UM-6938 3 covering an aerial fuze which was published in the
SECOND DIVISION September-October 1990, Vol. III, No. 5 issue of the Bureau of Patents
[G.R. No. 118708. February 2, 1998]
CRESER PRECISION SYSTEMS, INC., petitioner, vs.
COURT OF APPEALS AND FLORO
INTERNATIONAL CORP., respondents.
DECISION
MARTINEZ, J.:
This petition for review on certiorari assails the decision1. The decision of
the Court of Appeals was penned by Justice Gloria C. Paras and concurred in
by Justice Salome A. Montoya and Justice Hector L. Hofilea.
1 of the Court of Appeals dated November 9, 1994 in C.A.-G.R. SP. No.
34425 entitled Floro International Corp. vs. Hon. Tirso D.C Cruz and Creser
Precision System, Inc., the dispositive portion of which reads:
WHEREFORE, THE PETITION IS HEREBY GRANTED. THE
COMPLAINT FOR INJUNCTION AND DAMAGES, CIVIL CASE
NO. 93-1856 BEFORE THE RESPONDENT JUDGE IS HEREBY
ORDERED DISMISSED AND HIS ORDERS THEREIN OF
DECEMBER 29, 1993 AND MAY 11, 1994 ARE ORDERED SET
ASIDE.
Private respondent is a domestic corporation engaged in the
manufacture, production, distribution and sale of military armaments,
munitions, airmunitions and other similar materials.2
On January 23, 1990, private respondent was granted by the Bureau of
Patents, Trademarks and Technology Transfer (BPTTT), a Letters Patent No.
Rollo, pp. 40-47.
Official Gazette.4
Sometime in November 1993, private respondent, through its president,
Mr. Gregory Floro, Jr., discovered that petitioner submitted samples of its
patented aerial fuze to the Armed Forces of the Philippines (AFP) for testing.
He learned that petitioner was claiming the aforesaid aerial fuze as its own
and planning to bid and manufacture the same commercially without license
or authority from private respondent. To protect its right, private respondent
on December 3, 1993, sent a letter 5 to petitioner advising it fro its existing
patent and its rights thereunder, warning petitioner of a possible court action
and/or application for injunction, should it proceed with the scheduled testing
by the military on December 7, 1993.
In response to private respondents demand, petitioner filed on
December 8, 1993 a complaint6 for injunction and damages arising from the
alleged infringement before the Regional Trial Court of Quezon City, Branch
88. The complaint alleged, among others: that petitioner is the first, true and
actual inventor of an aerial fuze denominated as Fuze, PDR 77 CB4 which is
developed as early as December 1981 under the Self-Reliance Defense
Posture Program (SRDP) of the AFP; that sometime in 1986, petitioner began
supplying the AFP with the said aerial fuze; that private respondents aerial
fuze is identical in every respect to the petitioners fuze; and that the only
difference between the two fuzes are miniscule and merely cosmetic in nature.
Petitioner prayed that a temporary restraining order and/or writ of preliminary
injunction be issued enjoining private respondent including any and all
persons acting on its behalf from manufacturing, marketing and/or profiting
therefrom, and/or from performing any other act in connection therewith or
tending to prejudice and deprive it of any rights, privileges and benefits to
which it is duly entitled as the first, true and actual inventor of the aerial fuze.
On December 10, 1993, the trial court issued a temporary restraining
order. Thereafter, hearings were held on the application of petitioner for the
issuance of a writ of preliminary injunction, with both parties presenting their
evidence. After the hearings, the trial court directed the parties to submit their
respective memoranda in support of their positions.
On December 27, 1993, private respondent submitted its memorandum 7
alleging that petitioner has no cause of action to file a complaint of
infringement against it since it has no patent for the aerial fuze which it claims
to have invented; that petitioners available remedy is to file a petition for
cancellation of patent before the Bureau of Patents; that private respondent
as the patent holder cannot be stripped of its property right over the patented
aerial fuze consisting of the exclusive right to manufacture, use and sell the
same and that it stands to suffer irreparable damage and injury if it is enjoined
from the exercise of its property right over its patent.
On December 29, 1993, the trial court issued an Order 8 granting the
issuance of a writ of preliminary injunction against private respondent the
dispositive portion of which reads:
WHEREFORE, plaintiffs application for the issuance of a writ
of preliminary injunction is granted and, upon posting of the
corresponding bond by plaintiff in the amount of PHP 200,000.00,
let the writ of preliminary injunction be issued by the branch Clerk of
this Court enjoining the defendant and any and all persons acting
on its behalf or by and under its authority, from manufacturing,
marketing and/or selling aerial fuzes identical, to those of plaintiff,
and from profiting therefrom, and/or from performing any other act
in connection therewith until further orders from this Court.
Private respondent moved for reconsideration but this was denied by the
trial courts in its Order9 of May 11, 1994, pertinent portions of which read:
For resolution before this Court is the Motion for
Reconsideration filed by the defendant and the plaintiffs Opposition
thereto. The Court finds no sufficient cause to reconsider its order
dated December 29, 1993. During the hearing for the issuance of
Rollo, pp. 40-47.
the preliminary injunction, the plaintiff has amply proven its
entitlement to the relief prayed for. It is undisputed that the plaintiff
has developed its aerial fuze way back in 1981 while the defendant
began manufacturing the same only in 1987. Thus, it is only logical
to conclude that it was the plaintiffs aerial fuze that was copied or
imitated which gives the plaintiff the right to have the defendant
enjoined from manufacturing, marketing and/or selling aerial fuzes
identical to those of the plaintiff, and from profiting therefrom and/or
performing any other act in connection therewith until further orders
from this Court. With regards to the defendants assertion that an
action for infringement may only be brought by anyone possessing
right, title or interest to the patented invention, (Section 42, RA 165)
qualified by Section 10, RA 165 to include only the first true and
actual inventor, his heirs, legal representatives to assignees, this
court finds the foregoing to be untenable. Sec. 10 merely
enumerates the persons who may have an invention patented
which does not necessarily limit to these persons the right to
institute an action for infringement. Defendant further contends that
the order in issue is disruptive of the status quo. On the contrary,
the order issued by the Court in effect maintained the status quo.
The last actual , peaceable uncontested status existing prior to this
controversy was the plaintiff manufacturing and selling its own
aerial fuzes PDR 77 CB4 which was ordered stopped through the
defendants letter. With issuance of the order, the operations of the
plaintiff continue. Lastly, this court believes that the defendant will
not suffer irreparable injury by virtue of said order. The defendants
claim is primarily hinged on its patent (Letters Patent No. UM-6983)
the validity of which is being questioned in this case.
WHEREFORE, premises considered, the Motion for
Reconsideration is hereby denied for lack of merit.
SO ORDERED.
 Aggrieved, private respondent on June 27, 1994, filed a petition for
certiorari, mandamus and prohibition10before respondent Court of Appeals
raising as grounds the following:
a. Petitioner has no cause of action for infringement
against private respondent, the latter not having any
patent for the aerial fuze which it claims to have
invented and developed and allegedly infringed by
private respondent;
b. The case being an action for cancellation or invalidation
of private respondents Letters Patent over its own aerial
fuze, the proper venue is the Office of the Director of
Patents;
c. The trial court acted in grave abuse of discretion and or
in excess of jurisdiction in finding that petitioner has fully
established its clear title or right to preliminary
injunction;
d. The trial court acted in grave abuse of discretion and/or
in excess of jurisdiction in granting the preliminary
injunction, it being disruptive of the status quo; and
e. The trial court acted in grave abuse of discretion and/or
in excess of jurisdiction in granting the preliminary
injunction thereby depriving private respondent of its
property rights over the patented aerial fuze and cause
it irreparable damages.
On November 9, 1994, the respondent court rendered the now assailed
decision reversing the trial courts Order of December 29, 1993 and
dismissing the complaint filed by petitioner.
The motion for reconsideration was also denied on January 17, 1995. 11
Hence, this present petition.
Rollo, pp. 40-47.
It is petitioners contention that it can file, under Section 42 of the Patent
Law (R.A. 165), an action for infringement not as a patentee but as an entity in
possession of a right, title or interest in and to the patented invention. It
advances the theory that while the absence of a patent may prevent one from
lawfully suing another for infringement of said patent, such absence does not
bar the first true and actual inventor of the patented invention from suing
another who was granted a patent in a suit for declaratory or injunctive relief
recognized under American patent laws. This remedy, petitioner points out,
may be likened to a civil action for infringement under Section 42 of the
Philippine Patent Law.
We find the above arguments untenable.
Section 42 of R.A. 165, otherwise known as the Patent Law, explicitly
provides:
SECTION. 42. Civil action for infringement. Any patentee, or
anyone possessing any right, title or interest in and to the patented
invention, whose rights have been infringed, may bring a civil action
before the proper Court of First Instance (now Regional Trial court),
to recover from the infringer damages sustained by reason of the
infringement and to secure an injunction for the protection of his
right. x x x
Under the aforequoted law, only the patentee or his
successors-in-interest may file an action for infringement. The phrase anyone
possessing any right, title or interest in and to the patented invention upon
which petitioner maintains its present suit, refers only to the patentees
successors-in-interest, assignees or grantees since actions for infringement
of patent may be brought in the name of the person or persons interested,
whether as patentee, assignees or grantees, of the exclusive right. 12
Moreover, there can be no infringement of a patent until a patent has been
issued, since whatever right one has to the invention covered by the patent
arises alone from the grant of patent.13 In short, a person or entity who has
not been granted letters patent over an invention and has not acquired any
right or title thereto either as assignee or as licensee, has no cause of action Thus, as correctly ruled by the respondent Court of Appeals in its
for infringement because the right to maintain an infringement suit depends assailed decision: since the petitioner (private respondent herein) is the
on the existence of the patent.14 patentee of the disputed invention embraced by letters of patent UM No. 6938
issued to it on January 23, 1990 by the Bureau of Patents, it has in its favor
Petitioner admits it has no patent over its aerial fuze. Therefore, it has no
not only the presumption of validity of its patent, but that of a legal and factual
legal basis or cause of action to institute the petition for injunction and
first and true inventor of the invention.
damages arising from the alleged infringement by private respondent. While
petitioner claims to be the first inventor of the aerial fuze, still it has no right of In the case of Aguas vs. De Leon,16 we stated that:
property over the same upon which it can maintain a suit unless it obtains a
The validity of the patent issued by the Philippine Patent Office
patent therefor. Under American jurisprudence, and inventor has no
in favor of the private respondent and the question over the
common-law right to a monopoly of his invention. He has the right to make,
investments, novelty and usefulness of the improved process
use and vend his own invention, but if he voluntarily discloses it, such as by
therein specified and described are matters which are better
offering it for sale, the world is free to copy and use it with impunity. A patent,
determined by the Philippines patent Office, composed of experts in
however, gives the inventor the right to exclude all others. As a patentee, he
their field, have, by the issuance of the patent in question, accepted
has the exclusive right of making, using or selling the invention. 15
the thinness of the private respondents new tiles as a discovery.
Further, the remedy of declaratory judgment or injunctive suit on patent There is a presumption that the Philippine Patent Office has
invalidity relied upon by petitioner cannot be likened to the civil action for correctly determined the patentability of the improvement by the
infringement under Section 42 of the Patent Law. The reason for this is that private respondent of the process in question.
the said remedy is available only to the patent holder or his
In fine, in the absence of error or abuse of power or lack or jurisdiction or
successors-in-interest. Thus, anyone who has no patent over an invention but
grave abuse of discretion, we sustain the assailed decision of the respondent
claims to have a right or interest thereto can not file an action for declaratory
Court of Appeal.
judgment or injunctive suit which is not recognized in this jurisdiction. Said
person, however, is not left without any remedy. He can, under Section 28 of WHEREFORE, the decision of the Court of Appeals is hereby
the aforementioned law, file a petition for cancellation of the patent within AFFIRMED. No pronouncement as to costs.
three (3) years from the publication of said patent with the Director of Patents
and raise as ground therefor that the person to whom the patent was issued is SO ORDERED.
not the true and actual inventor. Hence, petitioners remedy is not to file an
action for injunction or infringement but to file a petition for cancellation of
private respondent patent. Petitioner however failed to do so. As such, it can
not now assail or impugn the validity of the private respondents letters patent
by claiming that it is the true and actual inventor of the aerial fuze.
[Syllabus]

FIRST DIVISION

Rollo, pp. 40-47.


[G.R. No. 115106. March 15, 1996]
ROBERTO L. DEL ROSARIO, petitioner, vs. COURT OF APPEALS AND
JANITO CORPORATION, respondents.
DECISION
BELLOSILLO, J.:
Roberto del Rosario petitions this Court to review the decision of the
Court of Appeals which set aside the order of the Regional Trial Court of
Makati granting a writ of preliminary injunction in his favor.
The antecedents: On 18 January 1993 petitioner filed a complaint for
patent infringement against private respondent Janito Corporation. Roberto L.
del Rosario alleged that he was a patentee of an audio equipment and
improved audio equipment commonly known as the sing-along system or
karaoke under Letters Patent No. UM-5269 dated 2 June 1983 as well as
Letters Patent No. UM-6237 dated 14 November 1986 issued by the Director
of Patents. The effectivity of both Letters Patents was for five (5) years and
was extended for another five (5) years starting 2 June 1988 and 14
November 1991, respectively. He described his sing-along system as a
handy multi-purpose compact machine which incorporates an amplifier
speaker, one or two tape mechanisms, optional tuner or radio and
microphone mixer with features to enhance ones voice, such as the echo or
reverb to stimulate an opera hall or a studio sound, with the whole system
enclosed in one cabinet casing.
In the early part of 1990 petitioner learned that private respondent was
Rollo, pp. 40-47.
manufacturing a sing-along system bearing the trademark miyata or miyata
karaoke substantially similar if not identical to the sing-along system covered
by the patents issued in his favor. Thus he sought from the trial court the
issuance of a writ of preliminary injunction to enjoin private respondent, its
officers and everybody elsewhere acting on its behalf, from using, selling and
advertising the miyata or miyata karaoke brand, the injunction to be made
permanent after trial, and praying for damages, attorneys fees and costs of
suit.
On 5 February 1993 the trial court temporarily restrained private
respondent from manufacturing, using and/or selling and advertising the
miyata sing-along system or any sing-along system substantially identical to
the sing-along system patented by petitioner until further orders.
On 24 February 1993 the trial court issued a writ of preliminary injunction
upon a bond on the basis of its finding that petitioner was a holder of a utility
model patent for a sing-along system and that without his approval and
consent private respondent was admittedly manufacturing and selling its own
sing-along system under the brand name miyata which was substantially
similar to the patented utility model of petitioner.
Private respondent assailed the order of 24 February 1993 directing the
issuance of the writ by way of a petition for certiorari with prayer for the
issuance of a writ of preliminary injunction and a temporary restraining order
before respondent Court of Appeals.
On 15 November 1993 respondent appellate court granted the writ and
set aside the questioned order of the trial court. It expressed the view that
there was no infringement of the patents of petitioner by the fact alone that
private respondent had manufactured the miyata karaoke or audio system,
and that the karaoke system was a universal product manufactured,
advertised and marketed in most countries of the world long before the
patents were issued to petitioner. The motion to reconsider the grant of the
writ was denied; hence, the instant petition for review.
 This petition alleges that: (a) it was improper for the Court of Appeals to
consider questions of fact in a certiorari proceeding; (b) the Court of Appeals
erred in taking judicial notice of private respondents self-serving presentation
of facts; (c) the Court of Appeals erred in disregarding the findings of fact of
the trial court; and, (d) there was no basis for the Court of Appeals to grant a
writ of preliminary injunction in favor of private respondent.
Petitioner argues that in a certiorari proceeding, questions of fact are not
generally permitted the inquiry being limited essentially to whether the
tribunal has acted without or in excess of jurisdiction or with grave abuse of
discretion; that respondent court should not have disturbed but respected
instead the factual findings of the trial court; that the movant has a clear legal
right to be protected and that there is a violation of such right by private
respondent. Thus, petitioner herein claims, he has satisfied the legal
requisites to justify the order of the trial court directing the issuance of the writ
of injunction. On the other hand, in the absence of a patent to justify the
manufacture and sale by private respondent of sing-along systems, it is not
entitled to the injunctive relief granted by respondent appellate court.
The crux of the controversy before us hinges on whether respondent
Court of Appeals erred in finding the trial court to have committed grave
abuse of discretion in enjoining private respondent from manufacturing,
selling and advertising the miyata karaoke brand sing-along system for being
substantially similar if not identical to the audio equipment covered by letters
patent issued to petitioner.
Injunction is a preservative remedy for the protection of substantive
rights or interests. It is not a cause of action in itself but merely a provisional
remedy, an adjunct to a main suit. The controlling reason for the existence of
the judicial power to issue the writ is that the court may thereby prevent a
threatened or continuous irremediable injury to some of the parties before
their claims can be thoroughly investigated and advisedly adjudicated. It is to
be resorted to only when there is a pressing necessity to avoid injurious
Rollo, pp. 40-47.
consequences which cannot be remedied under any standard of
compensation. The application of the writ rests upon an alleged existence of
an emergency or of a special reason for such an order before the case can be
regularly heard, and the essential conditions for granting such temporary
injunctive relief are that the complaint alleges facts which appear to be
sufficient to constitute a cause of action for injunction and that on the entire
showing from both sides, it appears, in view of all the circumstances, that the
injunction is reasonably necessary to protect the legal rights of plaintiff
pending the litigation.
A preliminary injunction may be granted at any time after the
commencement of the action and before judgment when it is established that
the defendant is doing, threatens, or is about to do, or is procuring or suffering
to be done, some act probably in violation of the plaintiffs rights. Thus, there
are only two requisites to be satisfied if an injunction is to issue, namely, the
existence of the right to be protected, and that the facts against which the
injunction is to be directed are violative of said right.
For the writ to issue the interest of petitioner in the controversy or the
right he seeks to be protected must be a present right, a legal right which must
be shown to be clear and positive.
In this regard Sec. 55 of R.A. 165 as amended, known as The Patent
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) new model or 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 panel, a first loud speaker fitted inside said first compartment of
herein provide x x x such first casing and connected to the output of said transistorized
amplifier circuit; the improvement wherein said control panel being
Admittedly, petitioner is a holder of Letters Patent No. UM-5629 dated 2
removably fitted to said first cubical casing and further comprises a
June 1985 issued for a term of five (5) years from the grant of a Utility Model
set of tape recorder and tape player mounted on the vertical section
herein described
of said control panel and said recorder and player are likewise
The construction of an audio equipment comprising a connected to said transistorized amplifier circuit; a second cubical
substantially cubical casing having a window at its rear and upper casing having an opening at its rear, said second cubical casing
corner fitted with a slightly inclined control panel, said cubical having (being ?) provided with a vertical partition therein defining a
(casing) having a vertical partition wall therein defining a rear rear compartment and a front compartment, said rear compartment
compartment and a front compartment, and said front compartment being provided with a door and enclosing therein a set of tape racks
serving as a speaker baffle; a transistorized amplifier circuit having and said front compartment serving as loud speaker baffle, said
an echo section and writhed in at least the printed circuit boards second cubical casing being adapted to said first cubical casing so
placed inside said rear compartment of said casing and attached to that said first and second casings are secured together in compact
said vertical partition wall, said transistorized amplifier circuit and portable form; and a second loud speaker fitted inside said front
capable of being operated from outside, through various controls compartment of said casing and connected to the output of said
mounted on said control panel of such casing; a loud speaker fitted amplifier circuit.
inside said front compartment of said casing and connected to the
The terms of both Letters Patents were extended for another five (5)
output of the main audio amplifier section of said transistorized
years each, the first beginning 2 June 1988 and the second, 14 November
amplifier circuit and a tape player mounted on the top wall of said
1991.
casing and said tape player being connected in conventional
manner to said transistorized amplifier circuit. The Patent Law expressly acknowledges that any new model of
implements or tools of any industrial product even if not possessed of the
Again, on 14 November 1986 petitioner was granted Letters Patent No.
quality of invention but which is of practical utility is entitled to a patent for
UM-6237 for a term of five (5) years from the grant of a Utility Model described
utility model. Here, there is no dispute that the letters patent issued to
as
petitioner are for utility models of audio equipment.
In an audio equipment consisting of a first cubical casing
In issuing, reissuing or withholding patents and extensions thereof, the
having an opening at its rear and upper rear portion and a partition
Director of Patents determines whether the patent is new and whether the
therein forming a rear compartment and a front compartment
machine or device is the proper subject of patent. In passing on an application,
serving as a loud speaker baffle, a control panel formed by vertical
the Director decides not only questions of law but also questions of fact, i.e.
and horizontal sections, a transistorized amplifier circuit wired in at
whether there has been a prior public use or sale of the article sought to be
least two printed circuit boards attached at the back of said control

Rollo, pp. 40-47.

patented. Where petitioner introduces the patent in evidence, if it is in due Q. Now you will agree with me that in your statement Sharp you
form, it affords a prima facie presumption of its correctness and validity. The put the date as 1985 agreed?
decision of the Director of Patents in granting the patent is always presumed
A. No.
to be correct, and the burden then shifts to respondent to overcome this
presumption by competent evidence. Q. You mean your lawyer was wrong when he put the word Sharp
1985?
Under Sec. 55 of The Patent Law a utility model shall not be considered
new if before the application for a patent it has been publicly known or publicly A. Maybe I informed him already.
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 xxx xxx xxx
other utility model so known, used or described within the country. Q. You mean your lawyer was wrong in alleging to this Court that
Respondent corporation failed to present before the trial court competent Sharp manufactured and sold (in) 1985 as found in the Urgent
evidence that the utility models covered by the Letters Patents issued to Motion?
petitioner were not new. This is evident from the testimony of Janito Cua,
President of respondent Janito Corporation, during the hearing on the A. Since it is urgent it is more or less.
issuance of the injunction, to wit -
Q. The same also with Sanyo 1985 which you put, more or less?
Q. Mr. Cua, you testified that there are (sic) so many other
A. Sanyo is wrong.
companies which already have (sic) the sing-along system
even before the patent application of Mr. del Rosario and as a Q. It is not 1985?
matter of fact you mentioned Sanyo, Sony and Sharp, is that
right? A. Sanyo is 1979 I think.

A. Musicmate and Asahi. Q. So this is also wrong. Panasonic 1986 is also wrong?

Q. Now do you recall that your lawyer filed with this Honorable A. Panasonic I think.
Court an Urgent Motion to Lift Temporary Restraining Order of Q. So you dont think this is also correct.
this Honorable Court. I am sure you were the one who
provided him with the information about the many other A. The date?
companies selling the sing-along system, is that right? These Q. So you dont think also that this allegation here that they
18 which you enumerated here. manufactured in 1986 is correct?
A. More than that because x x x A. Wrong. Earlier.

Rollo, pp. 40-47.

 Q. National by Precision Electronic 1986 this is also wrong? Q. Now do you have any proof, any advertisement, anything in
writing that would show that all these instruments are in the
A. I think earlier.
market, do you have it?
Q. So that means all your allegations here from 2 to 5 are wrong?
A. No, I dont have it because x x x
OK. By Philipps Philippines 1986, this is also correct or wrong?
Q. No. I am satisfied with your answer. Now Mr. Witness, you
A. More or less. We said more or less.
dont also have a proof that Akai instrument that you said was
Q. Nakabutshi by Asahi Electronics that is also wrong? also in the market before 1982? You dont have any written
proof. any advertisement?
A. No, that is 1979.
A. I have the product.
Q. Electone by DICO 1989 is this correct or wrong?
Q. But you have not brought the product in (sic) this Honorable
A. Correct. More or less. Court, right?
Q. Skylers 1985 is that correct or wrong? A. No.
A. It is more or less because it is urgent. We dont have time to As may be gleaned herein, the rights of petitioner as a patentee have
exact the date. been sufficiently established, contrary to the findings and conclusions of
Q. Musicmate of G.A. Yupangco 1981 this is more or less? You respondent Court of Appeals. Consequently, under Sec. 37 of The Patent law,
are not also sure? petitioner as a patentee shall have the exclusive right to make, use and sell
the patented machine, article or product for the purpose of industry or
A. 95% sure. commerce, throughout the territory of the Philippines for the term of the patent,
and such making, using or selling by any person without authorization of the
Q. Now you are sure 1981.
patentee constitutes infringement of his patent.
A. This one because x x x
Petitioner established before the trial court that respondent Janito
Q. Mr. Witness so you are now trying to tell this Honorable Court Corporation was manufacturing a similar sing-along system bearing the
that all your allegations here of the dates in this Urgent Motion trademark miyata which infringed his patented models. He also alleged that
except for Musicmate which you are only 95% sure they are all both his own patented audio equipment and respondents sing-along system
wrong or they are also more or less or not sure, is that right? were constructed in a casing with a control panel, the casing having a vertical
partition wall defining the rear compartment from the front compartment, with
A. More or less. the front compartment consisting of a loud speaker baffle, both containing a
transistorized amplifier circuit capable of being operated from outside through

Rollo, pp. 40-47.

various controls mounted on the control panel, and that both had loud Fourth. Under Utility Model 5269, 4 printed circuits are placed inside the
speakers fitted inside the front compartment of the casing and connected to compartment of its casing attached to the vertical partition wall, while in the
the output of the main audio amplifier section both having a tape recorder and miyata, the 7 printed circuit boards (PCB) are attached to the front panel and
a tape player mounted on the control panel with the tape recorder and tape 1 attached to the horizontal divider.
player being both connected to the transistorized amplifier circuit.
Fifth. Under Utility Model 5269, there are various controls mounted on
Respondent Janito Corporation denied that there was any violation of the control panel of the casing, while in miyata, the various controls are all
petitioners patent rights, and cited the differences between its miyata separated from the printed circuit boards and the various controls are all
equipment and petitioners audio equipment. But, it must be emphasized, attached thereto.
respondent only confined its comparison to the first model, Utility Model No.
Sixth. Under Utility Model 5269, a loud speaker fitted inside the front
5269, and completely disregarded Utility Model No. 6237 which improved on
compartment of the casing is connected to the output of the main audio
the first. As described by respondent corporation, these differences are
amplifier section of the transistorized amplifier circuit, while in miyata, there is
First. Under Utility Model 5269, the unit is a substantially cubical casing no other way but to use 2 loud speakers connected to the amplifier.
with a window at its rear and upper corner fitted with slightly inclined control
Seventh. Under Utility Model 5269, a tape player is mounted on the top
panel, while the miyata equipment is a substantially rectangular casing with
wall of the casing, while in miyata, 2 tape players are used mounted side by
panel vertically positioned.
side at the front.
Second. Under Utility Model 5269, the cubical casing has a vertical
It is elementary that a patent may be infringed where the essential or
partition wall defining a rear compartment and a front compartment serving as
substantial features of the patented invention are taken or appropriated, or
a speaker baffle, while the miyata equipment has no rear compartment and
the device, machine or other subject matter alleged to infringe is substantially
front compartment in its rectangular casing; it has only a front compartment
identical with the patented invention. In order to infringe a patent, a machine
horizontally divided into 3 compartments like a 3-storey building, the 1st
or device must perform the same function, or accomplish the same result by
compartment being a kit, the 2nd also the speaker, and the 3rd are kits.
identical or substantially identical means and the principle or mode of
Third. Under Utility Model No. 5269, a transistorized amplifier circuit with operation must be substantially the same.
an echo section wired in at least 2 printed circuit boards is placed inside the
It may be noted that respondent corporation failed to present before the
rear compartment of the casing and attached to the vertical partition wall, the
trial court a clear, competent and reliable comparison between its own model
printed circuit board having 1 amplifier and 1 echo, while in the miyata
and that of petitioner, and disregarded completely petitioners Utility Model No.
equipment the amplifier is mainly IC (Integrated Circuit) - powered with 8
6237 which improved on his first patented model. Notwithstanding the
printed circuit boards almost all of which are IC controlled, with 1 amplifier
differences cited by respondent corporation, it did not refute and disprove the
with power supply, 1 main tuner, 1 equalizer (3-band), 1 IC controlled volume
allegations of petitioner before the trial court that: (a) both are used by a
control, 1 echo IC, 1 tape pream, 1 instrument and 1 wireless microphone.
singer to sing and amplify his voice; (b) both are used to sing with a

Rollo, pp. 40-47.

minus-one or multiplex tapes, or that both are used to play minus-one or
standard cassette tapes for singing or for listening to; (c) both are used to sing
with a minus-one tape and multiplex tape and to record the singing and the
accompaniment; (d) both are used to sing with live accompaniment and to Republic of the Philippines
record the same; (e) both are used to enhance the voice of the singer using SUPREME COURT
echo effect, treble, bass and other controls; (g) both are equipped with Manila
cassette tape decks which are installed with one being used for playback and
the other, for recording the singer and the accompaniment, and both may also THIRD DIVISION
be used to record a speakers voice or instrumental playing, like the guitar and
other instruments; (h) both are encased in a box-like cabinets; and, (i) both
can be used with one or more microphones.
G.R. No. 97343 September 13, 1993
Clearly, therefore, both petitioners and respondents models involve
substantially the same modes of operation and produce substantially the
same if not identical results when used. PASCUAL GODINES, petitioner,
vs.
In view thereof, we find that petitioner had established before the trial THE HONORABLE COURT OF APPEALS, SPECIAL FOURTH DIVISION
court prima facie proof of violation of his rights as patentee to justify the and SV-AGRO ENTERPRISES, INC., respondents.
issuance of a writ of preliminary injunction in his favor during the pendency of
the main suit for damages resulting from the alleged infringement. Jesus S. Anonat for petitioner.
WHEREFORE, the Decision of the Court of Appeals dated 15 November
1993 is REVERSED and SET ASIDE and the Order of the trial court dated 24 Arturo M. Alinio for private respondent.
February 1993 granting petitioner the writ of injunction is REINSTATED.
ROMERO, J.:
The trial court is directed to continue with the proceedings on the main
action pending before it in order to resolve with dispatch the issues therein
Through this petition for review in certiorari of a decision of the Court of
presented.
Appeals affirming the decision of the trial court, petitioner Pascual Godines
SO ORDERED. seeks to reverse the adverse decision of the Court a quo that he was liable
for infringement of patent and unfair competition. The dispositive portion of
Padilla (Chairman), Vitug, Kapunan, and Hermosisima, Jr., JJ., concur the assailed decision is hereby quoted to wit:

Rollo, pp. 40-47.

WHEREFORE, with the elimination of the award for attorney's fees, the
judgment appealed from is hereby AFFIRMED, with costs against appellant.
1
The patent involved in this case is Letters Patent No. UM-2236 issued by the
Philippine Patent Office to one Magdalena S. Villaruz on July 15, 1976. It
covers a utility model for a hand tractor or power tiller, the main components
of which are the following: "(1) a vacuumatic house float; (2) a harrow with
adjustable operating handle; (3) a pair of paddy wheels; (4) a protective
water covering for the engine main drive; (5) a transmission case; (6) an
operating handle; (7) an engine foundation on the top midportion of the
vacuumatic housing float to which the main engine drive is detachedly
installed; (8) a frontal frame extension above the quarter circularly shaped
water covering hold (sic) in place the transmission case; (9) a V-belt
connection to the engine main drive with transmission gear through the
pulley, and (10) an idler pulley installed on the engine foundation." 2 The
patented hand tractor works in the following manner: "the engine drives the
transmission gear thru the V-belt, a driven pulley and a transmission shaft.
The engine drives the transmission gear by tensioning of the V-belt which is
controlled by the idler pulley. The V-belt drives the pulley attached to the
transmission gear which in turn drives the shaft where the paddy wheels are
attached. The operator handles the hand tractor through a handle which is
inclined upwardly and supported by a pair of substanding pipes and
reinforced by a U-shaped G.I. pipe at the V-shaped end." 3
The above mentioned patent was acquired by SV-Agro Industries
Enterprises, Inc., herein private respondent, from Magdalena Villaruz, its
chairman and president, by virtue of a Deed of Assignment executed by the
latter in its favor. On October 31, 1979, SV-Agro Industries caused the
publication of the patent in Bulletin Today, a newspaper of general
circulation.
Rollo, pp. 40-47.
In accordance with the patent, private respondent manufactured and sold the
patented power tillers with the patent imprinted on them. In 1979, SV-Agro
Industries suffered a decline of more than 50% in sales in its Molave,
Zamboanga del Sur branch. Upon investigation, it discovered that power
tillers similar to those patented by private respondent were being
manufactured and sold by petitioner herein. Consequently, private
respondent notified Pascual Godines about the existing patent and
demanded that the latter stop selling and manufacturing similar power tillers.
Upon petitioner's failure to comply with the demand, SV-Agro Industries filed
before the Regional Trial Court a complaint for infringement of patent and
unfair competition.
After trial, the court held Pascual Godines liable for infringement of patent
and unfair competition. The dispositive portion of the decision reads as
follows:
WHEREFORE, premises considered, JUDGMENT is hereby rendered in
favor of the plaintiff SV-Agro Industries Enterprises, Inc., and against
defendant Pascual Godines:
1. Declaring the writ of preliminary injunction issued by this Court against
defendant as permanent;
2. Ordering defendant Pascual Godines to pay plaintiff the sum of Fifty
Thousand Pesos (P50,000.00) as damages to its business reputation and
goodwill, plus the further sum of Eighty Thousand Pesos (P80,000.00) for
unrealized profits during the period defendant was manufacturing and selling
copied or imitation floating power tiller;
3. Ordering the defendant to pay the plaintiff, the further sum of Eight
Thousand Pesos (P8,000.00) as reimbursement of attorney's fees and other
expenses of litigation; and to pay the costs of the suit.
SO ORDERED. 4
The decision was affirmed by the appellate court.
Thereafter, this petition was filed. Petitioner maintains the defenses which he
raised before the trial and appellate courts, to wit: that he was not engaged in
the manufacture and sale of the power tillers as he made them only upon the
special order of his customers who gave their own specifications; hence, he
could not be liable for infringement of patent and unfair competition; and that
those made by him were different from those being manufactured and sold
by private respondent.
We find no merit in his arguments. The question of whether petitioner was
manufacturing and selling power tillers is a question of fact better addressed
to the lower courts. In dismissing the first argument of petitioner herein, the
Court of Appeals quoted the findings of the court, to wit:
It is the contention of defendant that he did not manufacture or make
imitations or copies of plaintiff's turtle power tiller as what he merely did was
to fabricate his floating power tiller upon specifications and designs of those
who ordered them. However, this contention appears untenable in the light of
the following circumstances: 1) he admits in his Answer that he has been
manufacturing power tillers or hand tractors, selling and distributing them
long before plaintiff started selling its turtle power tiller in Zamboanga del Sur
and Misamis Occidental, meaning that defendant is principally a
manufacturer of power tillers, not upon specification and design of buyers,
but upon his own specification and design; 2) it would be unbelievable that
Rollo, pp. 40-47.
defendant would fabricate power tillers similar to the turtle power tillers of
plaintiff upon specifications of buyers without requiring a job order where the
specification and designs of those ordered are specified. No document was
(sic) ever been presented showing such job orders, and it is rather unusual
for defendant to manufacture something without the specification and
designs, considering that he is an engineer by profession and proprietor of
the Ozamis Engineering shop. On the other hand, it is also highly unusual for
buyers to order the fabrication of a power tiller or hand tractor and allow
defendant to manufacture them merely based on their verbal instructions.
This is contrary to the usual business and manufacturing practice. This is not
only time consuming, but costly because it involves a trial and error method,
repeat jobs and material wastage. Defendant judicially admitted two (2) units
of the turtle power tiller sold by him to Policarpio Berondo. 5
Of general acceptance is the rule imbedded in our jurisprudence that ". . . the
jurisdiction of the Supreme Court in cases brought to it from the Court of
Appeals in a petition for certiorari under Rule 45 of the Rules of Court is
limited to the review of errors of law, and that said appellate court's findings
of fact are conclusive upon this Court." 6
The fact that petitioner herein manufactured and sold power tillers without
patentee's authority has been established by the courts despite petitioner's
claims to the contrary.
The question now arises: Did petitioner's product infringe upon the patent of
private respondent?
Tests have been established to determine infringement. These are (a) literal
infringement; and (b) the doctrine of equivalents. 7 In using literal
infringement as a test, ". . . resort must be had, in the first instance, to the
words of the claim. If accused matter clearly falls within the claim,
infringement is made out and that is the end of it." 8 To determine whether the
particular item falls within the literal meaning of the patent claims, the court
must juxtapose the claims of the patent and the accused product within the
overall context of the claims and specifications, to determine whether there is
exact identity of all material elements. 9
The trial court made the following observation:
Samples of the defendant's floating power tiller have been produced and
inspected by the court and compared with that of the turtle power tiller of the
plaintiff (see Exhibits H to H-28). In appearance and form, both the floating
power tillers of the defendant and the turtle power tiller of the plaintiff are
virtually the same. Defendant admitted to the Court that two (2) of the power
inspected on March 12, 1984, were manufactured and sold by him (see TSN,
March 12, 1984, p. 7). The three power tillers were placed alongside with
each other. At the center was the turtle power tiller of plaintiff, and on both
sides thereof were the floating power tillers of defendant (Exhibits H to H-2).
Witness Rodrigo took photographs of the same power tillers (front, side, top
and back views for purposes of comparison (see Exhibits H-4 to H-28).
Viewed from any perspective or angle, the power tiller of the defendant is
identical and similar to that of the turtle power tiller of plaintiff in form,
configuration, design and appearance. The parts or components thereof are
virtually the same. Both have the circularly-shaped vacuumatic housing float,
a paddy in front, a protective water covering, a transmission box housing the
transmission gears, a handle which is V-shaped and inclined upwardly,
attached to the side of the vacuumatic housing float and supported by the
upstanding G.I. pipes and an engine base at the top midportion of the
vacuumatic housing float to which the engine drive may be attached. In
operation, the floating power tiller of the defendant operates also in similar
manner as the turtle power tiller of plaintiff. This was admitted by the
defendant himself in court that they are operating on the same principles.
(TSN, August 19, 1987, p. 13) 10
Rollo, pp. 40-47.
Moreover, it is also observed that petitioner also called his power tiller as a
floating power tiller. The patent issued by the Patent Office referred to a
"farm implement but more particularly to a turtle hand tractor having a
vacuumatic housing float on which the engine drive is held in place, the
operating handle, the harrow housing with its operating handle and the
paddy wheel protective covering." 11 It appears from the foregoing
observation of the trial court that these claims of the patent and the features
of the patented utility model were copied by petitioner. We are compelled to
arrive at no other conclusion but that there was infringement.
Petitioner's argument that his power tillers were different from private
respondent's is that of a drowning man clutching at straws.
Recognizing that the logical fallback position of one in the place of defendant
is to aver that his product is different from the patented one, courts have
adopted the doctrine of equivalents which recognizes that minor
modifications in a patented invention are sufficient to put the item beyond the
scope of literal infringement. 12 Thus, according to this doctrine, "(a)n
infringement also occurs when a device appropriates a prior invention by
incorporating its innovative concept and, albeit with some modification and
change, performs substantially the same function in substantially the same
way to achieve substantially the same result." 13 The reason for the doctrine
of equivalents is that to permit the imitation of a patented invention which
does not copy any literal detail would be to convert the protection of the
patent grant into a hollow and useless thing. Such imitation would leave
room for indeed encourage the unscrupulous copyist to make
unimportant and insubstantial changes and substitutions in the patent which,
though adding nothing, would be enough to take the copied matter outside
the claim, and hence outside the reach of the law. 14
In this case, the trial court observed:
Defendant's witness Eduardo Caete, employed for 11 years as welder of
the Ozamis Engineering, and therefore actually involved in the making of the
floating power tillers of defendant tried to explain the difference between the
floating power tillers made by the defendant. But a careful examination
between the two power tillers will show that they will operate on the same
fundamental principles. And, according to establish jurisprudence, in
infringement of patent, similarities or differences are to be determined, not by
the names of things, but in the light of what elements do, and substantial,
rather than technical, identity in the test. More specifically, it is necessary
and sufficient to constitute equivalency that the same function can be
performed in substantially the same way or manner, or by the same or
substantially the same, principle or mode of operation; but where these tests
are satisfied, mere differences of form or name are immaterial. . . . 15
It also stated:
To establish an infringement, it is not essential to show that the defendant
adopted the device or process in every particular; Proof of an adoption of the
substance of the thing will be sufficient. "In one sense," said Justice Brown,
"it may be said that no device can be adjudged an infringement that does not
substantially correspond with the patent. But another construction, which
would limit these words to exact mechanism described in the patent, would
be so obviously unjust that no court could be expected to adopt it. . . .
The law will protect a patentee against imitation of his patent by other forms
and proportions. If two devices do the same work in substantially the same
way, and accomplish substantially the same result, they are the same, even
though they differ in name, form, or shape. 16
We pronounce petitioner liable for infringement in accordance with Section
37 of Republic Act No. 165, as amended, providing, inter alia:
Rollo, pp. 40-47.
Sec. 37. Right of Patentees. A patentee shall have the exclusive right to
make, use and sell the patented machine, article or product, and to use the
patented process for the purpose of industry or commerce, throughout the
territory of the Philippines for the terms of the patent; and such making, using,
or selling by any person without the authorization of the Patentee constitutes
infringement of the patent. (Emphasis ours)
As far as the issue regarding unfair competition is concerned, suffice it to say
that Republic Act No. 166, as amended, provides, inter alia:
Sec. 29. Unfair competition, rights and remedies. . . .
xxx xxx xxx
In particular, and without in any way limiting the scope of unfair competition,
the following shall be deemed guilty of unfair competition:
(a) Any person, who in selling his goods shall give them the general
appearance of goods of another manufacturer or dealer, either as to the
goods themselves or in the wrapping of the packages in which they are
contained, or the devices or words thereon, or in any other feature of their
appearance, which would be likely to influence purchasers that the goods
offered are those of a manufacturer or dealer other than the actual
manufacturer or dealer, or who otherwise clothes the goods with such
appearance as shall deceive the public and defraud another of his legitimate
trade. . . .
xxx xxx xxx
Considering the foregoing, we find no reversible error in the decision of the
Court of Appeals affirming with modification the decision of the trial court.
WHEREFORE, premises considered, the decision of the Court of Appeals is
hereby AFFIRMED and this petition DENIED for lack of merit.
Republic of the Philippines
SUPREME COURT
Manila
SECOND DIVISION
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.
Ambrosio Padilla Law Offices for petitioner.
PARAS, J.:p
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, 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
Rollo, pp. 40-47.
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:
1. UM-423 (extended and/or renewed under Extension No. UM-109 for a
period of 5 years from October 6, 1971)
2. UM-450 (extended and/or renewed under Extension No. UM110 for a
period of 5 years from January 26, 1972)
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 UM-110 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).
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).
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:
(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
(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.
Rollo, pp. 40-47.
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).
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 infringement upon or violating
said letters patent in any way whatsoever (Annex " K-1 ", Rollo, p. 131).
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).
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:
(1) Order dated September 18, 1974, granting the preliminary injunction;
(2) Writ of preliminary injunction dated September 18, 1974; and
(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:
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 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)
Rollo, pp. 40-47.
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.
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).
Feeling aggrieved, private respondent moved to reconsider the
afore-mentioned Decision based on the following grounds:
I
THAT THIS HONORABLE COURT ERRED IN NOT APPRECIATING THE
EXISTENCE OF A FAIR QUESTION OF INVALIDITY OF PRIVATE
RESPONDENT'S 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).
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
quo had 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.
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:
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.
SO ORDERED. (CA Resolution, Rollo, p. 226).
Rollo, pp. 40-47.
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.
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:
(1) Whether or not in an action for infringement the Court a quo had
jurisdiction to determine the invalidity of the patents at issue which invalidity
was still pending consideration in the patent office.
(2) Whether or not the Court a quo committed grave abuse of discretion in
the issuance of a writ of preliminary injunction.
(3) Whether or not certiorari is the proper remedy.
The first issue has been laid to rest in a number of cases where the Court
ruled that "When a patent is sought to be enforced, the questions of invention,
novelty or prior use, and each of them, are open to judicial examination."
(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]).
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).
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 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.
Rollo, pp. 40-47.
The question then in the instant case is whether or not the evidence
introduced by private respondent herein is sufficient to overcome said
presumption.
After a careful review of the evidence consisting of 64 exhibits and oral
testimonies of five witnesses presented by private respondents before the
Court of First Instance before the Order of preliminary injunction was issued
as well as those presented by the petitioner, respondent Court of Appeals
was satisfied that there is a prima facie showing of a fair question of invalidity
of petitioner's patents on the ground of lack of novelty. As pointed out by said
appellate court said evidence appeared not to have been considered at all by
the court a quo for alleged lack of jurisdiction, on the mistaken notion that
such question in within the exclusive jurisdiction of the patent office.
It has been repeatedly held that an invention must possess the essential
elements of novelty , originality and precedence and for the patentee to be
entitled to protection, the invention must be new to the world. Accordingly, a
single instance of public use of the invention by a patentee for more than two
years (now for more than one year only under Sec. 9 of the Patent Law)
before the date of his application for his patent, will be fatal to, the validity of
the patent when issued. (Frank, et al. v. Kosuyama Vargas v. F.M. Yaptico &
Co. and Vargas v. Chua, et al., supra).
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 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.
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)
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).
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,
evaluated and determined on the merits so that the matter of whether the
Rollo, pp. 40-47.
patents issued were in fact valid or not may be resolved." (Rollo, pp.
286-287).
All these notwithstanding, the trial court nonetheless issued the writ of
preliminary injunction which under the circumstances should be denied.
For failure to determine first the validity of the patents before aforesaid
issuance of the writ, the trial court failed to satisfy the two requisites
necessary if an injunction is to issue, namely: the existence of the right to be
protected and the violation of said right. (Buayan Cattle Co., Inc. v. Quintillan,
128 SCRA 276).
Under the above established principles, it appears obvious that the trial court
committed a grave abuse of discretion which makes certiorari the
appropriate remedy.
As found by respondent Court of Appeals, the injunctive order of the trial
court is of so general a tenor that petitioner may be totally barred from the
sale of any kind of powder puff. Under the circumstances, respondent
appellate court is of the view that ordinary appeal is obviously inadequate.
(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."
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 certiorari from the Alampay, J., took no part.
resolutions of respondent Court of Appeals. (Rollo, pp. 291-292).

Such contention is untenable.

Footnotes
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 * Justice Alampay took no part. Justice Feliciano was designated to sit in the
provided in Section 5, Rule 65 of the Revised Rules of Court where it shall be Second Division.
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." The Lawphil Project - Arellano Law Foundation

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.

PREMISES CONSIDERED, the assailed resolutions of the Court of Appeals

are hereby AFFIRMED.

SO ORDERED.

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

Rollo, pp. 40-47.

Rollo, pp. 40-47.