MAGUAN VS.

CA

Rosario Maguan (SWAN MANUFACTURING) – filed a complaint for damages with injunction and preliminary
injunction against Susana Luchan (SUSANA LUCHAN POWDER PUFF MANUFACTURING), alleging that Luchan
is manufacturing and selling to enterprises, specifically those in the cosmetics industry, substantially identical powder
puffs of which Maguan is the patent holder under Registration Certification Nos. Extension UM-109, Extension UM-
110, and Utility Model No. 1184.

Susana Luchan – replied, stating that her products are different and that the petitioner’s patents are void as the
utility models applied for were not new and patentable, and that the person to whom the patents were issued was
not the true and actual author nor were her rights derived from such author.

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. 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. Any patentee whose rights have been infringed may bring an action before the proper
court and to secure and injunction for the protection of his rights.

It has been repeatedly held that an invention must possess the essential elements of novelty, originality,
and precedence 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 the patentee for more than two years before
the date of his application for his patent, will be fatal to the validity of the patent when issued.

The validity of petitioner’s patents is in question for want of novelty. The respondent contends that powder puffs
identical in appearance with that covered by the petitioner’s patents existed and were publicly known and used as
early as 1963, long before the petitioner was issued the patents in issue. As correctly observed by the CA, since
sufficient proof was 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.

CRESER PRECISION VS. CA

Floro International Corp. - a domestic corporation engaged in manufacture, production, distribution, and sale of
military armaments, munitions, airmunitions, and other similar materials, was granted by the BPTT a letters patent
covering an aerial fuze. Learning that Creser Precision was claiming the aerial fuze as his own and planning to bid
and manufacture the same commercially without license or authority from private respondent. Floro sent a notice
to petitioner warning of possible court action.

Creser Precision - file a complaint for injunction and damages arising from the infringement, who maintained that
it is the first, true, and actual inventor of aerial fuze. Now appealing the decision of the CA, it contends that it can
file, under Section 42 of the Patent Law (R.A. 165), an action for infringement not as a patentee but as an entity in
possession of a right, title or interest in and to the patented invention.

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Only the patentee or his successors-in-interest may file an action for infringement. The phrase “anyone possessing
any right, title or interest in and to the patented invention” upon which petitioner maintains its present suit, refers only
to the patentee’s successors-in-interest, assignees or grantees since actions for infringement of patent may be
brought in the name of the person or persons interested, whether as patentee, assignees, or as grantees, of the
exclusive right. Moreover, there can be no infringement of a patent until a patent has been issued, since whatever
right one has to the invention covered by the patent arises alone from the grant of patent. In short, a person or entity
who has not been granted letters patent over an invention and has not acquired any right or title thereto either as
assignee or as licensee, has no cause of action for infringement because the right to maintain an infringement suit
depends on the existence of the patent.

AGUAS VS. DE LEON

De Leon – filed a complaint for infringement against Aguas, alleging that the latter asked FH Aquino & Sons to make
engravings similar to that of De Leon. When De Leon was issued a patent for new and useful improvements in the
process of making mosaic pre-cast tiles, he furnished Aguas an actual model of the subject improvements.

Aguas – in his answer, claimed that the patent was unlawfully issued on the ground that the improvement was not
new and that De Leon was not the original inventor.

The trial court - ruled in favor of De Leon disposing that the patent was validly issued and that Aguas infringed on
the former's patent.

CA - affirmed the trial court. The CA found that De Leon validly introducee improvements in the process of tile
making.

De Leon never claimed that he was the inventor of the process of tile making. What is undisputed is the fact that
there were novel and inventive features in De Leon's patent, namely: (1) critical depth, (2) composition which makes
it tough and durable, though thin and light, (3)can be mass produced, (4) can be conveniently stock-piles and (5)
packed without intolerable incidence of breakage.

De Leon's improvemenf is inventive and goes beyond the exercise of mechanical skills. Thus, the patent is novel
and were legally issued.

ANCILLARY DOCTRINE: There is a presumption that the Patent Office has correctly determined patentability.

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 SMITH KLINE BECKMAN VS. CA AND TRYCO

Smith Kline Beckman Corporation, a corporation existing by virtue of the laws of the state of Pennsylvania, United
States of America (U.S.) and licensed to do business in the Philippines, filed on October 8, 1976, as assignee, before
the Philippine Patent Office (now Bureau of Patents, Trademarks and Technology Transfer) an application for patent
over an invention entitled Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5
Propylthio-2-Benzimidazole Carbamate. On September 24, 1981, Letters Patent No. 14561[1] for the aforesaid
invention was issued to petitioner for a term of seventeen (17) years.

The letters patent provides in its claims that the patented invention consisted of a new compound named methyl 5
propylthio-2-benzimidazole carbamate and the methods or compositions utilizing the compound as an active
ingredient in fighting infections caused by gastrointestinal parasites and lungworms in animals such as swine, sheep,
cattle, goats, horses, and even pet animals.

Tryco Pharma Corporation (private respondent) is a domestic corporation that manufactures, distributes and sells
veterinary products including Impregon, a drug that has Albendazole for its active ingredient and is claimed to be
effective against gastro-intestinal roundworms, lungworms, tapeworms and fluke infestation in carabaos, cattle and
goats.

Petitioner sued private respondent for infringement of patent and unfair competition before the Caloocan City
Regional Trial Court (RTC).] It claimed that its patent covers or includes the substance Albendazole such that private
respondent, by manufacturing, selling, using, and causing to be sold and used the drug Impregon without its
authorization, infringed Claims 2, 3, 4, 7, 8 and 9 of Letters Patent No. 14561.

Petitioner argues that under the doctrine of equivalents for determining patent infringement, Albendazole, the active
ingredient it alleges was appropriated by private respondent for its drug Impregon, is substantially the same as
methyl 5 propylthio-2-benzimidazole carbamate covered by its patent since both of them are meant to combat worm
or parasite infestation in animals.

The doctrine of equivalents provides that an infringement also takes place when a device appropriates a prior
invention by incorporating its innovative concept and, although with some modification and change, performs
substantially the same function in substantially the same way to achieve substantially the same result.[19] Yet again,
a scrutiny of petitioners evidence fails to convince this Court of the substantial sameness of petitioners patented
compound and Albendazole. While both compounds have the effect of neutralizing parasites in animals, identity of
result does not amount to infringement of patent unless Albendazole operates in substantially the same way or by
substantially the same means as the patented compound, even though it performs the same function and achieves
the same result.[20] In other words, the principle or mode of operation must be the same or substantially the
same.[21]

The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the patentee having the
burden to show that all three components of such equivalency test are met. [22]

As stated early on, petitioners evidence fails to explain how Albendazole is in every essential detail identical to
methyl 5 propylthio-2-benzimidazole carbamate. Apart from the fact that Albendazole is an anthelmintic agent like

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methyl 5 propylthio-2-benzimidazole carbamate, nothing more is asserted and accordingly substantiated regarding
the method or means by which Albendazole weeds out parasites in animals, thus giving no information on whether
that method is substantially the same as the manner by which petitioners compound works. The testimony of Dr.
Orinion lends no support to petitioners cause, he not having been presented or qualified as an expert witness who
has the knowledge or expertise on the matter of chemical compounds.

GODINES VS. CA

The patent involved in this case is Letters Patent No. UM-2236 issued by the Philippine Patent Office to one
Magdalena S. Villaruz on July 15, 1976. It covers a utility model for a hand tractor or power tiller. The patent was
acquired by SV-Agro Industries Enterprises, Inc., from Magdalena Villaruz, its chairman and president, by virtue of
a Deed of Assignment executed by the latter in its favor. SV-Agro Industries caused the publication of the patent in
Bulletin Today.

In accordance with the patent, private respondent manufactured and sold the patented power tillers with the patent
imprinted on them. SV-Agro Industries suffered a decline of more than 50% in sales in its Molave, Zamboanga del
Sur branch. Upon investigation, it discovered that power tillers similar to those patented by private respondent were
being manufactured and sold by petitioner herein. Consequently, private respondent notified Pascual Godines about
the existing patent and demanded that the latter stop selling and manufacturing similar power tillers. Upon petitioner's
failure to comply with the demand, SV-Agro Industries filed before the Regional Trial Court a complaint for
infringement of patent and unfair competition.

After trial, the court held Pascual Godines liable for infringement of patent and unfair competition. The decision was
affirmed by the appellate court. Hence, this petition for review in certiorari.

Petitioner maintains that he was not engaged in the manufacture and sale of the power tillers as he made them only
upon the special order of his customers who gave their own specifications; hence, he could not be liable for
infringement of patent and unfair competition; and that those made by him were different from those being
manufactured and sold by private respondent.

Tests have been established to determine infringement. These are (a) literal infringement; and (b) the doctrine of
equivalents. In using literal infringement as a test, ". . . resort must be had, in the first instance, to the words of the
claim. If accused matter clearly falls within the claim, infringement is made out and that is the end of it.” To determine
whether the particular item falls within the literal meaning of the patent claims, the court must juxtapose the claims
of the patent and the accused product within the overall context of the claims and specifications, to determine
whether there is exact identity of all material elements.

Petitioner's argument that his power tillers were different from private respondent's is that of a drowning man
clutching at straws.

Recognizing that the logical fallback position of one in the place of defendant is to aver that his product is different
from the patented one, courts have adopted the doctrine of equivalents which recognizes that minor modifications
in a patented invention are sufficient to put the item beyond the scope of literal infringement. Thus, according to this
doctrine, "(a)n infringement also occurs when a device appropriates a prior invention by incorporating its innovative
concept and, albeit with some modification and change, performs substantially the same function in substantially the
same way to achieve substantially the same result." The reason for the doctrine of equivalents is that to permit the
imitation of a patented invention which does not copy any literal detail would be to convert the protection of the
patent grant into a hollow and useless thing. Such imitation would leave room for — indeed encourage — the
unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which, though
adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of the
law.

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