PROCEDURE FOR GRANT OF PATENT

GRANT OF PATENT

MANZANO VS CA, 278 SCRA 688

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

The validity of the patent issued by the Philippine Patent Office in favor of private respondent and the question over
the inventiveness, novelty and usefulness of the improved model of the LPG burner are matters which are better
determined by the Patent Office. The technical staff of the Philippine Patent Office composed of experts in their field
has by the issuance of the patent in question accepted private respondents model of gas burner as a discovery. There
is a presumption that the Office has correctly determined the patentability of the model8 and such action must not be
interfered with in the absence of competent evidence to the contrary.

REMEDIES OF PERSON WITH PATENT

REMEDIES OF TRUE AND ACTUAL INVENTOR

CRESER PRECESION SYSTEMS VS. CA, 286 SCRA 13 (1998)

Petitioners available remedy is to file a petition for cancellation of patent before the Bureau of Patents; that private
respondent as the patent holder cannot be stripped of its property right over the patented aerial fuze consisting of the
exclusive right to manufacture, use and sell the same and that it stands to suffer irreparable damage and injury if it is
enjoined from the exercise of its property right over its patent.

Under Section 28 of the aforementioned law, file a petition for cancellation of the patent within three (3) years from
the publication of said patent with the Director of Patents and raise as ground therefor that the person to whom the
patent was issued is not the true and actual inventor. Hence, petitioners remedy is not to file an action for injunction
or infringement but to file a petition for cancellation of private respondent patent. Petitioner however failed to do so.
As such, it cannot now assail or impugn the validity of the private respondent’s letters patent by claiming that it is the
true and actual inventor of the aerial fuze.

Since the petitioner (private respondent herein) is the patentee of the disputed invention embraced by letters of patent
UM No. 6938 issued to it on January 23, 1990 by the Bureau of Patents, it has in its favor not only the presumption
of validity of its patent, but that of a legal and factual first and true inventor of the invention.
RIGHTS OF PATENTEES AND INFRINGEMENT OF PATENTS

DOCTRINE OF EQUIVALENTS

GODINES VS CA, 226 SCRA 338

Doctrine of equivalents which recognizes that minor modifications in a patented invention are sufficient to put the
item beyond the scope of literal infringement. 12 Thus, according to this doctrine, "(a)n infringement also occurs when
a device appropriates a prior invention by incorporating its innovative concept and, albeit with some modification and
change, performs substantially the same function in substantially the same way to achieve substantially the same
result." 13 The reason for the doctrine of equivalents is that to permit the imitation of a patented invention which does
not copy any literal detail would be to convert the protection of the patent grant into a hollow and useless thing.

Such imitation would leave room for — indeed encourage — the unscrupulous copyist to make unimportant and
insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied
matter outside the claim, and hence outside the reach of the law.

The law will protect a patentee against imitation of his patent by other forms and proportions. If two devices do the
same work in substantially the same way, and accomplish substantially the same result, they are the same, even though
they differ in name, form, or shape.

SMITH KLINE BECKMAN CORP. VS. COURT OF APPEALS, G.R. NO. 126627

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. Yet again, a scrutiny of
petitioner’s 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. In
other words, the principle or mode of operation must be the same or substantially the same.

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.

As stated early on, petitioner’s 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 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 petitioner’s compound works. The testimony of Dr. Orinion lends
no support to petitioner’s cause, he not having been presented or qualified as an expert witness who has the knowledge
or expertise on the matter of chemical compounds.
DAMAGES; REQUIREMENT OF NOTICE

DEL ROSARIO VS. CA, 255 SCRA 152

Injunction is a preservative remedy for the protection of substantive rights or interests. It is not a cause of action in
itself but merely a provisional remedy, an adjunct to a main suit. The controlling reason for the existence of the judicial
power to issue the writ is that the court may thereby prevent a threatened or continuous irremediable injury to some
of the parties before their claims can be thoroughly investigated and advisedly adjudicated. It is to be resorted to only
when there is a pressing necessity to avoid injurious consequences which cannot be remedied under any standard of
compensation.

The application of the writ rests upon an alleged existence of an emergency or of a special reason for such an order
before the case can be regularly heard, and the essential conditions for granting such temporary injunctive relief are
that the complaint alleges facts which appear to be sufficient to constitute a cause of action for injunction and that on
the entire showing from both sides, it appears, in view of all the circumstances, that the injunction is reasonably
necessary to protect the legal rights of plaintiff pending the litigation.

GODINES VS CA, 226 SCRA 338

In 1979, SV-Agro Industries suffered a decline of more than 50% in sales in its Molave, Zamboanga del Sur branch.
Upon investigation, it discovered that power tillers similar to those patented by private respondent were being
manufactured and sold by petitioner herein. Consequently, private respondent notified Pascual Godines about the
existing patent and demanded that the latter stop selling and manufacturing similar power tillers.

After trial, the court held Pascual Godines liable for infringement of patent and unfair competition. Ordering defendant
Pascual Godines to pay plaintiff the sum of Fifty Thousand Pesos (P50,000.00) as damages to its business reputation
and goodwill, plus the further sum of Eighty Thousand Pesos (P80,000.00) for unrealized profits during the period
defendant was manufacturing and selling copied or imitation floating power tiller.

TANADA VS ANGARA, 272 SCRA 18

1. For the purposes of civil proceedings in respect of the infringement of the rights of the owner referred to in paragraph
1 (b) of Article 28, if the subject matter of a patent is a process for obtaining a product, the judicial authorities shall
have the authority to order the defendant to prove that the process to obtain an identical product is different from the
patented process. Therefore, Members shall provide, in at least one of the following circumstances, that any identical
product when produced without the consent of the patent owner shall, in the absence of proof to the contrary, be
deemed to have been obtained by the patented process:

(a) if the product obtained by the patented process is new;

(b) if there is a substantial likelihood that the identical product was made by the process and the owner of the patent
has been unable through reasonable efforts to determine the process actually used.

2. Any Member shall be free to provide that the burden of proof indicated in paragraph 1 shall be on the alleged
infringer only if the condition referred to in subparagraph (a) is fulfilled or only if the condition referred to in
subparagraph (b) is fulfilled.

3. In the adduction of proof to the contrary, the legitimate interests of defendants in protecting their manufacturing
and business secrets shall be taken into account.
CRIMINAL ACTION FOR REPETITION OF INFRINGEMENT

KENNETH ROY SAVAGE VS TAYPIN, 331 SCRA 697

The last question to be resolved is whether unfair competition involving design patents punishable under Art. 189 of
the Revised Penal Code exists in this case. Prosecutor Ivan Herrero seems to agree as he filed the corresponding
Information against petitioners on 17 March 1998. 18 However, since the IPR Code took effect on 1 January 1998
any discussion contrary to the view herein expressed would be pointless. The repealing clause of the Code provides
— All Acts and parts of Acts inconsistent herewith, more particularly, Republic Act No 165, as amended; Republic
Act No 166, as amended; and Articles 188 and 189 of the Revised Penal Code; Presidential Decree No 49, including
Presidential Decree 285, as amended, are hereby repealed.

The issue involving the existence of "unfair competition" as a felony involving design patents, referred to in Art. 189
of the Revised Penal Code, has been rendered moot and academic by the repeal of the article. The search warrant
cannot even be issued by virtue of a possible violation of the IPR Code. The assailed acts specifically alleged were
the manufacture and fabrication of wrought iron furniture similar to that patented by MENDCO, without securing any
license or patent for the same, for the purpose of deceiving or defrauding. Mendco and the buying public. 20 The Code
defines "unfair competition"

COMPULSORY LICENSING

GROUNDS FOR COMPULSORY LICENSING

SMITH KLINE BECKMAN CORP. VS. COURT OF APPEALS, G.R. NO. 121267

Grounds for Compulsory Licensing. — (1) Any person may apply to the Director for the grant of a license under a
particular patent at any time after the expiration of two years from the date of the grant of the patent, under any of the
following circumstances:

(a) If the patented invention is not being worked within the Philippines on a commercial scale, although capable
of being so worked, without satisfactory reason;

(b) If the demand of the patented article in the Philippines is not being met to an adequate extent and on
reasonable terms;

(c) If, by reason of refusal of the patentee to grant a license or licenses on reasonable terms, or by reason of the
conditions attached by the patentee to licensee or to the purchase, lease or use of the patented article or working of the
patented process or machine for production, the establishment of any new trade or industry in the Philippines is
prevented, or the trade or industry therein is unduly restrained;

(e) If the patented invention or article relates to food or medicine or manufactured substances which can be used
as food or medicine, or is necessary for public health or public safety.
REQUIREMENT TO OBTAIN LICENSE ON REASONABLE COMMERCIAL TERMS

PARKE DAVIS AND CO. VS DOCTORS’ PHARMACEUTICAL, 14 SCRA 1053

The term "worked" or "working" as used in this section means the manufacture and sale of the patented article, of
patented machine, or the application of the patented process for production, in or by means of a definite and substantial
establishment or organization in the Philippines and on a scale which is reasonable and adequate under the
circumstances. Importation shall not constitute "working."

SMITH KLINE BECKMAN CORP. VS. COURT OF APPEALS, G.R. NO. 121267

The grant of the compulsory license satisfies the requirements of the foregoing provision. More than ten years have
passed since the patent for Cimetidine was issued to petitioner and its predecessors-in interest, and the compulsory
license applied for by private respondent is for the use, manufacture and sale of a medicinal product. Furthermore,
both the appellate court and the BPTTT found that private respondent had the capability to work Cimetidine or to
make use thereof in the manufacture of a useful product.

REGISTRATION OF UTILITY MODELS

APPLICABILITY OF PROVISIONS RELATING TO PATENTS

Sec. 55. Design patents and patents for utility models. — (a) Any new, original, and ornamental design for an article
of manufacture and (b) new model or implements or tools or of any industrial product or of part of the same, which
does not possess the quality of invention but which is of practical utility by reason of its form, configuration,
construction or composition, may be protected by the author thereof, the former by a patent for a design and the latter
by a patent for a utility model, in the same manner and subject to the same provisions and requirements as relate to
patents for inventions insofar as they are applicable, except as otherwise herein provide.

The Patent Law expressly acknowledges that any new model of implements of tools of any industrial product even if
not possessed of the quality of invention but which is of practical utility is entitled to a patent for utility model. 10
Here there is no dispute that the letters patent issued to petitioner are for utility models of audio equipment