design and the latter by a
configuration, form and mechanism as that of the private patent for a utility model, in the
respondent's patented model. same manner and subject to the
same provisions and
 requirements as relate to As found by the Director of Patents, the standard of evidence
patents for inventions insofar as sufficient to overcome the presumption of legality of the
they are applicable except as issuance of UM-4609 to respondent Madolaria was not
otherwise herein provided. legally met by petitioner in her action for the cancellation of
the patent. Thus the Director of Patents explained his
reasons for the denial of the petition to cancel private
respondent's patent —
The element of novelty is an essential requisite of the Scrutiny of Exhs. "D" and "E" readily reveals
patentability of an invention or discovery. If a device or that the utility model (LPG
process has been known or used by others prior to its Burner) is not anticipated. Not
invention or discovery by the applicant, an application for a one of the various pictorial
patent therefor should be denied; and if the application has representations of burners
been granted, the court, in a judicial proceeding in which the clearly and convincingly show
validity of the patent is drawn in question, will hold it void and that the device presented
ineffective. 2 It has been repeatedly held that an invention therein is identical or
must possess the essential elements of novelty, originality substantially identical in
and precedence, and for the patentee to be entitled to the construction with the aforesaid
protection the invention must be new to the world. 3 utility model. It is relevant and
In issuing Letters Patent No. UM-4609 to Melecia Madolaria material to state that in
for an "LPG Burner" on 22 July 1981, the Philippine Patent determining whether novelty or
Office found her invention novel and patentable. The newness is negatived by any
issuance of such patent creates a presumption which yields prior art, only one item of the
only to clear and cogent evidence that the patentee was the prior art may be used at a time.
original and first inventor. The burden of proving want of For anticipation to occur, the
novelty is on him who avers it and the burden is a heavy one prior art must show that each
which is met only by clear and satisfactory proof which element is found either
overcomes every reasonable doubt. 4 Hence, a utility model expressly or described or under
shall not be considered "new" if before the application for a principles of inherency in a
patent it has been publicly known or publicly used in this single prior art reference or that
country or has been described in a printed publication or the claimed invention was
publications circulated within the country, or if it is probably known in a single prior
substantially similar to any other utility model so known, used art device or practice. (Kalman
or described within the country. 5 v. Kimberly Clark, 218 USPQ
781, 789)
Even assuming gratia arguendi that the
aforesaid brochures do depict
clearly on all fours each and
every element of the patented
gas burner device so that the
prior art and the said patented
device become identical,
although in truth they are not,
they cannot serve as
anticipatory bars for the 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 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
word "Ransome" which is the
burner referred to as the product
being sold by the Petitioner. This
is not the way to prove that Exh.
"L" anticipates Letters Patent
No. UM-4609 through Exhs. "C"
and "D." Another factor working
against the Petitioner's claims is
that an examination of Exh. "L"
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
cancellation proceeding.
At this juncture, it is worthwhile to point out
that petitioner also presented
Exh. "M" which is the alleged
burner cup of an imported
"Ransome" burner. Again, this
Office finds the same as
unreliable evidence to show
anticipation. It observed that
there is no date indicated therein
as to when it was manufactured
and/or imported before the filing
of the application for issuance of
patent of the subject utility
model. What is more, some
component parts of Exh. "M" are
missing, as only the cup was
presented so 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
allegedly of Manila Gas and of
Esso Gasul marked Exhs. "E"
and "F" and on the alleged fact
that Manila Gas Corporation
was importing from the United
States "Ransome" burners. But
the same could not be given
credence since he himself
admitted during cross-
examination that he has never
been connected with Manila Gas
Corporation. He could not even
present any importation papers
relating to the alleged imported
ransome burners. 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
respondent's model of gas burner as a discovery. There is a
presumption that the Office has correctly determined the
patentability of the model 8 and such action must not be
interfered with in the absence of competent evidence to the circumstances, their relation to each other and to the whole
contrary. and the probabilities of the situation. 11 cdphil
The rule is settled that the findings of fact of the Director of Time and again we have held that it is not the function of the
Patents, especially when affirmed by the Court of Appeals, Supreme Court to analyze or weigh all over again the
are conclusive on this Court when supported by substantial evidence and credibility of witnesses presented before the
evidence. Petitioner has failed to show compelling grounds lower tribunal or office. The Supreme Court is not a trier of
for a reversal of the findings and conclusions of the Patent facts. Its jurisdiction is limited to reviewing and revising errors
Office and the Court of Appeals. of law imputed to the lower court, its findings of fact being
The alleged failure of the Director of Patents and the Court of conclusive and not reviewable by this Court.
Appeals to accord evidentiary weight to the testimonies of the WHEREFORE, the Petition is DENIED. The Decision of the
witnesses of petitioner showing anticipation is not a Court of Appeals affirming that of the Philippine Patent Office
justification to grant the petition. Pursuant to the requirement is AFFIRMED. Costs against petitioner.
of clear and convincing evidence to overthrow the SO ORDERED.
presumption of validity of a patent, it has been held that oral Vitug, Kapunan and Hermosisima Jr., JJ ., concur.
testimony to show anticipation is open to suspicion and if
uncorroborated by cogent evidence, as what occurred in this
case, it may be held insufficient. 9
Finally, petitioner would want this Court to review all over
again the evidence she 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 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 utility are likewise questions of fact.
The validity of patent is decided on the basis of factual
inquiries. Whether evidence presented comes within the
scope of prior art is a factual issue to be resolved by the
Patent Office. 10 There is question of fact when the doubt or
difference arises as to the truth or falsehood of alleged facts
or when the query necessarily invites calibration of the whole
evidence considering mainly the credibility of witnesses,
existence and relevance of specific surrounding