SECTION 61. Cancellation of Patents.

61.1. Any interested person may, upon payment of the required fee, petition to cancel the patent or
any claim thereof, or parts of the claim, on any of the following grounds:
a. That what is claimed as the invention is not new or patentable;
b. That the patent does not disclose the invention in a manner sufficiently clear and complete for it to
be carried out by any person skilled in the art; or
c. That the patent is contrary to public order or morality.
61.2. Where the grounds for cancellation relate to some of the claims or parts of the claim,
cancellation may be effected to such extent only. (Secs. 28 and 29, R.A. No. 165a)
SECTION 67. Patent Application by Persons Not Having the Right to a Patent.
67.1. If a person referred to in Section 29 other than the applicant, is declared by final court order or
decision as having the right to the patent, such person may, within three (3) months after the decision
has become final:
a. Prosecute the application as his own application in place of the applicant;
b. File a new patent application in respect of the same invention;
c. Request that the application be refused; or
d. Seek cancellation of the patent, if one has already been issued.

Creser precision vs ca.

Facts: Bullet manufacturing, claimant, no patent issued but filed a case for infringement.
Issue: won infringement is the right case.
Held: No, 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, petitioners remedy is not to file an action for injunction or infringement but to file a petition for
cancellation of private respondent patent. Petitioner however failed to do so. (now sec. 62.1.)
SECTION 66. Effect of Cancellation of Patent or Claim
. The rights conferred by the patent or any specified claim or claims cancelled shall terminate.
Notice of the cancellation shall be published in the IPO Gazette. Unless restrained by the Director
General, the decision or order to cancel by Director of Legal Affairs shall be immediately executory
even pending appeal. (Sec. 32, R.A. No. 165a)
SECTION 68. Remedies of the True and Actual Inventor. If a person, who was deprived of the
patent without his consent or through fraud is declared by final court order or decision to be the true
and actual inventor, the court shall order for his substitution as patentee, or at the option of the true
inventor, cancel the patent, and award actual and other damages in his favor if warranted by the
circumstances. (Sec. 33, R.A. No. 165a)
B. Petition for declaration as true and actual inventor
See Sec 67 and 68
SECTION 70. Time to File Action in Court. The actions indicated in Sections 67 and 68 shall be
filed within one (1) year from the date of publication made in accordance with Sections 44 and 51,
respectively. (n)
C. Infringement
Who may file
1. Patentees
2. Successors in interest assignees or grantees

Kinds of infringement
Literal infringement: doctrine of mechanical equivalents and doctrine of equivalents
Doctrine of mechanical equivalent
Gsell vs. Veloso-Yap (April 1906)
FACTS: The patent involves 'handles for canes and umbrellas, curved by means of a small lamp or
blowpipe, fed buy petroleum or mineral fuel.' And the methods used to make the same. Which was
assigned by the real inventor to carlos. The defendant was alleged to have been infringing the rights in
the patent.
ISSUE: WON there was infringement.
HELD: Yes. The evidence also shows clearly that the defendant used, and had been using, the same
process for the manufacture of walking sticks and umbrella handle, the exclusive right to which had
been granted to, the plaintiff's assignor. The evidence also shows that the original grantee of the
patent, Henry Alfred Gsell, had duly transferred to the plaintiff herein, and that the plaintiff herein
thereby succeeded to all of the right granted in said letter patent.
Gsell vs. Veloso-Yap (December 1906)
Same lamp only difference is the oil used, one is mineral the other is alcohol.
FACTS:
In the month of February, 1904, the plaintiff presented a petition alleging that on "the 8th of the said
month, and some time prior to that date, the defendant in obedience of the aforesaid judgment, and in
violation of the same, was and is now engaged in the unlawful manufacture of umbrella handles by the
identical process so like the patent process as to be indistinguishable,"
According to the express language of the judgment, the prohibition is against the manufacture of
canes and umbrellas with curved handles by blowpipe, and the parties have stipulated that the
defendant did not use a coal or mineral oil-burning lamp, but an alcohol-burning lamp.
ISSUE:
WON whether that prohibition included the substitution of alcohol for coal or mineral oil. In more
abstract and general terms, the appellant propounds this question in his brief as follows: "The question
presented by this appeal is whether or not the use of a patented process by a third person, without
license or authority therefor, constitutes an infringement when the alleged infringer has substituted in a
lieu of someunessential part of the patented process a well-known mechanical equivalent."
WON covered within the patent granted.
HELD: Within the coverage of the patent. This doctrine is founded upon sound rules of reason and
logic, and unless restrained or modified by law in particular jurisdiction, is of universal application, so
that it matters not whether a patent be issued by one sovereignty or another, the doctrine may
properly be invoked to protect the patentee from colorable invasions of his patent under the guise of
substitution of some part of his invention by some well known mechanical equivalent. Our attention
has not been called to any provision of the patent law of Spain, which denies to patentees thereunder
the just and equitable protection of the doctrine; and indeed a patent law which failed to recognize this
doctrine would afford scant protection to inventors, for it is difficult if not impossible to conceive an
invention, which is incapable of alteration or change in some unessential part, so as to bring that part
outside of the express terms of any form of language which might be used in granting a patent for the
invention; and has been well said by counsel for plaintiff, human ingenuity would be taxed beyond its
powers in preparing a grant of a patent so comprehensive in its terms, "as to include within the
express terms of its detailed description every possible alternative of form, size, shape, material,
location, color, weight, etc., of every wheel, rod, bolt, nut, screw, plate, and other component parts of
an invention."
He failed to establish that fact of equivalent, It is seen that by it very terms this question implies in the
present case the existence of two fundamental facts which must first be duly established, viz; (1) That

the use of the lamp fed with petroleum or mineral oil was unessential part of the patented process the
use of which by the accused was prohibited by the said judgment; and (2) that alcohol is equivalent
and proper substitute, well known as such, for mineral oil petroleum in connection with the said
process. The appellant has failed to affirmatively establish either of these two essential facts. He has
merely assumed their existence, without proving the same, thus begging the whole question.
Gsell vs. Veloso-Yap (1909)
FACTS:
The principal case to which these proceedings are ancillary, was an action to enjoin
infringement of a patented process for manufacture of curved handles for canes, parasols, and
umbrellas. In that case, plaintiff established his title to a valid patent covering the process in question,
and obtained against this defendant a judgment, granting a perpetual injunction restraining its
infringement, which judgment was affirmed by this Court on appeal. The order was couched in the
following terms:
It is ordered that the defendant abstain from manufacturing canes and umbrellas with a curved
handle by means of a lamp or blowpipe fed with mineral oil or petroleum, which process was protected
by patent no. 19288, issued in favor of Henry Gsell, and by him transferred to Carlos Gsell.
Thereafter the defendant continued to manufacture curved cane handles for walking sticks and
umbrellas by a process in all respects identical with that used by the plaintiff under his patent, except
only that he substituted for a lamp fed with petroleum or mineral oil, a lamp fed with alcohol.
The trial court found the defendant not guilty of contempt as charged; and this court, on
appeal, held that The violation, if there has been any, was not of such a character that it could be
made patent by the mere annunciation of the acts performed by the defendant, which are alleged to
constitute the said violation. Consequently, the contempt with which the accused is charged has not
been fully and satisfactorily proved, and the order appealed from should accordingly be affirmed in so
far as it holds that the defendant is not guilty of contempt.
Substantially, the same question is submitted in these new proceedings as that submitted in
the former case.
ISSUE:
Whether the use of a patented process by a third person, without license or authority therefore,
constitutes an infringement when the alleged infringer has substituted in lieu of some unessential part
of the patented process a well-known mechanical equivalent.
HELD:
Counsel for plaintiff invokes the doctrine of mechanical equivalents in support of his
contention, and indeed that doctrine is applicable to the facts of the case. This doctrine is founded
upon sound rules of reason and logic, and unless restrained or modified by law in particular
jurisdiction, is of universal application, so that it matters not whether a patent be issued by one
sovereignty or another, the doctrine may properly be invoked to protect the patentee from colorable
invasions of his patent under the guise of a substitution of some part of his invention by some wellknown mechanical equivalent.

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 provision of section 172 of the Code of Civil Procedure.

Doctrine of equivalents
Godines vs. CA
Floating power tilter and turtle tilter, same in specs and functions,
Facts: The patent involved in this case is Letters Patent No. UM-2236 issued by the Philippine Patent
Office to one Magdalena S. Villaruz on July 15, 1976. It covers a utility model for a hand tractor or
power tiller. The above mentioned patent was acquired by SV-Agro Industries Enterprises, Inc., herein
private respondent, from Magdalena Villaruz, its chairman and president, by virtue of a Deed of
Assignment executed by the latter in its favor. On October 31, 1979, SV-Agro Industries caused the
publication of the patent in Bulletin Today, a newspaper of general circulation. In accordance with the
patent, private respondent manufactured and sold the patented power tillers with the patent imprinted
on them. In 1979, SV-Agro Industries suffered a decline of more than 50% in sales in its Molave,
Zamboanga del Sur branch. Upon investigation, it discovered that power tillers similar to those
patented by private respondent were being manufactured and sold by petitioner herein. Consequently,
private respondent notified Pascual Godines about the existing patent and demanded that the latter
stop selling and manufacturing similar power tillers. Upon petitioner's failure to comply with the
demand, SV-Agro Industries filed before the Regional Trial Court a complaint for infringement of
patent and unfair competition.
HELD: Clearly, within the patent. Tests have been established to determine infringement. These are
(a) literal infringement; and (b) the doctrine of equivalents. 7 In using literal infringement as a test, ". . .
resort must be had, in the first instance, to the words of the claim. If accused matter clearly falls within
the claim, infringement is made out and that is the end of it." 8 To determine whether the particular
item falls within the literal meaning of the patent claims, the court must juxtapose the claims of the
patent and the accused product within the overall context of the claims and specifications, to
determine whether there is exact identity of all material elements.
Courts have adopted the doctrine of equivalents which recognizes that minor modifications in a
patented invention are sufficient to put the item beyond the scope of literal infringement. 12 Thus,
according to this doctrine, "(a)n infringement also occurs when a device appropriates a prior invention
by incorporating its innovative concept and, albeit with some modification and change, performs
substantially the same function in substantially the same way to achieve substantially the same
result." 13 The reason for the doctrine of equivalents is that to permit the imitation of a patented
invention which does not copy any literal detail would be to convert the protection of the patent grant
into a hollow and useless thing. Such imitation would leave room for indeed encourage the
unscrupulous copyist to make 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.
It appears from the foregoing observation of the trial court that these claims of the patent and the
features of the patented utility model were copied by petitioner. We are compelled to arrive at no other
conclusion but that there was infringement.
Smith Kline Beckman Corp. vs. CA
FACTS: On September 24, 1981, Letters Patent No. 145611 for the aforesaid invention was issued to
petitioner for a term of seventeen (17) years.

The letters patent provides in its claims2 that the patented invention consisted of a new compound
named methyl 5 propylthio-2-benzimidazole carbamate and the methods or compositions utilizing the
compound as an active ingredient in fighting infections caused by gastrointestinal parasites and
lungworms in animals such as swine, sheep, cattle, goats, horses, and even pet animals.
Tryco Pharma Corporation (private respondent) is a domestic corporation that manufactures,
distributes and sells veterinary products including Impregon, a drug that has Albendazole for its active
ingredient and is claimed to be effective against gastro-intestinal roundworms, lungworms, tapeworms
and fluke infestation in carabaos, cattle and goats.
Petitioner sued private respondent for infringement of patent and unfair competition before the
Caloocan City Regional Trial Court (RTC).3 It claimed that its patent covers or includes the substance
Albendazole such that private respondent, by manufacturing, selling, using, and causing to be sold
and used the drug Impregon without its authorization,
Private respondent in its Answer8 averred that Letters Patent No. 14561 does not cover the substance
Albendazole for nowhere in it does that word appear; that even if the patent were to include
Albendazole, such substance is unpatentable; that the Bureau of Food and Drugs allowed it to
manufacture and market Impregon with Albendazole as its known ingredient; that there is no proof
that it passed off in any way its veterinary products as those of petitioner;
Petitioner concedes in its Sur-Rejoinder13 that although methyl 5 propylthio-2-benzimidazole
carbamate is not identical with Albendazole, the former is an improvement or improved version of the
latter thereby making both substances still substantially the same.
ISSUE: WON it is covered by the patent.
HELD: NO, The burden of proof to substantiate a charge for patent infringement rests on the
plaintiff.16 In the case at bar, petitioners evidence consists primarily of its Letters Patent No. 14561,
and the testimony of Dr. Orinion, its general manager in the Philippines for its Animal Health Products
Division, by which it sought to show that its patent for the compound methyl 5 propylthio-2benzimidazole carbamate also covers the substance Albendazole.
From a reading of the 9 claims of Letters Patent No. 14561 in relation to the other portions thereof, no
mention is made of the compound Albendazole. All that the claims disclose are: the covered invention,
that is, the compound methyl 5 propylthio-2-benzimidazole carbamate; the compounds being
anthelmintic but nontoxic for animals or its ability to destroy parasites without harming the host
animals; and the patented methods, compositions or preparations involving the compound to
maximize its efficacy against certain kinds of parasites infecting specified animals.
When the language of its claims is clear and distinct, the patentee is bound thereby and may not claim
anything beyond them.17 And so are the courts bound which may not add to or detract from the
claims matters not expressed or necessarily implied, nor may they enlarge the patent beyond the
scope of that which the inventor claimed and the patent office allowed, even if the patentee may have
been entitled to something more than the words it had chosen would include.18
It bears stressing that the mere absence of the word Albendazole in Letters Patent No. 14561 is not
determinative of Albendazoles non-inclusion in the claims of the patent. While Albendazole is
admittedly a chemical compound that exists by a name different from that covered in petitioners
letters patent, the language of Letter Patent No. 14561 fails to yield anything at all regarding
Albendazole. And no extrinsic evidence had been adduced to prove that Albendazole inheres in
petitioners patent in spite of its omission therefrom or that the meaning of the claims of the patent
embraces the same.
While petitioner concedes that the mere literal wordings of its patent cannot establish private
respondents infringement, it urges this Court to apply the doctrine of equivalents.
The doctrine of equivalents provides that an infringement also takes place when a device appropriates
a prior invention by incorporating its innovative concept and, although with some modification and
change, performs substantially the same function in substantially the same way to achieve
substantially the same result.19 Yet again, a scrutiny of petitioners evidence fails to convince this

Court of the substantial sameness of petitioners patented compound and Albendazole. While both
compounds have the effect of neutralizing parasites in animals, identity of result does not amount to
infringement of patent unless Albendazole operates in substantially the same way or by substantially
the same means as the patented compound, even though it performs the same function and achieves
the same result.20 In other words, the principle or mode of operation must be the same or
substantially the same.21
The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the
patentee having the burden to show that all three components of such equivalency test are met.22
As stated early on, petitioners evidence fails to explain how Albendazole is in every essential detail
identical to methyl 5 propylthio-2-benzimidazole carbamate. Apart from the fact that Albendazole is an
anthelmintic agent like methyl 5 propylthio-2-benzimidazole carbamate, nothing more is asserted and
accordingly substantiated regarding the method or means by which Albendazole weeds out parasites
in animals, thus giving no information on whether that method is substantially the same as the manner
by which petitioners compound works.
SECTION 76. Civil Action for Infringement.
76.1. The making, using, offering for sale, selling, or importing a patented product or a product
obtained directly or indirectly from a patented process, or the use of a patented process without the
authorization of the patentee constitutes patent infringement.
76.2. 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 a court of competent jurisdiction, to
recover from the infringer such damages sustained thereby, plus attorney's fees and other expenses
of litigation, and to secure an injunction for the protection of his rights.
76.3. If the damages are inadequate or cannot be readily ascertained with reasonable certainty, the
court may award by way of damages a sum equivalent to reasonable royalty.
76.4. The court may, according to the circumstances of the case, award damages in a sum above the
amount found as actual damages sustained: Provided, That the award does not exceed three (3)
times the amount of such actual damages.
76.5. The court may, in its discretion, order that the infringing goods, materials and implements
predominantly used in the infringement be disposed of outside the channels of commerce or
destroyed, without compensation.
76.6. Anyone who actively induces the infringement of a patent or provides the infringer with a
component of a patented product or of a product produced because of a patented process knowing it
to be especially adopted for infringing the patented invention and not suitable for substantial noninfringing use shall be liable as a contributory infringer and shall be jointly and severally liable with the
infringer. (Sec. 42, R.A. No. 165a)

Infringing Acts:
Parke Davis And Corp vs. Ca
FACTS: on March 21, 1957, Letters Patent No. 279 was legally issued to plaintiff' by the Patent Office
of the Republic of the Philippines for an invention entitled "Therapeutically Valuable Esters and
Method for Obtaining the same"; that since that date, plaintiff has been and still is, the owner of said
Letters Patent No. 279 which is still in force in the Philippines; that defendant No. 1 has knowingly
infringed and is still knowingly infringing Claim 4 of said Letters Patent No. 279 of plaintiff by selling,
causing to be sold, using or causing to be used, "Chloramphenicol Palmitate", the substance covered
by said Claim 4 of said plaintiff's Letters Patent No. 279, under the name "Venimicetin Suspension",
willfully and without the consent or authorization of plaintiff; that defendant No. 2 has likewise,
knowingly infringed and is still knowingly investigation Claim 4 of said letters Patent No. 279 by acting
as distributor of defendant No. 1 of the latter's medicine called "Venimicetin Suspension" which
contains "Chloramphenicol Palmitate": that plaintiff, through its wholly-owned local subsidiary, Parke,

Davis & Company, Inc. a domestic corporation with main office at Mandaluyong, Rizal, has at great
expense, established a market and a continuing demand for "Chloramphenicol Palmitate" in the
Philippines and has for many years sold and is still selling this product in the Philippines that
defendants have derived unlawful gains and profits from the aforesaid infringement to the great and
irreparable injury, damage and prejudice of plaintiff, and have deprive plaintiff of legitimate returns
which plaintiff would have otherwise would have falsely and deseptively concealed that the same
contains "Chloramphenicol" and "Chloramphenicol Palmitate" are entirely different substances.
ISSUE: WON there was infringement
HELD: YES, As can be gleaned from the appealed order, the pertinent portions of which We have
heretofore quoted, the lower court premised its ruling that there is no cause of action for infringement
of patent on the assumption that "Chloramphenicol" (the substance covered by Letters Patent No. 50)
and "Chloramphenicol Palmitate" (the substance covered by Letters Patent No. 279) are the same.
Thus, instead of hypothetically assuming the truth of the plaintiff's allegation that "Chloramphenicol"
and "Chloramphenicol Palmitate are two different substances, the lower court had ruled against its
veracity. This is clearly an error considering that the said assumed fact cannot qualify as something
which the court could take judicial notice of nor was it competent to so find in the absence of evidence
formally presented to that effect. The existence of two patents separately covering said substances
simply militates against said factual assumption and requires the presentation of evidence sufficient to
convince the court that said substances are indeed the same.
Had the lower court hypothetically assumed as true, for the purpose of the motion to dismiss, the
allegations in the complaint that "Chloramphenicol" and "Chloramphenicol Palmitate" are entirely
different substances and that "Venimicetin Suspension" actually contains "Chloramphenicol Palmitate"
and not "Chloramphenicol" as indicated in its package and label, it necessarily would have to conclude
that the complaint states causes of action for infringement of patent and for unfair competition. For
defendants would then be guilty of infringement of patent by selling, causing to be sold, using and
causing to be used "Chloramphenicol Palmitate", without the consent or authority of the plaintiff as the
holder of Letters Patent No. 279, Claim 4 of which allegedly covers said substance.
Sanctions
Damages
SECTION 79. Limitation of Action for Damages. No damages can be recovered for acts of
infringement committed more than four (4) years before the institution of the action for infringement.
(Sec. 43, R.A. No. 165)
SECTION 80. Damages; Requirement of Notice. Damages cannot be recovered for acts of
infringement committed before the infringer had known, or had reasonable grounds to know of the
patent. It is presumed that the infringer had known of the patent if on the patented product, or on the
container or package in which the article is supplied to the public, or on the advertising material
relating to the patented product or process, are placed the words "Philippine Patent" with the number
of the patent. (Sec. 44, R.A. No. 165a)
Contributory infringer
Section 76.6: Anyone who actively induces the infringement of a patent or provides the infringer with
a component of a patented product or of a product produced because of a patented process knowing
it to be especially adopted for infringing the patented invention and not suitable for substantial noninfringing use shall be liable as a contributory infringer and shall be jointly and severally liable with the
infringer.
Jurisdiction
SECTION 69. Publication of the Court Order. The court shall furnish the Office a copy of the
order or decision referred to in Sections 67 and 68, which shall be published in the IPO Gazette within

three (3) months from the date such order or decision became final and executory, and shall be
recorded in the register of the Office. (n)
SECTION 82. Patent Found Invalid May be Cancelled. In an action for infringement, if the court
shall find the patent or any claim to be invalid, it shall cancel the same, and the Director of Legal
Affairs upon receipt of the final judgment of cancellation by the court, shall record that fact in the
register of the Office and shall publish a notice to that effect in the IPO Gazette. (Sec. 46, R.A. No.
165a)
SECTION 84. Criminal Action for Repetition of Infringement. If infringement is repeated by the
infringer or by anyone in connivance with him after finality of the judgment of the court against the
infringer, the offenders shall, without prejudice to the institution of a civil action for damages, be
criminally liable therefor and, upon conviction, shall suffer imprisonment for the period of not less than
six (6) months but not more than three (3) years and/or a fine of not less than One hundred thousand
pesos (P100,000) but not more than Three hundred thousand pesos (P300,000), at the discretion of
the court. The criminal action herein provided shall prescribe in three (3) years from date of the
commission of the crime. (Sec. 48, R.A. No. 165a)
Rule on foreign nationals: Sec 3 and 77
SECTION 3. International Conventions and Reciprocity. Any person who is a national or who is
domiciled or has a real and effective industrial establishment in a country which is a party to any
convention, treaty or agreement relating to intellectual property rights or the repression of unfair
competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the
Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision
of such convention, treaty or reciprocal law, in addition to the rights to which any owner of an
intellectual property right is otherwise entitled by this Act.
SECTION 77. Infringement Action by a Foreign National. Any foreign national or juridical entity
who meets the requirements of Section 3 and not engaged in business in the Philippines, to which a
patent has been granted or assigned under this Act, may bring an action for infringement of patent,
whether or not it is licensed to do business in the Philippines under existing law. (Sec. 41-A, R.A. No.
165a)
Primary Jurisdiction
Phil pharma vs Pfizer (See first reviewer)
SECTION 108. Applicability of Provisions Relating to Patents.
108.1. Subject to Section 109, the provisions governing patents shall apply, mutatis mutandis, to the
registration of utility models.
108.2. Where the right to a patent conflicts with the right to a utility model registration in the case
referred to in Section 29, the said provision shall apply as if the word "patent" were replaced by the
words "patent or utility model registration". (Sec. 55, R.A. No. 165a)
SECTION 109. Special Provisions Relating to Utility Models.
109.1. a. An invention qualifies for registration as a utility model if it is new and industrially applicable.
b. Section 21, "Patentable Inventions", shall apply except the reference to inventive step as a
condition of protection. cdtai
109.2. Sections 43 to 49 shall not apply in the case of applications for registration of a utility model.

109.3. A utility model registration shall expire, without any possibility of renewal, at the end of the
seventh year after the date of the filing of the application.
109.4. In proceedings under Sections 61 to 64, the utility model registration shall be canceled on the
following grounds: a. That the claimed invention does not qualify for registration as a utility model and
does not meet the requirements of registrability, in particular having regard to Subsection 109.1 and
Sections 22, 23, 24 and 27; b. That the description and the claims do not comply with the prescribed
requirements; c. That any drawing which is necessary for the understanding of the invention has not
been furnished; d. That the owner of the utility model registration is not the inventor or his successor in
title. (Secs. 55, 56, and 57, R.A. No. 165a)
Definition/Criteria
Samson vs. Tarroza
28 SCRA 792 (1969)
FACTS:
This is an appeal from a decision of the Director of Patents denying the petition for the cancellation of
Utility Model Letters Patent No. 62 in favor of respondent Felipe Tarroza for his Side Tilting-Dumping
Wheelbarrow.
Petitioner Gerardo Samson, Jr was also a prior grantee of Utility Model Patent No. 27 for a Dumping
and Detachable Wheelbarrow, which he claims to have been infringed by the respondent, they being
neighbors.
ISSUE:
Whether or not respondents Utility Model Patent deserves cancellation.
HELD:
No. There is an express recognition under the Patent Law that any new model of implements or tools
or 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 a utility model: From the description of the side of tilting-dumping
wheelbarrow, the product of ingenuity and industry, it is quite apparent that it has a place in the market
and possesses what the statute refers to as practical utility.
Duration/Renewal of Protection
ONG SHIAO KONG and CU WU KIAM, petitioners,
-versusTHE DIRECTOR OF PATENTS and PESSUMAL TOLARAM, respondents.

CASTRO, J.:

The petitioners Ong Shiao Kong and Cu Wu Kiam (hereinafter referred to as the petitioners) seek a
reversal of the decision of the Director of Patents in Inter Partes Case No. 248 cancelling letters
patent No. UM-135 issued in their favor. They contend (1) that a hearing officer of the Philippines
Patent Office has no authority (a) to hear cases filed with that office, (b) to compel the petitioners to
testify as adverse witnesses, and (c) to receive evidence on a matter not raised. in the respondent's
petition for cancellation of the letters patent issued to the petitioners; (2) that Cu Wu Kiam, contrary to
the findings of the Director of Patents, is a co-maker of the utility model (water heater) in dispute, and
that even if he were not, this fact is not sufficient to warrant the cancellation of the letters patent; and
(3) that the evidence does not support the conclusion that the utility model of the respondent
Pessumal Tolaram (hereinafter referred to as the respondent) "dominates" that of the petitioners.
It appears that on November 20, 1961 the respondent filed a petition for cancellation of letters patent
UM-135 issued by the Philippines Patent Office to the petitioners for a "flash water heater" upon the
ground, among others, that the respondent's previously patented utility model (UM-66) of an "instant
water heater" is substantially similar to that of the petitioners. At the hearing held below, the hearing
officer, over the objection of the petitioners, ruled that the latter may be utilized by the respondent as
adverse witnesses. The subsequent testimony of the petitioners disclosed that Cu Wu Kiam, contrary
to what was stated in their patent application, was merely a financier, not a co-maker, of the article for
which the petitioners sought and were able to obtain letters patent.
On February 11, 1964, the director of Patents rendered a decision cancelling UM-135 on the ground
that "under the great weight of (American) case law, if several persons obtained a joint patent for what
was invented solely by one of them, that patent is void." On January 18, 1965 the Director of Patents
amended his decision by holding further that the Ong-Cu model embodied the novel features of the
respondent's model "in so far as it concerns the construction and arrangement of the electrodes or
steel plates" through which water is heated, and that consequently the respondent has the right to
exclude others from making, using and vending a water heater embodying his novel construction. On
February 4, 1965 the petitioners filed the present petition for review. Thereafter the Court gave due
course to the petition, and issued a writ of preliminary injunction enjoining the Director of Patents from
enforcing his decision pending appeal.
On March 24, 1966 the case was submitted for decision.
On June 17, 1974 we required the parties to show cause why the instant petition should not be
dismissed for being moot and academic due to the expiration of the respective terminal periods
prescribed for the allegedly conflicting letters patent by section 58 of R.A. 165, as amended, which
recites:
Sec. 58. Term and extension thereof. The term of the design patent and of the patent for a utility
model shall be five years from the date of the grant thereof.
Before the expiration of the five-year term, upon payment of the required fee, or within a further time
thereafter not to exceed six months upon payment of the surcharge, the owner of the design patent or
of a patent for a utility model may apply for an extension for an additional five years. The application
for extension must be accompanied by an affidavit showing that the design or the model is in
commercial or industrial use in the Philippines or satisfactorily explaining non-use. In a similar manner
an extension for a third five-year period may be obtained.
We also required the Director of Patents to submit a certification on the current, status of the letters
patent in question. In compliance, the Director of Patents certified the following:
(a) Letters Patent No. UM-66 issued on September 24, 1959 to Pessumal Tolaram for 'instant water
heater' has EXPIRED on September 24, 1969 for failure of the Patentee to file an application for

extension for additional five (5) years, six (6) months before September 24, 1969 or three (3) months
after the said date, and
(b) Letters Patent No. UM-135 issued on July 6, 1964 to Ong Shiao Kong and Cu Wu Kiam for 'flash
water heater' has also EXPIRED on July 6, 1969 for failure to file an application for extension for
additional five (5) years, six months before July 6, 1969 or three months after the said date, as
required by Section 58 of Republic Act 165, as amended.
The respondent has manifested agreement that the present petition should be dismissed. The
petitioners have failed to file any manifestation within the period of time given to them.
It being clear from the foregoing certification of the Director of Patents that the respective lifetime
periods of the allegedly conflicting letters patent of the petitioners and the respondent have already
expired, and that neither the respondent nor the petitioners have applied for extension of their
respective letters patent, the Court is of the view that a resolution of the issues raised by the instant
petition would serve no useful purpose and this case should now be declared moot.
ACCORDINGLY, the instant petition is dismissed, and the writ of preliminary injunction heretofore
issued is hereby dissolved. No costs.
SECTION 110. Conversion of Patent Applications or Applications for Utility Model Registration.

110.1. At any time before the grant or refusal of a patent, an applicant for a patent may, upon payment
of the prescribed fee, convert his application into an application for registration of a utility model, which
shall be accorded the filing date of the initial application. An application may be converted only once.
110.2. At any time before the grant or refusal of a utility model registration, an applicant for a utility
model registration may, upon payment of the prescribed fee, convert his application into a patent
application, which shall be accorded the filing date of the initial application. (Sec. 58, R.A. No. 165a)

SECTION 111. Prohibition against Filing of Parallel Applications.

An applicant may not file two (2) applications for the same subject, one for utility model registration
and the other for the grant of a patent whether simultaneously or consecutively. (Sec. 59, R.A. No.
165a)

Del Rosario vs. CA and Janito Corp.

FACTS: Roberto Del Rosario was granted a patent for his innovation called the Minus One karaoke.
The patent was issued in June 1988 for five years and was renewed in November 1991 for another
five years as there were improvement introduced to his minus one karaoke. In 1993, while the patent
was still effective, Del Rosario sued Janito Corporation, a Japanese company owned by Janito Cua,
for allegedly infringing upon the patent of Del Rosario. Del Rosario alleged that Janito was
manufacturing a sing-along system under the brand miyata karaoke which is substantially, if not
identical, the same to his minus one karaoke. The lower court ruled in favor of Del Rosario but the
Court of Appeals ruled that there was no infringement because the karaoke system was a universal

product manufactured, advertised, and marketed all over the world long before Del Rosario was
issued his patents.
ISSUE: Whether or not the Court of Appeals erred in its ruling.
HELD: Yes. 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 patent issued to Del
Rosario are for utility models of audio equipment. 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. In the case at bar, miyata karaoke was proven to have
substantial if not identical functionality as that of the minus one karaoke which was covered by the
second patent issued to Del Rosario. Further, Janito failed to present competent evidence that will
show that Del Rosarios innovation is not new