Boothe vs Director of Patents

Issue: Whether or not the Petitioners application, serial No. 952 may not be treated as filed under Section 15 as
amended, of RA 165
Decision: NO
Basis: Rules 47 and 48 of the Revised Rules of Practice in Patent Cases
Facts:
1.) James Howard Boothe and John Morton II, chemists, citizens and residents of the United States, claim to be
the inventors of a new antibiotic designated as "tetracycline", a new derivative of chlortetracycline
2.) On February 19, 1954, petitioners applied for Letters Patent covering said invention to respondent Director
of Patents claiming the right of priority granted to foreign applicants under section 15 of the Patent Law
3.) On April 14, 1954, James and John filed with respondent Director a legalized copy of their Application for
Letters Patent in the United States for the same invention (U.S. Serial No. 342556). Said legalized copy
indicated that the application in the United States was filed on March 16, 1963.
4.) James and John would be entitled to the priority date of March 16, 1953 if their application is considered
filed in the Philippines as of March 5, 1954, since the latter date would fall within the one-year period prior to
March 5, 1954.
5.) On February 7, 1958, John and James informed respondent Director that in interference proceedings in the
United States, Letters Patent for a similar invention as theirs was awarded to Pfizer and Co
6.) On August 5, 1959 Lydia Nueva Espaa, rejected all of John and James's claims in view of "Philippine
Patent No. 254 November 29, 1956", apparently referring to a local Patent obtained by Pfizer and Co.,
presumably covering the same invention.
7.) The rejection was also due to the fact that the application filed by John and James was incomplete.
Discussion:
The application filed by John and James was far from being complete. The purpose of specifying completely the
invention which is to be patented is to apprise the public of what the patentee claims as his invention, to inform
the Courts as to what they are called upon to construe, and to convey to competing manufacturers and dealers
information of exactly what they are bound to avoid. In order to be entitled to the filing date of the patent
application, an invention disclosed in a previously filed application must be described within the instant
application in such a manner as to enable one skilled in the art to use the same for a legally adequate utility.
In this case, since John and James did not meet the four-month period provided by Rules 47 and 48 of the
Revised Rules of Practice in Patent Cases, then the Director of Patents treated their application as a regular
application.

Schuartz vs CA
Issue: Whether or not the petition to revive the patent application may be filed
Decision: No.
Basis: Section 113 of the Revised Rules of Practice in Patent Cases
Facts:
1.) On different dates, Schuartz applied to the Bureau of Patents, Trademarks and Technology Transfer for
registration of patents.
2.) They hired the law firm Siguion Reyna, Montecillo and Ongsiako to process their patent applications in the
Philippines.
3.) However, the applications were lacking certain requirements hence the applications should be changed.
4.) The changes were never made which resulted to notice of abandonments being sent.
5.) These notices of abandonment were not known to Schuartz until after the dismissal of two of its employees.
6.) Thereafter, petitioners, through the law firm, filed with the Bureau of Patents separate petitions for revival of
the patent applications
7.) On August 13, 1992, the Court of Appeals dismissed the consolidated appeal for being filed beyond the 15day reglementary period to appeal.
8.) There was an unreasonable delay before the petitions to revive applications were filed.
9.) Additionally, the patent applications could not be a proper subject of a consolidated appeal because they
covered separate and distinct subjects and had been treated by the Bureau of Patents as separate and individual
applications.
Discussion:
The petition to revive could not be granted due to laches. Before the filing of the petition for revival of the
patent application with the Bureau of Patents, an unreasonable period of time had lapsed due to the negligence
of petitioners counsel. By such inaction, petitioners were deemed to have forfeited their right to revive their
applications for patent. The firm had been notified about the abandonment as early as June 1987, but it was only
after December 7, 1987, when their employees Bangkas and Rosas had been dismissed, that they came to know
about it. This clearly showed that petitioners counsel had been remiss in the handling of their clients
applications. Since the application was not revived within the four-month period as presctibed the rules of
practice in patent cases, then the applications are deemed forfeited due to laches.

Parke Davis & CO vs Doctors Pharmaceuticals (1965)

Issue: Whether or not the Director of Patents can order the grant of the compulsory license
Decision: YES
Legal Basis : Section 34 of RA 165
SEC. 34. Grounds for compulsory license. Any person may apply to the Director for the grant of a license
under a particular patent at any time after the expiration of three years from the date of the grant of the patent,
under any of the following circumstances:
(a) If the patented invention is not being worked within the Philippines on a commercial scale, although capable
of being so worked, without satisfactory reason;
(b) If the demand for the patented article in the Philippines is not being met to an adequate extent and on
reasonable terms, without satisfactory reason;
(c) If by reason of the refusal of the patentee to grant a license or licenses on reasonable terms, or by reason of
the conditions attached by the patentee to licenses or to the purchase, lease or use of the patented article or
working of the patented process or machine of production the establishment of any new trade or industry in the
Philippines is prevented, or the trade or industry therein is unduly restrained; or
(d) If the patented invention relates to food or medicine or is necessary for public health or public safety.
Facts:
1.) Parke Davis & Company is a foreign corporation organized and existing under the laws of the State of
Michigan, U.S.A.
2.) Parke Davis & Company the owner of a patent entitled "Process for the Manufacturing of Antibiotics"
(Letters Patent No. 50) which was issued by the Philippine Patent Office on February 9, 1950. The patent relates
to a chemical compound represented by a formula commonly called chloramphenicol.
3.) Doctors' Pharmaceuticals, Inc. is a domestic corporation duly organized under our Corporation Law with
principal office situated in Caloocan City.
4.)Doctor's Pharmaceuticals requested that it be granted a voluntary license but Parke Davis refused
5.) Doctor's Pharmaceuticals then filed for a compulsory license with the Director of Patents.
6.) The Director of Patents granted the request
Discussion: The term "worked" or "working" as used in section 36 means the manufacture and sale of a
patented article, or the carrying on of a patented process or the use of a patented machine for production.
Doctor's Pharmaceuticals is correct in asking for a compulsory license because the patented invention involves a
medicine. A medicine under Section 34 can be one of the grounds for granting a compulsory license because it is
necessary for public health or public safety. However it is important to note that the term work used in Section
34 is not applicable in the case of medicine. Therefore the basis that Parke Davis did not work on the medicine
does not have legal basis. Needless to say, Doctor's Pharmaceuticals can still be granted the compulsory license
by reason that the patent involves a medicine that is necessary for public health and safety.

Parke Davis & CO vs Doctors Pharmaceuticals (1983)

Issue: Whether or not the Director of Patents can fix the royalty rate
Whether or not the Director of Patents can declare that the resolution containing the license agreement shall take
effect immediately
Decision: YES. YES
Basis: Section 4 Rule 44 of the Rules of Court and Section 36 of Republic Act 165
Facts:
1.) The Director of Patents, in a resolution issued a license in favor of Doctors Pharmaceuticals under Parke
Davis's Letters Patent No. 50 for the patented chemical "chloramphenicol"
2.) The Director also fixed the terms and conditions thereof and declaring that the license should take effect
immediately.
3.) The license provides that the Company should pay Parke, Davis & Co., a royalty an equivalent to Eight
Percent (8%) of the net sales.
4.) Parke Davis insists that the fixing of the royalty rate by the Director of Patents is arbitrary and without any
support in evidence pointing out that the prevailing rate for compulsory licensing on the net sales of medicines
containing the patented article is 15% and 18% of the selling price.
Discussion:
First of all, the Director of Patents can fix the terms of a compulsory license agreement because he is expressly
authorized by Section 36 of RA 165.
Secondly, As to the rate of the royalty, the rate fixed by the Director is reasonable because Doctor's
Pharmaceutical, Inc. is a small manufacturing venture compared with Parke, Davis & Company, Inc. As a result
of this, there is no evidence showing that Parke, Davis & Co., Inc. would tend to suffer business losses by the
imposition of the 8 % royalty nor does it appear that it would cause other effects on the saleability of the
antibiotics
The resolution rendered by the Director can also be made effective immediately because the contrary would lead
to interminable litigation. This would run contrary to the a compulsory licensing agreement. Also, according to
the provisions of Sec. 4, Rule 44 of the Rules of Court the appeal shall not stay the award, order or decision of
the Public Service Commission, the Patent Office, and the Agricultural Inventions Board.

Barry John Price vs United Laboratories

Issue: Whether or not the Director of Patents can fix unilaterally the terms and conditions of a compulsory
license
Decision: YES
Basis: Section 36 of RA 165 and Section 35
Sec. 36. GRANT OF LICENSE.If the Director finds that a case for the grant of license under Section 34,
hereof made out, he may order the grant of an appropriate license and in default of agreement among the parties
as to the terms and conditions of the license he shall fix the terms and conditions of the license in the order.
The order of the Director granting a license under this Chapter, when final, shall operate as a deed granting alicense executed by the patentee and the other patties in interest.
Sec. 35. GRANT OF LICENSE.(1)If the Director finds that a case for the grant of a license under Sec. 34
hereof has been made out, he shall within one hundred eighty (180) days from the date the petition was filed,
order the grant of an appropriate license. The order shall state the terms and conditions of the license which he
himself must fix in default of an agreement on the matter manifested or submitted by the parties during the
hearing.
Facts:
1.) The Barry John Price are the owners-assignees of Philippine Patent No. 13540 which was granted to them on
June 26,1980 for a pharmaceutical compound known as "aminoalkyl furan derivatives.
2.) On October 1, 1982, United Laboratories, Inc. (or UNILAB) filed in the Philippine Patent Office a petition
for the issuance of a compulsory license to use the patented compound in its own brands of medicines and
pharmaceuticals and to sell, distribute, or otherwise dispose of such medicines or pharmaceutical preparations in
the country.
3.) The petition further alleged that the patent relates to medicine and that petitioner, which has had long
experience in the business of manufacturing and selling pharmaceutical products, possesses the capability to use
the subject compound in the manufacture of a useful product or of making dosage formulations containing the
said compound.
4.) The Philippine Patent Office granted UNILAB a compulsory license.
5.) One of the conditions of the license was that Barry John Price were to be paid 2.5% royalty rate by
UNILAB.
6.)The Patentees complain that the Director of Patents fixed unilaterally the terms and conditions
Discussion:
Section 35 and 36 of RA 165 grants to the Director of Patents the use of his sound discretion in fixing the
percentage for the royalty rate. It is a presumption of regularity observed in law when it comes to the
performance of one's official duties. This presumption was not overturned by Barry John Price hence it is
deemed that the performance of the Director of Patents is regular and binding.
Additionally, the invention is one related to medicine and is necessary for public health because it can be used to
counter ulcer. That being the case, it is an invention that is subject to a compulsory license. Since there is a
compulsory license agreement conducted in the case, Barry John Price cannot allege that there is a deprivation
of property rights without just compensation.

Maguan vs CA
Issue: Whether or not the court can determine the invalidity of the patents at issue
Whether or not the invention of the petitioner is new
Decision: Yes. No.
Legal Basis: Section 46 of RA 165
Section 9 of RA 165
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 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.
Facts:
1.) 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 Puff Manufacturing
2.) Maguan is a patent holder of powder puff.
3.) Maguan informed Luchan that the latter is committing infringement by manufacturing and selling power
puffs that resemble identical or substantially Iientical powder puffs.
4.) Maguan requested that Luchan discontinue the actions taken by the latter.
5.) Luchan replied stating that her products are different and countered that Maguan'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.
6.) The trial court issued a preliminary injunction in favor of Maguan.
Discussion:
A patentee enjoys certain rights as stated under the Patent Law. The Patent Law also provides certain remedies
that the rightful owner can exhaust in case an infringement occurs. However, the Courts also noted that under
Section 46 of the Patent Law 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."
The Court of Appeals was satisfied by the pieces of evidence presented by Luchan that there is a prima
facie showing of a fair question of invalidity of Maguan's patents on the ground of lack of novelty.
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 before the
date of his application for his patent, will be fatal to, the validity of the patent when issued.
Since there is a prima facie showing of invalidity of the patent. The trial court should not have granted the
preliminary injunction in the first place.

Vargas vs F.M. Yaptico

Issue: Whether or not the patent invention is novel
Decision: NO. It has been used for more than 2 years prior to the application
Legal Basis: Section 26 of RA 8293.
Facts:
1.) Angel Vargas, a farmer acquainted with local conditions produced, with the native plow as the model, an
improved, adjustable plow.
2.) On July 22, 1910, he made application for a United States patent to cover his so-called invention.
3.) On March 12, 1912, letters patent were issued by the United States Patent Office in favor of Vargas .
4.) Meanwhile the firm of respondent 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 heel pieces in a considerable amount adapted to replace worn-out parts of the Vargas plow.
5.) Vargas then filed an action for infringement which he alleges is being committed by Yaptico.
6.) Trial Court rendered a decision declaring null the patent of Vargas on the ground that it is not novel.
Discussion:
The patent in the said case is invalid because it does not involve an inventive step. Under the law, an inventive
step is when it is not obvious to a person skilled in the art. In the case at bar, it is clear that the invention made
by Vargas was not different from the native plow which is already existing. Only the material was different in
the invention made by Vargas. There was a lack of a new function or a new feature that would warrant a patent
in favor of Vargas.
Additionally, the invention made by Vargas was proved to be also used by others in Iloilo. Under the law it is
clear that an invention, to be patentable must not have been in public use or on in sale whether in the Philippines
or the United States.

Vargas vs Chua
Issue: Whether or not the invention made by Vargas is new
Decision: NO.
Legal Basis: The Case of Vargas vs F.M. Yaptico & CO
Facts:
1.) That the plaintiff, Angel Vargas 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.
2.) Vargas has been engaged 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.
3.) The defendant, Petronila Chua has been manufacturing and selling plows of the kind, type and design.
4.) Vargas is now filing an action against Chua for patent infringement.
Discussion:
It is clear from jurisprudence as cited by the Supreme Court that the invention of Vargas is not new. It does not
involve any inventive step. That being the case, the entitlement that Vargas is claiming in this case against Chua
is untenable. The deeper furrows made with the new model has been observed to obtain the same result as the
old model. Since the patent is actually ineffective, then the action of infringement filed by Vargas will not
prosper.

Frank vs Kosuyama
Issue: Whether or not the hemp stripping machine constitutes an invention
Decision: No.
Legal Basis: Section 26 and Section 76 of RA 8293
Facts:
1.) Patent No. 1519579 on improvement in hemp stripping machines,was issued to Frank 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
2.) Kosuyama was manufacturing and selling the same machines covered by the patent owned by Frank hence
the latter prayed that the former stop manufacturing and selling.
3.) Frank 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."
According to Frank, the spindle 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.
Discussion:
The invention made by Frank in this case is not an innovation. According to RA 8293, a patentable invention
requires an inventive step. The definition of inventive step is that it is not obvious to a person skilled in the art.
The hemp stripping machine in the case does not constitute an invention because it lacks novelty and originality.
Before a patent was given to Frank, they have already been using it for months. This showcases the fact that the
invention was already existent at the time the application was filed which will nullify the novelty of the
invention. The machine in the case at bar was already known by the people in the Province of Davao and some
have already used it.
This means that Kosuyama cannot be held liable for infringement because there is no valid patent to speak of.
The invention alleged by Frank is not unknown to the public in Davao. In conclusion, since the machine was
known and used by the public in Davao, the machine cannot be patented hence no infringement case can be filed
in relation to the manufacturing and selling of the machine.

Aguas vs De Leon
Issue: Whether or not the patent of De Leon is valid
Decision: YES
Legal Basis: Section 21 of RA 8293
Facts:
1.) De Leon is the owner of a patent regarding to making mosaic pre-cast tiles.
2.) De Leon alleged that the patent involves on the improvement he made to mosaic pre-cast tiles and not to the
process of making of the tiles.
3.) The tiles of De Leon was lighter and was more suited in construction and ornamentation.
4.)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.
Discussion:
In this case, 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. 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, and was lighter than other tiles present in the market at the time.
Hence, De Leon's invention has brought about a new and useful kind of tile. Therefore there is an infringement
being committed by Aguas because they manufactured and sold similar tiles to which a valid patent was owned
by De Leon. Aguas should have the consent of De Leon being the lawful owner of the patent, before they
manufactured and sold similar tiles. That being said, Aguas committed patent infringement and De Leon's action
will prosper.

Manzano vs CA
Issue: Whether or not the patent of the private respondent Madolaria is valid
Decision: YES
Legal Basis: Section 7 of RA 165 and Section 55
Sec. 7. Inventions 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.
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.
Facts:
1.) 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
2.) Manzano alleged that (a) the utility model covered by the letters patent was not inventive, new or useful
3.)Manzano alleged that the utility model of Melecia is 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.
Discussion:
In the issuance of a patent, there is a presumption of regularity and validity of the patent. In order to overcome
these presumptions, the one who alleges must show adequate proof. In this case, Manzano failed to overcome
such presumptions as correctly ruled by the Director of patents. Also stated by the Supreme Court that they are
not a trier of facts. An allegation on the validity of a patent based on facts is an action that must be done in the
lower courts because the Supreme Court will only deal with errors in the application of law. That being said, the
Supreme Court ruled in favor of Melecia since Manzano did not procure enough pieces of evidence to show
invalidity in the patent issued in the former's name.