MANZANO v CA MANZANO v CA 278 SCRA 688 278 SCRA 688
The primary purpose of the patent system is not The primary purpose of the patent system is not the reward of the individual but the advancement of the arts the reward of the individual but the advancement of the arts and sciences
and sciences. . The functioThe function of a patent is to add to the sumn of a patent is to add to the sum of useful knowledge and one of the purposes of the patent of useful knowledge and one of the purposes of the patent sy
syststem em is is to to encencououragrage e didissssememinainatiotion n of of infinforormamatitionon concerning discoveries and inventions.
concerning discoveries and inventions. FACTS:
FACTS: Ang
Angelielita ta MaManznzanano o fifileled d PPPPO O an an acactiotion n fofor r thethe cancella
cancellation of tion of Letters PatenLetters Patent for t for a gas a gas burner registerburner registered ined in tthe he nanamme e of of rreesspopondndenent t MMeelleecicia a MMaadodollaariria a wwhhoo subs
subsequeequently assignntly assigned ed the the letletterters s patpatent ent to to New New UnitUniteded Foundry and Manufacturing Corporation (UNITED FOUNDRY, Foundry and Manufacturing Corporation (UNITED FOUNDRY, for brevit
for brevity). y). PetPetitiitioner allegeoner alleged d that (a) that (a) the utilitthe utility y modmodelel cov
covered by ered by the lettethe letters rs patpatent, in ent, in this casethis case, , an an LPG gasLPG gas bu
burnrnerer, , wawas s nonot t ininvvenentitiveve, , nenew w oor r ususefefulul; ; ((b) b) tthehe specification of the letters patent did not comply with the specification of the letters patent did not comply with the req
requiruiremementents s of of SecSec. . 1414, , RA RA NoNo. . 16165, 5, as as amamendended; ed; (c)(c) respondent Melecia Madolaria was not the original, true and respondent Melecia Madolaria was not the original, true and act
actuaual l invinvententor or nonor r didid d shshe e derderivive e heher r rigrights from hts from thethe ori
originginal, al, trtrue ue anand d acactuatual l invinvententor or of of ththe e utiutilitlity y momodedell cov
covered by ered by the lettethe letters rs patpatentent; ; and, (d) and, (d) the letterthe letters s patepatentnt was secured by means of fraud or misrepresentation.
was secured by means of fraud or misrepresentation. Testif
Testifying for ying for herselherself f petitiopetitioner ner narratenarrated d that herthat her husband Ong Bun Tua worked as a helper in the UNITED husband Ong Bun Tua worked as a helper in the UNITED FOUNDRY where respondent Melecia Madolaria used to be FOUNDRY where respondent Melecia Madolaria used to be affiliated with from 1965 to 1970; that Ong helped in the affiliated with from 1965 to 1970; that Ong helped in the casting of an LPG burner which was the same utility model casting of an LPG burner which was the same utility model of a burner and that after her husband’s separation from the of a burner and that after her husband’s separation from the sho
shop p she she orgorganizanized ed BesBesco co MetMetal al ManManufaufacturcturing ing (B(BESCOESCO METAL, for brevity) for the casting of LPG burners one of METAL, for brevity) for the casting of LPG burners one of whic
which h had had the the confconfiguriguratiation, on, forform m and and comcomponeponent nt parpartsts similar to those being manufactured by UNITED FOUNDRY. similar to those being manufactured by UNITED FOUNDRY.
Pe
Petitititioneoner r prpresesentented ed twtwo o (2(2) ) otother her wiwitnetnesssseses,, namely, her husband Ong Bun Tua and Fidel Francisco. namely, her husband Ong Bun Tua and Fidel Francisco.
Private respondent, on the other hand, presented Private respondent, on the other hand, presented only one witness, Rolando Madolaria, who testified, among only one witness, Rolando Madolaria, who testified, among others, that he was the General Supervisor of the UNITED others, that he was the General Supervisor of the UNITED FOUNDRY.
FOUNDRY.
Director of Patents Cesar C. Sandiego denied the Director of Patents Cesar C. Sandiego denied the petition for cancellation and holding that the evidence of petition for cancellation and holding that the evidence of petitio
petitioner was not able to establisner was not able to establish convincinglh convincingly y that thethat the pa
patetentnted ed ututililitity y momodedel l of of prprivivatate e rerespsponondedent nt wawass anticipated.
anticipated.
Petitioner elevated the decision of the Director of Petitioner elevated the decision of the Director of Patent
Patents to s to the Court of the Court of Appeals which affirmAppeals which affirmed the ed the decisiondecision of the Director of
of the Director of Patents. Patents. Hence, this petition for Hence, this petition for review onreview on certiorari.
certiorari. ISSUE: ISSUE:
Whether the dismissal is proper where the patent Whether the dismissal is proper where the patent applied for has no substantial difference between the model applied for has no substantial difference between the model to be patented and those sold by petitioner.
to be patented and those sold by petitioner. HELD:
HELD: The eleme
The element nt of of novnoveltelty y is is an an essessentiential al requrequisitisite e of theof the pate
patentabntabilitility y of an of an invinventiention or on or disdiscovcoveryery. . If a If a devidevice orce or pro
procescess s hahas s beebeen n knoknown wn or or usused ed by by othothers prioers prior r to to ititss inventio
invention or n or discovediscovery by ry by the applicant, an application for athe applicant, an application for a patent therefo
patent therefor should be r should be denied; and if the denied; and if the applicatapplication hasion has been granted, the court, in a judicial proceeding in which been granted, the court, in a judicial proceeding in which the validity of the patent is drawn in question, will hold it the validity of the patent is drawn in question, will hold it void and ineffective. It has been repeatedly held that an void and ineffective. It has been repeatedly held that an invention must possess the essential elements of novelty, invention must possess the essential elements of novelty, orig
originalinality and ity and precprecedenedence, and ce, and for the for the patpatenteentee e to to bebe entitled to the protection the invention must be new to the entitled to the protection the invention must be new to the world.
world.
However, The validity of the patent issued by the However, The validity of the patent issued by the Philippine Patent Office in favor of private respondent and Philippine Patent Office in favor of private respondent and the question over the inventiveness, novelty and usefulness the question over the inventiveness, novelty and usefulness of the improved model of the LPG burner are
of the improved model of the LPG burner are mattematters whichrs which are better determ
are better determined by the Patent Offiined by the Patent Office. ce. The technicaThe technicall staff of the Philippine Patent Office composed of experts in staff of the Philippine Patent Office composed of experts in their field has by the issuance of the patent in question their field has by the issuance of the patent in question acce
accepted privatpted private e resrespondpondentent’s ’s modmodel el of of gas burner gas burner as as aa disc
discoveovery. ry. TheThere re is a is a prespresumpumptiotion n that the Office hasthat the Office has correctly determined the patentability of the model
correctly determined the patentability of the model and suchand such act
actioion n mumust st nonot t be be ininteterfrfereered d wiwith th in in the the ababsesence nce of of competent evidence to the contrary.
competent evidence to the contrary.
The rule is settled that the findings of fact of the The rule is settled that the findings of fact of the Director of Patents, especially when affirmed by the Court of Director of Patents, especially when affirmed by the Court of Appeals, are conclusive on this Court when supported by Appeals, are conclusive on this Court when supported by su
substbstanantitial al evevideidencence. . PePetitititioneoner r hahas s fafaililed ed to to shshowow com
compelpellinling g grgrounounds ds fofor r a a rereveversrsal al of of ththe e fifindindings ngs anandd conclusions of the Patent Office and the Court of Appeals. conclusions of the Patent Office and the Court of Appeals. Petition DISMISSED. Petition DISMISSED. MAGUAN v CA MAGUAN v CA 146 SCRA 107 146 SCRA 107 FACTS: FACTS:
Petitioner is doing business under the firm name Petitioner is doing business under the firm name an
and d ststylyle e of of SWSWAN AN MAMANUNUFAFACTCTURURINING" G" whwhilile e prprivivatatee respondent is likewise doing business under the firm name respondent is likewise doing business under the firm name a
annd d ssttyylle e of of ""SSUUSSAANNA A LULUCCHHAAN N PPOOWWDDEER R PPUUFFFF MANUFACTURING.” And holder
MANUFACTURING.” And holder pet
petitioitioner ner infoinformermed d privprivate ate resrespondpondent ent that that thethe powd
powder er pufpuffs fs the latter is the latter is manmanufaufacturcturing ing and sellinand selling g toto var
various ious enteenterprirprises ses parparticuticularllarly y thosthose e in in the the cosmcosmetieticscs ind
indusustrtry, y, resresememblble e IdeIdentnticaical l or or susubsbstatantintialally ly IdIdententicicalal powder puffs of which the former is a patent holder under powder puffs of which the former is a patent holder under Registration Certification Nos. Extension UM-109, Extension Registration Certification Nos. Extension UM-109, Extension UM-1
UM-110 10 and and UtilUtility ity ModModel el No. No. 1181184; 4; petipetitiotioner ner explexplaineainedd such
such prodproductiuction on and and salsale e consconstittitute ute infrinfringeingemenment t of of saisaidd pate
patents nts and and thetherefrefore ore its its immimmediaediate te discdiscontontinuainuance nce isis demanded, otherwise it will be compelled to take judicial demanded, otherwise it will be compelled to take judicial action
action Pr
Privivatate e rerespsponondedent nt rereplplieied d ststatatining g ththat at heherr pro
producducts ts are are difdiffefererent nt anand d coucountentered red thathat t petpetititioionerner's's patents are void because the utility models applied for were patents are void because the utility models applied for were not new
not new and pateand patentantablble e and the and the perpersoson n to to whwhom om ththee patents were issued was not the true
patents were issued was not the true and actual author norand actual author nor were her rights derived from such author.
were her rights derived from such author. Pe
Petitititioneoner r fifileled d a a cocomplmplaiaint nt fofor r dadamamages ges wiwithth inj
injuncunctition on anand d preprelilimiminanary ry injinjuncunctition on agaagainsinst t prprivivatatee respondent with the then Court of First Instance of Rizal respondent with the then Court of First Instance of Rizal
T
The he trtriaial l cocoururt t isissusued ed an an OrOrdeder r grgranantiting ng ththee pr
prelelimimininarary y ininjujuncnctition on prayprayed ed ffor or by by pepetitittioionener.r. Cons
Consequeequentlyntly, , the the corrcorrespoespondinnding g wriwrit t was was subsubseqsequentuentlyly issued.
issued. In
In chalchallenglenging ing thethese se OrdeOrders rs privprivate ate resrespondpondentent filed a petition for certiorari with the respondent court but filed a petition for certiorari with the respondent court but was denied. Hence this petition.
was denied. Hence this petition. ISSUE:
ISSUE:
(1) Whether or not in an action for infringement the Court (1) Whether or not in an action for infringement the Court aa quo
quo had had jurijurisdicsdiction to tion to detdetermermine ine the the invainvalidilidity ty of of thethe pa
patetentnts s at at isissusue e whwhicich h ininvavalilididity ty wawas s ststilill l pependndiningg consideration in the patent office.
consideration in the patent office. (2) Whether or not the Court
(2) Whether or not the Court a quoa quo committed grave abusecommitted grave abuse of
of disdiscrecretition on in in ththe e isissusuanance ce of of a a wrwrit it of of preprelimliminainaryry injunction.
injunction.
(3) Whether or not certiorari is the proper remedy. (3) Whether or not certiorari is the proper remedy. HELD:
HELD:
1) The first issue has been laid to rest in
1) The first issue has been laid to rest in a number of casesa number of cases where the Court ruled that "When a patent is sought to be where the Court ruled that "When a patent is sought to be
enforced, the questions of invention, novelty or prior use, enforced, the questions of invention, novelty or prior use, and each of them, are open to judicial examination."
and each of them, are open to judicial examination."
Under the present Patent Law, there is even less Under the present Patent Law, there is even less rea
reasoson n to to dodoubt ubt thathat t ththe e trtriaial l cocourt urt hahas s jurjurisisdicdictition on toto decl
declare are the the patepatents in nts in quesquestiotion n invinvalidalid. . A A patepatentee shallntee shall have the exclusive right to
have the exclusive right to make, use and sell make, use and sell the patentedthe patented article or product and the making, using, or selling by any article or product and the making, using, or selling by any person without the authorization of the patentee constitutes person without the authorization of the patentee constitutes infringement of the patent (Sec. 37, R.A. 165). Any patentee infringement of the patent (Sec. 37, R.A. 165). Any patentee whose rights have been infringed upon may
whose rights have been infringed upon may bring an actionbring an action before the proper CFI now (RTC) and to
before the proper CFI now (RTC) and to secure an injunctionsecure an injunction for the protection of his rights.
for the protection of his rights. 2)
2) ThThe e buburdrden en of of prproooof f to to susubsbstatantntiaiate te a a chchararge ge of of infr
infringeingemenment t is is witwith h the the plaiplaintifntiff. f. But where But where the the plaiplaintifntiff f introduces the patent in evidence, and the same is in due introduces the patent in evidence, and the same is in due for
form, m, thethere re is is creacreated ated a prima facie prima facie prespresumptumption ion of of itsits correctness and validity. The decision of the Commissioner correctness and validity. The decision of the Commissioner (now Director) of Patent in granting the
(now Director) of Patent in granting the patent is presumedpatent is presumed to
to be be cocorrrrecect. t. ThThe e buburdrden en of of gogoining g foforwrwarard d wiwith th ththee evidence (burden of evidence) then shifts to the defendant evidence (burden of evidence) then shifts to the defendant to overcome by competent evidence this legal presumption. to overcome by competent evidence this legal presumption.
The question then in the instant case is
The question then in the instant case is whether orwhether or not the evidence introduced by private respondent herein is not the evidence introduced by private respondent herein is sufficient to overcome said presumption.
sufficient to overcome said presumption. After a
After a carefucareful review of l review of the evidence consistithe evidence consisting of ng of 64 exhibits and oral testimonies of five witnesses presented 64 exhibits and oral testimonies of five witnesses presented by private respondents before the Court of First Instance by private respondents before the Court of First Instance before the Order of preliminary injunction was issued as well before the Order of preliminary injunction was issued as well as those presented by the petitioner, respondent Court of as those presented by the petitioner, respondent Court of Appeals was satisf
Appeals was satisfied that there is ied that there is aa prima facie prima facie showing of showing of a fair question of invalidity of petitioner's patents on the a fair question of invalidity of petitioner's patents on the ground of lack of novelty. As pointed out by said appellate ground of lack of novelty. As pointed out by said appellate court said evidence appeared not to have been considered court said evidence appeared not to have been considered at all by the court
at all by the court a quoa quo for alleged lack of jurisdiction, onfor alleged lack of jurisdiction, on the
the mimiststakaken en nonotition on thathat t susuch ch quequeststion ion in in wiwithithin n thethe exclusive jurisdiction of the patent office.
exclusive jurisdiction of the patent office. It has
It has been repeatedly held that an been repeatedly held that an inventiinvention muston must possess the essential elements of novelty , originality and possess the essential elements of novelty , originality and pr
prececededenence ce anand d fofor r ththe e papatetentntee ee to to be be enentititltled ed toto pr
prototecectitionon, , ththe e ininveventntioion n mumust st be be nenew w to to ththe e woworlrld.d. According
Accordingly, a ly, a single instancsingle instance of e of public use of the public use of the inventiinventionon by a patentee for more than two years (now for more than by a patentee for more than two years (now for more than one year only under Sec. 9 of the Patent Law) before the one year only under Sec. 9 of the Patent Law) before the date of his application for his patent, will be fatal to, the date of his application for his patent, will be fatal to, the validity of the patent when issued.
validity of the patent when issued. It
It wilwill l be be notnoted ed that the that the valvaliditidity y of of petpetitioitioner'ner'ss pa
patetentnts s is is in in ququesestition on fofor r wawant nt of of nonoveveltlty. y. PrPrivivatatee re
respsponondedent nt cocontntenends ds ththat at popowdwder er pupuffffs s IdIdenentiticacal l inin app
appeaeararance nce wiwith th thathat t covcoverered ed by by petpetititioionerner's 's patpatententss existe
existed and d and were publicly known and used as were publicly known and used as early as 1963early as 1963 long before petitioner was issued the patents in question. long before petitioner was issued the patents in question. (List of Exhibits, Rollo, pp. 194-199). As correctly observed (List of Exhibits, Rollo, pp. 194-199). As correctly observed by
by resrespondpondent ent CourCourt t of of AppeAppealsals, , "si"since nce sufsufficficient ient prooproofsfs have been introduced in evidence showing a fair question of have been introduced in evidence showing a fair question of the invalidity of the patents issued for such models, it is but the invalidity of the patents issued for such models, it is but rig
right ht ththat at ththe e evevideidence nce be be lolookoked ed intinto, o, evevalaluatuated ed anandd determi
determined on ned on the merits so that the the merits so that the mattematter of r of whether thewhether the patents issued were in fact valid or not may be resolved." patents issued were in fact valid or not may be resolved." (Rollo, pp. 286-287).
(Rollo, pp. 286-287). Al
All l ththesese e nonotwtwitithshstatandndining, g, ththe e trtriaial l cocoururtt nonetheless issued the writ of preliminary injunction which nonetheless issued the writ of preliminary injunction which under the circumstances should be denied.
under the circumstances should be denied. For failur
For failure e to to detedetermirmine ne firfirst st the validithe validity ty of of thethe patents before afore
patents before aforesaid issuance of the writ, said issuance of the writ, the trial courtthe trial court failed to satisfy the two requisites necessary if an injunction failed to satisfy the two requisites necessary if an injunction is
is to to isissusue, e, nanamemelyly: : ththe e exexisistetencnce e of of ththe e ririghght t to to bebe protected and the violation of said right. (Buayan Cattle Co., protected and the violation of said right. (Buayan Cattle Co., Inc. v. Quintillan, 128 SCRA 276).
Inc. v. Quintillan, 128 SCRA 276).
Under the above established principles, it appears Under the above established principles, it appears obvi
obvious that ous that the trial court the trial court comcommitmitted a ted a gragrave ve abuabuse se of of discretion which makes certiorari the appropriate remedy. discretion which makes certiorari the appropriate remedy.
As
As fofounund d by by rerespospondendent nt CoCourt urt of of AppAppeaealsls, , thethe injunctive order of the trial court is of so general a tenor that 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 petitioner may be totally barred from the sale of any kind of powder puff. Under the circumstances, respondent appellate powder puff. Under the circumstances, respondent appellate cou
court rt is is of of ththe e viview ew thathat t ordordinainary ry apappepeal al is is obvobvioiousluslyy inadequate.
inadequate.
VARGAS v YAPTICO & CO VARGAS v YAPTICO & CO
40 PHIL 195 40 PHIL 195
FACTS: FACTS:
An
Angel gel VaVargargas, s, a a fafarmrmer er acqacquaiuaintented d wiwith th lolocalcal conditions and alive to the commercial possibilities, took it conditions and alive to the commercial possibilities, took it upon himself to produce, with the native plow as the model, upon himself to produce, with the native plow as the model, an improved, adjustable plow. He made application for a an improved, adjustable plow. He made application for a United States patent to cover his so-called invention. The United States patent to cover his so-called invention. The letters patent were issued by the United States Patent Office letters patent were issued by the United States Patent Office in favor of Vargas .Acertifi
in favor of Vargas .Acertified copy of ed copy of the patent was filed inthe patent was filed in the Division of Patents, Copyrights, and Trademarks of the the Division of Patents, Copyrights, and Trademarks of the Executive Bureau, Government of the Philippine Islands. The Executive Bureau, Government of the Philippine Islands. The patent and its registry was also published in the newspaper, patent and its registry was also published in the newspaper, El Tiempo
El Tiempo.. S
Siinncce e 11991100, , VVaarrggaas s hhaas s eennggaaggeed d iin n tthhee manufacture of these plows in the city of Iloilo, Philippine manufacture of these plows in the city of Iloilo, Philippine Islands. On the plows there was first stamped the words Islands. On the plows there was first stamped the words "P
"Patatent ent AppApplilied ed FoFor,r," " latlater er afafteter r the the patpatent ent hahad d beebeenn granted, changed to "Patented Mar. 12, 1912." Ninety per granted, changed to "Patented Mar. 12, 1912." Ninety per cent of the plows in use in the Visayas (Iloilo and vicinity) cent of the plows in use in the Visayas (Iloilo and vicinity) are said to be Vargas plows.
are said to be Vargas plows.
During this same period, the firm of F. M. Yaptico & During this same period, the firm of F. M. Yaptico & Co. (Ltd.), was engaged in the foundry business in the City Co. (Ltd.), was engaged in the foundry business in the City of Iloilo. It openly held itself out as a manufacturer of plow of Iloilo. It openly held itself out as a manufacturer of plow parts. It has in fact produced points, shares, shoes, and heel parts. It has in fact produced points, shares, shoes, and heel pieces in a considerable amount adapted to replace pieces in a considerable amount adapted to replace worn-out parts of the Vargas plow.
out parts of the Vargas plow.
Such was the existing situation when, in the early Such was the existing situation when, in the early part of 1918, the owner of the patent, and thus the proper part of 1918, the owner of the patent, and thus the proper party to institute judicial proceedings, began action in the party to institute judicial proceedings, began action in the Cou
Court rt of of FiFirsrst t InsInstatance nce of of IloIloilo ilo to to enjenjoioin n ththe e alalleglegeded infringement of U.S. Patent No. 1020232 by the defendant F. infringement of U.S. Patent No. 1020232 by the defendant F. M Yaptico & Co. (Ltd.), and to recover the damages suffered M Yaptico & Co. (Ltd.), and to recover the damages suffered by
by rereasason on of of ththis is infinfrinringegemementnt. . ThThe e cocourt urt isissuesued d thethe prel
prelimiiminary nary injuinjunctnction ion as as prayprayed ed forfor. . The The defdefendaendant, nt, inin addition to a general denial, alleged, as special defenses, addition to a general denial, alleged, as special defenses, that the patent lacked novelty or invention, that there was that the patent lacked novelty or invention, that there was no
no prprioioririty ty of of idideaeas s or or dedevivice ce in in tthe he prprininciciplple e anandd co
consnstrtrucuctition on of of ththe e plplowow, , anand d ththat at ththe e plplowow, , whwhososee manufacture it was sought to have enjoined by the plaintiff, manufacture it was sought to have enjoined by the plaintiff, had already been in public use for more than two years had already been in public use for more than two years befo
before re the the applapplicatication ion of of the plaintthe plaintiff for iff for his patenthis patent. . TheThe part
parties ies subssubsequequentlently y ententered ered into into a a stistipulapulation tion that thethat the court should first resolve the question of whether or not court should first resolve the question of whether or not there had been an infraction of the patent, reserving the there had been an infraction of the patent, reserving the resultant question of damages for later decision. After the resultant question of damages for later decision. After the taking of evidence, including the presentation of exhibits, taking of evidence, including the presentation of exhibits, the trial judge, the Honorable Antonio Villareal, in a very the trial judge, the Honorable Antonio Villareal, in a very exha
exhaustustive ive and and learlearned ned decidecisionsion, , rendrendered ered judjudgmegment nt inin favor of the defendant and against the plaintiff, declaring favor of the defendant and against the plaintiff, declaring null and without effect the patent in question and dismissing null and without effect the patent in question and dismissing the
the suisuit t witwith h coscosts ts agaiagainst nst the the plaiplaintintiff. ff. The The prelprelimiiminarynary injunction theretofore issued was dissolved.
injunction theretofore issued was dissolved.
From this judgment the plaintiff has appealed. From this judgment the plaintiff has appealed.
ISSUE: ISSUE: (1) The
(1) The judgjudgmenment t of the of the triatrial l courcourt t in finding the in finding the patpatentent gran
granted ted plaiplaintintiff ff voivoid d for lack for lack of of novenovelty and lty and invinventientionon should be affirmed;
(2) The patent granted plaintiff is void from the public use of (2) The patent granted plaintiff is void from the public use of his plow for over two years prior to his application for a his plow for over two years prior to his application for a patent, and
patent, and
(3) If the patent is valid, there has been no contributory (3) If the patent is valid, there has been no contributory infringement by defendant.
infringement by defendant. HELD:
HELD:
(1) When a patent is sought to be enforced, "the question of (1) When a patent is sought to be enforced, "the question of inventio
invention, novelty, or prior use, and n, novelty, or prior use, and each of them, are openeach of them, are open to judicial examination." The burden of proof to substantiate to judicial examination." The burden of proof to substantiate a
a chacharge rge of of ininfrfringingemement ent is is wiwith th ththe e plaplaintintififf. f. WheWherere,, however, the plaintiff introduces the patent in evidence, if it however, the plaintiff introduces the patent in evidence, if it is in due form, it affords a
is in due form, it affords a prima facie prima facie presumption of itspresumption of its correctness and validity. The decision of the Commissioner correctness and validity. The decision of the Commissioner of Patents in granting the patent is always presumed to be of Patents in granting the patent is always presumed to be co
corrrrecect. t. ThThe e buburdrden en ththen en shshififts ts to to ththe e dedefefendndanant t toto overcom
overcome e by by competcompetent evidence ent evidence this legal this legal presumppresumptiontion .With all due respect, therefore, for the critical and expert .With all due respect, therefore, for the critical and expert examination of the invention by the United States Patent examination of the invention by the United States Patent Office, the question of the validity of the patent is one for Office, the question of the validity of the patent is one for j
judiudicicial al dedetetermrminainatition, on, and and sisince nce a a patpatent ent hahas s beebeenn submitted, the exact question is whether the defendant has submitted, the exact question is whether the defendant has assumed the burden of proof as to anyone of his defenses assumed the burden of proof as to anyone of his defenses
As
As hereherein in befbefore statedore stated, , the the defdefendaendant nt relrelies ies onon thre
three e spespecial defenscial defenses. One es. One such defenssuch defense, e, on on whicwhich h thethe judgment of the lower court is principally grounded, and to judgment of the lower court is principally grounded, and to which appellant devotes the major portion of his vigorous which appellant devotes the major portion of his vigorous argumen
argument, concerns the t, concerns the element of novelty, invention, orelement of novelty, invention, or discovery, that gives existence to the right to a patent. On discovery, that gives existence to the right to a patent. On this point the trial court reached the conclusion that "the this point the trial court reached the conclusion that "the patented plow of the plaintiff, Exhibit D, is not different from patented plow of the plaintiff, Exhibit D, is not different from the native plow, Exhibit 2, except in the material, in the the native plow, Exhibit 2, except in the material, in the form, in the weight and the grade of the result, the said form, in the weight and the grade of the result, the said differe
differences giving it neither a nces giving it neither a new function nor a new new function nor a new resultresult distinct from the function and the result obtained from the distinct from the function and the result obtained from the na
natitive ve plplowow; ; coconsnseqequeuentntlyly, , itits s prprododucuctition on dodoes es nonott presuppo
presuppose the se the exerciexercise of se of the inventive faculty but merelythe inventive faculty but merely of mechanical skill, which does not give a right to a patent of mechanical skill, which does not give a right to a patent of an invention under the provisions of the Patent Law." In of an invention under the provisions of the Patent Law." In thu
thus s fifindinding, the ng, the coucourt rt mamay y havhave e beebeen n rirightght, , sisince nce ththee Vargas plow does not appear to be
Vargas plow does not appear to be such a "combinationsuch a "combination" as" as contains a novel assemblage of parts exhibiting invention. contains a novel assemblage of parts exhibiting invention.
A second line of defense relates to the fact that A second line of defense relates to the fact that defe
defendanndant t has never has never mamade de a a comcompletplete e VargVargas as ploplow, w, butbut only point
only points, s, shasharesres, , shoshoes, and es, and heel piecesheel pieces, , to to serserve ve asas repa
repairs. irs. DefDefendaendant's nt's concontenttention ion is, is, thathat t in in comcommon mon witwithh other foundries, he has for years cast large numbers of plow other foundries, he has for years cast large numbers of plow poin
points and ts and shashares suitabres suitable le for use for use eiteither on her on the nativethe native wooden plow, or on the Vargas plow. A difference has long wooden plow, or on the Vargas plow. A difference has long been
been recorecognizgnized ed betbetween ween reparepairiniring g and and recoreconstnstructructing ing aa machine. If, for instance, partial injuries, whether they occur machine. If, for instance, partial injuries, whether they occur fr
from om acaccidcidenent t or or frfrom om wewear ar and tearand tear, , to to a a mamachichine ne foforr agri
agricultcultural purposural purposes, es, are are madmade e this is this is onlonly y re-fre-fittitting ing thethe machine for use, and thus permissible. Even under the more machine for use, and thus permissible. Even under the more rigorous doctrine of Leeds & Catlin Co.
rigorous doctrine of Leeds & Catlin Co. vsvs. Victor Talking. Victor Talking Machine Co. ([1909], 213 U.S., 325), it may be possible that Machine Co. ([1909], 213 U.S., 325), it may be possible that all
all the the defdefenendadant nt hahas s dodone ne is is to to mamanufnufactacturure e anand d sesellll isolated parts to be used to replace worn-out parts.
isolated parts to be used to replace worn-out parts.
The third defense is, that under the provisions of The third defense is, that under the provisions of the statute, an inventor's creation must not have been in the statute, an inventor's creation must not have been in public use or on sale in the United States (and the Philippine public use or on sale in the United States (and the Philippine Isla
Islands) for nds) for mormore e thathan n two two yeayears rs prioprior r to to his applichis applicatiationon .Without, therefore, committing ourselves as to the first two .Without, therefore, committing ourselves as to the first two defenses, we propose to base our decision on the one just defenses, we propose to base our decision on the one just suggested as more easily disposing of the case. (
suggested as more easily disposing of the case. (SeeSee 20 R.20 R. C. L., 1140-1142.) We do so with full consciousness of the C. L., 1140-1142.) We do so with full consciousness of the doubt which arose in the mind of the trial court, but with the doubt which arose in the mind of the trial court, but with the belief that since it has been shown that the invention was belief that since it has been shown that the invention was used in public at Iloilo by others than Vargas, the inventor, used in public at Iloilo by others than Vargas, the inventor,
more than two years before the application for the patent, more than two years before the application for the patent, the patent is invalid.
the patent is invalid.
Although we have spent some time in arriving at Although we have spent some time in arriving at this point, yet having reached it, the question in the case is this point, yet having reached it, the question in the case is single and can be brought to a narrow compass. Under the single and can be brought to a narrow compass. Under the English Statute of Monopolies (21 Jac. Ch., 3), and under the English Statute of Monopolies (21 Jac. Ch., 3), and under the Uni
Uniteted d StStatates es PaPatetent nt AcAct t of of FeFebrubruary ary 2121, , 17179393, , lalateterr amended to be as herein quoted, it was always the rule, as amended to be as herein quoted, it was always the rule, as stated by Lord Coke, Justice Story and other authorities, that stated by Lord Coke, Justice Story and other authorities, that to entitle a man to a patent, the invention must be new to to entitle a man to a patent, the invention must be new to the world. As said by the United States Supreme Court, "it the world. As said by the United States Supreme Court, "it has been repeatedly held by this court that a
has been repeatedly held by this court that a single instancesingle instance of public use of the invention
of public use of the invention by a patentee for more thanby a patentee for more than two years before the date of his application for his patent two years before the date of his application for his patent will be fatal to the validity of the patent
will be fatal to the validity of the patent when issued."when issued."
On the facts, we think the testimony shows such a On the facts, we think the testimony shows such a public use of the Vargas plow as to render the patent invalid public use of the Vargas plow as to render the patent invalid Nicolas Roces, a farmer, testified that he had bought twenty Nicolas Roces, a farmer, testified that he had bought twenty Varg
Vargas plows, of as plows, of whicwhich h ExhExhibit 5 ibit 5 was one, was one, in in DeceDecembermber,, 1907; and Exhibit 5, the court found, was a plow completely 1907; and Exhibit 5, the court found, was a plow completely iden
identictical al witwith h thathat t for which the for which the plaiplaintifntiff f had receivhad received ed aa patent. The minor exception, and
patent. The minor exception, and this in this in itself corroboritself corroborativeative of Roces' testimony, is that the handle of plow Exhibit 5 is of Roces' testimony, is that the handle of plow Exhibit 5 is marked with the letters "A V" and not with the words "Patent marked with the letters "A V" and not with the words "Patent Applied For" or "Patented Mar.12, 1912." Salvador Lizarraga, Applied For" or "Patented Mar.12, 1912." Salvador Lizarraga, a clerk in a business house, testified that he had received a clerk in a business house, testified that he had received plows similar to Exhibits D, 5, and 4, for sale on commission plows similar to Exhibits D, 5, and 4, for sale on commission on May,
on May, 19081908, from Bonifacio Araneta, partner of , from Bonifacio Araneta, partner of Vargas inVargas in the plow business. Ko Pao Ko, a blacksmith, testified that he the plow business. Ko Pao Ko, a blacksmith, testified that he had made fifty plow frames in 1905 for Vargas and Araneta, had made fifty plow frames in 1905 for Vargas and Araneta, of which Exhibit 4 is one; Exhibit 4, the court found, is a of which Exhibit 4 is one; Exhibit 4, the court found, is a plow identical with that patented by Vargas, but without plow identical with that patented by Vargas, but without share and mould-board. Alfred Berwin, an employee in the share and mould-board. Alfred Berwin, an employee in the office of Attorney John Bordman, testified that on September office of Attorney John Bordman, testified that on September 21, 1908, he had knowledge of a transaction wherein Vargas 21, 1908, he had knowledge of a transaction wherein Vargas and Araneta desired to obtain money to invest in a plow and Araneta desired to obtain money to invest in a plow fac
factorytory. . GeoGeorge rge RamRamon on SaulSaul, , a a mecmechanihanic c of of the "Tallethe "Tallerr Visayas" of Strachan and MacMurray, testified that he had Visayas" of Strachan and MacMurray, testified that he had made Vargas plow points and shares of the present form made Vargas plow points and shares of the present form upon order of Araneta and Vargas in 1906 and 1907 .William upon order of Araneta and Vargas in 1906 and 1907 .William MacMurra
MacMurray, proprietor y, proprietor of of the "Taller the "Taller VisayaVisayas," corroborateds," corroborated the evidence of the witness Saul by the exhibition of the the evidence of the witness Saul by the exhibition of the account against Vargas and Araneta wherein, under date account against Vargas and Araneta wherein, under date of of December 13, 1906, appears the item "12 new soft steel December 13, 1906, appears the item "12 new soft steel plow shares forge
plow shares forged d and and borbored ed for rivets as for rivets as per sampleper sample."." Agai
Against all nst all thisthis, , was the was the testestimtimony of ony of the plaintthe plaintiff Angeliff Angel Varg
Vargas who as who denidenied ed thathat t Saul could have been Saul could have been seen theseen the Varg
Vargas plow as plow in 1907 and in 1907 and 1901907, who 7, who denidenied that ed that RocRoceses pur
purchchasased ed ththe e VarVargas gas plplow ow in in 19190707, , who who dendenieied d thathatt Lizarraga could have acted as an agent to sell two plows in Lizarraga could have acted as an agent to sell two plows in November, 1908, who denied any remembrance of the loan November, 1908, who denied any remembrance of the loan me
mentntioionened d by by BeBerwrwin in as as hahaviving ng bebeen en nenegogotitiatated ed inin September, 1908, who denied that Ko Pao Ko made fifty September, 1908, who denied that Ko Pao Ko made fifty plows one of which is Exhibit 4, for Araneta and Vargas in plows one of which is Exhibit 4, for Araneta and Vargas in 1905. Plaintiff introduced his books to substantiate his oral 1905. Plaintiff introduced his books to substantiate his oral testimony .It is hardly believable that five or six witnesses testimony .It is hardly believable that five or six witnesses for the defense would deliberately perjure themselves under for the defense would deliberately perjure themselves under oa
oathth. . OnOne e mimighght, t, bubut t ththat at alall l totogegeththerer, , of of didiffffererenentt nati
nationalonalitieities, s, wouwould ld enteenter r into such into such a a conconspirspiracyacy, , is is toto suppose the improbable.
suppose the improbable.
Tested by the principles which go to make the law, Tested by the principles which go to make the law, we think a preponderance of the evidence is to the effect we think a preponderance of the evidence is to the effect that for more than two years before the application for the that for more than two years before the application for the original letters patent, or before July 22, 1908, there was, by original letters patent, or before July 22, 1908, there was, by the consent and allowance of Vargas, a public use of the the consent and allowance of Vargas, a public use of the invention covered by them.
invention covered by them.
To conclude, we are not certain but that appellee To conclude, we are not certain but that appellee has proved every one of his defenses. We are certain that has proved every one of his defenses. We are certain that he has at least demonstrated the public use of the Vargas he has at least demonstrated the public use of the Vargas
plow over two years prior to the application for a patent. plow over two years prior to the application for a patent. Such being the case, although on a different ground, we Such being the case, although on a different ground, we mu
must st susuststaiain n ththe e judjudgmgment ent of of ththe e lolowewer r coucourtrt, , wiwithothoutut prej
prejudicudice e to to the the detdetermerminatination ion of of the the damdamages resultages resultinging from the granting of the injunction, with the costs of this from the granting of the injunction, with the costs of this instance against the appellant. So ordered.
instance against the appellant. So ordered.
FRANK v KOSUYAMA FRANK v KOSUYAMA 59 PHIL 206 59 PHIL 206 FACTS: FACTS: Pa
Patetent nt on on imimprprovovememenent t in in hehemmp p ststririppppiningg mac
machinehines, s, ississued by ued by the United the United StatStates es PatPatent ent OffOffice ice andand registered in the Bureau of Commerce and Industry of the registered in the Bureau of Commerce and Industry of the Phi
Philipplippine, was ine, was the origin of the origin of this actiothis action n brobrought by ught by thethe plaintif
plaintiffs herein who fs herein who prayed that the judgment be renderedprayed that the judgment be rendered agai
against nst the the defedefendanndant, t, ordeordering ring him him therthereby eby to to refrefrainrain immedi
immediately from the ately from the manufamanufacture and cture and sale of sale of machinemachiness si
simimilalar r to to ththe e onone e cocoveverered d by by the patethe patentnt: : to to renrender ander an accounting of the profits realized from the manufacture and accounting of the profits realized from the manufacture and sale of the machines in question; that in case of refusal or sale of the machines in question; that in case of refusal or fa
faililure ure to to rerendender r susuch ch acaccoucountinting, ng, ththe e defdefendendantants s bebe ordered to pay the plaintiffs the sum of P60 as profit on ordered to pay the plaintiffs the sum of P60 as profit on each machi
each machine ne manmanufacufacturetured d or or solsold d by by him; that him; that upouponn approval of the required bond, said defendant be restrained approval of the required bond, said defendant be restrained from continuing the manufactu
from continuing the manufacture and re and sale of the sale of the same kindsame kind of machines; that after the trial the preliminary injunction of machines; that after the trial the preliminary injunction issued therein be declared permanent and, lastly, that the issued therein be declared permanent and, lastly, that the said defendant be sentenced to pay
said defendant be sentenced to pay the costs and whateverthe costs and whatever damages the plaintiffs might be able to prove therein. The damages the plaintiffs might be able to prove therein. The action therefore was based upon alleged infringement by action therefore was based upon alleged infringement by the defendant of the rights and privileges acquired by the the defendant of the rights and privileges acquired by the plaintiffs over the aforesaid patent through the manufacture plaintiffs over the aforesaid patent through the manufacture and sale by the former of machines similar to that covered and sale by the former of machines similar to that covered by the aforesaid patent.
by the aforesaid patent.
The plaintiffs appealed from the judgment rendered The plaintiffs appealed from the judgment rendered by the trial court dismissing their complaint, with cost, as by the trial court dismissing their complaint, with cost, as we
well ll as as ththe e defdefendendanant't's s cocountuntererclaclaim im of of P1P10,0,00000. 0. ThThee defendant did not appeal.
defendant did not appeal. In their
In their amendeamended d complacomplaint, the int, the plaintiplaintiff allegedff alleged that their hemp stripping machines, for which they obtained that their hemp stripping machines, for which they obtained a
a patpatent, ent, have have the the folfollowilowing ng charcharactacteriseristictics: s: "A "A strstrippiippingng head, a horizontal table, a stripping knife supported upon head, a horizontal table, a stripping knife supported upon suc
such h tabtable, a le, a tapptapperinering g spispindlendle, , a a rest holder adjustrest holder adjustablyably se
secucurered d on on ththe e tatablble e poportrtioion, n, a a lelevever r anand d memeanans s of of compell
compelling the knife to ing the knife to close upon the table, a pallet or restclose upon the table, a pallet or rest in the bottom of the table, a resilient cushion under such in the bottom of the table, a resilient cushion under such palletor rest." In spite of the fact that they filed an amended palletor rest." In spite of the fact that they filed an amended complaint from which the "spindle" or conical drum, which complaint from which the "spindle" or conical drum, which wa
was s ththe e ononly ly chchararacacteteririststic ic fefeataturure e of of ththe e mamachchininee men
mentiontioned ed in in the the origoriginainal l comcomplaiplaint, nt, was was elimeliminatinated, ed, thethe plaintiffs insisted that the said part constitutes the essential plaintiffs insisted that the said part constitutes the essential diff
differenerence ce betwbetween een the the macmachine hine in in quesquestiotion n and and otheotherr machines and that it was the principal consideration upon machines and that it was the principal consideration upon which their patent was issued. The said plaintiffs sustained which their patent was issued. The said plaintiffs sustained their contentio
their contention on n on this point even in this point even in their printed brief andtheir printed brief and memorandum filed in this appeal.
memorandum filed in this appeal.
During the trial, both parties presented voluminous During the trial, both parties presented voluminous ev
evideidence nce frfrom om whiwhich ch ththe e tritrial al cocourt urt conconclcludeuded d thathat t inin cons
construtructincting g theitheir r macmachine hine the the plaiplaintifntiffs fs did did notnothing hing butbut improve, to a certain degree, those that were already in improve, to a certain degree, those that were already in vogu
vogue e and in and in actactual us ual us in in hemhemp p proproduciducing ng proprovincvinces. Ites. It can
cannot not be be sasaid id ththat at ththey ey hahave ve invinventented ed the the "s"spinpindledle"" inasmuch as this was already known since the year 1909 or inasmuch as this was already known since the year 1909 or 1910. Neither it can be said that they have invented the 1910. Neither it can be said that they have invented the st
striprippinping g knknifife e and and the the cocontrntrivivancance e whiwhich ch cocontntrolrols s thethe mo
movevemement nt anand d prpresessusure re ththerereoeof f on on ththe e grgrouound nd ththatat st
striprippinping g knknivives es totogetgether her witwith h thetheir ir cocontrntrol ol sesets ts wewerere alre
already ady in in actactual ual use in use in the the difdifferferent ent strstrippiipping ng macmachinehiness long before their machine appeared.
long before their machine appeared.
ISSUE: ISSUE:
Whether there is an infringement on the patents Whether there is an infringement on the patents HELD:
HELD:
The trial court did not decree the
The trial court did not decree the annulmeannulment of thent of the plaintiffs' patent and the herein defendant-appellee insists plaintiffs' patent and the herein defendant-appellee insists that the patent in question should be declared null and void. that the patent in question should be declared null and void. We
We arare e of of ththe e opopininioion n ththat at it it wowoululd d be be imimprpropoper er anandd untimely to render a similar judgment, in view of the nature untimely to render a similar judgment, in view of the nature of the action brought by the plaintiffs and in the absence of of the action brought by the plaintiffs and in the absence of a cross-complaint to that effect. For the purposes of this a cross-complaint to that effect. For the purposes of this appeal, suffice it to hold that the defendant is not civilly appeal, suffice it to hold that the defendant is not civilly liable for alleged infringement of the patent in question. liable for alleged infringement of the patent in question.
In
In the light the light of of sousound nd logilogic, c, the plaintthe plaintiffiffs s canncannotot insist that the "spindle" was a patented invention on the insist that the "spindle" was a patented invention on the gro
ground und ththat at saisaid d papart rt of of ththe e mamachichine ne wawas s vovolunluntatarilrilyy omitted by them from their application, as evidenced by the omitted by them from their application, as evidenced by the photographic copy thereof (Exhibit 41) wherein it likewise photographic copy thereof (Exhibit 41) wherein it likewise app
appeaears rs thathat t the the papatetent nt on on ImImproproveved d HeHemp mp StStriprippipingng Machines was issued minus the
Machines was issued minus the "spindl"spindle" in e" in questioquestion. Weren. Were we to stress to this part of the machine, we would be giving we to stress to this part of the machine, we would be giving the patent obtained by the plaintiffs a wider range than it the patent obtained by the plaintiffs a wider range than it ac
actutualally ly hahas, s, whwhicich h is is cocontntrarary ry to to ththe e prprininciciplples es of of interpretation in matters relating to patents.
interpretation in matters relating to patents.
In support of their claim the plaintiffs invoke the In support of their claim the plaintiffs invoke the doctrine laid down by this court in the case of Frank and doctrine laid down by this court in the case of Frank and Gohn
Gohn vs.vs. Benito (51 Phil., 712), wherein it was held that theBenito (51 Phil., 712), wherein it was held that the therein defendant really infringed upon the patent of the therein defendant really infringed upon the patent of the therein plaintiffs. It may be noted that the plaintiffs in the therein plaintiffs. It may be noted that the plaintiffs in the former and those of the latter case are the same and that former and those of the latter case are the same and that the patent then involved is the very same one upon which the patent then involved is the very same one upon which the present action of the plaintiffs is based. The above-cited the present action of the plaintiffs is based. The above-cited case, however, cannot be invoked as a precedent to justify a case, however, cannot be invoked as a precedent to justify a judgment in favor of
judgment in favor of the plaintiffsthe plaintiffs-appella-appellants on nts on the groundthe ground that the facts in one case entirely different from those in the that the facts in one case entirely different from those in the other. In the former case the defendant did not set up the other. In the former case the defendant did not set up the sa
same me spspeciecial al defdefensenses es as as thothose se alalleleged ged by by the the hehereireinn defendant in his answer and the plaintiffs therein confined defendant in his answer and the plaintiffs therein confined the
themsmselvelves es to to prepresesentinting ng ththe e papatetent, nt, or or ratrather her a a copcopyy ther
thereofeof, , wherwherein ein the the "sp"spindlindle" e" was was menmentiontioned, ed, and and thisthis court took for granted their claim that it was one of the court took for granted their claim that it was one of the ess
essentiential al charcharacteacterisristics tics thethereof reof whiwhich ch was was imiimitattated ed oror copied by the then defendant. Thus it came to pass that the copied by the then defendant. Thus it came to pass that the "sp
"spinindledle" " in in quequeststioion n wawas s ininsisiststenentltly y mementntionioned ed in in ththee decision rendered on appeal as the essential part of the decision rendered on appeal as the essential part of the plaintiffs' machine allegedly imitated by the then defendant. plaintiffs' machine allegedly imitated by the then defendant. In
In the the cacase se ununder der coconsnsideideratrationion, , it it is is obvobviouious s ththat at ththee "spindle
"spindle" is " is not an integral part of not an integral part of the machine patented bythe machine patented by the plaintiffs on the ground that it was eliminated from their the plaintiffs on the ground that it was eliminated from their pat
patent ent inainasmsmuch uch as as it it wawas s exexprepressssly ly exexclucludeded d in in thetheirir application, as evidenced by the aforesaid Exhibit 41.
application, as evidenced by the aforesaid Exhibit 41. Wherefo
Wherefore, reiterating that re, reiterating that the defendant cannotthe defendant cannot be held civilly liable for alleged infringement of the patent be held civilly liable for alleged infringement of the patent upon which the present action is based on the ground that upon which the present action is based on the ground that there is no
there is no essentessential part ial part of the of the machine manufmachine manufactured andactured and so
sold ld by by himhim, , whwhich was ich was unkunknonown wn to the to the pubpublilic c in in thethe Province of Davao at the time the plaintiffs applied for and Province of Davao at the time the plaintiffs applied for and ob
obtatainined ed ththeieir r papatetent nt fofor r imimprprovoved ed hehemp mp ststririppppiningg machines, the judgment appealed from is hereby affirmed, machines, the judgment appealed from is hereby affirmed, with the costs against the plaintiffs-appellants. So ordered. with the costs against the plaintiffs-appellants. So ordered.
VARGAS v CHUA VARGAS v CHUA 57 PHIL 784 57 PHIL 784 FACTS: FACTS: Ange
Angel l VarVargas, the gas, the plaiplaintifntiff f hereherein, in, brobrought ught thithiss action to restrain the appellants and the other defendant action to restrain the appellants and the other defendant entity, Cham Samco &
entity, Cham Samco & Sons, their agents and Sons, their agents and mandatmandatories,ories, from continuing the manufacture and sale of plows similar from continuing the manufacture and sale of plows similar to his plow described in his patent No. 1,507,530 issued by to his plow described in his patent No. 1,507,530 issued by the United States Patent Office on September 2, 1924; and the United States Patent Office on September 2, 1924; and
to
to comcompel pel alall l of of sasaid id dedefefendandantsnts, , afafteter r rerendenderiring ng anan accountin
accounting of g of the profits obtained by them from the sale the profits obtained by them from the sale of of said plows from September 2, 1924, to pay him damages said plows from September 2, 1924, to pay him damages equivalent to double the amount of such profits.
equivalent to double the amount of such profits.
The trial court rendered a judgement in favor of The trial court rendered a judgement in favor of plaintiffs and against the defendant.
plaintiffs and against the defendant.
It appears from the bill of exceptions that Cham It appears from the bill of exceptions that Cham Samco & Sons did not appeal.
Samco & Sons did not appeal. ISSUE:
ISSUE:
Whet
Whether her the plow, the plow, ExhExhibit F, ibit F, consconstittitutes a utes a realreal invention or an improvement for which a patent may be invention or an improvement for which a patent may be obtained, or if, on the contrary, it is substantially the same obtained, or if, on the contrary, it is substantially the same plow represented by Exhibit 3-Chua the patent for which plow represented by Exhibit 3-Chua the patent for which was declared null and void in the aforementioned case of was declared null and void in the aforementioned case of Vargas vs. F. M. Yaptico & Co., supra.
Vargas vs. F. M. Yaptico & Co., supra. HELD:
HELD:
The appel
The appellee is lee is not entitnot entitled to led to the protecthe protectiotion n hehe seeks for the simple reason that his plow, Exhibit F, does not seeks for the simple reason that his plow, Exhibit F, does not cons
constittitute ute an an invinventiention on in in the legal the legal sensense, and se, and becabecauseuse,, according to the evidence, the same type of plows had been according to the evidence, the same type of plows had been manufactured in this country and had been in use in many manufactured in this country and had been in use in many par
parts ts of of the the PhPhililippippine ine ArcArchiphipelelagoago, , esespecpecialially ly in in ththee Province of Iloilo, long before he obtained his last patent. Province of Iloilo, long before he obtained his last patent.
In the above mentioned case of
In the above mentioned case of Vargas vs. F. M.Vargas vs. F. M. Yaptico & Co.,
Yaptico & Co., we said:we said: Whe
When n a a papatetent nt is is sosoughught t to to be be enfenforcorced, "theed, "the questions of invention, novelty, or prior use, and each of questions of invention, novelty, or prior use, and each of them, are open to judicial examination." The burden of proof them, are open to judicial examination." The burden of proof to substantiate a charge of infringement is with the plaintiff. to substantiate a charge of infringement is with the plaintiff. Whe
Where, re, howhoweveverer, , ththe e plaplainintitiff ff inintrotroduduces ces the the patpatent ent inin ev
evideidencence, , if if it it is is ththe e due formdue form, , it it afaffofordrds s a a priprima ma fafaciciee presumption of its correctness and validity. The decision of presumption of its correctness and validity. The decision of the
the ComCommimissssioioner ner of of PaPatetentnts s in in gragrantinting ng ththe e papatetent nt isis always presumed to be correct. The burden then shifts to always presumed to be correct. The burden then shifts to the
the defdefendaendant nt to to oveovercomrcome e by by comcompetpetent ent evievidencdence e thithiss legal presumption. With all due respects, therefore, for the legal presumption. With all due respects, therefore, for the crit
critical and ical and expexpert examinert examinatiation on of of the the invinventiention on by by thethe United States Patent Office, the question of the validity of United States Patent Office, the question of the validity of the patent is
the patent is one for one for judijudicial determcial determinatination, and ion, and sinsince ce aa patent has been submitted, the exact question is whether patent has been submitted, the exact question is whether the defe
the defendandant nt has assuhas assumemed d the burdethe burden n of of proproof of as as toto anyone of his defenses.
anyone of his defenses.
We repeat that in view of the evidence presented, We repeat that in view of the evidence presented, and particularly of the examination we have made of the and particularly of the examination we have made of the plows, we cannot escape the conclusion that the plow upon plows, we cannot escape the conclusion that the plow upon wh
whicich h ththe e apappepelllleeee's 's cocontntenentition on is is babasesed, d, dodoes es nonott cons
constittitute ute an an inveinventiontion n andand, , conconsequsequentently, ly, the the privprivilegilegee invoked by him is untenable and the patent acquired by him invoked by him is untenable and the patent acquired by him should be declared ineffective.
should be declared ineffective. The judgme
The judgment nt appeappealealed d frofrom m is is herehereby by revreverserseded and the appellants are absolved from the complaint, with and the appellants are absolved from the complaint, with costs of this instance against the appellee. So ordered. costs of this instance against the appellee. So ordered.
AGUAS v DE LEON AGUAS v DE LEON 111 SCRA 238 111 SCRA 238 FACTS: FACTS: Con
Conrarado do G. de G. de LeLeon on fifileled d in in the Courthe Court t of of FiFirsrstt In
Inststanance ce of of RiRizzal al at at QuQuezezon on CiCity ty a a cocommplplaiaint nt foforr infringement of patent against Domiciano A. Aguas and F. H. infringement of patent against Domiciano A. Aguas and F. H. Aquino and Sons alleging that being the original first and Aquino and Sons alleging that being the original first and sole inventor of certain new and useful improvements in the sole inventor of certain new and useful improvements in the process of making mosaic pre-cast tiles, he lawfully filed and process of making mosaic pre-cast tiles, he lawfully filed and prosecuted an application for Philippine patent, and having prosecuted an application for Philippine patent, and having complied in all respects with the statute and the rules of the complied in all respects with the statute and the rules of the Philippine Patent Office, Patent No. 658 was lawfully granted Philippine Patent Office, Patent No. 658 was lawfully granted
and issued to him; that said invention was new, useful, not and issued to him; that said invention was new, useful, not known or used by others in this country before his invention known or used by others in this country before his invention thereof.
thereof.
That the defendant Domiciano A. Aguas infringed That the defendant Domiciano A. Aguas infringed Letters of Patent No. 658 by making, using and selling tiles Letters of Patent No. 658 by making, using and selling tiles embodying said patent invention and that defendant F. H. embodying said patent invention and that defendant F. H. Aqui
Aquino & no & Sons is Sons is guilguilty of ty of infrinfringeingemenment t by making andby making and fur
furnisnishinhing g to to the the defdefendendanant t DomDomiciiciano ano A. A. AguAguas as ththee engravings, castings and devices designed and intended of engravings, castings and devices designed and intended of tiles embodying plaintiff;s patented invention; that he has tiles embodying plaintiff;s patented invention; that he has given direct and personal notice to the defendants of their given direct and personal notice to the defendants of their said acts of
said acts of infringeinfringement and requested them to ment and requested them to desist, butdesist, but neve
nevertherthelesless, s, defdefendaendants nts havhave e refrefused used and and neglneglecteected d toto desist and have disregarded such request, and continue to desist and have disregarded such request, and continue to so
so ininfrfringinge e cacaususing ing gregreat at anand d irirrepreparaarable ble damdamagage e toto plaintiff; that if the aforesaid infringement is permitted to plaintiff; that if the aforesaid infringement is permitted to continue, further losses and damages and irreparable injury continue, further losses and damages and irreparable injury will be sustained by the plaintiff; that there is an urgent will be sustained by the plaintiff; that there is an urgent need for the immediate issuance of a preliminary injunction. need for the immediate issuance of a preliminary injunction. The court granted the injunction. And likewise held The court granted the injunction. And likewise held in favor of the plaintiff and against the defendant.
in favor of the plaintiff and against the defendant. ISSUE:
ISSUE:
Whether the process, subject of said patent, is not Whether the process, subject of said patent, is not an
an inveinventiontion n or or discdiscoveovery, or ry, or an an impimprovrovemeement nt of the of the oldold system of making tiles.
system of making tiles. HELD:
HELD:
The validily of the patent issued by the Philippines The validily of the patent issued by the Philippines Pat
Patent Office in ent Office in favfavor or of the of the privprivate responate respondent and dent and thethe question over the inventiveness, novelty and usefulness of question over the inventiveness, novelty and usefulness of the improved process therein specified and described are the improved process therein specified and described are mat
matterters s whicwhich h are are bettbetter er detedetermirmined ned by by the the PhiPhilipplippinesines Patent Office. The technical staff of the Philippines Patent Patent Office. The technical staff of the Philippines Patent Off
Office, compoice, composed of sed of expexperterts s in in thetheir ir fiefield, have, by ld, have, by thethe issuanc
issuance of e of the patent in the patent in questioquestion, accepted the n, accepted the thinnesthinness of s of the private respondent's new tiles as a discovery. There is a the private respondent's new tiles as a discovery. There is a presump
presumption that tion that the Philippines Patent Office has the Philippines Patent Office has correctlcorrectlyy dete
determirmined ned the the patpatentaentabilibility ty of of the the impimproverovemenment t by by thethe private respondent of the process in question.
private respondent of the process in question. Th
The e contcontentention ion of of the petitithe petitioner Aguas oner Aguas that thethat the letters patent of de Leon was actually a patent for the old letters patent of de Leon was actually a patent for the old and non-patentable process of
and non-patentable process of making mosaic pre-cast tilesmaking mosaic pre-cast tiles is devoid of merit. De
is devoid of merit. De Leon never claimed to have inventedLeon never claimed to have invented the process of
the process of tile-matile-making. The Claims and king. The Claims and SpecificSpecifications of ations of Patent No. 658 show that although some of the steps or Patent No. 658 show that although some of the steps or par
parts ts of of the the olold d prprococess of ess of titile le mamakiking ng wewere re dedescscribribeded therein, there were novel
therein, there were novel and inventive features mentioneand inventive features mentionedd in the process.
in the process.
In view of the foregoing, this Court finds that Patent In view of the foregoing, this Court finds that Patent No. 658 was legally issued, the process and/or improvement No. 658 was legally issued, the process and/or improvement being patentable.
being patentable.
PARKE DAVIS & CO v DOCTOR’S PHARMA PARKE DAVIS & CO v DOCTOR’S PHARMA
124 SCRA 115 124 SCRA 115 FACTS:
FACTS: Par
Parke ke DavDavis is & & ComCompanypany, , petpetitioitioner ner hereherein, in, is is aa fo
foreireign gn corcorporporatation ion is is the the owowner ner of of a a papatetent nt enentittitledled "Process for the Manufacturing of Antibiotics" (Letters Patent "Process for the Manufacturing of Antibiotics" (Letters Patent No
No. . 5050) ) ThThe e papatetent nt rerelalatetes s to to a a chchememicical al cocompmpououndnd represented by a formula commonly called
represented by a formula commonly called chloramphenicolchloramphenicol.. The patent contains ten claims, nine of which are process The patent contains ten claims, nine of which are process claims, and the other is a product claim to the chemical claims, and the other is a product claim to the chemical substance
substance chloramphenicolchloramphenicol.. Respond
Respondent ent DoctorsDoctors' ' PharmaPharmaceuticalceuticals, s, Inc., on Inc., on thethe other hand, is a domestic corporation which applied for a other hand, is a domestic corporation which applied for a
