PARKE, DAVIS & COMPANY, petitioner, vs. DOCTOR’S 6.ID. ; ID. ; ID. ; ID. ; PUBLIC USE OR SALE.
; ID. ; ID. ; ID. ; PUBLIC USE OR SALE.—To entitle a man to a patent,
PHARMACEUTICALS, INC. and TIBURCIO S. EVALLE, in his capacity
as Director of Patents, respondents.
Patents; Contracts; Sales; An 8% royalty rate on net sales is reasonable in a
developing country like the Philippines, vis-a-vis, giant foreign licensors of
pharmaceutical products.—The Court finds no abuse of discretion on the part of
respondent Director of Patents considering that in fixing the royalty rate he made
a compromise on the rate proposed by petitioner and those prevailing in other
countries. The 8% royalty rate is midway between the rates in Canada and
Norway. In developing countries like the Philippines, liberal treatment in trade
relations should be afforded to local industry for as reasoned out by respondent
company, “it is so difficult to compete with the industrial giants of the drug
industry, among them being the petitioner herein, that it always is necessary that
the local drug companies should sell at much lower (than) the prices of said
foreign drug entities.”
Same; Same; Same; Foreign product licensor can later on ask for an increase in
percentage rate of royalty fixed by the Director of Patents if local sales of licensee
should increase.—The Court agrees with then Solicitor General, now retired
Justice Antonio P. Barredo and then Asst. Solicitor General Pacifico de Castro,
now Justice of the Supreme Court, that the 8% royalty rate is reasonable
“considering that Doctor’s Pharmaceutical, Inc. is a small manufacturing venture
compared with Parke, Davis & Company, Inc. which is a subsidiary of the huge
mother firm, Parke, Davis & Company of Michigan, U.S.A.” (Annex D, Petition
for Review). If Doctor’s is making sufficient profit to justify an increase of royalty
later, Parke, Davis & Co., Inc. can easily demand an increase, considering that the
latter has access to the books and records of the former.
Same; Judgments; Decisions of Director of Patents may be made by him to take
effect immediately.—Petitioner’s argument that respondent Director of Patents
has no authority to declare that the resolution containing the licensing agreement
“shall take effect immediately” is untenable for any award, order or decision of
the Patent Office is immediately executory. This is clear from the provisions of
Sec. 4, Rule 44 of the Rules of Court which provides that appeal shall not stay the
award, order or decision of the Public Service Commission, the Patent Office, and
the Agricultural Inventions Board. Moreover, the resolution of respondent official
was issued only after the herein parties failed to submit a licensing agreement and
had left the same to the discretion of the Director of Patents. As correctly argued
by the Solicitor General “to hold that said Amended Resolution could not be made
effectively would open the door for interminable litigation, thus rendering
nugatory said compulsory licensing agreement sanctioned by the Director of
Patents, as any implementing condition imposed therein could be the subject of
litigation.” Parke, Davis & Co. vs. Doctor’s Pharmaceuticals, Inc., 124 SCRA
115, No. L-27004 August 16, 1983
ANGEL VARGAS, plaintiff and appellant, vs. F. M. YAPTICO & Co.
(LTD.), defendant and appellee.
1.PROPERTY; PATENTS; LAW.—Act No. 2235 of the Philippine Legislature,
enacted on February 10, 1913, in effect makes the United States Patent Laws
applicable in the Philippine Islands.
2.ID. ; ID. ; VALIDITY ; JUDICIARY.—When a patent is sought to be enforced,
"the questions of invention, novelty, or prior use, and each of them, are open to
judicial examination."
3.ID.; ID.; ID.; ID.; BURDEN OF PROOF.—The burden of proof to substantiate
a charge of infringement is with the plaintiff. Where, however, the plaintiff
introduces the patent in evidence, if it is in due form, it affords a prima facie
presumption of its correctness and validity. The decision of the Commissioner of
Patents in granting the patent is always presumed to be correct. The burden then
shifts to the defendant to overcome by competent evidence this legal presumption.
4.ID.; ID.; ID.; "VARGAS PLOW"; NOVELTY, INVENTION, OR
DISCOVERY.—In order to give existence to the right to a patent the element of
novelty, invention, or discovery must be shown.
5.ID. ; ID. ; ID. ; ID. ; REPAIRS.—A difference has long been recognized
between repairing and reconstructing a machine. If, for instance, partial injuries,
whether they occur from accident or from wear and tear, to a machine for
agricultural purposes, are made, this is only refitting the machine for use, and thus
permissible.
the invention must be new to the world.
7.ID.; ID.; ID.; ID.; ID.—Under the provisions of the statute, an inventor's
creation must not have been in. public use or on sale in the United States and the
Philippine Islands for more than two years prior to his application.
8.ID. ; ID. ; ID. ; ID. ; ID.—A single instance of public use of the invention by a
patentee for more than two years before the date of his application for his patent
will be fatal to the validity of the patent when issued.
9.ID.; ID.; ID.; ID.; ID.—Held: That since a preponderance of the evidence is to
the effect that for more than two years before the application for the original letters
patent there was, by the consent and allowance of the plaintiff, a public use of the
invention covered by them, namely, of the so-called "Vargas Plow," the patent is
void. Vargas vs. F. M.. Yaptico & Co., 40 Phil. 195, No. 14101 September 24,
1919
PATRICK HENRY FRANK and WILLIAM HENRY GOHN, plaintiffs and
appellees, vs. CONSTANCIO BENITO, defendant and appellant.
1.WHAT IS "PRIMA FACIE" EVIDENCE AND WHEN BURDEN OF PROOF
SHIFTS.—In a case which involved the infringement of a. patent issued to the
plaintiff by the United States Patent Office, which was duly registered in the
Bureau of Commerce and Industry of the Philippine Islands, and which was
introduced in evidence by the plaintiff and is in due form, the patent is prima facie
evidence of its correctness and validity, and the burden then shifts to the defendant
to overcome this legal presumption.
2.WHEN IMPROVER is AN INFRINGER.—It is well established that an
improver cannot appropriate the basic patent of another, and that the improver
without license is an infringer and may be sued as such. Frank and Gohn vs.
Benito, 51 Phil. 712, No. 27793 March 15, 1928
CARLOS GSELL, plaintiff and appellee, vs. VALERIANO VELOSO YAP-
JUE, defendant and appellant.
1.INFRINGEMENT OF PATENTS; PROCESS OF MANUFACTURE.—The
manufacture of cane handles for walking sticks and umbrellas by a process
identical with plaintiff's patented process therefor, save only for the substitution
of a blast lamp or blowpipe fed by alcohol, for a blast lamp or blowpipe fed by
petroleum or mineral fuel, in applying heat for the purpose of curving such
handles, is an infringement upon the patented process.
2.ID.; ID., INJUNCTION; CONTEMPT.—The use of a process in all respects
identical with a process protected by a valid patent, save only that a well-known
mechanical equivalent is substituted in lieu of some particular part of the patented
process, is an infringement upon the rights of the owner of the patent, which will
be enjoined in appropriate proceeding, and the use of such process, after the order
enjoining its use has been issued, is a "contempt," under the provisions of section
172 of the Code of Civil Procedure. GSELL vs. YAP-JUE, 12 Phil. 519, No. 4720
January 19, 1909
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 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 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 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.
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).
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).
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. Maguan vs. Court of Appeals, 146
SCRA 107, No. L-45101 November 28, 1986
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 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. Godines vs. Court of Appeals, 226
SCRA 338, G.R. No. 97343 September 13, 1993
ROBERTO L. DEL ROSARIO, petitioner, vs. COURT OF APPEALS AND
JANITO CORPORATION, respondents.
Actions; Injunction; Words and Phrases; Injunction, Defined; The controlling
reason for the existence of the judicial power to issue the writ of injunction is that
the court may thereby prevent a threatened or continuous irremediable injury to
some of the parties before their claims can be thoroughly investigated and
advisedly adjudicated.—Injunction is a preservative remedy for the protection of
substantive rights or interests. It is not a cause of action in itself but merely a
provisional remedy, an adjunct to a main suit. The controlling reason for the
existence of the judicial power to issue the writ is that the court may thereby
prevent a threatened or continuous irremediable injury to some of the parties
before their claims can be thoroughly investigated and advisedly adjudicated. It is
to be resorted to only when there is a pressing necessity to avoid injurious
consequences which cannot be remedied under any standard of compensation. The
application of the writ rests upon an alleged existence of an emergency or of a
special reason for such an order before the case can be regularly heard, and the
essential conditions for granting such temporary injunctive relief are that the
complaint alleges facts which appear to be sufficient to constitute a cause of action
for injunction and that on the entire showing from both sides, it appears, in view
of all the circumstances, that the injunction is reasonably necessary to protect the
legal rights of plaintiff pending the litigation.
Same; Same; There are only two requisites to be satisfied if an injunction is to
issue, namely, the existence of the right to be protected, and that the facts against
which the injunction is to be directed are violative of said right.—A preliminary
injunction may be granted at any time after the commencement of the action and
before judgment when it is established that the defendant is doing, threatens, or is
about to do, or is procuring or suffering to be done, some acts probably in violation
of the plaintiff’s rights. Thus, there are only two requisites to be satisfied if an
injunction is to issue, namely, the existence of the right to be protected, and that
the facts against which the injunction is to be directed are violative of said right.
Patent Law; Any new model of implements or tools of any industrial product even
if not possessed of the quality of invention but which is of practical utility is
entitled to a patent for utility model.—The Patent Law expressly acknowledges
that any new model of implements or tools of any industrial product even if not
possessed of the quality of invention but which is of practical utility is entitled to
a patent for utility model. Here, there is no dispute that the letters patents issued
to petitioner are for utility models of audio equipment.
Same; Evidence; Presumptions; Where a party introduces the patent in evidence,
if it is in due form, it affords a prima facie presumption of its correctness and
validity—the decision of the Director of Patents in granting the patent is always
presumed to be correct, and the burden then shifts to the other party to overcome
this presumption by competent evidence.—In issuing, reissuing or withholding
patents and extensions thereof, the Director of Patents determines whether the
patent is new and whether the machine or device is the proper subject of patent.
In passing on an application, the Director decides not only questions of law but
also questions of fact, i.e. whether there has been a prior public use or sale of the
article sought to be patented. Where petitioner introduces the patent in evidence,
if it is in due form, it affords a prima facie presumption of its correctness and
validity. The decision of the Director of Patents in granting the patent is always
presumed to be correct, and the burden then shifts to respondent to overcome this
presumption by competent evidence.
Same; Same; 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.—Under Sec. 55 of The Patent Law 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.
Respondent corporation failed to present before the trial court competent evidence
that the utility models covered by the Letters Patents issued to petitioner were not
new.
Same; Infringement; Words and Phrases; A patentee shall have the exclusive right
to make, use and sell the patented machine, article or product for the purpose of
industry or commerce, throughout the territory of the Philippines for the term of
the patent, and such making, using or selling by any person without authorization
of the patentee constitutes infringement of his patent.—As may be gleaned herein,
the rights of petitioner as a patentee have been sufficiently established, contrary
to the findings and conclusions of respondent Court of Appeals. Consequently,
under Sec. 37 of The Patent Law, petitioner as a patentee shall have the exclusive
right to make, use and sell the patented machine, article or product for the purpose
of industry or commerce, throughout the territory of the Philippines for the term
of the patent, and such making, using or selling by any person without
authorization of the patentee constitutes infringement of his patent.
Same; Same; In order to infringe a patent, a machine or device must perform the
same function, or accomplish the same result by identical or substantially identical
means and the principle or mode of operation must be substantially the same.—It
is elementary that a patent may be infringed where the essential or substantial
features of the patented invention are taken or appropriated, or the device, machine
or other subject matter alleged to infringe is substantially identical with the
patented invention. In order to infringe a patent, a machine or device must perform
the same function, or accomplish the same result by identical or substantially
identical means and the principle or mode of operation must be substantially the
same. Del Rosario vs. Court of Appeals, 255 SCRA 152, G.R. No. 115106 March
15, 1996
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
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.
Same; Same; Same; Same; The Doctrine of Equivalents thus requires satisfaction
of the function-means-and-result test.—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.
Damages; Actual Damages; Unearned Profits; It is necessary to prove the actual
amount of damages with a reasonable degree of 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 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. Smith Kline Beckman Corporation vs. Court of Appeals, 409 SCRA 33,
G.R. No. 126627 August 14, 2003
PHIL PHARMAWEALTH, INC., petitioner, vs. PFIZER, INC. and PFIZER
(PHIL.) INC., respondents.
Intellectual Property; Patents; The exclusive right of a patentee to make, use and
sell a patented product, article or process exists only during the term of the
patent.—It is clear from the above-quoted provision of law that the exclusive right
of a patentee to make, use and sell a patented product, article or process exists
only during the term of the patent. In the instant case, Philippine Letters Patent
No. 21116, which was the basis of respondents in filing their complaint with the
BLA-IPO, was issued on July 16, 1987. This fact was admitted by respondents
themselves in their complaint. They also admitted that the validity of the said
patent is until July 16, 2004, which is in conformity with Section 21 of RA 165,
providing that the term of a patent shall be seventeen (17) years from the date of
issuance thereof. Section 4, Rule 129 of the Rules of Court provides that an
admission, verbal or written, made by a party in the course of the proceedings in
the same case, does not require proof and that the admission may be contradicted
only by showing that it was made through palpable mistake or that no such
admission was made.
Remedial Law; Injunction; Requisites to Warrant the Issuance of an Injunctive
Relief.—From the foregoing, it can be inferred that two requisites must exist to
warrant the issuance of an injunctive relief, namely: (1) the existence of a clear
and unmistakable right that must be protected; and (2) an urgent and paramount
necessity for the writ to prevent serious damage.
Same; Certiorari; Appeals; What is being questioned before the Court of Appeals
(CA) is a not a decision, but an interlocutory order of the Bureau of Legal Affairs
of the Intellectual Property Office (BLA-IPO) denying respondents’ motion to
extend the life of the preliminary injunction issued in their favor.—It is true that
under Section 7(b) of RA 8293, otherwise known as the Intellectual Property Code
of the Philippines, which is the presently prevailing law, the Director General of
the IPO exercises exclusive appellate jurisdiction over all decisions rendered by
the Director of the BLA-IPO. However, what is being questioned before the CA
is not a decision, but an interlocutory order of the BLA-IPO denying respondents’
motion to extend the life of the preliminary injunction issued in their favor.
Same; Same; Same; Republic Act (RA) 8293 is silent with respect to any remedy
available to litigants who intend to question an interlocutory order issued by the
Bureau of Legal Affairs of the Intellectual Property Office (BLA-IPO);
Respondents correctly resorted to the filing of a special civil action for certiorari
with the Court of Appeals (CA) to question the assailed Orders of the Bureau of
Legal Affairs of the Intellectual Property Office (BLA-IPO) as they cannot appeal
therefrom and they have no other plain, speedy and adequate remedy in the
ordinary course of law.—RA 8293 is silent with respect to any remedy available
to litigants who intend to question an interlocutory order issued by the BLA-IPO.
Moreover, Section 1(c), Rule 14 of the Rules and Regulations on Administrative
Complaints for Violation of Laws Involving Intellectual Property Rights simply
provides that interlocutory orders shall not be appealable. The said Rules and
Regulations do not prescribe a procedure within the administrative machinery to
be followed in assailing orders issued by the BLA-IPO pending final resolution of
a case filed with them. Hence, in the absence of such a remedy, the provisions of
the Rules of Court shall apply in a suppletory manner, as provided under Section
3, Rule 1 of the same Rules and Regulations. Hence, in the present case,
respondents correctly resorted to the filing of a special civil action for certiorari
with the CA to question the assailed Orders of the BLA-IPO, as they cannot appeal
therefrom and they have no other plain, speedy and adequate remedy in the
ordinary course of law. This is consistent with Sections 1 and 4, Rule 65 of the
Rules of Court, as amended.
Same; Courts; Doctrine of Primary Jurisdiction; It is settled that one of the
exceptions to the doctrine of primary jurisdiction is where the question involved
is purely legal and will ultimately have to be decided by the courts of justice.—
The propriety of extending the life of the writ of preliminary injunction issued by
the BLA-IPO in the exercise of its quasi-judicial power is no longer a matter that
falls within the jurisdiction of the said administrative agency, particularly that of
its Director General. The resolution of this issue which was raised before the CA
does not demand the exercise by the IPO of sound administrative discretion
requiring special knowledge, experience and services in determining technical and
intricate matters of fact. It is settled that one of the exceptions to the doctrine of
primary jurisdiction is where the question involved is purely legal and will
ultimately have to be decided by the courts of justice. This is the case with respect
to the issue raised in the petition filed with the CA.
Same; Actions; Forum Shopping; Definition of Forum Shopping; Elements of
Forum Shopping.—Forum shopping is defined as the act of a party against whom
an adverse judgment has been rendered in one forum, of seeking another (and
possibly favorable) opinion in another forum (other than by appeal or the special
civil action of certiorari), or the institution of two (2) or more actions or
proceedings grounded on the same cause on the supposition that one or the other
court would make a favorable disposition. The elements of forum shopping are:
(a) identity of parties, or at least such parties that represent the same interests in
both actions; (b) identity of rights asserted and reliefs prayed for, the reliefs being
founded on the same facts; (c) identity of the two preceding particulars, such that
any judgment rendered in the other action will, regardless of which party is
successful, amount to res judicata in the action under consideration.
Same; Same; Same; It is settled by the Court in several cases that the filing by a
party of two apparently different actions but with the same objective constitutes
forum shopping.—It is settled by this Court in several cases that the filing by a
party of two apparently different actions but with the same objective constitutes
forum shopping. The Court discussed this species of forum shopping as follows:
Very simply stated, the original complaint in the court a quo which gave rise to
the instant petition was filed by the buyer (herein private respondent and his
predecessors-in-interest) against the seller (herein petitioners) to enforce the
alleged perfected sale of real estate. On the other hand, the complaint in the
Second Case seeks to declare such purported sale involving the same real property
“as unenforceable as against the Bank,” which is the petitioner herein. In other
words, in the Second Case, the majority stockholders, in representation of the
Bank, are seeking to accomplish what the Bank itself failed to do in the original
case in the trial court. In brief, the objective or the relief being sought, though
worded differently, is the same, namely, to enable the petitioner Bank to escape
from the obligation to sell the property to respondent.
Same; Same; Same; If the forum shopping is not considered willful and deliberate,
the subsequent case shall be dismissed without prejudice, on the ground of either
litis pendentia or res judicata; If the forum shopping is willful and deliberate, both
(on all, if there are more than two) actions shall be dismissed with prejudice.—
Juris-prudence holds that if the forum shopping is not considered willful and
deliberate, the subsequent case shall be dismissed without prejudice, on the
ground of either litis pendentia or res judicata. However, if the forum shopping is
willful and deliberate, both (or all, if there are more than two) actions shall be
dismissed with prejudice. In the present case, the Court finds that respondents did
not deliberately violate the rule on non-forum shopping. Respondents may not be
totally blamed for erroneously believing that they can file separate actions simply
on the basis of different patents. Moreover, in the suit filed with the RTC of Makati
City, respondents were candid enough to inform the trial court of the pendency of
the complaint filed with the BLA-IPO as well as the petition for certiorari filed
with the CA. On these bases, only Civil Case No. 04-754 should be dismissed on
the ground of litis pendentia. Phil Pharmawealth, Inc. vs. Pfizer, Inc., 635 SCRA
140, G.R. No. 167715 November 17, 2010
CRESER PRECISION SYSTEMS, INC., petitioner, vs. COURT OF
APPEALS AND FLORO INTERNATIONAL CORP., respondents.
Patents; Infringement; Actions; Words and Phrases; Only the patentee or his
successors-in-interest may file an action for infringement—the phrase “anyone
possessing any right, title or interest in and to the patented invention” in Sec. 42
of R.A. 165 refers only to the patentee’s successors-in-interest, assignees or
grantees.—Section 42 of R.A. 165, otherwise known as the Patent Law, explicitly
provides: Section 42. Civil action for infringement.—Any patentee, or anyone
possessing any right, title or interest in and to the patented invention, whose rights
have been infringed, may bring a civil action before the proper Court of First
Instance (now Regional Trial Court), to recover from the infringer damages
sustained by reason of the infringement and to secure an injunction for the
protection of his rights. x x x Under the aforequoted law, only the patentee or his
successors-in-interest may file an action for infringement. The phrase “anyone
possessing any right, title or interest in and to the patented invention” upon which
petitioner maintains its present suit, refers only to the patentee’s successors-in-
interest, assignees or grantees since actions for infringement of patent may be
brought in the name of the person or persons interested, whether as patentee,
assignees, or as grantees, of the exclusive right.
Same; Same; Same; A person or entity who has not been granted letters patent
over an invention and has not acquired any right or title thereto either as assignee
or as licensee, has no cause of action for infringement because the right to maintain
an infringement suit depends on the existence of the patent.—Moreover, there can
be no infringement of a patent until a patent has been issued, since whatever right
one has to the invention covered by the patent arises alone from the grant of patent.
In short, a person or entity who has not been granted letters patent over an
invention and has not acquired any right or title thereto either as assignee or as
licensee, has no cause of action for infringement because the right to maintain an
infringement suit depends on the existence of the patent.
Same; Same; Same; A person claiming to be an inventor of an article has no right
of property over the same upon which it can maintain a suit unless it obtains a
patent therefor.—Petitioner admits it has no patent over its aerial fuze. Therefore,
it has no legal basis or cause of action to institute the petition for injunction and
damages arising from the alleged infringement by private respondent. While
petitioner claims to be the first inventor of the aerial fuze, still it has no right of
property over the same upon which it can maintain a suit unless it obtains a patent
therefor. Under American jurisprudence, an inventor has no common-law right to
a monopoly of his invention. He has the right to make, use and vend his own
invention, but if he voluntarily discloses it, such as by offering it for sale, the world
is free to copy and use it with impunity. A patent, however, gives the inventor the
right to exclude all others. As a patentee, he has the exclusive right of making,
using or selling the invention.
Same; Same; Same; Anyone who has no patent over an invention but claims to
have a right or interest thereto can not file an action for declaratory judgment or
injunctive suit which is not recognized in this jurisdiction but he can, under
Section 28 of the Patent Law, file a petition for cancellation of the patent within
three (3) years from the publication of the patent with the Director of Patents.—
Further, the remedy of declaratory judgment or injunctive suit on patent invalidity
relied upon by petitioner cannot be likened to the civil action for infringement
under Section 42 of the Patent Law. The reason for this is that the said remedy is
available only to the patent holder or his successors-in-interest. Thus, anyone who
has no patent over an invention but claims to have a right or interest thereto can
not file an action for declaratory judgment or injunctive suit which is not
recognized in this jurisdiction. Said person, however, is not left without any
remedy. He can, under Section 28 of the aforementioned law, file a petition for
cancellation of the patent within three (3) years from the publication of said patent
with the Director of Patents and raise as ground therefor that the person to whom
the patent was issued is not the true and actual inventor. Hence, petitioner’s
remedy is not to file an action for injunction or infringement but to file a petition
for cancellation of private respondent’s patent. Petitioner however failed to do so.
As such, it can not now assail or impugn the validity of the private respondent’s
letters patent by claiming that it is the true and actual inventor of the aerial fuze.
Creser Precision Systems, Inc. vs. Court of Appeals, 286 SCRA 13, G.R. No.
118708 February 2, 1998
BARRY JOHN PRICE, JOHN WATSON CLITHERON and JOHN
BRADSHAW, Assignors to ALLEN & HANBURYS, LTD., petitioners, vs.
UNITED LABORATORIES, respondent.
Commercial Law; Patents; Director of Patents authorized to fix the terms and
conditions of the compulsory license.—The first assignment of error has no merit.
The terms and conditions of the compulsory license were fixed by the Director of
Patents after a hearing and careful consideration of the evidence of the parties and
in default of an agreement between them as to the terms of the “license. This he is
authorized to do under Section 36 of Republic Act No. 165.
Same; Same; Factual finding that UNILAB has the capability to use the patented
compound in the manufacture of an anti-ulcer pharmaceutical preparation
supported by substantial evidence.—The Director’s finding that UNILAB has the
capability to use the patented compound in the manufacture of an anti-ulcer
pharmaceutical preparation is a factual finding which is supported by substantial
evidence, hence, the Court of Appeals did not commit a reversible error in
affirming it. Of indubitable relevance to this point is evidence that UNILAB has
been engaged in the business of manufacturing drugs and pharmaceutical products
for the past thirty (30) years, that it is the leading drug manufacturer in the country,
that it has the necessary equipment and technological expertise for the
development of solid dosage forms or for tablet, capsule, and liquid preparations,
and that it maintains standards and procedures to ensure the quality of its products.
Even if it were true, as alleged by the patentee (although it is denied by UNILAB),
that its capability to use the patented compound was only acquired after the
petition for compulsory licensing had been filed, the important thing is that such
capability was proven to exist during the hearing of the petition.
Same; Same; Same; No error in granting a compulsory license over the entire
patented invention for there is no law requiring that the license be limited to a
specific embodiment of the invention or, to a particular claim; Petitioner cannot
complain of deprivation of property rights without just compensation.—The
patented invention in this case relates to medicine and is necessary for public
health as it can be used as component in the manufacture of anti-ulcer medicine.
The Director of Patents did not err in granting a compulsory license over the entire
patented invention for there is no law requiring that the license be limited to a
specific embodiment of the invention, or, to a particular claim. The invention in
this case relates to new aminoalkyl derivatives which have histamine H2 blocking
activity, having the general formula (I) and physiologically acceptable salts, N-
oxides and hydrates thereof. The compound ranitidine hydrochloride named in
Claim 45 is also covered by General Claim I and several other sub-generic claims.
Therefore, a license for Claim 45 alone would not be fully comprehensive. In any
event, since the petitioner will be paid royalties on the sales of any products the
licensee may manufacture using any or all of the patented compounds, the
petitioner cannot complain of a deprivation of property rights without just
compensation. Price vs. United Laboratories, 166 SCRA 133, No. L-82542
September 29, 1988
SMITH KLINE & FRENCH LABORATORIES, LTD., petitioner, vs.
COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND
TECHNOLOGY TRANSFER and DOCTORS PHARMACEUTICALS,
INC., respondents.
Patents and Trademarks; Treaties and Conventions; Paris Convention for the
Protection of Industrial Property (“Paris Convention”); Section A(2) of Article 5
of the Paris Convention unequivocally and explicitly respects the right of member
countries to adopt legislative measures to provide for the grant of compulsory
licenses to prevent abuses which might result from the exercise of the exclusive
rights conferred by the patent.—It is thus clear that Section A(2) of Article 5 above
unequivocally and explicitly respects the right of member countries to adopt
legislative measures to provide for the grant of compulsory licenses to prevent
abuses which might result from the exercise of the exclusive rights conferred by
the patent. An example provided of possible abuses is “failure to work;” however,
as such is merely supplied by way of an example, it is plain that the treaty does
not preclude the inclusion of other forms or categories of abuses.
Same; Same; Same; Statutes; Republic Act No. 165; Monopolies; Certainly, the
growth of monopolies was among the abuses which Section 1, Article 5 of the
Paris Convention foresaw and which Congress likewise wished to prevent in
enacting R.A. No. 165.—Section 34 of R.A. No. 165, even if the Act was enacted
prior to the Philippines’ adhesion to the Convention, fits well within the
aforequoted provisions of Article 5 of the Paris Convention. In the explanatory
note of Bill No. 1156 which eventually became R.A. No. 165, the legislative intent
in the grant of a compulsory license was not only to afford others an opportunity
to provide the public with the quantity of the patented product, but also to prevent
the growth of monopolies. Certainly, the growth of monopolies was among the
abuses which Section A, Article 5 of the Convention foresaw, and which our
Congress likewise wished to prevent in enacting R.A. No. 165.
Same; Same; General Agreement on Tariff and Trade; World Trade Organization;
The GATT Treaty, Uruguay Act (Uruguay Final Act) has no retroactive effect.—
Neither may petitioner validly invoke what it designates as the GATT Treaty,
Uruguay Round. This act is better known as the Uruguay Final Act signed for the
Philippines on 15 April 1994 by Trade and Industry Secretary Rizalino Navarro.
Forming integral parts thereof are the Agreement Establishing the World Trade
Organization, the Ministerial Declarations and Decisions, and the Understanding
on Commitments in Financial Services. The Agreement establishing the World
Trade Organization includes various agreements and associated legal instruments.
It was only on 14 December 1994 that the Philippine Senate, in the exercise of its
power under Section 21 of Article VII of the Constitution, adopted Senate
Resolution No. 97 concurring in the ratification by the President of the Agreement.
The President signed the instrument of ratification on 16 December 1994. But
plainly, this treaty has no retroactive effect. Accordingly, since the challenged
BPTTT decision was rendered on 14 February 1994, petitioner cannot avail of the
provisions of the GATT treaty.
Same; Evidence; Findings of facts of the Court of Appeals are conclusive;
Exceptions.—The second and third assigned errors relate more to the factual
findings of the Court of Appeals. Well-established is the principle that the findings
of facts of the latter are conclusive, unless: (1) the conclusion is a finding grounded
entirely on speculation or conjecture; (2) the inference made is manifestly absurd;
(3) there is grave abuse of discretion in the appreciation of facts; (4) the judgment
is premised on a misapprehension of facts; (5) the findings of fact are conflicting;
and (6) the Court of Appeals, in making its findings, went beyond the issues of
the case and the same is contrary to the admissions of both the appellant and
appellee. Petitioner has not convinced us that the instant case falls under any of
the exceptions. On the contrary, we find the findings of fact and conclusions of
respondent Court of Appeals and that of the BPTTT to be fully supported by the
evidence and the applicable law and jurisprudence on the matter.
Same; Due Process; There is no denial of due process where fullblown adversarial
proceedings are conducted before an administrative body.—Petitioner’s claim of
violations of the due process and eminent domain clauses of the Bill of Rights are
mere conclusions which it failed to convincingly support. As to the due process
argument, suffice it to say that full-blown adversarial proceedings were conducted
before the BPTTT pursuant to the Patent Law. We agree with the Court of Appeals
that the BPTTT exhaustively studied the facts and its findings were fully
supported by substantial evidence.
Same; Same; A patent holder is not unduly deprived of its property rights where
the law not only grants him a protective period of two years to enjoy his exclusive
rights thereto but subsequently recognizes just compensation in the form of
royalties.—It cannot likewise be claimed that petitioner was unduly deprived of
its property rights, as R.A. No. 165 not only grants the patent holder a protective
period of two years to enjoy his exclusive rights thereto; but subsequently, the law
recognizes just compensation in the form of royalties.

Appeals; Jurisdiction; Pleadings and Practice; Laches; Estoppel; Administrative

Law; Where the issue of jurisdiction is raised for the first time on appeal, the party
invoking it is so barred on the ground of laches or estoppel—and this is a rule
applicable with equal force to quasi-judicial bodies such as the BPTTT.—As to
the fourth assigned error, we hold that petitioner can no longer assail the
jurisdiction of the BPTTT, raising this issue only for the first time on appeal. In
Pantranco North Express, Inc. v. Court of Appeals, we ruled that where the issue
of jurisdiction is raised for the first time on appeal, the party invoking it is so
barred on the ground of laches or estoppel under the circumstances therein stated.
It is now settled that this rule applies with equal force to quasi-judicial bodies such
as the BPTTT. Here, petitioner has not furnished any cogent reason to depart from
this rule. Smith Kline & French Laboratories, Ltd. vs. Court of Appeals, 276
SCRA 224, G.R. No. 121867 July 24, 1997

Dolorito M. Feleciano and Maximo B. Tapinio, applicants and appellees.

Meliton D. Albasta, petitioner and appellant, vs. The Director of Patents,
respondent and appellee.

Patients ; Assignments of Patients ; Registration of Assignments in Patients

Office; Jurisdiction thereon of Director of Patents.—Assignments of patents and
inventions covered there-by may be recorded in books and records kept for the
purpose in the Patent Office if presented in due form (Republic Act 165, sections
51-53). But where a person other than the inventor files a motion with the Director
of Patents praying that the applicant-inventor be compelled to sign the contract
executed by a co-applicant-inventor and both applicant-inventors to ac-knowledge
it before a notary public as well as another document which refers to the minutes
of a meeting of the organizers of a manufacturing corporation, and then to have
both documents recorded in the Patent Office and in the office of the registrar of
deeds, the Director of Patents has no power and authority to compel the applicant-
inventors to do what the movant is asking them to perform. What the movant asks
the Director of Patents to do for him is essentially a judicial function which would
require the determination of finding by a court of competent jurisdiction as to
whether there was a meeting of the minds of the contracting parties before it could
compel any of them to perform what the movant prays the court to order him to
do. Feleciano vs. The Director of Patient, 93 Phil., 113, No. L-4572 May 22, 1953