VOL.
278, SEPTEMBER 5, 1997 cancellation petitioner further alleged that (a) the
691
Manzano vs. Court of Appeals
PETITION for review on certiorari of a decision of
the Court of Appeals.
The facts are stated in the opinion of the Court.
O.F. Santos and P.C. Nolasco for petitioner.
Sioson, San Diego & Associates for private
respondent.
BELLOSILLO, J.:
The primary purpose of the patent system is not the
reward of the individual but the advancement of the
arts and sciences. The function of a patent is to add
to the sum of useful knowledge and one of the
purposes of the patent system is to encourage
dissemination of information concerning discoveries
and inventions. This is a matter which is properly
within the competence of the Patent Office the
official action of which has the presumption of
correctness and may not be interfered with in the
absence of new evidence carrying thorough
conviction that the Office has erred. Since the Patent
Office is an expert body preeminently qualified to
determine questions of patentability, its findings
must be accepted if they are consistent with the
evidence, with doubts as to patentability resolved in
favor of the Patent Office.1
Petitioner Angelita Manzano filed with the
Philippine Patent Office on 19 February 1982 an
action for the cancellation of Letters Patent No. UM-
4609 for a gas burner registered in the name of
respondent Melecia Madolaria who subsequently
assigned the letters patent to New United Foundry
and Manufacturing Corporation (UNITED
FOUNDRY, for brevity). Petitioner alleged that (a)
the utility model covered by the letters patent, in
this case, an LPG gas burner, was not inventive, new
or useful; (b) the specification of the letters patent
did not comply with the requirements of Sec. 14, RA
No. 165, as amended; (c) respondent Melecia
Madolaria was not the original, true and actual
inventor nor did she derive her rights from the
original, true and actual inventor of the utility model
covered by the letters patent; and, (d) the letters
patent was secured by means of fraud or
misrepresentation. In support of her petition for
utility model covered by the letters patent of
respondent had been known or used by others in the
Philippines for more than one (1) year before she
filed her application for letters patent on 9 December
1979; (b) the products which were produced in
accordance with the utility model covered by the
letters patent had been in public use or on sale in the
Philippines for more than one (1) year before the
application for patent therefor was filed.
Petitioner presented the following documents which
she correspondingly marked as exhibits: (a) affidavit
of petitioner alleging the existence of prior art,
marked Exh. “A”; (b) a brochure distributed by
Manila Gas Corporation disclosing a pictorial
representation of Ransome Burner made by
Ransome Torch and Burner Company, USA, marked
Exh. “D”; and, (c) a brochure distributed by Esso
Gasul or Esso Standard Eastern, Inc., of the
Philippines showing a picture of another similar
burner with top elevation view and another
perspective view of the same burner, marked Exh.
“E.”
Testifying for herself petitioner narrated that her
husband Ong Bun Tua worked as a helper in the
UNITED FOUNDRY where respondent Melecia
Madolaria used to be affiliated with from 1965 to
1970; that Ong helped in the casting of an LPG
burner which was the same utility model of a burner
for which Letters Patent No. UM-4609 was issued,
and that after her husband’s separation from the
shop she organized Besco Metal Manufacturing
(BESCO METAL, for brevity) for the casting of LPG
burners one of which had the configuration, form
and component parts similar to those being
manufactured by UNITED FOUNDRY. Petitioner
presented in evidence an alleged model of an LPG
burner marked Exh. “K” and covered by the Letters
Patent of respondent, and testified that it was given
to her in January 1982 by one of her customers who
allegedly acquired it from UNITED FOUNDRY.
Petitioner also presented in evidence her own model
of an LPG burner called “Ransome” burner marked
Exh. “L,” which was allegedly manufactured in 1974
or 1975 and sold by her in the course of her business
operation in the name of BESCO METAL. Petitioner
claimed that this “Ransome” burner (Exh. “L”) had
the same configuration and mechanism as that of
the model which was patented in favor of private
respondent Melecia Madolaria. Also presented by
petitioner was a burner cup of an imported
“Ransome” burner marked Exh “M” which was
allegedly existing even before the patent application
of private respondent.
Petitioner presented two (2) other witnesses,
namely, her husband Ong Bun Tua and Fidel
Francisco. Ong testified that he worked as a helper
in the UNITED FOUNDRY from 1965 to 1970 where
he helped in the casting of LPG burners with the
same form, configuration and mechanism as that of
the model covered by the Letters Patent issued to
private respondent. Francisco testified that he had
been employed with the Manila Gas Corporation
from 1930 to 1941 and from 1952 up to 1969 where
he retired as supervisor and that Manila Gas
Corporation imported “Ransome” burners way back
in 1965 which were advertised through brochures to
promote their sale.
Private respondent, on the other hand, presented
only one witness, Rolando Madolaria, who testified,
among others, that he was the General Supervisor
of the UNITED FOUNDRY in the foundry, machine
and buffing section; that in his early years with the
company, UNITED FOUNDRY was engaged in the
manufacture of different kinds of gas stoves as well
as burners based on sketches and specifications
furnished by customers; that the company
manufactured early models of single-piece types of
burners where the mouth and throat were not
detachable; that in the latter part of 1978
respondent Melecia Madolaria confided in him that
complaints were being brought to her attention
concerning the early models being manufactured;
that he was then instructed by private respondent to
cast several experimental models based on revised
sketches and specifications; that private respondent
again made some innovations; that after a few
months, private respondent discovered the solution
to all the defects of the earlier models and, based on
her latest sketches and specifications, he was able to
cast several models incorporating the additions to
the innovations introduced in the models. Various
tests were conducted on the latest model in the
presence and under the supervision of Melecia
Madolaria and they obtained perfect results.
Rolando Madolaria testified that private respondent
decided to file her application for utility model
patent in December 1979.
On 7 July 1986 the Director of Patents Cesar C.
Sandiego issued Decision No. 86-56 denying the
petition for cancellation and holding that the
evidence of petitioner was not able to establish
convincingly that the patented utility model of
private respondent was anticipated. Not one of the
various pictorial representations of business clearly
and convincingly showed that the devices presented
by petitioner was identical or substantially identical
with the utility model of the respondent. The
decision also stated that even assuming that the
brochures depicted clearly each and every element of
the patented gas burner device so that the prior art
and patented device became identical although in
truth they were not, they could not serve as
anticipatory bars for the reason that they were
undated. The dates when they were distributed to
the public were not indicated and, therefore, were
useless prior art references. The records and
evidence also do not support the petitioner’s
contention that Letters Patent No. UM-4609 was
obtained by means of fraud and/or
misrepresentation. No evidence whatsoever was
presented by petitioner to show that the then
applicant Melecia Madolaria withheld with intent to
deceive material facts which, if disclosed, would
have resulted in the refusal by the Philippine Patent
Office to issue the Letters Patent under inquiry.
Petitioner elevated the decision of the Director of
Patents to the Court of Appeals which on 15 October
1993 affirmed the decision of the Director of Patents.
Hence, this petition for review on certiorari alleging
that the Court of Appeals erred (a) in relying on
imaginary differences which in actuality did not
exist between the model of private respondent
covered by Letters Patent No. UM-4609 and the
previously known model of Esso Standard Eastern,
Inc., and Manila Gas Corporation, making such
imaginary differences grounded entirely on
speculation, surmises and conjectures; (b) in
rendering judgment based on misapprehension of
facts; (c) in relying mainly on the testimony of
private respondent’s sole witness Rolando
Madolaria; and, (d) in not cancelling Letters Patent
No. UM-4609 in the name of private respondent.
Petitioner submits that the differences cited by the
Court of Appeals between the utility model of
private respondent and the models of Manila Gas
Corporation and Esso Standard Eastern, Inc., are
more imaginary than real. She alleges that based on
Exhs. “E,” “E-1,” “F” and “F-1” or the brochures of
Manila Gas Corporation and Esso Standard
Eastern, Inc., presented by petitioner, the cup-
shaped burner mouth and threaded hole on the side
are shown to be similar to the utility model of private
respondent. The exhibits also show a detachable
burner mouth having a plurality of upwardly
existing undulations adopted to act as gas passage
when the cover is attached to the top of said cup-
shaped mouth all of which are the same as those in
the patented model. Petitioner also denies as
substantial difference the short cylindrical tube of
the burner mouth appearing in the brochures of the
burners being sold by Manila Gas Corporation and
the long cylindered tube of private respondent’s
model of the gas burner.
Petitioner argues that the actual demonstration
made during the hearing disclosed the similarities
in form, operation and mechanism and parts
between the utility model of private respondent and
those depicted in the brochures. The findings of the
Patent Office and the Court of Appeals that the
brochures of Manila Gas Corporation and Esso
Standard Eastern, Inc., are undated cannot
overcome the fact of their circulation before private
respondent filed her application for utility model
patent. Petitioner thus asks this Court to take
judicial notice of the fact that Esso Standard
Eastern, Inc., disappeared before 1979 and
reappeared only during the Martial Law years as
Petrophil Corporation. Petitioner also emphasizes
that the brochures indicated the telephone number
of Manila Gas Corporation as 5-79-81 which is a five
(5) numbered telephone number existing before 1975
because telephones in Metro Manila started to have
six (6) numbers only after that year.
Petitioner further contends that the utility model of
private respondent is absolutely similar to the LPG
burner being sold by petitioner in 1975 and 1976,
and also to the “Ransome” burner depicted in the old
brochures of Manila Gas Corporation and Esso
Standard Eastern, Inc., fabricated by Ransome
Torch and Burner Company of Oakland, California,
USA, especially when considered through actual
physical examination, assembly and disassembly of
the models of petitioner and private respondent.
Petitioner faults the Court of Appeals for
disregarding the testimonies of Ong Bun Tua and
Fidel Francisco for their failure to produce
documents on the alleged importation by Manila
Gas Corporation of “Ransome” burners in 1965
which had the same configuration, form and
mechanism as that of the private respondent’s
patented model.
Finally, it is argued that the testimony of private
respondent’s lone witness Rolando Madolaria should
not have been given weight by the Patent Office and
the Court of Appeals because it contained mere
after-thoughts and pretensions.
We cannot sustain petitioner. Section 7 of RA No.
165, as amended, which is the law on patents,
expressly provides—
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.
Further, Sec. 55 of the same law provides—
Sec. 55. Design patents and patents for utility
models.—(a) Any new, original and ornamental
design for an article of manufacture and (b) any new
model of implements or tools or of any industrial
product or of part of the same, which does not
possess the quality of invention, but which is of
practical utility by reason of its form, configuration,
construction or composition, may be protected by the
author thereof, the former by a patent for a design
and the latter by a patent for a utility model, in the
same manner and subject to the same provisions and
requirements as relate to patents for inventions
insofar as they are applicable except as otherwise
herein provided. The element of novelty is an
essential requisite of the patentability of an
invention or discovery. If a device or process has
been known or used by others prior to its invention
or discovery by the applicant, an application for a
patent therefor should be denied; and if the
application has been granted, the court, in a judicial
proceeding in which the validity of the patent is
drawn in question, will hold it void and ineffective.2
It has been repeatedly held that an invention must
possess the essential elements of novelty, originality
and precedence, and for the patentee to be entitled
to the protection the invention must be new to the
world.3
In issuing Letters Patent No. UM-4609 to Melecia
Madolaria for an “LPG Burner” on 22 July 1981, the
Philippine Patent Office found her invention novel
and patentable. The issuance of such patent creates
a presumption which yields only to clear and cogent
evidence that the patentee was the original and first
inventor. The burden of proving want of novelty is
on him who avers it and the burden is a heavy one
which is met only by clear and satisfactory proof
which overcomes every reasonable doubt.4 Hence, a
utility model shall not be considered “new” if before
the application for a patent it has been publicly
known or publicly used in this country or has been
described in a printed publication or publications
circulated within the country, or if it is substantially
similar to any other utility model so known, used or
described within the country.5
As found by the Director of Patents, the standard of
evidence sufficient to overcome the presumption of
legality of the issuance of UM-4609 to respondent
Madolaria was not legally met by petitioner in her
action for the cancellation of the patent. Thus the
Director of Patents explained his reasons for the
denial of the petition to cancel private respondent’s
patent—Scrutiny of Exhs. “D” and “E” readily
reveals that the utility model (LPG Burner) is not
anticipated. Not one of the various pictorial
representations of burners clearly and convincingly
show that the device presented therein is identical
or substantially identical in construction with the
aforesaid utility model. It is relevant and material to
state that in determining whether novelty or
newness is negatived by any prior art, only one item
of the prior art may be used at a time. For
anticipation to occur, the prior art must show that
each element is found either expressly or described
or under principles of inherency in a single prior art
reference or that the claimed invention was probably
known in a single prior art device or practice.
(Kalman v. Kimberly Clark, 218 USPQ 781, 789)
Even assuming gratia arguendi that the aforesaid
brochures do depict clearly on all fours each and
every element of the patented gas burner device so
that the prior art and the said patented device
become identical, although in truth they are not,
they cannot serve as anticipatory bars for the reason
that they are undated. The dates when they were
distributed to the public were not indicated and,
therefore, they are useless prior art references.
xxxx
Furthermore, and more significantly, the model
marked Exh. “K” does not show whether or not it
was manufactured and/or cast before the application
for the issuance of patent for the LPG burner was
filed by Melecia Madolaria.
With respect to Exh. “L,” petitioner claimed it to be
her own model of LPG burner allegedly
manufactured sometime in 1974 or 1975 and sold by
her in the course of her business operation in the
name of Besco Metal Manufacturing, which burner
was denominated as “Ransome” burner
xxxx
But a careful examination of Exh. “L” would show
that it does not bear the word “Ransome” which is
the burner referred to as the product being sold by
the Petitioner. This is not the way to prove that Exh.
“L” anticipates Letters Patent No. UM-4609 through
Exhs. “C” and “D.” Another factor working against
the Petitioner’s claims is that an examination of
Exh. “L” would disclose that there is no indication of
the time or date it was manufactured. This Office,
thus has no way of determining whether Exh. “L”
was really manufactured before the filing of the
aforesaid application which matured into Letters
Patent No. UM-4609, subject matter of the
cancellation proceeding. At this juncture, it is
worthwhile to point out that petitioner also
presented Exh. “M” which is the alleged burner cup
of an imported “Ransome” burner. Again, this Office
finds the same as unreliable evidence to show
anticipation. It observed that there is no date
indicated therein as to when it was manufactured
and/or imported before the filing of the application
for issuance of patent of the subject utility model.
What is more, some component parts of Exh. “M” are
missing, as only the cup was presented so that the
same could not be compared to the utility model
(subject matter of this case) which consists of several
other detachable parts in combination to form the
complete LPG burner.
xxxx
It must likewise be pointed out that Ong Bun Tua
testified on the brochures allegedly of Manila Gas
and of Esso Gasul marked Exhs. “E” and “F” and on
the alleged fact that Manila Gas Corporation was
importing from the United States “Ransome”
burners. But the same could not be given credence
since he himself admitted during cross-examination
that he has never been connected with Manila Gas
Corporation. He could not even present any
importation papers relating to the alleged imported
ransome burners. Neither did his wife.6
The above findings and conclusions of the Director
of Patent were reiterated and affirmed by the Court
of Appeals.7
The validity of the patent issued by the Philippine
Patent Office in favor of private respondent and the
question over the inventiveness, novelty and
usefulness of the improved model of the LPG burner
are matters which are better determined by the
Patent Office. The technical staff of the Philippine
Patent Office composed of experts in their field has,
by the issuance of the patent in question, accepted
private respondent’s model of gas burner as a
discovery. There is a presumption that the Office has
correctly determined the patentability of the model8
and such action must not be interfered with in the
absence of competent evidence to the contrary. The
rule is settled that the findings of fact of the Director
of Patents, especially when affirmed by the Court of
Appeals, are conclusive on this Court when
supported by substantial evidence. Petitioner has
failed to show compelling grounds for a reversal of
the findings and conclusions of the Patent Office and
the Court of Appeals.
The alleged failure of the Director of Patents and the
Court of Appeals to accord evidentiary weight to the
testimonies of the witnesses of petitioner showing
anticipation is not a justification to grant the
petition. Pursuant to the requirement of clear and
convincing evidence to overthrow the presumption of
validity of a patent, it has been held that oral
testimony to show anticipation is open to suspicion
and if uncorroborated by cogent evidence, as what
occurred in this case, it may be held insufficient.9
Finally, petitioner would want this Court to review
all over again the evidence she presented before the
Patent Office. She argues that contrary to the
decision of the Patent Office and the Court of
Appeals, the evidence she presented clearly proves
that the patented model of private respondent is no
longer new and, therefore, fraud attended the
acquisition of patent by private respondent.
It has been held that the question on priority of
invention is one of fact. Novelty and utility are
likewise questions of fact. The validity of patent is
decided on the basis of factual inquiries. Whether
evidence presented comes within the scope of prior
art is a factual issue to be resolved by the Patent
Office.10 There is question of fact when the doubt or
difference arises as to the truth or falsehood of
alleged facts or when the query necessarily invites
calibration of the whole evidence considering mainly
the credibility of witnesses, existence and relevance
of specific surrounding circumstances, their relation
to each other and to the whole and the probabilities
of the situation.11
Time and again we have held that it is not the
function of the Supreme Court to analyze or weigh
all over again the evidence and credibility of
witnesses presented before the lower tribunal or
office. The Supreme Court is not a trier of facts. Its
jurisdiction is limited to reviewing and revising
errors of law imputed to the lower court, its findings
of fact being conclusive and not reviewable by this
Court.
WHEREFORE, the Petition is DENIED. The
Decision of the Court of Appeals affirming that of the
Philippine Patent Office is AFFIRMED. Costs
against petitioner.
SO ORDERED.
Vitug, Kapunan and Hermosisima, Jr., JJ.,
concur.
Petition denied. Judgment affirmed.
Notes.—The findings of fact of the Director of
Patents are conclusive upon the Supreme Court
provided they are supported by substantial
evidence. (Emerald Garment Manufacturing
Corporation vs. Court of Appeals, 251 SCRA 600
[1995])
A utility model shall not be considered “new” if
before the application for a patent it has been
publicly known or publicly used in this country or
has been described in a printed publication or
publications circulated within the country, or if it is
substantially similar to any other utility model so
known, used or described within the country. (Del
Rosario vs. Court of Appeals, 255 SCRA 152 [1996])
——o0o—— [Manzano vs. Court of Appeals, 278
SCRA 688(1997)]
THIRD DIVISION
[G.R. No. 148222. August 15, 2003]
PEARL & DEAN
(PHIL.), INCORPORATED, petitioner,
vs. SHOEMART,
INCORPORATED, and NORTH EDSA
MARKETING, INCORPORATED,respo
ndents.
DECISION
CORONA, J.:
In the instant petition for review
on certiorari under Rule 45 of the Rules of Court,
petitioner Pearl & Dean (Phil.) Inc. (P & D) assails
the May 22, 2001 decision[1] of the Court of Appeals
reversing the October 31, 1996 decision[2] of the
Regional Trial Court of Makati, Branch 133, in Civil
Case No. 92-516 which declared private respondents
Shoemart Inc. (SMI) and North Edsa Marketing Inc.
(NEMI) liable for infringement of trademark and
copyright, and unfair competition.
FACTUAL ANTECEDENTS
The May 22, 2001 decision of the Court of
Appeals[3] contained a summary of this dispute:
Plaintiff-appellant Pearl and Dean (Phil.), Inc. is a
corporation engaged in the manufacture of
advertising display units simply referred to as light
boxes. These units utilize specially printed posters
sandwiched between plastic sheets and illuminated
with back lights. Pearl and Dean was able to secure
a Certificate of Copyright Registration dated
January 20, 1981 over these illuminated display
units. The advertising light boxes were marketed
under the trademark Poster Ads. The application for
registration of the trademark was filed with the
Bureau of Patents, Trademarks and Technology
Transfer on June 20, 1983, but was approved only on
September 12, 1988, per Registration No.
41165. From 1981 to about 1988, Pearl and Dean
employed the services of Metro Industrial Services
to manufacture its advertising displays.
Sometime in 1985, Pearl and Dean negotiated with
defendant-appellant Shoemart, Inc. (SMI) for the
lease and installation of the light boxes in SM City
North Edsa. Since SM City North Edsa was under
construction at that time, SMI offered as an
alternative, SM Makati and SM Cubao, to which
Pearl and Dean agreed. On September 11, 1985,
Pearl and Deans General Manager, Rodolfo Vergara,
submitted for signature the contracts covering SM
Cubao and SM Makati to SMIs Advertising
Promotions and Publicity Division Manager,
Ramonlito Abano. Only the contract for SM Makati,
however, was returned signed. On October 4, 1985,
Vergara wrote Abano inquiring about the other
contract and reminding him that their agreement for
installation of light boxes was not only for its SM
Makati branch, but also for SM Cubao. SMI did not
bother to reply.
Instead, in a letter dated January 14, 1986, SMIs
house counsel informed Pearl and Dean that it was
rescinding the contract for SM Makati due to non-
performance of the terms thereof. In his reply dated
February 17, 1986, Vergara protested the unilateral
action of SMI, saying it was without basis. In the
same letter, he pushed for the signing of the contract
for SM Cubao.
Two years later, Metro Industrial Services, the
company formerly contracted by Pearl and Dean to
fabricate its display units, offered to construct light
boxes for Shoemarts chain of stores. SMI approved
the proposal and ten (10) light boxes were
subsequently fabricated by Metro Industrial for
SMI. After its contract with Metro Industrial was
terminated, SMI engaged the services of EYD
Rainbow Advertising Corporation to make the light
boxes. Some 300 units were fabricated in
1991. These were delivered on a staggered basis and
installed at SM Megamall and SM City.
Sometime in 1989, Pearl and Dean, received reports
that exact copies of its light boxes were installed at
SM City and in the fastfood section of SM
Cubao. Upon investigation, Pearl and Dean found
out that aside from the two (2) reported SM
branches, light boxes similar to those it
manufactures were also installed in two (2) other SM
stores. It further discovered that defendant-
appellant North Edsa Marketing Inc. (NEMI),
through its marketing arm, Prime Spots Marketing
Services, was set up primarily to sell advertising
space in lighted display units located in SMIs
different branches. Pearl and Dean noted that
NEMI is a sister company of SMI.
In the light of its discoveries, Pearl and Dean sent a
letter dated December 11, 1991 to both SMI and
NEMI enjoining them to cease using the subject
light boxes and to remove the same from SMIs
establishments. It also demanded the discontinued
use of the trademark Poster Ads, and the payment
to Pearl and Dean of compensatory damages in the
amount of Twenty Million Pesos (P20,000,000.00).
Upon receipt of the demand letter, SMI suspended
the leasing of two hundred twenty-four (224) light
boxes and NEMI took down its advertisements for
Poster Ads from the lighted display units in SMIs
stores. Claiming that both SMI and NEMI failed to
meet all its demands, Pearl and Dean filed this
instant case for infringement of trademark and
copyright, unfair competition and damages.
In denying the charges hurled against it, SMI
maintained that it independently developed its
poster panels using commonly known techniques
and available technology, without notice of or
reference to Pearl and Deans copyright. SMI noted
that the registration of the mark Poster Ads was
only for stationeries such as letterheads, envelopes,
and the like. Besides, according to SMI, the word
Poster Ads is a generic term which cannot be
appropriated as a trademark, and, as such,
registration of such mark is invalid. It also stressed
that Pearl and Dean is not entitled to the reliefs
prayed for in its complaint since its advertising
display units contained no copyright notice, in
violation of Section 27 of P.D. 49. SMI alleged that
Pearl and Dean had no cause of action against it and
that the suit was purely intended to malign SMIs
good name. On this basis, SMI, aside from praying
for the dismissal of the case, also counterclaimed for
moral, actual and exemplary damages and for the
cancellation of Pearl and Deans Certification of
Copyright Registration No. PD-R-2558 dated
January 20, 1981 and Certificate of Trademark
Registration No. 4165 dated September 12, 1988.
NEMI, for its part, denied having manufactured,
installed or used any advertising display units, nor
having engaged in the business of advertising. It
repleaded SMIs averments, admissions and denials
and prayed for similar reliefs and counterclaims as
SMI.
The RTC of Makati City decided in favor of P &
D:
Wherefore, defendants SMI and NEMI are found
jointly and severally liable for infringement of
copyright under Section 2 of PD 49, as amended, and
infringement of trademark under Section 22 of RA
No. 166, as amended, and are hereby penalized
under Section 28 of PD 49, as amended, and Sections
23 and 24 of RA 166, as amended. Accordingly,
defendants are hereby directed:
(1) to pay plaintiff the following damages:
(a) actual damages - P16,600,000.00,
representing
profits
derived by
defendants
as a result of
infringe-
ment of
plaintiffs
copyright
from 1991 to
1992
(b) moral damages - P1,000.000.00
(c) exemplary damages - P1,000,000.00
(d) attorneys fees - P1,000,000.00
plus
(e) costs of suit;
(2) to deliver, under oath, for impounding
in the National Library, all light
boxes of SMI which were
fabricated by Metro Industrial
Services and EYD Rainbow
Advertising Corporation;
(3) to deliver, under oath, to the National
Library, all filler-posters using the
trademark Poster Ads,
destruction; and
(4) to permanently refrain from infringing
the copyright on plaintiffs light
boxes and its trademark Poster
Ads.
Defendants counterclaims are hereby
ordered dismissed for lack of merit.
SO ORDERED.[4]
On appeal, however, the Court of Appeals
reversed the trial court:
Since the light boxes cannot, by any stretch of the
imagination, be considered as either prints, pictorial
illustrations, advertising copies, labels, tags or box
wraps, to be properly classified as a copyrightable
class O work, we have to agree with SMI when it
posited that what was copyrighted were the
technical drawings only, and not the light boxes
themselves, thus:
42. When a drawing is technical and depicts a
utilitarian object, a copyright over the drawings like
plaintiff-appellants will not extend to the actual
object. It has so been held under jurisprudence, of
which the leading case is Baker vs. Selden (101 U.S.
841 (1879). In that case, Selden had obtained a
copyright protection for a book entitled Seldens
Condensed Ledger or Bookkeeping Simplified which
purported to explain a new system of bookkeeping.
Included as part of the book were blank forms and
illustrations consisting of ruled lines and headings,
specially designed for use in connection with the
system explained in the work. These forms showed
the entire operation of a day or a week or a month
on a single page, or on two pages following each
other. The defendant Baker then produced forms
which were similar to the forms illustrated in
Seldens copyrighted books. The Court held that
exclusivity to the actual forms is not extended by a
copyright. The reason was that to grant a monopoly
in the underlying art when no examination of its
novelty has ever been made would be a surprise and
a fraud upon the public; that is the province of
letters patent, not of copyright. And that is precisely
the point. No doubt aware that its alleged original
design would never pass the rigorous examination of
a patent application, plaintiff-appellant fought to
foist a fraudulent monopoly on the public by
conveniently resorting to a copyright registration
which merely employs a recordal system without the
benefit of an in-depth examination of novelty.
The principle in Baker vs. Selden was likewise
for
applied in Muller vs. Triborough Bridge
Authority [43 F. Supp. 298 (S.D.N.Y. 1942)]. In this
case, Muller had obtained a copyright over an
unpublished drawing entitled Bridge Approach the
drawing showed a novel bridge approach to unsnarl
traffic congestion. The defendant constructed a
bridge approach which was alleged to be an
infringement of the new design illustrated in
plaintiffs drawings. In this case it was held that
protection of the drawing does not extend to the
unauthorized duplication of the object drawn
because copyright extends only to the description or
expression of the object and not to the object itself. It
does not prevent one from using the drawings to
construct the object portrayed in the drawing.
In two other cases, Imperial Homes Corp. v. Lamont,
458 F. 2d 895 and Scholtz Homes, Inc. v. Maddox,
379 F. 2d 84, it was held that there is no copyright
infringement when one who, without being
authorized, uses a copyrighted architectural plan to
construct a structure. This is because the copyright
does not extend to the structures themselves.
In fine, we cannot find SMI liable for infringing
Pearl and Deans copyright over the technical
drawings of the latters advertising display units.
xxx xxx xxx
The Supreme Court trenchantly held in Faberge,
Incorporated vs. Intermediate Appellate Court that
the protective mantle of the Trademark Law extends
only to the goods used by the first user as specified
in the certificate of registration, following the clear
mandate conveyed by Section 20 of Republic Act 166,
as amended, otherwise known as the Trademark
Law, which reads:
SEC. 20. Certification of registration prima facie
evidence of validity.- A certificate of registration of a
mark or trade-name shall be prima facie evidence of
the validity of the registration, the registrants
ownership of the mark or trade-name, and of the
registrants exclusive right to use the same in
connection with the goods, business or
services specified in the certificate, subject to any
conditions and limitations stated therein.
(underscoring supplied)
The records show that on June 20, 1983, Pearl and
Dean applied for the registration of the trademark
Poster Ads with the Bureau of Patents, Trademarks,
and Technology Transfer. Said trademark was
recorded in the Principal Register on September 12,
1988 under Registration No. 41165 covering the
following products: stationeries such as letterheads,
envelopes and calling cards and newsletters.
With this as factual backdrop, we see no legal basis
to the finding of liability on the part of the
defendants-appellants for their use of the words
Poster Ads, in the advertising display units in suit.
Jurisprudence has interpreted Section 20 of the
Trademark Law as an implicit permission to a
manufacturer to venture into the production of
goods and allow that producer to appropriate the
brand name of the senior registrant on goods other
than those stated in the certificate of
registration. The Supreme Court further
emphasized the restrictive meaning of Section 20
when it stated, through Justice Conrado V. Sanchez,
that:
Really, if the certificate of registration were to be
deemed as including goods not specified therein,
then a situation may arise whereby an applicant
may be tempted to register a trademark on any and
all goods which his mind may conceive even if he had
never intended to use the trademark for the said
goods. We believe that such omnibus registration is
not contemplated by our Trademark Law.
While we do not discount the striking similarity
between Pearl and Deans registered trademark and
defendants-appellants Poster Ads design, as well as
the parallel use by which said words were used in
the parties respective advertising copies, we cannot
find defendants-appellants liable for infringement of
trademark. Poster Ads was registered by Pearl and
Dean for specific use in its stationeries, in contrast
to defendants-appellants who used the same words
in their advertising display units. Why Pearl and
Dean limited the use of its trademark to stationeries
is simply beyond us. But, having already done so, it
must stand by the consequence of the registration
which it had caused.
xxx xxx xxx
We are constrained to adopt the view of defendants-
appellants that the words Poster Ads are a simple
contraction of the generic term poster
advertising. In the absence of any convincing proof
that Poster Ads has acquired a secondary meaning
in this jurisdiction, we find that Pearl and Deans
exclusive right to the use of Poster Ads is limited to
what is written in its certificate of registration,
namely, stationeries.
Defendants-appellants cannot thus be held liable for
infringement of the trademark Poster Ads.
There being no finding of either copyright or
trademark infringement on the part of SMI and
NEMI, the monetary award granted by the lower
court to Pearl and Dean has no leg to stand on.
xxx xxx xxx
WHEREFORE, premises considered, the assailed
decision is REVERSED and SET ASIDE, and
another is rendered DISMISSING the complaint
and counterclaims in the above-entitled case for lack
of merit.[5]
Dissatisfied with the above decision, petitioner
P & D filed the instant petition assigning the
following errors for the Courts consideration:
A. THE HONORABLE COURT OF
APPEALS ERRED IN RULING
THAT NO COPYRIGHT
INFRINGEMENT WAS
COMMITTED BY
RESPONDENTS SM AND NEMI;
B. THE HONORABLE COURT OF
APPEALS ERRED IN RULING
THAT NO INFRINGEMENT OF
PEARL & DEANS TRADEMARK
POSTER ADS WAS COMMITTED
BY RESPONDENTS SM AND
NEMI;
C. THE HONORABLE COURT OF
APPEALS ERRED IN
DISMISSING THE AWARD OF
THE TRIAL COURT, DESPITE
THE LATTERS FINDING, NOT
DISPUTED BY THE
HONORABLE COURT OF
APPEALS, THAT SM WAS
GUILTY OF BAD FAITH IN ITS
NEGOTIATION OF
ADVERTISING CONTRACTS
WITH PEARL & DEAN.
D. THE HONORABLE COURT OF
APPEALS ERRED IN NOT
HOLDING RESPONDENTS SM
AND NEMI LIABLE TO PEARL &
DEAN FOR ACTUAL, MORAL &
EXEMPLARY DAMAGES,
ATTORNEYS FEES AND COSTS
OF SUIT.[6]
ISSUES
In resolving this very interesting case, we are
challenged once again to put into proper perspective
four main concerns of intellectual property law
patents, copyrights, trademarks and unfair
competition arising from infringement of any of the
first three. We shall focus then on the following
issues:
(1) if the engineering or technical
drawings of an advertising display unit
(light box) are granted copyright
protection (copyright certificate of
registration) by the National Library, is
the light box depicted in such engineering
drawings ipso facto also protected by such
copyright?
(2) or should the light box be registered
separately and protected by a patent
issued by the Bureau of Patents
Trademarks and Technology Transfer
(now Intellectual Property Office) in
addition to the copyright of the
engineering drawings?
(3) can the owner of a registered
trademark legally prevent others from
using such trademark if it is a mere
abbreviation of a term descriptive of his
goods, services or business?
ON THE ISSUE OF COPYRIGHT
INFRINGEMENT
Petitioner P & Ds complaint was that SMI
infringed on its copyright over the light boxes when
SMI had the units manufactured by Metro and EYD
Rainbow Advertising for its own account. Obviously,
petitioners position was premised on its belief that
its copyright over the engineering drawings
extended ipso facto to the light boxes depicted or
illustrated in said drawings. In ruling that there
was no copyright infringement, the Court of Appeals
held that the copyright was limited to the drawings
alone and not to the light box itself. We agree with
the appellate court.
First, petitioners application for a copyright
certificate as well as Copyright Certificate No. PD-
R2588 issued by the National Library on January
20, 1981 clearly stated that it was for a class O work
under Section 2 (O) of PD 49 (The Intellectual
Property Decree) which was the statute then
prevailing. Said Section 2 expressly enumerated the
works subject to copyright:
SEC. 2. The rights granted by this Decree shall,
from the moment of creation, subsist with respect to
any of the following works:
xxxxxxxxx
(O) Prints, pictorial illustrations, advertising copies,
labels, tags, and box wraps;
xxxxxxxxx
Although petitioners copyright certificate was
entitled Advertising Display Units (which depicted
the box-type electrical devices), its claim of copyright
infringement cannot be sustained.
Copyright, in the strict sense of the term, is
purely a statutory right. Being a mere statutory
grant, the rights are limited to what the statute
confers. It may be obtained and enjoyed only with
respect to the subjects and by the persons, and on
terms and conditions specified in the
statute.[7] Accordingly, it can cover only the works
falling within the statutory enumeration or
description.[8]
P & D secured its copyright under the
classification class O work. This being so,
petitioners copyright protection extended only to the
technical drawings and not to the light box itself
because the latter was not at all in the category of
prints, pictorial illustrations, advertising copies,
labels, tags and box wraps. Stated otherwise, even
as we find that P & D indeed owned a valid
copyright, the same could have referred only to the
technical drawings within the category of pictorial
illustrations. It could not have possibly stretched out
to include the underlying light box. The strict
application[9] of the laws enumeration in Section 2
prevents us from giving petitioner even a little
leeway, that is, even if its copyright certificate was
entitled Advertising Display Units. What the law
does not include, it excludes, and for the good reason:
the light box was not a literary or artistic piece
which could be copyrighted under the copyright
law. And no less clearly, neither could the lack of
statutory authority to make the light box
copyrightable be remedied by the simplistic act of
entitling the copyright certificate issued by the
National Library as Advertising Display Units.
In fine, if SMI and NEMI reprinted P & Ds
technical drawings for sale to the public without
license from P & D, then no doubt they would have
been guilty of copyright infringement. But this was
not the case. SMIs and NEMIs acts complained of by
P & D were to have units similar or identical to the
light box illustrated in the technical drawings
manufactured by Metro and EYD Rainbow
Advertising, for leasing out to different
advertisers. Was this an infringement of petitioners
copyright over the technical drawings? We do not
think so.
During the trial, the president of P & D himself
admitted that the light box was neither a literary not
an artistic work but an engineering or marketing
invention.[10] Obviously, there appeared to be some
confusion regarding what ought or ought not to be
the proper subjects of copyrights, patents and
trademarks. In the leading case of Kho vs. Court of
Appeals,[11] we ruled that these three legal rights are
completely distinct and separate from one another,
and the protection afforded by one cannot be used
interchangeably to cover items or works that
exclusively pertain to the others:
Trademark, copyright and patents are different
intellectual property rights that cannot be
interchanged with one another. A trademark is any
visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an
enterprise and shall include a stamped or marked
container of goods. In relation thereto, a trade name
means the name or designation identifying or
distinguishing an enterprise. Meanwhile, the scope
of a copyright is confined to literary and artistic
works which are original intellectual creations in
the literary and artistic domain protected from the
moment of their creation. Patentable inventions, on
the other hand, refer to any technical solution of a
problem in any field of human activity which is new,
involves an inventive step and is industrially
applicable.
ON THE ISSUE OF PATENT INFRINGEMENT
This brings us to the next point: if, despite its
manufacture and commercial use of the light
boxes without license from petitioner, private
respondents cannot be held legally liable for
infringement of P & Ds copyright over its technical
drawings of the said light boxes, should they be
liable instead for infringement of patent? We do not
think so either.
For some reason or another, petitioner never
secured a patent for the light boxes. It therefore
acquired no patent rights which could have
protected its invention, if in fact it really was.And
because it had no patent, petitioner could not legally
prevent anyone from manufacturing or
commercially using the contraption. In Creser
Precision Systems, Inc. vs. Court of Appeals,[12] we
held that 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. x x x (A)n inventor
has no common law right to a monopoly of his
invention. He has the right to make use of and vend
his invention, but if he voluntarily discloses it, such
as by offering it for sale, the world is free to copy and
use it with impunity. A patent, however, gives the
inventor the right to exclude all others. As a
patentee, he has the exclusive right of making,
selling or using the invention.[13] On the assumption
that petitioners advertising units were patentable
inventions, petitioner revealed them fully to the
public by submitting the engineering drawings
thereof to the National Library.
To be able to effectively and legally preclude
others from copying and profiting from the
invention, a patent is a primordial requirement. No
patent, no protection. The ultimate goal of a patent
system is to bring new designs and technologies into
the public domain through disclosure.[14] Ideas, once
disclosed to the public without the protection of a
valid patent, are subject to appropriation without
significant restraint.[15]
On one side of the coin is the public which will
benefit from new ideas; on the other are the
inventors who must be protected. As held in Bauer
& Cie vs. ODonnel,[16] The act secured to the
inventor the exclusive right to make use, and vend
the thing patented, and consequently to prevent
others from exercising like privileges without the
consent of the patentee. It was passed for the
purpose of encouraging useful invention and
promoting new and useful inventions by the
protection and stimulation given to inventive
genius, and was intended to secure to the public,
after the lapse of the exclusive privileges granted the
benefit of such inventions and improvements.
The law attempts to strike an ideal balance
between the two interests:
(The p)atent system thus embodies a carefully
crafted bargain for encouraging the creation and
disclosure of new useful and non-obvious advances
in technology and design, in return for the exclusive
right to practice the invention for a number of
years. The inventor may keep his invention secret
and reap its fruits indefinitely. In consideration of
its disclosure and the consequent benefit to the
community, the patent is granted. An exclusive
enjoyment is guaranteed him for 17 years, but upon
the expiration of that period, the knowledge of the
invention inures to the people, who are thus enabled
to practice it and profit by its use.[17]
The patent law has a three-fold purpose: first,
patent law seeks to foster and reward invention;
second, it promotes disclosures of inventions to
stimulate further innovation and to permit the
public to practice the invention once the patent
expires; third, the stringent requirements for patent
protection seek to ensure that ideas in the public
domain remain there for the free use of the public.[18]
It is only after an exhaustive examination by
the patent office that a patent is issued. Such an in-
depth investigation is required because in rewarding
a useful invention, the rights and welfare of the
community must be fairly dealt with and effectively
guarded. To that end, the prerequisites to obtaining
a patent are strictly observed and when a patent is
issued, the limitations on its exercise are equally
strictly enforced. To begin with, a genuine invention
or discovery must be demonstrated lest in the
constant demand for new appliances, the heavy
hand of tribute be laid on each slight technological
advance in art.[19]
There is no such scrutiny in the case of
copyrights nor any notice published before its grant
to the effect that a person is claiming the creation of
a work. The law confers the copyright from the
moment of creation[20] and the copyright certificate
is issued upon registration with the National
Library of a sworn ex-parte claim of creation.
Therefore, not having gone through the
arduous examination for patents, the petitioner
cannot exclude others from the manufacture, sale or
commercial use of the light boxes on the sole basis of
its copyright certificate over the technical drawings.
Stated otherwise, what petitioner seeks is
exclusivity without any opportunity for the patent
office (IPO) to scrutinize the light boxs eligibility as
a patentable invention. The irony here is that, had
petitioner secured a patent instead, its exclusivity
would have been for 17 years only. But through the
simplified procedure of copyright-registration with
the National Library without undergoing the rigor
of defending the patentability of its invention before
the IPO and the public the petitioner would be
protected for 50 years. This situation could not have
been the intention of the law.
In the oft-cited case of Baker vs. Selden[21], the
United States Supreme Court held that only the
expression of an idea is protected by copyright, not
the idea itself. In that case, the plaintiff held the
copyright of a book which expounded on a new
accounting system he had developed. The
publication illustrated blank forms of ledgers
utilized in such a system. The defendant reproduced
forms similar to those illustrated in the plaintiffs
copyrighted book. The US Supreme Court ruled
that:
There is no doubt that a work on the subject of book-
keeping, though only explanatory of well known
systems, may be the subject of a copyright; but, then,
it is claimed only as a book. x x x. But there is a clear
distinction between the books, as such, and the art,
which it is, intended to illustrate. The mere
statement of the proposition is so evident that it
requires hardly any argument to support it. The
same distinction may be predicated of every other
art as well as that of bookkeeping. A treatise on the
composition and use of medicines, be they old or
new; on the construction and use of ploughs or
watches or churns; or on the mixture and application
of colors for painting or dyeing; or on the mode of
drawing lines to produce the effect of perspective,
would be the subject of copyright; but no one would
contend that the copyright of the treatise would give
the exclusive right to the art or manufacture
described therein. The copyright of the book, if not
pirated from other works, would be valid without
regard to the novelty or want of novelty of its subject
matter. The novelty of the art or thing described or
explained has nothing to do with the validity of the
copyright. To give to the author of the book an
exclusive property in the art described
therein, when no examination of its novelty
has ever been officially made, would be
a surprise and a fraud upon the public. That is
the province of letters patent, not of
copyright. The claim to an invention of
discovery of an art or manufacture must be
subjected to the examination of the Patent
Office before an exclusive right therein can be
obtained; and a patent from the government
can only secure it.
The difference between the two things, letters
patent and copyright, may be illustrated by
reference to the subjects just enumerated. Take the
case of medicines. Certain mixtures are found to be
of great value in the healing art. If the discoverer
writes and publishes a book on the subject (as
regular physicians generally do), he gains no
exclusive right to the manufacture and sale of
the medicine; he gives that to the public. If he
desires to acquire such exclusive right, he
must obtain a patent for the mixture as a new
art, manufacture or composition of matter. He
may copyright his book, if he pleases; but that
only secures to him the exclusive right of
printing and publishing his book. So of all
other inventions or discoveries.
The copyright of a book on perspective, no matter
how many drawings and illustrations it may
contain, gives no exclusive right to the modes of
drawing described, though they may never have
been known or used before. By publishing the book
without getting a patent for the art, the latter is
given to the public.
xxx
Now, whilst no one has a right to print or publish his
book, or any material part thereof, as a book
intended to convey instruction in the art, any person
may practice and use the art itself which he has
described and illustrated therein. The use of the
art is a totally different thing from a
publication of the book explaining it. The
copyright of a book on bookkeeping cannot secure
the exclusive right to make, sell and use account
books prepared upon the plan set forth in such
book. Whether the art might or might not have been
patented, is a question, which is not before us. It was
not patented, and is open and free to the use of the
public. And, of course, in using the art, the ruled
lines and headings of accounts must necessarily be
used as incident to it.
The plausibility of the claim put forward by the
complainant in this case arises from a confusion of
ideas produced by the peculiar nature of the art
described in the books, which have been made the
subject of copyright. In describing the art, the
illustrations and diagrams employed happened to
correspond more closely than usual with the actual
work performed by the operator who uses the
art. x x x The description of the art in a book,
though entitled to the benefit of copyright,
lays no foundation for an exclusive claim to
the art itself. The object of the one is
explanation; the object of the other is use. The
former may be secured by copyright. The
latter can only be secured, if it can be secured
at all, by letters patent. (underscoring supplied)
ON THE ISSUE OF TRADEMARK
INFRINGEMENT
This issue concerns the use by respondents of
the mark Poster Ads which petitioners president
said was a contraction of poster advertising. P & D
was able to secure a trademark certificate for it, but
one where the goods specified were stationeries such
as letterheads, envelopes, calling cards and
newsletters.[22] Petitioner admitted it did not
commercially engage in or market these goods. On
the contrary, it dealt in electrically operated backlit
advertising units and the sale of advertising spaces
thereon, which, however, were not at all specified in
the trademark certificate.
Under the circumstances, the Court of Appeals
correctly cited Faberge Inc. vs. Intermediate
Appellate Court,[23] where we, invoking Section 20 of
the old Trademark Law, ruled that the certificate of
registration issued by the Director of Patents can
confer (upon petitioner) the exclusive right to use its
own symbol only to those goods specified in the
certificate, subject to any conditions and limitations
specified in the certificate x x x. One who has
adopted and used a trademark on his goods does not
prevent the adoption and use of the same trademark
by others for products which are of a
different description.[24] Faberge, Inc. was correct
and was in fact recently reiterated in Canon
Kabushiki Kaisha vs. Court of Appeals.[25]
Assuming arguendo that Poster Ads could
validly qualify as a trademark, the failure of P & D
to secure a trademark registration for specific use on
the light boxes meant that there could not have been
any trademark infringement since registration was
an essential element thereof.
ON THE ISSUE OF UNFAIR COMPETITION
If at all, the cause of action should have been
for unfair competition, a situation which was
possible even if P & D had no
registration.[26] However, while the petitioners
complaint in the RTC also cited unfair competition,
the trial court did not find private respondents liable
therefor. Petitioner did not appeal this particular
point; hence, it cannot now revive its claim of unfair
competition.
But even disregarding procedural issues, we
nevertheless cannot hold respondents guilty of
unfair competition.
By the nature of things, there can be no unfair
competition under the law on copyrights although it
is applicable to disputes over the use of trademarks.
Even a name or phrase incapable of appropriation as
a trademark or tradename may, by long and
exclusive use by a business (such that the name or
phrase becomes associated with the business or
product in the mind of the purchasing public), be
entitled to protection against unfair
competition.[27] In this case, there was no evidence
that P & Ds use of Poster Ads was distinctive or well-
known. As noted by the Court of Appeals, petitioners
expert witnesses himself had testified that Poster
Ads was too generic a name. So it was difficult to
identify it with any company, honestly
speaking.[28] This crucial admission by its own
expert witness that Poster Ads could not be
associated with P & D showed that, in the mind of
the public, the goods and services carrying the
trademark Poster Ads could not be distinguished
from the goods and services of other entities.
This fact also prevented the application of the
doctrine of secondary meaning. Poster Ads was
generic and incapable of being used as a trademark
because it was used in the field of poster advertising,
the very business engaged in by petitioner.
Secondary meaning means that a word or phrase
originally incapable of exclusive appropriation with
reference to an article in the market (because it is
geographically or otherwise descriptive) might
nevertheless have been used for so long and so
exclusively by one producer with reference to his
article that, in the trade and to that branch of the
purchasing public, the word or phrase has come to
mean that the article was his property.[29] The
admission by petitioners own expert witness that he
himself could not associate Poster Ads with
petitioner P & D because it was too generic definitely
precluded the application of this exception.
Having discussed the most important and
critical issues, we see no need to belabor the rest.
All told, the Court finds no reversible error
committed by the Court of Appeals when it reversed
the Regional Trial Court of Makati City.
WHEREFORE, the petition is hereby
DENIED and the decision of the Court of Appeals
dated May 22, 2001 is AFFIRMED in toto.
SO ORDERED.
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 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 patents were issued was not the true and
business under the firm name and style of actual author nor were her rights derived
"SUSANA LUCHAN POWDER PUFF from such author. (Taken from allegations in
MANUFACTURING." the Answer, par. 4, Rollo, p. 93). And on July 25,
1974, private respondent assailed the validity
It is undisputed that petitioner is a patent of the patents involved and filed with the
holder of powder puff namely: Philippine Patent Office petitions for
cancellation of (1) Utility Model Letter Patent
Extension No. UM-109 (Inter Partes Case No.
1. UM-423 838, Susana Luchan v. Rosario C. Tan), (2)
(extended
Utility Model Letters Patent No. UM-1184
and/or (Inter Partes Case No. 839, Susana Luchan v.
renewed under Rosario C. Tan), (3) Utility Model Letters
Extension No. Patent Extension No. UM-110 (Inter Partes
UM-109 for a Case No. 840, Susana Luchan v. Rosario C. Tan.
period of 5 (Taken from allegations in the Answer, par. 10,
years from Rollo, pp. 94-95).
October 6,
1971)
In view thereof, petitioner, on August 24, 1974,
filed a complaint for damages with injunction
2. UM-450 and preliminary injunction against private
(extended respondent with the then Court of First
and/or Instance of Rizal, Pasig Branch, docketed as
renewed under Civil Case No. 19908, for infringing the
Extension No. aforesaid letters patent, and prayed, among
UM110 for a
others, that a writ of preliminary injunction be
period of 5 immediately issued (Complaint, Rollo, p. 90).
years from
January 26,
1972) In her answer, private respondent alleged that
the products she is manufacturing and
offering for sale are not Identical, or even only
3. UM 1184, for substantially Identical to the products
a period of covered by petitioner's patents and, by way of
5years affirmative defenses, further alleged that
fromApril 5, petitioner's patents in question are void on the
1974.(Petition, following grounds:
Rollo, pp. 6-7).

(1) at the time

In a letter dated July 10, 1974 (Annex "D",
of filing of
Rollo, p. 86), petitioner informed private application for
respondent that the powder puffs the latter is the patents
manufacturing and selling to various involved, the
enterprises particularly those in the cosmetics utility models
industry, resemble Identical or substantially applied for
Identical powder puffs of which the former is
were not new
a patent holder under Registration and patentable
Certification Nos. Extension UM-109, under Sec. 55 of
Extension UM-110 and Utility Model No. 1184; R.A. 165, as
petitioner explained such production and sale amended by
constitute infringement of said patents and R.A. 864; and
therefore its immediate discontinuance is
demanded, otherwise it will be compelled to
take judicial action. (Rollo, pp. 7-8). (2) the person
to whom the
patents were
Private respondent replied stating that her issued was not
products are different and countered that the true and
petitioner's patents are void because the actual author
utility models applied for were not new and of the utility
patentable and the person to whom the
 models applied with respect to
for, and UM1184; her
neither did she claim in her
derive her application of a
rights from any unitary
true and actual powder puff,
author of these was but an
utility models. limitation of a
product well
for the following reasons: known to the
cosmetics
industry since
(a) since years years previous
prior to the to her firing of
filing of application,
applications and which
for the patents
belonged to no
involved, one except to
powder puffs of the general
the kind public;
applied for (Answer, Rollo,
were then pp. 93-94).
already
existing and
publicly being On September 18, 1974, the trial court issued
sold in the an Order (Annex "K", Rollo, p. 125) granting the
market; both in preliminary injunction prayed for by
the Philippines petitioner. Consequently, the corresponding
and abroad; writ was subsequently issued (Annex "K-1",
and Rollo, p. 131) enjoining the herein private
respondent (then defendant) and all other
persons employed by her, her agents, servants
(b) applicant's
and employees from directly or indirectly
claims in her manufacturing, making or causing to be made,
applications, of selling or causing to be sold, or using or
"construction" causing to be used in accordance with, or
or process of embodying the utility models of the Philippine
manufacturing Patent Office Utility Model Letters Patent Nos.
the utility 423 (Extension No. UM-109), No. 450 (Extension
models applied
No. UM-110), and Utility Model No. 1184 or
for, with from infringement upon or violating said
respect to UM- letters patent in any way whatsoever (Annex "
423 and UM- K-1 ", Rollo, p. 131).
450, were but a
complicated
and Private respondent questioned the propriety
impractical of the trial court's issuance of the Writ of
version of an Preliminary Injunction arguing that since
old, simple one there is still a pending cancellation
which has been proceedings before the Philippine Patent
well known to Office concerning petitioner's patents, such
the cosmetics cannot be the basis for preliminary injunction
industry since (Motion for Reconsideration, Rollo, p. 132).
years previous
to her filing of In an Order dated September 11, 1975, the trial
applications, court denied private respondent's motion for
and which reconsideration (Annex "N", Rollo, p. 142).
belonged to no
one except to In challenging these Orders private
the general respondent filed a petition for certiorari with
public; and
the respondent court on September 29, 1975 WHEREFORE, finding no
(Annex "D", Rollo, pp. 148-171) reiterating merit in the herein petition,
among other things the invalidity of the same is hereby dismissed
petitioner's patents and prayed that the trial and the preliminary injunction
court be restrained from enforcing or previously issued by this Court
continuing to enforce the following: is hereby set aside, with costs.

(1) Order dated SO ORDERED. (CA Decision,

September 18, Rollo, p. 189).
1974, granting
the ln said decision respondent court stated that
preliminary in disposing of the petition it tackled only the
injunction; issue of whether the court a quo acted with
grave abuse of discretion in issuing the
(2) Writ of challenged orders. It made clear the question
preliminary of whether the patents have been infringed or
injunction not was not determined considering the
dated court a quo has yet to decide the case on the
September 18, merits (Ibid., p. 186).
1974; and
Feeling aggrieved, private respondent moved
(3) Order dated to reconsider the afore-mentioned Decision
September 11, based on the following grounds:
1974 denying
petitioner's I
motion
petition for
reconsideratio THAT THIS
n. HONORABLE
COURT
ERRED IN
On October 15, 1975, the Writ of Preliminary NOT
Injunction was issued by the respondent Court APPRECIATIN
of Appeals as follows: G THE
EXISTENCE
NOW, THEREFORE, you, OF A FAIR
respondents, and/or any QUESTION OF
person/persons acting on your INVALIDITY
stead, are hereby ENJOINED OF PRIVATE
to RESTRAIN from enforcing RESPONDENT
or continuing to enforce, the 'S PATENTS.
proceedings complained of in
the petition to wit: 1) Order II
dated September 18, 1974,
granting the preliminary
injunction; 2) Writ of THAT THIS
Preliminary Injunction dated HONORABLE
September 18, 1974; and Order COURT
dated September 11, 1975, ERRED IN
denying petitioner's motion for NOT
reconsideration, all issued in REJECTING
connection with Civil Case No. THE THEORY
19908, UNTIL FURTHER OF
ORDERS FROM THIS COURT. RESPONDENT
(Annex "P", Rollo, p. 1.73) JUDGE THAT
HE HAS NO
JURISDICTIO
On February 16, 1976, respondent court N TO
promulgated a decision the dispositive portion INVALIDATE
of which reads:
 THE PATENTS SO ORDERED. (CA Resolution,
UPON Rollo, p. 226).
GROUND OF
LACK OF In a Resolution dated November 4, 1976,
NOVELTY OF respondent court, not persuaded by the
THE grounds embodied in the motion for
PRODUCTS reconsideration filed by herein petitioner
PATENTED. (Annex "V ", Rollo, p. 227), denied the same for
(Motion for lack of merit, thereby maintaining the same
Reconsideratio stand it took in its July 6, 1976 Resolution
n, Rollo, p. 190). (Rollo, p. 281). Hence, this petition.

Reviewing on reconsideration, respondent On December 3, 1976, without giving due

court gave weight to private respondent's course to the petition, this Court required
allegation that the latter's products are not respondent to file her Comment (Rollo, p. 290)
identical or even only substantially identical which was filed on December 16, 1976 (Rollo,
to the products covered by petitioner's pp. 291-316). Thereafter, petitioner filed her
patents. Said court noticed that contrary to Reply (Rollo, p. 323) and on May 30, 1977, the
the lower courts position that the court a petition was given due course (Rollo, p. 345).
quohad no jurisdiction to determine the Petitioner filed her brief on July 14, 1977
question of invalidity of the patents, Section 45 (Rollo, p. 351) while private respondent filed
and 46 of the Patent Law allow the court to her brief on August 25, 1977 (Rollo, p. 359).
make a finding on the validity or invalidity of Thereafter, petitioner having failed to file
patents and in the event there exists a fair reply brief, the Court resolved to declare the
question of its invalidity, the situation calls for case submitted for decision on December 9,
a denial of the writ of preliminary injunction 1977 (Rollo, p. 359).
pending the evaluation of the evidence
presented (Rollo, pp. 218-226). Thus, finding
the lower court's position to have been The assignment of errors raised by the
opposed to Patent Law, respondent court petitioner in this case (Rollo, pp. 15-16) may be
reduced to three main issues:
considered it a grave abuse of discretion when
the court a quo issued the writ being
questioned without looking into the defenses (1) Whether or
alleged by herein private respondent. Further, not in an action
it considered the remedy of appeal, under the for
circumstances, to be inadequate. infringement
the Court a
Thus, on July 6, 1976, respondent court made a quo had
complete turnabout from its original decision jurisdiction to
determine the
and promulgated a Resolution, the dispositive
portion of which reads: invalidity of
the patents at
issue which
WHEREFORE, our decision is invalidity was
hereby set aside. The writ of still pending
certiorari is ordered issued. consideration
Accordingly, the challenged in the patent
orders, Exhibit H and H-1 and office.
the order denying the motion
for reconsideration (Annex "K",
(2) Whether or
Petition), are hereby set aside.
The writ of preliminary not the Court a
injunction previously ordered quo committed
by this Court and ordered grave abuse of
lifted by the Decision now discretion in
being set aside is hereby the issuance of
reinstated and made a writ of
permanent. Without preliminary
pronouncement as to costs. 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 faciepresumption of its correctness
and validity. The decision of the Commissioner
(now Director) of Patent in granting the
patent is presumed to be correct. The burden
of going forward with the evidence (burden of
evidence) then shifts to the defendant to
overcome by competent evidence this legal
presumption.
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 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
resolutions of respondent Court of Appeals.
(Rollo, pp. 291-292).
Such contention is untenable.
There is no dispute that petitioner has
seasonably petitioned. On the other hand, it is
elementary that the trial judge is a
mere nominal party as clearly provided in
Section 5, Rule 65 of the Revised Rules of Court
where it shall be the duty of such person or
persons interested in sustaining the
proceedings in court, "to appear and defend,
both in his or their own behalf and in behalf of
the court or judge affected by the
proceedings."
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.
Angel Vargas, a farmer acquainted with local
conditions and alive to the commercial possibilities,
took it upon himself to produce, with the native plow
as the model, an improved, adjustable plow. On July
22, 1910, he made application for a United States
patent to cover his so-called invention. On March 12,
1912, letters patent were issued by the United
States Patent Office in favor of Vargas .On April 24,
1912, a certified copy of the patent was filed in the
Division of Patents, Copyrights, and Trademarks of
the Executive Bureau, Government of the Philippine
Islands. The patent and its registry was also
published in the newspaper, El Tiempo.
Since 1910, Vargas has engaged in the manufacture
of these plows in the city of Iloilo, Philippine Islands.
On the plows there was first stamped the words
"Patent Applied For," later after the patent had been
granted, changed to "Patented Mar. 12, 1912."
Ninety per cent of the plows in use in the Visayas
(Iloilo and vicinity) are said to be Vargas plows.

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

Feria (Chairman), Fernan, Gutierrez, Jr., and Co. (Ltd.), was engaged in the foundry business in
Feliciano, * JJ., concur.
the City of Iloilo. It openly held itself out as a
manufacturer of plow parts. It has in fact produced
Alampay, J., took no part. points, shares, shoes, and heel pieces in a
considerable amount adapted to replace worn-out
parts of the Vargas plow.

Footnotes Such was the existing situation when, in the early

part of 1918, the owner of the patent, and thus the
proper party to institute judicial proceedings, began
Republic of the Philippines
action in the Court of First Instance of Iloilo to enjoin
SUPREME COURT
the alleged infringement of U.S. Patent No. 1020232
Manila
by the defendant F. M Yaptico & Co. (Ltd.), and to
recover the damages suffered by reason of this
EN BANC infringement. The court issued the preliminary
injunction as prayed for. The defendant, in addition
G.R. No. 14101 September 24, 1919 to a general denial, alleged, as special defenses, that
the patent lacked novelty or invention, that there
ANGEL VARGAS, plaintiff-appellant, was no priority of ideas or device in the principle and
vs. construction of the plow, and that the plow, whose
F. M. YAPTICO & CO. (Ltd.), defendant-appellee. manufacture it was sought to have enjoined by the
plaintiff, had already been in public use for more
than two years before the application of the plaintiff
Charles C. Cohn for appellants . for his patent. The parties subsequently entered into
John Bordman for appellee. a stipulation that the court should first resolve the
question of whether or not there had been an
MALCOLM, J.: infraction of the patent, reserving the resultant
question of damages for later decision. After the
Rude wooden implements for tilling the soil have taking of evidence, including the presentation of
been in use in the Philippines, possibly not since the exhibits, the trial judge, the Honorable Antonio
Israelites "went down to sharpen every man his Villareal, in a very exhaustive and learned decision,
share and his coulter," but certainly for many years. rendered judgment in favor of the defendant and
Iron plows called "Urquijo" and "Pony" have latterly against the plaintiff, declaring null and without
been the vogue. effect the patent in question and dismissing the suit
with costs against the plaintiff .The preliminary
injunction theretofore issued was dissolved.
From this judgment the plaintiff has appealed,
specifying five errors. The principal assignment No.
1 is, that the trial court erred in finding that the
patented invention of the plaintiff is lacking in
novelty and invention. Defendant, in reply, relies on
three propositions, namely: (1) The judgment of the
trial court in finding the patent granted plaintiff
void for lack of novelty and invention should be
affirmed; (2) The patent granted plaintiff is void
from the public use of his plow for over two years
prior to his application for a patent, and (3) If the
patent is valid, there has been no contributory
infringement by defendant.
Before resolving these rival contentions, we should
have before us the relevant law. Act No. 2235 of the
Philippine Legislature, enacted on February 10,
1913, in effect makes the United States Patent Laws
applicable in the Philippine Islands. It provides that
"owners of patents, including design patents, which
have been issued or may hereafter be issued, duly
registered in the United States Patent Office under
the laws of the United States relating to the grant of
patents, shall receive in the Philippine Islands the
protection accorded them in the United States under
said laws." (Sec. 1.) Turning to the United States
Patent Laws, we find the Act of Congress of March
3, 1897, amendatory of section 4886 of the United
States Revised Statutes, reading as follows:
Any person who has invented or discovered
any new and useful art, machine,
manufacture, or composition of matter, or
any new an useful improvements thereof,
not known or used by others in this country,
before his invention or discovery thereof,
and not patented or described in any
printed publication in this or any foreign
country, before his invention or discovery
thereof, or more than two years prior to his
application, and not in public use or on sale
in this country for more than two years
prior to his application, unless the same is
proved to have been abandoned, may upon
payment of the fees required by law, and
other due proceeding had, obtain a patent
therefor. (29 Stat. L., 692, 7 Fed .Stat. Ann.
[2d Ed.], p. 23.)
When a patent is sought to be enforced, "the
question of invention, novelty, or prior use, and each
of them, are open to judicial examination." The
burden of proof to substantiate a charge of
infringement is with the plaintiff. Where, however,
the plaintiff introduces the patent in evidence, if it
is in due form, it affords a prima faciepresumption
of its correctness and validity. The decision of the
Commissioner of Patents in granting the patent is
always presumed to be correct. The burden then
shifts to the defendant to overcome by competent
evidence this legal presumption .With all due
respect, therefore, for the critical and expert
examination of the invention by the United States
Patent Office, the question of the validity of the
patent is one for judicial determination, and since a
patent has been submitted, the exact question is
whether the defendant has assumed the burden of
proof as to anyone of his defenses. (See Agawan
Co. vs. Jordan [1869], 7 Wall., 583;
Blanchard vs .Putnam [1869], 8 Wall., 420;
Seymour vs. Osborne [1871], 11 Wall., 516;
Reckendorfer vs. Faber [1876], 92 U.S., 347; 20 R. C.
L., 1112, 1168, 1169.)
As herein before stated, the defendant relies on
three special defenses. One such defense, on which
the judgment of the lower court is principally
grounded, and to which appellant devotes the major
portion of his vigorous argument, concerns the
element of novelty, invention, or discovery, that
gives existence to the right to a patent. On this point
the trial court reached the conclusion that "the
patented plow of the plaintiff, Exhibit D, is not
different from the native plow, Exhibit 2, except in
the material, in the form, in the weight and the
grade of the result, the said differences giving it
neither a new function nor a new result distinct from
the function and the result obtained from the native
plow; consequently, its production does not
presuppose the exercise of the inventive faculty but
merely of mechanical skill, which does not give a
right to a patent of an invention under the provisions
of the Patent Law." In thus finding, the court may
have been right, since the Vargas plow does not
appear to be such a "combination" as contains a
novel assemblage of parts exhibiting invention.
(See Stimpson vs. Woodman [1870], 10 Wall., 117 —
rollers; Hicks vs. Kelsey [1874], 20 Wall., 353 —
stoves; Washburn & Moen Mfg. Co. vs. Beat 'Em All
Barbed Wire Co. [1892], 143 U.S., 275 — barbed
wire; Lynch vs .Dryden [1873], C. D., 73 — walking
cultivators; Torrey vs. Hancock [1910], 184 Fed., 61
— rotary plows.)
A second line of defense relates to the fact that
defendant has never made a complete Vargas plow,
but only points, shares, shoes, and heel pieces, to
serve as repairs. Defendant's contention is, that in
common with other foundries, he has for years cast
large numbers of plow points and shares suitable for
use either on the native wooden plow, or on the
Vargas plow. A difference has long been recognized
between repairing and reconstructing a machine. If,
for instance, partial injuries, whether they occur
from accident or from wear and tear, to a machine
for agricultural purposes, are made this is only re-
fitting the machine for use, and thus permissible.
(Wilson vs. Simpson [1850], 9 How., 109.) Even
under the more rigorous doctrine of Leeds & Catlin
Co. vs. Victor Talking Machine Co. ([1909], 213 U.S.,
325), it may be possible that all the defendant has
done is to manufacture and sell isolated parts to be
used to replace worn-out parts.
The third defense is, that under the provisions of the
statute, an inventor's creation must not have been
in public use or on sale in the United States (and the
Philippine Islands) for more than two years prior to
his application .Without, therefore, committing
ourselves as to the first two defenses, we propose to
base our decision on the one just suggested as more
easily disposing of the case. (See 20 R. C. L., 1140-
1142.) We do so with full consciousness of the doubt
which arose in the mind of the trial court, but with
the belief that since it has been shown that the
invention was used in public at Iloilo by others than
Vargas, the inventor, more than two years before the
application for the patent, the patent is invalid.
Although we have spent some time in arriving at
this point, yet having reached it, the question in the
case is single and can be brought to a narrow
compass. Under the English Statute of Monopolies
(21 Jac. Ch., 3), and under the United States Patent
Act of February 21, 1793, later amended to be as
herein quoted, it was always the rule, as stated by
Lord Coke, Justice Story and other authorities, that
to entitle a man to a patent, the invention must be
new to the world. (Pennock and Sellers vs. Dialogue
[1829], 2 Pet., 1.) As said by the United States
Supreme Court, "it has been repeatedly held by this
court that a single instance of public use of the
invention by a patentee for more than two years
before the date of his application for his patent will
be fatal to the validity of the patentwhen issued."
(Worley vs. Lower Tobacco Co .[1882], 104 U. S., 340;
McClurg vs. Kingsland [1843], I How., 202;
Consolidated Fruit Jar Co. vs. Wright [1877], 94 U.
S., 92; Egbert vs. Lippmann [1881], 104 U. S., 333;
Coffin vs. Ogden [1874], 18 Wall., 120; Manning vs.
Cape Ann Isinglass and Glue Co. [1883], 108 U. S.,
462; Andrews vs. Hovey [1887], 123 U. S., 267;
Campbell vs. City of New York [1881], 1 L. R. A., 48.)
On the facts, we think the testimony shows such a
public use of the Vargas plow as to render the patent
invalid Nicolas Roces, a farmer, testified that he had
bought twenty Vargas plows, of which Exhibit 5 was
one, in December, 1907; and Exhibit 5, the court
found, was a plow completely identical with that for
which the plaintiff had received a patent. The minor
exception, and this in itself corroborative of Roces'
testimony, is that the handle of plow Exhibit 5 is
marked with the letters "A V" and not with the
words "Patent Applied For" or "Patented Mar.12,
1912." Salvador Lizarraga, a clerk in a business
house, testified that he had received plows similar to
Exhibits D, 5, and 4, for sale on commission on May,
1908, from Bonifacio Araneta, partner of Vargas in
the plow business. Ko Pao Ko, a blacksmith, testified
that he had made fifty plow frames in 1905 for
Vargas and Araneta, of which Exhibit 4 is one;
Exhibit 4, the court found, is a plow identical with
that patented by Vargas, but without share and
mould-board. Alfred Berwin, an employee in the
office of Attorney John Bordman, testified that on
September 21, 1908, he had knowledge of a
transaction wherein Vargas and Araneta desired to
obtain money to invest in a plow factory. George
Ramon Saul, a mechanic of the "Taller Visayas" of
Strachan and MacMurray, testified that he had
made Vargas plow points and shares of the present
form upon order of Araneta and Vargas in 1906 and
1907 .William MacMurray, proprietor of the "Taller
Visayas," corroborated the evidence of the witness
Saul by the exhibition of the account against Vargas
and Araneta wherein, under date of December 13,
1906, appears the item "12 new soft steel plow
shares forged and bored for rivets as per sample."
Against all this, was the testimony of the plaintiff
Angel Vargas who denied that Saul could have been
seen the Vargas plow in 1907 and 1907, who denied
that Roces purchased the Vargas plow in 1907, who
denied that Lizarraga could have acted as an agent
to sell two plows in November, 1908, who denied any
remembrance of the loan mentioned by Berwin as
having been negotiated in September, 1908, who
denied that Ko Pao Ko made fifty plows one of which
is Exhibit 4, for Araneta and Vargas in 1905.
Plaintiff introduced his books to substantiate his
oral testimony .It is hardly believable that five or six
witnesses for the defense would deliberately perjure
themselves under oath. One might, but that all
together, of different nationalities, would enter into
such a conspiracy, is to suppose the improbable.
Tested by the principles which go to make the law,
we think a preponderance of the evidence is to the
effect that for more than two years before the
application for the original letters patent, or before
July 22, 1908, there was, by the consent and
allowance of Vargas, a public use of the invention
covered by them.
To conclude, we are not certain but that appellee has
proved every one of his defenses. We are certain that
he has at least demonstrated the public use of the
Vargas plow over two years prior to the application
for a patent. Such being the case, although on a
different ground, we must sustain the judgment of
the lower court, without prejudice to the
determination of the damages resulting from the
granting of the injunction, with the costs of this
instance against the appellant. So ordered.
Arellano, C.J. Torres, Johnson, Araullo, Street,
Avanceña and Moir, JJ., concur.
Republic of the Philippines
SUPREME COURT
Manila
EN BANC
G.R. No. L-38010 December 21, 1933
PATRICK HENRY FRANK and WILLIAM
HENRY GOHN, plaintiffs-appellants,
vs.
G. KOSUYAMA, defendant-appellee.
J.W. Ferrier for appellants.
Pablo Lorenzo for appellee.
IMPERIAL, J.:
Patent No. 1519579 (Exhibit 117) on improvement
in hemp stripping machines, issued by the United
States Patent Office on December 16,1924, and
registered in the Bureau of Commerce and Industry
of the Philippine Islands on March 17,1925, was the
origin of this action brought by the plaintiffs herein
who prayed that the judgment be rendered against
the defendant, ordering him thereby to refrain
immediately from the manufacture and sale of
machines similar to the one covered by the patent:
to render an accounting of the profits realized from
the manufacture and sale of the machines in
question; that in case of refusal or failure to render
such accounting, the defendants be ordered to pay
the plaintiffs the sum of P60 as profit on each
machine manufactured or sold by him; that upon
approval of the required bond, said defendant be
restrained from continuing the manufacture and
sale of the same kind of machines; that after the trial
the preliminary injunction issued therein be
declared permanent and, lastly, that the said
defendant be sentenced to pay the costs and
whatever damages the plaintiffs might be able to
prove therein. The action therefore was based upon
alleged infringement by the defendant of the rights
and privileges acquired by the plaintiffs over the
aforesaid patent through the manufacture and sale
by the former of machines similar to that covered by
the aforesaid patent.
The plaintiffs appealed from the judgment rendered
by the trial court dismissing their complaint, with
cost, as well as the defendant's counterclaim of
P10,000. The defendant did not appeal.
In their amended complaint, the plaintiff alleged
that their hemp stripping machines, for which they
obtained a patent, have the following
characteristics: "A stripping head, a horizontal
table, a stripping knife supported upon such table, a
tappering spindle, a rest holder adjustably secured
on the table portion, a lever and means of compelling
the knife to close upon the table, a pallet or rest in
the bottom of the table, a resilient cushion under
such palletor rest." In spite of the fact that they filed
an amended complaint from which the "spindle" or
conical drum, which was the only characteristic
feature of the machine mentioned in the original
complaint, was eliminated, the plaintiffs insisted
that the said part constitutes the essential
difference between the machine in question and
other machines and that it was the principal
consideration upon which their patent was issued.
The said plaintiffs sustained their contention on this
point even in their printed brief and memorandum
filed in this appeal.
During the trial, both parties presented voluminous
evidence from which the trial court arrived at the
following conclusions:
In constructing their machine the plaintiffs
did nothing but improve, to a certain
degree, those that were already in vogue
and in actual us in hemp producing
provinces. It cannot be said that they have
invented the "spindle" inasmuch as this
was already known since the year 1909 or
1910. Neither it can be said that they have
invented the stripping knife and the
contrivance which controls the movement
and pressure thereof on the ground that
stripping knives together with their control
sets were already in actual use in the
different stripping machines long before
their machine appeared. Neither can it be
said that they invented the fly wheel
because that part or piece thereof, so
essential in every machine from time
immemorial, was already known and
actually employed in hemp stripping
machines such as those of Riesgo (Exhibit
4-A), Crumb (Exhibit 1-A), Icsiar (Exhibit
A-Suzara), Browne (Exhibit 28-A), McFie,
etc., all of which were in use for the benefit
of hemp long before the appearance of the
plaintiffs' machines in the market. Much
less can it be said that they invented the
pedal to raise the knife in order to allow the
hemp to be stripped to pass under it, on the
ground that the use of such contrivance has,
likewise, been known since the invention of
the most primitive of hemp stripping
machines.
 On the other hand, although the plaintiffs
alleged in their original complaint that "the
principal and important feature of said
machine is a spindle upon which the hemp
to be stripped is wound in the process of
stripping," nevertheless, in their amended
complaint of March 3, 1928, which was filed
after a portion of the evidence therein had
already been submitted and it was known
that the use of the spindle was nothing new,
they still made the allegations appearing in
paragraph 3 of their said amended
complaint and reproduced on pages 2,3,4
and 5 hereof, copying the same from the
application which they filed with the
United States Patent Office, under which
they obtained their patent in question. The
aforesaid application clearly shows that
what they applied for was not a patent for a
"pioneer or primary invention" but only for
some "new and useful improvement in
hemp stripping machines."
We have carefully reviewed the evidence presented
and have had the opportunity of ascertaining the
truth of the conclusions above stated. We agree with
the trial court that, strictly speaking, the hemp
stripping machine of the plaintiffs does not
constitute an invention on the ground that it lacks
the elements of novelty, originality and precedence
(48 C.J., sec. 101, p. 97, and 102, p. 98). In fact,
before the plaintiffs herein obtained their patent,
they themselves had already publicly used the same
kind of machine for some months, at least, and,
various other machines, having in general, the same
characteristics and important parts as that of the
said plaintiffs, were known in the Province of Davao.
Machines known as Molo, Riesgo, Crumb, Icsiar,
Browne and McFie were already known in that
locality and used by the owners of hemp plantations
before the machine of the plaintiffs came into
existence. It may also be noted that Adrian de Icsiar
applied for a patent on an invention which resulted
in the rejection by the United States Patent Office of
the plaintiffs' original application for a patent on the
so called "spindle" or conical drum which was then
in actual use in the Dringman and Icsiar hemp
stripping machines.
Notwithstanding the foregoing facts, the trial court
did not decree the annulment of the plaintiffs' patent
and the herein defendant-appellee insists that the
patent in question should be declared null and void.
We are of the opinion that it would be improper and
untimely to render a similar judgment, in view of the
nature of the action brought by the plaintiffs and in
the absence of a cross-complaint to that effect. For
the purposes of this appeal, suffice it to hold that the
defendant is not civilly liable for alleged
infringement of the patent in question.
In the light of sound logic, the plaintiffs cannot insist
that the "spindle" was a patented invention on the
ground that said part of the machine was voluntarily
omitted by them from their application, as evidenced
by the photographic copy thereof (Exhibit 41)
wherein it likewise appears that the patent on
Improved Hemp Stripping Machines was issued
minus the "spindle" in question. Were we to stress to
this part of the machine, we would be giving the
patent obtained by the plaintiffs a wider range than
it actually has, which is contrary to the principles of
interpretation in matters relating to patents.
In support of their claim the plaintiffs invoke the
doctrine laid down by this court in the case of Frank
and Gohn vs.Benito (51 Phil., 712), wherein it was
held that the therein defendant really infringed
upon the patent of the therein plaintiffs. It may be
noted that the plaintiffs in the former and those of
the latter case are the same and that the patent then
involved is the very same one upon which the
present action of the plaintiffs is based. The above-
cited case, however, cannot be invoked as a
precedent to justify a judgment in favor of the
plaintiffs-appellants on the ground that the facts in
one case entirely different from those in the other.
In the former case the defendant did not set up the
same special defenses as those alleged by the herein
defendant in his answer and the plaintiffs therein
confined themselves to presenting the patent, or
rather a copy thereof, wherein the "spindle" was
mentioned, and this court took for granted their
claim that it was one of the essential characteristics
thereof which was imitated or copied by the then
defendant. Thus it came to pass that the "spindle" in
question was insistently mentioned in the decision
rendered on appeal as the essential part of the
plaintiffs' machine allegedly imitated by the then
defendant. In the case under consideration, it is
obvious that the "spindle" is not an integral part of
the machine patented by the plaintiffs on the ground
that it was eliminated from their patent inasmuch
as it was expressly excluded in their application, as
evidenced by the aforesaid Exhibit 41.
Wherefore, reiterating that the defendant cannot be
held civilly liable for alleged infringement of the
patent upon which the present action is based on the
ground that there is no essential part of the machine
manufactured and sold by him, which was unknown
to the public in the Province of Davao at the time the
plaintiffs applied for and obtained their patent for
improved hemp stripping machines, the judgment
appealed from is hereby affirmed, with the costs
against the plaintiffs-appellants. So ordered.
Avanceña, C.J., Malcolm, Villa-Real, and Hull, JJ., In addition to the evidence presented, the parties
concur. submitted the following stipulation of facts:

Republic of the Philippines The parties agree on the following facts:

SUPREME COURT
Manila 1. That the plaintiff, Angel Vargas, is of age
and a resident of the municipality of Iloilo,
EN BANC Iloilo, Philippine Islands.

G.R. No. L-36650 January 27, 1933
ANGEL VARGAS, plaintiff-appellee,
vs.
PETRONILA CHUA, ET AL., defendants-
appellants.
Jose F. Orozco for appellants.
Jose Yulo for appellee.
IMPERIAL, J.:
The defendants Petronila Chua, Coo Pao and Coo
Teng Hee, appeal from the judgment of the Court of
First Instance of Manila, the dispositive part of
which reads as follows:
Wherefore judgment is rendered in favor of
the plaintiff and against the defendants,
ordering each and every one of them, their
agents, mandatories and attorneys, to
henceforth abstain from making,
manufacturing, selling or offering for a sale
plows of the type of those manufactured by
the plaintiff, and particularly plows of the
model of Exhibits B, B-1 and B-2, and to
render to the plaintiff a detailed accounting
of the profits obtained by them from the
manufacture and sale of said type of plows
within thirty (30) days from the date of the
receipt by them of notice of this decision,
with costs against all of the defendants.
Angel Vargas, the plaintiff herein, brought this
action to restrain the appellants and the other
defendant entity, Cham Samco & Sons, their agents
and mandatories, from continuing the manufacture
and sale of plows similar to his plow described in his
patent No. 1,507,530 issued by the United States
Patent Office on September 2, 1924; and to compel
all of said defendants, after rendering an accounting
of the profits obtained by them from the sale of said
plows from September 2, 1924, to pay him damages
equivalent to double the amount of such profits.
It appears from the bill of exceptions that Cham
Samco & Sons did not appeal.
2. That the defendant, Petronila Chua, is
also of age, and is married to Coo Pao alias
Coo Paoco, and resides in Iloilo.
3. That the defendant, Coo Teng Hee, is also
of age and a resident of Iloilo, and is the sole
owner of the business known as Coo Kun &
Sons Hardware Co. established in Iloilo.
4. That the defendant, Cham Samco &
Sons, is a commercial partnership duly
organized under the laws of the Philippine
Islands, with their principal office in the
City of Manila, and that the defendants
Cham Samco, Cham Siong E, Cham Ai Chia
and Lee Cham Say, all of age and residents
of the City of Manila, are the partners of the
firm Cham Samco & Sons.
5. The parties take for granted that the
complaint in this case is amended in the
sense that it includes Coo Paoco as party
defendant in his capacity as husband of the
defendant, Petronila Chua, with Attorney
Jose F. Orozco also representing him, and
that he renounces his rights to receive
summons in this case by reproducing the
answer of his codefendant, Petronila Chua.
6. That the plaintiff is the registered owner
and possessor of United States Patent No.
1,507,530 on certain plow improvements,
issued by the United States Patent Office
on September 2, 1924, a certified copy of
which was registered in the Bureau of
Commerce and industry of the Government
of the Philippine Islands on October 17,
1924. A certified copy of said patent is
attached to this stipulation of facts as
Exhibit A.
7. That the plaintiff is now and has been
engaged, since the issuance of his patent, in
the manufacture and sale of plows of the
kind, type and design covered by the
aforementioned patent, said plows being of
different sizes and numbered in accordance
therewith from 1 to 5.
8. That, since the filing of the complaint to
date, the defendant, Petronila Chua, has
been manufacturing and selling plows of
the kind, type and design represented by
Exhibits B, B-1 and B-2, of different sizes,
designated by Nos. 2, 4 and 5.
9. That, since the filing of the complaint to
date, the defendant, Coo Teng Hee, doing
business in Iloilo under the name of Coo
Kun & Sons Hardware Co., has been
obtaining his plows, of the form and size of
Exhibits B, B-1 and B-2, from the defendant
Petronila Chua.
10. Without prejudice to the plaintiff's right
to ask the defendants to render an
accounting in case the court deem it proper,
the parties agree that the defendant Coo
Teng Hee, doing business under the name
of Coo Kun & Sons Hardware Co., has been
selling to his customers in his store on J.
Ma. Basa Street in Iloilo, plows of the kind,
type and design represented by Exhibits B,
B-1 and B-2, having bought said plows from
his codefendant, Petronila Chua, who
manufactures them in her factory on Iznart
Street, Iloilo.
11. That, according to the invoices marked
Exhibits C and C-2 dated March 13, 1928,
and June 19, 1928, respectively, the
defendant Cham Samco & Sons, on the
dates mentioned, had, in the ordinary
course of business, bought of its
codefendant Coo Kun & Sons Hardware
Co., 90 plows of the form, type and design of
Exhibits B, B-1 and B-2 which it has been
selling in its store on Sto. Cristo Street,
Manila.
12. That the same defendant Cham Samco
& Sons, in the ordinary course of business,
bought on March 17, 1928, of the store "El
Progreso" owned by Yao Ki & Co., of Iloilo,
a lot of 50 plows, of the form, type and
design of Exhibit B-1, as shown by Invoice
C-1, and that it has been selling them in its
store on Sto. Cristo St., Manila.
13. That, on September 19, 1928, the
defendant Cham Samco & Sons, sold in its
store on Sto. Cristo St., Manila, the plow
Exhibit B-1, for the sale of which invoice
Exhibit D was issued.
14. That, on December 20, 1927, the
plaintiff herein, through his attorneys
Paredes, Buencamino & Yulo, sent by
registered mail to the herein defendant,
Coo Kun & Sons Hardware Co., at Iloilo, the
original of the letter Exhibit E, which was
received by it on September 28, 1927,
according to the receipt marked Exhibit E-
1 attached hereto.
15. That the plows manufactured by the
plaintiff in accordance with his patent,
Exhibit A, are commonly known to the
trade in Iloilo, as well as in other parts of
the Philippines, as "Arados Vargas", and
that the plaintiff is the sole manufacturer of
said plows. A sample of these plows is
presented as Exhibit F.
16. That the document, Exhibit 1-Chua, is a
certified copy of the amended complaint,
the decision of the Court of First Instance of
Iloilo and that of the Supreme Court (R. G.
No. 14101) in civil case No. 3044 of Iloilo,
entitled "Angel Vargas", plaintiff, vs. F. M.
Yaptico & Co., Ltd., defendant", and that
Exhibit 2-Chua et al. is a certified copy of
Patent No. 1,020,232, to which the
aforementioned complaint and decision
refer, issued in favor of Angel Vargas by the
United States Patent Office on March 12,
1912, and that Exhibit 3-Chua et al.,
represents the plow manufactured by Angel
Vargas in accordance with his Patent
marked Exhibit 2-Chua et al.
The appellants assign the following errors:
FIRST ERROR
The trial court erred in declaring that the
Vargas plow, Exhibit F (covered by Patent
No. 1,507,530) is distinct from the old model
Vargas plow, Exhibit 2-Chua, covered by
the former Patent No. 1,020,232, which had
been declared null and void by this court.
SECOND ERROR
The trial court erred in mistaking the
improvement on the plow for the plow itself.
THIRD ERROR
The trial court erred in rendering judgment
in favor of the plaintiff and against the
defendants.
FOURTH ERROR
The trial court erred in not dismissing the
complaint with costs against the plaintiff.
The evidence shows that Exhibit F is the kind of
plows the plaintiff, Angel Vargas, manufactures, for
which Patent No. 1,507,530, Exhibit A, was issued
in his favor. Exhibits B, B-1 and B-2 are samples of
the plows which the herein appellants, Coo Pao and
Petronila Chua, have been manufacturing since
1918, and Exhibit 3-Chua represents the plow for
which, on March 12, 1912, the appellee obtained a
patent from the United States Patent Office, which
was declared null and void by the Supreme Court in
the case of Vargas vs. F. M. Yap Tico & Co. (40 Phil.,
195).
With these facts in view, the principal and perhaps
the only question we are called upon to decide is
whether the plow, Exhibit F, constitutes a real
invention or an improvement for which a patent may
be obtained, or if, on the contrary, it is substantially
the same plow represented by Exhibit 3-Chua the
patent for which was declared null and void in the
aforementioned case of Vargas vs. F. M. Yaptico &
Co., supra.
We have carefully examined all the plows presented
as exhibits as well as the designs of those covered by
the patent, and we are convinced that no substantial
difference exists between the plow, Exhibit F, and
the plow, Exhibit 3-Chua which was originally
patented by the appellee, Vargas. The only
difference noted by us is the suppression of the bolt
and the three holes on the metal strap attached to
the handle bar. These holes and bolt with its nut
were suppressed in Exhibit F in which the beam is
movable as in the original plow. The members of this
court, with the plows in view, arrived at the
conclusion that not only is there no fundamental
difference between the two plows but no
improvement whatever has been made on the latest
model, for the same working and movement of the
beam existed in the original model with the
advantage, perhaps, that its graduation could be
carried through with more certainty by the use of the
bolt which as has already been stated, was
adjustable and movable.
As to the fact, upon which much emphasis was laid,
that deeper furrows can be made with the new
model, we have seen that the same results can be
had with the old implement.
In view of the foregoing, we are firmly convinced
that the appellee is not entitled to the protection he
seeks for the simple reason that his plow, Exhibit F,
does not constitute an invention in the legal sense,
and because, according to the evidence, the same
type of plows had been manufactured in this country
and had been in use in many parts of the Philippine
Archipelago, especially in the Province of Iloilo, long
before he obtained his last patent.
In the above mentioned case of Vargas vs. F. M.
Yaptico & Co., we said:
When a patent is sought to be enforced, "the
questions of invention, novelty, or prior use,
and each of them, are open to judicial
examination." The burden of proof to
substantiate a charge of infringement is
with the plaintiff. Where, however, the
plaintiff introduces the patent in evidence,
if it is the due form, it affords a prima facie
presumption of its correctness and validity.
The decision of the Commissioner of
Patents in granting the patent is always
presumed to be correct. The burden then
shifts to the defendant to overcome by
competent evidence this legal presumption.
With all due respects, therefore, for the
critical and expert examination of the
invention by the United States Patent
Office, the question of the validity of the
patent is one for judicial determination, and
since a patent has been submitted, the
exact question is whether the defendant
has assumed the burden of proof as to
anyone of his defenses. (See Agawan
Co. vs. Jordan [1869], 7 Wall., 583;
Blanchard vs. Putnam [1869], 8 Wall., 420;
Seymour vs. Osborne [1871], 11 Wall., 516;
Reckendorfer vs. Faber [1876], 92 U. S.,
347; 20 R. C. L., 1112, 1168, 1169.)
Although we spent some time in arriving at
this point, yet, having reached it, the
question in the case is single and can be
brought to a narrow compass. Under the
English Statute of Monopolies (21 Jac. Ch.,
3), and under the United States Patent Act
of February 21, 1793, later amended to be
as herein quoted, it was always the rule, as
stated by Lord Coke, Justice Story and
other authorities, that to entitle a man to a
patent, the invention must be new to the
world. (Pennock and Sellers vs. Dialogue
[1829], 2 Pet., 1.) As said by the United
States Supreme Court, "it has been
repeatedly held by this court that a single
instance of public use of the invention by a
patentee of more than two years before the
date of his application for his patent will be
fatal to the validity of the patent when
issued." (Worley vs. Lower Tobacco Co.
 [1882], 104 U. S., 340;
McClurg vs. Kingsland [1843], 1 How., 202;
Consolidated Fruit Jar Co. vs. Wright
[1877], 94 U. S., 92; Egbert vs. Lippmann
[1881], 104 U. S., 333; Coffin vs. Ogden
[1874], 18 Wall., 120; Manning vs. Cape
Ann Isinglass and Glue Co. [1883], 108 U.
S., 462; Andrews vs. Hovey [1887], 123 U.
S., 267; Campbell vs.City of New York
[1888], 1 L. R. A., 48.)
We repeat that in view of the evidence presented,
and particularly of the examination we have made
of the plows, we cannot escape the conclusion that
the plow upon which the appellee's contention is
based, does not constitute an invention and,
consequently, the privilege invoked by him is
untenable and the patent acquired by him should be
declared ineffective.
The judgment appealed from is hereby reversed and
the appellants are absolved from the complaint, with
costs of this instance against the appellee. So
ordered.
Avanceña, C.J., Street, Villamor, Ostrand, Villa-
Real, Abad Santos, Hull, Vickers and Butte, JJ.,
concur.
Republic of the Philippines
SUPREME COURT
Manila
FIRST DIVISION
G.R. No. L-32160 January 30, 1982
DOMICIANO A. AGUAS, petitioner,
vs.
CONRADO G. DE LEON and COURT OF
APPEALS, respondents.
FERNANDEZ, J.:
This is a petition for certiorari to review the decision
of the Court of Appeals in CA G.R. NO. 37824-R
entitled "Conrado G. de Leon, plaintiff-appelle vs.
Dominciano Aguas and F.H. Aquino and Sons,
defendants-appellants," the dispositive portion of
which reads:
WHEREFORE, with the
modification that plintiff-applee's
award of moral damages is hereby
redured to P3,000.00, the appealed
judgment is hereby affirmed, in all
othe respects, with costs against
appellants. 1
On April 14, 1962, Conrado G. de Leon filed in the
Court of First Instance of Rizal at Quezon City a
complaint for infringement of patent against
Domiciano A. Aguas and F. H. Aquino and Sons
alleging that being the original first and sole
inventor of certain new and useful improvements in
the process of making mosaic pre-cast tiles, he
lawfully filed and prosecuted an application for
Philippine patent, and having complied in all
respects with the statute and the rules of the
Philippine Patent Office, Patent No. 658 was
lawfully granted and issued to him; that said
invention was new, useful, not known or used by
others in this country before his invention thereof,
not patented or described in any printed publication
anywhere before his invention thereof, or more than
one year prior to his application for patent thereof,
not patented in any foreign country by him or his
legal representatives on application filed more than
one year prior to his application in this country; that
plaintiff has the exclusive license to make, use and
sell throughout the Philippines the improvements
set forth in said Patent No. 658; that the invention
patented by said Patent No. 658 is of great utility
and of great value to plaintiff and of great benefit to
the public who has demanded and purchased tiles
embodying the said invention in very large
quantities and in very rapidly increasing quant ies;
that he has complied with the Philippine statues
relating to marking patented tiles sold by him; that
the public has in general acknowledged the validity
of said Patent No. 658, and has respected plaintiff's
right therein and thereunder; that the defendant
Domiciano A. Aguas infringed Letters of Patent No.
658 by making, using and selling tiles embodying
said patent invention and that defendant F. H.
Aquino & Sons is guilty of infringement by making
and furnishing to the defendant Domiciano A. Aguas
the engravings, castings and devices designed and
intended of tiles embodying plaintiff;s patented
invention; that he has given direct and personal
notice to the defendants of their said acts of
infringement and requested them to desist, but
nevertheless, defendants have refused and
neglected to desist and have disregarded such
request, and continue to so infringe causing great
and irreparable damage to plaintiff; that if the
aforesaid infringement is permitted to continue,
further losses and damages and irreparable injury
will be sustained by the plaintiff; that there is an
urgent need for the immediate issuance of a
preliminary injunction; that as a result of the
defendants' wrongful conduct, plaintiff has suffered
and the defendants are liable to pay him, in addition
to actual damages and loss of profits which would be 2. Granting a perpetual injunction
determined upon proper accounting, moral and restraining defendants, their
exemplary or corrective damages in the sum of officers, agents, employees,
P90,000.00; that plaintiff has been compelled to go associates, confederates, and any
to court for the protection and enforcement of his and all persons acting under their
and to engage the service of counsel, thereby authority from making and/or
incurring attorney's fees and expenses of litigation using and/or vending tiles
in the sum of P5,000.00. 2 embodying said patented
invention or adapted to be used in
On April 14, 1962, an order granting the plaintiff's combination embodying the same,
petition for a Writ of Preliminary Injunction was and from making, manufacturing,
issued. 3 using or selling, engravings,
castings and devises designed and
intended for use in apparatus for
On May 23, 1962, the defendant Domiciano A. Aguas the making of tiles embodying
filed his answer denying the allegations of the plaintiff's patented invention, and
plaintiff and alleging that: the plaintiff is neither the from offering or advertising so to
original first nor sole inventor of the improvements do, and from aiding and abetting or
in the process of making mosaic pre-cast tiles, the in any way contributing to the
same having been used by several tile-making infringement of said patent;
factories in the Philippines and abroad years before
the alleged invention by de Leon; that Letters Patent
No. 658 was unlawfully acquired by making it 3. Ordering that each and all of the
appear in the application in relation thereto that the infringing tiles, engravings,
process is new and that the plaintiff is the owner of castings and devices, which are in
the process when in truth and in fact the process the possession or under the control
incorporated in the patent application has been of defendants be delivered to
known and used in the Philippines by almost all tile plaintiff;
makers long before the alleged use and registration
of patent by plaintiff Conrado G. de Leon; that the 4. Ordering the defendants to
registration of the alleged invention did not confer jointly and severally pay to the
any right on the plaintiff because the registration plaintiff the following sums of
was unlawfully secured and was a result of the gross money, to wit:
misrepresentation on the part of the plaintiff that
his alleged invention is a new and inventive process; (a) P10,020.99 by way of actual
that the allegation of the plaintiff that Patent No. damages;
658 is of great value to plaintiff and of great benefit
to the public is a mere conclusion of the plaintiff, the
truth being that a) the invention of plaintiff is (b) P50,000.00 by way of moral
damages;
neither inventive nor new, hence, it is not
patentable, b) defendant has been granted valid
patents (Patents No. 108, 109, 110 issued on (c) P5,000.00 by way of exemplary
December 21, 1961) on designs for concrete damages;
decorative wall tiles; and c) that he can not be guilty
of infringement because his products are different (d) P5,000.00 by way of attorney's
from those of the plaintiff.4 fees and

The trial court rendered a decision dated December (e) costs of suit. 5
29, 1965, the dispositive portion of which reads:
The defendant Domiciano Aguas appealed to the
WHEREFORE, judgment is Court of Appeals, assigning the following errors. 6
hereby rendered in favor of
plaintiff and against the
I
defendants:

THE TRIAL COURT ERRED IN

1. Declaring plaintiff's patent valid
NOT HOLDING THAT
and infringed:
PLAINTIFF'S PATENT FOR THE
'PROCESS OF MAKING MOSAIC
PRE-CAST TILE' IS INVALID PRODUCED - THAT OF THE
BECAUSE SAID ALLEGED DEFENDANT ARE DIFFERENT.
PROCESS IS NOT AN
INVENTION OR DISCOVERY AS VI
THE SAME HAS ALREADY
LONG BEEN USED BY TILE
MANUFACTURERS BOTH THE TRIAL COURT ERRED IN
ABROAD AND IN THIS NOT DISMISSING THE
COUNTRY. COMPLAINT AND IN HOLDING
THE DEFENDANT, INSTEAD OF
THE PLAINTIFF, LIABLE FOR
II DAMAGES, AND ATTORNEY'S
FEES.
THE TRIAL COURT ERRED IN
HOLDING THAT THE PATENT On August 5, 1969, the Court of Appeals affirmed
OF PLAINTIFF IS VALID the decision of the trial court, with the modification
BECAUSE IT IS AN that plaintiff-appellee's award of moral damages
IMPROVEMENT OR THE AGE- was reduced to P3,000.00. 7
OLD TILE MAKING SYSTEM.
The petitioner assigns the following errors
III supposedly committed by the Court of Appeals:

THE TRIAL COURT ERRED IN It is now respectfully submitted

NOT ORDERING THE that the Court of Appeals
CANCELLATION OF committed the following errors
PLAINTIFF-APPELLEE'S involving questions of law, to wit:
LETTERS PATENT NO. 658,
EXHIBIT L, IN ACCORDANCE
WITH THE PERTINENT First error. — When it did not
conclude that the letters patent of
PROVISIONS OF THE PATENT
LAW, REPUBLIC ACT 165. the respondent although entitled
on the cover page as a patent for
improvements, was in truth and in
IV fact, on the basis of the body of the
same, a patent for the old and non-
THE TRIAL COURT ERRED IN patentable process of making
HOLDING THAT DEFENDANT mosaic pre-cast tiles;
DOMICIANO A. AGUAS IS
GUILTY OF INFRINGEMENT Second error. — When it did not
DESPITE THE FACT THAT conclude from the admitted facts of
PLAINTIFF'S PATENT IS NOT A the case, particularly the contents
VALID ONE. of the letters patent, Exh. L and
the pieces of physical evidence
V introduced consisting of samples of
the tiles and catalouges, that the
THE TRIAL COURT ERRED IN alleged improvements introduced
NOT HOLDING THAT THE by the respondent in the
DEFENDANT COULD NEVER manufacture of mosaic pre-cast
BE GUILTY OF tiles are not patentable, the same
INFRINGEMENT OF being not new, useful and
PLAINTIFF'S PATENT inventive.
BECAUSE EVEN IN MATTERS
NOT PATENTED BY THE Third error. — As a corollary,
PLAINTIFF - LIKE THE when it sentenced the herein
COMPOSITION AND petitioner to pay the damages
PROPORTION OF enumerated in the decision of the
INGREDIENTS USED AND THE lower court (Record on Appeal, pp.
STRUCTURAL DESIGNS OF 74-75), as confirmed by it (the
THE MOULD AND THE TILE Court of Appeals), but with the
 modification that the amount of
P50,000.00 moral damages was
reduced to P3,000.00. 8
The facts, as found by the Court of Appeals, are:
The basic facts borne out by the
record are to the effect that on
December 1, 1959 plaintiff-
appellee filed a patent application
with the Philippine Patent Office,
and on May 5, 1960, said office
issued in his favor Letters Patent
No. 658 for a "new and useful
improvement in the process of
making mosaic pre-cast tiles"
(Exh, "L"); that defendant F.H.
Aquino & Sons engraved the
moulds embodying plaintiff's
patented improvement for the
manufacture of pre-cast tiles,
plaintiff furnishing said defendant
the actual model of the tiles in
escayola and explained to said
engraver the plans, specifications
and the details of the engravings
as he wanted them to be made,
including an explanation of the lip
width, artistic slope of easement
and critical depth of the engraving
that plaintiff wanted for his
moulds; that engraver Enrique
Aquino knew that the moulds he
was engraving for plaintiff were
the latter's very own, which
possession the new features and
characteristics covered by
plaintiff's parent; that defendant
Aguas personally, as a building
contractor, purchased from
plaintiff, tiles shaped out of these
moulds at the back of which was
imprinted plaintiff's patent
number (Exhs., "A" to "E"); that
subsequently, through a a new and useful machine, manufactured product or
representative, Mr. Leonardo,
defendant Aguas requested
Aquino to make engravings of the
same type and bearing the
characteristics of plaintiff's
moulds; that Mr. Aquino knew
that the moulds he was asked to
engrave for defendant Aguas
would be used to produce cement
tiles similar to plaintiff's; that the
moulds which F.H. Aquino & Sons
eventually engraved for Aguas and
for which it charged Aguas double
the rate it charged plaintiff De
Leon, contain the very same
characteristic features of plaintiff's
mould and that Aguas used these
moulds in the manufacture of his
tiles which he actually put out for
sale to the public (Exhs. "1" to "3"
and Exhs. "A" to "E"); that both
plaintiff's and defendant Aguas'
tiles are sculptured pre-cast wall
tiles intended as a new feature of
construction and wag
ornamentation substantially
Identical to each other in size,
easement, lip width and critical
depth of the deepest depression;
and that the only significant
difference between plaintiff's
mould and that engraved by
Aquino for Aguas is that, whereas
plaintiff's mould turns out tiles 4 x
4 inches in size, defendant Aguas'
mould is made to fit a 4-1/4 x 4-1/4
inch tile. 9
The patent right of the private respondent expired
on May 5, 1977. 10 The errors will be discuss only to
determine the right of said private respondent to
damages.
The petitioner questioned the validity of the patent
of the private respondent, Conrado G. de Leon, on
the ground that the process, subject of said patent,
is not an invention or discovery, or an improvement
of the old system of making tiles. It should be noted
that the private respondent does not claim to be the
discoverer or inventor of the old process of tile-
making. He only claims to have introduced an
improvement of said process. In fact, Letters Patent
No. 658 was issued by the Philippine Patent Office
to the private respondent, Conrado G. de Leon, to
protect his rights as the inventor of "an alleged new
and useful improvement in the process of making
mosaic pre-cast tiles." 11 Indeed, Section 7, Republic
Act No. 165, as amended provides: "Any invention of
substance, process, or an improvement of the
foregoing, shall be patentable.
The Court of Appeals found that the private
respondent has introduced an improvement in the
process of tile-making because:
... we find that plaintiff-appellee
has introduced an improvement in
the process of tile-making, which
proceeds not merely from
mechanical skill, said
improvement consisting among
other things, in the new critical
depth, lip width, easement and
field of designs of the new tiles.
The improved lip width of
appellee's tiles ensures the
durability of the finished product
preventing the flaking off of the
edges. The easement caused by the
inclination of the protrusions of
the patented moulds is for the
purpose of facilitating the removal
of the newly processed tile from the
female die. Evidently, appellee's
improvement consists in the
solution to the old critical problem
by making the protrusions on his
moulds attain an optimum height,
so that the engraving thereon
would be deep enough to produce
tiles for sculptured and decorative
purposes, strong optimum
thickness of appellee's new tiles of
only 1/8 of an inch at the deepest
easement (Exhs. "D" and "D-1") is
a most critical feature, suggestive
of discovery and inventiveness,
especially considering that, despite
said thinness, the freshly formed
tile remains strong enough for its
intended purpose.
While it is true that the matter of
easement, lip width, depth,
protrusions and depressions are
known to some sculptors, still, to
be able to produce a new and useful
wall tile, by using them all
together, amounts to an invention.
More so, if the totality of all these
features are viewed in combination
with the Ideal composition of
cement, sodium silicate and
screened fine sand.
By using his improved process,
plaintiff has succeeded in
producing a new product - a
concrete sculptured tile which
could be utilized for walling and
decorative purposes. No proof was
adduced to show that any tile of
the same kind had been produced
by others before appellee.
Moreover, it appears that appellee
has been deriving considerable
profit from his manufacture and
sale of such tiles. This commercial
success is evidence of patentability
(Walker on Patents, Dellers
Edition, Vol. I, p. 237). 12
The validily of the patent issued by the Philippines
Patent Office in favor of the private respondent and
the question over the inventiveness, novelty and
usefulness of the improved process therein specified
and described are matters which are better
determined by the Philippines Patent Office. The
technical staff of the Philippines Patent Office,
composed of experts in their field, have, by the
issuance of the patent in question, accepted the
thinness of the private respondent's new tiles as a
discovery. There is a presumption that the
Philippines Patent Office has correctly determined
the patentability of the improvement by the private
respondent of the process in question.
Anent this matter, the Court of Appeals said:
Appellant has not adduced
evidence sufficient to overcome the
above established legal
presumption of validity or to
warrant reversal of the findings of
the lower court relative to the
validity of the patent in question.
In fact, as we have already pointed
out, the clear preponderance of
evidence bolsters said
presumption of validity of
appellee's patent. There is no
indication in the records of this
case and this Court is unaware of
any fact, which would tend to show
that concrete wall tiles similar to
those produced by appellee had
ever been made by others before he
started manufacturing the same.
In fact, during the trial, appellant
was challenged by appellee to
present a tile of the same kind as
those produced by the latter, from
any earlier source but, despite the
fact that appellant had every
chance to do so, he could not
present any. There is, therefore, no
concrete proof that the improved
process of tile-making described in
appellee's patent was used by, or
known to, others previous to his
discovery thereof. 13
The contention of the petitioner Aguas that the
letters patent of de Leon was actually a patent for
the old and non-patentable process of making mosaic
pre-cast tiles is devoid of merit. De Leon never
claimed to have invented the process of tile-making.
The Claims and Specifications of Patent No. 658
show that although some of the steps or parts of the
old process of tile making were described therein,
there were novel and inventive features mentioned
in the process. Some of the novel features of the
private respondent's improvements are the
following: critical depth, with corresponding
easement and lip width to such degree as leaves the
tile as thin as 1/8 of an inch at its thinnest portion,
Ideal composition of cement and fine river sand,
among other ingredients that makes possible the
production of tough and durable wall tiles, though
thin and light; the engraving of deep designs in such
a way as to make the tiles decorative, artistic and
suitable for wall ornamentation, and the fact that
the tiles can be mass produced in commercial
quantities and can be conveniently stock-piled,
handled and packed without any intolerable
incidence of breakages. 14
The petitioner also contends that the improvement
of respondent is not patentable because it is not new,
useful and inventive. This contention is without
merit.
The records disclose that de Leon's process is an
improvement of the old process of tile making. The
tiles produced from de Leon's process are suitable for
construction and ornamentation, which previously
had not been achieved by tiles made out of the old
process of tile making. De Leon's invention has
therefore brought about a new and useful kind of
tile. The old type of tiles were usually intended for
floors although there is nothing to prevent one from
using them for walling purposes. These tiles are
neither artistic nor ornamental. They are heavy and
massive.
The respondent's improvement is indeed inventive
and goes beyond the exercise of mechanical skill. He
has introduced a new kind of tile for a new purpose.
He has improved the old method of making tiles and
pre-cast articles which were not satisfactory because
of an intolerable number of breakages, especially if
deep engravings are made on the tile. He has
overcome the problem of producing decorative tiles
with deep engraving, but with sufficient
durability. 15 Durability inspite of the thinness and
lightness of the tile, is assured, provided that a
certain critical depth is maintained in relation to the
dimensions of the tile. 16
The petitioner also claims that changing the design
from embossed to engraved tiles is neither new nor
inventive because the Machuca Tile Factory and the
Pomona Tile Manufacturing Company have been
manufacturing decorative wall tiles that are
embossed as well as engraved; 17 that these tiles
have also depth, lip width, easement and field of
designs; 18 and that the private respondent had
copied some designs of Pomona. 19
The Machuca tiles are different from that of the
private respondent. The designs are embossed and
not engraved as claimed by the petitioner. There
may be depressions but these depressions are too
shallow to be considered engraved. Besides, the
Machuca tiles are heavy and massive.
There is no similarity between the Pomona Tiles and
de Leon's tiles. The Pomona tiles are made of
ceramics. 20The process involved in making cement
tiles is different from ceramic tiles. Cement tiles are
made with the use of water, while in ceramics fire is
used. As regards the allegation of the petitioner that
the private respondent copied some designs of
Pomona, suffice it to say that what is in issue here is
the process involved in tile making and not the
design.
In view of the foregoing, this Court finds that Patent
No. 658 was legally issued, the process and/or
improvement being patentable.
Both the trial court and the Court of Appeals found
as a fact that the petitioner Domiciano A. Aguas did
infringe de Leon's patent. There is no showing that
this case falls under one of the exceptions when this
Court may overrule the findings of fact of the Court
of Appeals. The only issue then to be resolved is the
amount of damages that should be paid by Aguas.
In its decision the Court of Appeals affirmed the
amount of damages awarded by the lower court with
the modification that the respondent is only entitled
to P3,000.00 moral damages. 21
The lower court awarded the following damages: 22
a) P10,020.99 by way of actual
damages;
b) P50,000.00 by way of moral
damages;
c) P5,000.00 by way of exemplary
damages;
d) P5,000.00 by way of attomey's
fees and
e) Costs of suit
because:
 An examination of the books of
defendant Aguas made before a
Commissioner reveals that during
the period that Aguas was
manufacturing and selling tiles
similar to plaintiff's, he made a
gross income of P3,340.33, which
can be safely be considered the
amount by which he enriched
himself when he infringed
plaintiff's patent. Under Sec. 42 of
the Patent Law any patentee
whose rights have been infringed
is entitled to damages which,
according to the circumstances of
the case may be in a sum above the
amount found as actual damages
sustained provided the award does
not exceed three times the amount
of such actual damages.
Considering the wantonness of the
infringement committed by the
defendants who knew all the time
about the existence of plaintiff's
patent, the Court feels there is
reason to grant plaintiff maximum
damages in the sum of P10,020.99.
And in order to discourage patent
infringements and to give more
teeth to the provisions of the
patent law thus promoting a
stronger public policy committed to
afford greater incentives and
protection to inventors, the Court
hereby awards plaintiff exemplary
damages in the sum of P5,000.00 to
be paid jointly and severally by
defendants. Considering the status
of plaintiff as a reputable
businessman, and owner of the
likewise reputed House of Pre-
Cast, he is entitled to an award of
moral damages in the sum of
P50,000.00. 23
In reducing the amount of moral damages the Court
of Appeals said:
As regards the question of moral
damages it has been shown that as
a result of the unlawful acts of
infringment committed
defendants, plaintiff was
unstandably very sad; he worried
and became nervous and lost
concentration on his work in
connection with his tile business
(pp. 28, 30, t.s.n., Feb. 28, 1964). In
addition, plaintiff's character and
reputation have been
unnecessarily put in question
because defendants, by their acts
of infringement have created a
doubt or suspicion in the public
mind concerning the truth and
honesty of plaintiff's
advertisements and public
announcements of his valid patent.
Necessarily, said acts of
defendants have caused plaintiff
considerable mental suffering,
considering especially, the fact
that he staked everything on his
pre-cast tile business (p. 36, t.s.n.,
Id.) The wantonness and evident
bad faith characterizing
defendants' prejudicial acts
against plaintiff justify the
assessment of moral damages in
plaintiff's favor, though we do not
believe the amount of P50,000.00
awarded by the lower court is
warranted by the circumstances.
We feel that said amount should be
reduced to P3,000.00 by way of
compensating appellee for his
moral suffering. "Willful injury to
property may be a legal ground for
awarding moral damages if the
court should find that, under the
circumstances such damages are
justly due" (Art. 2219 NCC).
There is no reason to reduce the amount of damages
and attorneys fees awarded by the trial court as
modified by the Court of Appeals.
WHEREFORE, the decision of the Court of Appeals
in CA G.R. No. 37824-R appealed from is hereby
affirmed, without pronouncement as to costs.
SO ORDERED.
Makasiar, Guerrero, Melencio-Herrera and Plana,
JJ., concur.
Teehankee, J., took no part.
by
Republic of the Philippines
SUPREME COURT
Manila
FIRST DIVISION
G.R. L-24919 January 28, 1980
JAMES HOWARD BOOTHE and JOHN
MORTON, II, petitioners,
vs.
THE DIRECTOR OF PATENTS, respondent.
Picazo & Agcaoili for petition.
Office of the Solicitor General for respondent.
MELENCIO-HERRERA, J.:
Sought to be reviewed herein is the Decision of the
Director of Patents, dated December 9, 1964,
denying priority rights under section 15 of our
Patent Law (Republic Act No. 165) to petitioners, as
foreign applicants for Letters Patent, for their
invention of "Chemotherapeutic Materials and
Methods of Preparing the same.
Petitioners 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 (popularly known as "aureomycin")
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 (RA 165). Receipt of petitioners'
application was acknowledged by respondent
Director on March 6, 1954.
On April 14, 1954, petitioners 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. 1 This latter
date is of crucial importance to petitioners' cause
under section 15 of the Patent Law, which provides
that:
Section 15. Application previously
filed abroad. — An application for
patent for an invention filed in this
country by any person who has
previously regularly filed an
application for a patent for the
same invention in a foreign
country, which by treaty,
convention or law affords similar
privileges to citizens of the
Philippines, shall have the same
force and effect as the same
application would have if filed in
this country on the date on which
the application for patent for the
same invention was first filed in
such foreign country: Provided,
That the application in this
country is filed within twelve
months from the earliest date on
which such foreign application was
filed and a certified copy of the
foreign application together with a
translation thereof into English, if
not in the English language, is
filed within six months from the
date of filing in the Philippines,
unless the Director for good cause
shown shall extend the time for
filing such certified copy: And
provided, further, that no patent
shall be granted on an application
for patent for an invention which
had been patented or described in
a printed publication in this or any
foreign country more than one year
before the date of the actual filing
of the application in this country,
or which had been in public use or
sale in this country for more than
one year prior to such filing.
Under the foregoing provision, petitioners 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.
On February 7, 1958, petitioners 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.,
which had filed its application ahead and that they
failed to obtain any U.S. patent for their own
invention. Petitioners, however, observed and
requested:
In the Philippines, however, the
situation is at least the reverse.
Pfizer and Co. did not file or else
filed an application after the above
application has already been filed.
The said above application
therefore is good and valid.
We request, therefore, that the
present application be granted on
 the basis of the claims originally
filed. 2
On August 5, 1959, in Paper No. 6, 3 Patent
Examiner, Lydia Nueva España, rejected all of
petitioners' 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.
Additionally, petitioners were advised that the
"Specification" they had submitted was "incomplete"
and that responsive action should be filed them four
months from date of mailing, which was also August
5, 1959. Paper No. 6 precipitated a series of
communications between the aforementioned
Patent Examiner and petitioners, who apparently
failed to meet the deadline of four months for filing
their responsive action.
On October 9, 1961, petitioners requested for
clarification of Paper No. 6, particularly as to why
their Specification was considered incomplete.
In response, Supervising Patent Examiner Nelia de
Castro informed petitioners as follows:
With respect to applicant's request
for clarification as to the meaning
of the second to the last sentence
contained in Paper 6, attention is
called to the fact that the
specification which was originally
filed is incomplete and not in
accordance with Rule 62 of the
Revised Rules. Said specification
ends on Page 9 with the incomplete
sentence "The refractive indices of
this crystalline phase were found
— The basis of the examiner's finding
It appears from further from a
comparison between the submitted
9 pages of the specification and 2
pages of the claims on one hand
and the corresponding pages of the
legalized copy of the U.S.
application on the other that the
present application does not
correspond with the said certified
copy of the U.S. Application. The
present application cannot
therefore be granted priority date
under section 15 are requested by
applicant. 4
On July 3, 1962, petitioners submitted two complete
copies of the Specification, which included nine
additional pages, and reiterated their request for
priority right in the Philippines. 5
On October 2, 1962, Chief Patent Examiner Nicanor
Mapili issued Paper No. 20 rejecting the additional
nine pages of Specification submitted by petitioners,
and ruling:
xxx xxx xxx
The filing of the alleged complete
copy Of the specification is an
attempt to effect a remedy to the
previous finding of incompleteness
as stated in the 2nd to the last
paragraph of Office Action mailed
Aug. 5, 1959, marked Paper 6. This
cannot be allowed inasmuch as 9
pages of new matter are actually
proposed to be added to the
specification.
This action is made final for
purpose of appeal 6
Petitioners moved for reconsideration on the ground
that their application falls under the exception
provided for in Rule 47 of the Revised Rules of
Practice in Patent Cases in that the missing nine
pages submitted by them are not really new matter
but a mere "minor informality."
On February 5, 1963, Chief Patent Examiner Mapili
issued Paper No. 22 denying petitioners' Motion for
Reconsideration and the findings of Examiner de
Castro as follows:
is applicant's verification on file,
exclusive of what is in an alleged
corresponding application in the
US as evidenced by a certified copy
of record. The only use of such
certified a copy is to give proof to
an earlier filing date as provided
for such section 15 of the Patent
Law and to use the inventors' oath
therein to complete the form
requirements relative to his
application in a dance with the
provisions of section 13(3) of the
same law.
The provisions of section 15 of the
Patent Law, under which the
present application was filed,
provides for a for filing. This
 deadline cannot be extended
directly or indirectly by the filing
of an imperfect application which
can be freely amended or rectified
at a later date. If this can be done
legally, the restrictive provisions of
section 15 will be nullified. 7
Adversely affected, petitioners appealed to dent
Director of Patents.
In their Brief filed with respondent Directors
petitioners prayed for 1) revocation of the of the
Chief Patent Examiner, 8 2) admission of their
Specification submitted on July 3, 1962; and 3)
allowance of their application on the merits.
On December 9, 1964, respondent Director rendered
the questioned Decision, the dispositive portion of
which reads:
WHEREFORE, the appeal is
hereby sustained. The additional
pages to the specification are
hereby admitted, but the
application shall not be extended
priority rights under section 15 of
the Patent Law. Let the filing date
of this application be changed from
March 5, 1954 to April 14, 1954.
The application is hereby
remanded to the Chief Patent
Examiner for proper action and for
further examination on the
merits. 9
In reaching the foregoing conclusion, respondent
Director opined that the portions subsequently
supplied in the local application are not new matter
a comparison between the foreign and local
applications showed that the foreign application
included the missing portions of the local one.
However, respondent Direct qualified that
petitioners' application may be considered complete
only on April 14, 1954 when the certified copy of the
foreign application was submitted. Consequently,
the instant application is to be considered an
ordinary application, not entitled to the right of
priority granted by section 15 of the Patent Law,
inasmuch as said application was not complete
within the meaning of Rules 47 and 48 of the Revised
Rules of Practice in Patent Case when first filed on
March 5, 1954.
Petitioners filed a Motion for Partial
Reconsideration of the above-mentioned Decision
questioning that portion of respondent Director's
ruling barring them from entitlement to the right of
priority under section 15 of the Patent Law
contending that their appeal centered merely on the
issue of whether or not the additional nine pages of
Specification they had submitted should be treated
as new matter.
On June 10, 1965, respondent Director denied
reconsideration for lack of merit, and explained:
... It should be emphasized that
under Rule 262 (b) of the Revised
Rules of Practice in Patent Cases,
it is stated that should the Director
have any knowledge of any ground
not involved in the appeal for
rejecting any claim, he may
include in his decision a statement
to that effect with his reasons for
so holding, which statement shall
constitute a rejection of the claim.
Priority claims are covered by the
rule: 10
On June 11, 1965, petitioners filed a Second Motion
for reconsideration on the ground that priority
rights are governed by convention and treaty, while
invention claims are governed exclusively by the
Statute and Rules of Practice. Respondent Director
denied that Motion for lack of merit on August 24,
1965.
Hence, this recourse.
On January 9, 1967, we deemed the case submitted
for decision, after petitioners had filed their Brief on
February 12, 1966, and respondent Director,
through the Solicitor General, his Brief on June 9,
1966.
On June 9, 1968, Republic Act No. 5434 was enacted
providing that final Orders and Decisions of the
Director of Patents in ex parte and inter
partes proceedings are appealable to the Court of
Appeals. Since no provision for retroactivity exists in
said Act this Tribunal has resolved to retain
jurisdiction over this case.
Petitioners maintain before this Court that:
RESPONDENT DIRECTOR OF
PATENTS ERRED IN HOLDING
THAT PETITIONERS'
APPLICATION, SERIAL NO. 952,
MAY NOT BE TREATED AS
FILED UNDER SECTION 15 AS
AMENDED, OF REPUBLIC ACT
 NO. 165 KNOWN AS THE
PATENT LAW.
and in support thereof stress that:
1) The Director had no jurisdiction
to decide the question of whether
or not the Philippine Application
should be treated as filed under
Section 15 of the Act;
2) The Director had no jurisdiction
to decide the question of whether
or not the Philippine Application
was incomplete under Rules 47
and 48 of the Revised Rules of
Practice in Patent Cases;
3) The Director misconstrued and
misapplied Rules 47 and 48 of the
Rules;
4) The Director misconstrued and
misapplied Rule 262 (b) of the
Rules.
For resolution, therefore, are the following issues:
the scope of the powers of the Director of Patents in
cases appealed to him and the correctness of his
application of Rules 47, 48 and 262(b) of the Revised
Rules of Practice in Patent Cases.
The facts unfolded call for an affirmance of
respondent Director's rulings.
Explicit in Rule 262 of the Revised Rules of Practice
in Patent Cases is the power and authority of
respondent Director to decide petitioners' appeal in
the manner that he did, and we quote:
262. Decision by the Director. — (a)
The Director, in his decision, may
affirm or reverse the decision of
the Principal Examiner in whole or
in part on the ground and on the
claims specified by the Examiner.
The affirmance of the rejection of a
claim on any of the grounds
specified constitutes a general
affirmance of the decision of the
Principal Examiner on that claim,
except as to any ground specifically
reversed.
(b) Should the Director have
knowledge of any grounds not
involved in the appeal for rejecting
any claim he may include in his
decision a statement to that effect
with his reasons for so holding
which statement shall constitute a
rejection of the claims. ...
In other words, respondent Director is empowered to
consider grounds which may have come to his
knowledge other than those specifically raised in an
appeal He need not confine himself only to issues
invoked. Besides, the question of new matter is
inextricably linked with the right of priority on
which petitioners have anchored their application.
As early as Paper No. 18, supra, the Supervising
Patent Examiner had concluded that inasmuch as
the submitted pages did not correspond with the
certified copy of the U.S. application, "the present
application cannot therefore be granted priority date
under section 16 as requested by applicant." Again,
in Paper No. 22,supra, the Chief Patent Examiner
made mention of petitioner' imperfect application
and the fact that the deadline for filinf required by
section 15 of the Patent Law cannot be extended
directly or indirectly otherwise "the restrictive
provisions of section 15 will be nullified."
It is also far-fetched for petitioners to claim that in
ruling on petitioners' right of priority, respondent
Director had contravened Rule 254 of the Revised
Rules of Practice in Patent cases, which provides
that the Director of Patents exercises no direct
control, direction and supervision over the Principal
Examiner and the Executive Examiner. What
respondent Director exercised was his authority to
review the decisions of Patent Examiners, as
explicitly provided for in the last paragraph of the
same Rules 254, as follows:
xxx xxx xxx
The only supervision which the
Director of Patent may lawfully
exercise over the Principal
Examiners and the Executive
Examiner is a general supervision,
exercised through a review of the
recommendations they may make
for the grant of a patent, and
through a review of their decision
by petition and appeal.
Similarly untenable is petitioners' contention that
respondent Director had misconstrued and
misapplied Rules 47 and 48 of the Revised Rules of
Practice in Patent Cases. The said Rules provide:
 47. Application accepted and filed
for examination only w hen
complete — An application for an
invention patent will not be
accepted and placed upon the files
for examination until all its
required parts, complying with the
rules relating thereto are received
except that 'certain minor
informalities may be waived
subject to subsequent correction,
whenever required.
If the papers and parts are
incomplete, or so defective that
they cannot be accepted as a
complete application for
examination, the applicant will be
notified; the papers will be held
four months for completion and if
not by then completed, will be
stored as an abandoned incomplete
application and eventually
destroyed or otherwise disposed of.
48. Serial number and filing date
of application — Complete
applications are numbered in
regular order, and the applicant
win be informed of the serial
number and filing date of the
application by a filing receipt. The
filing date of the applicant is the,
date on which the complete
application, acceptable for placing
on the files for examination, is
received in the Patent Office; or
the date on which the last part
completing such application is
received, in the case of an
incomplete or defective application
completed within four months. The
Executive Examiner shall be in
charge of fixing the filing date and
serial number of an application.
Under the aforecited provisions, it is imperative that
the application be complete in order that it may be
accepted. It is essential to the validity of Letters
Patent that the specifications be full, definite, and
specific. 11 The purpose of requiring a definite and
accurate description of the process 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. 12
The specification which petitioners submitted on
March 5, 1954 was far from complete. That defect
was one of substance and not merely one of form.
What petitioners claimed as their invention was not
completely determinable therefrom. Petitioners'
application could be deemed as complete only on
July 2, 1963 when they submitted the additional
pages on the Specifications and Claims. Respondent
Director, therefore, did not err in converting
petitioners' application into an ordinary application
filed on April 14, 1954, not only for their having
failed to complete their application within the four-
month period provided for by Rules 47 and 48,
Revised Rules of Practice in Patent Cases, and as
required of them by Paper No. 6, but also for their
having failed to file a complete application within
twelve months from March 16, 1953, the date of the
foreign application For, 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. 13
All told, we sustain respondent Director's findings in
the absence of error or abuse of power or lack of
jurisdiction or grave abuse of discretion. 14 We have
held that in the absence of arbitrariness, and
provided they are supported by substantial
evidence, as in this case, the conclusions reached by
the Director of Patents are to be accorded respect
and must be upheld. 15
WHEREFORE, we hereby affirm the Decision of
respondent Director of Patents dated December 9,
1964.
SO ORDERED.
Teehankee (Chairman), Makasiar, Fernandez,
Guerrero and De Castro, JJ., concur.