Case Title: JAMES HOWARD BOOTHE and JOHN MORTON, II, petitioners, vs.

THE DIRECTOR OF PATENTS, respondent.

Petitioner’s Claims:
BOOTHE and MORTON, 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”). They filed an
application for Letters Patent in the Philippines with a claim for priority right pursuant to
section 15 (Application previously filed abroad) of the Patent Law.

Petitioners informed Director that in interference proceedings in the US, Letters Patent for a
similar invention as theirs was awarded to Pfizer and Co. which filed its application ahead and that
failed to obtain any US patent for their own invention. Petitioners observed and requested that their
application was good and valid on the basis of the claims originally filed. It was denied referring
to the local patent obtained by Pfizer and Co over same invention and that the “specification” that
was submitted was incomplete and as such they failed to meet the deadline for filing their
responsive claim.
According to them, they are entitled to the right of priority granted to foreign applicants since they
have filed their application for Letters Patent with Specifications before the Director of Patents on
March 5, 1954 or within 1 year from March 16, 1953, the date of their Application for Letters
Patent in the United States. However, the Chief Patent Examiner treated the same as an ordinary
application since the Specifications submitted by BOOTHE and MORTON within the one year
period lacked nine pages and was thus incomplete. BOOTHE and MORTON appealed to the
Director of Patent and have claimed that the defect was a mere minor informality and that they
should still be given the priority right. The Director of Patents ruled on matter not raised by
BOOTHE and MORTON. Hence, the latter claims that the Director of Patents should only confine
his decision to the issue of whether or not the additional nine pages of Specification they had
submitted should be treated as new matter.
Respondent’s Claims:
The DIR OF PATENTS allowed the lacking pages but however ruled that the
application of BOOTHE and MORTON should only be treated as an ordinary one
because they have only filed the required certified copy of their foreign application on
April 14, 1954. Thus, the filing date of the application should be changed from March 5,
1954 to April 14, 1954.
Issue/s:
(a) Whether or not the DIR OF PATENTS shall only confine his decision to the matters
appealed from.
(b) Whether or not the DIR OF PATENTS erred in holding that the aforesaid application
does not fall under Section 15 of the Patent Law.
Ruling:
(a) NO. The DIR OF PATENTS 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. It was earlier concluded by the Supervising Patent Examiner
that inasmuch as the submitted pages did not correspond with the certified copy of the US
application, “the present application cannot therefore be granted priority date under Section
15 as requested by applicant”. What Respondent Director exercised was within his authority
to review the decisions of Patents Examiners.
(b) NO. Under Sections 47 and 48 of the Patent Law, 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 specification be full, definite and specific. The purpose of said requirement is to apprise
the public of that patentee claims as his invention, to inform Courts as to what they are
called to construe, and to convey to competing manufacturers and dealers information what
they are bound to avoid. The defect was one of substance and not merely one of form. An
invention disclosed in a previously filed application must be described within the instant
application such a manner as to enable one skilled in the art to use the same for a legally
adequate utility.
The specification which BOOTHE and MORTON submitted on March 5, 1954 was far
from complete. That defect was one of substance and not merely one of form. What
BOOTHE and MORTON claimed as their invention was not completely determinable
therefrom. The application of BOOTHE and MORTON could be deemed as complete only
on July 2, 1963 when they submitted the additional pages on the Specifications and Claims