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Petitioner elevated the decision of the Director of Patents to the Court of Appeals
which affirmed the decision of the Director of Patents. Hence, this petition for review on
certiorari.
ISSUE:
Whether the dismissal is proper where the patent applied for has no substantial
difference between the model to be patented and those sold by petitioner.
HELD:
The element of novelty is an essential requisite of the patentability of an invention or
discovery. If a device or process has been known or used by others prior to its invention
or discovery by the applicant, an application for a patent therefor should be denied; and
if the application has been granted, the court, in a judicial proceeding in which the
validity of the patent is drawn in question, will hold it void and ineffective. It has been
repeatedly held that an invention must possess the essential elements of novelty,
originality and precedence, and for the patentee to be entitled to the protection the
invention must be new to the world.
However, The validity of the patent issued by the Philippine Patent Office in favor of
private respondent and the question over the inventiveness, novelty and usefulness of
the improved model of the LPG burner are matters which are better determined by the
Patent Office. The technical staff of the Philippine Patent Office composed of experts in
their field has by the issuance of the patent in question accepted private respondents
model of gas burner as a discovery. There is a presumption that the Office has correctly
determined the patentability of the model and such action must not be interfered with in
the absence of competent evidence to the contrary.
The rule is settled that the findings of fact of the Director of Patents, especially when
affirmed by the Court of Appeals, are conclusive on this Court when supported by
substantial evidence. Petitioner has failed to show compelling grounds for a reversal of
the findings and conclusions of the Patent Office and the Court of Appeals. Petition
DISMISSED.
United States Supreme Court
GRAHAM v. JOHN DEERE CO., (1966)
No. 11
Argued: October 14, 1965 Decided: February 21, 1966
skill in the applicable art are required to determine the non-obviousness of a claimed
invention as to a prior art. The statutory non-obviousness requirement was added by
the Patent Act of 1952. However, this was just a codification of the judicial precedent
set forth in Hotchkiss v. Greenwood, 11 How. 248 (1851). Although the term "nonobviousness" is used instead of "invention," in 103 of the Act, the general level of
improvement and originality needed in order to sustain a patent did not change. In
order to determine whether an invention is eligible for patent or is only an obvious
improvement to a prior art requires a case-by-case analysis of the criteria listed above.
Commercial success, long-felt but unsolved needs, and the failure of others are
secondary considerations that may also be relevant in considering the obviousness of
an invention. Regarding the patent at issue in these cases, the differences between the
patented invention and prior art would have been obvious to one reasonably skilled in
the art. The patent is therefore invalid. Affirmed.
Discussion. Dissatisfaction with the Supreme Court"s increasingly strict standard of
"invention" led to the writing of the 1952 Patent Act. There was also much criticism
regarding the application of the test which led to different judicial decisions with
subjective and inconsistent determinations. Congress omitted the word "invention" in
the Act on purpose so that no past requirements would be referred to. Instead,
Congress codified the hundreds of different ways the case law doctrine had been read
into a single statutory form. However, judicial interpretation of this Act was still open to
question, as shown in the above decision.
MAGUAN v CA
146 SCRA 107 (1986)
Full text: http://www.lawphil.net/judjuris/juri1986/nov1986/gr_45101_1986.html
FACTS:
Petitioner is doing business under the firm name and style of SWAN
MANUFACTURING" while private respondent is likewise doing business under the firm
name and style of "SUSANA LUCHAN POWDER PUFF MANUFACTURING. And
holder
petitioner informed private respondent that the powder puffs the latter is
manufacturing and selling to various enterprises particularly those in the cosmetics
industry, resemble Identical or substantially Identical powder puffs of which the former is
a patent holder under Registration Certification Nos. Extension UM-109, Extension UM110 and Utility Model No. 1184; petitioner explained such production and sale constitute
infringement of said patents and therefore its immediate discontinuance is demanded,
otherwise it will be compelled to take judicial action
Private respondent replied stating that her products are different and countered
that petitioner's patents are void because the utility models applied for were not new and
patentable and the person to whom the patents were issued was not the true and actual
author nor were her rights derived from such author.
Petitioner filed a complaint for damages with injunction and preliminary injunction
against private respondent with the then Court of First Instance of Rizal
The trial court issued an Order granting the preliminary injunction prayed for by
petitioner. Consequently, the corresponding writ was subsequently issued.
In challenging these Orders private respondent filed a petition for certiorari with
the respondent court but was denied. Hence this petition.
ISSUE:
(1) Whether or not in an action for infringement the Court a quo had jurisdiction to
determine the invalidity of the patents at issue which invalidity was still pending
consideration in the patent office.
(2) Whether or not the Court a quo committed grave abuse of discretion in the issuance
of a writ of preliminary injunction.
(3) Whether or not certiorari is the proper remedy.
HELD:
1) The first issue has been laid to rest in a number of cases where the Court ruled that
"When a patent is sought to be enforced, the questions of invention, novelty or prior use,
and each of them, are open to judicial examination."
Under the present Patent Law, there is even less reason to doubt that the trial court has
jurisdiction to declare the patents in question invalid. A patentee shall have the exclusive
right to make, use and sell the patented article or product and the making, using, or
selling by any person without the authorization of the patentee constitutes infringement
of the patent (Sec. 37, R.A. 165). Any patentee whose rights have been infringed upon
may bring an action before the proper CFI now (RTC) and to secure an injunction for the
protection of his rights.
2) The burden of proof to substantiate a charge of infringement is with the plaintiff. But
where the plaintiff introduces the patent in evidence, and the same is in due form, there
is created a prima facie presumption of its correctness and validity. The decision of the
Commissioner (now Director) of Patent in granting the patent is presumed to be correct.
The burden of going forward with the evidence (burden of evidence) then shifts to the
defendant to overcome by competent evidence this legal presumption.
The question then in the instant case is whether or not the evidence introduced by
private respondent herein is sufficient to overcome said presumption.
After a careful review of the evidence consisting of 64 exhibits and oral testimonies of
five witnesses presented by private respondents before the Court of First Instance
before the Order of preliminary injunction was issued as well as those presented by the
petitioner, respondent Court of Appeals was satisfied that there is a prima facie showing
of a fair question of invalidity of petitioner's patents on the ground of lack of novelty. As
pointed out by said appellate court said evidence appeared not to have been considered
at all by the court a quo for alleged lack of jurisdiction, on the mistaken notion that such
question in within the exclusive jurisdiction of the patent office.
It has been repeatedly held that an invention must possess the essential elements of
novelty , originality and precedence and for the patentee to be entitled to protection, the
invention must be new to the world. Accordingly, a single instance of public use of the
invention by a patentee for more than two years (now for more than one year only under
Sec. 9 of the Patent Law) before the date of his application for his patent, will be fatal to,
the validity of the patent when issued.
It will be noted that the validity of petitioner's patents is in question for want of novelty.
Private respondent contends that powder puffs Identical in appearance with that covered
by petitioner's patents existed and were publicly known and used as early as 1963 long
before petitioner was issued the patents in question. (List of Exhibits, Rollo, pp. 194199). As correctly observed by respondent Court of Appeals, "since sufficient proofs
have been introduced in evidence showing a fair question of the invalidity of the patents
issued for such models, it is but right that the evidence be looked into, evaluated and
determined on the merits so that the matter of whether the patents issued were in fact
valid or not may be resolved." (Rollo, pp. 286-287).
All these notwithstanding, the trial court nonetheless issued the writ of preliminary
injunction which under the circumstances should be denied.
For failure to determine first the validity of the patents before aforesaid issuance of the
writ, the trial court failed to satisfy the two requisites necessary if an injunction is to
issue, namely: the existence of the right to be protected and the violation of said right.
(Buayan Cattle Co., Inc. v. Quintillan, 128 SCRA 276).
Under the above established principles, it appears obvious that the trial court committed
a grave abuse of discretion which makes certiorari the appropriate remedy.
As found by respondent Court of Appeals, the injunctive order of the trial court is of so
general a tenor that petitioner may be totally barred from the sale of any kind of powder
puff. Under the circumstances, respondent appellate court is of the view that ordinary
appeal is obviously inadequate.
Republic of the Philippines
SUPREME COURT
Manila
SECOND DIVISION
G.R. No. 118708 February 2, 1998
CRESER PRECISION SYSTEMS, INC., petitioner,
vs.
COURT OF APPEALS AND FLORO INTERNATIONAL CORP., respondents.
FULL CASE: http://www.lawphil.net/judjuris/juri1998/feb1998/gr_118708_1998.html OR
https://www.scribd.com/document/191724867/Creser-Precision-vs-CA-Digest
Facts:
Respondent was granted by the Bureau of Patents, Trademarks and Technology
Transfer (BPTTT) a Letter of patent for its aerial fuze on January 23, 1990. Sometime in
1993, respondent discovered that the petitioner submitted samples of its patented aerial
fuze to the AFP for testing claiming to be his own. To protect its right, respondent
sent letter of warning to petitioner on a possible court action should it proceed its testing
by the AFP. In response the petitioner filed a complaint for injunction and damages
arising from alleged infringement before the RTC asserting that it is the true and actual
inventor of the aerial fuze which it developed on 1981 under the Self Reliance Defense
Posture Program of the AFP. It has been supplying the military of the aerial fuze since
then and that the fuzeof the respondent is similar as that of the petitioner. Petitioner
prayed for restraining order and injunction from marketing, manufacturing and profiting
from the said invention by the respondent. The trial court ruled in favor of the petitioner
citing the fact that it was the first to develop the aerial fuze since 1981 thUS it concludes
that it is the petitioners aerial fuze that was copied by the respondent. Moreover, the
claim of respondent is solely based on its letter of patent which validity is being
questioned. On appeal, respondent argued that the petitioner has no cause of action
since he has no right to assert there being no patent issued to his aerial fuze. The Court
of Appeals reversed the decision of the trial court dismissing the complaint of the
petitioner. It was the contention of the petitioner that it can file under Section 42 of the
Patent Law an action for infringement not as a patentee but as an entity in possession of
a right, title or interest to the patented invention. It theorizes that while the absence of a
patent prevents one from lawfully suing another for infringement of said patent, such
absence does not bar the true and actual inventor of the patented invention from suing
another in the same nature as a civil action for infringement.
Issue:
Whether or not the petitioner has the right to assail the validity of the patented work of
the respondent?
Ruling:
The court finds the argument of the petitioner untenable. Section 42 of the Law on
Patent (RA 165) provides that only the patentee or his successors-in-interest may file an
action against infringement. What the law contemplates in the phrase anyone
possessing any right, title or interest in and to the patented invention refers only to the
patentees successors-in-interest, assignees or grantees since the action on patent
infringement may be brought only in the name of the person granted with the patent.
There can be no infringement of a patent until a patent has been issued since the right
one has over the invention covered by the patent arises from the grant of the patent
alone. Therefore, a person who has not been granted letter of patent over an invention
has not acquired right or title over the invention and thus has no cause of action for
infringement. Petitioner admitted to have no patent over his invention. Respondents
aerial fuze is covered by letter of patent issued by the Bureau of Patents thus it has in
his favor not only the presumption of validity of its patent but that of a legal and factual
first and true inventor of the invention.
Ruling:
We find no merit in his arguments.
Tests have been established to determine infringement. These are (a) literal
infringement; and (b) the doctrine of equivalents. In using literal infringement as a test, .
. . resort must be had, in the first instance, to the words of the claim. If accused matter
clearly falls within the claim, infringement is made out and that is the end of it. To
determine whether the particular item falls within the literal meaning of the patent claims,
the court must juxtapose the claims of the patent and the accused product within the
overall context of the claims and specifications, to determine whether there is exact
identity of all material elements. Moreover, it is also observed that petitioner also called
his power tiller as a floating power tiller. 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.
Recognizing that the logical fallback position of one in the place of defendant is to aver
that his product is different from the patented one, courts have adopted the doctrine of
equivalents which recognizes that minor modifications in a patented invention are
sufficient to put the item beyond the scope of literal infringement. 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. 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.
To establish an infringement, it is not essential to show that the defendant adopted the
device or process in every particular; Proof of an adoption of the substance of the thing
will be sufficient. In one sense, said Justice Brown, it may be said that no device can
be adjudged an infringement that does not substantially correspond with the patent. But
another construction, which would limit these words to exact mechanism described in
the patent, would be so obviously unjust that no court could be expected to adopt it. . . .
The law will protect a patentee against imitation of his patent by other forms and
proportions. If two devices do the same work in substantially the same way, and
accomplish substantially the same result, they are the same, even though they differ in
name, form, or shape.
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.
Tryco Pharma averred that nowhere in Smith Klines patent does it mention that
Albendazole is present but even if it were, the same is unpatentable.
Smith Kline thus invoked the doctrine of equivalents, which implies that the two
substances substantially do the same function in substantially the same way to achieve
the same results, thereby making them truly identical for in spite of the fact that the word
Albendazole does not appear in Tryco Paharmas letters of patent, it has ably shown by
evidence its sameness with methyl 5 propylthio-2-benzimidazole carbamate.
ISSUE:
Whether or not there is patent infringement in this case
HELD:
No. Smith Kline failed to prove that Albendazole is a compound inherent in the patented
invention. Nowhere in the patent is the word Albendazole found. When the language of
its claims is clear and distinct, the patentee is bound thereby and may not claim
anything beyond them. Further, there was a separate patent for Albendazole given by
the US which implies that Albendazole is indeed separate and distinct from the patented
compound here.
A scrutiny of Smith Klines evidence fails to prove the substantial sameness of the
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. In other words, the principle or mode of operation must
be the same or substantially the same.
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.
terms and conditions as may be deemed reasonable and mutually satisfactory, which
Parke Davies declined.
Doctors Pharmaceuticals Inc. filed a petition with the Director of Patents requesting the
Director to grant a compulsory license. After careful evaluation and hearings, the
Director granted the request of Doctors Pharmaceuticals.
ISSUE:
Is the decision of the Director of Patents in granting Doctors Pharmaceutical Inc.
compulsory license to use the substance chloramphenicol,valid?
HELD:
Yes the decision of the Director of Patents in granting Doctors Pharmaceutical
Inc. compulsory license to use the substance chloramphenicol is valid. The Supreme
Court says that patents issued to foods and medicines are not exclusive so as not to
prevent the building up of patent monopolies. Public benefit is foremost. The Court
dismissed the contention of Parke Davies that the Director of Patents erred in granting
compulsory license. The decision appealed from is affirmed, with costs against
petitioner.