CHAPTER II

PATENTABILITY

Section 23. Novelty. . - An invention shall not be considered new if it

forms part of a prior art. (Sec. 9, R.A. No. 165a)

Section 21. Patentable Inventions. - Any technical solution of a

problem in any field of human activity which is new, involves an
inventive step and is industrially applicable shall be Patentable. It
may be, or may relate to, a product, or process, or an improvement
of any of the foregoing. (Sec. 7, R.A. No. 165a)

Section 24. Prior Art. - Prior art shall consist of:

Section 22. Non-Patentable Inventions. - The following shall be

excluded from patent protection:

24.2. The whole contents of an application for a patent, utility

model, or industrial design registration, published in accordance with
this Act, filed or effective in the Philippines, with a filing or priority
date that is earlier than the filing or priority date of the application:
Provided, That the application which has validly claimed the filing
date of an earlier application under Section 31 of this Act, shall be
prior art with effect as of the filing date of such earlier application:
Provided further, That the applicant or the inventor identified in both
applications are not one and the same. (Sec. 9, R.A. No. 165a)

24.1. Everything which has been made available to the public

anywhere in the world, before the filing date or the priority date of
the application claiming the invention; and

22.1. Discoveries, scientific theories and mathematical methods;

22.2. Schemes, rules and methods of performing mental acts, playing
games or doing business, and programs for computers;
22.3. Methods for treatment of the human or animal body by surgery
or therapy and diagnostic methods practiced on the human or animal
body. This provision shall not apply to products and composition for
use in any of these methods;

Section 25. Non-Prejudicial Disclosure. . - 25.1. The disclosure of

information contained in the application during the twelve (12)
months preceding the filing date or the priority date of the
application shall not prejudice the applicant on the ground of lack of
novelty if such disclosure was made by:

22.4. Plant varieties or animal breeds or essentially biological

process for the production of plants or animals. This provision shall
not apply to micro-organisms and non-biological and
microbiological processes.

(a) The inventor;

(b) A patent office and the information was contained (a) in another
application filed by the inventor and should not have been disclosed
by the office, or (b) in an application filed without the knowledge or
consent of the inventor by a third party which obtained the
information directly or indirectly from the inventor; or

Provisions under this subsection shall not preclude Congress to

consider the enactment of a law providing sui generis protection of
plant varieties and animal breeds and a system of community
intellectual rights protection:
22.5. Aesthetic creations; and

(c) A third party which obtained the information directly or indirectly

from the inventor.

22.6. Anything which is contrary to public order or morality. (Sec. 8,

R.A. No. 165a)
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25.2. For the purposes of Subsection 25.1, "inventor" also means any
person who, at the filing date of application, had the right to the
patent. (n)
Section 26. Inventive Step. - An invention involves an inventive step
if, having regard to prior art, it is not obvious to a person skilled in
the art at the time of the filing date or priority date of the application
claiming the invention. (n)

Section 6, Republic Act No. 9502 (Cheaper Medicines Act)

SEC. 6. Section 26 of Republic Act No. 8293, otherwise known as

the Intellectual Property Code of the Philippines, is hereby amended
to read as follows:
"SEC. 26. Inventive Step. - 26.1. An invention involves an inventive
step if, having regard to prior art, it is not obvious to a person skilled
in the art at the time of the filing date or priority date of the
application claiming the invention. (n)
"26.2. In the case of drugs and medicines, there is no inventive step
if the invention results from the mere discovery of a new form or
new property of a known substance which does not result in the
enhancement of the known efficacy of that substance, or the mere
discovery of any new property or new use for a known substance, or
the mere use of a known process unless such known process results
in a new product that employs at least one new reactant."
Section 27. Industrial Applicability. - An invention that can be
produced and used in any industry shall be industrially applicable.
(n)

IPL PATENTS

1976 in CA-G.R. No. SP-04706, titled "SUSANA LUCHAN v. Hon.

HONRADO, et al." wherein it ruled for the dismissal of the petition
for lack of merit and at the same time nullifying the writ of
preliminary injunction it had previously issued; and the second,
dated November 4, 1976, denying the motion for reconsideration of
the first resolution above-mentioned.
Petitioner is doing business under the firm name and style of SWAN
MANUFACTURING" while private respondent is likewise doing
business under the firm name and style of "SUSANA LUCHAN
POWDER PUFF MANUFACTURING."
It is undisputed that petitioner is a patent holder of powder puff
namely:

Republic of the Philippines

SUPREME COURT
Manila

1. UM-423 (extended and/or renewed under Extension No. UM-109

for a period of 5 years from October 6, 1971)

SECOND DIVISION

2. UM-450 (extended and/or renewed under Extension No. UM110

for a period of 5 years from January 26, 1972)

G.R. L-45101 November 28, 1986

ROSARIO C. MAGUAN (formerly ROSARIO C.
TAN), petitioner,
vs.
THE HONORABLE COURT OF APPEALS and SUSANA
LUCHAN, respondents.

3. UM 1184, for a period of 5years fromApril 5, 1974.(Petition,

Rollo, pp. 6-7).
In a letter dated July 10, 1974 (Annex "D", Rollo, p. 86), 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. (Rollo, pp. 7-8).

Ambrosio Padilla Law Offices for petitioner.

PARAS, J.:
Submitted on December 9, 1977 for Our decision is this petition for
review on certiorari of the two Resolutions of the Court of Appeals,
the first dated July 6, 1976, setting aside its Decision of February 16,
IPL PATENTS

Private respondent replied stating that her products are different and
countered that petitioner's patents are void because the utility models
applied for were not new and patentable and the person to whom the
patents were issued was not the true and actual author nor were her
rights derived from such author. (Taken from allegations in the
Answer, par. 4, Rollo, p. 93). And on July 25, 1974, private
respondent assailed the validity of the patents involved and filed
with the Philippine Patent Office petitions for cancellation of (1)
Utility Model Letter Patent Extension No. UM-109 (Inter Partes
Case No. 838, Susana Luchan v. Rosario C. Tan), (2) Utility Model
Letters Patent No. UM-1184 (Inter Partes Case No. 839, Susana
Luchan v. Rosario C. Tan), (3) Utility Model Letters Patent
Extension No. UM-110 (Inter Partes Case No. 840, Susana Luchan
v. Rosario C. Tan. (Taken from allegations in the Answer, par. 10,
Rollo, pp. 94-95).

(2) the person to whom the patents were issued was not the true and
actual author of the utility models applied for, and neither did she
derive her rights from any true and actual author of these utility
models.
for the following reasons:
(a) since years prior to the filing of applications for the patents
involved, powder puffs of the kind applied for were then already
existing and publicly being sold in the market; both in the
Philippines and abroad; and
(b) applicant's claims in her applications, of "construction" or
process of manufacturing the utility models applied for, with respect
to UM-423 and UM-450, were but a complicated and impractical
version of an old, simple one which has been well known to the
cosmetics industry since years previous to her filing of applications,
and which belonged to no one except to the general public; and with
respect to UM1184; her claim in her application of a unitary powder
puff, was but an limitation of a product well known to the cosmetics
industry since years previous to her firing of application, and which
belonged to no one except to the general public; (Answer, Rollo, pp.
93-94).

In view thereof, petitioner, on August 24, 1974, filed a complaint for

damages with injunction and preliminary injunction against private
respondent with the then Court of First Instance of Rizal, Pasig
Branch, docketed as Civil Case No. 19908, for infringing the
aforesaid letters patent, and prayed, among others, that a writ of
preliminary injunction be immediately issued (Complaint, Rollo, p.
90).
In her answer, private respondent alleged that the products she is
manufacturing and offering for sale are not Identical, or even only
substantially Identical to the products covered by petitioner's patents
and, by way of affirmative defenses, further alleged that petitioner's
patents in question are void on the following grounds:

On September 18, 1974, the trial court issued an Order (Annex "K",
Rollo, p. 125) granting the preliminary injunction prayed for by
petitioner. Consequently, the corresponding writ was subsequently
issued (Annex "K-1", Rollo, p. 131) enjoining the herein private
respondent (then defendant) and all other persons employed by her,
her agents, servants and employees from directly or indirectly
manufacturing, making or causing to be made, selling or causing to
be sold, or using or causing to be used in accordance with, or
embodying the utility models of the Philippine Patent Office Utility
Model Letters Patent Nos. 423 (Extension No. UM-109), No. 450
(Extension No. UM-110), and Utility Model No. 1184 or from

(1) at the time of filing of application for the patents involved, the
utility models applied for were not new and patentable under Sec. 55
of R.A. 165, as amended by R.A. 864; and

IPL PATENTS

infringement upon or violating said letters patent in any way

whatsoever (Annex " K-1 ", Rollo, p. 131).

preliminary injunction; 2) Writ of Preliminary Injunction dated

September 18, 1974; and Order dated September 11, 1975, denying
petitioner's motion for reconsideration, all issued in connection with
Civil Case No. 19908, UNTIL FURTHER ORDERS FROM THIS
COURT. (Annex "P", Rollo, p. 1.73)

Private respondent questioned the propriety of the trial court's

issuance of the Writ of Preliminary Injunction arguing that since
there is still a pending cancellation proceedings before the Philippine
Patent Office concerning petitioner's patents, such cannot be the
basis for preliminary injunction (Motion for Reconsideration, Rollo,
p. 132).

On February 16, 1976, respondent court promulgated a decision the

dispositive portion of which reads:
WHEREFORE, finding no merit in the herein petition, the same is
hereby dismissed and the preliminary injunction previously issued
by this Court is hereby set aside, with costs.

In an Order dated September 11, 1975, the trial court denied private
respondent's motion for reconsideration (Annex "N", Rollo, p. 142).
In challenging these Orders private respondent filed a petition for
certiorari with the respondent court on September 29, 1975 (Annex
"D", Rollo, pp. 148-171) reiterating among other things the
invalidity of petitioner's patents and prayed that the trial court be
restrained from enforcing or continuing to enforce the following:

SO ORDERED. (CA Decision, Rollo, p. 189).

ln said decision respondent court stated that in disposing of the
petition it tackled only the issue of whether the court a quo acted
with grave abuse of discretion in issuing the challenged orders. It
made clear the question of whether the patents have been infringed
or not was not determined considering the court a quo has yet to
decide the case on the merits (Ibid., p. 186).

(1) Order dated September 18, 1974, granting the preliminary

injunction;
(2) Writ of preliminary injunction dated September 18, 1974; and

Feeling aggrieved, private respondent moved to reconsider the aforementioned Decision based on the following grounds:

(3) Order dated September 11, 1974 denying petitioner's motion

petition for reconsideration.

On October 15, 1975, the Writ of Preliminary Injunction was issued

by the respondent Court of Appeals as follows:

THAT THIS HONORABLE COURT ERRED IN NOT

APPRECIATING THE EXISTENCE OF A FAIR QUESTION OF
INVALIDITY OF PRIVATE RESPONDENT'S PATENTS.

NOW, THEREFORE, you, respondents, and/or any person/persons

acting on your stead, are hereby ENJOINED to RESTRAIN from
enforcing or continuing to enforce, the proceedings complained of in
the petition to wit: 1) Order dated September 18, 1974, granting the
IPL PATENTS

II

THAT THIS HONORABLE COURT ERRED IN NOT REJECTING

THE THEORY OF RESPONDENT JUDGE THAT HE HAS NO
JURISDICTION TO INVALIDATE THE PATENTS UPON
GROUND OF LACK OF NOVELTY OF THE PRODUCTS
PATENTED. (Motion for Reconsideration, Rollo, p. 190).

SO ORDERED. (CA Resolution, Rollo, p. 226).

In a Resolution dated November 4, 1976, respondent court, not
persuaded by the grounds embodied in the motion for
reconsideration filed by herein petitioner (Annex "V ", Rollo, p.
227), denied the same for lack of merit, thereby maintaining the
same stand it took in its July 6, 1976 Resolution (Rollo, p. 281).
Hence, this petition.

Reviewing on reconsideration, respondent court gave weight to

private respondent's allegation that the latter's products are not
identical or even only substantially identical to the products covered
by petitioner's patents. Said court noticed that contrary to the lower
courts position that the court a quohad no jurisdiction to determine
the question of invalidity of the patents, Section 45 and 46 of the
Patent Law allow the court to make a finding on the validity or
invalidity of patents and in the event there exists a fair question of its
invalidity, the situation calls for a denial of the writ of preliminary
injunction pending the evaluation of the evidence presented (Rollo,
pp. 218-226). Thus, finding the lower court's position to have been
opposed to Patent Law, respondent court considered it a grave abuse
of discretion when the court a quo issued the writ being questioned
without looking into the defenses alleged by herein private
respondent. Further, it considered the remedy of appeal, under the
circumstances, to be inadequate.

On December 3, 1976, without giving due course to the petition, this

Court required respondent to file her Comment (Rollo, p. 290) which
was filed on December 16, 1976 (Rollo, pp. 291-316). Thereafter,
petitioner filed her Reply (Rollo, p. 323) and on May 30, 1977, the
petition was given due course (Rollo, p. 345). Petitioner filed her
brief on July 14, 1977 (Rollo, p. 351) while private respondent filed
her brief on August 25, 1977 (Rollo, p. 359). Thereafter, petitioner
having failed to file reply brief, the Court resolved to declare the
case submitted for decision on December 9, 1977 (Rollo, p. 359).
The assignment of errors raised by the petitioner in this case (Rollo,
pp. 15-16) may be reduced to three main issues:

Thus, on July 6, 1976, respondent court made a complete turnabout

from its original decision and promulgated a Resolution, the
dispositive portion of which reads:

(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.

WHEREFORE, our decision is hereby set aside. The writ of

certiorari is ordered issued. Accordingly, the challenged orders,
Exhibit H and H-1 and the order denying the motion for
reconsideration (Annex "K", Petition), are hereby set aside. The writ
of preliminary injunction previously ordered by this Court and
ordered lifted by the Decision now being set aside is hereby
reinstated and made permanent. Without pronouncement as to costs.

(2) Whether or not the Court a quo committed grave abuse of

discretion in the issuance of a writ of preliminary injunction.

IPL PATENTS

(3) Whether or not certiorari is the proper remedy.

The first issue has been laid to rest in a number of cases where the
Court ruled that "When a patent is sought to be enforced, the
questions of invention, novelty or prior use, and each of them, are
6

open to judicial examination." (Vargas v. F.M. Yaptico & Co. 40

Phil. 199 [1919]; Vargas v. Chua, 57 Phil. 790-791 [1933]; Frank and
Gohn v. Kosuyana 59 Phil. 207 [1933]).

The question then in the instant case is whether or not the evidence
introduced by private respondent herein is sufficient to overcome
said presumption.

Under the present Patent Law, there is even less reason to doubt that
the trial court has jurisdiction to declare the patents in question
invalid. A patentee shall have the exclusive right to make, use and
sell the patented article or product and the making, using, or selling
by any person without the authorization of the patentee constitutes
infringement of the patent (Sec. 37, R.A. 165). Any patentee whose
rights have been infringed upon may bring an action before the
proper CFI now (RTC) and to secure an injunction for the protection
of his rights (Sec. 42, R.A. 165). Defenses in an action for
infringement are provided for in Section 45 of the same law which in
fact were availed of by private respondent in this case. Then, as
correctly stated by respondent Court of Appeals, this conclusion is
reinforced by Sec. 46 of the same law which provides that if the
Court shall find the patent or any claim thereof invalid, the Director
shall on certification of the final judgment ... issue an order
cancelling the patent or the claims found invalid and shall publish a
notice thereof in the Official Gazette." Upon such certification, it is
ministerial on the part of the patent office to execute the judgment.
(Rollo, pp. 221-222).

After a careful review of the evidence consisting of 64 exhibits and

oral testimonies of five witnesses presented by private respondents
before the Court of First Instance before the Order of preliminary
injunction was issued as well as those presented by the petitioner,
respondent Court of Appeals was satisfied that there is a prima
facie showing of a fair question of invalidity of petitioner's patents
on the ground of lack of novelty. As pointed out by said appellate
court said evidence appeared not to have been considered at all by
the court a quo for alleged lack of jurisdiction, on the mistaken
notion that such question in within the exclusive jurisdiction of the
patent office.
It has been repeatedly held that an invention must possess the
essential elements of novelty , originality and precedence and for the
patentee to be entitled to protection, the invention must be new to the
world. Accordingly, a single instance of public use of the invention
by a patentee for more than two years (now for more than one year
only under Sec. 9 of the Patent Law) before the date of his
application for his patent, will be fatal to, the validity of the patent
when issued. (Frank, et al. v. Kosuyama Vargas v. F.M. Yaptico &
Co. and Vargas v. Chua, et al., supra).

II.
The burden of proof to substantiate a charge of infringement is with
the plaintiff. But where the plaintiff introduces the patent in
evidence, and the same is in due form, there is created a prima
faciepresumption of its correctness and validity. The decision of the
Commissioner (now Director) of Patent in granting the patent is
presumed to be correct. The burden of going forward with the
evidence (burden of evidence) then shifts to the defendant to
overcome by competent evidence this legal presumption.
IPL PATENTS

The law provides:

SEC. 9. Invention not considered new or patentable. An invention
shall not be considered new or capable of being patented if it was
known or used by others in the Philippines before the invention
thereof by the inventor named in an application for patent for the
invention; or if it was patented or described in any printed
publication in the Philippines or any foreign country more than one
year before the application for a patent therefor; or if it had been in
7

public use or on sale in the Philippines for more than one year before
the application for a patent therefor; or if it is the subject matter of a
validity issued patent in the Philippines granted on an application
filed before the filing of the application for patent therefor.

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.

Thus, more specifically, under American Law from which our Patent
Law was derived (Vargas v. F.M. Yaptico & Co. supra) it is generally
held that in patent cases a preliminary injunction will not issue for
patent infringement unless the validity of the patent is clear and
beyond question. The issuance of letters patent, standing alone, is
not sufficient to support such drastic relief (8 Deller's Walker on
Patents p. 406). In cases of infringement of patent no preliminary
injunction will be granted unless the patent is valid and infringed
beyond question and the record conclusively proves the defense is
sham. (Ibid., p. 402)

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.

In the same manner, under our jurisprudence, as a general rule

because of the injurious consequences a writ of injunction may
bring, the right to the relief demanded must be clear and
unmistakable. (Sangki v. Comelec, 21 SCRA 1392; December 26,
1967) and the dissolution of the writ is proper where applicant has
doubtful title to the disputed property. (Ramos v. C.A., 95 SCRA
359).

As found by respondent Court of Appeals, the injunctive order of the

trial court is of so general a tenor that petitioner may be totally
barred from the sale of any kind of powder puff. Under the
circumstances, respondent appellate court is of the view that
ordinary appeal is obviously inadequate. (Rollo, p. 288). A parallel
was drawn from a decision of the Supreme Court in the case
of Sanchez v. Hon. Court of Appeals, 69 SCRA 328 [1976] where the
First Division of the Supreme Court ruled that "The prerogative writ
of certiorari may be applied for by proper petition notwithstanding
the existence of the regular remedy of an appeal in due cause when
among other reasons, the broader interests of justice so require or an
ordinary appeal is not an adequate remedy."

III.
It will be noted that the validity of petitioner's patents is in question
for want of novelty. Private respondent contends that powder puffs
Identical in appearance with that covered by petitioner's patents
existed and were publicly known and used as early as 1963 long
before petitioner was issued the patents in question. (List of Exhibits,
Rollo, pp. 194-199). As correctly observed by respondent Court of
Appeals, "since sufficient 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,
IPL PATENTS

Private respondent maintains the position that the resolutions sought

to be appealed from had long become final and executory for failure
of Hon. Reynaldo P. Honrado, the trial court judge, to appeal by
8

certiorari from the resolutions of respondent Court of Appeals.

(Rollo, pp. 291-292).

Alampay, J., took no part.

MAGUAN V CA

Such contention is untenable.

Principle in the case:A patentee shall have the exclusive right to make, use and
sell the patentedarticle or product and the making, using, or selling by any person
without the authorization of thepatentee constitutes infringement of the patent (Sec.
37, R.A. 165). Any patentee whose rightshave been infringed upon may bring an
action before the proper CFI now (RTC) and to secure aninjunction for the
protection of his rights.

There is no dispute that petitioner has seasonably petitioned. On the

other hand, it is elementary that the trial judge is a mere nominal
party as clearly provided in Section 5, Rule 65 of the Revised Rules
of Court where it shall be the duty of such person or persons
interested in sustaining the proceedings in court, "to appear and
defend, both in his or their own behalf and in behalf of the court or
judge affected by the proceedings."

FACTS:Maguan is doing business under the firm name and style of SWAN
MANUFACTURING" while Luchan is likewise doing business under the firm name
and style of "SUSANA LUCHAN POWDER PUFFMANUFACTURING. Maguan
informed Luchan that the powder puffs Luchan is manufacturing and selling to
various enterprises particularly those in the cosmetics industry, resemble Identical
or substantially Identical powder puffs of which she (Maguan) is a patent holder
under Registration Certification Nos. Extension UM-109, ExtensionUM-110 and
Utility Model No. 1184; Maguan 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.Luchan replied
stating that her products are different and countered that Maguans 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. Maguan filed a complaint for damages with
injunction and preliminary injunction against Luchan with the then Court of First
Instance of Rizal. The trial court issued an Order granting the preliminary injunction
prayed for. Consequently, the corresponding writ was subsequently issued.

Relative thereto "the judge whose order is under attack is merely a

nominal party; wherefore, a judge in his official capacity should not
be made to appear as a party seeking reversal of a decision that is
unfavorable to the action taken by him." (Hon. Alcasid v. Samson,
102 Phil. 735-736; Tarona v. Sayo, 67 SCRA 508, 524; Lim Se v.
Argel, 70 SCRA 378).
As to petitioner's claim of prescription, private respondent's
contention that such refers to the filing of petitions for cancellation
in the Patent Office under Sec. 28 of the Patent Law and not to a
defense against an action for infringement under Sec. 45 thereof
which may be raised anytime, is evident under aforesaid law.

Issue: WON in Maguan has a right to file an action before the CFI for injunction
due to infringement of her patent.
Ruling: Yes.Rationale: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.

PREMISES CONSIDERED, the assailed resolutions of the Court of

Appeals are hereby AFFIRMED.
SO ORDERED.

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.

Feria (Chairman), Fernan, Gutierrez, Jr., and Feliciano, * JJ.,

concur.
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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.

FIRST DIVISION
[G.R. No. 14101. September 24, 1919. ]
ANGEL VARGAS, Plaintiff-Appellant, v. F. M. YAPTICO &
Co. (LTD.) , Defendant-Appellee.
Charles C. Cohn for Appellants.
John Bordman for Appellee.
SYLLABUS
1. PROPERTY; PATENTS; LAW. Act No. 2235 of the
Philippine Legislature, enacted on February 10, 1913, in
effect makes the United States Patent Laws applicable in
the Philippine Islands.
2. ID.; ID.; VALIDITY; JUDICIARY. When a patent is sought
to be enforced, "the questions of invention, novelty, or prior
use, and each of them, are open to judicial examination."
3. ID.; ID.; ID.; ID.; BURDEN OF PROOF. The burden of
proof to substantiate a charge of infringement is with the
plaintiff. Where, however, the plaintiff introduces the patent
in evidence, if it is in due form, it affords a prima facie
presumption of its correctness and validity. The decision of
the Commissioner of Patents in granting the patent is
always presumed to be correct. The burden then shifts to
the defendant to overcome by competent evidence this
legal presumption.

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10

4 ID.; ID.; ID.; "VARGAS PLOW;" NOVELTY INVENTION, OR

DISCOVERY In order to give existence to the right to a
patent the element of novelty, invention, or discovery must
be shown.

DECISION
MALCOLM, J. :
Rude wooden implements for tilling the soil have been in
use in the Philippines, possibly not since the Israelites
"went down to sharpen every man his share and his
coulter," but certainly for many years. Iron plows called
"Urquijo" and "Pony" have latterly been the vogue.

5. ID.; ID.; ID.; ID.; REPAIRS. A difference has long been

recognized between repairing and reconstructing a
machine. If, for instance, partial injuries, whether they
occur from accident or from wear and tear, to a machine for
agricultural purposes are made, this is only refitting the
machine for use, and thus permissible.

Angel Vargas, a farmer acquainted with local conditions and

alive to the commercial possibilities, took it upon himself to
produce, with the native plow as the model, an improved,
adjustable plow. On July 22, 1910, he made application for a
United States patent to cover his so-called invention. On
March 12, 1912, letters patent were issued by the United
States Patent Office in favor of Vargas. On April 24, 1912, a
certified copy of the patent was filed in the Division of
Patents, Copyrights, and Trademarks of the Executive
Bureau, Government of the Philippine Islands. The patent
and its registry was also published in the newspaper, El
Tiempo.

6. ID.; ID.; ID.; ID.; PUBLIC USE OR SALE. To entitle

patent, the invention must be new to the world.
7. ID.; ID.; ID.; ID.; ID. Under the provisions of the
statute, an inventors creation must not have been in public
use or on sale in the United States and the Philippine
Islands for more than two years prior to his application.
8. ID.; ID.; ID.; ID.; ID. A single instance of public use of
the invention by a patentee for more than two years before
the date of his application for his patent will be fatal to the
validity of the patent when issued.

Since 1910, Vargas has engaged in the manufacture of

these plows in the city of Iloilo, Philippine Islands. On the
plows there was first stamped the words "Patent Applied
For," later after the patent had been granted, changed to
"Patented Mar. 12, 1912." Ninety per cent of the plows in
use in the Visayas (Iloilo and vicinity) are said to be Vargas
plows.

9. ID.; ID.; ID.; ID.; ID. Held: That since a preponderance

of the evidence ,is to the effect that for more than two
years before the application for the original letters patent
there was, by the consent and allowance of the plaintiff, a
public use of the invention covered by them, namely, of the
so-called "Vargas Plow," the patent is void.

IPL PATENTS

During this same period, the firm of F. M. Yaptico & Co.

(Ltd.) , was engaged in the foundry business in the City of
Iloilo. It openly held itself out as a manufacturer of plow
parts. It has in fact produced points, shares, shoes, and
11

heel pieces in a considerable amount adapted to replace

worn-out parts of the Vargas plow.

reply, relies on three propositions, namely: (1) The

judgment of the trial court in finding the patent granted
plaintiff void for lack of novelty and invention should be
affirmed; (2) The patent granted plaintiff is void from the
public use of his plow for over two years prior to his
application for a patent, and (3) If the patent is valid, there
has been no contributory infringement by defendant.

Such was the existing situation when, in the early part of

1918, the owner of the patent, and thus the proper party to
institute judicial proceedings, began action in the Court of
First Instance of Iloilo to enjoin the alleged infringement of
U. S. Patent No. 1020232 by the defendant F. M Yaptico &
Co. (Ltd.) , and to recover the damages suffered by reason
of this infringement. The court issued the preliminary
injunction as prayed for. The defendant, in addition to a
general denial, alleged, as special defenses, that the patent
lacked novelty or invention, that there was no priority of
ideas or device in the principle and construction of the
plow, and that the plow, whose manufacture it was sought
to have enjoined by the plaintiff, had already been in public
use for more than two years before the application of the
plaintiff for his patent. The parties subsequently entered
into a stipulation that the court should first resolve the
question of whether or not there had been an infraction of
the patent, reserving the resultant question of damages for
later decision. After the taking of evidence, including the
presentation of exhibits, the trial judge, the Honorable
Antonio Villareal, in a very exhaustive and learned decision,
rendered judgment in favor of the defendant and against
the plaintiff, declaring null and without effect the patent in
question and dismissing the suit with costs against the
plaintiff. The preliminary injunction theretofore issued was
dissolved.

Before resolving these rival contentions, we should have

before us the relevant law. Act No. 2235 of the Philippine
Legislature, enacted on February 10, 1913, in effect makes
the United States Patent Laws applicable in the Philippine
Islands. It provides that "owners of patents, including
design patents, which have been issued or may hereafter
be issued, duly registered in the United States Patent Office
under the laws of the United States relating to the grant of
patents, shall receive in the Philippine Islands the
protection accorded them in the United States under said
laws." (Sec. 1.) Turning to the United States Patent Laws,
we find the Act of Congress of March 3, 1897, amendatory
of section 4886 of the United States Revised Statutes,
reading as follows:
"Any person who has invented or discovered any new and
useful art, machine, manufacture, or composition of matter,
or any new and useful improvements thereof, not known or
used by others in this country. before his invention or
discovery thereof, and not patented or described in any
printed publication in this or any foreign country, before his
invention or discovery thereof, or more than two years prior
to his application, and not in public use are on sale in this
country for more than two years prior to his application,
unless the same is proved to have been abandoned, may,
upon payment of the fees required by law, and other due

From this judgment the plaintiff has appealed, specifying

five errors. The principal assignment No. 1 is, that the trial
court erred in finding that the patented invention of the
plaintiff is lacking in novelty and invention. Defendant, in
IPL PATENTS

12

proceeding had, obtain a patent therefor." (29 Stat. L., 692,

7 Fed. Stat. Ann. [2d Ed. ], p. 23.)

differences giving it neither a new function nor a new result

distinct from the function and the result obtained from the
native plow; consequently, its production does not
presuppose the exercise of the inventive faculty but merely
of mechanical skill, which does not give a right to a patent
of an invention under the provisions of the Patent Law." In
thus finding, the court may have been right, since the
Vargas plow does not appear to be such a" :combination"
as contains a novel assemblage of parts exhibiting
invention. (See Stimpson v. Woodman [1870], 10 Wall., 117
rollers; Hicks v. Kesley [1874], 18 Wall., 674 wagons;
Hails v. Wormer [1874], 20 Wall., 353 stoves; Washburn
& Moen Mfg. Co. v. Beat "Em All Barbed Wire Co. [1892],
143 U. S., 275 barbed wire; Lynch v. Dryden [1873], C.
D., 73 walking cultivators; Torrey v. Hancock [1910] 184
Fed., 61 rotary plows.)

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." The burden of proof to
substantiate a charge of infringement is with the plaintiff.
Where, however, the plaintiff introduces the patent in
evidence, if it is in due form, it affords a prima facie
presumption of its correctness and validity. The decision of
the Commissioner of Patents in granting the patent is
always presumed to be correct. The burden then shifts to
the defendant to overcome by competent evidence this
legal presumption. With all due respect, therefore, for the
critical and expert examination of the invention by the
United States Patent Office, the question of the validity of
the patent is one for judicial determination, and since a
patent has been submitted, the exact question is whether
the defendant has assumed the burden of proof as to
anyone of his defenses. (See Agawan Co. v. Jordan [1869],
7 Wall., 583; Blanchard v. Putnam [186g], 8 Wall., 420;
Seymour v. Osborne [1871], 11 Wall., 516; Reckendorfer v.
Faber [1876], 92 U. S., 347; 20 R. C. L., 1112, 1168, 1169.)

A second line of defense relates to the fact that defendant

has never made a complete Vargas plow, but only points,
shares, shoes, and heel pieces to serve as repairs.
Defendants contention is that in common with other
foundaries, he has for four years cast large numbers of
plow points and shares suitable for the use of either on the
native wooden plow or on the Vargas plow. A differences
has long been recognized between repairing and
constructing a machine. If, for instance, partial injuries,
whether they occur from accident or from wear and tear, to
a machine for agricultural purposes are made this is only
re-fitting the machine for use, and thus permissible. (Wilson
v. Simpson [1850], 9 How., 109.) Even under the more
rigorous doctrine of Leeds & Catlin Co. v. Victor Talking
Machine Co. ([1909], 213 U. S. 325), it may be possible that
all the defendants has done is to manufacture and sell
isolated parts to be used to replace worn-out parts.

As herein before stated, the defendant relies on three

special defenses. One such defense, on which the judgment
of the lower court is principally grounded, and to which
appellant devotes the major portion of his vigorous
argument, concerns the element of novelty, invention, or
discovery, that gives existence to the right to a patent. On
this point the trial court reached the conclusion that "the
patented plow of the plaintiff, Exhibit D, is not different
from the native plow, Exhibit 2, except in the material, in
the form, in the weight and the grade of the result, the said
IPL PATENTS

13

v. Hovey [1887], 123 U. S., 267; Campbell v. City of New

York [1888], 1 L. R. A., 48.)

The third defense is, that under the provisions of the

statute, an inventors creation must not have been in public
use or on sale in the United States (and the Philippine
Islands) for more than two years prior to his application.
Without, therefore, committing ourselves as to the first two
defenses, we propose to base our decision on the one just
suggested as more easily disposing of the case. (See 20 R.
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 belief that since it has been shown that the invention
was used in public at Iloilo by others than Vargas, the
inventor, more than two years before the application for the
patent, the patent is invalid.

On the facts, we think the testimony shows such a public

use of the Vargas plow as to render the patent invalid.
Nicolas Roces, a farmer, testified that he had bought
twenty Vargas plows, of which Exhibit 5 was one, in
December, 1907; and Exhibit 5, the court found, was a plow
completely identical with that for which the plaintiff had
received a patent. The minor exception, and this in itself
corroborative of Roces testimony, is, that the handle of
plow Exhibit 5 is marked with the letters "A V" and not with
the words "Patent Applied For" or "Patented Mar. 12, 1912."
Salvador Lizarraga, a clerk in a business house, testified
that he had received plows similar to Exhibits D, 5, and 4,
for sale on commission in May, 1908, from Bonifacio
Araneta, partner of Vargas in the plow business. Ko Pao Ko,
a blacksmith, testified that he had made fifty plow frames
in 1905 for Vargas and Araneta, of which Exhibit 4 is one;
Exhibit 4, the court found, is a plow identical with that
patented by Vargas, but without share and mould-board.
Alfred Berwin, an employee in the office of Attorney John
Bordman, testified that on September 21, 1908, he had
knowledge of a transaction wherein Vargas and Araneta
desired to obtain money to invest in a plow factory. George
Ramon Saul, a mechanic of the "Taller Visayas" of Strachan
and MacMurray, testified that he had made Vargas plow
points and shares of the present form upon order of
Araneta and Vargas in 1906 and 1907. William MacMurray,
proprietor of the "Taller Visayas," corroborated the evidence
of the witness Saul by the exhibition of the account against
Vargas and Araneta wherein, under date of December 31,
1906, appears the item "12 new soft steel plow shares
forged and bored for rivets as per sample." Against all this,

Although we have spent some time in arriving at this point,

yet, having reached it, the question in the case is single
and can be brought to a narrow compass. Under the English
Statute of Monopolies (21 Jac. Ch., 3), and under the United
States Patent Act of February 21, 1793, later amended to
be as herein quoted, it was always the rule, as stated by
Lord Coke, Justice Story and other authorities, that to
entitle a man to a patent, the invention must be new to the
world. (Pennock and Sellers v. Dialogue [1829], 2 Pet., 1.)
As said by the United States Supreme Court, "it has been
repeatedly held by this court that a single instance of public
use of the invention by a patentee for more than two years
before the date of his application for his patent will be fatal
to the validity of the patent when issued." (Worley v. Lower
Tobacco Co. [1882], 104 U. S., 340; McClurg v. Kingsland
[1843], 1 How., 202; Consolidated Fruit Jar Co. v. Wright
[1877], 94 U. S., 92; Egbert v. Lippmann [1881], 104 U. S.,
333; Coffin v. Ogden [1874], 18 Wall., 120; Manning v. Cape
Ann Isinglass and Glue Co. [1883], 108 U. S., 462; Andrews
IPL PATENTS

14

was the testimony of the plaintiff Angel Vargas who denied

that Saul could have seen the Vargas plow in 1906 and
1907, who denied that Roces purchased the Vargas plow in
1907, who denied that Lizarraga could have acted as an
agent to sell two plows in November, 1908, who denied any
remembrance of the loan mentioned by Berwin as having
been negotiated in September, 1908, who denied that Ko
Pao Ko made fifty plows one of which is Exhibit 4, for
Araneta and Vargas in 1905. Plaintiff introduced his books
to substantiate his oral testimony. It is hardly believable
that five or six witnesses for the defense would deliberately
perjure themselves under oath. One might, but that all
together, of different nationalities, would enter into such a
conspiracy, is to suppose the improbable.
Tested by the principles which go to make the law, we think
a preponderance of the evidence is to the effect that for
more than two years before the application for the original
letters patent, or before July 22, 1908, there was, by the
consent and allowance of Vargas, a public use of the
invention covered by them.
To conclude, we are not certain but that appellee has
proved every one of his defenses. We are certain that he
has at least demonstrated the public use of the Vargas plow
over two years prior to the application for a patent. Such
being the case, although on a different ground, we must
sustain the judgment of the lower court, without prejudice
to the determination of the damages resulting from the
granting of the injunction, with the costs of this instance
against the appellant. So ordered.
Arellano, C.J., Torres, Johnson, Araullo, Street, Avancea and
Moir, JJ., concur.
IPL PATENTS

15

ANGEL VARGAS vs F. M. YAPTICO & CO. (Ltd.) G.R.

No. 14101, September 24, 1919
Facts:
Plaintiff Angel Vargas, a farmer, was issued patents by the
United States Patent Office for his so-called invention of an
improved adjustable plow with the use his own native plow.
A certified copy of the patent was filed in the Division of
Patents, Copyrights, and Trademarks of the Executive
Bureau, Government of the Philippine Islands.
Defendant F. M. Yaptico & Co. (Ltd.), a firm engaged in the
foundry business in Iloilo City, was a manufacturer of plow
parts. It produced points, shares, shoes, and heel pieces in
a considerable amount adapted to replace worn-out parts
of the Vargas plow.
Vargas filed a case in the Court of First Instance of Iloilo to
enjoin the alleged infringement of his U.S. Patent by the
defendant F. M Yaptico Co. (Ltd.), and to recover the
damages suffered by reason of this infringement, to which
the court issued the preliminary injunction prayed for.
The defendant denied the allegations and defended that
the patent lacked novelty or invention, that there was no
priority of ideas or device in the principle and construction
of the plow, and that the plow, whose manufacture it was
sought to have enjoined by the plaintiff, had already been
in public use for more than two years before the application
of the plaintiff for his patent.
The trial judge rendered judgment in favor of the
defendant, declaring null and without effect the patent in
question and dismissing the suit with costs against the
IPL PATENTS

16

plaintiff. Hence, the plaintiff appealed said judgment.

Issues:
1. Whether the patented invention is void for lack of
novelty and invention?
2. Whether the patent is invalid considering that the plow
had already been in public use for over two years prior to
the application for a patent.
Ruling:
1. Yes, the patent if void. The Supreme Court affirmed the
trial courts conclusion that the plow of the plaintiff is not
different from the native plow, except in the material, in the
form, in the weight and the grade of the result, the said
differences giving it neither a new function nor a new result
distinct from the function and the result obtained from the
native plow. Also, its production does not presuppose the
exercise of the inventive faculty but merely of mechanical
skill, which does not give a right to a patent of an invention
under the provisions of the Patent Law.
2. Yes, the patent is void. Under the provisions of the
statute, an inventor's creation must not have been in public
use or on sale in the United States (and the Philippine
Islands) for more than two years prior to his application.
Further, it was proved that the invention was used in public
at Iloilo by others than Vargas, the inventor, more than two
years before the application for the patent thus, the patent
is invalid.

IPL PATENTS

Republic of the Philippines

SUPREME COURT
Manila

17

EN BANC
G.R. No. L-36650

profits obtained by them from the sale of said plows from September
2, 1924, to pay him damages equivalent to double the amount of
such profits.

January 27, 1933

It appears from the bill of exceptions that Cham Samco & Sons did
not appeal.

ANGEL VARGAS, plaintiff-appellee,

vs.
PETRONILA CHUA, ET AL., defendants-appellants.

In addition to the evidence presented, the parties submitted the

following stipulation of facts:

Jose F. Orozco for appellants.

Jose Yulo for appellee.

The parties agree on the following facts:

IMPERIAL, J.:
1. That the plaintiff, Angel Vargas, is of age and a resident of the
municipality of Iloilo, Iloilo, Philippine Islands.

The defendants Petronila Chua, Coo Pao and Coo Teng Hee, appeal
from the judgment of the Court of First Instance of Manila, the
dispositive part of which reads as follows:

2. That the defendant, Petronila Chua, is also of age, and is married

to Coo Pao alias Coo Paoco, and resides in Iloilo.

Wherefore judgment is rendered in favor of the plaintiff and against

the defendants, ordering each and every one of them, their agents,
mandatories and attorneys, to henceforth abstain from making,
manufacturing, selling or offering for a sale plows of the type of
those manufactured by the plaintiff, and particularly plows of the
model of Exhibits B, B-1 and B-2, and to render to the plaintiff a
detailed accounting of the profits obtained by them from the
manufacture and sale of said type of plows within thirty (30) days
from the date of the receipt by them of notice of this decision, with
costs against all of the defendants.

3. That the defendant, Coo Teng Hee, is also of age and a resident of
Iloilo, and is the sole owner of the business known as Coo Kun &
Sons Hardware Co. established in Iloilo.
4. That the defendant, Cham Samco & Sons, is a commercial
partnership duly organized under the laws of the Philippine Islands,
with their principal office in the City of Manila, and that the
defendants Cham Samco, Cham Siong E, Cham Ai Chia and Lee
Cham Say, all of age and residents of the City of Manila, are the
partners of the firm Cham Samco & Sons.

Angel Vargas, the plaintiff herein, brought this action to restrain the
appellants and the other defendant entity, Cham Samco & Sons, their
agents and mandatories, from continuing the manufacture and sale of
plows similar to his plow described in his patent No. 1,507,530
issued by the United States Patent Office on September 2, 1924; and
to compel all of said defendants, after rendering an accounting of the
IPL PATENTS

5. The parties take for granted that the complaint in this case is
amended in the sense that it includes Coo Paoco as party defendant
in his capacity as husband of the defendant, Petronila Chua, with
Attorney Jose F. Orozco also representing him, and that he
18

renounces his rights to receive summons in this case by reproducing

the answer of his codefendant, Petronila Chua.

11. That, according to the invoices marked Exhibits C and C-2 dated
March 13, 1928, and June 19, 1928, respectively, the defendant
Cham Samco & Sons, on the dates mentioned, had, in the ordinary
course of business, bought of its codefendant Coo Kun & Sons
Hardware Co., 90 plows of the form, type and design of Exhibits B,
B-1 and B-2 which it has been selling in its store on Sto. Cristo
Street, Manila.

6. That the plaintiff is the registered owner and possessor of United

States Patent No. 1,507,530 on certain plow improvements, issued
by the United States Patent Office on September 2, 1924, a certified
copy of which was registered in the Bureau of Commerce and
industry of the Government of the Philippine Islands on October 17,
1924. A certified copy of said patent is attached to this stipulation of
facts as Exhibit A.

12. That the same defendant Cham Samco & Sons, in the ordinary
course of business, bought on March 17, 1928, of the store "El
Progreso" owned by Yao Ki & Co., of Iloilo, a lot of 50 plows, of the
form, type and design of Exhibit B-1, as shown by Invoice C-1, and
that it has been selling them in its store on Sto. Cristo St., Manila.

7. That the plaintiff is now and has been engaged, since the issuance
of his patent, in the manufacture and sale of plows of the kind, type
and design covered by the aforementioned patent, said plows being
of different sizes and numbered in accordance therewith from 1 to 5.

13. That, on September 19, 1928, the defendant Cham Samco &
Sons, sold in its store on Sto. Cristo St., Manila, the plow Exhibit B1, for the sale of which invoice Exhibit D was issued.

8. That, since the filing of the complaint to date, the defendant,

Petronila Chua, has been manufacturing and selling plows of the
kind, type and design represented by Exhibits B, B-1 and B-2, of
different sizes, designated by Nos. 2, 4 and 5.

14. That, on December 20, 1927, the plaintiff herein, through his
attorneys Paredes, Buencamino & Yulo, sent by registered mail to
the herein defendant, Coo Kun & Sons Hardware Co., at Iloilo, the
original of the letter Exhibit E, which was received by it on
September 28, 1927, according to the receipt marked Exhibit E-1
attached hereto.

9. That, since the filing of the complaint to date, the defendant, Coo
Teng Hee, doing business in Iloilo under the name of Coo Kun &
Sons Hardware Co., has been obtaining his plows, of the form and
size of Exhibits B, B-1 and B-2, from the defendant Petronila Chua.

15. That the plows manufactured by the plaintiff in accordance with

his patent, Exhibit A, are commonly known to the trade in Iloilo, as
well as in other parts of the Philippines, as "Arados Vargas", and that
the plaintiff is the sole manufacturer of said plows. A sample of these
plows is presented as Exhibit F.

10. Without prejudice to the plaintiff's right to ask the defendants to

render an accounting in case the court deem it proper, the parties
agree that the defendant Coo Teng Hee, doing business under the
name of Coo Kun & Sons Hardware Co., has been selling to his
customers in his store on J. Ma. Basa Street in Iloilo, plows of the
kind, type and design represented by Exhibits B, B-1 and B-2,
having bought said plows from his codefendant, Petronila Chua, who
manufactures them in her factory on Iznart Street, Iloilo.
IPL PATENTS

16. That the document, Exhibit 1-Chua, is a certified copy of the

amended complaint, the decision of the Court of First Instance of
Iloilo and that of the Supreme Court (R. G. No. 14101) in civil case
19

No. 3044 of Iloilo, entitled "Angel Vargas", plaintiff, vs. F. M.

Yaptico & Co., Ltd., defendant", and that Exhibit 2-Chua et al. is a
certified copy of Patent No. 1,020,232, to which the aforementioned
complaint and decision refer, issued in favor of Angel Vargas by the
United States Patent Office on March 12, 1912, and that Exhibit 3Chua et al., represents the plow manufactured by Angel Vargas in
accordance with his Patent marked Exhibit 2-Chua et al.

The evidence shows that Exhibit F is the kind of plows the plaintiff,
Angel Vargas, manufactures, for which Patent No. 1,507,530,
Exhibit A, was issued in his favor. Exhibits B, B-1 and B-2 are
samples of the plows which the herein appellants, Coo Pao and
Petronila Chua, have been manufacturing since 1918, and Exhibit 3Chua represents the plow for which, on March 12, 1912, the appellee
obtained a patent from the United States Patent Office, which was
declared null and void by the Supreme Court in the case of Vargas
vs. F. M. Yap Tico & Co. (40 Phil., 195).

The appellants assign the following errors:

With these facts in view, the principal and perhaps the only question
we are called upon to decide is whether the plow, Exhibit F,
constitutes a real invention or an improvement for which a patent
may be obtained, or if, on the contrary, it is substantially the same
plow represented by Exhibit 3-Chua the patent for which was
declared null and void in the aforementioned case of Vargas vs. F.
M. Yaptico & Co., supra.

FIRST ERROR
The trial court erred in declaring that the Vargas plow, Exhibit F
(covered by Patent No. 1,507,530) is distinct from the old model
Vargas plow, Exhibit 2-Chua, covered by the former Patent No.
1,020,232, which had been declared null and void by this court.
SECOND ERROR

We have carefully examined all the plows presented as exhibits as

well as the designs of those covered by the patent, and we are
convinced that no substantial difference exists between the plow,
Exhibit F, and the plow, Exhibit 3-Chua which was originally
patented by the appellee, Vargas. The only difference noted by us is
the suppression of the bolt and the three holes on the metal strap
attached to the handle bar. These holes and bolt with its nut were
suppressed in Exhibit F in which the beam is movable as in the
original plow. The members of this court, with the plows in view,
arrived at the conclusion that not only is there no fundamental
difference between the two plows but no improvement whatever has
been made on the latest model, for the same working and movement
of the beam existed in the original model with the advantage,
perhaps, that its graduation could be carried through with more
certainty by the use of the bolt which as has already been stated, was
adjustable and movable.

The trial court erred in mistaking the improvement on the plow for
the plow itself.
THIRD ERROR
The trial court erred in rendering judgment in favor of the plaintiff
and against the defendants.
FOURTH ERROR
The trial court erred in not dismissing the complaint with costs
against the plaintiff.

IPL PATENTS

20

As to the fact, upon which much emphasis was laid, that deeper
furrows can be made with the new model, we have seen that the
same results can be had with the old implement.

Although we spent some time in arriving at this point, yet, having

reached it, the question in the case is single and can be brought to a
narrow compass. Under the English Statute of Monopolies (21 Jac.
Ch., 3), and under the United States Patent Act of February 21, 1793,
later amended to be as herein quoted, it was always the rule, as
stated by Lord Coke, Justice Story and other authorities, that to
entitle a man to a patent, the invention must be new to the world.
(Pennock and Sellers vs. Dialogue [1829], 2 Pet., 1.) As said by the
United States Supreme Court, "it has been repeatedly held by this
court that a single instance of public use of the invention by a
patentee of more than two years before the date of his application for
his patent will be fatal to the validity of the patent when issued."
(Worley vs. Lower Tobacco Co. [1882], 104 U. S., 340;
McClurg vs. Kingsland [1843], 1 How., 202; Consolidated Fruit Jar
Co. vs. Wright [1877], 94 U. S., 92; Egbert vs. Lippmann [1881],
104 U. S., 333; Coffin vs. Ogden [1874], 18 Wall., 120;
Manning vs. Cape Ann Isinglass and Glue Co. [1883], 108 U. S.,
462; Andrews vs. Hovey [1887], 123 U. S., 267; Campbell vs.City of
New York [1888], 1 L. R. A., 48.)

In view of the foregoing, we are firmly convinced that the appellee is

not entitled to the protection he seeks for the simple reason that his
plow, Exhibit F, does not constitute an invention in the legal sense,
and because, according to the evidence, the same type of plows had
been manufactured in this country and had been in use in many parts
of the Philippine Archipelago, especially in the Province of Iloilo,
long before he obtained his last patent.
In the above mentioned case of Vargas vs. F. M. Yaptico & Co., we
said:
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." The burden of proof to substantiate a charge of
infringement is with the plaintiff. Where, however, the plaintiff
introduces the patent in evidence, if it is the due form, it affords a
prima facie presumption of its correctness and validity. The decision
of the Commissioner of Patents in granting the patent is always
presumed to be correct. The burden then shifts to the defendant to
overcome by competent evidence this legal presumption. With all
due respects, therefore, for the critical and expert examination of the
invention by the United States Patent Office, the question of the
validity of the patent is one for judicial determination, and since a
patent has been submitted, the exact question is whether the
defendant has assumed the burden of proof as to anyone of his
defenses. (See Agawan Co. vs. Jordan [1869], 7 Wall., 583;
Blanchard vs. Putnam [1869], 8 Wall., 420; Seymour vs. Osborne
[1871], 11 Wall., 516; Reckendorfer vs. Faber [1876], 92 U. S., 347;
20 R. C. L., 1112, 1168, 1169.)

IPL PATENTS

We repeat that in view of the evidence presented, and particularly of

the examination we have made of the plows, we cannot escape the
conclusion that the plow upon which the appellee's contention is
based, does not constitute an invention and, consequently, the
privilege invoked by him is untenable and the patent acquired by
him should be declared ineffective.
The judgment appealed from is hereby reversed and the appellants
are absolved from the complaint, with costs of this instance against
the appellee. So ordered.
Avancea, C.J., Street, Villamor, Ostrand, Villa-Real, Abad Santos,
Hull, Vickers and Butte, JJ., concur.

21

VARGAS v CHUA 57 PHIL 784

FACTS:
Angel Vargas, the plaintiff herein, brought this action to
restrain the appellants and the other defendant entity,
Cham Samco & Sons, their agents and mandatories, from
continuing the manufacture and sale of plows similar to his
plow described in his patent No. 1,507,530 issued by the
United States Patent Office on September 2, 1924; and to
compel all of said defendants, after rendering an
accounting of the profits obtained by them from the sale of
said plows from September 2, 1924, to pay him damages
equivalent to double the amount of such profits.
The trial court rendered a judgment in favor of plaintiffs and
against the defendant.
It appears from the bill of exceptions that Cham Samco &
Sons did not appeal.
ISSUE:
Whether the plow, Exhibit F, constitutes a real invention or
an improvement for which a patent may be obtained, or if,
on the contrary, it is substantially the same plow
represented by Exhibit 3-Chua the patent for which was
declared null and void in the aforementioned case of Vargas
vs. F. M. Yaptico & Co., supra.
HELD:
The appellee is not entitled to the protection he seeks for
the simple reason that his plow, Exhibit F, does not
constitute an invention in the legal sense, and because,
according to the evidence, the same type of plows had
IPL PATENTS

22

been manufactured in this country and had been in use in

many parts of the Philippine Archipelago, especially in the
Province of Iloilo, long before he obtained his last patent.
In the above mentioned case of Vargas vs. F. M. Yaptico &
Co., we said:
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." The burden of proof to
substantiate a charge of infringement is with the plaintiff.
Where, however, the plaintiff introduces the patent in
evidence, if it is the due form, it affords a prima facie
presumption of its correctness and validity. The decision of
the Commissioner of Patents in granting the patent is
always presumed to be correct. The burden then shifts to
the defendant to overcome by competent evidence this
legal presumption. With all due respects, therefore, for the
critical and expert examination of the invention by the
United States Patent Office, the question of the validity of
the patent is one for judicial determination, and since a
patent has been submitted, the exact question is whether
the defendant has assumed the burden of proof as to
anyone of his defenses.
We repeat that in view of the evidence presented, and
particularly of the examination we have made of the plows,
we cannot escape the conclusion that the plow upon which
the appellee's contention is based, does not constitute an
invention and, consequently, the privilege invoked by him
is untenable and the patent acquired by him should be
declared ineffective.
The judgment appealed from is hereby reversed and the
appellants are absolved from the complaint, with costs of
this instance against the appellee. So ordered.

IPL PATENTS

23

the action brought by the plaintiffs, annulment does not lie

in the absence of a cross-complaint to that effect.
FIRST DIVISION
4. ID.; INFRINGEMENT. The defendant cannot be made
civilly liable for alleged infringement of the patent on which
the action is based on the ground that the machines
manufactured and sold by him did not have any essential
part unknown to the public in the Province of Davao at the
time the plaintiffs applied for and obtained their patent for
improved abaca stripping machines.

[G.R. No. 38010. December 21, 1933.]

PATRICK HENRY FRANK and WILLIAM HENRY
GOHN, Plaintiffs-Appellants, v. G. KOSUYAMA,DefendantAppellee.
J. W. Ferrier for Appellants.

5. APPLICABILITY OF THE DOCTRINE OF "STARE DECISIS."

The doctrine laid down in the case of Frank and Gohn v.
Benito (51 Phil., 712), to the effect that the defendant
therein had actually infringed upon the patent of the
therein plaintiffs cannot be invoked in this case. It is true
that the then plaintiffs in the former and those in the latter
case are the same but the defendant therein did not set up
the special defenses as alleged by the herein defendant.
Furthermore, the plaintiffs therein had only confined
themselves to presenting the patent, or rather, a copy
thereof, wherein mention of the "spindle" was made, and
this court took for granted their claim that it was one of the
essential characteristics thereof which had been imitated or
copied by the therein defendant.

Pablo Lorenzo for Appellee.

SYLLABUS
1. PATIENT; ESSENTIAL ELEMENTS. Strictly speaking, the
hemp stripping machine of the plaintiffs does not constitute
an invention on the ground that it lacks the element of
novelty, originality and precedence (48 C. J., sec. 101, p.
97, and sec. 102, p. 98).
2. ID.; KNOWLEDGE AND USE BY THE PUBLIC. Before the
plaintiffs herein obtained their patent, they themselves had
already publicly used the same kind of machine for many
months, at least, and, various other machines, having in
general, the same characteristics and important parts as
that of the said plaintiffs, were known in the Province of
Davao.

DECISION
IMPERIAL, J.:
Patent No. 1519579 (Exhibit 117) on improvement in hemp
stripping machines, issued by the United States Patent
Office on December 16, 1924, and registered in the Bureau
of Commerce and Industry of the Philippine Islands on
March 17, 1925, was the origin of this action brought by the

3. ID.; ANNULMENT. Notwithstanding all the facts herein

stated, the trial court did not annul the plaintiffs patent
and the defendant herein insists that the patent in question
should be declared null and void. In view of the nature of
IPL PATENTS

24

plaintiffs herein who prayed that judgment be rendered

against the defendant, ordering him thereby to refrain
immediately from the manufacture and sale off machines
similar to the one covered by the patent; to render an
accounting of the profits realized from the manufacture and
sale of the machines in question; that in case of refusal or
failure to render such accounting, the defendant be ordered
to pay the plaintiffs the sum of P60 as profit on each
machine manufactured or sold by him; that upon approval
of the required bond, said defendant be restrained from
continuing the manufacture and sale of the same kind of
machines; that after the trial the preliminary injunction
issued therein be declared permanent; and, lastly, that the
said defendant be sentenced to pay the costs and whatever
damages the plaintiffs might be able to prove therein. The
action therefore was based upon alleged infringement by
the defendant of the rights patent through the manufacture
and sale by the former of machines similar to that covered
by the aforesaid patent.

which the "spindle or conical drum, which was the only

characteristic feature of the machine mentioned in the
original complaint, was eliminated, the plaintiffs insisted
that the said part constitutes the essential differences
between the machine in question and other machines and
it was the principal consideration upon which their patent
was issued. The said plaintiffs sustained their contention on
this point even in their printed brief and memorandum filed
in this appeal.
During the trial, both parties presented voluminous
evidence from which the trial court arrived at the following
conclusions:
"In considering their machine the plaintiffs did nothing but
improve, to a certain degree, those that were already in
vogue and in actual use in hemp producing provinces. It
cannot be said that they have invented the spindle
inasmuch as this was already known since the year 1909 or
1910. Neither can it be said that they have invented the
stripping knife and the contrivance which controls the
movement and pressure thereof on the ground that
stripping knives together with their control sets were
already in actual use in the different stripping machines
long before their machines appeared. Neither can it be said
that they invented the flywheel because that part or piece
thereof, so essential in every machine from time
immemorial, was already known and actually employed in
hemp stripping machines such as those of Riesgo (Exhibit
4-A), Crumb (Exhibit 1-A), Icsiar (Exhibit A-Suzara), Browne
(Exhibit 28-A), McFie, etc., all of which were in use for the
benefit of hemp long before the appearance of the
plaintiffs machines in the market. Much less can it be said
that they invented the pedal to raise the knife in order to

The plaintiffs appealed from the judgment rendered by the

trial court dismissing their complaint, with costs, as well as
the defendants counterclaim of P10,000. The defendant
did not appeal.
In their amended complaint, the plaintiffs alleged that their
hemp stripping machines, for which they obtained a patent,
have the following characteristics: "A stripping head, a
horizontal table, a stripping knife supported upon such
table, a tapering spindle, a rest holder adjustably secured
on the table portion, a lever and means of compelling the
knife to close upon the table, a pallet or rest in the bottom
of the table, a resilient cushion under such pallet or rest." In
spite of the fact that they filed an amended complaint from
IPL PATENTS

25

allow the hemp to be stripped to pass under it, on the

ground that the use of such contrivance has, likewise, been
known since the invention of the most primitive of hemp
stripping machines.

the Province of Davao. Machines known as Molo, Riesgo,

Crumb, Icsiar, Browne and McFie were already known in
that locality and used by the owners of hemp plantations
before the machine of the plaintiffs came into existence. It
may also be noted that Adrian de Icsiar applied for a patent
on an invention which resulted in the rejection by the
United States Patent Office of the plaintiffs original
application for a patent on the so-called "spindle" or conical
drum which was then in actual use in the Dringman and
Icsiar hemp stripping machines.

"On the other hand, although the plaintiffs alleged in their

original complaint that the principal and important feature
of said machine is a spindle upon which the hemp to be
stripped is wound in the process of stripping, nevertheless,
in their amended complaint of March 3, 1928, which was
filed after a portion of the evidence therein had already
been submitted and it was known that the use of the
spindle was nothing new, they still made the allegations
appearing in paragraph 3 of their said amended complaint
and reproduced on pages 2, 3, 4 and 5 hereof, copying the
same from the application which they filed with the United
States Patent Office, under which they obtained their
patent in question. The aforesaid application clearly shows
that what they applied for was not a patent for a pioneer or
primary invention but only for some new and useful
improvement in hemp stripping machines."

Notwithstanding the foregoing facts, the trial court did not

decree the annulment of the plaintiffs patent and the
herein defendant-appellee insists that the patent in
question should be declared null and void. We are of the
opinion that it would be improper and untimely to render a
similar judgment, in view of the nature of the action
brought by the plaintiffs and in the absence of a crosscomplaint to that effect. For the purposes of this appeal,
suffice it to hold that the defendant is not civilly liable for
alleged infringement of the patent in question.

We have carefully reviewed the evidence presented and

have had the opportunity of ascertaining the truth of the
conclusions above stated. We agree with the trial court
that, strictly speaking, the hemp stripping machine of the
plaintiffs does not constitute an invention on the ground
that it lacks the elements of novelty, originality and
precedence (48 C. J., sec. 101, p. 97, and sec. 102, p. 98).
In fact, before the plaintiffs herein obtained their patent,
they themselves had already publicly used the same kind of
machine for some months, at least, and, various other
machines, having in general, the same characteristics and
important parts as that of the said plaintiffs, were known in
IPL PATENTS

In the light of sound logic, the plaintiffs cannot insists that

the "spindle" was a patented invention on the ground that
said part of the machine was voluntarily omitted by them
from their application, as evidenced by the photographic
copy thereof (Exhibit 41) wherein it likewise appears that
the patent on Improved Hemp Stripping Machines was
issued minus the "spindle" in question. Were we to stress to
this part of the machine, we would be giving the patent
obtained by the plaintiffs a wider range than it actually has,
which is contrary to the principles of interpretation in
matters to patents.
26

In support of their claim the plaintiffs invoke the doctrine

laid down by this court in the case of Frank and Gohn v.
Benito (51 Phil., 712), wherein it was held that the therein
defendant really infringed upon the patent of the therein
plaintiffs. It may be noted that the plaintiffs in the former
and those in the latter case are the same and that the
patent then involved is the very same one upon which the
present action of the plaintiffs is based. The above-cited
case, however, cannot be invoked as a precedent to justify
a judgment in favor of the plaintiffs-appellants on the
ground that the facts in one case are entirely different from
those in the other. In the former case the defendant did not
set up the same special defenses as those alleged by the
herein defendant in his answer and the plaintiffs therein
confined themselves to presenting the patent, or rather a
copy thereof, wherein the "spindle was mentioned, and this
court took for granted their claim that it was one of the
essential characteristics thereof which was imitated or
copied by the then defendant. Thus it came to pass that the
"spindle" in question was insistently mentioned in the
decision rendered on appeal as the essential part of the
plaintiffs machine allegedly imitated by the then
defendant. In the case under consideration, it is obvious
that the "spindle" is not an integral part of the machine
patented by the plaintiffs on the ground that it was
eliminated from their patent inasmuch as it was expressly
excluded in their application, as evidenced by the aforesaid
Exhibit 41.

Davao at the time the plaintiffs applied for an obtained

their patent for improved hemp stripping machines, the
judgment appealed from is hereby affirmed, with costs
against the plaintiffs-appellants. So ordered.
Avancea, C.J., Malcolm, Villa-Real, and Hull, JJ., concur.
FRANK v KOSUYAMA 59 PHIL 206
FACTS:
Patent on improvement in hemp stripping machines, issued
by the United States Patent Office and registered in the
Bureau of Commerce and Industry of the Philippine, was the
origin of this action brought by the plaintiffs herein who
prayed that the judgment be rendered against the
defendant, ordering him thereby to refrain immediately
from the manufacture and sale of machines similar to the
one covered by the patent: to render an accounting of the
profits realized from the manufacture and sale of the
machines in question; that in case of refusal or failure to
render such accounting, the defendants be ordered to pay
the plaintiffs the sum of P60 as profit on each machine
manufactured or sold by him; that upon approval of the
required bond, said defendant be restrained from
continuing the manufacture and sale of the same kind of
machines; that after the trial the preliminary injunction
issued therein be declared permanent and, lastly, that the
said defendant be sentenced to pay the costs and whatever
damages the plaintiffs might be able to prove therein. The
action therefore was based upon alleged infringement by
the defendant of the rights and privileges acquired by the
plaintiffs over the aforesaid patent through the
manufacture and sale by the former of machines similar to
that covered by the aforesaid patent.

Wherefore, reiterating that the defendant cannot be held

civilly liable for alleged infringement of the patent upon
which the present action is based on the ground that there
is no essential part of the machine manufactured and sold
by him, which was unknown to the public in the Province of
IPL PATENTS

27

The plaintiffs appealed from the judgment rendered by the

trial court dismissing their complaint, with cost, as well as
the defendant's counterclaim of P10,000. The defendant did
not appeal.

ISSUE:
Whether there is an infringement on the patents
HELD:

In their amended complaint, the plaintiff alleged that their

hemp stripping machines, for which they obtained a patent,
have the following characteristics: "A stripping head, a
horizontal table, a stripping knife supported upon such
table, a tappering spindle, a rest holder adjustably secured
on the table portion, a lever and means of compelling the
knife to close upon the table, a pallet or rest in the bottom
of the table, a resilient cushion under such palletor rest." In
spite of the fact that they filed an amended complaint from
which the "spindle" or conical drum, which was the only
characteristic feature of the machine mentioned in the
original complaint, was eliminated, the plaintiffs insisted
that the said part constitutes the essential difference
between the machine in question and other machines and
that it was the principal consideration upon which their
patent was issued. The said plaintiffs sustained their
contention on this point even in their printed brief and
memorandum filed in this appeal.

The trial court did not decree the annulment of the

plaintiffs' patent and the herein defendant-appellee insists
that the patent in question should be declared null and
void. We are of the opinion that it would be improper and
untimely to render a similar judgment, in view of the nature
of the action brought by the plaintiffs and in the absence of
a cross-complaint to that effect. For the purposes of this
appeal, suffice it to hold that the defendant is not civilly
liable for alleged infringement of the patent in question.
In the light of sound logic, the plaintiffs cannot insist that
the "spindle" was a patented invention on the ground that
said part of the machine was voluntarily omitted by them
from their application, as evidenced by the photographic
copy thereof (Exhibit 41) wherein it likewise appears that
the patent on Improved Hemp Stripping Machines was
issued minus the "spindle" in question. Were we to stress to
this part of the machine, we would be giving the patent
obtained by the plaintiffs a wider range than it actually has,
which is contrary to the principles of interpretation in
matters relating to patents.

During the trial, both parties presented voluminous

evidence from which the trial court concluded that in
constructing their machine the plaintiffs did nothing but
improve, to a certain degree, those that were already in
vogue and in actual us in hemp producing provinces. It
cannot be said that they have invented the "spindle"
inasmuch as this was already known since the year 1909 or
1910. Neither it can be said that they have invented the
stripping knife and the contrivance which controls the
movement and pressure thereof on the ground that
stripping knives together with their control sets were
already in actual use in the different stripping machines
long before their machine appeared.
IPL PATENTS

In support of their claim the plaintiffs invoke the doctrine

laid down by this court in the case of Frank and Gohn vs.
Benito (51 Phil., 712), wherein it was held that the therein
defendant really infringed upon the patent of the therein
plaintiffs. It may be noted that the plaintiffs in the former
and those of the latter case are the same and that the
patent then involved is the very same one upon which the
present action of the plaintiffs is based. The above-cited
case, however, cannot be invoked as a precedent to justify
28

a judgment in favor of the plaintiffs-appellants on the

ground that the facts in one case entirely different from
those in the other. In the former case the defendant did not
set up the same special defenses as those alleged by the
herein defendant in his answer and the plaintiffs therein
confined themselves to presenting the patent, or rather a
copy thereof, wherein the "spindle" was mentioned, and
this court took for granted their claim that it was one of the
essential characteristics thereof which was imitated or
copied by the then defendant. Thus it came to pass that the
"spindle" in question was insistently mentioned in the
decision rendered on appeal as the essential part of the
plaintiffs' machine allegedly imitated by the then
defendant. In the case under consideration, it is obvious
that the "spindle" is not an integral part of the machine
patented by the plaintiffs on the ground that it was
eliminated from their patent inasmuch as it was expressly
excluded in their application, as evidenced by the aforesaid
Exhibit 41.
Wherefore, reiterating that the defendant cannot be held
civilly liable for alleged infringement of the patent upon
which the present action is based on the ground that there
is no essential part of the machine manufactured and sold
by him, which was unknown to the public in the Province of
Davao at the time the plaintiffs applied for and obtained
their patent for improved hemp stripping machines, the
judgment appealed from is hereby affirmed, with the costs
against the plaintiffs-appellants. So ordered.

IPL PATENTS

29

This is a petition for certiorari to review the decision of the Court of

Appeals in CA G.R. NO. 37824-R entitled "Conrado G. de Leon,
plaintiff-appelle vs. Dominciano Aguas and F.H. Aquino and Sons,
defendants-appellants," the dispositive portion of which reads:
WHEREFORE, with the modification that plintiff-applee's award of
moral damages is hereby redured to P3,000.00, the appealed
judgment is hereby affirmed, in all othe respects, with costs against
appellants. 1
On April 14, 1962, Conrado G. de Leon filed in the Court of First
Instance of Rizal at Quezon City a complaint for infringement of
patent against Domiciano A. Aguas and F. H. Aquino and Sons
alleging that being the original first and sole inventor of certain new
and useful improvements in the process of making mosaic pre-cast
tiles, he lawfully filed and prosecuted an application for Philippine
patent, and having complied in all respects with the statute and the
rules of the Philippine Patent Office, Patent No. 658 was lawfully
granted and issued to him; that said invention was new, useful, not
known or used by others in this country before his invention thereof,
not patented or described in any printed publication anywhere before
his invention thereof, or more than one year prior to his application
for patent thereof, not patented in any foreign country by him or his
legal representatives on application filed more than one year prior to
his application in this country; that plaintiff has the exclusive license
to make, use and sell throughout the Philippines the improvements
set forth in said Patent No. 658; that the invention patented by said
Patent No. 658 is of great utility and of great value to plaintiff and of
great benefit to the public who has demanded and purchased tiles
embodying the said invention in very large quantities and in very
rapidly increasing quant ies; that he has complied with the Philippine
statues relating to marking patented tiles sold by him; that the public
has in general acknowledged the validity of said Patent No. 658, and
has respected plaintiff's right therein and thereunder; that the
defendant Domiciano A. Aguas infringed Letters of Patent No. 658

Republic of the Philippines

SUPREME COURT
Manila
FIRST DIVISION
G.R. No. L-32160 January 30, 1982
DOMICIANO A. AGUAS, petitioner,
vs.
CONRADO G. DE LEON and COURT OF
APPEALS, respondents.
FERNANDEZ, J.:
IPL PATENTS

30

by making, using and selling tiles embodying said patent invention

and that defendant F. H. Aquino & Sons is guilty of infringement by
making and furnishing to the defendant Domiciano A. Aguas the
engravings, castings and devices designed and intended of tiles
embodying plaintiff;s patented invention; that he has given direct
and personal notice to the defendants of their said acts of
infringement and requested them to desist, but nevertheless,
defendants have refused and neglected to desist and have
disregarded such request, and continue to so infringe causing great
and irreparable damage to plaintiff; that if the aforesaid infringement
is permitted to continue, further losses and damages and irreparable
injury will be sustained by the plaintiff; that there is an urgent need
for the immediate issuance of a preliminary injunction; that as a
result of the defendants' wrongful conduct, plaintiff has suffered and
the defendants are liable to pay him, in addition to actual damages
and loss of profits which would be determined upon proper
accounting, moral and exemplary or corrective damages in the sum
of P90,000.00; that plaintiff has been compelled to go to court for
the protection and enforcement of his and to engage the service of
counsel, thereby incurring attorney's fees and expenses of litigation
in the sum of P5,000.00. 2

has been known and used in the Philippines by almost all tile makers
long before the alleged use and registration of patent by plaintiff
Conrado G. de Leon; that the registration of the alleged invention did
not confer any right on the plaintiff because the registration was
unlawfully secured and was a result of the gross misrepresentation
on the part of the plaintiff that his alleged invention is a new and
inventive process; that the allegation of the plaintiff that Patent No.
658 is of great value to plaintiff and of great benefit to the public is a
mere conclusion of the plaintiff, the truth being that a) the invention
of plaintiff is neither inventive nor new, hence, it is not patentable, b)
defendant has been granted valid patents (Patents No. 108, 109, 110
issued on December 21, 1961) on designs for concrete decorative
wall tiles; and c) that he can not be guilty of infringement because
his products are different from those of the plaintiff.4

On April 14, 1962, an order granting the plaintiff's petition for a Writ
of Preliminary Injunction was issued. 3

1. Declaring plaintiff's patent valid and infringed:

The trial court rendered a decision dated December 29, 1965, the
dispositive portion of which reads:
WHEREFORE, judgment is hereby rendered in favor of plaintiff and
against the defendants:

2. Granting a perpetual injunction restraining defendants, their

officers, agents, employees, associates, confederates, and any and all
persons acting under their authority from making and/or using and/or
vending tiles embodying said patented invention or adapted to be
used in combination embodying the same, and from making,
manufacturing, using or selling, engravings, castings and devises
designed and intended for use in apparatus for the making of tiles
embodying plaintiff's patented invention, and from offering or
advertising so to do, and from aiding and abetting or in any way
contributing to the infringement of said patent;

On May 23, 1962, the defendant Domiciano A. Aguas filed his

answer denying the allegations of the plaintiff and alleging that: the
plaintiff is neither the original first nor sole inventor of the
improvements in the process of making mosaic pre-cast tiles, the
same having been used by several tile-making factories in the
Philippines and abroad years before the alleged invention by de
Leon; that Letters Patent No. 658 was unlawfully acquired by
making it appear in the application in relation thereto that the
process is new and that the plaintiff is the owner of the process when
in truth and in fact the process incorporated in the patent application
IPL PATENTS

31

3. Ordering that each and all of the infringing tiles, engravings,

castings and devices, which are in the possession or under the
control of defendants be delivered to plaintiff;

THE TRIAL COURT ERRED IN HOLDING THAT THE PATENT

OF PLAINTIFF IS VALID BECAUSE IT IS AN IMPROVEMENT
OR THE AGE-OLD TILE MAKING SYSTEM.

4. Ordering the defendants to jointly and severally pay to the

plaintiff the following sums of money, to wit:

III
THE TRIAL COURT ERRED IN NOT ORDERING THE
CANCELLATION OF PLAINTIFF-APPELLEE'S LETTERS
PATENT NO. 658, EXHIBIT L, IN ACCORDANCE WITH THE
PERTINENT PROVISIONS OF THE PATENT LAW, REPUBLIC
ACT 165.

(a) P10,020.99 by way of actual damages;

(b) P50,000.00 by way of moral damages;
(c) P5,000.00 by way of exemplary damages;

IV

(d) P5,000.00 by way of attorney's fees and

THE TRIAL COURT ERRED IN HOLDING THAT DEFENDANT

DOMICIANO A. AGUAS IS GUILTY OF INFRINGEMENT
DESPITE THE FACT THAT PLAINTIFF'S PATENT IS NOT A
VALID ONE.

(e) costs of suit. 5

The defendant Domiciano Aguas appealed to the Court of Appeals,
assigning the following errors. 6

I
THE TRIAL COURT ERRED IN NOT HOLDING THAT
PLAINTIFF'S PATENT FOR THE 'PROCESS OF MAKING
MOSAIC PRE-CAST TILE' IS INVALID BECAUSE SAID
ALLEGED PROCESS IS NOT AN INVENTION OR DISCOVERY
AS THE SAME HAS ALREADY LONG BEEN USED BY TILE
MANUFACTURERS BOTH ABROAD AND IN THIS COUNTRY.

THE TRIAL COURT ERRED IN NOT HOLDING THAT THE

DEFENDANT
COULD
NEVER
BE
GUILTY
OF
INFRINGEMENT OF PLAINTIFF'S PATENT BECAUSE EVEN
IN MATTERS NOT PATENTED BY THE PLAINTIFF - LIKE THE
COMPOSITION AND PROPORTION OF INGREDIENTS USED
AND THE STRUCTURAL DESIGNS OF THE MOULD AND
THE TILE PRODUCED - THAT OF THE DEFENDANT ARE
DIFFERENT.

II

VI
THE TRIAL COURT ERRED IN NOT DISMISSING THE
COMPLAINT AND IN HOLDING THE DEFENDANT, INSTEAD

IPL PATENTS

32

OF THE PLAINTIFF,
ATTORNEY'S FEES.

LIABLE

FOR

DAMAGES,

AND

The basic facts borne out by the record are to the effect that on
December 1, 1959 plaintiff-appellee filed a patent application with
the Philippine Patent Office, and on May 5, 1960, said office issued
in his favor Letters Patent No. 658 for a "new and useful
improvement in the process of making mosaic pre-cast tiles" (Exh,
"L"); that defendant F.H. Aquino & Sons engraved the moulds
embodying plaintiff's patented improvement for the manufacture of
pre-cast tiles, plaintiff furnishing said defendant the actual model of
the tiles in escayola and explained to said engraver the plans,
specifications and the details of the engravings as he wanted them to
be made, including an explanation of the lip width, artistic slope of
easement and critical depth of the engraving that plaintiff wanted for
his moulds; that engraver Enrique Aquino knew that the moulds he
was engraving for plaintiff were the latter's very own, which
possession the new features and characteristics covered by plaintiff's
parent; that defendant Aguas personally, as a building contractor,
purchased from plaintiff, tiles shaped out of these moulds at the back
of which was imprinted plaintiff's patent number (Exhs., "A" to "E");
that subsequently, through a representative, Mr. Leonardo, defendant
Aguas requested Aquino to make engravings of the same type and
bearing the characteristics of plaintiff's moulds; that Mr. Aquino
knew that the moulds he was asked to engrave for defendant Aguas
would be used to produce cement tiles similar to plaintiff's; that the
moulds which F.H. Aquino & Sons eventually engraved for Aguas
and for which it charged Aguas double the rate it charged plaintiff
De Leon, contain the very same characteristic features of plaintiff's
mould and that Aguas used these moulds in the manufacture of his
tiles which he actually put out for sale to the public (Exhs. "1" to "3"
and Exhs. "A" to "E"); that both plaintiff's and defendant Aguas' tiles
are sculptured pre-cast wall tiles intended as a new feature of
construction and wag ornamentation substantially Identical to each
other in size, easement, lip width and critical depth of the deepest
depression; and that the only significant difference between
plaintiff's mould and that engraved by Aquino for Aguas is that,
whereas plaintiff's mould turns out tiles 4 x 4 inches in size,
defendant Aguas' mould is made to fit a 4-1/4 x 4-1/4 inch tile. 9

On August 5, 1969, the Court of Appeals affirmed the decision of the

trial court, with the modification that plaintiff-appellee's award of
moral damages was reduced to P3,000.00. 7
The petitioner assigns the following errors supposedly committed by
the Court of Appeals:
It is now respectfully submitted that the Court of Appeals committed
the following errors involving questions of law, to wit:
First error. When it did not conclude that the letters patent of the
respondent although entitled on the cover page as a patent for
improvements, was in truth and in fact, on the basis of the body of
the same, a patent for the old and non-patentable process of making
mosaic pre-cast tiles;
Second error. When it did not conclude from the admitted facts of
the case, particularly the contents of the letters patent, Exh. L and the
pieces of physical evidence introduced consisting of samples of the
tiles and catalouges, that the alleged improvements introduced by the
respondent in the manufacture of mosaic pre-cast tiles are not
patentable, the same being not new, useful and inventive.
Third error. As a corollary, when it sentenced the herein petitioner
to pay the damages enumerated in the decision of the lower court
(Record on Appeal, pp. 74-75), as confirmed by it (the Court of
Appeals), but with the modification that the amount of P50,000.00
moral damages was reduced to P3,000.00. 8
The facts, as found by the Court of Appeals, are:
IPL PATENTS

33

The patent right of the private respondent expired on May 5,

1977. 10 The errors will be discuss only to determine the right of said
private respondent to damages.

appellee's new tiles of only 1/8 of an inch at the deepest easement

(Exhs. "D" and "D-1") is a most critical feature, suggestive of
discovery and inventiveness, especially considering that, despite said
thinness, the freshly formed tile remains strong enough for its
intended purpose.

The petitioner questioned the validity of the patent of the private

respondent, Conrado G. de Leon, on the ground that the process,
subject of said patent, is not an invention or discovery, or an
improvement of the old system of making tiles. It should be noted
that the private respondent does not claim to be the discoverer or
inventor of the old process of tile-making. He only claims to have
introduced an improvement of said process. In fact, Letters Patent
No. 658 was issued by the Philippine Patent Office to the private
respondent, Conrado G. de Leon, to protect his rights as the inventor
of "an alleged new and useful improvement in the process of making
mosaic pre-cast tiles." 11 Indeed, Section 7, Republic Act No. 165, as
amended provides: "Any invention of a new and useful machine,
manufactured product or substance, process, or an improvement of
the foregoing, shall be patentable.

While it is true that the matter of easement, lip width, depth,

protrusions and depressions are known to some sculptors, still, to be
able to produce a new and useful wall tile, by using them all
together, amounts to an invention. More so, if the totality of all these
features are viewed in combination with the Ideal composition of
cement, sodium silicate and screened fine sand.
By using his improved process, plaintiff has succeeded in producing
a new product - a concrete sculptured tile which could be utilized for
walling and decorative purposes. No proof was adduced to show that
any tile of the same kind had been produced by others before
appellee. Moreover, it appears that appellee has been deriving
considerable profit from his manufacture and sale of such tiles. This
commercial success is evidence of patentability (Walker on Patents,
Dellers Edition, Vol. I, p. 237). 12

The Court of Appeals found that the private respondent has

introduced an improvement in the process of tile-making because:
... we find that plaintiff-appellee has introduced an improvement in
the process of tile-making, which proceeds not merely from
mechanical skill, said improvement consisting among other things,
in the new critical depth, lip width, easement and field of designs of
the new tiles. The improved lip width of appellee's tiles ensures the
durability of the finished product preventing the flaking off of the
edges. The easement caused by the inclination of the protrusions of
the patented moulds is for the purpose of facilitating the removal of
the newly processed tile from the female die. Evidently, appellee's
improvement consists in the solution to the old critical problem by
making the protrusions on his moulds attain an optimum height, so
that the engraving thereon would be deep enough to produce tiles for
sculptured and decorative purposes, strong optimum thickness of
IPL PATENTS

The validily of the patent issued by the Philippines Patent Office in

favor of the private respondent and the question over the
inventiveness, novelty and usefulness of the improved process
therein specified and described are matters which are better
determined by the Philippines Patent Office. The technical staff of
the Philippines Patent Office, composed of experts in their field,
have, by the issuance of the patent in question, accepted the thinness
of the private respondent's new tiles as a discovery. There is a
presumption that the Philippines Patent Office has correctly
determined the patentability of the improvement by the private
respondent of the process in question.
Anent this matter, the Court of Appeals said:
34

Appellant has not adduced evidence sufficient to overcome the

above established legal presumption of validity or to warrant
reversal of the findings of the lower court relative to the validity of
the patent in question. In fact, as we have already pointed out, the
clear preponderance of evidence bolsters said presumption of
validity of appellee's patent. There is no indication in the records of
this case and this Court is unaware of any fact, which would tend to
show that concrete wall tiles similar to those produced by appellee
had ever been made by others before he started manufacturing the
same. In fact, during the trial, appellant was challenged by appellee
to present a tile of the same kind as those produced by the latter,
from any earlier source but, despite the fact that appellant had every
chance to do so, he could not present any. There is, therefore, no
concrete proof that the improved process of tile-making described in
appellee's patent was used by, or known to, others previous to his
discovery thereof. 13

The petitioner also contends that the improvement of respondent is

not patentable because it is not new, useful and inventive. This
contention is without merit.
The records disclose that de Leon's process is an improvement of the
old process of tile making. The tiles produced from de Leon's
process are suitable for construction and ornamentation, which
previously had not been achieved by tiles made out of the old
process of tile making. De Leon's invention has therefore brought
about a new and useful kind of tile. The old type of tiles were
usually intended for floors although there is nothing to prevent one
from using them for walling purposes. These tiles are neither artistic
nor ornamental. They are heavy and massive.
The respondent's improvement is indeed inventive and goes beyond
the exercise of mechanical skill. He has introduced a new kind of tile
for a new purpose. He has improved the old method of making tiles
and pre-cast articles which were not satisfactory because of an
intolerable number of breakages, especially if deep engravings are
made on the tile. He has overcome the problem of producing
decorative tiles with deep engraving, but with sufficient
durability. 15 Durability inspite of the thinness and lightness of the
tile, is assured, provided that a certain critical depth is maintained in
relation to the dimensions of the tile. 16

The contention of the petitioner Aguas that the letters patent of de

Leon was actually a patent for the old and non-patentable process of
making mosaic pre-cast tiles is devoid of merit. De Leon never
claimed to have invented the process of tile-making. The Claims and
Specifications of Patent No. 658 show that although some of the
steps or parts of the old process of tile making were described
therein, there were novel and inventive features mentioned in the
process. Some of the novel features of the private respondent's
improvements are the following: critical depth, with corresponding
easement and lip width to such degree as leaves the tile as thin as 1/8
of an inch at its thinnest portion, Ideal composition of cement and
fine river sand, among other ingredients that makes possible the
production of tough and durable wall tiles, though thin and light; the
engraving of deep designs in such a way as to make the tiles
decorative, artistic and suitable for wall ornamentation, and the fact
that the tiles can be mass produced in commercial quantities and can
be conveniently stock-piled, handled and packed without any
intolerable incidence of breakages. 14
IPL PATENTS

The petitioner also claims that changing the design from embossed
to engraved tiles is neither new nor inventive because the Machuca
Tile Factory and the Pomona Tile Manufacturing Company have
been manufacturing decorative wall tiles that are embossed as well
as engraved; 17 that these tiles have also depth, lip width, easement
and field of designs; 18 and that the private respondent had copied
some designs of Pomona. 19
The Machuca tiles are different from that of the private respondent.
The designs are embossed and not engraved as claimed by the
35

petitioner. There may be depressions but these depressions are too

shallow to be considered engraved. Besides, the Machuca tiles are
heavy and massive.

d) P5,000.00 by way of attomey's fees and

There is no similarity between the Pomona Tiles and de Leon's tiles.

The Pomona tiles are made of ceramics. 20The process involved in
making cement tiles is different from ceramic tiles. Cement tiles are
made with the use of water, while in ceramics fire is used. As regards
the allegation of the petitioner that the private respondent copied
some designs of Pomona, suffice it to say that what is in issue here is
the process involved in tile making and not the design.

because:

e) Costs of suit

The lower court awarded the following damages: 22

An examination of the books of defendant Aguas made before a

Commissioner reveals that during the period that Aguas was
manufacturing and selling tiles similar to plaintiff's, he made a gross
income of P3,340.33, which can be safely be considered the amount
by which he enriched himself when he infringed plaintiff's patent.
Under Sec. 42 of the Patent Law any patentee whose rights have
been infringed is entitled to damages which, according to the
circumstances of the case may be in a sum above the amount found
as actual damages sustained provided the award does not exceed
three times the amount of such actual damages. Considering the
wantonness of the infringement committed by the defendants who
knew all the time about the existence of plaintiff's patent, the Court
feels there is reason to grant plaintiff maximum damages in the sum
of P10,020.99. And in order to discourage patent infringements and
to give more teeth to the provisions of the patent law thus promoting
a stronger public policy committed to afford greater incentives and
protection to inventors, the Court hereby awards plaintiff exemplary
damages in the sum of P5,000.00 to be paid jointly and severally by
defendants. Considering the status of plaintiff as a reputable
businessman, and owner of the likewise reputed House of Pre-Cast,
he is entitled to an award of moral damages in the sum of
P50,000.00. 23

a) P10,020.99 by way of actual damages;

In reducing the amount of moral damages the Court of Appeals said:

b) P50,000.00 by way of moral damages;

As regards the question of moral damages it has been shown that as

a result of the unlawful acts of infringment committed by
defendants, plaintiff was unstandably very sad; he worried and

In view of the foregoing, this Court finds that Patent No. 658 was
legally issued, the process and/or improvement being patentable.
Both the trial court and the Court of Appeals found as a fact that the
petitioner Domiciano A. Aguas did infringe de Leon's patent. There
is no showing that this case falls under one of the exceptions when
this Court may overrule the findings of fact of the Court of Appeals.
The only issue then to be resolved is the amount of damages that
should be paid by Aguas.
In its decision the Court of Appeals affirmed the amount of damages
awarded by the lower court with the modification that the respondent
is only entitled to P3,000.00 moral damages. 21

c) P5,000.00 by way of exemplary damages;

IPL PATENTS

36

became nervous and lost concentration on his work in connection

with his tile business (pp. 28, 30, t.s.n., Feb. 28, 1964). In addition,
plaintiff's character and reputation have been unnecessarily put in
question because defendants, by their acts of infringement have
created a doubt or suspicion in the public mind concerning the truth
and honesty of plaintiff's advertisements and public announcements
of his valid patent. Necessarily, said acts of defendants have caused
plaintiff considerable mental suffering, considering especially, the
fact that he staked everything on his pre-cast tile business (p. 36,
t.s.n., Id.) The wantonness and evident bad faith characterizing
defendants' prejudicial acts against plaintiff justify the assessment of
moral damages in plaintiff's favor, though we do not believe the
amount of P50,000.00 awarded by the lower court is warranted by
the circumstances. We feel that said amount should be reduced to
P3,000.00 by way of compensating appellee for his moral suffering.
"Willful injury to property may be a legal ground for awarding moral
damages if the court should find that, under the circumstances such
damages are justly due" (Art. 2219 NCC).

On April 14, 1962, respondent Conrado de Leon filed in the

CFI of Rizal at Quezon City a complaint for infringement of
patent against petitioner Domiciano Aguas and F.H. Aquino
and Sons alleging among others that being the original first
and sole inventor of certain new and useful improvements
in the process of making mosaic pre-cast tiles, and
thereafter lawfully acquired from the Philippine Patent
Office, Patent No. 658, the latter infringed the same by
making, using and selling tiles embodying said patent
invention. A writ of Preliminary Injuction was subsequently
issued.

There is no reason to reduce the amount of damages and attorneys

fees awarded by the trial court as modified by the Court of Appeals.

The trial court and the Court of Appeals, upon appeal

rendered judgment in favor of respondent de Leon. Thus,
this petition.

WHEREFORE, the decision of the Court of Appeals in CA G.R. No.

37824-R appealed from is hereby affirmed, without pronouncement
as to costs.

ISSUE:

Petitioner Aguas, in his answer, denied the allegations and

instead averred inter alia that respondent De Leon is
neither the original first nor sole inventor of the
improvements in the process of making mosaic pre-cast
tiles, the same having been used by several tile-making
factories both here and abroad years before the alleged
invention by De Leon; hence, it is not patentable.

Whether or not the alleged invention or discovery of

respondent is patentable.

SO ORDERED.

Aguas vs. De Leon

HELD:

111 SCRA 238 (1982)

Yes. x x x It should be noted that the private respondent

does not claim to be the discoverer or inventor of the old
process of tile-making. He only claims to have introduced
an improvement of said process. In fact, Letters Patent No.
658 was issued by the Philippine Patent Office to the

FACTS:
This is a petition for certiorari to review the decision of the
Court of Appeals.
IPL PATENTS

37

private respondent Conrado G. De Leon, to protect his

rights as the inventor of an alleged new and useful
improvement in the process of making pre-cast tiles.
Indeed, section 7, Republic Act No. 165, as amended
provides: Any invention of a new and useful machine,
manufactured product or substance, process, or an
improvement of the foregoing, shall be patentable.

plaintiff; that if the aforesaid infringement is permitted to

continue, further losses and damages and irreparable injury
will be sustained by the plaintiff; that there is an urgent
need for the immediate issuance of a preliminary
injunction.
The court granted the injunction. And likewise held in favor
of the plaintiff and against the defendant.

AGUAS v DE LEON 111 SCRA 238

FACTS:
ISSUE:
Conrado G. de Leon filed in the Court of First Instance of
Rizal at Quezon City a complaint for infringement of patent
against Domiciano A. Aguas and F. H. Aquino and Sons
alleging that being the original first and sole inventor of
certain new and useful improvements in the process of
making mosaic pre-cast tiles, he lawfully filed and
prosecuted an application for Philippine patent, and having
complied in all respects with the statute and the rules of
the Philippine Patent Office, Patent No. 658 was lawfully
granted and issued to him; that said invention was new,
useful, not known or used by others in this country before
his invention thereof.

Whether the process, subject of said patent, is not an

invention or discovery, or an improvement of the old
system of making tiles.
HELD:
The validily of the patent issued by the Philippines Patent
Office in favor of the private respondent and the question
over the inventiveness, novelty and usefulness of the
improved process therein specified and described are
matters which are better determined by the Philippines
Patent Office. The technical staff of the Philippines Patent
Office, composed of experts in their field, have, by the
issuance of the patent in question, accepted the thinness of
the private respondent's new tiles as a discovery. There is a
presumption that the Philippines Patent Office has correctly
determined the patentability of the improvement by the
private respondent of the process in question.

That the defendant Domiciano A. Aguas infringed Letters of

Patent No. 658 by making, using and selling tiles
embodying said patent invention and that defendant F. H.
Aquino & Sons is guilty of infringement by making and
furnishing to the defendant Domiciano A. Aguas the
engravings, castings and devices designed and intended of
tiles embodying plaintiff;s patented invention; that he has
given direct and personal notice to the defendants of their
said acts of infringement and requested them to desist, but
nevertheless, defendants have refused and neglected to
desist and have disregarded such request, and continue to
so infringe causing great and irreparable damage to
IPL PATENTS

The contention of the petitioner Aguas that the letters

patent of de Leon was actually a patent for the old and nonpatentable process of making mosaic pre-cast tiles is
devoid of merit. De Leon never claimed to have invented
38

the process of tile-making. The Claims and Specifications of

Patent No. 658 show that although some of the steps or
parts of the old process of tile making were described
therein, there were novel and inventive features mentioned
in the process.

Republic of the Philippines

SUPREME COURT
Manila
FIRST DIVISION

In view of the foregoing, this Court finds that Patent No. 658
was legally issued, the process and/or improvement being
patentable.

G.R. No. 113388 September 5, 1997

ANGELITA MANZANO, petitioner,
vs.
COURT OF APPEALS, and MELECIA MADOLARIA, as
Assignor to NEW UNITED FOUNDRY MANUFACTURING
CORPORATION, respondents.
BELLOSILLO, J.:
The primary purpose of the patent system is not the reward of the
individual but the advancement of the arts and sciences. The function
of a patent is to add to the sum of useful knowledge and one of the
purposes of the patent system is to encourage dissemination of
information concerning discoveries and inventions. This is a matter
which is properly within the competence of the Patent Office the
official action of which has the presumption of correctness and may
not be interfered with in the absence of new evidence carrying
thorough conviction that the Office has erred. Since the Patent Office
is an expert body preeminently qualified to determine questions of
patentability, its findings must be accepted if they are consistent with
the evidence, with doubts as to patentability resolved in favor of the
Patent Office. 1
Petitioner Angelita Manzano filed with the Philippine Patent Office
on 19 February 1982 an action for the cancellation of Letters Patent
No. UM-4609 for a gas burner registered in the name of respondent
Melecia Madolaria who subsequently assigned the letters patent to

IPL PATENTS

39

New United Foundry and Manufacturing Corporation (UNITED

FOUNDRY, for brevity). Petitioner alleged that (a) the utility model
covered by the letters patent, in this case, an LPG gas burner, was
not inventive, new or useful; (b) the specification of the letters patent
did not comply with the requirements of Sec. 14, RA No. 165, as
amended; (c) respondent Melecia Madolaria was not the original,
true and actual inventor nor did she derive her rights from the
original, true and actual inventor of the utility model covered by the
letters patent; and, (d) the letters patent was secured by means of
fraud or misrepresentation. In support of her petition for cancellation
petitioner further alleged that (a) the utility model covered by the
letters patent of respondent had been known or used by others in the
Philippines for more than one (1) year before she filed her
application for letters patent on 9 December 1979; (b) the products
which were produced in accordance with the utility model covered
by the letters patent had been in public use or on sale in the
Philippines for more than one (1) year before the application for
patent therefor was filed.

4609 was issued, and that after her husband's separation from the
shop she organized Besco Metal Manufacturing (BESCO METAL,
for brevity) for the casting of LPG burners one of which had the
configuration, form and component parts similar to those being
manufactured by UNITED FOUNDRY. Petitioner presented in
evidence an alleged model of an LPG burner marked Exh. "K" and
covered by the Letters Patent of respondent, and testified that it was
given to her in January 1982 by one of her customers who allegedly
acquired it from UNITED FOUNDRY. Petitioner also presented in
evidence her own model of an LPG burner called "Ransome" burner
marked Exh. "L," which was allegedly manufactured in 1974 or
1975 and sold by her in the course of her business operation in the
name of BESCO METAL. Petitioner claimed that this "Ransome"
burner (Exh. "L") had the same configuration and mechanism as that
of the model which was patented in favor of private respondent
Melecia Madolaria. Also presented by petitioner was a burner cup of
an imported "Ransome" burner marked Exh "M" which was
allegedly existing even before the patent application of private
respondent.

Petitioner presented the following documents which she

correspondingly marked as exhibits: (a) affidavit of petitioner
alleging the existence of prior art, marked Exh. "A;" (b) a brochure
distributed by Manila Gas Corporation disclosing a pictorial
representation of Ransome Burner made by Ransome Torch and
Burner Company, USA, marked Exh. "D;" and, (c) a brochure
distributed by Esso Gasul or Esso Standard Eastern, Inc., of the
Philippines showing a picture of another similar burner with top
elevation view and another perspective view of the same burner,
marked Exh. "E."

Petitioner presented two (2) other witnesses, namely, her husband

Ong Bun Tua and Fidel Francisco. Ong testified that he worked as a
helper in the UNITED FOUNDRY from 1965 to 1970 where he
helped in the casting of LPG burners with the same form,
configuration and mechanism as that of the model covered by the
Letters Patent issued to private respondent. Francisco testified that
he had been employed with the Manila Gas Corporation from 1930
to 1941 and from 1952 up to 1969 where he retired as supervisor and
that Manila Gas Corporation imported "Ransome" burners way back
in 1965 which were advertised through brochures to promote their
sale.

Testifying for herself petitioner narrated that her husband Ong Bun
Tua worked as a helper in the UNITED FOUNDRY where
respondent Melecia Madolaria used to be affiliated with from 1965
to 1970; that Ong helped in the casting of an LPG burner which was
the same utility model of a burner for which Letters Patent No. UMIPL PATENTS

Private respondent, on the other hand, presented only one witness,

Rolando Madolaria, who testified, among others, that he was the
General Supervisor of the UNITED FOUNDRY in the foundry,
40

machine and buffing section; that in his early years with the
company, UNITED FOUNDRY was engaged in the manufacture of
different kinds of gas stoves as well as burners based on sketches
and specifications furnished by customers; that the company
manufactured early models of single-piece types of burners where
the mouth and throat were not detachable; that in the latter part of
1978 respondent Melecia Madolaria confided in him that complaints
were being brought to her attention concerning the early models
being manufactured; that he was then instructed by private
respondent to cast several experimental models based on revised
sketches and specifications; that private respondent again made some
innovations; that after a few months, private respondent discovered
the solution to all the defects of the earlier models and, based on her
latest sketches and specifications, he was able to cast several models
incorporating the additions to the innovations introduced in the
models. Various tests were conducted on the latest model in the
presence and under the supervision of Melecia Madolaria and they
obtained perfect results. Rolando Madolaria testified that private
respondent decided to file her application for utility model patent in
December 1979.

UM-4609 was obtained by means of fraud and/or misrepresentation.

No evidence whatsoever was presented by petitioner to show that the
then applicant Melecia Madolaria withheld with intent to deceive
material facts which, if disclosed, would have resulted in the refusal
by the Philippine Patent Office to issue the Letters Patent under
inquiry.

On 7 July 1986 the Director of Patents Cesar C. Sandiego issued

Decision No. 86-56 denying the petition for cancellation and holding
that the evidence of petitioner was not able to establish convincingly
that the patented utility model of private respondent was anticipated.
Not one of the various pictorial representations of business clearly
and convincingly showed that the devices presented by petitioner
was identical or substantially identical with the utility model of the
respondent. The decision also stated that even assuming that the
brochures depicted clearly each and every element of the patented
gas burner device so that the prior art and patented device became
identical although in truth they were not, they could not serve as
anticipatory bars for the reason that they were undated. The dates
when they were distributed to the public were not indicated and,
therefore, were useless prior art references. The records and evidence
also do not support the petitioner's contention that Letters Patent No.

Petitioner submits that the differences cited by the Court of Appeals

between the utility model of private respondent and the models of
Manila Gas Corporation and Esso Standard Eastern, Inc., are more
imaginary than real. She alleges that based on Exhs. "E," "E-1," "F"
and "F-1" or the brochures of Manila Gas Corporation and Esso
Standard Eastern, Inc., presented by petitioner, the cup-shaped
burner mouth and threaded hole on the side are shown to be similar
to the utility model of private respondent. The exhibits also show a
detachable burner mouth having a plurality of upwardly existing
undulations adopted to act as gas passage when the cover is attached
to the top of said cup-shaped mouth all of which are the same as
those in the patented model. Petitioner also denies as substantial
difference the short cylindrical tube of the burner mouth appearing in
the brochures of the burners being sold by Manila Gas Corporation

IPL PATENTS

Petitioner elevated the decision of the Director of Patents to the

Court of Appeals which on 15 October 1993 affirmed the decision of
the Director of Patents. Hence, this petition for review
on certiorari alleging that the Court of Appeals erred (a) in relying
on imaginary differences which in actuality did not exist between the
model of private respondent covered by Letters Patent No. UM-4609
and the previously known model of Esso Standard Eastern, Inc., and
Manila Gas Corporation, making such imaginary differences
grounded entirely on speculation, surmises and conjectures; (b) in
rendering judgment based on misapprehension of facts; (c) in relying
mainly on the testimony of private respondent's sole witness
Rolando Madolaria; and, (d) in not cancelling Letters Patent No.
UM-4609 in the name of private respondent.

41

and the long cylindered tube of private respondent's model of the gas
burner.

the Patent Office and the Court of Appeals because it contained mere
after-thoughts and pretensions.

Petitioner argues that the actual demonstration made during the

hearing disclosed the similarities in form, operation and mechanism
and parts between the utility model of private respondent and those
depicted in the brochures. The findings of the Patent Office and the
Court of Appeals that the brochures of Manila Gas Corporation and
Esso Standard Eastern, Inc., are undated cannot overcome the fact of
their circulation before private respondent filed her application for
utility model patent. Petitioner thus asks this Court to take judicial
notice of the fact that Esso Standard Eastern, Inc., disappeared
before 1979 and reappeared only during the Martial Law years as
Petrophil Corporation. Petitioner also emphasizes that the brochures
indicated the telephone number of Manila Gas Corporation as 5-7981 which is a five (5) numbered telephone number existing before
1975 because telephones in Metro Manila started to have six (6)
numbers only after that year.

We cannot sustain petitioner. Section 7 of RA No. 165, as amended,

which is the law on patents, expressly provides
Sec. 7. Inventians patentable. Any invention of a new and useful
machine, manufactured product or substance, process or an
improvement of any of the foregoing, shall be patentable.
Further, Sec. 55 of the same law provides
Sec. 55. Design patents and patents for utility models. (a) Any
new, original and ornamental design for an article of manufacture
and (b) any new model of implements or tools or of any industrial
product or of part of the same, which does not possess the quality of
invention, but which is of practical utility by reason of its form,
configuration, construction or composition, may be protected by the
author thereof, the former by a patent for a design and the latter by a
patent for a utility model, in the same manner and subject to the
same provisions and requirements as relate to patents for inventions
insofar as they are applicable except as otherwise herein provided.

Petitioner further contends that the utility model of private

respondent is absolutely similar to the LPG burner being sold by
petitioner in 1975 and 1976, and also to the "Ransome" burner
depicted in the old brochures of Manila Gas Corporation and Esso
Standard Eastern, Inc., fabricated by Ransome Torch and Burner
Company of Oakland, California, USA, especially when considered
through actual physical examination, assembly and disassembly of
the models of petitioner and private respondent. Petitioner faults the
Court of Appeals for disregarding the testimonies of Ong Bun Tua
and Fidel Francisco for their failure to produce documents on the
alleged importation by Manila Gas Corporation of "Ransome"
burners in 1965 which had the same configuration, form and
mechanism as that of the private respondent's patented model.

The element of novelty is an essential requisite of the patentability of

an invention or discovery. If a device or process has been known or
used by others prior to its invention or discovery by the applicant, an
application for a patent therefor should be denied; and if the
application has been granted, the court, in a judicial proceeding in
which the validity of the patent is drawn in question, will hold it void
and ineffective. 2 It has been repeatedly held that an invention must
possess the essential elements of novelty, originality and precedence,
and for the patentee to be entitled to the protection the invention
must be new to the world. 3

Finally, it is argued that the testimony of private respondent's lone

witness Rolando Madolaria should not have been given weight by
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42

In issuing Letters Patent No. UM-4609 to Melecia Madolaria for an

"LPG Burner" on 22 July 1981, the Philippine Patent Office found
her invention novel and patentable. The issuance of such patent
creates a presumption which yields only to clear and cogent evidence
that the patentee was the original and first inventor. The burden of
proving want of novelty is on him who avers it and the burden is a
heavy one which is met only by clear and satisfactory proof which
overcomes every reasonable doubt. 4 Hence, a utility model shall not
be considered "new" if before the application for a patent it has been
publicly known or publicly used in this country or has been
described in a printed publication or publications circulated within
the country, or if it is substantially similar to any other utility model
so known, used or described within the country. 5

Even assuming gratia arguendi that the aforesaid brochures do

depict clearly on all fours each and every element of the patented gas
burner device so that the prior art and the said patented device
become identical, although in truth they are not, they cannot serve as
anticipatory bars for the reason that they are undated. The dates
when they were distributed to the public were not indicated and,
therefore, they are useless prior art references.
xxx xxx xxx
Furthermore, and more significantly, the model marked Exh. "K"
does not show whether or not it was manufactured and/or cast before
the application for the issuance of patent for the LPG burner was
filed by Melecia Madolaria.

As found by the Director of Patents, the standard of evidence

sufficient to overcome the presumption of legality of the issuance of
UM-4609 to respondent Madolaria was not legally met by petitioner
in her action for the cancellation of the patent. Thus the Director of
Patents explained his reasons for the denial of the petition to cancel
private respondent's patent

With respect to Exh. "L," petitioner claimed it to be her own model

of LPG burner allegedly manufactured sometime in 1974 or 1975
and sold by her in the course of her business operation in the name
of Besco Metal Manufacturing, which burner was denominated as
"Ransome" burner

Scrutiny of Exhs. "D" and "E" readily reveals that the utility model
(LPG Burner) is not anticipated. Not one of the various pictorial
representations of burners clearly and convincingly show that the
device presented therein is identical or substantially identical in
construction with the aforesaid utility model. It is relevant and
material to state that in determining whether novelty or newness is
negatived by any prior art, only one item of the prior art may be used
at a time. For anticipation to occur, the prior art must show that each
element is found either expressly or described or under principles of
inherency in a single prior art reference or that the claimed invention
was probably known in a single prior art device or practice. (Kalman
v. Kimberly Clark, 218 USPQ 781, 789)

IPL PATENTS

xxx xxx xxx

But a careful examination of Exh. "L" would show that it does not
bear the word "Ransome" which is the burner referred to as the
product being sold by the Petitioner. This is not the way to prove that
Exh. "L" anticipates Letters Patent No. UM-4609 through Exhs. "C"
and "D." Another factor working against the Petitioner's claims is
that an examination of Exh. "L" would disclose that there is no
indication of the time or date it was manufactured. This Office, thus
has no way of determining whether Exh. "L" was really
manufactured before the filing of the aforesaid application which
matured into Letters Patent No. UM-4609, subject matter of the
cancellation proceeding.
43

patentability of the model 8 and such action must not be interfered

with in the absence of competent evidence to the contrary.

At this juncture, it is worthwhile to point out that petitioner also

presented Exh. "M" which is the alleged burner cup of an imported
"Ransome" burner. Again, this Office finds the same as unreliable
evidence to show anticipation. It observed that there is no date
indicated therein as to when it was manufactured and/or imported
before the filing of the application for issuance of patent of the
subject utility model. What is more, some component parts of Exh.
"M" are missing, as only the cup was presented so that the same
could not be compared to the utility model (subject matter of this
case) which consists of several other detachable parts in combination
to form the complete LPG burner.

The rule is settled that the findings of fact of the Director of Patents,
especially when affirmed by the Court of Appeals, are conclusive on
this Court when supported by substantial evidence. Petitioner has
failed to show compelling grounds for a reversal of the findings and
conclusions of the Patent Office and the Court of Appeals.
The alleged failure of the Director of Patents and the Court of
Appeals to accord evidentiary weight to the testimonies of the
witnesses of petitioner showing anticipation is not a justification to
grant the petition. Pursuant to the requirement of clear and
convincing evidence to overthrow the presumption of validity of a
patent, it has been held that oral testimony to show anticipation is
open to suspicion and if uncorroborated by cogent evidence, as what
occurred in this case, it may be held insufficient. 9

xxx xxx xxx

It must likewise be pointed out that Ong Bun Tua testified on the
brochures allegedly of Manila Gas and of Esso Gasul marked Exhs.
"E" and "F" and on the alleged fact that Manila Gas Corporation was
importing from the United States "Ransome" burners. But the same
could not be given credence since he himself admitted during crossexamination that he has never been connected with Manila Gas
Corporation. He could not even present any importation papers
relating to the alleged imported ransome burners. Neither did his
wife. 6

Finally, petitioner would want this Court to review all over again the
evidence she presented before the Patent Office. She argues that
contrary to the decision of the Patent Office and the Court of
Appeals, the evidence she presented clearly proves that the patented
model of private respondent is no longer new and, therefore, fraud
attended the acquisition of patent by private respondent.

The above findings and conclusions of the Director of Patent were

reiterated and affirmed by the Court of Appeals. 7

It has been held that the question on priority of invention is one of

fact. Novelty and utility are likewise questions of fact. The validity
of patent is decided on the basis of factual inquiries. Whether
evidence presented comes within the scope of prior art is a factual
issue to be resolved by the Patent Office. 10 There is question of fact
when the doubt or difference arises as to the truth or falsehood of
alleged facts or when the query necessarily invites calibration of the
whole evidence considering mainly the credibility of witnesses,
existence and relevance of specific surrounding circumstances, their

The validity of the patent issued by the Philippine Patent Office in

favor of private respondent and the question over the inventiveness,
novelty and usefulness of the improved model of the LPG burner are
matters which are better determined by the Patent Office. The
technical staff of the Philippine Patent Office composed of experts in
their field has by the issuance of the patent in question accepted
private respondent's model of gas burner as a discovery. There is a
presumption that the Office has correctly determined the
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44

reasonable doubt. Clearly enough, the petitioner failed to present clear and
satisfactory proof to overcome every reasonable doubt to afford the cancellation of
the patent to the private respondent.

relation to each other and to the whole and the probabilities of the
situation. 11
Time and again we have held that it is not the function of the
Supreme Court to analyze or weigh all over again the evidence and
credibility of witnesses presented before the lower tribunal or office.
The Supreme Court is not a trier of facts. Its jurisdiction is limited to
reviewing and revising errors of law imputed to the lower court, its
findings of fact being conclusive and not reviewable by this Court.

MANZANO v CA 278 SCRA 688

WHEREFORE, the Petition is DENIED. The Decision of the Court

of Appeals affirming that of the Philippine Patent Office is
AFFIRMED. Costs against petitioner.

Vitug, Kapunan and Hermosisima, Jr., JJ., concur.

The primary purpose of the patent system is not the reward

of the individual but the advancement of the arts and
sciences. The function of a patent is to add to the sum of
useful knowledge and one of the purposes of the patent
system is to encourage dissemination of information
concerning discoveries and inventions.

ANGELITA MANZANO vs CA

FACTS:

FACTS:The petitioner filed an action for the cancellation of Letters of Patent

covering a gasburner registered in the name of responded Melecia Madolaria who
subsequently assigned theletter of patent to United Foundry. Petitioner alleged that
the private respondent was not theoriginal, true and actual inventor nor did she
derive her rights from the original, true and actualinventor of the utility model
covered by the letter of patent; further alleged that the utilitymodel covered by the
subject letter of patent had been known or used by others in the Philippines for
than one (1) year before she filed her application for letter of patent on Dec1979.
For failure to present substantive proof of her allegations, the lower court and Court
of Appeals denied the action for cancellation. Hence, the present petition.

Angelita Manzano filed PPO an action for the cancellation of

Letters Patent for a gas burner registered in the name of
respondent Melecia Madolaria who subsequently assigned
the letters patent to New United Foundry and
Manufacturing Corporation (UNITED FOUNDRY, for brevity).
Petitioner alleged that (a) the utility model covered by the
letters patent, in this case, an LPG gas burner, was not
inventive, new or useful; (b) the specification of the letters
patent did not comply with the requirements of Sec. 14, RA
No. 165, as amended; (c) respondent Melecia Madolaria
was not the original, true and actual inventor nor did she
derive her rights from the original, true and actual inventor
of the utility model covered by the letters patent; and, (d)
the letters patent was secured by means of fraud or
misrepresentation.

SO ORDERED.

ISSUE:Whether or not the respondent court wrongfully denied the cancellation of

letter of patent registered under the private respondent.
HELD:No. The issuance of such patent creates a presumption which yields only to
clear and cogent evidence that the patentee was the original and first inventor. The
burden of proving want of novelty is on him who avers it and the burden is a heavy
one which is met only by clear and satisfactory proof which overcomes every
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45

Testifying for herself petitioner narrated that her husband

Ong Bun Tua worked as a helper in the UNITED FOUNDRY
where respondent Melecia Madolaria used to be affiliated
with from 1965 to 1970; that Ong helped in the casting of
an LPG burner which was the same utility model of a burner
and that after her husbands separation from the shop she
organized Besco Metal Manufacturing (BESCO METAL, for
brevity) for the casting of LPG burners one of which had the
configuration, form and component parts similar to those
being manufactured by UNITED FOUNDRY.

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.

Petitioner presented two (2) other witnesses, namely, her

husband Ong Bun Tua and Fidel Francisco.
Private respondent, on the other hand, presented only one
witness, Rolando Madolaria, who testified, among others,
that he was the General Supervisor of the UNITED
FOUNDRY.

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.

Director of Patents Cesar C. Sandiego denied the petition

for cancellation and holding that the evidence of petitioner
was not able to establish convincingly that the patented
utility model of private respondent was anticipated.
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.

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.

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.
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