PATENT CASES FOR IPL
to prove the actual amount of damages with a reasonable degree of
1. Pearl and Dean
2. Olano vs Lim
3. G.R. No. 126627. August 14, 2003.*
SMITH KLINE BECKMAN CORPORATION, petitioner, vs. THE
HONORABLE COURT OF APPEALS and TRYCO PHARMA
CORPORATION, respondents.
Intellectual Property Law; Appeals; Only questions of law may
be raised in a petition for review on certiorari.—As has repeatedly
been held, only questions of law may be raised in a petition for
review on certiorari before this Court. Unless the factual findings
of the appellate court are mistaken, absurd, speculative,
conjectural, conflicting, tainted with grave abuse of discretion, or
contrary to the findings culled by the court of origin, this Court
does not review them.
Same; Patents; When the language of its claims is clear and
distinct, the patentee is bound thereby and may not claim anything
beyond them.— When the language of its claims is clear and
distinct, the patentee is bound thereby and may not claim anything
beyond them. And so are the courts bound which may not add to or
detract from the claims matters not expressed or necessarily
implied, nor may they enlarge the patent beyond the scope of that
which the inventor claimed and the patent office allowed, even if
the patentee may have been entitled to something more than the
words it had chosen would include.
Same; Same; Infringement; Doctrine of
Equivalents; Definition.—The doctrine of equivalentsprovides that
an infringement also takes place when a device appropriates a
prior invention by incorporating its innovative concept and,
although with some modification and change, performs
substantially the same function in substantially the same way to
achieve substantially the same result.
Same; Same; Same; Same; The Doctrine of Equivalents thus
requires satisfaction of the function-means-and-result test.—
The doctrine of equivalentsthus requires satisfaction of the
function-means-and-result test, the patentee having the burden to
show that all three components of such equivalency test are met.
Damages; Actual Damages; Unearned Profits; It is necessary
certainty based on competent proof.—While indemnification for
actual or compensatory damages covers not only the loss suffered
(damnum emergens) but also profits which the obligee failed to
obtain (lucrum cessans or ganacias frustradas), it is necessary to
prove the actual amount of damages with a
_______________
*THIRD DIVISION.
34
34 SUPREME COURT REPORTS ANNOTATED
Smith Kline Beckman Corporation vs. Court of Appeals
reasonable degree of certainty based on competent proof and
on the best evidence obtainable by the injured party.
Same; Attorney’s Fees; Attorney’s fees cannot be awarded
where there is no sufficient showing of bad faith.—Even if a
claimant is compelled to litigate with third persons or to incur
expenses to protect its rights, still attorney’s fees may not be
awarded where no sufficient showing of bad faith could be reflected
in a party’s persistence in a case other than an erroneous
conviction of the righteousness of his cause.
PETITION for review on certiorari of a decision of the Court of
Appeals.
The facts are stated in the opinion of the Court.
Sapalo & Velez for petitioner.
Eduardo J. Marino, Jr. for private respondent.
CARPIO-MORALES, J.:
Smith Kline Beckman Corporation (petitioner), a corporation
existing by virtue of the laws of the state of Pennsylvania, United
States of America (U.S.) and licensed to do business in the
Philippines, filed on October 8, 1976, as assignee, before the
Philippine Patent Office (now Bureau of Patents, Trademarks and
Technology Transfer) an application for patent over an invention
entitled “Methods and Compositions for Producing Biphasic
Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole
Carbamate.” The application bore Serial No. 18989.
On September 24, 1981, Letters Patent No. 145611 for the
aforesaid invention was issued to petitioner for a term of seventeen
(17) years.
The letters patent provides in its claims2 that the patented
invention consisted of a new compound named methyl 5 propylthio-
2-benzimidazole carbamate and the methods or compositions
utilizing the compound as an active ingredient in fighting
infections caused by gastrointestinal parasites and lungworms in
animals such as swine, sheep, cattle, goats, horses, and even pet
animals.
_______________
1 Records, Exhibit “A” at pp. 320-342.
2 Id., at pp. 340-341.
35
VOL. 409, AUGUST 14, 2003 35
Smith Kline Beckman Corporation vs. Court of Appeals
Tryco Pharma Corporation (private respondent) is a domestic
corporation that manufactures, distributes and sells veterinary
products including Impregon, a drug that has Albendazole for its
active ingredient and is claimed to be effective against
gastrointestinal roundworms, lungworms, tapeworms and fluke
infestation in carabaos, cattle and goats.
Petitioner sued private respondent for infringement of patent
and unfair competition before the Caloocan City Regional Trial
Court (RTC).3 It claimed that its patent covers or includes the
substance Albendazole such that private respondent, by
manufacturing, selling, using, and causing to be sold and used the
drug Impregon without its authorization, infringed Claims 2, 3, 4,
7, 8 and 9 of Letters Patent No. 145614 as well as committed unfair
competition under Article 189, paragraph 1 of the Revised Penal
Code and Section 29 of Republic Act No. 166 (The Trademark Law)
for advertising and selling as its own the drug Impregon although
the same contained petitioner’s patented Albendazole.5
On motion of petitioner, Branch 125 of the Caloocan RTC issued
a temporary restraining order against private respondent
enjoining it from committing acts of patent infringement and
unfair competition.6 A writ of preliminary injunction was
subsequently issued.7
Private respondent in its Answer8 averred that Letters Patent
No. 14561 does not cover the substance Albendazole for nowhere in
it does that word appear; that even if the patent were to include
Albendazole, such substance is unpatentable; that the Bureau of
Food and Drugs allowed it to manufacture and market Impregon
with Albendazole as its known ingredient; that there is no proof
that it passed off in any way its veterinary products as those of
petitioner; that Letters Patent No. 14561 is null and void, the
application for the issuance thereof having been filed beyond the
one year period from the filing of an application abroad for the
same invention covered thereby, in violation of Section 15 of
Republic Act No. 165 (The Patent Law); and that petitioner is not
the registered patent holder.
_______________
3 Records at p. 1.
4 Id., at pp. 2-3.
5 Id., at p. 4.
6 Id., at p. 34.
7 Id., at p. 250.
8 Records at pp. 35-40.
36
36 SUPREME COURT REPORTS ANNOTATED
Smith Kline Beckman Corporation vs. Court of Appeals
Private respondent lodged a Counterclaim against petitioner for
such amount of actual damages as may be proven; P1,000,000.00
in moral damages; P300,000.00 in exemplary damages; and
P150,000.00 in attorney’s fees.
 Finding for private respondent, the trial court rendered a
Decision dated July 23, 1991,9 the dispositive portion of which
reads:
“WHEREFORE, in view of the foregoing, plaintiffs complaint
should be, as it is hereby, DISMISSED. The Writ of injunction
issued in connection with the case is hereby ordered DISSOLVED.
The Letters Patent No, 14561 issued by the then Philippine
Patents Office is hereby declared null and void for being in violation
of Sections 7, 9 and 15 of the Patents Law.
Pursuant to Sec. 46 of the Patents Law, the Director of Bureau
of Patents is hereby directed to cancel Letters Patent No.
14561 issued to the plaintiff and to publish such cancellation in the
Official Gazette.
Defendant Tryco Pharmaceutical Corporation is hereby
awarded P330,000.00 actual damages and P100,000.00 attorney’s
fees as prayed for in its counterclaim but said amount awarded to
defendant is subject to the lien on correct payment of filing fees.
SO ORDERED.” (Italics supplied)
On appeal, the Court of Appeals, by Decision of April 21,
1995,10 upheld the trial court’s finding that private respondent was
not liable for any infringement of the patent of petitioner in light
of the latter’s failure to show that Albendazole is the same as the
compound subject of Letters Patent No. 14561. Noting petitioner’s
admission of the issuance by the U.S. of a patent for Albendazole
in the name of Smith Kline and French Laboratories which was
petitioner’s former corporate name, the appellate court considered
the U.S. patent as implying that Albendazole is different from
methyl 5 propylthio-2-benzimidazole carbamate. It likewise found
that private respondent was not guilty of deceiving the public by
misrepresenting that Impregon is its product.
The appellate court, however, declared that Letters Patent No.
14561 was not void as it sustained petitioner’s explanation that
Patent Application Serial No. 18989 which was filed on October 8,
1976 was a divisional application of Patent Application Serial No.
_______________
9 Records at pp. 454-462.
10 Court of Appeals Rollo at pp. 97-107.
37
VOL. 409, AUGUST 14, 2003 37
Smith Kline Beckman Corporation vs. Court of Appeals
17280 filed on June 17, 1975 with the Philippine Patent Office, well
within one year from petitioner’s filing on June 19, 1974 of its
Foreign Application Priority Data No. 480,646 in the U.S. covering
the same compound subject of Patent Application Serial No. 17280.
Applying Section 17 of the Patent Law, the Court of Appeals
thus ruled that Patent Application Serial No. 18989 was deemed
filed on June 17, 1995 or still within one year from the filing of a
patent application abroad in compliance with the one-year rule
under Section 15 of the Patent Law. And it rejected the submission
that the compound in Letters Patent No. 14561 was not patentable,
citing the jurisprudentially established presumption that the
Patent Office’s determination of patentability is correct. Finally, it
ruled that petitioner established itself to be the one and the same
assignee of the patent notwithstanding changes in its corporate
name. Thus the appellate court disposed:
WHEREFORE, the judgment appealed from is AFFIRMED with
the MODIFICATION that the orders for the nullification of Letters
Patent No. 14561 and for its cancellation are deleted therefrom.
SO ORDERED.
Petitioner’s motion for reconsideration of the Court of Appeals’
decision having been denied11the present petition for review on
certiorari12 was filed, assigning as errors the following:
1. I.THE COURT OF APPEALS GRAVELY ERRED IN NOT
FINDING THAT ALBENDAZOLE, THE ACTIVE
INGREDIENT IN TRYCO’S “IMPREGON” DRUG, IS
INCLUDED IN PETITIONER’S LETTERS PATENT NO.
14561, AND THAT CONSEQUENTLY TRYCO IS
ANSWERABLE FOR PATENT INFRINGEMENT.
2. II.THE COURT OF APPEALS GRAVELY ERRED IN
AWARDING TO PRIVATE RESPONDENT TRYCO
PHARMA CORPORATION P330,000.00 ACTUAL
DAMAGES AND P100,000.00 ATTORNEY’S FEES.
Petitioner argues that under the doctrine of equivalents for
determining patent infringement, Albendazole, the active
ingredient it alleges was appropriated by private respondent for its
drug Impregon, is substantially the same as methyl 5 propylthio-
2-benzimidazole carbamate covered by its patent since both of
them
_______________
11 Supreme Court Rollo at pp. 47-51.
12 Id, at pp. 8-33.
38
38 SUPREME COURT REPORTS ANNOTATED
Smith Kline Beckman Corporation vs. Court of Appeals
are meant to combat worm or parasite infestation in animals. It
cites the “unrebutted” testimony of its witness Dr. Godofredo C.
Orinion (Dr. Orinion) that the chemical formula in Letters Patent
No. 14561 refers to the compound Albendazole. Petitioner adds
that the two substances substantially do the same function in
substantially the same way to achieve the same results, thereby
making them truly identical. Petitioner thus submits that the
appellate court should have gone beyond the literal wordings used
in Letters Patent No. 14561, beyond merely applying the literal
infringement test, for in spite of the fact that the word Albendazole
does not appear in petitioner’s letters patent, it has ably shown by
evidence its sameness with methyl 5 propylthio-2-benzimidazole
carbamate.
Petitioner likewise points out that its application with the
Philippine Patent Office on account of which it was granted Letters
Patent No. 14561 was merely a divisional application of a prior
application in the U. S. which granted a patent for Albendazole.
Hence, petitioner concludes that both methyl 5 propylthio-2-
benzimidazole carbamate and the U.S.-patented Albendazole are
dependent on each other and mutually contribute to produce a
single result, thereby making Albendazole as much a part of
Letters Patent No. 14561 as the other substance is.
Petitioner concedes in its Sur-Rejoinder13 that although methyl
5 propylthio-2-benzimidazole carbamate is not identical with
Albendazole, the former is an improvement or improved version of
the latter thereby making both substances still substantially the
same.
With respect to the award of actual damages in favor of private
respondent in the amount of P330,000.00 representing lost profits,
petitioner assails the same as highly speculative and conjectural,
hence, without basis. It assails too the award of P100,000.00 in
attorney’s fees as not falling under any of the instances
enumerated by law where recovery of attorney’s fees is allowed.
In its Comment,14 private respondent contends that application
of the doctrine of equivalentswould not alter the outcome of the
case, Albendazole and methyl 5 propylthio-2-benzimidazole
carbamate being two different compounds with different chemical
and physical properties. It stresses that the existence of a separate
U.S.
_______________
13 Supreme Court Rollo at pp. 119-122.
14 Supreme Court Rollo at pp. 66-84.
39
VOL. 409, AUGUST 14, 2003 39
Smith Kline Beckman Corporation vs. Court of Appeals
patent for Albendazole indicates that the same and the compound
in Letters Patent No. 14561 are different from each other; and that
since it was on account of a divisional application that the patent
for methyl 5 propylthio-2-benzimidazole carbamate was issued,
then, by definition of a divisional application, such a compound is
just one of several independent inventions alongside Albendazole
under petitioner’s original patent application.
As has repeatedly been held, only questions of law may be
raised in a petition for review on certiorari before this Court.
Unless the factual findings of the appellate court are mistaken,
absurd, speculative, conjectural, conflicting, tainted with grave
abuse of discretion, or contrary to the findings culled by the court
of origin,15 this Court does not review them.
From an examination of the evidence on record, this Court finds
nothing infirm in the appellate court’s conclusions with respect to
the principal issue of whether private respondent committed
patent infringement to the prejudice of petitioner.
The burden of proof to substantiate a charge for patent
infringement rests on the plaintiff.16 In the case at bar, petitioner’s
evidence consists primarily of its Letters Patent No. 14561, and the
testimony of Dr. Orinion, its general manager in the Philippines
for its Animal Health Products Division, by which it sought to show
that its patent for the compound methyl 5 propylthio-2-
benzimidazole carbamate also covers the substance Albendazole.
From a reading of the 9 claims of Letters Patent No. 14561 in
relation to the other portions thereof, no mention is made of the
compound Albendazole. All that the claims disclose are: the
covered invention, that is, the compound methyl 5 propylthio-2-
benzimidazole carbamate; the compound’s being anthelmintic but
nontoxic for animals or its ability to destroy parasites without
harming the host animals; and the patented methods, compositions
or preparations involving the compound to maximize its efficacy
against certain kinds of parasites infecting specified animals.
When the language of its claims is clear and distinct, the
patentee is bound thereby and may not claim anything beyond
them.17 And so are the courts bound which may not add to or
detract from
_______________
15 Ramirez v. Court of Appeals, 294 SCRA 512 [1998].
16 Vargas v. F. M. Yaptico & Co., 40 Phil. 195 [1919].
17 69 C.J.S. 684.
40
40 SUPREME COURT REPORTS ANNOTATED
Smith Kline Beckman Corporation vs. Court of Appeals
the claims matters not expressed or necessarily implied, nor may
they enlarge the patent beyond the scope of that which the inventor
claimed and the patent office allowed, even if the patentee may
have been entitled to something more than the words it had chosen
would include.18
It bears stressing that the mere absence of the word
Albendazole in Letters Patent No. 14561 is not determinative of
Albendazole’s non-inclusion in the claims of the patent. While
Albendazole is admittedly a chemical compound that exists by a
name different from that covered in petitioner’s letters patent, the
language of Letter Patent No. 14561 fails to yield anything at all
regarding Albendazole. And no extrinsic evidence had been
adduced to prove that Albendazole inheres in petitioner’s patent in
spite of its omission therefrom or that the meaning of the claims of
the patent embraces the same.
While petitioner concedes that the mere literal wordings of its
patent cannot establish private respondent’s infringement, it urges
this Court to apply the doctrine of equivalents.
The doctrine of equivalents provides that an infringement also
takes place when a device appropriates a prior invention by
incorporating its innovative concept and, although with some
modification and change, performs substantially the same function
in substantially the same way to achieve substantially the same
result.19 Yet again, a scrutiny of petitioner’s evidence fails to
convince this Court of the substantial sameness of petitioner’s
patented compound and Albendazole. While both compounds have
the effect of neutralizing parasites in animals, identity of result
does not amount to infringement of patent unless Albendazole
operates in substantially the same way or by substantially the same
means as the patented compound, even though it performs the same
function andachieves the same result.20 In other words,
the principle or mode of operation must be the same or substantially
the same.21
_______________
18 69 C.J.S. 684-685.
19 Godines v. Court of Appeals, 226 SCRA 338 [1993].
20 60 Am Jur 2d 631-632.
21 69 C.J.S. 860.
41
VOL. 409, AUGUST 14, 2003 41
Smith Kline Beckman Corporation vs. Court of Appeals
The doctrine of equivalents thus requires satisfaction of the
function-means-and-result test, the patentee having the burden to
show that all three components of such equivalency test are met.22
As stated early on, petitioner’s evidence fails to explain how
Albendazole is in every essential detail identical to methyl 5
propylthio-2-benzimidazole carbamate. Apart from the fact that
Albendazole is an anthelmintic agent like methyl 5 propylthio-2-
benzimidazole carbamate, nothing more is asserted and
accordingly substantiated regarding the method or means by
which Albendazole weeds out parasites in animals, thus giving no
information on whether that method is substantially the same as
the manner by which petitioner’s compound works. The testimony
of Dr. Orinion lends no support to petitioner’s cause, he not having
been presented or qualified as an expert witness who has the
knowledge or expertise on the matter of chemical compounds.
As for the concept of divisional applications proffered by
petitioner, it comes into play when two or more inventions are
claimed in a single application but are of such a nature that a
single patent may not be issued for them.23 The applicant thus is
required “to divide,” that is, to limit the claims to whichever
invention he may elect, whereas those inventions not elected may
be made the subject of separate applications which are called
“divisional applications.”24 What this only means is that
petitioner’s methyl 5 propylthio-2-benzimidazole carbamate is an
invention distinct from the other inventions claimed in the original
application divided out, Albendazole being one of those other
inventions. Otherwise, methyl 5 propylthio-2-benzimidazole
carbamate would not have been the subject of a divisional
application if a single patent could have been issued for it as well
as Albendazole.
The foregoing discussions notwithstanding, this Court does not
sustain the award of actual damages and attorney’s fees in favor of
private respondent. The claimed actual damages of P330,000.00
representing lost profits or revenues incurred by private
respondent as a result of the issuance of the injunction against it,
computed at the rate of 30% of its alleged P100,000.00 monthly
gross sales for eleven months, were supported by the testimonies
of pri-
_______________
22 Malta v. Schulmerich Carillons, Inc., 13 U.S.P.Q. 2d 1900
[1989].
23 69 C.J.S. 455.
24 Ibid.
42
42 SUPREME COURT REPORTS ANNOTATED
Smith Kline Beckman Corporation vs. Court of Appeals
vate respondent’s President25 and Executive Vice-President that
the average monthly sale of Impregon was P100,000.00 and that
sales plummeted to zero after the issuance of the
injunction.26 While indemnification for actual or compensatory
damages covers not only the loss suffered (damnum emergens) but
also profits which the obligee failed to obtain (lucrum
cessans or ganacias frustradas), it is necessary to prove the actual
amount of damages with a reasonable degree of certainty based on
competent proof and on the best evidence obtainable by the injured
party.27 The testimonies of private respondent’s officers are not the
competent proof or best evidence obtainable to establish its right
to actual or compensatory damages for such damages also require
presentation of documentary evidence to substantiate a claim
therefor.28
In the same vein, this Court does not sustain the grant by the
appellate court of attorney’s fees to private respondent anchored
on Article 2208 (2) of the Civil Code, private respondent having
been allegedly forced to litigate as a result of petitioner’s suit. Even
if a claimant is compelled to litigate with third persons or to incur
expenses to protect its rights, still attorney’s fees may not be
awarded where no sufficient showing of bad faith could be reflected
in a party’s persistence in a case other than an erroneous
conviction of the righteousness of his cause. 29 There exists no
evidence on record indicating that petitioner was moved by malice
in suing private respondent.
This Court, however, grants private respondent temperate or
moderate damages in the amount of P20,000.00 which it finds
reasonable under the circumstances, it having suffered some
pecuniary loss the amount of which cannot, from the nature of the
case, be established with certainty.30
WHEREFORE, the assailed decision of the Court of Appeals is
hereby AFFIRMED with MODIFICATION. The award of actual or
_______________
25 TSN, March 30, 1990, pp. 15-16.
26 TSN, May 11, 1990, pp. 3-5.
27 Integrated Packaging Corporation v. Court of Appeals,333
SCRA 170 [2000].
28 Producers Bank of the Philippines v. Court of Appeals,365
SCRA 326 [2001].
29 ABS-CBN Broadcasting Corporation v. Court of Appeals,301
SCRA 572 [1999].
30 Civil Code, art. 2224.
43
VOL. 409, AUGUST 14, 2003 43
Lao vs. Standard Insurance Co., Inc.
compensatory damages and attorney’s fees to private respondent,
Tryco Pharma Corporation, is DELETED; instead, it is hereby
awarded the amount of P20,000.00 as temperate or moderate
damages.
SO ORDERED.
Puno (Chairman), Panganiban, Sandoval-
Gutierrez and Corona, JJ., concur.
Judgment affirmed with modification.
Note.—Where an unreasonable period of time had lapsed prior
to the filing of a petition for revival of the patent application due to
the negligence of the applicant’s counsel, such inaction would
result in the forfeiture of the right to revive the patent application.
(Schuartz vs. Court of Appeals, 335 SCRA 493 [2000])
4. ANGELITA MANZANO, petitioner, vs. COURT OF APPEALS,
and MELECIA MADOLARIA, as Assignor to NEW UNITED
FOUNDRY MANUFACTURING CORPORATION, respondents.
Patents; 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.—
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,
_______________
* FIRST DIVISION.
689
VOL. 278, SEPTEMBER 5, 1997 689
Manzano vs. Court of Appeals
and for the patentee to be entitled to the protection the
invention must be new to the world.
Same; Evidence; Burden of Proof; The burden of proving want
of novelty is on him who avers it and the burden is a heavy one
which is met only by clear and satisfactory proof which overcomes
every reasonable doubt.—In issuing Letters Patent No. UM-4609 to
Melecia Madolaria for an “LPG Burner” on 22 July 1981, the
Philippine Patent Office found her invention novel and patentable.
The issuance of such patent creates a presumption which yields
only to clear and cogent evidence that the patentee was the original
and first inventor. The burden of proving want of novelty is on him
who avers it and the burden is a heavy one which is met only by
clear and satisfactory proof which overcomes every reasonable
doubt. 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.
 Same; Same; Philippine Patent Office; There is a presumption
that the Philippine Patent 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
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.
Same; Same; Same; Administrative Law; The findings of fact
of the Director of Patents, especially when affirmed by the Court of
Appeals, are conclusive on the Supreme Court when supported by
substantial evidence.—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
690
690 SUPREME COURT REPORTS ANNOTATED
Manzano vs. Court of Appeals
reversal of the findings and conclusions of the Patent Office
and the Court of Appeals.
Same; Same; 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, it may
be held insufficient.—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.
Evidence; Questions of Fact; Words and Phrases; There is a
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.—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. 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.
Same; Supreme Court; 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.—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.
691
VOL. 278, SEPTEMBER 5, 1997 691
Manzano vs. Court of Appeals
PETITION for review on certiorari of a decision of the Court of
Appeals.
The facts are stated in the opinion of the Court.
O.F. Santos and P.C. Nolasco for petitioner.
 Sioson, San Diego & Associates for private respondent.
BELLOSILLO, J.:
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
__________________
1 60 AmJur 2d 462.
692
692 SUPREME COURT REPORTS ANNOTATED
Manzano vs. Court of Appeals
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.
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
693
VOL. 278, SEPTEMBER 5, 1997 693
 Manzano vs. Court of Appeals
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
694
694 SUPREME COURT REPORTS ANNOTATED
Manzano vs. Court of Appeals
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,
 695
VOL. 278, SEPTEMBER 5, 1997
Manzano vs. Court of Appeals
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 tube of private respondent’s model of the gas burner.
Petitioner argues that the actual demonstration made during
the hearing disclosed the similarities in form, operation and
mechanism and parts between the utility model of private
respondent and those depicted in the brochures. The findings of the
Patent Office and the Court of Appeals that the brochures of
Manila Gas Corporation and Esso Standard Eastern, Inc., are
undated cannot overcome the fact of their circulation before private
respondent filed her application for utility model patent. Petitioner
thus asks this Court to take judicial notice of the fact that Esso
Standard Eastern, Inc., 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
695 a five (5) numbered telephone number existing before 1975 because
696
696 SUPREME COURT REPORTS ANNOTATED
Manzano vs. Court of Appeals
telephones in Metro Manila started to have six (6) numbers only
after that year.
Petitioner further contends that the utility model of private
respondent is absolutely similar to the LPG burner being sold by
petitioner in 1975 and 1976, and also to the “Ransome” burner
depicted in the old brochures of Manila Gas Corporation and Esso
Standard Eastern, Inc., fabricated by Ransome Torch and Burner
Company of Oakland, California, USA, especially when considered
through actual physical examination, assembly and disassembly of
the models of petitioner and private respondent. Petitioner faults
the Court of Appeals for disregarding the testimonies of Ong Bun
Tua and Fidel Francisco for their failure to produce documents on
the alleged importation by Manila Gas Corporation of “Ransome”
burners in 1965 which had the same configuration, form and
mechanism as that of the private respondent’s patented model.
Finally, it is argued that the testimony of private respondent’s
lone witness Rolando Madolaria should not have been given weight
by the Patent Office and the Court of Appeals because it contained
mere after-thoughts and pretensions.
We cannot sustain petitioner. Section 7 of RA No. 165, as
amended, which is the law on patents, expressly provides—
Sec. 7. Inventions patentable.—Any invention of a new and useful
machine, manufactured product or substance, process or an
improvement of any of the foregoing, shall be patentable.
Further, Sec. 55 of the same law provides—
Sec. 55. Design patents and patents for utility models.—(a) Any
new, original and ornamental design for an article of manufacture
and (b) any new model of implements or tools or of any industrial
product or of part of the same, which does not possess the quality
of invention, but which is of practical utility by reason of its form,
configuration, construction or composition, may be protected by the
author thereof, the former by a patent for a design and the latter
by a patent for a utility model, in the same manner and subject to
the same provisions and requirements as relate to patents for
inventions insofar as they are applicable except as otherwise
herein provided.
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VOL. 278, SEPTEMBER 5, 1997
Manzano vs. Court of Appeals
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.2 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.3
In issuing Letters Patent No. UM-4609 to Melecia Madolaria
for an “LPG Burner” on 22 July 1981, the Philippine Patent Office
found her invention novel and patentable. The issuance of such
patent creates a presumption which yields only to clear and cogent
evidence that the patentee was the original and first inventor. The
burden of proving want of novelty is on him who avers it and the
burden is a heavy one which is met only by clear and satisfactory
proof which overcomes every reasonable doubt. 4 Hence, a utility
model shall not be considered “new” if before the application for a
patent it has been publicly known or publicly used in this country
or has been described in a printed publication or publications
circulated within the country, or if it is substantially similar to any
other utility model so known, used or described within the
country.5
As found by the Director of Patents, the standard of evidence
sufficient to overcome the presumption of legality of the issuance
of UM-4609 to respondent Madolaria was not legally met by
petitioner in her action for the cancellation of the patent. Thus the
Director of Patents explained his reasons for the denial of the
petition to cancel private respondent’s patent—
_________________
2 40 AmJur 547.
3 Maguan v. Court of Appeals, No. L-45101, 28 November
1986, 146 SCRA 107.
4 60 AmJur 2d 573.
697 5 Sec. 55, RA No. 165, as amended.
698
698 SUPREME COURT REPORTS ANNOTATED
Manzano vs. Court of Appeals
Scrutiny of Exhs. “D” and “E” readily reveals that the utility model
(LPG Burner) is not anticipated. Not one of the various pictorial
representations of burners clearly and convincingly show that the
device presented therein is identical or substantially identical in
construction with the aforesaid utility model. It is relevant and
material to state that in determining whether novelty or newness
is negatived by any prior art, only one item of the prior art may be
used at a time. For anticipation to occur, the prior art must show
that each element is found either expressly or described or under
principles of inherency in a single prior art reference or that the
claimed invention was probably known in a single prior art device
or practice. (Kalman v. 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.
xxxx
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
xxxx
 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.
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VOL. 278, SEPTEMBER 5, 1997
Manzano vs. Court of Appeals
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.
xxxx
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 model8 and such action must
not be interfered with in the absence of competent evidence to the
contrary.
_________________
699
6 Rollo, pp. 143-167.
7 Id., pp. 204-214.
8 Aguas v. de Leon, No. L-32160, 30 January 1982, 111 SCRA
238.
700
700 SUPREME COURT REPORTS ANNOTATED
Manzano vs. Court of Appeals
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.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
circumstances, their relation
__________________
9 60 AmJur 2d 573.
10 Id., p. 582.
701
VOL. 278, SEPTEMBER 5, 1997
Manzano vs. Court of Appeals
to each other and to the whole and the probabilities of the
situation.11
Time and again we have held that it is not the function of the
Supreme Court to analyze or weigh all over again the evidence and
credibility of witnesses presented before the lower tribunal or
office. The Supreme Court is not a trier of facts. Its jurisdiction is
limited to reviewing and revising errors of law imputed to the lower
court, its findings of fact being conclusive and not reviewable by
this Court.
WHEREFORE, the Petition is DENIED. The Decision of the
Court of Appeals affirming that of the Philippine Patent Office is
AFFIRMED. Costs against petitioner.
SO ORDERED.
Vitug, Kapunan and Hermosisima, Jr., JJ., concur.
Petition denied. Judgment affirmed.
Notes.—The findings of fact of the Director of Patents are
conclusive upon the Supreme Court provided they are supported
by substantial evidence. (Emerald Garment Manufacturing
Corporation vs. Court of Appeals, 251 SCRA 600 [1995])
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. (Del Rosario vs. Court of Appeals, 255 SCRA
152 [1996])
5. No. L-45101. November 28, 1986.*
ROSARIO C. MAGUAN (formerly ROSARIO C. TAN),
petitioner, vs. THE HONORABLE COURT OF APPEALS and
SUS ANA LUCHAN, respondents.
Patents; Jurisdiction; Injunction; A regular court (RTC) has
jurisdiction to determine the issue of novelty or prior use when a
patent is sought to be enforced, for the purpose of deciding whether
or not to issue a writ of preliminary injunction.—Under the present
701 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,
________________
30 TSN, January 25, 1982, p. 4.
* SECOND DIVISION.
108
108 SUPREME COURT REPORTS ANNOTATED
Maguan vs. Court of Appeals
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 x x x 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).
Same; Evidence; The burden of proof to substantiate a charge
of patent infringement lies with the plaintiff. Once the patent is in
evidence, the burden of evidence is upon the defendant to overcome
this presumption.—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 faciepresumption 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.
Same; Words and Phrases; When an invention is novel or
original, explained.—lt 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.
Same; Injunction; In actions for patent infringement a writ of
injunction will not issue unless the validity of the patent in relation
to the issue of novelty and originality of the alleged invention, is
clear and beyond question. If a fair case of invalidity, after
preliminary hearing is presented, injunction must not issue.—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).
109
VOL. 146, NOVEMBER 28, 1986 109
Maguan vs. Court of Appeals
As correctly observed by respondent Court of Appeals, "since
sufficient proof s 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." 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).
Appeal; Certiorari; Certiorari may be availed of where appeal
though available, is inadequate, as in wrongful issuance of
preliminary injunction.—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 power
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 [1978]
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.
Same; Same; Actions; Judges; Judges are mere nominal
parties.—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).
110
11 SUPREME COURT REPORTS ANNOTATED
Maguan vs. Court of Appeals
Patents; Actions; Prescription; Claim of prescription may be
availed of by patent holder in petitions for cancellation at the Patent
Office, but not in ordinary civil actions for infringement of patent.—
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.
PETITION for certiorari to review the resolutions of the Court of
Appeals.
The facts are stated in the opinion of the Court.
Ambrosio Padilla Law Offices for petitioner.
PARAS, J.:
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. 1.UM—423 (extended and/or renewed under Extension No.
UM-109 for a period of 5 years from October 6, 1971)
2. 2.UM—450 (extended and/or renewed under Extension No.
UM-110 for a period of 5 years from January 26, 1972)
3. 3.UM—1184, for a period of 5 years from April 5, 1974.
(Petition, Rollo, pp. 6-7).
111
VOL. 146, NOVEMBER 28, 1986 111
Maguan vs. Court of Appeals
In a letter dated July 10, 1974 (Annex "D", Rollo, p. 86), petitioner
informed private respondent that the powder puff s the latter is
manufacturing and selling to various enterprises particularly
those in the cosmetics industry, resemble identical or substantially
identical powder puff s of which the former is a patent holder under
Registration Certification Nos. Extension UM-109, Extension UM-
110 and Utility Model No. 1184; petitioner explained such
production and sale constitute infringement of said patents and
therefore its immediate discontinuance is demanded, otherwise it
will be compelled to take judicial action. (Rollo, pp. 7-8).
Private respondent replied stating that her products are
different and countered that petitioner's patents are void because
the utility models applied for were not new and patentable and the
person to whom the patents were issued was not the true and
actual author nor were her rights derived from such author. (Taken
from allegations in the Answer, par. 4, Rollo, p. 93). And on July
25, 1974, private respondent assailed the validity of the patents
involved and filed with the Philippine Patent Office petitions for
cancellation of (1) Utility Model Letter Patent Extension No. UM-
109 (Inter Partes Case No. 838, Susana Luchan v. Rosario C. Tan),
(2) Utility Model Letters Patent No. UM-1184 (Inter Partes Case
No. 839, Susana Luchan v. Rosario C. Tan), (3) Utility Model
Letters Patent Extension No. UM-110 (Inter Partes Case No.
840, Susana Luchan v. Rosario C. Tan). (Taken from allegations in
the Answer, par. 10, Rollo, pp. 94-95).
In view thereof, petitioner, on August 24, 1974, filed a
complaint for damages with injunction and preliminary injunction
against private respondent with the then Court of First Instance of
Rizal, Pasig Branch, docketed as Civil Case No. 19908, for
infringing the aforesaid letters patent, and prayed, among others,
that a writ of preliminary injunction be immediately issued
(Complaint, Rollo, p. 90).
In her answer, private respondent alleged that the products she
is manufacturing and offering for sale are not identical, or even
only substantially identical to the products covered by petitioner's
patents and, by way of affirmative defenses, further alleged that
petitioner's patents in question are void on
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112 SUPREME COURT REPORTS ANNOTATED
Maguan vs. Court of Appeals
the following grounds:
1. (1)at the time of filing of application for the patents
involved, the utility models applied f or were not new and
patentable under Sec. 55 of R. A. 165, as amended by R.
A. 864; and
2. (2)the person to whom the patents were issued was not the
true and actual author of the utility models applied for,
and neither did she derive her rights from any true and
actual author of these utility models.
f or the following reasons:
1. (a)since years prior to the filing of applications for the
patents involved, powder puffs of the kind applied for
were then already existing and publicly being sold in the
market; both in the Philippines and abroad; and
2. (b)applicant's claims in her applications, of "construction"
or process of manufacturing the utility models applied for,
with respect to UM-423 and UM 450, were but a
complicated and impractical version of an old, simple one
which has been well known to the cosmetics industry
since years previous to her filing of applications, and
which belonged to no one except to the general public; and
with respect to UM-1184; her claim, in her application of
a unitary powder puff, was but an imitation of a product
well known to the cosmetics industry since years previous
to her filing of application, and which belonged to no one
except to the general public; (Answer, Rollo, pp. 93-94).
On September 18, 1974, the trial court issued an Order (Annex "K",
Rollo, p. 125) granting the preliminary injunction prayed for by
petitioner. Consequently, the corresponding writ was subsequently
issued (Annex "K-1", Rollo, p. 131) enjoining the herein private
respondent (then defendant) and all other persons employed by
her, her agents, servants and employees from directly or indirectly
manufacturing, making or causing to be made, selling or causing
to be sold, or using or causing to be used in accordance with, or
embodying the utility models of the Philippine Patent Office Utility
Model Letters Patent Nos. 423 (Extension No. UM-109), No. 450
(Extension No. UM-110), and Utility Model No. 1184 or from
infringement upon or violating said letters patent in any way
whatsoever (Annex "K-1", Rollo, p. 131).
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VOL. 146, NOVEMBER 28, 1986 113
Maguan vs. Court of Appeals
Private respondent questioned the propriety of the trial court's
issuance of the Writ of Preliminary Injunction arguing that since
there is still a pending cancellation proceedings before the
Philippine Patent Office concerning petitioner's patents, such
cannot be the basis for preliminary injunction (Motion for
Reconsideration, Rollo, p. 132).
In an Order dated September 11, 1975, the trial court denied
private respondent's motion for reconsideration (Annex "N", Rollo,
p. 142).
In challenging these Orders private respondent filed a petition
for certiorari with the respondent court on September 29, 1975
(Annex "D", Rollo, pp. 148-171) reiterating among other things the
invalidity of petitioner's patents and prayed that the trial court be
restrained from enforcing or continuing to enforce the following;
1. (1)Order dated September 18, 1974, granting the
preliminary injunction;
2. (2)Writ of preliminary injunction dated September 18,
1974; and
3. (3)Order dated September 11, 1974 denying petitioner's
motion for reconsideration.
On October 15, 1975, the Writ of Preliminary Injunction was issued
by the respondent Court of Appeals as follows:
"NOW, THEREFORE, you, respondents, and/or any
person/persons acting on your stead, are hereby ENJOINED to
RESTRAIN from enforcing or continuing to enforce, the
proceedings complained of in the petition to wit: 1) Order dated
September 18, 1974, granting the preliminary injunction; 2) Writ
of Preliminary Injunction dated September 18, 1974; and Order
dated September 11, 1975, denying petitioner's motion for
reconsideration, all issued in connection with Civil Case No. 19908,
UNTIL FURTHER ORDERS FROM THIS COURT.'' (Annex "P",
Rollo, p. 173)
On February 16,, 1976, respondent court promulgated a decision
the dispositive portion of which reads:
"WHEREFORE, finding no merit in the herein petition, the
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114 SUPREME COURT REPORTS ANNOTATED
Maguan vs. Court of Appeals
same is hereby dismissed and the preliminary injunction
previously issued by this Court is hereby set aside, with costs.
"SO ORDERED." (CA Decision, Rollo, p. 189).
In said decision respondent court stated that in disposing of the
petition it tackled only the issue of whether the court a quo acted
with grave abuse of discretion in issuing the challenged orders. It
made clear the question of whether the patents have been infringed
or not was not determined considering the court a quo has yet to
decide the case on the merits (Ibid., p. 186).
Feeling aggrieved, private respondent moved to reconsider the
afore-mentioned Decision based on the following grounds:
I
THAT THIS HONORABLE COURT ERRED IN NOT
APPRECIATING THE EXISTENCE OF A FAIR QUESTION OF
INVALIDITY OF PRIVATE RESPONDENT'S PATENTS.
II
THAT THIS HONORABLE COURT ERRED IN NOT
REJECTING THE THEORY OF RESPONDENT JUDGE THAT
HE HAS NO JURISDICTION TO INVALIDATE THE PATENTS
UPON GROUND OF LACK OF NOVELTY OF THE PRODUCTS
PATENTED. (Motion for Reconsideration, Rollo, p. 190).
Reviewing on reconsideration, respondent court gave weight to
private respondent's allegation that the latter's products are not
identical or even only substantially identical to the 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
115
VOL. 146, NOVEMBER 28, 1986 115
Maguan vs. Court of Appeals
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. (1)Whether or not in an action for infringement the Court a
quo had jurisdiction to determine the invalidity of the
patents at
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116 SUPREME COURT REPORTS ANNOTATED
Maguan vs. Court of Appeals
1. issue which invalidity was still pending consideration in
the patent office.
2. (2)Whether or not the Court a quocommitted grave abuse
of discretion in the issuance of a writ of preliminary
injunction.
1. (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 x x x issue
an order cancelling the patent or the claims f ound 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. 221222).
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
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 VOL. 146, NOVEMBER 28, 1986 117
Maguan vs. Court of Appeals
prima facie presumption of its correctness and validity. The
decision of the Commissioner (now Director) of Patent in granting
the patent is presumed to be correct. The burden of going forward
with the evidence (burden of evidence) then shifts to the defendant
to overcome by competent evidence this legal presumption.
The question then in the instant case is whether or not the
evidence introduced by private respondent herein is sufficient to
overcome said presumption.
After a careful review of the evidence consisting of 64 exhibits
and oral testimonies of five witnesses presented by private
respondents before the Court of First Instance before the Order of
preliminary injunction was issued as well as those presented by
the petitioner, respondent Court of Appeals was satisfied that
there is a prima facie showing of a fair question of invalidity of
petitioner's patents on the ground of lack of novelty. As pointed out
by said appellate court said evidence appeared not to have been
considered at all by the court a quo for alleged lack of jurisdiction,
on the mistaken notion that such question in within the exclusive
jurisdiction of the patent office.
It has been repeatedly held that an invention must possess the
essential elements of novelty, originality and precedence and for
the patentee to be entitled to protection, the invention must be new
to the world. Accordingly, a single instance of public use of the
invention by a patentee for more than two years (now for more than
one year only under Sec. 9 of the Patent Law) before the date of his
application for his patent, will be fatal to the validity of the patent
when issued. (Frank, et al. v. Kosuyama; Vargas v. F.M. Yaptico &
Co. and Vargas v. Chua, et al., supra).
The law provides:
"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
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118 SUPREME COURT REPORTS ANNOTATED
Maguan vs. Court of Appeals
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 forpatent 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 puff s 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).
 119
VOL. 146, NOVEMBER 28, 1986 119
Maguan vs. Court of Appeals
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
120
120 SUPREME COURT REPORTS ANNOTATED
Tayug Rural Bank vs. Central Bank of the Philippines
proceedings."
Relative thereto "the judge whose order is under attack is
merely a nominal party; wherefore, a judge in his official capacity
should not be made to appear as a party seeking reversal of a
decision that is unfavorable to the action taken by him." (Hon.
Alcasid v. Samson, 102 Phil. 735-736; Tarona v. Sayo, 67 SCRA
508, 524; Lim Se v. Argel, 70 SCRA 378).
As to petitioner's claim of prescription, private respondent's
contention that such refers to the filing of petitions for cancellation
in the Patent Office under Sec. 28 of the Patent Law and not to a
defense against an action for infringement under Sec. 45 thereof
which may be raised anytime, is evident under aforesaid law.
PREMISES CONSIDERED, the assailed resolutions of the
Court of Appeals are hereby AFFIRMED.
SO ORDERED.
Feria (Chairman), Fernan, Gutierrez, Jr.,
and Feliciano,** JJ., concur.
Alampay, J., no part.
Resolutions affirmed.
6. [No. 38010. December 21, 1933]
PATRICK HENRY FRANK and WILLIAM HENRY GOHN,
plaintiffs and appellants, vs. G. KOSUYAMA, defendant and
appellee.
1. 1.PATENT; ESSENTIAL ELEMENTS.—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).
1. 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.
207
VOL. 59, DECEMBER 21, 1933 207
Frank and Gohn vs. Kosuyama
1. 3.ID.; ANNULMENT.—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 crosscomplaint to that
effect.
1. 4.ID.; INFRINGEMENT.—The def endant 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.
1. 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 characteristics thereof which had been
imitated or copied by the therein defendant.
APPEAL from a judgment of the Court of First Instance of Manila.
Diaz, J.
The facts are stated in the opinion of the court.
J, W. Ferrier f or appellants.
Pablo Lorenzo for appellee.
IMPERIAL, J.:
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 re-
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208 PHILIPPINE REPORTS ANNOTATED
Frank and Gohn vs. Kosuyama
frain immediately from the manufacture and sale of machines
similar to the one covered by the patent; to render an accounting
of the profits realized from the manufacture and sale of the
machines in question; that in case of refusal or failure to render
such accounting, the 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 and
privileges acquired by the plaintiffs over the aforesaid patent
through the manufacture and sale by the former of machines
similar to that covered by the aforesaid patent.
 The plaintiffs appealed from the judgment rendered by the trial
court dismissing their complaint, with 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 difference between the machine in
question and other machines and that it was the principal
consideration upon
209
VOL. 59, DECEMBER 21, 1933 209
Frank and Gohn vs. Kosuyama
which their patent was issued. The said plaintiff s 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 constructing 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
machine 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
210
210 PHILIPPINE REPORTS ANNOTATED
Frank and Gohn vs. Kosuyama
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
211
VOL. 59, DECEMBER 21, 1933 211
Frank and Gohn vs. Kosuyama
by the plaintiffs and in the absence of a cross-complaint to that
effect. Por the purposes of this appeal, suffice it to hold that the
defendant is not civilly liable for alleged infringement of the patent
in question.
In the light of sound logic, the plaintiffs cannot insist that the
"spindle" was a patented invention on the ground that Said part of
the machine was voluntarily omitted by them from their
application, as evidenced by the photographic copy thereof (Exhibit
41) wherein it likewise appears that the patent on Improved Hemp
Stripping Machines was issued minus the "spindle" in question.
Were we to stress to this part of the machine, we would be giving
the patent obtained by the plaintiffs a wider range than it actually
has, which is contrary to the principles of interpretation in matters
relating to patents.
In support of their claim the plaintiff s 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
212
212 PHILIPPINE REPORTS ANNOTATED
Viuda de Barretto vs. La Previsora Filipina
the case under consideration, it is obvious that the "spindle" is not
an integral part of the machine patented by the plaintiffs on the
ground that it was eliminated from their patent inasmuch as it was
expressly excluded in their application, as evidenced by the
aforesaid Exhibit 41.
Wherefore, reiterating that the defendant cannot be held civilly
liable for alleged infringement of the patent upon which the
present action is based on the ground that there is no essential part
of the machine manufactured and sold by him, which was unknown
to the public in the Province of Davao at the time the plaintiffs
applied for and obtained their patent for improved hemp stripping
machines, the judgment appealed from is hereby affirmed, with the
costs against the plaintiffs-appellants. So ordered.
Avanceña, C. J., Malcolm, Villa-Real, and Hull, JJ., concur.
Judgment affirmed.
7. No. L-32160. January 30, 1982.*
DOMICIANO A. AGUAS, petitioner, vs.CONRADO G. DE LEON
and COURT OF APPEALS, respondents.
Commercial Law; Patents; Phil Patents Office; Determination
of patentability of a product within the competence of the
Philippines Patent Office; Presumption that determination of
Patents Office of product’s patent ability is correct.—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 patent ability of the improvement by the private
respondent of the process in question.
Same; Same; Tile Making; Where improvement in tile making
is inventive and different from old process of tile making,
improvement is patent able.—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. 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. x x x The Machuca tiles are different from
_______________
*FIRST DIVISION.
239
VOL. 111, JANUARY 30, 1982 239
Aguas vs. De Leon
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.
PETITION for certiorari to review the decision of the Court of
Appeals.
The facts are stated in the opinion of the Court.
FERNANDEZ, J.:
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 Philippine Patent Office, Patent No.
658 was lawfully granted and issued to him; that said invention
was new, useful, not known or used by others in this country before
his invention thereof, not patented or described in any printed
publication anywhere before his invention thereof, or more than
one year prior to his application for patent therefor, not patented
in any foreign
_______________
1 Rollo, p. 68. The decision of the Court of Appeals was written
by Justice Jose M. Mendoza and concurred in by Justice Antonio
G. Lucero and Justice Jesus Y. Perez.
240
240 SUPREME COURT REPORTS ANNOTATED
Aguas vs. De Leon
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 patent
invention and that defendant F.H. Aquino & Sons is guilty of
infringement by making and furnishing to the defendant
Domiciano A. Aguas the engravings, castings and devices designed
and intended 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 the sum of P5,000.00.2
_______________
2 Record on appeal pp. 1-6, Rollo, p. 131.
241
VOL. 111, JANUARY 30, 1982 241
Aguas vs. De Leon
On April 14, 1962, an order granting the plaintiff’s petition for a
Writ of Preliminary Injunction was issued.3
On May 23, 1962, the defendant Domiciano A. Aguas filed his
answer denying the allegations of the plaintiff and alleging that:
the plaintiff is neither the original first nor sole inventor of the
improvements in the process of making mosaic pre-cast tiles, the
same having been used by several tile-making factories in the
Philippines and abroad years before the alleged invention by de
Leon; that Letters Patent No. 658 was unlawfully acquired by
making it appear in the application in relation thereto that the
process is new and that the plaintiff is the owner of the process
when in truth and in fact the process incorporated in the patent
application has been known and used in the Philippines by almost
all tile makers long before the alleged use and registration of
patent by plaintiff Conrado G. de Leon; that the registration of the
alleged invention did not confer any right on the plaintiff because
the registration was unlawfully secured and was a result of the
gross misrepresentation on the part of the plaintiff that his alleged
invention is a new and inventive process; that the allegation of the
plaintiff that Patent No. 658 is of great value to plaintiff and of
great benefit to the public is a mere conclusion of the plaintiff, the
truth being that a) the invention of plaintiff is neither inventive
nor new, hence, it is not patentable, b) defendant has been granted
valid patents (Patents No. 108, 109, 110 issued on December 21,
1961) on designs for concrete decorative wall tiles; and c) that he
can not be guilty of infringement because his products are different
from those of the plaintiff.4
The trial court rendered a decision dated December 29, 1965,
the dispositive portion of which reads:
“WHEREFORE, judgment is hereby rendered in favor of plaintiff
and against the defendants:
1. “1.Declaring plaintiff’s patent valid and infringed:
 2. “2.Granting a perpetual injunction restraining defendants,
their officers, agents, employees, associates, confederates,
and any
_______________
3 Ibid, pp. 9-10.
4 Ibid, pp. 18-27.
242
242 SUPREME COURT REPORTS ANNOTATED
Aguas vs. De Leon
1. and all persons acting under their authority from making
and/or using and/or vending tiles embodying said
patented invention or adapted to be used in combination
embodying the same, and from making, manufacturing,
using or selling, engravings, castings and devises
designed and intended for use in apparatus for the
making of tiles embodying plaintiff’s patented invention,
and from offering or advertising so to do, and from aiding
and abetting or in any way contributing to the
infringement of said patent;
2. “3.Ordering that each and all of the infringing tiles,
engravings, castings and devices, which are in the
possession or under the control of defendants be delivered
to plaintiff;
3. “4.Ordering the defendants to jointly and severally pay to
the plaintiff the following sums of money, to wit:
1. (a)P10,020.99 by way of actual damages;
2. (b)P50,000.00 by way of moral damages;
3. (c)P5,000.00 by way of exemplary damages;
4. (d)P5,000.00 by way of attorney’s fees and
5. (e)costs of suit.”5
The defendant Domiciano Aguas appealed to the Court of Appeals,
assigning the following errors.6
“I
“THE TRIAL COURT ERRED IN NOT HOLDING THAT
PLAINTIFF’S PATENT FOR THE ‘PROCESS OF MAKING
MOSAIC PRE-CAST TILE’ IS INVALID BECAUSE SAID
ALLEGED PROCESS IS NOT AN INVENTION OR DISCOVERY
AS THE SAME HAS ALREADY LONG BEEN USED BY TILE
MANUFACTURERS BOTH ABROAD AND IN THIS COUNTRY.
“II
“THE TRIAL COURT ERRED IN HOLDING THAT THE
PATENT OF PLAINTIFF IS VALID BECAUSE IT IS AN
IMPROVEMENT OR THE AGE-OLD TILE MAKING SYSTEM.
_______________
5 Ibid., pp. 46-75.
6 Brief for the Defendant-Appellant, pp. 1-2, Rollo, p. 132. The
other defendant F.H. Aquino & Sons did not appeal from the
decision of December 29, 1965.
243
VOL. 111, JANUARY 30, 1982 243
Aguas vs. De Leon
“III
“THE TRIAL COURT ERRED IN NOT ORDERING THE
CANCELLATION OF PLAINTIFF-APPELLEE’S LETTERS
PATENT NO. 658, EXHIBIT L, IN ACCORDANCE WITH THE
PERTINENT PROVISIONS OF THE PATENT LAW. REPUBLIC
ACT 165.
“IV
“THE TRIAL COURT ERRED IN HOLDING THAT
DEFENDANT DOMICIANO A. AGUAS IS GUILTY OF
INFRINGEMENT DESPITE THE FACT THAT PLAINTIFF’S improvements, was in truth and in fact, on the basis of the body of
PATENT IS NOT A VALID ONE. the same, a patent for the old and non-patentable process of
making mosaic pre-cast tiles;
“V “Second error.—When it did not conclude from the admitted
facts of the case, particularly the contents of the letters patent,
“THE TRIAL COURT ERRED IN NOT HOLDING THAT THE Exh. L, and the pieces of physical evidence introduced consisting of
DEFENDANT COULD NEVER BE GUILTY OF samples of the tiles and catalouges, that the alleged improvements
INFRINGEMENT OF PLAINTIFF’S PATENT BECAUSE EVEN introduced by the respondent in the manufacture of mosaic pre-
IN MATTERS NOT PATENTED BY THE PLAINTIFF-LIKE THE cast tiles are not patentable, the same being not new, useful and
COMPOSITION AND PROPORTION OF INGREDIENTS USED inventive.
AND THE STRUCTURAL DESIGNS OF THE MOULD AND THE “Third error.—As a corollary, when it sentenced the herein
TILE PRODUCED-THAT OF THE DEFENDANT ARE petitioner to pay the damages enumerated in the decision of the
DIFFERENT. lower court (Record on Appeal, pp. 74-75), as confirmed by it (the
Court of Appeals), but with the modification that the amount of
“VI P50,000.00 moral damages was reduced to P3,000.00.”8
The facts, as found by the Court of Appeals, are:
“THE TRIAL COURT ERRED IN NOT DISMISSING THE “The basic facts borne out by the record are to the effect that on
COMPLAINT AND IN HOLDING THE DEFENDANT, INSTEAD December 1, 1959, plaintiff-appellee filed a patent application with
OF THE PLAINTIFF, LIABLE FOR DAMAGES, AND the Philippine Patent Office, and on May 5, 1960, said office issued
ATTORNEY’S FEES.” in his favor Letters Patent No. 658 for a ‘new and useful
On August 5, 1969, the Court of Appeals affirmed the decision of improvement in the process of making mosaic pre-cast tiles’ (Exh.
the trial court, with the modification that plaintiff-appellee’s “L”); that defendant F.H. Aquino & Sons engraved the moulds
award of moral damages was reduced to P3,000.00. 7 embodying plaintiff’s patented improvement for the manufacture
The petitioner assigns the following errors supposedly of pre-cast tiles, plaintiff furnishing said defendant the actual
committed by the Court of Appeals: model of the tiles in escayola and explained to said engraver the
“It is now respectfully submitted that the Court of Appeals plans, specifications and the details of the engravings as he wanted
committed the following errors involving questions of law, to wit: them to be made, including an explanation of the lip width, artistic
“First error.—When it did not conclude that the letters patent slope of easement and critical depth of the engraving that plaintiff
of the respondent although entitled on the cover page as a patent wanted for his moulds; that engraver Enrique Aquino knew that
for the moulds he was engraving for plaintiff were the latter’s very
own, which possessed the new features and characteristics covered
_______________ by plaintiff’s parent; that defendant Aguas personally, as a
building contractor, purchased from plaintiff, tiles shaped out of
7 Rollo, p. 68. these moulds at the back of which was imprinted plaintiff’s patent
244 number (Exhs., “A” to “E”); that subsequently, through a
244 SUPREME COURT REPORTS ANNOTATED representative, Mr. Leonardo, defendant Aguas requested Aquino
Aguas vs. De Leon 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
_______________
8 Petition, p. 4, Rollo, p. 12.
245
VOL. 111, JANUARY 30, 1982 245
Aguas vs. De Leon
F.H. Aquino & Sons eventually engraved for Aguas and for which
it charged Aguas double the rate it charged plaintiff De Leon,
contain the very same characteristic features of plaintiff’s mould
and that Aguas used these moulds in the manufacture of his tiles
which he actually put out for sale to the public (Exhs. “1” to “3” and
Exhs. “A” to “E”); that both plaintiff’s and defendant Aguas’ tiles
are sculptured pre-cast wall tiles intended as a new feature of
construction and wall ornamentation substantially identical to
each other in size, easement, lip width and critical 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 4x4 inches in size,
defendant Aguas’ mould is made to fit a 4-1/4 x 4-1/4 inch tile.”9
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.
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 tilemaking. 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:
_______________
9 Rollo, pp. 44-46.
10 Rollo, p. 217.
11 Exhibit “L”.
246
246 SUPREME COURT REPORTS ANNOTATED
Aguas vs. De Leon
“x x x we find that plaintiff-appellee has introduced an
improvement in the process of tile-making, which proceeds not
merely from mechanical skill, said improvement consisting among
other things, in the new critical depth, lip width, easement and
field of designs of the new tiles. The improved lip width of
appellee’s tiles ensures the durability of the finished product
preventing the flaking off of the edges. The easement caused by the
inclination of the protrusions of the patented moulds is for the
purpose of facilitating the removal of the newly processed tile from
the female die. Evidently, appellee’s improvement consists in the
solution to the old critical problem by making the protrusions on
his moulds attain 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
_______________
12 Rollo, pp. 50-51.
247
VOL. 111, JANUARY 30, 1982 247
Aguas vs. De Leon
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
_______________
13 Rollo, p. 54.
248
248 SUPREME COURT REPORTS ANNOTATED
Aguas vs. De Leon
the production of tough and durable wall tiles, though thin and
light; the engraving of deep designs in such a way as to make the
tiles decorative, artistic and suitable for wall ornamentation, and
the fact that the tiles can be mass produced in commercial
quantities and can be conveniently stock-piled, handled and
packed without any intolerable incidence of breakages.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 pre-cast 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
_______________
14 Respondent’s Brief, pp. 89-90, Rollo, p. 210.
15 TSN, Sept. 13, pp. 69-71.
16 Ibid.
249
VOL. 111, JANUARY 30, 1982 249
Aguas vs. De Leon
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.
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
_______________
17 TSN, July 17, 1964, p. 410,446. See Exhibit 11, 11-A, to 11-E;
14 to 14-E, 15.
18 Petitioner’s Brief, p. 39, Rollo, p. 147.
19 Exhibits 14-A, 14-B, 14-C, 14-D, 14-E, 15, 15-A, 15-C, TSN,
July 31, 1964; pp. 19-28.
20 TSN, July 31, 1964, p. 24.
21 Rollo, p. 68.
250
250 SUPREME COURT REPORTS ANNOTATED
Aguas vs. De Leon
The lower court awarded the following damages:22
1. a)P10,020.99 by way of actual damages;
2. b)P50,000.00 by way of moral damages;
3. c)P5,000.00 by way of exemplary damaged;
 4. d)P5,000.00 by way of attorney’s fees and
5. e)Costs of suit
because:
“An examination of the books of defendant Aguas made before a
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 be 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 protection to inventors, the Court hereby
awards plaintiff exemplary damages in the sum of P5,000.00 to be
paid jointly and severally by defendants. Considering the status of
plaintiff as a reputable businessman, and owner of the likewise
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
_______________
22Amended Record on Appeal, pp. 74-75, Rollo, p. 131.
23Ibid., pp. 72-73.
251
VOL. 111, JANUARY 30, 1982 251
Aguas vs. De Leon
defendants, plaintiff was unstandably 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 attorneys
fees awarded by the trial court as modified by the Court of Appeals.
WHEREFORE, the decision of the Court of Appeals in CA G.R.
No. 37824-R appealed from is hereby affirmed, without
pronouncement as to costs.
SO ORDERED.
Makasiar, Guerrero, Melencio-Herreraand Plana, JJ.,
concur.
Teehankee, J., took no part.
Decision affirmed.
Notes.—Hearing officers of the Patent Office can hear
interparty proceedings in patent cases, but not to decide the case
on the merits, the same being lodged with the Director of Patents.
(Boehringer Ingelheim GMBH vs. CA., 84 SCRA 449.)
252
252 SUPREME COURT REPORTS ANNOTATED
Aguas vs. De Leon
Fact of existence of two different substances of medicine of which a
court could not take judicial notice of nor competent to so find in
the absence of evidence, and the existence of two patents require
presentation of evidence to show whether the substances are the
same or not. (Parke, Davis & Co. vs. Doctors’ Pharmaceuticals,
Inc., 104 SCRA 700.)
Director of Patents has no jurisdiction over the issue of unfair
competition. (Victorias Milling Co. vs. Ong Siu, 79 SCRA 207.)
Findings of fact of the Director of Patents are conclusive and
binding upon the Supreme Court provided that they are supported
by substantial evidence. (Philippine Nut Industry, Inc. vs.
Standard Brands, Inc., 65 SCRA 575.)
In the absence of a wrongful act or omission or of fraud or bad
faith, petitioner is not entitled to moral damages. (Ong Yui vs.
Court of Appeals,91 SCRA 223.)
Passion and obfuscation is a ground for reduction of moral
damages. (Matura vs. Laya,92 SCRA 268.)
While moral damages are incapable of pecuniary estimation,
they are recoverable, if they are the proximate result of the
defendant’s wrongful act or omission. (Yutuc vs. Manila Electric
Company, 2 SCRA 337.)
Where the appellant is guilty of bad faith in not carrying out
his agreement with the appellee, the latter is entitled to recover
moral damages. (Coscolluela vs. Valderrama, 2 SCRA 1095.)
Moral damages may be imposed if the insincerity of the various
amended complaints is patent. (Heirs of Basilisa Justiva vs.
Gustilo, 7 SCRA 72.)
Award of moral damages under Article 2220 of the Civil Code
is not warranted if the breach of contract is not malicious or
fraudulent. (Francisco vs. GSIS, 7 SCRA 577.)
8. G.R. No. 97343. September 13, 1993.*
PASCUAL GODINES, petitioner, vs. THE HONORABLE COURT
OF APPEALS, SPECIAL FOURTH DIVISION and SV-AGRO
ENTERPRISES, INC., respondents.
Remedial Law; Appeal; Certiorari; The jurisdiction of the
Supreme Court in cases brought to it from the Court of Appeals in
a petition for certiorari under Rule 45 of the Rules of Court is
limited to the review of errors of law; Appellate court’s findings of
fact are conclusive upon the Supreme Court.—Of general
acceptance is the rule imbedded in our jurisprudence that “x x x
the jurisdiction of the Supreme Court in cases brought to it from
the Court of Appeals in a petition for certiorari under Rule 45 of
the Rules of Court is limited to the review of errors of law, and that
said appellate court’s findings of fact are conclusive upon this
Court.”
Corporation Law; Trademarks; Unfair Competition; Test to
determine infringement are (a) literal infringement and (b) the
doctrine of equivalents.—Tests have been established to determine
infringement. These are (a) literal infringement; and (b) the
doctrine of equivalents. In using literal infringement as a test, “x x
x resort must be had, in the first instance, to the words of the claim.
If accused matter clearly falls within the claim, infringement is
made out and that is the end of it.” To determine whether the
particular item falls within the literal meaning of the patent
claims, the Court must juxtapose the claims of the patent and the
accused product within the overall context of the claims and
specifications, to determine whether there is exact identity of all
material elements.
Same; Same; Same; Same; Courts have adopted the doctrine
of equivalents which recognizes that minor modifications in a
patented invention are sufficient to put the item beyond the scope of
literal infringement.—Recognizing that the logical fallback
position of one in
_______________
*THIRD DIVISION.
339
VOL. 226, SEPTEMBER 13, 1993 339
Godines vs. Court of Appeals
the place of defendant is to aver that his product is different
from the patented one, courts have adopted the doctrine of
equivalents which recognizes that minor modifications in a
patented invention are sufficient to put the item beyond the scope
of literal infringement.
Same; Same; Same; Same; Same; The reason for the doctrine
of equivalents is that to permit the imitation of a patented invention
which does not copy any literal detail would be to convert the
protection of the patent grant into a hollow and useless thing.—
Thus, according to this doctrine, “(a)n infringement also occurs
when a device appropriates a prior invention by incorporating its
innovative concept and, albeit with some modifications and change,
performs substantially the same function in substantially the same
way to achieve substantially the same result.” The reason for the
doctrine of equivalents is that to permit the imitation of a patented
invention which does not copy any literal detail would be to convert
the protection of the patent grant into a hallow and useless thing.
Such imitation would leave room for—indeed encourage—the
unscrupulous copyist to make unimportant and insubstantial
changes and substitutions in the patent which, though adding
nothing, would be enough to take the copied matter outside the
claim, and hence outside the reach of the law.
PETITION for review on certiorari of a decision of the Court of
Appeals.
The facts are stated in the opinion of the Court.
Jesus S. Anonat for petitioner.
Arturo M. Alinio for private respondent.
ROMERO, J.:
Through this petition for review on certiorari of a decision of the
Court of Appeals affirming the decision of the trial court, petitioner
Pascual Godines seeks to reverse the adverse decision of the
Court a quo, that he was liable for infringement of patent and
unfair competition. The dispositive portion of the assailed decision
is hereby quoted to wit:
“WHEREFORE, with the elimination of the award for attorney’s
fees, the judgment appealed from is hereby AFFIRMED, with costs
against appellant.”1
______________
1Rollo, p. 33.
340
340 SUPREME COURT REPORTS ANNOTATED
Godines vs. Court of Appeals
The patent involved in this case is Letters Patent No. UM-2236
issued by the Philippine Patent Office to one Magdalena S. Villaruz
on July 15, 1976. It covers a utility model for a hand tractor or
power tiller, the main components of which are the following: “(1)
a vacuumatic house float; (2) a harrow with adjustable operating
handle; (3) a pair of paddy wheels; (4) a protective water covering
for the engine main drive; (5) a transmission case; (6) an operating
handle; (7) an engine foundation on the top midportion of the
vacuumatic housing float to which the main engine drive is
detachedly installed; (8) a frontal frame extension above the
quarter—circularly shaped water covering hold (sic) in place the
transmission case; (9) a V-belt connection to the engine main drive
with transmission gear through the pulley, and (10) an idler pulley
installed on the engine foundation.”2 The patented hand tractor
works in the following manner: “the engine drives the transmission
gear thru the V-belt, a driven pulley and a transmission shaft. The
engine drives the transmission gear by tensioning of the V-belt
which is controlled by the idler pulley. The V-belt drives the pulley
attached to the transmission gear which in turn drives the shaft
where the paddy wheels are attached. The operator handles the
hand tractor through a handle which is inclined upwardly and
supported by a pair of substanding pipes and reinforced by a U-
shaped G.I. pipe at the V-shaped end.”3
The above mentioned patent was acquired by SV-Agro
Industries Enterprises, Inc., herein private respondent, from
Magdalena Villaruz, its chairman and president, by virtue of a
Deed of Assignment executed by the latter in its favor. On October
31, 1979, SV-Agro Industries caused the publication of the patent
in Bulletin Today, a newspaper of general circulation.
In accordance with the patent, private respondent
manufactured and sold the patented power tillers with the patent
imprinted on them. In 1979, SV-Agro Industries suffered a decline
of more than 50% in sales in its Molave, Zamboanga del Sur
branch. Upon investigation, it discovered that power tillers similar
to those patented by private respondent were being manufac-
_______________
2 Rollo, p. 19.
3 Ibid.
341
VOL. 226, SEPTEMBER 13, 1993 341
Godines vs. Court of Appeals
tured and sold by petitioner herein. Consequently, private
respondent notified Pascual Godines about the existing patent and
demanded that the latter stop selling and manufacturing similar
power tillers. Upon petitioner’s failure to comply with the demand,
SV-Agro Industries filed before the Regional Trial Court a
complaint for infringement of patent and unfair competition.
After trial, the court held Pascual Godines liable for
infringement of patent and unfair competition. The dispositive
portion of the decision reads as follows:
“WHEREFORE, premises considered, JUDGMENT is hereby
rendered in favor of the plaintiff SV-Agro Industries Enterprises,
Inc., and against defendant Pascual Godines:
1. 1.Declaring the writ of preliminary injunction issued by
this Court against defendant as permanent;
2. 2.Ordering defendant Pascual Godines to pay plaintiff the
sum of Fifty Thousand Pesos (P50,000.00) as damages to
its business reputation and goodwill, plus the further sum
of Eighty Thousand Pesos (P80,000.00) for unrealized
profits during the period defendant was manufacturing
and selling copied or imitation floating power tiller;
3. 3.Ordering the defendant to pay the plaintiff, the further
sum of Eight Thousand Pesos (P8,000.00) as
reimbursement for attorney’s fees and other expenses of
litigation; and to pay the costs of the suit.
SO ORDERED.”4
The decision was affirmed by the appellate court.
Thereafter, this petition was filed. Petitioner maintains the
defenses which he raised before the trial and appellate courts, to
wit: that he was not engaged in the manufacture and sale of the
power tillers as he made them only upon the special order of his
customers who gave their own specifications; hence, he could not
be liable for infringement of patent and unfair competition; and
that those made by him were different from those being
manufactured and sold by private respondent.
We find no merit in his arguments. The question of whether
petitioner was manufacturing and selling power tillers is a
question of fact better addressed to the lower courts. In dismissing
the first argument of petitioner herein, the Court of Appeals quoted
______________
4 Rollo, p. 25.
342
342 SUPREME COURT REPORTS ANNOTATED
Godines vs. Court of Appeals
the findings of the trial court, to wit:
“It is the contention of defendant that he did not manufacture or
make imitations or copies of plaintiff’s turtle power tiller as what
he merely did was to fabricate his floating power tiller upon
specification and designs of those who ordered them. However, this
contention appears untenable in the light of the following
circumstances: 1) he admits in his Answer that he has been
manufacturing power tillers or hand tractors, selling and
distributing them long before plaintiff started selling its turtle
power tiller in Zamboanga del Sur and Misamis Oriental, meaning
that defendant is principally a manufacturer of power tillers, not
upon specification and design of buyers, but upon his own
specification and design; 2) it would be unbelievable that defendant
would fabricate power tillers similar to the turtle power tillers of
plaintiff upon specifications of buyers without requiring a job order
where the specification and designs of those ordered are specified.
No document was (sic) ever been presented showing such job
orders, and it is rather unusual for defendant to manufacture
something without the specification and designs, considering that
he is an engineer by profession and proprietor of the Ozamis
Engineering shop. On the other hand, it is also highly unusual for
buyers to order the fabrication of a power tiller or hand tractor and
allow defendant to manufacture them merely based on their verbal
instructions. This is contrary to the usual business and
manufacturing practice. This is not only time consuming, but costly
because it involves a trial and error method, repeat jobs and
material wastage. Defendant judicially admitted two (2) units of
the turtle power tiller sold by him to Policarpio Berondo.5
Of general acceptance is the rule imbedded in our jurisprudence
that “x x x the jurisdiction of the Supreme Court in cases brought
to it from the Court of Appeals in a petition for certiorari under
Rule 45 of the Rules of Court is limited to the review of errors of
law, and that said appellate court’s findings of fact are conclusive
upon this Court.”6
The fact that petitioner herein manufactured and sold power
tillers without patentee’s authority has been established by the
courts despite petitioner’s claims to the contrary.
The question now arises: Did petitioner’s product infringe
_____________
5 Rollo, pp. 31-32.
6 Ronquillo v. Court of Appeals, G.R. No. 43346, March 20
1991 195 SCRA 433.
343
VOL. 226, SEPTEMBER 13, 1993 343
Godines vs. Court of Appeals
upon the patent of private respondent?
Tests have been established to determine infringement. These
are (a) literal infringement; and (b) the doctrine of equivalents.7 In
using literal infringement as a test,” x x x resort must be had, in
the first instance, to the words of the claim. If accused matter
clearly falls within the claim, infringement is made out and that is
the end of it.”8 To determine whether the particular item falls
within the literal meaning of the patent claims, the Court must
juxtapose the claims of the patent and the accused product within
the overall context of the claims and specifications, to determine
whether there is exact identity of all material elements.9
The trial court made the following observation:
“Samples of the defendant’s floating power tiller have been
produced and inspected by the court and compared with that of the
turtle power tiller of the plaintiff (see Exhibits H to H-28). In
appearance and form, both the floating power tillers of the
defendant and the turtle power tiller of the plaintiff are virtually
the same. Defendant admitted to the Court that two (2) of the
power tillers inspected on March 12, 1984, were manufactured and
sold by him (see TSN, March 12, 1984, p. 7). The three power tillers
were placed alongside with each other. At the center was the turtle
power tiller of plaintiff, and on both sides thereof were the floating
power tillers of defendant (Exhibits H to H-2). Witness Rodrigo
took photographs of the same power tillers (front, side, top and
back views for purposes of comparison (see Exhibits H-4 to H-28).
Viewed from any perspective or angle, the power tiller of the
defendant is identical and similar to that of the turtle power tiller
of plaintiff in form, configuration, design and appearance. The
parts or components thereof are virtually the same. Both have the
circularlyshaped vacuumatic housing float, a pair of paddy in front,
a protective water covering, a transmission box housing the
transmission gears, a handle which is V-shaped and inclined
upwardly, attached to the side of the vacuumatic housing float and
supported by the upstanding G.I. pipes and an engine base at the
top midportion of the vacuumatic housing float to which the engine
drive may be attached. In operation,
_______________
7 Studiengesellschaft Kohle mbH v. Eastman Kodak Company,
616 F. 2d 1315, at 1324 (1980).
8 Ibid.
9 Johnson and Johnson v. W.L. Gore and Assoc. Inc., 436 F.
Supp. 704 at 728 (1977).
344
344 SUPREME COURT REPORTS ANNOTATED
Godines vs. Court of Appeals
the floating power tiller of the defendant operates also in similar
manner as the turtle power tiller of plaintiff. This was admitted by
the defendant himself in court that they are operating on the same
principles. (TSN, August 19, 1987, p. 13)10
Moreover, it also observed that petitioner also called his power
tiller as a floating power tiller. The patent issued by the Patent
Office referred to a “farm implement but more particularly to a
turtle hand tractor having a vacuumatic housing float on which the
engine drive is held in place, the operating handle, the harrow
housing with its operating handle and the paddy wheel protective
covering.”11 It appears from the foregoing observation of the trial
court that these claims of the patent and the features of the
patented utility model were copied by petitioner. We are compelled
to arrive at no other conclusion but that there was infringement.
Petitioner’s argument that his power tillers were different from
private respondent’s is that of a drowning man clutching at straws.
Recognizing that the logical fallback position of one in the place
of defendant is to aver that his product is different from the
patented one, courts have adopted the doctrine of equivalents
which recognizes that minor modifications in a patented invention
are sufficient to put the item beyond the scope of literal
infringement.12 Thus, according to this doctrine, “(a)n
infringement also occurs when a device appropriates a prior
invention by incorporating its innovative concept and, albeit with
some modification and change, performs substantially the same
function in substantially the same way to achieve substantially the
same result.”13 The reason for the doctrine of equivalents is that to
permit the imitation of a patented invention which does not copy
any literal detail would be to convert the protection of the patent
grant into a hollow and useless thing. Such imitation would leave
room for—indeed encourage—the unscrupulous copyist to make
_______________
10Rollo, p. 21.
11Rollo, p. 12.
12 Studiengesellschaft Kohle mbH v. Eastman Kodak
Company, supra.
13 Continental Oil Company v. Cole, 634 F. 2d 188 at 191 (1981).
345
VOL. 226, SEPTEMBER 13, 1993 345
Godines vs. Court of Appeals
unimportant and insubstantial changes and substitutions in the
patent which, though adding nothing, would be enough to take the
copied matter outside the claim, and hence outside the reach of the
law.14
In this case, the trial court observed:
“Defendant’s witness Eduardo Cañete, employed for 11 years as
welder of the Ozamis Engineering, and therefore actually involved
in the making of the floating power tillers of defendant tried to
explain the difference between the floating power tillers made by
the plaintiff and the power tillers made by the defendant. But a
careful examination between the two power tillers will show that
they will operate on the same fundamental principles. And,
according to established jurisprudence, in infringement of patent,
similarities or differences are to be determined, not by the names
of things, but in the light of what elements do, and substantial,
rather than technical, identity in the test. More specifically, it is
necessary and sufficient to constitute equivalency that the same
function can be performed in substantially the same way or
manner, or by the same or substantially the same, principle or
mode of operation; but where these tests are satisfied, mere
differences of form or name are immaterial. x x x”15
It also stated:
“To establish an infringement, it is not essential to show that the
defendant adopted the device or process in every particular; Proof
of an adoption of the substance of the thing will be sufficient. ‘In
one sense,’ said Justice Brown, ‘it may be said that no device can
be adjudged an infringement that does not substantially
correspond with the patent. But another construction, which would
limit these words to exact mechanism described in the patent,
would be so obviously unjust that no court could be expected to
adopt it. x x x.’
The law will protect a patentee against imitation of his patent
by other forms and proportions. If two devices do the same work in
substantially the same way, and accomplish substantially the
same result, they are the same, even though they differ in name, dealer, or who otherwise clothes the goods with such appearance
form, or shape.”16 as shall deceive the public and defraud another of his legitimate
trade. x x x.
_______________ xxx xxx x x x”
Considering the foregoing, we find no reversible error in the
14 AGBAYANI, COMMENTARIES AND JURISPRUDENCE decision of the Court of Appeals affirming with modification the
ON THE COMMERCIAL LAWS OF THE PHILIPPINES, 489 (Vol. decision of the trial court.
2, 1986). WHEREFORE, premises considered, the decision of the Court
15 Rollo, pp. 21-22. of Appeals is hereby AFFIRMED and this petition DENIED for
16 Rollo, pp. 20-21. lack of merit.
346 Bidin, Melo and Vitug, JJ., concur.
346 SUPREME COURT REPORTS ANNOTATED Feliciano, (Chairman), J., On official leave.
Godines vs. Court of Appeals 347
We pronounce petitioner liable for infringement in accordance with VOL. 226, SEPTEMBER 14, 1993 347
Section 37 of Republic Act No. 165, as amended, providing, inter Alvarado vs. Gaviola, Jr.
alia: Petition denied. Appealed decision affirmed.
“Section 37. Right of Patentees.—A patentee shall have the Note.—Proof of damages is necessary in unfair competition and
exclusive right to make, use and sell the patented machine, article trademark infringement and if no proof is submitted, the aggrieved
or product, and to use the patented process for the purpose of party is entitled to nominal damages of P1,000.00 (Del Monte
industry or commerce, throughout the territory of the Philippines Corporation vs. Court of Appeals, 181 SCRA 410).
for the terms of the patent; and such making, using, or selling by
any person without the authorization of the patentee constitutes
infringement of the patent.” (Italics ours) 9. United States v. Adams, 383 U.S. 39 (1966)
As far as the issue regarding unfair competition is concerned,
suffice it to say that Republic Act No. 166, as amended, United States v. Adams
provides, inter alia:
“Sec. 29. Unfair competition, rights and remedies.—x x x.
No. 55
xxx xxx xxx
In particular, and without in any way limiting the scope of
unfair competition, the following shall be deemed guilty of unfair Argued October 14, 1965
competition:
(a) Any person, who in selling his goods shall give them the Decided February 21, 1966
general appearance of goods of another manufacturer or dealer,
either as to the goods themselves or in the wrapping of the 383 U.S. 39
packages in which they are contained, or the devices or words
thereon, or in any other feature of their appearance, which would Syllabus
be likely to influence purchasers that the goods offered are those of
a manufacturer or dealer other than the actual manufacturer or
Respondents sued the Government under 28 U.S. C. §1498 patent. Graham v. John Deere Co., ante, p. 383 U. S. 1. Pp. 383 U.
charging infringement and breach of contract to compensate for use S. 48-52.
of a wet battery on which a patent had been issued to respondent
Adams. The battery consisted of a magnesium electrode (anode) Page 383 U. S. 40
and a cuprous chloride electrode (cathode) placed in a container with
water to be supplied as the electrolyte, providing a constant voltage
3. The Adams battery was novel. Pp. 383 U. S. 48-51.
and current without the use of acids. Despite initial disbelief in the
battery's efficacy by government experts to whose attention Adams
brought his invention, the Government ultimately (but without (a) The fact that it was water-activated set it apart from the prior
notifying Adams) put the battery to many uses. In opposition to art. Sinclair Carroll Co. v. Interchemical Corp., 325 U. S. 327,
respondents' suit, the Government claimed the device unpatentable distinguished. Pp. 383 U. S. 48-50.
because the use of magnesium and cuprous chloride to perform the
function shown by Adams had been previously well known in the art (b) The combination of magnesium and cuprous chloride was novel
and their combination represented no significant change compared in the light of the prior art. P. 383 U. S. 50.
to the prior art wet battery designs such as those using a zinc anode
and silver chloride cathode for which magnesium and cuprous (c) The use of magnesium for zinc and cuprous chloride for silver
chloride were known substitutes. The Court of Claims adopted the chloride did not involve merely equivalent substitutes, as is
Trial Commissioner's finding that the patent was valid and infringed evidenced by the fact that the Adams battery had different operating
by some of the accused devices. Six months later, following characteristics from those of the batteries relied upon by the
respondents' motion to amend the judgment, that court found no Government. Pp. 383 U. S. 50-51.
breach of contract. More than 90 days after the initial judgment, but
less than that period after the contract decision, the Government 4. The Adams battery was nonobvious. Pp. 383 U. S. 51-52.
sought a time extension for review as to the issue of patent validity.
Such review was later granted though service on respondents of the
(a) Though each of the battery's elements was well known in the
petition for writ of certiorari was delayed beyond the time prescribed
prior art, to combine them as Adams did required that a person
by this Court's rules.
reasonably skilled in that art ignore that open-circuit batteries which
heated in normal use were not practical, and that water-activated
Held: batteries were successful only when combined with electrolytes
harmful to the use of magnesium. Pp. 383 U. S. 51-52.
1. The petition for certiorari was timely, since the 90-day filing period
commenced not with the initial judgment, but with the judgment on (b) Noted experts had expressed initial disbelief in the Adams
the contract issue; nor did failure to comply with the Court's rules as battery. P. 383 U. S. 52.
to service of the petition bar this review, since the service
requirements therein are not jurisdictional, and no prejudice resulted
(c) In a crowded art replete with a century and a half of advance, the
from the Government's inadvertent failure to meet those
Patent Office could find no reference to cite against the Adams
requirements. Pp. 383 U. S. 41-42.
application. P. 383 U. S. 52.
2. The Adams patent is valid since it satisfied the separate tests of
165 Ct.Cl. 576, 330 F.2d 622, affirmed.
novelty, nonobviousness, and utility required for issuance of a
10. GOODYEAR TIRE & RUBBER CO., Inc., et al. v. RAY-O-
VAC CO.
No. 262.
Argued: Feb. 2, 1944.
Decided: Feb. 28, 1944.
 opinion, ROBERTS [HTML]
 dissent, BLACK [HTML]
Messrs. William E. Chilton and Albert R. Golrick, both of
Cleveland, Ohio, for petitioners.
Messrs. Bernard A. Schroeder, of Chicago, Ill., and Gerhard
A. Gesell, of Washington, D.C., for respondent.
TOP
Mr. Justice ROBERTS delivered the opinion of the Court.
This case involves the validity and alleged infringement of
the Anthony Patent No. 2,198,413, issued April 23, 1940.
The District Court held the patent valid and infringed1 and
its judgment was affirmed by the Circuit Court of Appeals.2
The patent, a very narrow one in a crowded art, is for a
leakproof dry cell for a flash light battery. The conventional
dry cell embodies a cup-like zinc electrode acting as a
container for a central carbon electrode, electrolyte, and
depolarizing mix. The bottom enclosure is the terminal for
one electrode, the top enclosure for the other. The
electrolyte is a viscous liquid composed of ammonium
chloride, zinc chloride, water and starch. Use of the battery
causes erosion of the zinc and eventually the mixture leaks
through the container. A short circuit, or long continuous
use, causes the formation of solids as the zinc is eaten
away. The resultant expansion of the cell contents, due to
the weakness of the zinc walls, causes bulging, breaking,
and seepage. The escaping liquid tends to injure the metal
walls of the flash light casing.
Dry cells have been used in flash lights for many years. The
tendency of the cells to damage flash light containers by
leakage, bulging, and freezing in the container had long
plagued the industry. So much so that most manufacturers
attached warning notices to their flash light batteries
advising users not to allow them to remain in the flash light
for extended periods of non-use and to remove a celll
promptly upon ascertaining that it was dead.
No patent in the prior art addressed itself to the problem of
preventing both leakage and swelling in a dry cell. At the
time of the Anthony application flash light cells were
commonly encased in a paper coating which might or might
not be waterproofed, or in some other similar casing for
purposes of insulation from the case. In the patent in suit
Anthony calls attention to the existing difficulties and states
that his invention is for an improved protective casing which
will prevent fluids from leaking out of the cell and causing
injury to the case or other dry cells within it. He also
adverts to the tendency of the cells to swell after a certain
time and associates this swelling with the leaking. He states
that the object of his invention is to protect the side walls of
the zinc cup by providing a strong metal sheath which will
closely and rigidly confine the cell to a given length and
diameter and, while providing such a sheath, to insulate it
from both terminals so as to render unnecessary the use of
an insulating over or label to prevent the cell from short
circuiting by contact with the side walls of the case. To
accomplish his objects Anthony used the ordinary type of
dry cell having circuit terminals at opposite ends, one
electrode being a cylindrical zinc cup, the other a centrally
placed carbon electrode, in electrolyte and depolarizing mix,
the bottom closure affording a terminal for one electrode
and the top for the other. Around this conventional
combination he placed an insulating material and an outside
protecting metal sheath which would enclose the insulated
side walls of the zinc cup and tightly embrace both upper
and lower closures to prevent leakage.
The claims in suit are Nos. 1, 2, and 3. If 1 is good, 2 and 3
are also. We, therefore, quote 1:
'A leak-immunized flash light dry-cell provided with circuit
terminals at opposite ends, comprising: a hollow cylindrical
zinc metal electrode containing electrolyte; a centrally
disposed carbon electrode and depolarizing-mix in said
electrolyte; a bottom closure for the cell affording a
terminal for one of the electrodes; a top closure for the cell
provided with a terminal for the other electrode, electrically
insulated from the first mentioned terminal; and a
protecting sheet-metal sheath insulated from both of said
electrodes and enclosing the side walls of said metal
electrode and tightly embracing said closures so as to
prevent leakage of the electrolyte from the unit.'
The District Judge made findings, which have support in the
evidence, to the following effect: That the problem
presented was old and no solution was attained prior to
Anthony's invention; that the respondent began marketing
the patented cell in 1939 and was the first to guarantee its
product against sticking in the flash light case; that the cell
met with immediate commercial success due to the
advantages of its construction and not to extensive
advertising; that its advantages were recognized by the
Army and other governmental agencies and were
demonstrated by reliable tests. In his opinion he examined
the prior art and showed that none of the workers in the art
had met the problems of leakage and swelling in the way
suggested by Anthony and that most of the cited patents
had not in fact been addressed to these problems.
With respect to the charge of infringement, the court found,
on sufficient evidence: That the petitioners consciously
copied the respondent's commercial cell, which was made in
accordance with the claims of the patent; that the
petitioners' cell infringed the claims in suit, since the
petitioners' substitutions of structure and material were no
more than the choice of mechanical alternatives and did not
avoid the practice of the principle disclosed by the patent.
The Circuit Court of Appeals reexamined the findings in the
light of the evidence and accepted them. It must be a
strong case in which this court will set aside these
concurrent findings of two courts.3 We think this is not such
a case.
Viewed after the event, the means Anthony adopted seem
simple and such as should have been obvious to those who
worked in the field, but this is not enough to negative
invention.4 During a period of half a century, in which the
use of flash light batteries increased enormously, and the
manufacturers of flash light cells were conscious of the
defects in them, no one devised a method of curing such
defects. Once the method was discovered it commended
itself to the public as evidenced by marked commercial
success. These factors were entitled to weight in
determining whether the improvement amounted to
invention and should, in a close case, tip the scales in favor
of patentability.5 Accepting, as we do, the findings below,
we hold the patent valid and infringed.
The petitioners renew here contentions, based on asserted
insufficiency of description of the invention and on alleged
file-wrapper estoppel, which the courts below overruled. We
have considered these defenses but conclude that the
proofs do not sustain them.
Decree affirmed.
Affirmed.
TOP
Mr. Justice BLACK, dissenting.
Those who strive to produce and distribute goods in a
system of free competitive enterprise should not be
handicapped by patents based on a 'shadow of a shade of
an idea.' Atlantic Works v. Brady, 107 U.S. 192, 200, 2
S.Ct. 225, 231, 27 L.Ed. 438. The practice of granting
patents for microscopic structural or mechanical
improvements inevitably must reduce the United States
Patent Office to a mass production factory for unearned
special privileges which serve no purpose except unfairly to
harass the honest pursuit of business. If the patentee here
has 'discovered' anything, it is that the creamy substance in
a dry cell will not leak through a steel jacket which covers
and is securely fastened to the ends of the cell. For that
alleged discovery this patent is today upheld. I do not deny
that someone, somewhere, sometime, made the discovery
that liquids would not leak through leak-proof solids. My
trouble is that, despite findings to the contrary, 1 I cannot
agree that this patentee is that discoverer. My disagreement
is not based solely on the narrow ground that the record
shows previous patents have been issued to others who put
jackets of metal and other substances around dry cells.
Antiquarians tell us that the use of solid containers to hold
liquids predated the dawn of written history. That the
problem of the quality and strength of the walls of such
containers was one to which ancient people turned their
attention appears from the widespread currency at an early
age of the maxim that 'new wine should not be put in old
bottles.' It is impossible for me to believe that Congress
intended to grant monopoly privileges to persons who do no
more than apply knowledge which has for centuries been
the universal possession of all the earth's people even those
of the most primitive civilizations.
Mr. Justice DOUGLAS and Mr. Justice MURPHY concur in this
opinion.
Mr. Justice JACKSON is of opinion the judgment below
should be reversed for the reason that, invention being
doubtful, the Court of Appeals relied upon commercial
success of the product without adequate findings or
evidence as to whether such alleged success was due to the
product or to the phenomenal increase in demand due to
the war and to the advantages of marketing contracts with
mail-order houses.
CC∅ | Transformed by Public.Resource.Org
1
45 F.Supp. 927.
2
7 Cir., 136 F.2d 159.
3
Williams Co. v. United Shoe Machinery Corp., 316 U.S. 364,
367, 62 S.Ct. 1179, 1181, 86 L.Ed. 1537.
4
Loom Company v. Higgins, 105 U.S. 580, 589, 591, 26
L.Ed. 1177; The Barbed Wire Patent (Washburn & Moen
Mfg. Co. v. Beat 'Em All Barbed-Wire Co.), 143 U.S. 275,
277, 283, 12 S.Ct. 443, 444, 446, 36 L.Ed. 154; Krementz
v. S. Cottle Co., 148 U.S. 556, 13 S.Ct. 719, 37 L.Ed. 558;
Expanded Metal Co. v. Bradford, 214 U.S. 366, 381, 29
S.Ct. 652, 655, 53 L.Ed. 1034; Diamond Rubber Co. v.
Consolidated Rubber Tire Co., 220 U.S. 428, 434, 435, 31
S.Ct. 444, 447, 55 L.Ed. 527.
5
Smith v. Goodyear Dental Vulcanite Co., 93 U.S. 486, 495,
496, 23 L.Ed. 952; Magowan v. New York Belting & Packing
Co., 141 U.S. 332, 343, 12 S.Ct. 71, 75, 35 L.Ed. 781;
Topliff v. Topliff, 145 U.S. 156, 163, 164, 12 S.Ct. 825, 828,
829, 36 L.Ed. 658; Keystone Mfg. Co. v. Adams, 151 U.S.
139, 143, 14 S.Ct. 295, 296, 38 L.Ed. 103; Potts v.
Creager, 155 U.S. 597, 609, 15 S.Ct. 194, 199, 39 L.Ed.
275; Minerals Separation, Ltd., v. Hyde, 242 U.S. 261, 270,
37 S.Ct. 82, 86, 61 L.Ed. 286; Smith v. Show, 294 U.S. 1,
7, 14, 55 S.Ct. 279, 281, 284, 79 L.Ed. 721; Paramount
Publix Corp. v. American Tri-Ergon Corp., 294 U.S. 464,
474, 55 S.Ct. 449, 453, 79 L.Ed. 997.
1 inside the press, thus making it difficult to make the necessary
This Court in 1884 declared that 'whether the thing
patented amounts to a patentable invention' is a question of
law to be decided by the courts. Mahn v. Harwood, 112 U.S.
354, 358, 5 S.Ct. 174, 177, 6 S.Ct. 451, 28 L.Ed. 665. On
numerous occasions both before and since that case, this
Court has invalidated patents on the ground that the alleged
discoveries failed to measure up to the legal standards for
invention. See cases collected United States Supreme Court
Digest (West 1943), vol. 11, Patents, k16-74.
11. Diamond v. Diehr, 450 U.S. 175 (1981)
Diamond v. Diehr
No. 79-1112
Argued October 14, 1980
Decided March 3, 1981
450 U.S. 175
CERTIORARI TO TIE UNITED STATES COURT OF
CUSTOMS AND PATENT APPEALS
Syllabus
Respondents filed a patent application claiming invention for a
process for molding raw, uncured synthetic rubber into cured
precision products. While it was possible, by using well-known time,
temperature, and cure relationships, to calculate by means of an
established mathematical equation when to open the molding press
and remove the cured product, according to respondents, the
industry had not been able to measure precisely the temperature
computations to determine the proper cure time. Respondents
characterized their contribution to the art to reside in the process of
constantly measuring the temperature inside the mold and feeding
the temperature measurements into a computer that repeatedly
recalculates the cure time by use of the mathematical equation and
then signals a device to open the press at the proper time. The
patent examiner rejected respondents' claims on the ground that
they were drawn to nonstatutory subject matter under 35 U.S.C. §
101, which provides for the issuance of patents to
"[w]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof. . . ."
The Patent and Trademark Office Board of Appeals agreed, but the
Court of Customs and Patent Appeals reversed.
Held: Respondents' claims recited subject matter that was eligible for
patent protection under § 101. Pp. 450 U. S. 181-193.
(a) For purposes of § 101, a "process" is
"an act, or a series of acts, performed upon the subject matter to be
transformed and reduced to a different state or thing. If new and
useful, it is just as patentable as is a piece of machinery. . . . The
machinery pointed out as suitable to perform the process may or
may not be new or patentable."
Cochrane v. Deener, 94 U. S. 780, 94 U. S. 788. Industrial
processes such as respondents' claims for transforming raw,
uncured synthetic rubber into a different state or thing are the types
which have historically been eligible to receive patent law protection.
Pp. 450 U. S. 181-184.
(b) While a mathematical formula, like a law of nature, cannot be the
subject of a patent, cf. Gottschalk v. Benson, 409 U. S. 63; Parker v.
Page 450 U. S. 176
Flook, 437 U. S. 54, respondents do not seek to patent a
mathematical formula, but instead seek protection for a process of
curing synthetic rubber. Although their process employs a well-
known mathematical equation, they do not seek to preempt the use
of that equation, except in conjunction with all of the other steps in
their claimed process. A claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula, computer program, or digital computer.
Respondents' claims must be considered as a whole, it being
inappropriate to dissect the claims into old and new elements and
then to ignore the presence of the old elements in the analysis. The
questions of whether a particular invention meets the "novelty"
requirements of 35 U.S.C. § 102 or the "nonobviousness"
requirements of § 103 do not affect the determination of whether the
invention falls into a category of subject matter that is eligible for
patent protection under § 101. Pp. 450 U. S. 185-191.
(c) When a claim containing a mathematical formula implements or
applies the formula in a structure or process which, when considered
as a whole, is performing a function which the patent laws were
designed to protect (e.g., transforming or reducing an article to a
different state or thing), then the claim satisfies § 101's requirements.
Pp. 450 U. S. 191-193.
602 F.2d 982, affirmed.
REHNQUIST, J., delivered the opinion of the Court, in which
BURGER, C.J., and STEWART, WHITE, and POWELL, JJ., joined.
STEVENS, J., filed a dissenting opinion, in which BRENNAN,
MARSHALL, and BLACKMUN, JJ., joined, post, p. 450 U. S. 193.
Page 450 U. S. 177
JUSTICE REHNQUIST delivered the opinion of the Court.
We granted certiorari to determine whether a process for curing
synthetic rubber which includes in several of its steps the use of a
mathematical formula and a programmed digital computer is
patentable subject matter under 35 U.S.C. § 101.
I
The patent application at issue was filed by the respondents on
August 6, 1975. The claimed invention is a process for molding raw,
uncured synthetic rubber into cured precision products. The process
uses a mold for precisely shaping the uncured material under heat
and pressure and then curing the synthetic rubber in the mold so that
the product will retain its shape and be functionally operative after
the molding is completed. [Footnote 1]
Respondents claim that their process ensures the production of
molded articles which are properly cured. Achieving the perfect cure
depends upon several factors, including the thickness of the article to
be molded, the temperature of the molding process, and the amount
of time that the article is allowed to remain in the press. It is possible,
using well-known time, temperature, and cure relationships, to
calculate by means of the Arrhenius equation [Footnote 2] when to
open the press
Page 450 U. S. 178
and remove the cured product. Nonetheless, according to the
respondents, the industry has not been able to obtain uniformly
accurate cures, because the temperature of the molding press could
not be precisely measured, thus making it difficult to do the
necessary computations to determine cure time. [Footnote 3]
Because the temperature inside the press has heretofore been
viewed as an uncontrollable variable, the conventional industry
practice has been to calculate the cure time as the shortest time in
which all parts of the product will definitely be cured, assuming a
reasonable amount of mold-opening time during loading and
unloading. But the shortcoming of this practice is that operating with
an uncontrollable variable inevitably led in some instances to
overestimating the mold-opening time and overcuring the rubber,
and in other instances to underestimating that time and undercuring
the product. [Footnote 4]
Respondents characterize their contribution to the art to reside in the
process of constantly measuring the actual temperature inside the
mold. These temperature measurements are then automatically fed
into a computer which repeatedly recalculates the cure time by use
of the Arrhenius equation.
Page 450 U. S. 179
When the recalculated time equals the actual time that has elapsed
since the press was closed, the computer signals a device to open
the press. According to the respondents, the continuous measuring
of the temperature inside the mold cavity, the feeding of this
information to a digital computer which constantly recalculates the
cure time, and the signaling by the computer to open the press are
all new in the art.
The patent examiner rejected the respondents' claims on the sole
ground that they were drawn to nonstatutory subject matter under 35
U.S.C. § 101. [Footnote 5] He determined that those
Page 450 U. S. 180
steps in respondents' claims that are carried out by a computer
under control of a stored program constituted nonstatutory subject
matter under this Court's decision in Gottschalk v. Benson, 409 U. S.
63 (1972). The remaining steps -- installing rubber in the press and
the subsequent closing of the
Page 450 U. S. 181
press -- were "conventional and necessary to the process, and
cannot be the basis of patentability." The examiner concluded that
respondents' claims defined and sought protection of a computer
program for operating a rubber-molding press.
The Patent and Trademark Office Board of Appeals agreed with the
examiner, but the Court of Customs and Patent Appeals reversed. In
re Diehr, 602 F.2d 892 (1979). The court noted that a claim drawn to
subject matter otherwise statutory does not become nonstatutory
because a computer is involved. The respondents' claims were not
directed to a mathematical algorithm or an improved method of
calculation, but rather recited an improved process for molding
rubber articles by solving a practical problem which had arisen in the
molding of rubber products.
The Commissioner of Patents and Trademarks sought certiorari,
arguing that the decision of the Court of Customs and Patent
Appeals was inconsistent with prior decisions of this Court. Because
of the importance of the question presented, we granted the writ. 445
U.S. 926 (1980).
II
Last Term, in Diamond v. Chakrabarty, 447 U. S. 303 (1980), this
Court discussed the historical purposes of the patent laws, and, in
particular, 35 U.S.C. § 101. As in Chakrabarty, we must here
construe 35 U.S.C. § 101, which provides:
"Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title. [Footnote 6] "
Page 450 U. S. 182
In cases of statutory construction, we begin with the language of the
statute. Unless otherwise defined, "words will be interpreted as
taking their ordinary, contemporary common meaning," Perrin v.
United States, 444 U. S. 37, 444 U. S. 42(1979), and, in dealing with
the patent laws, we have more than once cautioned that
"courts should not read into the patent laws limitations and conditions
which the legislature has not expressed.'" Diamond v. Chakrabarty,
supra, at 447 U. S. 308, quoting United States v. Dubilier Condenser
Corp., 289 U. S. 178, 289 U. S. 199 (1933).
The Patent Act of 1793 defined statutory subject matter as "any new
and useful art, machine, manufacture or composition of matter, or
any new or useful improvement [thereof]." Act of Feb. 21, 1793, ch.
11, § 1, 1 Stat. 318. Not until the patent laws were recodified in 1952
did Congress replace the word "art" with the word "process." It is that
latter word which we confront today, and, in order to determine its
meaning, we may not be unmindful of the Committee Reports
accompanying the 1952 Act which inform us that Congress intended
statutory subject matter to "include anything under the sun that is
made by man." S.Rep. No.1979, 82d Cong., 2d Sess., 5 (1952);
H.R.Rep. No.1923, 82d Cong., 2d Sess., 6 (1952).
Although the term "process" was not added to 35 U.S.C. § 101 until
1952, a process has historically enjoyed patent protection because it
was considered a form of "art" as that term was used in the 1793
Act. [Footnote 7] In defining the nature of a patentable process, the
Court stated:
"That a process may be patentable, irrespective of the
Page 450 U. S. 183
particular form of the instrumentalities used, cannot be disputed. . . .
A process is a mode of treatment of certain materials to produce a
given result. It is an act, or a series of acts, performed upon the
subject matter to be transformed and reduced to a different state or
thing. If new and useful, it is just as patentable as is a piece of
machinery. In the language of the patent law, it is an art. The
machinery pointed out as suitable to perform the process may or
may not be new or patentable; whilst the process itself may be
altogether new, and produce an entirely new result. The process
requires
Page 450 U. S. 184
that certain things should be done with certain substances, and in a
certain order; but the tools to be used in doing this may be of
secondary consequence."
Cochrane v. Deener, 94 U. S. 780, 94 U. S. 787-788 (1877).
Analysis of the eligibility of a claim of patent protection for a
"process" did not change with the addition of that term to § 101.
Recently, in Gottschalk v. Benson, 409 U. S. 63 (1972), we repeated
the above definition recited in Cochrane v. Deener,adding:
"Transformation and reduction of an article 'to a different state or
thing' is the clue to the patentability of a process claim that does not
include particular machines."
409 U.S. at 409 U. S. 70.
Analyzing respondents' claims according to the above statements
from our cases, we think that a physical and chemical process for
molding precision synthetic rubber products falls within the § 101
categories of possibly patentable subject matter. That respondents'
claims involve the transformation of an article, in this case raw,
uncured synthetic rubber, into a different state or thing cannot be
disputed. The respondents' claims describe in detail a step-by-step
method for accomplishing such, beginning with the loading of a mold
with raw, uncured rubber and ending with the eventual opening of
the press at the conclusion of the cure. Industrial processes such as
this are the types which have historically been eligible to receive the
protection of our patent laws. [Footnote 8]
Page 450 U. S. 185
III
Our conclusion regarding respondents' claims is not altered by the
fact that, in several steps of the process, a mathematical equation
and a programmed digital computer are used. This Court has
undoubtedly recognized limits to § 101, and every discovery is not
embraced within the statutory terms. Excluded from such patent
protection are laws of nature, natural phenomena, and abstract
ideas. See Parker v. Flook, 437 U. S. 584 (1978); Gottschalk v.
Benson, supra at 409 U. S. 67; Funk Bros. Seed Co. v. Kalo
Inoculant Co., 333 U. S. 127, 333 U. S. 130 (1948). "An idea of itself
is not patentable," Rubber-Tip Pencil Co. v. Howard, 20 Wall.
498, 87 U. S. 507 (1874).
"A principle, in the abstract, is a fundamental truth; an original cause;
a motive; these cannot be patented, as no one can claim in either of
them an exclusive right."
Le Roy v. Tatham, 14 How. 156, 55 U. S. 175 (1853). Only last
Term, we explained:
"[A] new mineral discovered in the earth or a new plant found in the
wild is not patentable subject matter|"
"[A] new mineral discovered in the earth or a new plant found in the
wild is not patentable subject matter. Likewise, Einstein could not
patent his celebrated law that E=mc^2; nor could Newton have
patented the law of gravity. Such discoveries are 'manifestations of .
. . nature, free to all men and reserved exclusively to none.'"
Diamond v. Chakrabarty, 447 U.S. at 447 U. S. 309, quoting Funk
Bros. Seed Co. v. Kalo Inoculant Co., supra at 333 U. S. 130.
Our recent holdings in Gottschalk v. Benson, supra, and Parker v.
Flook, supra, both of which are computer-related, stand for no more
than these long-established principles. In Benson, we held
unpatentable claims for an algorithm used to convert binary code
decimal numbers to equivalent pure binary numbers. The sole
practical application of the algorithm was in connection with the
programming of a
Page 450 U. S. 186
general purpose digital computer. We defined "algorithm" as a
"procedure for solving a given type of mathematical problem," and
we concluded that such an algorithm, or mathematical formula, is like
a law of nature, which cannot be the subject of a patent. [Footnote 9]
Parker v. Flook, supra, presented a similar situation. The claims
were drawn to a method for computing an "alarm limit." An "alarm
limit" is simply a number, and the Court concluded that the
application sought to protect a formula for computing this number.
Using this formula, the updated alarm limit could be calculated if
several other variables were known. The application, however, did
not purport to explain how these other variables were to be
determined, [Footnote 10] nor
Page 450 U. S. 187
did it purport
"to contain any disclosure relating to the chemical processes at work,
the monitoring of process variables, or the means of setting off an
alarm or adjusting an alarm system. All that it provides is a formula
for computing an updated alarm limit."
437 U.S. at 437 U. S. 586.
In contrast, the respondents here do not seek to patent a
mathematical formula. Instead, they seek patent protection for a
process of curing synthetic rubber. Their process admittedly employs
a well-known mathematical equation, but they do not seek to
preempt the use of that equation. Rather, they seek only to foreclose
from others the use of that equation in conjunction with all of the
other steps in their claimed process. These include installing rubber
in a press, closing the mold, constantly determining the temperature
of the mold, constantly recalculating the appropriate cure time
through the use of the formula and a digital computer, and
automatically opening the press at the proper time. Obviously, one
does not need a "computer" to cure natural or synthetic rubber, but if
the computer use incorporated in the process patent significantly
lessens the possibility of "overcuring" or "undercuring," the process
as a whole does not thereby become unpatentable subject matter.
Our earlier opinions lend support to our present conclusion that a
claim drawn to subject matter otherwise statutory does not become
nonstatutory simply because it uses a mathematical formula,
computer program, or digital computer. In Gottschalk v. Benson, we
noted: "It is said that the decision precludes a patent for any program
servicing a computer. We do not 90 hold." 409 U.S. at 409 U. S. 71.
Similarly, in Parker v. Flook, we stated that "a process is not
unpatentable simply because it contains a law of nature or a
mathematical algorithm." 437 U.S. at 437 U. S. 590. It is now
commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of
patent protection. See, e.g., 333 U. S. Seed
Page 450 U. S. 188
Co. v. Kalo Inoculant Co., 333 U. S. 127 (1948); Ebel Process Co. v.
Minnesota & Ontario Paper Co., 261 U. S. 45 (1923); Cochrane v.
Deener, 94 U. S. 780 (1877) O'Reilly v. Morse, 15 How. 62 (1854);
and Le Roy v. Tatham, 14 How. 156 (1853). As Justice Stone
explained four decades ago:
"While a scientific truth, or the mathematical expression of it, is not a
patentable invention, a novel and useful structure created with the
aid of knowledge of scientific truth may be."
Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U. S.
86, 306 U. S. 94 (1939). [Footnote 11]
We think this statement in Mackay takes us a long way toward the
correct answer in this case. Arrhenius' equation is not patentable in
isolation, but when a process for curing rubber is devised which
incorporates in it a more efficient solution of the equation, that
process is, at the very least, not barred at the threshold by § 101.
In determining the eligibility of respondents' claimed process for
patent protection under § 101, their claims must be considered as a
whole. It is inappropriate to dissect the claims into old and new
elements and then to ignore the presence of the old elements in the
analysis. This is particularly true in a process claim, because a new
combination of steps in a process may be patentable even though all
the constituents of the combination were well known and in common
use before the combination was made. The "novelty" of any element
or steps in a process, or even of the
Page 450 U. S. 189
process itself, is of no relevance in determining whether the subject
matter of a claim falls within the § 101 categories of possibly
patentable subject matter. [Footnote 12]
It has been urged that novelty is an appropriate consideration under
§ 101. Presumably, this argument results from the language in § 101
referring to any "new and useful" process, machine, etc. Section 101,
however, is a general statement of the type of subject matter that is
eligible for patent protection "subject to the conditions and
requirements of this title." Specific conditions for patentability follow,
and § 102 covers in detail the conditions relating to novelty.
[Footnote 13]
Page 450 U. S. 190
The question, therefore, of whether a particular invention is novel is
"wholly apart from whether the invention falls into a category of
statutory subject matter." In re Bergy, 596 F.2d 952, 961 (CCPA
1979) (emphasis deleted). See also Nickola v. Peterson, 580 F.2d
898 (CA6 1978). The legislative history of the 1952 Patent Act is in
accord with this reasoning. The Senate Report stated:
"Section 101 sets forth the subject matter that can be patented,
'subject to the conditions and requirements of this title.' The
conditions under which a patent may be obtained follow, and Section
102 covers the conditions relating to novelty."
S.Rep. No.1979, 82d Cong., 2d Sess., 5 (1952) (emphasis supplied).
It is later stated in the same Report:
"Section 102, in general, may be said to describe the statutory
novelty required for patentability, and includes,
Page 450 U. S. 191
in effect, an amplification and definition of 'new' in section 101."
Id. at 6. Finally, it is stated in the "Revision Notes":
"The corresponding section of [the] existing statute is split into two
sections, section 101 relating to the subject matter for which patents
may be obtained, and section 102 defining statutory novelty and
stating other conditions for patentability."
Id. at 17. See also H.R.Rep. No.1923, 82d Cong., 2d Sess., 6, 7, and
17 (1952).
In this case, it may later be determined that the respondents' process
is not deserving of patent protection because it fails to satisfy the
statutory conditions of novelty under § 102 or nonobviousness under
§ 103. A rejection on either of these grounds does not affect the
determination that respondents' claims recited subject matter which
was eligible for patent protection under § 101.
IV
We have before us today only the question of whether respondents'
claims fall within the § 101 categories of possibly patentable subject
matter. We view respondents' claims as nothing more than a process
for molding rubber products, and not as an attempt to patent a
mathematical formula. We recognize, of course, that, when a claim
recites a mathematical formula (or scientific principle or phenomenon
of nature), an inquiry must be made into whether the claim is seeking
patent protection for that formula in the abstract. A mathematical
formula, as such, is not accorded the protection of our patent
laws, Gottschalk v. Benson, 409 U. S. 63 (1972), and this principle
cannot be circumvented by attempting to limit the use of the formula
to a particular technological environment. Parker v. Flook, 437 U. S.
584 (1978). Similarly, insignificant post-solution activity will not
transform
Page 450 U. S. 192
an unpatentable principle into a patentable process. Ibid. [Footnote
14] To hold otherwise would allow a competent draftsman to evade
the recognized limitations on the type of subject matter eligible for
patent protection. On the other hand, when a claim containing a
mathematical formula implements or applies that formula in a
structure or process which, when considered as a whole, is
performing a function which the patent laws were designed to protect
(e.g.,transforming or reducing an article to a different state or thing),
then the claim satisfies the requirements of § 101. Because we do
not view respondents' claims as an attempt to patent a mathematical
formula, but rather to be drawn to an industrial process
Page 450 U. S. 193
for the molding of rubber products, we affirm the judgment of the
Court of Customs and Patent Appeals. [Footnote 15]
It is so ordered.
[Footnote 1]
A "cure" is obtained by mixing curing agents into the uncured
polymer in advance of molding, and then applying heat over a period
of time. If the synthetic rubber is cured for the right length of time at
the right temperature, it becomes a usable product.
[Footnote 2]
The equation is named after its discoverer, Svante Arrhenius, and
has long been used to calculate the cure time in rubber-molding
presses. The equation can be expressed as follows:
ln v = CZ + x
wherein ln v is the natural logarithm of v, the total required cure time;
C is the activation constant, a unique figure for each batch of each
compound being molded, determined in accordance with rheometer
measurements of each batch; Z is the temperature in the mold; and x
is a constant dependent on the geometry of the particular mold in the
press. A rheometer is an instrument to measure flow of viscous
substances.
[Footnote 3]
During the time a press is open for loading, it will cool. The longer it
is open, the cooler it becomes and the longer it takes to reheat the
press to the desired temperature range. Thus, the time necessary to
raise the mold temperature to curing temperature is an unpredictable
variable. The respondents claim to have overcome this problem by
continuously measuring the actual temperature in the closed press
through the use of a thermocouple.
[Footnote 4]
We note that the petitioner does not seriously contest the
respondents' assertions regarding the inability of the industry to
obtain accurate cures on a uniform basis. See Brief for Petitioner 3.
[Footnote 5]
Respondents' application contained 11 different claims. Three
examples are claims 1, 2, and 11, which provide:
"1. A method of operating a rubber-molding press for precision
molded compounds with the aid of a digital computer, comprising:"
"providing said computer with a database for said press, including at
least,"
"natural logarithm conversion data (ln),"
"the activation energy constant (C) unique to each batch of said
compound being molded, and"
"a constant (x) dependent upon the geometry of the particular mold
of the press,"
"initiating an interval timer in said computer upon the closure of the
press for monitoring the elapsed time of said closure,"
"constantly determining the temperature (Z) of the mold at a location
closely adjacent to the mold cavity in the press during molding,"
"constantly providing the computer with the temperature (Z),"
"repetitively calculating in the computer, at frequent intervals during
each cure, the Arrhenius equation for reaction time during the cure,
which is"
"ln v = CZ + x"
"where v is the total required cure time,"
"repetitively comparing in the computer at said frequent intervals
during the cure each said calculation of the total required cure time
calculated with the Arrhenius equation and said elapsed time, and"
"opening the press automatically when a said comparison indicates
equivalence."
"2. The method of claim 1 including measuring the activation energy
constant for the compound being molded in the press with a
rheometer and automatically updating said data base within the
computer in the event of changes in the compound being molded in
said press as measured by said rheometer."
"* * * *"
"11. A method of manufacturing precision molded articles from
selected synthetic rubber compounds in an openable rubber molding
press having at least one heated precision mold, comprising:"
"(a) heating said mold to a temperature range approximating a
predetermined rubber curing temperature,"
"(b) installing prepared unmolded synthetic rubber of a known
compound in a molding cavity of predetermined geometry as defined
by said mold,"
"(c) closing said press to mold said rubber to occupy said cavity in
conformance with the contour of said mold and to cure said rubber
by transfer of heat thereto from said mold,"
"(d) initiating an interval timer upon the closure of said press for
monitoring the elapsed time of said closure,"
"(e) heating said mold during said closure to maintain the
temperature thereof within said range approximating said rubber
curing temperature,"
"(f) constantly determining the temperature of said mold at a location
closely adjacent said cavity thereof throughout closure of said press,"
"(g) repetitively calculating at frequent periodic intervals throughout
closure of said press the Arrhenius equation for reaction time of said
rubber to determine total required cure time v as follows:"
"ln v = cz + x"
"wherein c is an activation energy constant determined for said
rubber being molded and cured in said press, z is the temperature of
said mold at the time of each calculation of said Arrhenius equation,
and x is a constant which is a function of said predetermined
geometry of said mold,"
"(h) for each repetition of calculation of said Arrhenius equation
herein, comparing the resultant calculated total required cure time
with the monitored elapsed time measured by said interval timer,"
"(i) opening said press when a said comparison of calculated total
required cure time and monitored elapsed time indicates
equivalence, and"
"(j) removing from said mold the resultant precision molded and
cured rubber article."
[Footnote 6]
The word "process" is defined in 35 U.S.C. § 100(b):
"The term 'process' means process, art or method, and includes a
new use of a known process, machine, manufacture, composition of
matter, or material."
[Footnote 7]
In Corning v. Burden, 15 How. 252, 56 U. S. 267-268 (1854), this
Court explained:
"A process, eo nomine, is not made the subject of a patent in our act
of congress. It is included under the general term 'useful art.' An art
may require one or more processes or machines in order to produce
a certain result or manufacture. The term machine includes every
mechanical device or combination of mechanical powers and
devices to perform some function and produce a certain effect or
result. But where the result or effect is produced by chemical action,
by the operation or application of some element or power of nature,
or of one substance to another, such modes, methods, or operations
are called processes. A new process is usually the result of
discovery; a machine, of invention. The arts of tanning, dyeing,
making waterproof cloth, vulcanizing India rubber, smelting ores, and
numerous others are usually carried on by processes, as
distinguished from machines. One may discover a new and useful
improvement in the process of tanning, dyeing, &c. irrespective of
any particular form of machinery or mechanical device. And another
may invent a labor-saving machine by which this operation or
process may be performed, and each may be entitled to his patent.
As, for instance, A has discovered that, by exposing India rubber to a
certain degree of heat, in mixture or connection with certain metalic
salts, he can produce a valuable product, or manufacture; he is
entitled to a patent for his discovery, as a process or improvement in
the art, irrespective of any machine or mechanical device. B, on the
contrary, may invent a new furnace or stove, or steam apparatus, by
which this process may be carried on with much saving of labor and
expense of fuel, and he will be entitled to a patent for his machine as
an improvement in the art. Yet A could not have a patent for a
machine, or B for a process; but each would have a patent for the
means or method of producing a certain result, or effect, and not for
the result or effect produced. It is for the discovery or invention of
some practical method or means of producing a beneficial result or
effect that a patent is granted, and not for the result or effect itself. It
is when the term process is used to represent the means or method
of producing a result that it is patentable, and it will include all
methods or means which are not effected by mechanism or
mechanical combinations."
[Footnote 8]
We note that, as early as 1854, this Court approvingly referred to
patent eligibility of processes for curing rubber. See id. at56 U. S.
267; n. 7, supra. In Tilghman v. Proctor, 102 U. S. 707 (1881), we
referred to the original patent Charles Goodyear received on his
process for "vulcanizing" or curing rubber. We stated:
"That a patent can be granted for a process there can be no doubt.
The patent law is not confined to new machines and new
compositions of matter, but extends to any new and useful art or
manufacture. A manufacturing process is clearly an art within the
meaning of the law. Goodyear's patent was for a process, namely,
the process of vulcanizing india rubber by subjecting it to a high
degree of heat when mixed with sulphur and a mineral salt. The
apparatus for performing the process was not patented, and was not
material. The patent pointed out how the process could be effected,
and that was deemed sufficient."
Id. at 102 U. S. 722.
[Footnote 9]
The term "algorithm" is subject to a variety of definitions. The
petitioner defines the term to mean:
"'1. A fixed step-by-step procedure for accomplishing a given result;
usually a simplified procedure for solving a complex problem, also a
full statement of a finite number of steps. 2. A defined process or set
of rules that leads [sic] and assures development of a desired output
from a given input. A sequence of formulas and/or algebraic/logical
steps to calculate or determine a given task; processing rules.'"
Brief for Petitioner in Diamond v. Bradley, O.T. 1980, No. 79-855, p.
6, n. 12, quoting C. Sippl & R. Sippl, Computer Dictionary and
Handbook 23 (2d ed.1972). This definition is significantly broader
than the definition this Court employed in Benson and Flook. Our
previous decisions regarding the patentability of "algorithms" are
necessarily limited to the more narrow definition employed by the
Court, and we do not pass judgment on whether processes falling
outside the definition previously used by this Court, but within the
definition offered by the petitioner, would be patentable subject
matter.
[Footnote 10]
As we explained in Flook, in order for an operator using the formula
to calculate an updated alarm limit, the operator would need to know
the original alarm base, the appropriate margin of safety, the time
interval that should elapse between each updating, the current
temperature (or other process variable), and the appropriate
weighing factor to be used to average the alarm base and the current
temperature. 437 U.S. at 437 U. S. 586. The patent application did
not "explain how to select the approximate margin of safety, the
weighing factor, or any of the other variables." Ibid.
[Footnote 11]
We noted in Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U. S.
127, 333 U. S. 130 (1948):
"He who discovers a hitherto unknown phenomenon of nature has no
claim to a monopoly of it which the law recognizes. If there is to be
invention from such a discovery, it must come from the application of
the law of nature to a new and useful end."
Although we were dealing with a "product" claim in Funk Bros., the
same principle applies to a process claim. Gottschalk v. Benson, 409
U. S. 63, 409 U. S. 68 (1972).
[Footnote 12]
It is argued that the procedure of dissecting a claim into old and new
elements is mandated by our decision in Flook,which noted that a
mathematical algorithm must be assumed to be within the "prior art."
It is from this language that the petitioner premises his argument
that, if everything other than the algorithm is determined to be old in
the art, then the claim cannot recite statutory subject matter. The
fallacy in this argument is that we did not hold in Flook that the
mathematical algorithm could not be considered at all when making
the § 101 determination. To accept the analysis proffered by the
petitioner would, if carried to its extreme, make all inventions
unpatentable, because all inventions can be reduced to underlying
principles of nature which, once known, make their implementation
obvious. The analysis suggested by the petitioner would also
undermine our earlier decisions regarding the criteria to consider in
determining the eligibility of a process for patent protection. See,
e.g., Gottschalk v. Benson, supra; and Cochrane v. Deener, 94 U. S.
780(1877).
[Footnote 13]
Section 102 is titled "Conditions for patentability; novelty and loss of
right to patent," and provides:
"A person shall be entitled to a patent unless --"
"(a) the invention was known or used by others in this country, or
patented or described in a printed publication in this or a foreign
country, before the invention thereof by the applicant for patent, or"
"(b) the invention was patented or described in a printed publication
in this or a foreign country or in public use or on sale in this country
more than one year prior to the date of the application for patent in
the United States, or"
"(c) he has abandoned the invention, or"
"(d) the invention was first patented or caused to be patented, or was
the subject of an inventor's certificate, by the applicant or his legal
representatives or assigns in a foreign country prior to the date of the
application for patent in this country on an application for patent or
inventor's certificate filed more than twelve months before the filing of
the application in the United States, or"
"(e) the invention was described in a patent granted on an
application for patent by another filed in the United States before the
invention thereof by the applicant for patent, or on an international
application by another who has fulfilled the requirements of
paragraphs (1), (2), and (4) of section 371(c) of this title before the
invention thereof by the applicant for patent, or"
"(f) he did not himself invent the subject matter sought to be
patented, or"
"(g) before the applicant's invention thereof the invention was made
in this country by another who had not abandoned, suppressed, or
concealed it. In determining priority of invention there shall be
considered not only the respective dates of conception and reduction
to practice of the invention, but also the reasonable diligence of one
who was first to conceive and last to reduce to practice, from a time
prior to conception by the other."
[Footnote 14]
Arguably, the claims in Flook did more than present a mathematical
formula. The claims also solved the calculation in order to produce a
new number or "alarm limit" and then replaced the old number with
the number newly produced. The claims covered all uses of the
formula in processes "comprising the catalytic chemical conversion
of hydrocarbons." There are numerous such processes in the
petrochemical and oil refinery industries, and the claims therefore
covered a broad range of potential uses. 437 U.S. at 437 U. S. 586.
The claims, however, did not cover every conceivable application of
the formula. We rejected in Flook the argument that, because all
possible uses of the mathematical formula were not preempted, the
claim should be eligible for patent protection. Our reasoning
in Flook is in no way inconsistent with our reasoning here. A
mathematical formula does not suddenly become patentable subject
matter simply by having the applicant acquiesce to limiting the reach
of the patent for the formula to a particular technological use. A
mathematical formula, in the abstract, is nonstatutory subject matter
regardless of whether the patent is intended to cover all uses of the
formula or only limited uses. Similarly, a mathematical formula does
not become patentable subject matter merely by including in the
claim for the formula token post-solution activity such as the type
claimed in Flook. We were careful to note in Flook that the patent
application did not purport to explain how the variables used in the
formula were to be selected, nor did the application contain any
disclosure relating to chemical processes at work or the means of
setting off an alarm or adjusting the alarm limit. Ibid. All the
application provided was a "formula for computing an updated alarm
limit." Ibid.
[Footnote 15]
The dissent's analysis rises and falls on its characterization of
respondents' claims as presenting nothing more than "an improved
method of calculating the time that the mold should remain closed
during the curing process." Post at 450 U. S. 206-207. The dissent
states that respondents claim only to have developed "a new method
of programming a digital computer in order to calculate -- promptly
and repeatedly -- the correct curing time in a familiar
process." Post at 450 U. S. 213. Respondents' claims, however, are
not limited to the isolated step of "programming a digital computer."
Rather, respondents' claims describe a process of curing rubber
beginning with the loading of the mold and ending with the opening
of the press and the production of a synthetic rubber product that has
been perfectly cured -- a result heretofore unknown in the
art. See n 5, supra. The fact that one or more of the steps in
respondents' process may not, in isolation, be novel or independently
eligible for patent protection is irrelevant to the question of whether
the claims as a whole recite subject matter eligible for patent
protection under § 101. As we explained when discussing machine
patents in Deepsouth Packing Co. v. Laitram Corp., 406 U. S.
518 (1972):
"The patents were warranted not by the novelty of their elements, but
by the novelty of the combination they represented. Invention was
recognized because Laitram's assignors combined ordinary
elements in an extraordinary way -- a novel union of old means was
designed to achieve new ends. Thus, for both inventions, 'the whole
in some way exceed[ed] the sum of its parts.' Great A. & P. Tea Co.
v. Supermarket Equipment Corp., 340 U. S. 147, 340 U. S.
152 (1950)."
Id. at 406 U. S. 521-522 (footnote omitted).
In order for the dissent to reach its conclusion, it is necessary for it to
read out of respondents' patent application all the steps in the
claimed process which it determined were not novel or "inventive."
That is not the purpose of the § 101 inquiry, and conflicts with the
proposition, recited above, that a claimed invention may be entitled
to patent protection even though some or all of its elements are not
"novel."
JUSTICE STEVENS, with whom JUSTICE BRENNAN, JUSTICE
MARSHALL, and JUSTICE BLACKMUN join, dissenting.
The starting point in the proper adjudication of patent litigation is an
understanding of what the inventor claims
Page 450 U. S. 194
to have discovered. The Court's decision in this case rests on a
misreading of the Diehr and Lutton patent application. Moreover, the
Court has compounded its error by ignoring the critical distinction
between the character of the subject matter that the inventor claims
to be novel -- the § 101 issue -- and the question whether that
subject matter is in fact novel -- the § 102 issue.
I could not be predicated upon a mental step. [Footnote 2/7] Under the
Before discussing the major flaws in the Court's opinion, a word of
history may be helpful. As the Court recognized in Parker v.
Flook, 437 U. S. 584, 437 U. S. 595 (1978), the computer industry is
relatively young. Although computer technology seems
commonplace today, the first digital computer capable of utilizing
stored programs was developed less than 30 years ago. [Footnote
2/1] Patent law developments in response to this new technology are
of even more recent vintage. The subject of legal protection for
computer programs did not begin to receive serious consideration
until over a decade after completion of the first programmable digital
computer. [Footnote 2/2] It was 1968 before
Page 450 U. S. 195
the federal courts squarely addressed the subject, [Footnote 2/3] and
1972 before this Court announced its first decision in the area.
[Footnote 2/4]
Prior to 1968, well-established principles of patent law probably
would have prevented the issuance of a valid patent on almost any
conceivable computer program. Under the "mental steps" doctrine,
processes involving mental operations were considered
unpatentable. See, e.g., In re Heritage, 32 C.C.P.A. (Pat.) 1170,
1173-1177, 150 F.2d 554, 556-558 (1945); In re Shao Wen Yuan, 38
C.C.P.A. (Pat.) 967, 972-976, 188 F.2d 377, 380-383 (1951). The
mental steps doctrine was based upon the familiar principle that a
scientific concept or mere idea cannot be the subject of a valid
patent. See In re Bolongaro, 20 C.C.P.A. (Pat.) 845, 846-847, 62
F.2d 1059, 1060 (1933). [Footnote 2/5] The doctrine was regularly
invoked to deny patents to inventions consisting primarily of
mathematical formulae or methods of computation. [Footnote 2/6] It
was also applied against patent claims in which a mental operation
or mathematical computation was the sole novel element or inventive
contribution; it was clear that patentability
Page 450 U. S. 196
"function of a machine" doctrine, a process which amounted to
nothing more than a description of the function of a machine was
unpatentable. This doctrine had its origin in several 19th-century
decisions of this Court, [Footnote 2/8] and it had been consistently
followed thereafter by the lower federal courts. [Footnote 2/9]
Page 450 U. S. 197
Finally, the definition of "process" announced by this Court
in Cochrane v. Deener, 94 U. S. 780, 94 U. S. 787-788 (1877),
seemed to indicate that a patentable process must cause a physical
transformation in the materials to which the process is applied. See
ante at 450 U. S. 182-184.
Concern with the patent system's ability to deal with rapidly changing
technology in the computer and other fields led to the formation in
1965 of the President's Commission on the Patent System. After
studying the question of computer program patentability, the
Commission recommended that computer programs be expressly
excluded from the coverage of the patent laws; this recommendation
was based primarily upon the Patent Office's inability to deal with the
administrative burden of examining program applications. [Footnote
2/10] At approximately the time that the Commission issued its
report, the Patent Office published notice of its intention to prescribe
guidelines for the examination of applications for patents on
computer programs. See 829 Off.Gaz.Pat.Off. 865 (Aug. 16, 1966).
Under the proposed guidelines, a computer program, whether
claimed as an apparatus or as a process, was unpatentable.
[Footnote 2/11] The Patent Office indicated, however,
Page 450 U. S. 198
that a programmed computer could be a component of a patentable
process if combined with unobvious elements to produce a physical
result. The Patent Office formally adopted the guidelines in
1968. See 33 Fed.Reg. 15609 (1968).
The new guidelines were to have a short life. Beginning with two
decisions in 1968, a dramatic change in the law as understood by
the Court of Customs and Patent Appeals took place. By repudiating
the well-settled "function of a machine" and "mental steps" doctrines,
that court reinterpreted § 101 of the Patent Code to enlarge
drastically the categories of patentable subject matter. This
reinterpretation would lead to the conclusion that computer programs
were within the categories of inventions to which Congress intended
to extend patent protection.
In In re Tarczy-Hornoch, 55 C.C.P.A. (Pat.) 1441, 397 F.2d 856
(1968), a divided Court of Customs and Patent Appeals overruled
the line of cases developing and applying the "function of a machine"
doctrine. The majority acknowledged that the doctrine had originated
with decisions of this Court, and that the lower federal courts,
including the Court of Customs and Patent Appeals, had consistently
adhered to it during the preceding 70 years. Nonetheless, the court
concluded that the doctrine rested on a misinterpretation of the
precedents, and that it was contrary to "the basic purposes of the
patent system and productive of a range of undesirable results from
the harshly inequitable to the silly." Id. at 1454, 397 F.2d at 867.
[Footnote 2/12] Shortly thereafter, a similar
Page 450 U. S. 199
fate befell the "mental steps" doctrine. In In re Prater, 56 C.C.P.A.
(Pat.) 1360, 415 F.2d 1378 (1968), modified on rehearing,56
C.C.A.P. (Pat.) 1381, 415 F.2d 1393 (1969), the court found that the
precedents on which that doctrine was based either were poorly
reasoned or had been misinterpreted over the years. 56 C.C.P.A.
(Pat.) at 1366-1372, 415 F.2d at 1382-1387. The court concluded
that the fact that a process may be performed mentally should not
foreclose patentability if the claims reveal that the process also may
be performed without mental operations. Id. at 1374-1375, 415 F.2d
at 1389. [Footnote 2/13] This aspect of the original Prater opinion
was substantially undisturbed by the opinion issued after rehearing.
However, the second Prater opinion clearly indicated that patent
claims broad enough to encompass the operation of a programmed
computer would not be rejected for lack of patentable subject matter.
56 C.C.P.A. (Pat.) at 1394, n. 29, 415 F.2d at 1403, n. 29. [Footnote
2/14]
Page 450 U. S. 200
The Court of Customs and Patent Appeals soon replaced the
overruled doctrines with more expansive principles formulated with
computer technology in mind. In In re Bernhart, 57 C.C.P.A. (Pat.)
737, 417 F.2d 1395 (1969), the court reaffirmed Prater, and indicated
that all that remained of the mental steps doctrine was a prohibition
on the granting of a patent that would confer a monopoly on all uses
of a scientific principle or mathematical equation. Id. at 743, 417 F.2d
at 1399. The court also announced that a computer programmed
with a new and unobvious program was physically different from the
same computer without that program; the programmed computer
was a new machine, or at least a new improvement over the
unprogrammed computer. Id. at 744, 417 F.2d at 1400. Therefore,
patent protection could be obtained for new computer programs if the
patent claims were drafted in apparatus form.
The Court of Customs and Patent Appeals turned its attention to
process claims encompassing computer programs in In re
Musgrave, 57 C.C.P.A. (Pat.) 1352, 431 F.2d 882 (1970). In that
case, the court emphasized the fact that Prater had done away with
the mental steps doctrine; in particular, the court rejected the Patent
Office's continued reliance upon the "point of novelty" approach to
claim analysis. Id. at 1362, 431 F.2d at 889. [Footnote 2/15] The
court also announced a new standard for evaluating process claims
under § 101: any sequence of operational steps was a patentable
process under § 101 as long as it was within the "technological
arts." Id. at 1366-1367, 431 F.2d at 893. This standard effectively
disposed of any vestiges of the mental steps doctrine remaining
Page 450 U. S. 201
after Prater and Bernhart. [Footnote 2/16] The "technological arts"
standard was refined in In re Benson, 58 C.C.P.A. (Pat.) 1134, 441
F.2d 682 (1971), in which the court held that computers, regardless
of the uses to which they are put, are within the technological arts for
purposes of § 101. Id. at 1142, 441 F.2d at 688.
In re Benson, of course, was reversed by this Court in Gottschalk v.
Benson, 409 U. S. 63 (1972). [Footnote 2/17] Justice Douglas'
opinion for a unanimous Court made no reference to the lower
court's rejection of the mental steps doctrine or to the new
technological arts standard. [Footnote 2/18] Rather, the Court clearly
held that new mathematical procedures that can be conducted in old
computers, like mental processes and abstract intellectual
concepts, see id. at 409 U. S. 67, are not patentable processes
within the meaning of § 101.
Page 450 U. S. 202
The Court of Customs and Patent Appeals had its first opportunity to
interpret Benson in In re Christensen, 478 F.2d 1392 (1973).
In Christensen, the claimed invention was a method in which the only
novel element was a mathematical formula. The court resurrected
the "point of novelty" approach abandoned in Musgrave and held
that a process claim in which the point of novelty was a mathematical
equation to be solved as the final step of the process did not define
patentable subject matter after Benson. 478 F.2d at 1394.
Accordingly, the court affirmed the Patent Office Board of Appeals'
rejection of the claims under § 101.
The Court of Customs and Patent Appeals, in subsequent cases,
began to narrow its interpretation of Benson. In In re Johnston, 502
F.2d 765 (1974), the court held that a recordkeeping machine
system which comprised a programmed digital computer was
patentable subject matter under § 101. Id. at 771. The majority
dismissed Benson with the observation that Benson involved only
process, not apparatus, claims. 502 F.2d at 771. Judge Rich
dissented, arguing that to limit Benson only to process claims would
make patentability turn upon the form in which a program invention
was claimed. 502 F.2d at 773-774. [Footnote 2/19] The court again
construed Benson as limited only to process claims in In re Noll, 545
F.2d 141 (1976), cert. denied, 434 U.S. 875 (1977); apparatus claims
were governed by the court's pre-Bensonconclusion that a
programmed computer was structurally different from the same
computer without that particular program. 545 F.2d at 148. In
dissent, Judge Lane, joined by Judge Rich, argued
that Benson should be read as a general proscription of the
patenting of computer programs regardless of the form of the claims.
545 F.2d at 151-152. Judge Lane's interpretation of Benson was
rejected by the majority
Page 450 U. S. 203
in In re Chatfield, 545 F.2d 152 (1976), cert. denied, 434 U.S. 875
(1977), decided on the same day as Noll. In that case, the court
construed Benson to preclude the patenting of program inventions
claimed as processes only where the claims would preempt all uses
of an algorithm or mathematical formula. 545 F.2d at 156, 158-159.
[Footnote 2/20] The dissenting judges argued, as they had
in Noll, that Benson held that programs for general purpose digital
computers are not patentable subject matter. 545 F.2d at 161.
Following Noll and Chatfield, the Court of Customs and Patent
Appeals consistently interpreted Benson to preclude the patenting of
a program-related process invention only when the claims, if allowed,
would wholly preempt the algorithm itself. One of the cases adopting
this view was In re Flook, 559 F.2d 21 (1977), [Footnote 2/21] which
was reversed in Parker v. Flook, 437 U. S. 584 (1978). Before this
Court decided Flook, however, the lower court developed a two-step
procedure for analyzing program-related inventions in light
of Benson. In In re Freeman, 573 F.2d 1237 (1978), the court held
that such inventions must first be examined to determine whether a
mathematical algorithm is directly or indirectly claimed; if an
algorithm is recited, the court must then determine whether the claim
would wholly preempt that algorithm. Only if a claim satisfied both
inquiries was Benson considered applicable. 573 F.2d at 1245. See
also In re Toma, 575 F.2d 872, 877 (CCPA 1978).
Page 450 U. S. 204
In Flook, this Court clarified Benson in three significant respects.
First, Flook held that the Benson rule of unpatentable subject matter
was not limited, as the lower court believed, to claims which wholly
preempted an algorithm or amounted to a patent on the algorithm
itself. 437 U.S. at 437 U. S. 589-590. Second, the Court made it
clear that an improved method of calculation, even when employed
as part of a physical process, is not patentable subject matter under
§ 101.Id. at 437 U. S. 595, n. 18. Finally, the Court explained the
correct procedure for analyzing a patent claim employing a
mathematical algorithm. Under this procedure, the algorithm is
treated for § 101 purposes as though it were a familiar part of the
prior art; the claim is then examined to determine whether it
discloses "some other inventive concept." Id. at437 U. S. 591-595.
[Footnote 2/22]
Although the Court of Customs and Patent Appeals in several post-
Flook decisions held that program-related inventions were not
patentable subject matter under § 101, see, e.g., In re Sarkar, 588
F.2d 1330 (1978); In re Gelnovatch, 595 F.2d 32 (1979), in
general Flook was not enthusiastically received by that court. In In re
Bergy, 596 F.2d 952 (1979), the majority engaged in an extensive
critique of Flook, concluding that this Court had erroneously
commingled "distinct statutory provisions which are conceptually
unrelated." 596 F.2d at 959. [Footnote 2/23] In subsequent cases,
the court construed
Page 450 U. S. 205
Flook as resting on nothing more than the way in which the patent
claims had been drafted, and it expressly declined to use the method
of claim analysis spelled out in that decision. The Court of Customs
and Patent Appeals has taken the position that, if an application is
drafted in a way that discloses an entire process as novel, it defines
patentable subject matter even if the only novel element that the
inventor claims to have discovered is a new computer program.
[Footnote 2/24] The court interpreted Flook in this manner in its
opinion in this case. See In re Diehr, 602 F.2d 982, 986-989 (1979).
In my judgment, this reading of Flook -- although entirely consistent
with the lower court's expansive approach to § 101 during the past
12 years -- trivializes the holding in Flook, the principle that
underlies Benson, and the settled line of authority reviewed in those
opinions.
II
As I stated at the outset, the starting point in the proper adjudication
of patent litigation is an understanding of what the inventor claims to
have discovered. Indeed, the outcome of such litigation is often
determined by the judge's understanding of the patent application.
This is such a case.
In the first sentence of its opinion, the Court states the question
presented as "whether a process for curing synthetic rubber . . . is
patentable subject matter." Ante at 450 U. S. 177. Of course, that
question was effectively answered many years ago when Charles
Goodyear obtained his patent on the vulcanization process.
[Footnote 2/25] The patent application filed by Diehr
Page 450 U. S. 206
and Lutton, however, teaches nothing about the chemistry of the
synthetic rubber curing process, nothing about the raw materials to
be used in curing synthetic rubber, nothing about the equipment to
be used in the process, and nothing about the significance or effect
of any process variable such as temperature, curing time, particular
compositions of material, or mold configurations. In short, Diehr and
Lutton do not claim to have discovered anything new about the
process for curing synthetic rubber.
As the Court reads the claims in the Diehr and Lutton patent
application, the inventors' discovery is a method of constantly
measuring the actual temperature inside a rubber molding press.
[Footnote 2/26] As I read the claims, their discovery is an
Page 450 U. S. 207
improved method of calculating the time that the mold should remain
closed during the curing process. [Footnote 2/27] If the Court's
reading of the claims were correct, I would agree that they disclose
patentable subject matter. On the other hand, if the Court accepted
my reading, I feel confident that the case would be decided
differently.
There are three reasons why I cannot accept the Court's conclusion
that Diehr and Lutton claim to have discovered a new method of
constantly measuring the temperature inside a mold. First, there is
not a word in the patent application that suggests that there is
anything unusual about the temperature reading devices used in this
process -- or indeed that any particular species of temperature
reading device should be used in it. [Footnote 2/28] Second, since
devices for constantly
Page 450 U. S. 208
measuring actual temperatures -- on a back porch, for example --
have been familiar articles for quite some time, I find it difficult to
believe that a patent application filed in 1975 was premised on the
notion that a "process of constantly measuring the actual
temperature" had just been discovered. Finally, the Patent and
Trademark Office Board of Appeals expressly found that
"the only difference between the conventional methods of operating
a molding press and that claimed in [the] application rests in those
steps of the claims which relate to the calculation incident to the
solution of the mathematical problem or formula used to control the
mold heater and the automatic opening of the press. [Footnote 2/29]
This finding was not disturbed by the Court of Customs and Patent
Appeals, and is clearly correct."
A fair reading of the entire patent application, as well as the specific
claims, makes it perfectly clear that what Diehr and Lutton claim to
have discovered is a method of using a digital computer to determine
the amount of time that a rubber molding press should remain closed
during the synthetic rubber curing process. There is no suggestion
that there is anything novel in the instrumentation of the mold, in
actuating a timer when the press is closed, or in automatically
opening the press when the computed time expires. [Footnote 2/30]
Nor does the
Page 450 U. S. 209
application suggest that Diehr and Lutton have discovered anything
about the temperatures in the mold or the amount of curing time that
will produce the best cure. What they claim to have discovered, in
essence, is a method of updating the original estimated curing time
by repetitively recalculating that time pursuant to a well-known
mathematical formula in response to variations in temperature within
the mold. Their method of updating the curing time calculation is
strikingly reminiscent of the method of updating alarm limits that Dale
Flook sought to patent.
Parker v. Flook, 437 U. S. 584 (1978), involved the use of a digital
computer in connection with a catalytic conversion process. During
the conversion process, variables such as temperature, pressure,
and flow rates were constantly monitored and fed into the computer;
in this case, temperature in the mold is the variable that is monitored
and fed into the computer. In Flook, the digital computer repetitively
recalculated the "alarm limit" -- a number that might signal the need
to terminate or modify the catalytic conversion process; in this case,
the digital computer repetitively recalculates the correct curing time --
a number that signals the time when the synthetic rubber molding
press should open.
The essence of the claimed discovery in both cases was an
algorithm that could be programmed on a digital computer. [Footnote
2/31]
Page 450 U. S. 210
In Flook, the algorithm made use of multiple process variables; in
this case, it makes use of only one. In Flook, the algorithm was
expressed in a newly developed mathematical formula; in this case,
the algorithm makes use of a well known mathematical formula.
Manifestly, neither of these differences can explain today's holding.
[Footnote 2/32] What I believe
Page 450 U. S. 211
does explain today's holding is a misunderstanding of the applicants'
claimed invention and a failure to recognize the critical difference
between the "discovery" requirement in § 101 and the "novelty"
requirement in §102. [Footnote 2/33]
III
The Court misapplies Parker v. Flook because, like the Court of
Customs and Patent Appeals, it fails to understand or completely
disregards the distinction between the subject matter of what the
inventor claims to have discovered -- the § 101 issue -- and the
question whether that claimed discovery is in fact novel -- the § 102
issue. [Footnote 2/34] If there is not even a
Page 450 U. S. 212
claim that anything constituting patentable subject matter has been
discovered, there is no occasion to address the novelty issue.
[Footnote 2/35] Or, as was true in Flook, if the only concept that the
inventor claims to have discovered is not patentable subject matter,
§ 101 requires that the application be rejected without reaching any
issue under § 102; for it is irrelevant that unpatentable subject matter
-- in that case, a formula for updating alarm limits -- may in fact be
novel.
Proper analysis, therefore, must start with an understanding of what
the inventor claims to have discovered -- or, phrased somewhat
differently -- what he considers his inventive concept to be. [Footnote
2/36] It seems clear to me that Diehr and
Page 450 U. S. 213
Lutton claim to have developed a new method of programming a
digital computer in order to calculate -- promptly and repeatedly --
the correct curing time in a familiar process. [Footnote 2/37] In the §
101 analysis, we must assume that the sequence of steps in this
programming method is novel, unobvious, and useful. The threshold
question of whether such a method is patentable subject matter
remains.
If that method is regarded as an "algorithm" as that term was used
in Glottschalk v. Benson, 409 U. S. 63 (1972), and in
Page 450 U. S. 214
Parker v. Flook, 437 U. S. 584 (1978), [Footnote 2/38] and if no other
inventive concept is disclosed in the patent application, the question
must be answered in the negative. In both Benson and Flook, the
parties apparently agreed that the inventor's discovery was properly
regarded as an algorithm; the holding that an algorithm was a "law of
nature" that could not be
Page 450 U. S. 215
patented therefore determined that those discoveries were not
patentable processes within the meaning of § 101
As the Court recognizes today Flook also rejected the argument that
patent protection was available if the inventor did not claim a
monopoly on every conceivable use of the algorithm, but instead
limited his claims by describing a specific post-solution activity -- in
that case, setting off an alarm in a catalytic conversion process. In its
effort to distinguish Flook from the instant case, the Court
characterizes that post-solution activity as "insignificant," ante at 450
U. S. 191, or as merely "token" activity, ante at 450 U. S. 192, n. 14.
As a practical matter, however, the post-solution activity described in
the Flookapplication was no less significant than the automatic
opening of the curing mold involved in this case. For setting off an
alarm limit at the appropriate time is surely as important to the safe
and efficient operation of a catalytic conversion process as is
actuating the mold-opening device in a synthetic rubber curing
process. In both cases, the post-solution activity is a significant part
of the industrial process. But in neither case should that activity have
any legal significance, because it does not constitute a part of the
inventive concept that the applicants claimed to have discovered.
[Footnote 2/39]
In Gottschalk v. Benson, we held that a program for the
Page 450 U. S. 216
solution by a digital computer of a mathematical problem was not a
patentable process within the meaning of § 101. In Parker v.
Flook, we further held that such a computer program could not be
transformed into a patentable process by the addition of post-
solution activity that was not claimed to be novel. That holding plainly
requires the rejection of Claims 1 and 2 of the Diehr and Lutton
application quoted in the Court's opinion. Ante at 450 U. S. 179-180,
n. 5. In my opinion, it equally requires rejection of Claim 11, because
the pre-solution activity described in that claim is admittedly a
familiar part of the prior art. [Footnote 2/40]
Even the Court does not suggest that the computer program
developed by Diehr and Lutton is a patentable discovery.
Accordingly, if we treat the program as though it were a familiar part
of the prior art -- as well established precedent requires [Footnote
2/41] -- it is absolutely clear that their application contains no claim of
patentable invention. Their application was therefore properly
rejected under § 101 by the Patent Office and the Board of Appeals.
IV
The broad question whether computer programs should be given
patent protection involves policy considerations that
Page 450 U. S. 217
this Court is not authorized to address. See Gottschalk v.
Benson, 409 U.S. at 409 U. S. 72-73; Parker v. Flook, 437 U.S.
at 437 U. S. 595-596. As the numerous briefs amicus curiae filed
in Gottschalk v. Benson, supra, Dann v. Johnston, 425 U. S.
219(1976), Parker v. Flook, supra, and this case demonstrate, that
question is not only difficult and important, but apparently also one
that may be affected by institutional bias. In each of those cases, the
spokesmen for the organized patent bar have uniformly favored
patentability and industry representatives have taken positions
properly motivated by their economic self-interest. Notwithstanding
fervent argument that patent protection is essential for the growth of
the software industry, [Footnote 2/42] commentators have noted that
"this industry is growing by leaps and bounds without it." [Footnote
2/43] In addition, even
Page 450 U. S. 218
some commentators who believe that legal protection for computer
programs is desirable have expressed doubts that the present patent
system can provide the needed protection. [Footnote 2/44]
Within the Federal Government, pattern of decision have also
emerged. Gottschalk, Dann, Parker, and Diamond were not ordinary
litigants -- each was serving as Commissioner of Patents and
Trademarks when he opposed the availability of patent protection for
a program-related invention. No doubt each may have been
motivated by a concern about the ability of the Patent Office to
process effectively the flood of applications that would inevitably flow
from a decision that computer programs are patentable. [Footnote
2/45] The consistent concern evidenced by the Commissioner of
Patents and Trademarks and by the Board of Appeals of the Patent
and Trademark Office has not been shared by the Court of Customs
and Patent Appeals, which reversed the Board in Benson,
Johnston, and Flook, and was, in turn, reversed by this Court in each
of those cases. [Footnote 2/46]
Page 450 U. S. 219
Scholars have been critical of the work of both tribunals. Some of
that criticism may stem from a conviction about the merits of the
broad underlying policy question; such criticism may be put to one
side. Other criticism, however, identifies two concerns to which
federal judges have a duty to respond. First, the cases considering
the patentability of program-related inventions do not establish rules
that enable a conscientious patent lawyer to determine with a fair
degree of accuracy which, if any, program-related inventions will be
patentable. Second, the inclusion of the ambiguous concept of an
"algorithm" within the "law of nature" category of unpatentable
subject matter has given rise to the concern that almost any process
might be so described, and therefore held unpatentable.
In my judgment, today's decision will aggravate the first concern and
will not adequately allay the second. I believe both concerns would
be better addressed by (1) an unequivocal holding that no program-
related invention is a patentable process under § 101 unless it
makes a contribution to the art that is not dependent entirely on the
utilization of a computer, and (2) an unequivocal explanation that the
term "algorithm" as used in this case, as in Benson and Flook, is
synonymous with the term "computer program." [Footnote 2/47]
Because
Page 450 U. S. 220
the invention claimed in the patent application at issue in this case
makes no contribution to the art that is not entirely dependent upon
the utilization of a computer in a familiar process, I would reverse the
decision of the Court of Customs and Patent Appeals.
12. G.R. No. 161295. June 29, 2005.*
JESSIE G. CHING, petitioner, vs. WILLIAM M. SALINAS, SR.,
WILLIAM M. SALINAS, JR., JOSEPHINE L. SALINAS,
JENNIFER Y. SALINAS, ALONTO SOLAIMAN SALLE, JOHN
ERIC I. SALINAS, NOEL M. YABUT (Board of Directors and
Officers of WILAWARE PRODUCT CORPORATION),
respondents.
Constitutional Law; Searches and Seizures; Upon the filing of
the application for search warrant, the RTC was duty-bound to
determine whether probable cause existed.—The RTC had
jurisdiction to delve into and resolve the issue whether the
petitioner’s utility models are copyrightable and, if so, whether he
is the owner of a copyright over the said models. It bears stressing
that upon the filing of the application for search warrant, the RTC
was duty-bound to determine whether probable cause existed, in
accordance with Section 4, Rule 126 of the Rules of Criminal
Procedure.
Same; Same; In the determination of probable cause, the court
must necessarily resolve whether or not an offense exists to justify
the issuance of a search warrant or the quashal of one already
issued by the court.—In Solid Triangle Sales Corporation v. The
Sheriff of RTC QC, Br. 93, the Court held that in the determination
of probable cause, the court must necessarily resolve whether or
not an offense exists to justify the issuance of a search warrant or
the quashal of one already issued by the court. Indeed, probable
cause is deemed to exist only where facts and circumstances exist
which could lead a reasonably cautious and prudent man to believe
that an offense has been committed or is being committed. Besides,
in Section 3, Rule 126 of the Rules of Criminal Procedure, a search
warrant may be issued for the search and seizure of personal
property (a) subject of the offense; (b) stolen or embezzled and other
proceeds or fruits of the offense; or (c) used or intended to be used
as the means of committing an offense.
Same; Same; The absence of probable cause will cause the
outright nullification of the search warrant.—The RTC is
mandated
_______________
* SECOND DIVISION.
242
242 SUPREME COURT REPORTS ANNOTATED
Ching vs. Salinas, Sr.
under the Constitution and Rules of Criminal Procedure to
determine probable cause. The court cannot abdicate its
constitutional obligation by refusing to determine whether an
offense has been committed. The absence of probable cause will
cause the outright nullification of the search warrant.
Intellectual Property; Copyright Law; The focus of copyright is
the usefulness of the artistic design and not its marketability.—It
bears stressing that the focus of copyright is the usefulness of the
artistic design, and not its marketability. The central inquiry is
whether the article is a work of art. Works for applied art include
all original pictorials, graphics, and sculptural works that are
intended to be or have been embodied in useful article regardless
of factors such as mass production, commercial exploitation, and
the potential availability of design patent protection.
Same; Same; While works of applied art, original intellectual,
literary and artistic works are copyrightable, useful articles and
works of industrial design are not.—As gleaned from the
description of the models and their objectives, these articles are
useful articles which are defined as one having an intrinsic
utilitarian function that is not merely to portray the appearance of
the article or to convey information. Indeed, while works of applied
art, original intellectual, literary and artistic works are
copyrightable, useful articles and works of industrial design are
not. A useful article may be copyrightable only if and only to the
extent that such design incorporates pictorial, graphic, or
sculptural features that can be identified separately from, and are
capable of existing independently of the utilitarian aspects of the
article.
Same; Same; That the works of the petitioner may be the
proper subject of a patent does not entitle him to the issuance of a
search warrant for violation of copyright laws.—That the works of
the petitioner may be the proper subject of a patent does not entitle
him to the issuance of a search warrant for violation of copyright
laws. In Kho v. Court of Appeals and Pearl & Dean (Phil.),
Incorporated v. Shoemart, Incorporated, the Court ruled that
“these copyright and patent rights are completely distinct and
separate from one another, and the protection afforded by one
cannot be used interchangeably to cover items or works
that exclusively pertain to the others.”
243
VOL. 462, JUNE 29, 2005 243
Ching vs. Salinas, Sr.
PETITION for review on certiorari of the decision and resolution
of the Court of Appeals.
The facts are stated in the opinion of the Court.
Antonio R. Bautista and Partners for petitioner.
Jorge Cesar M. San Diego for respondents.
CALLEJO, SR., J.:
This petition for review on certiorari assails the Decision1 and
Resolution2 of the Court of Appeals (CA) in CA-G.R. SP No. 70411
affirming the January 3, 2002 and February 14, 2002 Orders3of the
Regional Trial Court (RTC) of Manila, Branch 1, which quashed
and set aside Search Warrant Nos. 01-2401 and 01-2402 granted
in favor of petitioner Jessie G. Ching.
Jessie G. Ching is the owner and general manager of Jeshicris
Manufacturing Co., the maker and manufacturer of a Utility
Model, described as “Leaf Spring Eye Bushing for Automobile”
made up of plastic.
On September 4, 2001, Ching and Joseph Yu were issued by the
National Library Certificates of Copyright Registration and
Deposit of the said work described therein as “Leaf Spring Eye
Bushing for Automobile.”4
On September 20, 2001, Ching requested the National Bureau
of Investigation (NBI) for police/investigative assistance for the
apprehension and prosecution of illegal manufacturers, producers
and/or distributors of the works.5
_______________
1 Penned by Associate Justice Amelita G. Tolentino, with
Associate Justices Eloy R. Bello, Jr. (retired) and Arturo D. Brion,
concurring; Rollo, pp. 17-24.
2 Rollo, pp. 31-32.
3 Penned by Acting Presiding Judge Antonio M. Eugenio, Jr.
4 CA Rollo, pp. 28-34.
 5 Id., at p. 47. Id., at pp. 54-61.
7

244 245
244 SUPREME COURT REPORTS ANNOTATED VOL. 462, JUNE 29, 2005 245
Ching vs. Salinas, Sr. Ching vs. Salinas, Sr.
After due investigation, the NBI filed applications for search c) Vehicle bearing cushion
warrants in the RTC of Manila against William Salinas, Sr. and - center bearing cushion 11 }
the officers and members of the Board of Directors of Wilaware Budder for C190 mold 8}
Product Corporation. It was alleged that the respondents therein Diesel Mold
reproduced and distributed the said models penalized under a) Mold for spring eye bushing rear 1 set
Sections 177.1 and 177.3 of Republic Act (R.A.) No. 8293. The b) Mold for spring eye bushing front 1 set
applications sought the seizure of the following: c) Mold for spring eye bushing for C190 1 set
d) Mold for C240 rear 1 piece of the
set
1. a.)Undetermined quantity of Leaf spring eye bushing for e) Mold for spring eye bushing for L300 2 sets
automobile that are made up of plastic polypropylene; f) Mold for leaf spring eye bushing C190 with 1 set
2. b.)Undetermined quantity of Leaf spring eye bushing for metal
automobile that are made up of polyvinyl chloride plastic; g) Mold for vehicle bearing cushion 1 set8
3. c.)Undetermined quantity of Vehicle bearing cushion that The respondents filed a motion to quash the search warrants on
is made up of polyvinyl chloride plastic; the following grounds:
4. d.)Undetermined quantity of Dies and jigs, patterns and
flasks used in the manufacture/fabrication of items a to d;
1. 2.The copyright registrations were issued in violation of the
5. e.)Evidences of sale which include delivery receipts,
Intellectual Property Code on the ground that:
invoices and official receipts.6
1. a)the subject matter of the registrations are not artistic or
The RTC granted the application and issued Search Warrant Nos.
literary;
01-2401 and 01-2402 for the seizure of the aforecited articles.7 In
2. b)the subject matter of the registrations are spare parts of
the inventory submitted by the NBI agent, it appears that the
automobiles meaning—there (sic) are original parts that
following articles/items were seized based on the search warrants:
they are designed to replace. Hence, they are not
Leaf Spring eye bushing
original.9
a) Plastic Polypropylene
- C190 27 }
- C240 rear 40 } The respondents averred that the works covered by the certificates
- C240 front 41 } BAG 1 issued by the National Library are not artistic in nature; they are
b) Polyvinyl Chloride Plastic considered automotive spare parts and pertain to technology. They
- C190 13 } aver that the models are not original, and as such are the proper
subject of a patent, not copyright.10
_______________ In opposing the motion, the petitioner averred that the court
which issued the search warrants was not the proper forum in
6 CA Rollo, p. 54. which to articulate the issue of the validity of the
_______________
8 Id., at p. 68.
9 CA Rollo, p. 70.
10 Id., at pp. 73-75.
246
246 SUPREME COURT REPORTS ANNOTATED
Ching vs. Salinas, Sr.
copyrights issued to him. Citing the ruling of the Court
in Malaloan v. Court of Appeals,11 the petitioner stated that a
search warrant is merely a judicial process designed by the Rules
of Court in anticipation of a criminal case. Until his copyright was
nullified in a proper proceeding, he enjoys rights of a registered
owner/holder thereof.
On January 3, 2002, the trial court issued an Order12 granting
the motion, and quashed the search warrant on its finding that
there was no probable cause for its issuance. The court ruled that
the work covered by the certificates issued to the petitioner
pertained to solutions to technical problems, not literary and
artistic as provided in Article 172 of the Intellectual Property Code.
His motion for reconsideration of the order having been denied
by the trial court’s Order of February 14, 2002, the petitioner filed
a petition for certiorari in the CA, contending that the RTC had no
jurisdiction to delve into and resolve the validity of the copyright
certificates issued to him by the National Library. He insisted that
his works are covered by Sections 172.1 and 172.2 of the
Intellectual Property Code. The petitioner averred that the
copyright certificates are prima facie evidence of its validity, citing
the ruling of the United States Court of Appeals in Wildlife Express
Corporation v. Carol Wright Sales, Inc.13The petitioner asserted
that the respondents failed to adduce evidence to support their
motion to quash the search warrants. The petitioner noted that
respondent William Salinas, Jr. was not being honest, as he was
able to secure a similar copyright registration of a similar product
from the National Library on January 14, 2002.
On September 26, 2003, the CA rendered judgment dismissing
the petition on its finding that the RTC did not com-
_______________
11 G.R. No. 104879, 6 May 1994, 232 SCRA 249.
12 Rollo, pp. 22-23.
13 18 F.3d 502.
247
VOL. 462, JUNE 29, 2005 247
Ching vs. Salinas, Sr.
mit any grave abuse of its discretion in issuing the assailed order,
to wit:
It is settled that preliminarily, there must be a finding that a
specific offense must have been committed to justify the issuance
of a search warrant. In a number of cases decided by the Supreme
Court, the same is explicitly provided, thus:
“The probable cause must be in connection with one specific
offense, and the judge must, before issuing the warrant, personally
examine in the form of searching questions and answers, in writing
and under oath, the complainant and any witness he may produce,
on facts personally known to them and attach to the record their
sworn statements together with any affidavit submitted.
“In the determination of probable cause, the court must
necessarily resolve whether or not an offense exists to justify the
issuance or quashal of the search warrant.”
In the instant case, the petitioner is praying for the
reinstatement of the search warrants issued, but subsequently
quashed, for the offense of Violation of Class Designation of
Copyrightable Works under Section 177.1 in relation to Section
177.3 of Republic Act 8293, when the objects subject of the same,
are patently not copyrightable.
It is worthy to state that the works protected under the Law on
Copyright are: literary or artistic works (Sec. 172) and derivative
works (Sec. 173). The Leaf Spring Eye Bushing and Vehicle
Bearing Cushion fall on neither classification. Accordingly, if, in
the first place, the item subject of the petition is not entitled to be
protected by the law on copyright, how can there be any violation? 14
The petitioner’s motion for reconsideration of the said decision
suffered the same fate. The petitioner forthwith filed the present
petition for review on certiorari, contending that the revocation of
his copyright certificates should be raised in a direct action and not
in a search warrant proceeding.
The petitioner posits that even assuming ex argumenti that the
trial court may resolve the validity of his copyright in a
_______________
14 Rollo, p. 23.
248
248 SUPREME COURT REPORTS ANNOTATED
Ching vs. Salinas, Sr.
proceeding to quash a search warrant for allegedly infringing
items, the RTC committed a grave abuse of its discretion when it
declared that his works are not copyrightable in the first place. He
claims that R.A. No. 8293, otherwise known as the Intellectual
Property Code of the Philippines, which took effect on January 1,
1998, provides in no uncertain terms that copyright protection
automatically attaches to a work by the sole fact of its creation,
irrespective of its mode or form of expression, as well as of its
content, quality or purpose.15 The law gives a non-inclusive
definition of “work” as referring to original intellectual creations in
the literary and artistic domain protected from the moment of their
creation; and includes original ornamental designs or models for
articles of manufacture, whether or not registrable as an industrial
design and other works of applied art under Section 172.1(h) of
R.A. No. 8293.
As such, the petitioner insists, notwithstanding the
classification of the works as either literary and/or artistic, the said
law, likewise, encompasses works which may have a bearing on the
utility aspect to which the petitioner’s utility designs were
classified. Moreover, according to the petitioner, what the
Copyright Law protects is the author’s intellectual creation,
regardless of whether it is one with utilitarian functions or
incorporated in a useful article produced on an industrial scale.
The petitioner also maintains that the law does not provide that
the intended use or use in industry of an article eligible for patent
bars or invalidates its registration under the Law on Copyright.
The test of protection for the aesthetic is not beauty and utility, but
art for the copyright and invention of original and ornamental
design for design patents.16 In like manner, the fact that his utility
designs or models for articles
_______________
15 Section 172.2, Republic Act No. 8293.
16 Citing Amador, Vicente B., COPYRIGHT UNDER THE
INTELLECTUAL PROPERTY CODE, 1998 ed., p. 128,
citing Mazer v. Stein, 347 U.S. 201 (1954).
249
VOL. 462, JUNE 29, 2005 249
Ching vs. Salinas, Sr.
of manufacture have been expressed in the field of automotive
parts, or based on something already in the public domain does not
automatically remove them from the protection of the Law on
Copyright.17
The petitioner faults the CA for ignoring Section 218 of R.A. No.
8293 which gives the same presumption to an affidavit executed by
an author who claims copyright ownership of his work.
The petitioner adds that a finding of probable cause to justify
the issuance of a search warrant means merely a reasonable
suspicion of the commission of the offense. It is not equivalent to
absolute certainty or a finding of actual and positive cause. 18 He
assists that the determination of probable cause does not concern
the issue of whether or not the alleged work is copyrightable. He
maintains that to justify a finding of probable cause in the issuance
of a search warrant, it is enough that there exists a reasonable
suspicion of the commission of the offense.
The petitioner contends that he has in his favor the benefit of
the presumption that his copyright is valid; hence, the burden of
overturning this presumption is on the alleged infringers, the
respondents herein. But this burden cannot be carried in a hearing
on a proceeding to quash the search warrants, as the issue therein
is whether there was probable cause for the issuance of the search
warrant. The petitioner concludes that the issue of probable cause
should be resolved without invalidating his copyright.
 In their comment on the petition, the respondents aver that the
work of the petitioner is essentially a technical solution to the
problem of wear and tear in automobiles, the substitution of
materials, i.e., from rubber to plastic matter of polyvinyl
_______________
17 Norma Ribbon & Trimming v. Little, United States Court of
Appeals, Fifth Circuit, No. 94-60389, 27 April 1995.
18 Columbia Pictures, Inc. v. Court of Appeals, G.R. No. 110318,
28 August 1996, 261 SCRA 144.
250
250 SUPREME COURT REPORTS ANNOTATED
Ching vs. Salinas, Sr.
chloride, an oil resistant soft texture plastic material strong
enough to endure pressure brought about by the vibration of the
counter bearing and thus brings bushings. Such work, the
respondents assert, is the subject of copyright under Section 172.1
of R.A. No. 8293. The respondents posit that a technical solution in
any field of human activity which is novel may be the subject of a
patent, and not of a copyright. They insist that the certificates
issued by the National Library are only certifications that, at a
point in time, a certain work was deposited in the said office.
Furthermore, the registration of copyrights does not provide for
automatic protection. Citing Section 218.2(b) of R.A. No. 8293, the
respondents aver that no copyright is said to exist if a party
categorically questions its existence and legality. Moreover, under
Section 2, Rule 7 of the Implementing Rules of R.A. No. 8293, the
registration and deposit of work is not conclusive as to copyright
outlay or the time of copyright or the right of the copyright owner.
The respondents maintain that a copyright exists only when the
work is covered by the protection of R.A. No. 8293.
The petition has no merit.
The RTC had jurisdiction to delve into and resolve the issue
whether the petitioner’s utility models are copyrightable and, if so,
whether he is the owner of a copyright over the said models. It
bears stressing that upon the filing of the application for search
warrant, the RTC was duty-bound to determine whether probable
cause existed, in accordance with Section 4, Rule 126 of the Rules
of Criminal Procedure:
SEC. 4. Requisite for issuing search warrant.—A search warrant
shall not issue but upon probable cause in connection with one
specific offense to be determined personally by the judge after
examination under oath or affirmation of the complainant and the
witnesses he may produce, and, particularly, describing the place
to be searched and the things to be seized.
251
VOL. 462, JUNE 29, 2005 251
Ching vs. Salinas, Sr.
In Solid Triangle Sales Corporation v. The Sheriff of RTC QC, Br.
93,19 the Court held that in the determination of probable cause,
the court must necessarily resolve whether or not an offense exists
to justify the issuance of a search warrant or the quashal of one
already issued by the court. Indeed, probable cause is deemed to
exist only where facts and circumstances exist which could lead a
reasonably cautious and prudent man to believe that an offense
has been committed or is being committed. Besides, in Section 3,
Rule 126 of the Rules of Criminal Procedure, a search warrant may
be issued for the search and seizure of personal property (a) subject
of the offense; (b) stolen or embezzled and other proceeds or fruits
of the offense; or (c) used or intended to be used as the means of
committing an offense.
The RTC is mandated under the Constitution and Rules of
Criminal Procedure to determine probable cause. The court cannot
abdicate its constitutional obligation by refusing to determine
whether an offense has been committed.20 The absence of probable
cause will cause the outright nullification of the search warrant.21
For the RTC to determine whether the crime for infringement
under R.A. No. 8293 as alleged in an application is committed, the
petitioner-applicant was burdened to prove that (a) respondents
Jessie Ching and Joseph Yu were the owners of copyrighted
material; and (b) the copyrighted material was being copied and
distributed by the respondents. Thus, the ownership of a valid
copyright is essential.22
 Ownership of copyrighted material is shown by proof of
originality and copyrightability. By originality is meant that the
material was not copied, and evidences at least minimal
_______________
19 G.R. No. 144309, 23 November 2001, 370 SCRA 491.
20 Ibid.
21 Republic of the Philippines v. Sandiganbayan, G.R. Nos.
112708-09, 29 March 1996, 255 SCRA 438.
22 Feist Publications, Inc. v. Rural Telephone Service
Company, 499 U.S. 340; 111 S.Ct. 1282 (1991).
252
252 SUPREME COURT REPORTS ANNOTATED
Ching vs. Salinas, Sr.
creativity; that it was independently created by the author and
that it possesses at least same minimal degree of
creativity.23 Copying is shown by proof of access to copyrighted
material and substantial similarity between the two works. 24The
applicant must thus demonstrate the existence and the validity of
his copyright because in the absence of copyright protection, even
original creation may be freely copied.25
By requesting the NBI to investigate and, if feasible, file an
application for a search warrant for infringement under R.A. No.
8293 against the respondents, the petitioner thereby authorized
the RTC (in resolving the application), to delve into and determine
the validity of the copyright which he claimed he had over the
utility models. The petitioner cannot seek relief from the RTC
based on his claim that he was the copyright owner over the utility
models and, at the same time, repudiate the court’s jurisdiction to
ascertain the validity of his claim without running afoul to the
doctrine of estoppel.
To discharge his burden, the applicant may present the
certificate of registration covering the work or, in its absence, other
evidence.26 A copyright certificate provides prima facieevidence of
originality which is one element of copyright validity. It
constitutes prima facieevidence of both validity and
ownership27 and the validity of the facts stated in the
certificate.28 The presumption of validity to a certificate of
copyright registration merely orders the burden of proof. The
applicant
_______________
23 Donald Bruce Company v. B.G. Multi-Comm.
Corporation, 964 F.Supp. 265 (1997).
24 Apple Barrel Productions, Inc. v. R.D. Beard, 730 F.2d
384 (1984).
25 Durnham Industries, Inc. v. Tomy Corporation, 630 F.2d
905 (1980).
26 Apple Barrel Productions, Inc. v. R.D. Beard, supra.
27 Midway Manufacturing Corporation v. Bandai-America,
Inc., 546 F.Supp. 125 (1982); Lakedreams v. Steve Taylor, 932 F.2d
1103 (1991).
28 Durnham Industries, Inc. v. Tomy Corporation, supra.
253
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Ching vs. Salinas, Sr.
should not ordinarily be forced, in the first instance, to prove all
the multiple facts that underline the validity of the copyright
unless the respondent, effectively challenging them, shifts the
burden of doing so to the applicant.29 Indeed, Section 218.2 of R.A.
No. 8293 provides:
218.2. In an action under this Chapter:
1. (a)Copyright shall be presumed to subsist in the work or
other subject matter to which the action relates if the
defendant does not put in issue the question whether
copyright subsists in the work or other subject matter;
and
2. (b)Where the subsistence of the copyright is established,
the plaintiff shall be presumed to be the owner of the
copyright if he claims to be the owner of the copyright and
the defendant does not put in issue the question of his
ownership.
A certificate of registration creates no rebuttable presumption of
copyright validity where other evidence in the record casts doubt
on the question. In such a case, validity will not be presumed.30
To discharge his burden of probable cause for the issuance of a
search warrant for violation of R.A. No. 8293, the petitioner-
applicant submitted to the RTC Certificate of Copyright
Registration Nos. 2001-197 and 2001-204 dated September 3, 2001
and September 4, 2001, respectively, issued by the National
Library covering work identified as Leaf Spring Eye Bushing for
Automobile and Vehicle Bearing Cushion both classified under
Section 172.1(h) of R.A. No. 8293, to wit:
SEC. 172. Literary and Artistic Works.—172.1. Literary and
artistic works, hereinafter referred to as “works,” are original
intellectual creations in the literary and artistic domain protected
from the moment of their creation and shall include in particular:
_______________
29 Barnhart, Inc. v. Economy Cover Corporation, 773 F.2d
411 (1985).
30 Ibid; Midway Manufacturing Corporation v. Bandai-
America, Inc., supra.
254
254 SUPREME COURT REPORTS ANNOTATED
Ching vs. Salinas, Sr.
...
(h) Original ornamental designs or models for articles of
manufacture, whether or not registrable as an industrial design,
and other works of applied art.
Related to the provision is Section 171.10, which provides that a
“work of applied art” is an artistic creation with utilitarian
functions or incorporated in a useful article, whether made by hand
or produced on an industrial scale.
But, as gleaned from the specifications appended to the
application for a copyright certificate filed by the petitioner, the
said Leaf Spring Eye Bushing for Automobile is merely a utility
model described as comprising a generally cylindrical body having
a co-axial bore that is centrally located and provided with a
perpendicular flange on one of its ends and a cylindrical metal
jacket surrounding the peripheral walls of said body, with the
bushing made of plastic that is either polyvinyl chloride or
polypropylene.31 Likewise, the Vehicle Bearing Cushion is
illustrated as a bearing cushion comprising a generally semi-
circular body having a central hole to secure a conventional bearing
and a plurality of ridges provided therefore, with said cushion
bearing being made of the same plastic materials.32 Plainly, these
are not literary or artistic works. They are not intellectual
creations in the literary and artistic domain, or works of applied
art. They are certainly not ornamental designs or one having
decorative quality or value.
It bears stressing that the focus of copyright is the usefulness
of the artistic design, and not its marketability. The central inquiry
is whether the article is a work of art.33 Works for applied art
include all original pictorials, graphics, and sculptural works that
are intended to be or have been embod-
_______________
31 Rollo, p. 86.
32 Id., at p. 94.
33 Pivot Port International, Inc. v. Charlene Products, Inc., 372
F.2d 913 (2004).
255
VOL. 462, JUNE 29, 2005 255
Ching vs. Salinas, Sr.
ied in useful article regardless of factors such as mass production,
commercial exploitation, and the potential availability of design
patent protection.34
As gleaned from the description of the models and their
objectives, these articles are useful articles which are defined as
one having an intrinsic utilitarian function that is not merely to
portray the appearance of the article or to convey information.
Indeed, while works of applied art, original intellectual, literary
and artistic works are copyrightable, useful articles and works of
industrial design are not.35 A useful article may be copyrightable
only if and only to the extent that such design incorporates
pictorial, graphic, or sculptural features that can be identified
separately from, and are capable of existing independently of the
utilitarian aspects of the article.
We agree with the contention of the petitioner (citing Section
171.10 of R.A. No. 8293), that the author’s intellectual creation,
regardless of whether it is a creation with utilitarian functions or
incorporated in a useful article produced on an industrial scale, is
protected by copyright law. However, the law refers to a “work of
applied art which is an artistic creation.” It bears stressing that
there is no copyright protection for works of applied art or
industrial design which have aesthetic or artistic features that
cannot be identified separately from the utilitarian aspects of the
article.36 Functional components of useful articles, no matter how
artistically designed, have generally been denied copyright
protection unless they are separable from the useful article.37
In this case, the petitioner’s models are not works of applied art,
nor artistic works. They are utility models, useful
_______________
34 Gay Toys, Inc. v. Buddy L. Corporation, 703 F.2d 970(1983).
35 Pivot Port International, Inc. v. Charlene Products, Inc.,
supra.
36 Ibid; DBC of New York v. Merit Diamond Corporation, 768
F.Supp. 414 (1991).
37 Norris Industries, Inc. v. ITT Corporation, 696 F.2d
918(1983).
256
256 SUPREME COURT REPORTS ANNOTATED
Ching vs. Salinas, Sr.
articles, albeit with no artistic design or value. Thus, the petitioner
described the utility model as follows:
LEAF SPRING EYE BUSHING FOR AUTOMOBILE
Known bushings inserted to leaf-spring eye to hold leaf-springs of
automobile are made of hard rubber. These rubber bushings after
a time, upon subjecting them to so much or intermittent pressure
would eventually wore (sic) out that would cause the wobbling of
the leaf spring.
The primary object of this utility model, therefore, is to provide
a leaf-spring eye bushing for automobile that is made up of plastic.
Another object of this utility model is to provide a leaf-spring
eye bushing for automobiles made of polyvinyl chloride, an oil
resistant soft texture plastic or polypropylene, a hard plastic, yet
both causes cushion to the leaf spring, yet strong enough to endure
pressure brought about by the up and down movement of said leaf
spring.
Yet, an object of this utility model is to provide a leaf-spring eye
bushing for automobiles that has a much longer life span than the
rubber bushings.
Still an object of this utility model is to provide a leaf-spring eye
bushing for automobiles that has a very simple construction and
can be made using simple and ordinary molding equipment.
A further object of this utility model is to provide a leaf-spring
eye bushing for automobile that is supplied with a metal jacket to
reinforce the plastic eye bushing when in engaged with the steel
material of the leaf spring.
These and other objects and advantages will come to view and
be understood upon a reading of the detailed description when
taken in conjunction with the accompanying drawings.
Figure 1 is an exploded perspective of a leaf-spring eye bushing
according to the present utility model;
Figure 2 is a sectional view taken along line 2-2 of Fig. 1;
Figure 3 is a longitudinal sectional view of another embodiment
of this utility model;
Figure 4 is a perspective view of a third embodiment; and
Figure 5 is a sectional view thereof.
257
VOL. 462, JUNE 29, 2005 257
Ching vs. Salinas, Sr.
Referring now to the several views of the drawings wherein like
reference numerals designated same parts throughout, there is
shown a utility model for a leaf-spring eye bushing for automobile
generally designated as reference numeral 10.
 Said leaf-spring eye bushing 10 comprises a generally
cylindrical body 11 having a co-axial bore 12 centrally provided
thereof.
As shown in Figs. 1 and 2, said leaf-spring eye bushing 10 is
provided with a perpendicular flange 13 on one of its ends and a
cylindrical metal jacket 14 surrounding the peripheral walls 15 of
said body 11. When said leaf-spring bushing 10 is installed, the
metal jacket 14 acts with the leaf-spring eye (not shown), which is
also made of steel or cast steel. In effect, the bushing 10 will not be
directly in contact with steel, but rather the metal jacket, making
the life of the bushing 10 longer than those without the metal
jacket.
In Figure 2, the bushing 10 as shown is made of plastic,
preferably polyvinyl chloride, an oil resistant soft texture plastic or
a hard polypropylene plastic, both are capable to endure the
pressure applied thereto, and, in effect, would lengthen the life and
replacement therefor.
Figure 3, on the other hand, shows the walls 16 of the co-axial
bore 12 of said bushing 10 is insertably provided with a steel tube
17 to reinforce the inner portion thereof. This steel tube 17
accommodates or engages with the leaf-spring bolt (not shown)
connecting the leaf spring and the automobile’s chassis.
Figures 4 and 5 show another embodiment wherein the leaf eye
bushing 10 is elongated and cylindrical as to its construction. Said
another embodiment is also made of polypropylene or polyvinyl
chloride plastic material. The steel tube 17 and metal jacket 14
may also be applied to this embodiment as an option thereof.38
VEHICLE BEARING CUSHION
Known bearing cushions inserted to bearing housings for
vehicle propeller shafts are made of hard rubber. These rubber
bushings after a time, upon subjecting them to so much or
intermittent pressure would eventually be worn out that would
cause the wobbling of the center bearing.
_______________
38 Rollo, pp. 84-87.
258
258 SUPREME COURT REPORTS ANNOTATED
Ching vs. Salinas, Sr.
The primary object of this utility model therefore is to provide a
vehicle-bearing cushion that is made up of plastic.
Another object of this utility model is to provide a vehicle
bearing cushion made of polyvinyl chloride, an oil resistant soft
texture plastic material which causes cushion to the propeller’s
center bearing, yet strong enough to endure pressure brought
about by the vibration of the center bearing.
Yet, an object of this utility model is to provide a vehicle-bearing
cushion that has a much longer life span than rubber bushings.
Still an object of this utility model is to provide a vehicle bearing
cushion that has a very simple construction and can be made using
simple and ordinary molding equipment.
These and other objects and advantages will come to view and
be understood upon a reading of the detailed description when
taken in conjunction with the accompanying drawings.
Figure 1 is a perspective view of the present utility model for a
vehicle-bearing cushion; and
Figure 2 is a sectional view thereof.
Referring now to the several views of the drawing, wherein like
reference numeral designate same parts throughout, there is
shown a utility model for a vehicle-bearing cushion generally
designated as reference numeral 10.
Said bearing cushion 10 comprises of a generally semi-circular
body 11, having central hole 12 to house a conventional bearing
(not shown). As shown in Figure 1, said body 11 is provided with a
plurality of ridges 13 which serves reinforcing means thereof.
The subject bearing cushion 10 is made of polyvinyl chloride, a
soft texture oil and chemical resistant plastic material which is
strong, durable and capable of enduring severe pressure from the
center bearing brought about by the rotating movement of the
propeller shaft of the vehicle.39
A utility model is a technical solution to a problem in any field of
human activity which is new and industrially applicable. It may
be, or may relate to, a product, or process, or an
_______________
39 Rollo, pp. 93-94.
259
VOL. 462, JUNE 29, 2005 259
Ching vs. Salinas, Sr.
improvement of any of the aforesaid.40Essentially, a utility model
refers to an invention in the mechanical field. This is the reason
why its object is sometimes described as a device or useful
object.41 A utility model varies from an invention, for which a
patent for invention is, likewise, available, on at least three
aspects: first, the requisite of “inventive step”42 in a patent for
invention is not required; second, the maximum term of protection
is only seven years43compared to a patent which is twenty
years,44both reckoned from the date of the application; and third,
the provisions on utility model dispense with its substantive
examination45 and prefer for a less complicated system.
_______________
40 Section 109.1(a) and (b) in relation to Section 21 of Republic
Act No. 8293.
41 Amador, Vicente B., PATENTS UNDER THE
INTELLECTUAL PROPERTY CODE, 2001 ed., p. 751.
42 An invention involves an inventive step if, having regard to
prior art, it is not obvious to a person skilled in the art at the time
of the filing date or priority date of the application claiming the
invention. (Section 26, Republic Act No. 8293).
43 Section 109.3, supra.
44 Section 54, supra.
45 Sections 108 to 111 of Republic Act No. 8293 state the rule on
utility models and grant of a patent therefor:
SEC. 108. Applicability of Provisions Relating to Patents.—
108.1 Subject to Section 109, the provisions governing patents shall
apply, mutatis mutandis, to the registration of utility models.
108.2. Where the right to a patent conflicts with the right to a
utility model registration in the case referred to in Section 29, the
said provisions shall apply as if the word “patent” were replaced by
the words “patent or utility model registration.” (Sec. 55, R.A. No.
165a)
SEC. 109. Special Provisions Relating to Utility Models.—
109.1. (a) An invention qualifies for registration as a utility
model if it is new and industrially applicable.
260
260 SUPREME COURT REPORTS ANNOTATED
Ching vs. Salinas, Sr.
Being plain automotive spare parts that must conform to the
original structural design of the components they seek to replace,
the Leaf Spring Eye Bushing and Vehicle Bearing
_______________
(b) Section 21, “Patentable Inventions,” shall apply except the
reference to inventive step as a condition of protection.
109.2. Sections 43 to 49 shall not apply in the case of
applications for registration of a utility model.
109.3. A utility model registration shall expire, without any
possibility of renewal, at the end of the seventh year after the date
of the filing of the application.
109.4. In proceedings under Sections 61 to 64, the utility model
registration shall be canceled on the following grounds:
1. (a)That the claimed invention does not qualify for
registration as a utility model and does not meet the
requirements of registrability, in particular having
regard to Subsection 109.1 and Sections 22, 23, 24 and 27;
2. (b)That the description and the claims do not comply with
the prescribed requirements;
3. (c)That any drawing which is necessary for the
understanding of the invention has not been furnished;
 4. (d)That the owner of the utility model registration is not
the inventor or his successor in title. (Secs. 55, 56 and 57,
R.A. No. 165a)
SEC. 110. Conversion of Patent Applications or Applications for
Utility Model Registration.—
110.1 At any time before the grant or refusal of a patent, an
applicant for a patent may, upon payment of the prescribed fee,
convert his application into an application for registration of a
utility model, which shall be accorded the filing date of the initial
application. An application may be converted only once.
110.2 At any time before the grant or refusal of a utility model
registration, an applicant for a utility model registration may,
upon payment of the prescribed fee, convert his application into a
patent application, which shall be accorded the filing date of the
initial application. (Sec. 58, R.A. No. 165a)
261
VOL. 462, JUNE 29, 2005 261
Ching vs. Salinas, Sr.
Cushion are not ornamental. They lack the decorative quality or
value that must characterize authentic works of applied art. They
are not even artistic creations with incidental utilitarian functions
or works incorporated in a useful article. In actuality, the personal
properties described in the search warrants are mechanical works,
the principal function of which is utility sans any aesthetic
embellishment.
Neither are we to regard the Leaf Spring Eye Bushing and
Vehicle Bearing Cushion as included in the catch-all phrase “other
literary, scholarly, scientific and artistic works” in Section 172.1(a)
of R.A. No. 8293. Applying the principle of ejusdem generis which
states that “where a statute describes things of a particular class
or kind accompanied by words of a generic character, the generic
word will usually be limited to things of a similar nature with those
particularly enumerated, unless there be something in the context
of the state which would repel such inference,” 46 the Leaf Spring
Eye Bushing and Vehicle Bearing Cushion are not copyrightable,
being not of the same kind and nature as the works enumerated in
Section 172 of R.A. No. 8293.
No copyright granted by law can be said to arise in favor of the
petitioner despite the issuance of the certificates of copyright
registration and the deposit of the Leaf Spring Eye
_______________
SEC. 111. Prohibition against Filing of Parallel Applications.—
An applicant may not file two (2) applications for the same subject,
one for utility model registration and the other for the grant of a
patent whether simultaneously or consecutively. (Sec. 59, R.A. No.
165a).
46 See Kapisanan ng mga Manggagawa sa Government Service
Insurance System (KMG) v. Commission on Audit, G.R. No.
150769, 31 August 2004, 437 SCRA 371, citing Philippine
Basketball Association v. Court of Appeals, 337 SCRA
358 (2000); National Power Corporation v. Angas, G.R. Nos. 60225-
26, 8 May 1992, 208 SCRA 542; Cebu Institute of Technology v.
Ople, G.R. No. L-58870, 18 December 1987, 156 SCRA 629; Ollada
v. Court of Tax Appeals, 99 Phil. 604(1956); Murphy, Morris & Co.
v. Collector of Customs, 11 Phil. 456 (1908).
262
262 SUPREME COURT REPORTS ANNOTATED
Ching vs. Salinas, Sr.
Bushing and Vehicle Bearing Cushion. Indeed, in Joaquin, Jr. v.
Drilon47 and Pearl & Dean (Phil.), Incorporated v. Shoemart,
Incorporated,48 the Court ruled that:
Copyright, in the strict sense of the term, is purely a statutory
right. It is a new or independent right granted by the statute, and
not simply a pre-existing right regulated by it. Being a statutory
grant, the rights are only such as the statute confers, and may be
obtained and enjoyed only with respect to the subjects and by the
persons, and on terms and conditions specified in the statute.
Accordingly, it can cover only the works falling within the statutory
enumeration or description.
That the works of the petitioner may be the proper subject of a
patent does not entitle him to the issuance of a search warrant for
violation of copyright laws. In Kho v. Court of Appeals49 and Pearl
& Dean (Phil.), Incorporated v. Shoemart, Incorporated,50 the
Court ruled that “these copyright and patent rights are completely
distinct and separate from one another, and the protection afforded
by one cannot be used interchangeably to cover items or works
that exclusively pertain to the others.” The Court expounded
further, thus:
Trademark, copyright and patents are different intellectual
property rights that cannot be interchanged with one another. A
trademark is any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and shall
include a stamped or marked container of goods. In relation
thereto, a trade name means the name or designation identifying
or distinguishing an enterprise. Meanwhile, the scope of a
copyright is confined to literary and artistic works which are
original intellectual creations in the literary and artistic domain
protected from the moment of their creation. Patentable
inventions, on the other hand, refer to any technical solution of a
problem in any field of human
_______________
47 G.R. No. 108946, 28 January 1999, 302 SCRA 225.
48 G.R. No. 148222, 15 August 2003, 409 SCRA 231.
49 G.R. No. 115758, 19 March 2002, 379 SCRA 410.
50 Supra.
263
VOL. 462, JUNE 29, 2005 263
Ching vs. Salinas, Sr.
activity which is new, involves an inventive step and is industrially
applicable.
The petitioner cannot find solace in the ruling of the United States
Supreme Court in Mazer v. Stein51 to buttress his petition. In that
case, the artifacts involved in that case were statuettes of dancing
male and female figures made of semi-vitreous china. The
controversy therein centered on the fact that although copyrighted
as “works of art,” the statuettes were intended for use and used as
bases for table lamps, with electric wiring, sockets and lampshades
attached. The issue raised was whether the statuettes were
copyright protected in the United States, considering that the
copyright applicant intended primarily to use them as lamp bases
to be made and sold in quantity, and carried such intentions into
effect. At that time, the Copyright Office interpreted the 1909
Copyright Act to cover works of artistic craftsmanship insofar as
their form, but not the utilitarian aspects, were concerned. After
reviewing the history and intent of the US Congress on its
copyright legislation and the interpretation of the copyright office,
the US Supreme Court declared that the statuettes were held
copyrightable works of art or models or designs for works of art.
The High Court ruled that:
“Works of art (Class G)—(a)—In General. This class includes works
of artistic craftsmanship, in so far as their form but not their
mechanical or utilitarian aspects are concerned, such as artistic
jewelry, enamels, glassware, and tapestries, as well as all works
belonging to the fine arts, such as paintings, drawings and
sculpture. . . .”
So we have a contemporaneous and long-continued construction
of the statutes by the agency charged to administer them that
would allow the registration of such a statuette as is in question
here.52
_______________
51 74 S.Ct. 460; 347 U.S. 201.
52 Great Northern Ry. Co. v. United States, 315 U.S. 262, 275, 62
S.Ct. 529, 534, 86 L.Ed. 836.
264
264 SUPREME COURT REPORTS ANNOTATED
Ching vs. Salinas, Sr.
The High Court went on to state that “[t]he dichotomy of protection
for the aesthetic is not beauty and utility but art for the copyright
and the invention of original and ornamental design for design
patents.” Significantly, the copyright office promulgated a rule to
implement Mazer to wit:
. . . [I]f “the sole intrinsic function of an article is its utility, the fact
that the work is unique and attractively shaped will not qualify it
as a work of art.”
In this case, the bushing and cushion are not works of art. They
are, as the petitioner himself admitted, utility models which may
be the subject of a patent.
IN LIGHT OF ALL THE FOREGOING, the instant petition is
hereby DENIED for lack of merit. The assailed Decision and
Resolution of the Court of Appeals in CA-G.R. SP No. 70411 are
AFFIRMED. Search Warrant Nos. 01-2401 and 01-2402 issued on
October 15, 2001 are ANNULLED AND SET ASIDE. Costs against
the petitioner.
SO ORDERED.
Puno (Chairman), Austria-Martinez, Tinga and Chico-
Nazario, JJ., concur.
Petition denied, assailed decision and resolution affirmed.
Note.—There can be no unfair competition under the law on
copyrights although it is applicable to disputes over the use of
trademarks. (Pearl & Dean [Phil.], Incorporated vs. Shoemart,
Incorporated, 409 SCRA 231[2003])