G.R. No.

113388 September 5, 1997 Petitioner argues that the actual demonstration made during the hearing
disclosed the similarities in form, operation and mechanism and parts
ANGELITA MANZANO, petitioner,  between the utility model of private respondent and those depicted in the
vs. brochures. The findings of the Patent Office and the Court of Appeals that the
COURT OF APPEALS, and MELECIA MADOLARIA, as Assignor to NEW brochures of Manila Gas Corporation and Esso Standard Eastern, Inc., are
UNITED FOUNDRY MANUFACTURING CORPORATION, respondents. 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
BELLOSILLO, J.: as Petrophil Corporation. Petitioner also emphasizes that the brochures
indicated the telephone number of Manila Gas Corporation as 5-79-81 which
The primary purpose of the patent system is not the reward of the individual is a five (5) numbered telephone number existing before 1975 because
but the advancement of the arts and sciences. The function of a patent is to telephones in Metro Manila started to have six (6) numbers only after that
add to the sum of useful knowledge and one of the purposes of the patent year.
system is to encourage dissemination of information concerning discoveries
and inventions. This is a matter which is properly within the competence of Petitioner further contends that the utility model of private respondent is
the Patent Office the official action of which has the presumption of absolutely similar to the LPG burner being sold by petitioner in 1975 and
correctness and may not be interfered with in the absence of new evidence 1976, and also to the "Ransome" burner depicted in the old brochures of
carrying thorough conviction that the Office has erred. Since the Patent Office Manila Gas Corporation and Esso Standard Eastern, Inc., fabricated by
is an expert body preeminently qualified to determine questions of Ransome Torch and Burner Company of Oakland, California, USA, especially
patentability, its findings must be accepted if they are consistent with the when considered through actual physical examination, assembly and
evidence, with doubts as to patentability resolved in favor of the Patent disassembly of the models of petitioner and private respondent. Petitioner
Office.1 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
Petitioner submits that the differences cited by the Court of Appeals between importation by Manila Gas Corporation of "Ransome" burners in 1965 which
the utility model of private respondent and the models of Manila Gas had the same configuration, form and mechanism as that of the private
Corporation and Esso Standard Eastern, Inc., are more imaginary than real. respondent's patented model.
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 Finally, it is argued that the testimony of private respondent's lone witness
petitioner, the cup-shaped burner mouth and threaded hole on the side are Rolando Madolaria should not have been given weight by the Patent Office
shown to be similar to the utility model of private respondent. The exhibits and the Court of Appeals because it contained mere after-thoughts and
also show a detachable burner mouth having a plurality of upwardly existing pretensions.
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 We cannot sustain petitioner. Section 7 of RA No. 165, as amended, which is
patented model. Petitioner also denies as substantial difference the short the law on patents, expressly provides —
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 Sec. 7. Inventians patentable. Any invention of a new and useful
respondent's model of the gas burner. 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 — cancellation of the patent. Thus the Director of Patents explained his reasons
for the denial of the petition to cancel private respondent's patent —
Sec. 55. Design patents and patents for utility models. — (a) Any new,
original and ornamental design for an article of manufacture and (b) Scrutiny of Exhs. "D" and "E" readily reveals that the utility model (LPG
any new model of implements or tools or of any industrial product or of Burner) is not anticipated. Not one of the various pictorial
part of the same, which does not possess the quality of invention, but representations of burners clearly and convincingly show that the
which is of practical utility by reason of its form, configuration, device presented therein is identical or substantially identical in
construction or composition, may be protected by the author thereof, construction with the aforesaid utility model. It is relevant and material
the former by a patent for a design and the latter by a patent for a utility to state that in determining whether novelty or newness is negatived by
model, in the same manner and subject to the same provisions and any prior art, only one item of the prior art may be used at a time. For
requirements as relate to patents for inventions insofar as they are anticipation to occur, the prior art must show that each element is
applicable except as otherwise herein provided. found either expressly or described or under principles of inherency in
a single prior art reference or that the claimed invention was probably
The element of novelty is an essential requisite of the patentability of an known in a single prior art device or practice. (Kalman v. Kimberly
invention or discovery. If a device or process has been known or used by Clark, 218 USPQ 781, 789)
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 Even assuming gratia arguendi that the aforesaid brochures do depict
court, in a judicial proceeding in which the validity of the patent is drawn in clearly on all fours each and every element of the patented gas burner
question, will hold it void and ineffective.2 It has been repeatedly held that an device so that the prior art and the said patented device become
invention must possess the essential elements of novelty, originality and identical, although in truth they are not, they cannot serve as
precedence, and for the patentee to be entitled to the protection the invention anticipatory bars for the reason that they are undated. The dates when
must be new to the world.3 they were distributed to the public were not indicated and, therefore,
they are useless prior art references.
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 xxx xxx xxx
novel and patentable. The issuance of such patent creates a presumption
which yields only to clear and cogent evidence that the patentee was the Furthermore, and more significantly, the model marked Exh. "K" does
original and first inventor. The burden of proving want of novelty is on him not show whether or not it was manufactured and/or cast before the
who avers it and the burden is a heavy one which is met only by clear and application for the issuance of patent for the LPG burner was filed by
satisfactory proof which overcomes every reasonable doubt.4 Hence, a utility Melecia Madolaria.
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 With respect to Exh. "L," petitioner claimed it to be her own model of
described in a printed publication or publications circulated within the country, LPG burner allegedly manufactured sometime in 1974 or 1975 and
or if it is substantially similar to any other utility model so known, used or sold by her in the course of her business operation in the name of
described within the country.5 Besco Metal Manufacturing, which burner was denominated as
"Ransome" burner
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 xxx xxx xxx
respondent Madolaria was not legally met by petitioner in her action for the
 But a careful examination of Exh. "L" would show that it does not bear usefulness of the improved model of the LPG burner are matters which are
the word "Ransome" which is the burner referred to as the product better determined by the Patent Office. The technical staff of the Philippine
being sold by the Petitioner. This is not the way to prove that Exh. "L" Patent Office composed of experts in their field has by the issuance of the
anticipates Letters Patent No. UM-4609 through Exhs. "C" and "D." patent in question accepted private respondent's model of gas burner as a
Another factor working against the Petitioner's claims is that an discovery. There is a presumption that the Office has correctly determined the
examination of Exh. "L" would disclose that there is no indication of the patentability of the model8 and such action must not be interfered with in the
time or date it was manufactured. This Office, thus has no way of absence of competent evidence to the contrary.
determining whether Exh. "L" was really manufactured before the filing
of the aforesaid application which matured into Letters Patent No. UM- The rule is settled that the findings of fact of the Director of Patents, especially
4609, subject matter of the cancellation proceeding. when affirmed by the Court of Appeals, are conclusive on this Court when
supported by substantial evidence. Petitioner has failed to show compelling
At this juncture, it is worthwhile to point out that petitioner also grounds for a reversal of the findings and conclusions of the Patent Office and
presented Exh. "M" which is the alleged burner cup of an imported the Court of Appeals.
"Ransome" burner. Again, this Office finds the same as unreliable
evidence to show anticipation. It observed that there is no date The alleged failure of the Director of Patents and the Court of Appeals to
indicated therein as to when it was manufactured and/or imported accord evidentiary weight to the testimonies of the witnesses of petitioner
before the filing of the application for issuance of patent of the subject showing anticipation is not a justification to grant the petition. Pursuant to the
utility model. What is more, some component parts of Exh. "M" are requirement of clear and convincing evidence to overthrow the presumption of
missing, as only the cup was presented so that the same could not be validity of a patent, it has been held that oral testimony to show anticipation is
compared to the utility model (subject matter of this case) which open to suspicion and if uncorroborated by cogent evidence, as what
consists of several other detachable parts in combination to form the occurred in this case, it may be held insufficient.9
complete LPG burner.
Finally, petitioner would want this Court to review all over again the evidence
xxx xxx xxx 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
It must likewise be pointed out that Ong Bun Tua testified on the presented clearly proves that the patented model of private respondent is no
brochures allegedly of Manila Gas and of Esso Gasul marked Exhs. longer new and, therefore, fraud attended the acquisition of patent by private
"E" and "F" and on the alleged fact that Manila Gas Corporation was respondent.
importing from the United States "Ransome" burners. But the same
could not be given credence since he himself admitted during cross- It has been held that the question on priority of invention is one of fact.
examination that he has never been connected with Manila Gas Novelty and utility are likewise questions of fact. The validity of patent is
Corporation. He could not even present any importation papers relating decided on the basis of factual inquiries. Whether evidence presented comes
to the alleged imported ransome burners. Neither did his wife.6 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
The above findings and conclusions of the Director of Patent were reiterated truth or falsehood of alleged facts or when the query necessarily invites
and affirmed by the Court of Appeals.7 calibration of the whole evidence considering mainly the credibility of
witnesses, existence and relevance of specific surrounding circumstances,
The validity of the patent issued by the Philippine Patent Office in favor of their relation to each other and to the whole and the probabilities of the
private respondent and the question over the inventiveness, novelty and situation.11
Time and again we have held that it is not the function of the Supreme Court in granting the patent is always presumed to be correct. The burden
to analyze or weigh all over again the evidence and credibility of witnesses the shifts to the defendant to overcome by competent evidence this
presented before the lower tribunal or office. The Supreme Court is not a trier legal presumption.
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 That is to say, the patent, which in the instant case is in due form,
reviewable by this Court. having been introduced in evidence, "affords a prima
facie presumption of its correctness and validity." Hence, this is not a
WHEREFORE, the Petition is DENIED. The Decision of the Court of Appeals case of a conflict between two different patents. In the recent of Temco
affirming that of the Philippine Patent Office is AFFIRMED. Costs against Electric Motor Co. vs. Apco Mfg. Co., decided by the Supreme Court of
petitioner. the United States on January 3, 1928, Advance Sheet No. 5, p. 192,
the syllabus says:
SO ORDERED.
An improper cannot appropriate the basic patent of another, and if he
does so without license is an infringer, and may be used as such.

And on page 195 of the opinion, it is said:

It is well established that an improver cannot appropriate the basic

G.R. No. L-27793             March 15, 1928 patent of another and that the improver without a license is an infringer
and may be sued as such.
PATRICK HENRY FRANK and WILLIAM HENRY GOHN, plaintiff-
appellees,  Citing a number of Federal decisions.
vs.
CONSTANCIO BENITO, defendant-appellant. The plans and specifications upon which the patent was issued recite:

It is conceded that on December 16, 1924, the United States Patent Office Our invention relates to hemp stripping machines and it consists in the
issued to the plaintiffs the patent in question No. 1519579, and it was duly combinations, constructions and arrangements herein described and
registered in the Bureau of Commerce and Industry of the Philippine Islands claimed.
on March 17, 1925. After such registration the patent laws, as they exist in the
United States for such patent, are then applied to and are in force and effect An object of our invention is to provide a machine affording facilities
in the Philippine Islands. (Vargas vs. F. M. Yaptico & Co., 40 Phil., 195.) In whereby the operation of stripping hemp leaves may be accomplished
the instant case, the original patent is in evidence, and that decision further mechanically, thereby obviating the strain incident to the performance
holds that: of hemp stripping operations manually.

The burden of proof to substantiate a charge of infringement is with the And on page 3 of the application for patent, it is said:
plaintiff. Where, however, the plaintiff introduces the patent in
evidence, if it is in due form, it affords a prima facie presumption of its Obviously, our invention is susceptible of embodiment in forms other
correctness and validity. The decision of the Commissioner of Patents than the illustrated herein and we therefore consider as our own all
modifications of the form of device herein disclosed which fairly fall The spindle upon which the patent was obtained, together with the spindle
within the spirit and scope of our invention as claimed. upon which the defendant relies are exhibits in the record and were before
the court at the time this case was argued. The spindle of the plaintiffs was
We claim: made of wood, conical in shape and with a smooth surface. That of the
defendant was somewhat similar in shape, but was made of metal with rough
1. In a hemp stripping machine, a stripping head having a supporting surface, and the defendant claims that his spindle was more effective and
portion on which the hemp leaves may rest and having also an upright would do better work than that of the plaintiffs. Be that as it may, the plaintiffs
bracket portion, a lever of angular formation pivotally attached have a patent for their machine, and the defendant does not have a patent,
substantially at the juncture of the arms thereof of the bracket portion and the basic principle of plaintiffs' patent is the spindle upon which they rely,
of the stripping head, whereby one arm of the lever overlies the together with its specified manner and mode of operation, and in the final
supporting portion of the stripping head, a blade carried by said one analysis, it must be conceded that the basic principle of the spindle upon
arm of the lever for cooperating with said supporting, means connected which the defendant relies is founded upon the basic principle of the spindle
with the other arm of the lever and actuating the latter to continously for which the plaintiffs have a patent. Assuming, without deciding, that the
urge the blade toward said supporting portion of the stripping head, defendant's spindle is an improvement upon and is a better spindle than that
and a rotatable spindle positioned adjacent to said stripping head, said of the plaintiffs, yet, under the authority above cited, the defendant had no
spindle being adapted to be engaged by hemp leaves extending legal right to appropriate the basic principle upon which the plaintiffs obtained
across said supporting portion of the stripping head underneath said their patent. The plaintiffs having obtained their patent, which was duly
blade and being operable to draw said hemp leaves in the direction of registered in the Philippines Islands, the defendant cannot infringe upon its
their length between said supporting portion of the stripping head and basic principle.
said blade.
The defendant contends that the basic principle of the spindle was a very old
2. In a hemp stripping machine, a stripping head having a horizontal one in mechanics, and that there was nothing new or novel in the application
table portion, a rest supported upon said table portion, a stripping knife of it by the plaintiffs. Be that as it may, the plaintiffs applied for and obtained
supported upon the table for movement into and out of position to their patent with its specifications which are attached to, and made part of, the
cooperate with the rest to strip hemp leaves drawn between the knife patent, and the proof is conclusive that the defendant is infringing upon the
and the rest, and power driven means adapted to be engaged with basic principle of the spindle as it is defined and specified in plaintiffs' patent.
said hemp leaves and to pull the latter between the knife and rest, said
power driven means including a rotating spindle, said spindle being The judgment of the lower court is affirmed, with costs. So ordered.
free at one end and tapering regularly toward its free end.

3. In a hemp stripping machine, a stripping head having a horizontal

table portion and an upright bracket portion a rest holder adjustably on
the table portion, a rest resiliently supported by the holder, a knife
carrying lever of angular formation and being pivotally attached
substantially at the juncture of the arms thereof to the bracket portion
of the stripping head, whereby one arm of the lever overlies the rest, a
blade adjustably supported on said one arm, for cooperating with said
rest and gravity means connected with the other arm of the lever and
actuating the latter to continously urge the blade toward the rest.
 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
G.R. No. 14101           September 24, 1919 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
ANGEL VARGAS, plaintiff-appellant,  to have been abandoned, may upon payment of the fees required by
vs. law, and other due proceeding had, obtain a patent therefor. (29 Stat.
F. M. YAPTICO & CO. (Ltd.), defendant-appellee. L., 692, 7 Fed .Stat. Ann. [2d Ed.], p. 23.)

Charles C. Cohn for appellants . When a patent is sought to be enforced, "the question of invention, novelty, or
John Bordman for appellee. 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,
MALCOLM, J.: however, the plaintiff introduces the patent in evidence, if it is in due form, it
affords a prima facie presumption of its correctness and validity. The decision
From this judgment the plaintiff has appealed, specifying five errors. The of the Commissioner of Patents in granting the patent is always presumed to
principal assignment No. 1 is, that the trial court erred in finding that the be correct. The burden then shifts to the defendant to overcome by competent
patented invention of the plaintiff is lacking in novelty and invention. evidence this legal presumption .With all due respect, therefore, for the critical
Defendant, in reply, relies on three propositions, namely: (1) The judgment of and expert examination of the invention by the United States Patent Office,
the trial court in finding the patent granted plaintiff void for lack of novelty and the question of the validity of the patent is one for judicial determination, and
invention should be affirmed; (2) The patent granted plaintiff is void from the since a patent has been submitted, the exact question is whether the
public use of his plow for over two years prior to his application for a patent, defendant has assumed the burden of proof as to anyone of his defenses.
and (3) If the patent is valid, there has been no contributory infringement by (SeeAgawan Co. vs. Jordan [1869], 7 Wall., 583; Blanchard vs .Putnam
defendant. [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.)
Before resolving these rival contentions, we should have before us the
relevant law. Act No. 2235 of the Philippine Legislature, enacted on February As herein before stated, the defendant relies on three special defenses. One
10, 1913, in effect makes the United States Patent Laws applicable in the such defense, on which the judgment of the lower court is principally
Philippine Islands. It provides that "owners of patents, including design grounded, and to which appellant devotes the major portion of his vigorous
patents, which have been issued or may hereafter be issued, duly registered argument, concerns the element of novelty, invention, or discovery, that gives
in the United States Patent Office under the laws of the United States relating existence to the right to a patent. On this point the trial court reached the
to the grant of patents, shall receive in the Philippine Islands the protection conclusion that "the patented plow of the plaintiff, Exhibit D, is not different
accorded them in the United States under said laws." (Sec. 1.) Turning to the from the native plow, Exhibit 2, except in the material, in the form, in the
United States Patent Laws, we find the Act of Congress of March 3, 1897, 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 compass. Under the English Statute of Monopolies (21 Jac. Ch., 3), and
from the native plow; consequently, its production does not presuppose the under the United States Patent Act of February 21, 1793, later amended to be
exercise of the inventive faculty but merely of mechanical skill, which does not as herein quoted, it was always the rule, as stated by Lord Coke, Justice
give a right to a patent of an invention under the provisions of the Patent Story and other authorities, that to entitle a man to a patent, the invention
Law." In thus finding, the court may have been right, since the Vargas plow must be new to the world. (Pennock and Sellers vs. Dialogue [1829], 2 Pet.,
does not appear to be such a "combination" as contains a novel assemblage 1.) As said by the United States Supreme Court, "it has been repeatedly held
of parts exhibiting invention. (See Stimpson vs. Woodman [1870], 10 Wall., by this court that a single instance of public use of the invention by a patentee
117 — rollers; Hicks vs. Kelsey [1874], 20 Wall., 353 — stoves; Washburn & for more than two years before the date of his application for his patent will be
Moen Mfg. Co. vs. Beat 'Em All Barbed Wire Co. [1892], 143 U.S., 275 — fatal to the validity of the patent when issued." (Worley vs. Lower Tobacco Co
barbed wire; Lynch vs .Dryden [1873], C. D., 73 — walking cultivators; .[1882], 104 U. S., 340; McClurg vs. Kingsland [1843], I How., 202;
Torrey vs. Hancock [1910], 184 Fed., 61 — rotary plows.) 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;
A second line of defense relates to the fact that defendant has never made a Manning vs. Cape Ann Isinglass and Glue Co. [1883], 108 U. S., 462;
complete Vargas plow, but only points, shares, shoes, and heel pieces, to Andrews vs. Hovey [1887], 123 U. S., 267; Campbell vs. City of New York
serve as repairs. Defendant's contention is, that in common with other [1881], 1 L. R. A., 48.)
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 On the facts, we think the testimony shows such a public use of the Vargas
difference has long been recognized between repairing and reconstructing a plow as to render the patent invalid Nicolas Roces, a farmer, testified that he
machine. If, for instance, partial injuries, whether they occur from accident or had bought twenty Vargas plows, of which Exhibit 5 was one, in December,
from wear and tear, to a machine for agricultural purposes, are made this is 1907; and Exhibit 5, the court found, was a plow completely identical with that
only re-fitting the machine for use, and thus permissible. (Wilson vs. Simpson for which the plaintiff had received a patent. The minor exception, and this in
[1850], 9 How., 109.) Even under the more rigorous doctrine of Leeds & Catlin itself corroborative of Roces' testimony, is that the handle of plow Exhibit 5 is
Co. vs. Victor Talking Machine Co. ([1909], 213 U.S., 325), it may be possible marked with the letters "A V" and not with the words "Patent Applied For" or
that all the defendant has done is to manufacture and sell isolated parts to be "Patented Mar.12, 1912." Salvador Lizarraga, a clerk in a business house,
used to replace worn-out parts. 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
The third defense is, that under the provisions of the statute, an inventor's plow business. Ko Pao Ko, a blacksmith, testified that he had made fifty plow
creation must not have been in public use or on sale in the United States (and frames in 1905 for Vargas and Araneta, of which Exhibit 4 is one; Exhibit 4,
the Philippine Islands) for more than two years prior to his application the court found, is a plow identical with that patented by Vargas, but without
.Without, therefore, committing ourselves as to the first two defenses, we share and mould-board. Alfred Berwin, an employee in the office of Attorney
propose to base our decision on the one just suggested as more easily John Bordman, testified that on September 21, 1908, he had knowledge of a
disposing of the case. (See 20 R. C. L., 1140-1142.) We do so with full transaction wherein Vargas and Araneta desired to obtain money to invest in
consciousness of the doubt which arose in the mind of the trial court, but with a plow factory. George Ramon Saul, a mechanic of the "Taller Visayas" of
the belief that since it has been shown that the invention was used in public at Strachan and MacMurray, testified that he had made Vargas plow points and
Iloilo by others than Vargas, the inventor, more than two years before the shares of the present form upon order of Araneta and Vargas in 1906 and
application for the patent, the patent is invalid. 1907 .William MacMurray, proprietor of the "Taller Visayas," corroborated the
evidence of the witness Saul by the exhibition of the account against Vargas
Although we have spent some time in arriving at this point, yet having and Araneta wherein, under date of December 13, 1906, appears the item "12
reached it, the question in the case is single and can be brought to a narrow 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 CARSON, J.:
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 This an appeal from a final order of the Court of First Instance of the city of
Lizarraga could have acted as an agent to sell two plows in November, 1908, Manila, in contempt proceedings prosecuted under the provisions of section
who denied any remembrance of the loan mentioned by Berwin as having 172 of the Code of Civil Procedure. The principal case to which these
been negotiated in September, 1908, who denied that Ko Pao Ko made fifty proceedings are ancillary, was an action to enjoin infringement of a patented
plows one of which is Exhibit 4, for Araneta and Vargas in 1905. Plaintiff process for the manufacture of curved handles for canes, parasols, and
introduced his books to substantiate his oral testimony .It is hardly believable umbrellas. In that case plaintiff established his title to a valid patent covering
that five or six witnesses for the defense would deliberately perjure the process in question, and obtained against this defendant a judgment,
themselves under oath. One might, but that all together, of different granting a perpetual injunction restraining its infringement, which judgment
nationalities, would enter into such a conspiracy, is to suppose the was affirmed by this court on appeal (6 Phil. Rep., 143.) The order was
improbable. couched in the following terms:

Tested by the principles which go to make the law, we think a preponderance It is ordered that the defendant abstain from manufacturing canes and
of the evidence is to the effect that for more than two years before the umbrellas with a curved handle by means of a lamp or blowpipe fed
application for the original letters patent, or before July 22, 1908, there was, with mineral oil or petroleum, which process was protected by patent
by the consent and allowance of Vargas, a public use of the invention No. 19228, issued in favor of Henry Gsell, and by him transferred to
covered by them. Carlos Gsell —

To conclude, we are not certain but that appellee has proved every one of his and the process therein mentioned is fully described in the following
defenses. We are certain that he has at least demonstrated the public use of statement which accompanied the application for the patent:
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 After the canes have been cut for cane or umbrella handles, the
of the lower court, without prejudice to the determination of the damages outsides are thoroughly cleaned. This operation having been
resulting from the granting of the injunction, with the costs of this instance performed, they are then trimmed and the interior cleaned by means of
against the appellant. So ordered. a gimlet of about 15 centimeters in length operated by a wheel, by
means of which the knots inside are broken. There is then introduced
to a depth of about 15 centimeters a piece of very clean bamboo,
which completely fills the hole made by the gimlet, thereby giving to the
cane the necessary strength to resist the heat of the lamp or blowpipe
without breaking or cracking.
G.R. No. L-4720             January 19, 1909
This operation having been performed, the cane, the end of which is
CARLOS GSELL, plaintiff-appellee,  attached to a fixed point, is given the shape of a hook or some other
vs. form by means of fire and pressure. Once the cane has been shaped
VALERIANO VELOSO YAP-JUE, defendant-appellant. as desired, it is allowed to cool, and is then cleaned, varnished, and
ornamented at will.
Chicote and Miranda, for appellant.
Haussermann and Cohn, for appellee.
 This industry requires skillful, handiwork, owing to the great risk The question, however, arises as to whether that prohibition included
engendered by the treatment of such fragile material as a light cane. the substitution of alcohol for coal or mineral oil. In more abstract and
On the other hand, however, it affords large profits to the workman. general terms, the appellant propounds this question in his brief, as
follows: "The question presented by this appeal is whether or not the
NOTE. — The patent applied for shall be for the industrial product use of a patented process by a third person, without license or
"cane handles for walking sticks and umbrellas, curved by means of a authority therefor, constitutes an infringement when the alleged
small lamp or blowpipe, fed by petroleum or mineral fuel." infringer has substituted in lieu of some unessential part of the
patented process a well-known mechanical equivalent." It has seen
Thereafter the defendant continued to manufacture curved cane handled for that by its very terms this question implies in the present case the
walking sticks and umbrellas by a process in all respectes identical with that existence of two fundamental facts which must first be duly
used by the plaintiff under his patent, except only that he be substituted for a established, viz: (1) That the use of the lamp fed with petroleum or
lamp fed with petroleum or mineral oil, lamp fed with alcohol, as appears from mineral oil was an unessential part of the patented process the use of
a stipulation entered into between plaintiff and defendant in the following which by the accused was prohibited by the said judgment; and (2) that
terms: alcohol is an equivalent and proper substitute, well known as such, for
mineral oil or petroleum in connection with the said process. The
The plaintiff and defendant agree upon the fact that the defendant has appellant has failed to affirmatively establish either of these two
used and is still using a process for curving handles of canes and essential facts. He has merely assumed their existence, without
umbrellas identical with that described in the application for the patent proving the same, thus begging the whole question. Consequently the
by the plaintiff with the exception that he has substituted for the lamp contempt with which the accused is charged has not been fully and
fed with all other lamp fed with alcohol. satisfactorily proved, and the order appealed from should accordingly
be affirmed in so far as it holds that the defendant is not guilty of
Contempt proceedings were instituted against the defendant in the month of contempt. (7 Phil. Rep., 130).
February, 1904, the plaintiff in the original action alleging that the —
Thereafter the plaintiff continued the use of the patented process, save only
Defendant in disobediencce of the judgment of the same was and is for the substitutions of a lamp fed by alcohol for a lamp fed by petroleum or
now engaged in the unlawful manufacture of umbrella handles by the mineral oil, and new proceedings were instituted under the provisions of
identical process described in and protected said patent, No. 19228, or section 172 for the purpose of enforcing the original injunction above cited.
a process so like the patented process as to be indistinguishable. Substantially the same question is submitted in these new proceedings as
that submitted in the former case, but at the trial of this case testimony was
The trial court found the defendant "not guilty" of contempt as charged; and introduced which, in our opinion, leaves no room for doubt, first, that alcohol is
this court, on appeal, held that — a character that it could be made patent by an equivalent or substitute, well known as such at the time when the patent
the mere annunciation of the acts performed by the defendant, which are was issued, for mineral oil or petroleum, in connection with blast lamps or
alleged to constitute the said violation. These acts were not clearly and blowpipes such as that which plaintiff uses in the patented process, and,
manifestly contrary to the precise terms of the prohibition. According to the second, that the use of a blast lamp or blowpipe fed with petroleum or mineral
express language of the judgment, the prohibition is against the manufacture oil, rather than one fed with alcohol, is an unessential part of the patented
of canes and umbrellas with curved handles by means of the use of a cool or process the use of which was prohibited by the said judgment.
mineral oil-burning lamp or blowpipe and the parties have stipulated that the
defendant did not use a coal or mineral oil-burning lamp but an alcohol- It was clearly proven at the trial, that kerosene and alcohol blast lamps are
burning lamp. agencies for producing and applying heat, well known throughout the world
long prior to 1906, the date of the issue of the patent; that it is and for many that unessential changes, which do not affect the principle of the blast lamp
years has been known that one may for all ordinary purposes be used in the used in the patented process, or the mode of application of heat authorized
place of the other, and especially for the purpose of applying heat in the by the patent, are not sufficient to support a contention that the process in
manner described in the patent; that the only consideration which determines one case is in any essential particular different from that used in the other.
the employment of one in place of the other is the convenience of the user
and the question of relative cost; and that the principle upon which both lamps Counsel for plaintif invokes the doctrine of "mechanical equivalents" in
work is substantially identical, the only difference in construction being support of his contention, and indeed that doctrine is strikingly applicable to
occasioned by the application of this principle to oils of different physical and the facts in this case. This doctrine is founded upon sound rules of reason
chemical composition. and logic, and unless restrained or modified by law in particular jurisdiction, is
of universal application, so that it matters not whether a patent be issued by
The plaintiff does not and can not claim a patent upon the particular lamp one sovereignty or another, the doctrine may properly be invoked to protect
used by him. The patent, however, gives him the exclusive right to the use of the patentee from colorable invasions of his patent under the guise of
"la lamparilla o soplete, alimentada de petroleo o esencia mineral" (the small substitution of some part of his invention by some well known mechanical
lamp or blowpipe fed with petroleum or mineral oil) in manufacturing curved equivalent. Our attention has not been called to any provision of the patent
handles for umbrellas and canes, to which reference is made in the above- law of Spain, which denies to patentees thereunder the just and equitable
cited descriptive statement and annexed note. "The small lamp or blowpipe" protection of the doctrine; and indeed a patent law which failed to recognize
mentioned in the descriptive statement and annexed note which accompanied this doctrine would afford scant protection to inventors, for it is difficult if not
the application for the patent, evidently referred to the design of a blast lamp impossible to conceive an invention, which is incapable of alteration or
which was attached thereto; and in our opinion both plaintiff and defendant change in some unessential part, so as to bring that part outside of the
make use of a blast lamp substantially similar, in principle and design, to that express terms of any form of language which might be used in granting a
referred to in the descriptive statement and the annexed note, for the patent for the invention; and has been well said by counsel for plaintiff, human
exclusive use of which in the manufacture of curved handles, plaintiff holds a ingenuity would be taxed beyond its powers in preparing a grant of a patent
patent. True, defendant's blast lamp is fed with alcohol, and its shape varies so comprehensive in its terms, "as to include within the express terms of its
in unimportant details, for the purpose of accommodating the principle, by detailed description every possible alternative of form, size, shape, material,
which the flame is secured, to the different physical and chemical composition location, color, weight, etc., of every wheel, rod, bolt, nut, screw, plate, and
of the fuel used therein; but the principle on which it works, its mode of other component parts of an invention."
application, and its general design distinguish it in no essential particular from
that used by the plaintiff. If the original design accompanying the statement The following citations from various decisions of the Federal Courts of the
had shown a blast lamp made of brass or delf, he would be a reckless United States illustrate the application of the doctrine in that jurisdiction, and
advocate who would claim that the patent might lawfully be evaded by the use clearly point the way to the proper solution of the questions involved in the
of a lamp made of iron or tin; or if the original design had shown a blast lamp case at bar:
6 inches high with a nozzle 4 inches long it would hardly be seriously
contended that the use of lamp 8 inches high with a nozzle 3 inches long Can the defendant have the right of infringement, by substituting in lieu
would protect the ingenious individual, who in all other respects borrowed the of some parts of the combination well-known mechanical equivalents? I
patented process, from the consequences of an action for damages for am quite clear that be can not, both on principle and authority. It is not
infringement. But in the light of the evidence of record in this case, the to be disputed that the inventor of an ordinary machine is, by his letters
reasoning upon which these hypothetical claims should be rejected applies patent, protected against all mere formal alterations and against the
with equal force to the contentions of the defendant, the ground for the substitution of mere mechanical equivalents. Why should not the
rejection of the claims in each case being the same, and resting on the fact inventor of a new combination receive the same protection? If he can
not, then will his patent not be worth the parchment on which it is Bona fide inventors of a combination are as much entitled to suppress
written. every other combination of the same ingredients to produce the same
result, not substantially different from what they have invented and
If no one can be held to infringe a patent for a combination unless he caused to be patented as to any other class of inventors. All alike have
uses all the parts of the combination and the identical machinery as the right to suppress every colorable invasion of that which is secured
that of the patentee, then will no patent for a combination be to them by letters patent. (Seymour vs. Osborne, 78 U.S., 516, 556.)
infringed; for certainly no one capable of operating a machine can be
incapable of adopting some formal alteration in the machinery, or of A claim for the particular means and mode of operation described in
substituting mechanical equivalents. No one infringes a patent for a the specification extends, by operation of law, to the equivalent of such
combination who does not employ all of the ingredients of the means — not equivalent simply because the same result is thereby
combination; but if he employs all the ingredients, or adopts mere produced — but equivalent as being substantially the same device in
formal alterations, or substitutes, for one ingredient another which was structure, arrangement and mode of operation. (Burden vs. Corning,
well known at the date of the patent as a proper substitute for the one Fed. Cas., 2143. Gottfried vs. Philip Best Brewing Co., Fed. Cas.,
withdrawn, and which performs substantially the same function as the 5633.)
one withdrawn, he does infringe. (King vs. Louisville Cement Co., Fed.
Cas., 7798.) An equivalent device is such as a mechanic of ordinary skill in
construction of similar machinery, having the forms, specifications and
Bona fide inventors of a combination are as much entitled to machine before him, could substitute in the place of the mechanism
equivalents as the inventors other patentable improvements; by which described without the exercise of the inventive faculty.
is meant that a patentee in such a case may substitute another (Burden vs. Corning, supra.)
ingredient for any one of the ingredients of his invention, if the
ingredient substituted performs the same function as the one omitted All the elements of the invention in this case are old, and the rule in
and as well known at the date of his patent as a proper substitute for such cases, as before explained, undoubtedly is that a purpose can not
the one omitted in the patented combination. Apply that rule and it is invoke the doctrine of equivalents to suppress all other improvements
clear that an alteration in a patented combination which merely of the old machine, but he is entitled to treat everyone as an infringer
substitutes another old ingredient for one of the ingredients in the who makes, uses, or vends his patented improvement without any
patented combination, is an infringement of the patent, if the substitute other change than the employment of a substitute for one of its
performs the same function and was well known at the date of the elements, well known as such at the date of his invention, and which
patent as a proper substitute for the omitted ingredient. any constructor acquainted with the art will know how to comply. The
(Gould vs. Rees, 82 U.S., 187, 194.) reason for the qualification of the rule as stated is, that such change —
that is, the mere substitution of a well- known element for another —
Mere formal alterations in a combination in letters patent are no where it appears that the substituted element was well known as a
defense to the charge of infringement and the withdrawal of one usual substitute for the element left out — is merely a formal one, and
ingredient from the same and the substitution of another which was nothing better than a colorable evasion of the patent. (Union Sugar
well known at the date of the patent as a proper substitute for the one Refining Co. vs. Matthieson, Fed. Cas., 14399.)
withdrawn is a mere formal alteration of the combination if the
ingredient substituted performs substantially the same function as the Counsel for the defendant insists that, under Spanish law, none of the steps
one withdrawn. of the process described in the descriptive statement, save those mentioned
in the "note" thereto attached are included in the patent, and that the patent
rights secured thereunder are strictly limited to the precise language of the
"note" attached to the descriptive statement; while counsel for plaintiff
appears to think that the language of the patent covers any process or device FERNANDEZ, J.:
whereby wood or cane may be bent or curved by the use of heat. But for the
purpose of this decision it is not necessary to consider these questions, The petitioner questioned the validity of the patent of the private respondent,
further than to hold, as we do, that under the doctrine of equivalents, the Conrado G. de Leon, on the ground that the process, subject of said patent, is
language of the note in the descriptive statement applies to the operation of not an invention or discovery, or an improvement of the old system of making
applying heat for the purpose of curving handles or canes and umbrellas by tiles. It should be noted that the private respondent does not claim to be the
means of a blast lamp fed with alcohol, as well as by means of a blast lamp discoverer or inventor of the old process of tile-making. He only claims to
fed with petroleum or mineral oil; and the defendant having admitted the fact have introduced an improvement of said process. In fact, Letters Patent No.
that he applied heat for the purpose of curving handles for canes and 658 was issued by the Philippine Patent Office to the private respondent,
umbrellas by means of a blast lamp fed with alcohol, he must be deemed to Conrado G. de Leon, to protect his rights as the inventor of "an alleged new
have contempt of violating the terms and the injunction issued in the principal and useful improvement in the process of making mosaic pre-cast
case, wherein plaintiff was declared the owner of the patent in question, and tiles." 11Indeed, Section 7, Republic Act No. 165, as amended provides: "Any
defendant enjoined from its infringement. invention of a new and useful machine, manufactured product or substance,
process, or an improvement of the foregoing, shall be patentable.
The argument of counsel for defendant and appellant, based on the theory
that the questions herein discussed and decided to have been heretofore The Court of Appeals found that the private respondent has introduced an
settled by this court, and that the subject-matter of this proceeding is res improvement in the process of tile-making because:
adjudicata between the parties thereto is sufficiently refuted by the simple
reading of the decision of this court in the case relied upon. (Gsell vs. Veloso, ... we find that plaintiff-appellee has introduced an improvement
7 Phil. Rep., 130.) in the process of tile-making, which proceeds not merely from
mechanical skill, said improvement consisting among other
The judgment of the lower court should be and is hereby affirmed, with the things, in the new critical depth, lip width, easement and field of
costs of this instance against the appellant. 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
G.R. No. L-32160 January 30, 1982 and decorative purposes, strong optimum thickness of
appellee's new tiles of only 1/8 of an inch at the deepest
DOMICIANO A. AGUAS, petitioner,  easement (Exhs. "D" and "D-1") is a most critical feature,
vs. suggestive of discovery and inventiveness, especially
CONRADO G. DE LEON and COURT OF APPEALS, respondents. 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, the trial, appellant was challenged by appellee to present a tile
protrusions and depressions are known to some sculptors, still, of the same kind as those produced by the latter, from any
to be able to produce a new and useful wall tile, by using them earlier source but, despite the fact that appellant had every
all together, amounts to an invention. More so, if the totality of chance to do so, he could not present any. There is, therefore,
all these features are viewed in combination with the Ideal no concrete proof that the improved process of tile-making
composition of cement, sodium silicate and screened fine sand. described in appellee's patent was used by, or known to, others
previous to his discovery thereof. 13
By using his improved process, plaintiff has succeeded in
producing a new product - a concrete sculptured tile which could The contention of the petitioner Aguas that the letters patent of de Leon was
be utilized for walling and decorative purposes. No proof was actually a patent for the old and non-patentable process of making mosaic
adduced to show that any tile of the same kind had been pre-cast tiles is devoid of merit. De Leon never claimed to have invented the
produced by others before appellee. Moreover, it appears that process of tile-making. The Claims and Specifications of Patent No. 658 show
appellee has been deriving considerable profit from his that although some of the steps or parts of the old process of tile making were
manufacture and sale of such tiles. This commercial success is described therein, there were novel and inventive features mentioned in the
evidence of patentability (Walker on Patents, Dellers Edition, process. Some of the novel features of the private respondent's
Vol. I, p. 237). 12 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
The validily of the patent issued by the Philippines Patent Office in favor of the thinnest portion, Ideal composition of cement and fine river sand, among other
private respondent and the question over the inventiveness, novelty and ingredients that makes possible the production of tough and durable wall tiles,
usefulness of the improved process therein specified and described are though thin and light; the engraving of deep designs in such a way as to make
matters which are better determined by the Philippines Patent Office. The the tiles decorative, artistic and suitable for wall ornamentation, and the fact
technical staff of the Philippines Patent Office, composed of experts in their that the tiles can be mass produced in commercial quantities and can be
field, have, by the issuance of the patent in question, accepted the thinness of conveniently stock-piled, handled and packed without any intolerable
the private respondent's new tiles as a discovery. There is a presumption that incidence of breakages. 14
the Philippines Patent Office has correctly determined the patentability of the
improvement by the private respondent of the process in question. The petitioner also contends that the improvement of respondent is not
patentable because it is not new, useful and inventive. This contention is
Anent this matter, the Court of Appeals said: without merit.

Appellant has not adduced evidence sufficient to overcome the The records disclose that de Leon's process is an improvement of the old
above established legal presumption of validity or to warrant process of tile making. The tiles produced from de Leon's process are
reversal of the findings of the lower court relative to the validity suitable for construction and ornamentation, which previously had not been
of the patent in question. In fact, as we have already pointed achieved by tiles made out of the old process of tile making. De Leon's
out, the clear preponderance of evidence bolsters said invention has therefore brought about a new and useful kind of tile. The old
presumption of validity of appellee's patent. There is no type of tiles were usually intended for floors although there is nothing to
indication in the records of this case and this Court is unaware prevent one from using them for walling purposes. These tiles are neither
of any fact, which would tend to show that concrete wall tiles artistic nor ornamental. They are heavy and massive.
similar to those produced by appellee had ever been made by
others before he started manufacturing the same. In fact, during
The respondent's improvement is indeed inventive and goes beyond the In its decision the Court of Appeals affirmed the amount of damages awarded
exercise of mechanical skill. He has introduced a new kind of tile for a new by the lower court with the modification that the respondent is only entitled to
purpose. He has improved the old method of making tiles and pre-cast P3,000.00 moral damages. 21
articles which were not satisfactory because of an intolerable number of
breakages, especially if deep engravings are made on the tile. He has The lower court awarded the following damages: 22
overcome the problem of producing decorative tiles with deep engraving, but
with sufficient durability. 15 Durability inspite of the thinness and lightness of a) P10,020.99 by way of actual damages;
the tile, is assured, provided that a certain critical depth is maintained in
relation to the dimensions of the tile. 16 b) P50,000.00 by way of moral damages;

The petitioner also claims that changing the design from embossed to c) P5,000.00 by way of exemplary damages;
engraved tiles is neither new nor inventive because the Machuca Tile Factory
and the Pomona Tile Manufacturing Company have been manufacturing d) P5,000.00 by way of attomey's fees and
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 e) Costs of suit
private respondent had copied some designs of Pomona. 19
because:
The Machuca tiles are different from that of the private respondent. The
designs are embossed and not engraved as claimed by the petitioner. There An examination of the books of defendant Aguas made before a
may be depressions but these depressions are too shallow to be considered Commissioner reveals that during the period that Aguas was
engraved. Besides, the Machuca tiles are heavy and massive. manufacturing and selling tiles similar to plaintiff's, he made a
gross income of P3,340.33, which can be safely be considered
There is no similarity between the Pomona Tiles and de Leon's tiles. The the amount by which he enriched himself when he infringed
Pomona tiles are made of ceramics. 20The process involved in making cement plaintiff's patent. Under Sec. 42 of the Patent Law any patentee
tiles is different from ceramic tiles. Cement tiles are made with the use of whose rights have been infringed is entitled to damages which,
water, while in ceramics fire is used. As regards the allegation of the petitioner according to the circumstances of the case may be in a sum
that the private respondent copied some designs of Pomona, suffice it to say above the amount found as actual damages sustained provided
that what is in issue here is the process involved in tile making and not the the award does not exceed three times the amount of such
design. actual damages. Considering the wantonness of the
infringement committed by the defendants who knew all the time
In view of the foregoing, this Court finds that Patent No. 658 was legally about the existence of plaintiff's patent, the Court feels there is
issued, the process and/or improvement being patentable. reason to grant plaintiff maximum damages in the sum of
P10,020.99. And in order to discourage patent infringements
Both the trial court and the Court of Appeals found as a fact that the petitioner and to give more teeth to the provisions of the patent law thus
Domiciano A. Aguas did infringe de Leon's patent. There is no showing that promoting a stronger public policy committed to afford greater
this case falls under one of the exceptions when this Court may overrule the incentives and protection to inventors, the Court hereby awards
findings of fact of the Court of Appeals. The only issue then to be resolved is plaintiff exemplary damages in the sum of P5,000.00 to be paid
the amount of damages that should be paid by Aguas. 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:

G.R. No. L-22773 March 29, 1974
As regards the question of moral damages it has been shown
that as a result of the unlawful acts of infringment committed by PITTSBURG PLATE GLASS COMPANY, petitioner, 
defendants, plaintiff was unstandably very sad; he worried and vs.
became nervous and lost concentration on his work in THE DIRECTOR OF PATENTS and CHUA TUA HIAN AND COMPANY,
connection with his tile business (pp. 28, 30, t.s.n., Feb. 28, doing business as "SIN TECK HENG & CO.", respondents.
1964). In addition, plaintiff's character and reputation have been
unnecessarily put in question because defendants, by their acts The main issue before this Court is whether the law firm of Lichauco, Picazo
of infringement have created a doubt or suspicion in the public and Agcaoili was authorized to represent the petitioner before the Philippine
mind concerning the truth and honesty of plaintiff's Patent Office on November 5, 1962 when the former pleaded for an extension
advertisements and public announcements of his valid patent. of time to register the petitioner's opposition to the respondent's application.
Necessarily, said acts of defendants have caused plaintiff
considerable mental suffering, considering especially, the fact It is our considered view that the said law firm was so properly authorized by
that he staked everything on his pre-cast tile business (p. 36, the petitioner. It should be noted that the petitioner does not deny, as in fact it
t.s.n., Id.) The wantonness and evident bad faith characterizing asserted in writing, that the said law firm was authorized to represent it by
defendants' prejudicial acts against plaintiff justify the virtue of the powers it had vested upon Langner, et al., a correspondent of
assessment of moral damages in plaintiff's favor, though we do Lichauco, Picazo and Agcaoili, to handle all foreign trademark matters
not believe the amount of P50,000.00 awarded by the lower affecting the petitioner. It bears emphasis that the relationship between
court is warranted by the circumstances. We feel that said counsel and client is strictly a personal one. It is a relationship the creation of
amount should be reduced to P3,000.00 by way of which courts and administrative tribunals cannot but recognize on the faith of
compensating appellee for his moral suffering. "Willful injury to the client's word, especially when no substantial prejudice is thereby caused
property may be a legal ground for awarding moral damages if to any third party.
the court should find that, under the circumstances such
damages are justly due" (Art. 2219 NCC). In the case at bar, the petitioner, which claims to be adversely affected by the
respondent's trademark application, seasonably informed the Director of
There is no reason to reduce the amount of damages and attorneys fees Patents that its counsel had the authority to represent it before the latter's
awarded by the trial court as modified by the Court of Appeals. office. We see no valid reason to interpose chevaux-de frise upon that claim
and deny the petitioner its basic right to be heard.
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. ACCORDINGLY, the questioned resolutions of the Director of Patents of
October 14, 1963 and April 29, 1964 are set aside, and the Director of
SO ORDERED. Patents is hereby directed to proceed with the determination of the application
and the opposition thereto with costs against Chua Tua Hian & Company.
Makalintal, C.J., Teehankee, Makasiar, Esguerra and Muñoz Palma, JJ., another who was granted a patent in a suit for declaratory or injunctive relief
concur. recognized under American patent laws. This remedy, petitioner points out,
may be likened to a civil action for infringement under Section 42 of the
Philippine Patent Law.

We find the above arguments untenable.

Section 42 of R.A. 165, otherwise known as the Patent Law, explicitly

provides:

Sec. 42. Civil action for infringement. — Any patentee, or

anyone possessing any right, title or interest in and to the
patented invention, whose rights have been infringed, may bring
a civil action before the proper Court of First Instance (now
Regional Trial court), to recover from the infringer damages
sustained by reason of the infringement and to secure an
injunction for the protection of his right. . . .

Under the aforequoted law, only the patentee or his successors-in-interest

may file an action for infringement. The phrase "anyone possessing any right,
title or interest in and to the patented invention" upon which petitioner
maintains its present suit, refers only to the patentee's successors-in-interest,
assignees or grantees since actions for infringement of patent may be brought
G.R. No. 118708 February 2, 1998 in the name of the person or persons interested, whether as patentee,
assignees, or as grantees, of the exclusive right. 12 Moreover, there can be no
CRESER PRECISION SYSTEMS, INC., petitioner,  infringement of a patent until a patent has been issued, since whatever right
vs. one has to the invention covered by the patent arises alone from the grant of
COURT OF APPEALS AND FLORO INTERNATIONAL patent. 13 In short, a person or entity who has not been granted letters patent
CORP., respondents. over an invention and has not acquired any light 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. 14
It is petitioner's contention that it can file, under Section 42 of the Patent Law
(R.A. 165), an action for infringement not as a patentee but as an entity in Petitioner admits it has no patent over its aerial fuze. Therefore, it has no
possession of a right, title or interest in and to the patented invention. It legal basis or cause of action to institute the petition for injunction and
advances the theory that while the absence of a patent may prevent one from damages arising from the alleged infringement by private respondent. While
lawfully suing another for infringement of said patent, such absence does not petitioner claims to be the first inventor of the aerial fuze, still it has no right of
bar the first true and actual inventor of the patented invention from suing property over the same upon which it can maintain a suit unless it obtains a
patent therefor. Under American jurisprudence, an inventor has no common-
law right to a monopoly of his invention. He has the right to make, use and the thinness of the private respondent's new tiles as a
vend his own invention, but if he voluntarily discloses it, such as by offering it discovery. There is a presumption that the Philippine Patent
for sale, the world is free to copy and use it with impunity. A patent, however, Office has correctly determined the patentability of the
gives the inventor the right to exclude all others. As a patentee, he has the improvement by the private respondent of the process in
exclusive right of making, using or selling the invention. 15 question.

Further, the remedy of declaratory judgment or injunctive suit on patent In fine, in the absence of error or abuse of power or lack of jurisdiction or
invalidity relied upon by petitioner cannot be likened to the civil action for grave abuse of discretion, we sustain the assailed decision of the respondent
infringement under Section 42 of the Patent Law. The reason for this is that Court of Appeal.
the said remedy is available only to the patent holder or his successors-in-
interest. Thus, anyone who has no patent over an invention but claims to WHEREFORE, the decision of the Court of Appeals is hereby AFFIRMED. No
have a right or interest thereto can not file an action for declaratory judgment pronouncement as to costs.
or injunctive suit which is not recognized in this jurisdiction. Said person,
however, is not left without any remedy. He can, under Section 28 of the SO ORDERED.
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, petitioner's remedy is not to file an action
for injunction or infringement but to file a petition for cancellation of private
respondent's patent. Petitioner however failed to do so. As such, it can not
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.

Thus, as correctly ruled by the respondent Court of Appeals in its assailed

decision: "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 G.R. No. 149907               April 16, 2009
true inventor of the invention."
ROMA DRUG and ROMEO RODRIGUEZ, as Proprietor of ROMA
In the case of Aguas vs. De Leon, 16 we stated that: DRUG, Petitioners, 
vs.
The validity of the patent issued by the Philippine Patent Office THE REGIONAL TRIAL COURT OF GUAGUA, PAMPANGA, THE
in favor of the private respondent and the question over the PROVINCIAL PROSECUTOR OF PAMPANGA, BUREAU OF FOOD &
investments, novelty and usefulness of the improved process DRUGS (BFAD) and GLAXO SMITHKLINE, Respondents.
therein specified and described are matters which are better
determined by the Philippines Patent Office. The technical Staff Hence, the present Petition for Prohibition questing the RTC-Guagua
of the Philippines Patent Office, composed of experts in their Pampanga and the Provincial Prosecutor to desist from further prosecuting
field, have, by the issuance of the patent in question, accepted
Rodriguez, and that Sections 3(b)(3), 4 and 5 of the SLCD be declared passage in 2008 of Republic Act No. 9502, also known as the "Universally
unconstitutional. In gist, Rodriguez asserts that the challenged provisions Accessible Cheaper and Quality Medicines Act of 2008".6
contravene three provisions of the Constitution. The first is the equal
protection clause of the Bill of Rights. The two other provisions are Section Section 7 of Rep. Act No. 9502 amends Section 72 of the Intellectual Property
11, Article XIII, which mandates that the State make "essential goods, health Code in that the later law unequivocally grants third persons the right to
and other social services available to all the people at affordable cost;" and import drugs or medicines whose patent were registered in the Philippines by
Section 15, Article II, which states that it is the policy of the State "to protect the owner of the product:
and promote the right to health of the people and instill health consciousness
among them." Sec. 7. Section 72 of Republic Act No. 8293, otherwise known as the
Intellectual Property Code of the Philippines, is hereby amended to read as
Through its Resolution dated 15 October 2001, the Court issued a temporary follows:
restraining order enjoining the RTC from proceeding with the trial against
Rodriguez, and the BFAD, the NBI and Glaxo Smithkline from prosecuting the "Sec. 72. Limitations of Patent Rights. – The owner of a patent has no right to
petitioners.4 prevent third parties from performing, without his authorization, the acts
referred to in Section 71 hereof in the following circumstances:
Glaxo Smithkline and the Office of the Solicitor General (OSG) have opposed
the petition, the latter in behalf of public respondents RTC, Provincial "72.1. Using a patented product which has been put on the market in the
Prosecutor and Bureau of Food and Drugs (BFAD). On the constitutional Philippines by the owner of the product, or with his express consent, insofar
issue, Glaxo Smithkline asserts the rule that the SLCD is presumed as such use is performed after that product has been so put on the said
constitutional, arguing that both Section 15, Article II and Section 11, Article market: Provided, That, with regard to drugs and medicines, the limitation
XIII "are not self-executing provisions, the disregard of which can give rise to on patent rights shall apply after a drug or medicine has been
a cause of action in the courts." It adds that Section 11, Article XIII in introduced in the Philippines or anywhere else in the world by the patent
particular cannot be work "to the oppression and unlawful of the property owner, or by any party authorized to use the invention: Provided,
rights of the legitimate manufacturers, importers or distributors, who take
pains in having imported drug products registered before the BFAD." Glaxo further, That the right to import the drugs and medicines contemplated
Smithkline further claims that the SLCD does not in fact conflict with the in this section shall be available to any government agency or any
aforementioned constitutional provisions and in fact are in accord with private third party;
constitutional precepts in favor of the people’s right to health.
"72.2. Where the act is done privately and on a non-commercial scale
The Office of the Solicitor General casts the question as one of policy wisdom or for a non-commercial purpose: Provided, That it does not
of the law that is, beyond the interference of the judiciary.5 Again, the significantly prejudice the economic interests of the owner of the
presumption of constitutionality of statutes is invoked, and the assertion is patent;
made that there is no clear and unequivocal breach of the Constitution
presented by the SLCD. "72.3. Where the act consists of making or using exclusively for
experimental use of the invention for scientific purposes or educational
II. purposes and such other activities directly related to such scientific or
educational experimental use;
The constitutional aspect of this petition raises obviously interesting
questions. However, such questions have in fact been mooted with the
 "72.4. In the case of drugs and medicines, where the act includes apply after a drug or medicine has been introduced in the Philippines or
testing, using, making or selling the invention including any data anywhere else in the world by the patent owner, or by any party authorized to
related thereto, solely for purposes reasonably related to the use the invention: Provided, further, That the right to import the drugs and
development and submission of information and issuance of approvals medicines contemplated in this section shall be available to any government
by government regulatory agencies required under any law of the agency or any private third party. (72.1)1avvphi1
Philippines or of another country that regulates the manufacture,
construction, use or sale of any product: Provided, That, in order to The drugs and medicines are deemed introduced when they have been sold
protect the data submitted by the original patent holder from unfair or offered for sale anywhere else in the world. (n)
commercial use provided in Article 39.3 of the Agreement on Trade-
Related Aspects of Intellectual Property Rights (TRIPS Agreement), It may be that Rep. Act No. 9502 did not expressly repeal any provision of the
the Intellectual Property Office, in consultation with the appropriate SLCD. However, it is clear that the SLCO’s classification of "unregistered
government agencies, shall issue the appropriate rules and regulations imported drugs" as "counterfeit drugs," and of corresponding criminal
necessary therein not later than one hundred twenty (120) days after penalties therefore are irreconcilably in the imposition conflict with Rep. Act
the enactment of this law; No. 9502 since the latter indubitably grants private third persons the
unqualified right to import or otherwise use such drugs. Where a statute of
"72.5. Where the act consists of the preparation for individual cases, in later date, such as Rep. Act No. 9502, clearly reveals an intention on the part
a pharmacy or by a medical professional, of a medicine in accordance of the legislature to abrogate a prior act on the subject that intention must be
with a medical shall apply after a drug or medicine has been introduced given effect.9 When a subsequent enactment covering a field of operation
in the Philippines or anywhere else in the world by the patent owner, or coterminus with a prior statute cannot by any reasonable construction be
by any party authorized to use the invention: Provided, further, That the given effect while the prior law remains in operative existence because of
right to import the drugs and medicines contemplated in this section irreconcilable conflict between the two acts, the latest legislative expression
shall be available to any government agency or any private third party; prevails and the prior law yields to the extent of the conflict.10 Irreconcilable
xxx7 inconsistency between two laws embracing the same subject may exist when
the later law nullifies the reason or purpose of the earlier act, so that the latter
The unqualified right of private third parties such as petitioner to import or loses all meaning and function.11 Legis posteriors priores contrarias abrogant.
possess "unregistered imported drugs" in the Philippines is further confirmed
by the "Implementing Rules to Republic Act No. 9502" promulgated on 4 For the reasons above-stated, the prosecution of petitioner is no longer
November 2008.8 The relevant provisions thereof read: warranted and the quested writ of prohibition should accordingly be issued.

Rule 9. Limitations on Patent Rights. The owner of a patent has no right to III.

prevent third parties from performing, without his authorization, the acts
referred to in Section 71 of the IP Code as enumerated hereunder: Had the Court proceeded to directly confront the constitutionality of the
assailed provisions of the SLCD, it is apparent that it would have at least
(i) Introduction in the Philippines or Anywhere Else in the World. placed in doubt the validity of the provisions. As written, the law makes a
criminal of any person who imports an unregistered drug regardless of the
Using a patented product which has been put on the market in the Philippines purpose, even if the medicine can spell life or death for someone in the
by the owner of the product, or with his express consent, insofar as such use Philippines. It does not accommodate the situation where the drug is out of
is performed after that product has been so put on the said market: Provided, stock in the Philippines, beyond the reach of a patient who urgently depends
That, with regard to drugs and medicines, the limitation on patent rights shall on it. It does not allow husbands, wives, children, siblings, parents to import
the drug in behalf of their loved ones too physically ill to travel and avail of the Restraining Order dated 15 October 2001 is hereby made PERMANENT. No
meager personal use exemption allotted by the law. It discriminates, at the pronouncements as to costs.
expense of health, against poor Filipinos without means to travel abroad to
purchase less expensive medicines in favor of their wealthier brethren able to SO ORDERED.
do so. Less urgently perhaps, but still within the range of constitutionally
protected behavior, it deprives Filipinos to choose a less expensive regime for G.R. No. 115106 March 15, 1996
their health care by denying them a plausible and safe means of purchasing
medicines at a cheaper cost. ROBERTO L. DEL ROSARIO, petitioner, 
vs.
The absurd results from this far-reaching ban extends to implications that COURT OF APPEALS AND JANITO CORPORATION, respondents.
deny the basic decencies of humanity. The law would make criminals of
doctors from abroad on medical missions of such humanitarian organizations  This petition alleges that: (a) it was improper for the Court of Appeals to
such as the International Red Cross, the International Red Crescent, Medicin consider questions of fact in a certiorariproceeding; (b) the Court of Appeals
Sans Frontieres, and other erred in taking judicial notice of private respondent's self-serving presentation
of facts; (c) the Court of Appeals erred in disregarding the findings of fact of
like-minded groups who necessarily bring their own pharmaceutical drugs the trial court; and, (d) there was no basis for the Court of Appeals to grant a
when they embark on their missions of mercy. After all, they are disabled from writ of preliminary injunction in favor of private respondent.5
invoking the bare "personal use" exemption afforded by the SLCD.
Petitioner argues that in a certiorari proceeding questions of fact are not
Even worse is the fact that the law is not content with simply banning, at civil generally permitted the inquiry being limited essentially to whether the tribunal
costs, the importation of unregistered drugs. It equates the importers of such has acted without or in excess of jurisdiction or with grave abuse of discretion;
drugs, many of whom motivated to do so out of altruism or basic human love, that respondent court should not have disturbed but respected instead the
with the malevolents who would alter or counterfeit pharmaceutical drugs for factual findings of the trial court; that the movant has a clear legal right to be
reasons of profit at the expense of public safety. Note that the SLCD is a protected and that there is a violation of such right by private respondent.
special law, and the traditional treatment of penal provisions of special laws is Thus, petitioner herein claims, he has satisfied the legal requisites to justify
that of malum prohibitum–or punishable regardless of motive or criminal the order of the trial court directing the issuance of the writ of injunction. On
intent. For a law that is intended to help save lives, the SLCD has revealed the other hand, in the absence of a patent to justify the manufacture and sale
itself as a heartless, soulless legislative piece. by private respondent of sing-along systems, it is not entitled to the injunctive
relief granted by respondent appellate court.
The challenged provisions of the SLCD apparently proscribe a range of
constitutionally permissible behavior. It is laudable that with the passage of The crux of the controversy before us hinges on whether respondent Court of
Rep. Act No. 9502, the State has reversed course and allowed for a sensible Appeals erred in finding the trial court to have committed grave abuse of
and compassionate approach with respect to the importation of discretion in enjoining private respondent from manufacturing, selling and
pharmaceutical drugs urgently necessary for the people’s constitutionally- advertising the miyata karaoke brand sing-along system for being
recognized right to health. substantially similar if not identical to the audio equipment covered by letters
patent issued to petitioner.
WHEREFORE, the petition is GRANTED in part. A writ of prohibition is
hereby ISSUED commanding respondents from prosecuting petitioner Romeo Injunction is a preservative remedy for the protection of substantive rights or
Rodriguez for violation of Section 4 or Rep. Act No. 8203. The Temporary 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 requirements as relate to patents for inventions insofar as they
judicial power to issue the writ is that the court may thereby prevent a are applicable, except as otherwise herein provide . . . .
threatened or continuous irremediable injury to some of the parties before
their claims can be thoroughly investigated and advisedly adjudicated. It is to Admittedly, petitioner is a holder of Letters Patent No. UM-5629 dated 2 June
be resorted to only when there is a pressing necessity to avoid injurious 1985 issued for a term of five (5) years from the grant of a Utility Model herein
consequences which cannot be remedied under any standard of described —
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 The construction of an audio equipment comprising a
regularly heard, and the essential conditions for granting such temporary substantially cubical casing having a window at its rear and
injunctive relief are that the complaint alleges facts which appear to be upper corner fitted with a slightly inclined control panel, said
sufficient to constitute a cause of action for injunction and that on the entire cubical (casing) having a vertical partition wall therein defining a
showing from both sides, it appears, in view of all the circumstances, that the rear compartment and a front compartment, and said front
injunction is reasonably necessary to protect the legal rights of plaintiff compartment serving as a speaker baffle; a transistorized
pending the litigation.6 amplifier circuit having an echo section and writhed in at least
the printed circuit boards placed inside said rear compartment of
A preliminary injunction may be granted at any time after the commencement said casing and attached to said vertical partition wall, said
of the action and before judgment when it is established that the defendant is transistorized amplifier circuit capable of being operated from
doing, threatens, or is about to do, or is procuring or suffering to be done, outside, through various controls mounted on said control panel
some act probably in violation of the plaintiff's rights. Thus, there are only two of such casing; a loud speaker fitted inside said front
requisites to be satisfied if an injunction is to issue, namely, the existence of compartment of said casing and connected to the output of the
the right to be protected, and that the facts against which the injunction is to main audio amplifier section of said transistorized amplifier
be directed are violative of said right.7 circuit and a tape player mounted on the top wall of said casing
and said tape player being connected in conventional manner to
For the writ to issue the interest of petitioner in the controversy or the right he said transistorized amplifier circuit.8
seeks to be protected must be a present right, a legal right which must be
shown to be clear and positive. Again, on 14 November 1986 petitioner was granted Letters Patent No. UM-
6237 for a term of five (5) years from the grant of a Utility Model described as
In this regard Sec. 55 of R.A. 165 as amended, known as The Patent Law, —
provides —
In an audio equipment consisting of a first cubical casing having
Sec. 55. Design patents and patents for utility models. — (a) an opening at its rear and upper rear portion and a partition
Any new, original, and ornamental design for an article of therein forming a rear compartment and a front compartment
manufacture and (b) new model or implements or tools or of any serving as a loud speaker baffle, a control panel formed by
industrial product or of part of the same, which does not vertical and horizontal sections, a transistorized amplifier circuit
possess the quality of invention but which is of practical utility by wired in at least two printed circuit boards attached at the back
reason of its form, configuration, construction or composition, of said control panel, a first loud speaker fitted inside said first
may be protected by the author thereof, the former by a patent compartment of such first casing and connected to the output of
for a design and the latter by a patent for a utility model, in the said transistorized amplifier circuit; the improvement wherein
same manner and subject to the same provisions and said control panel being removably fitted to said first cubical
 casing and further comprises a set of tape recorder and tape other utility model so known, used or described within the country.
player mounted on the vertical section of said control panel and Respondent corporation failed to present before the trial court competent
said recorder and player are likewise connected to said evidence that the utility models covered by the Letters Patents issued to
transistorized amplifier circuit; a second cubical casing having petitioner were not new. This is evident from the testimony of Janito Cua,
an opening at its rear, said second cubical casing having President of respondent Janito Corporation, during the hearing on the
(being?) provided with a vertical partition therein defining a rear issuance of the injunction, to wit —
compartment and a front compartment, said rear compartment
being provided with a door and enclosing therein a set of tape Q. Mr. Cua, you testified that there are (sic) so
racks and said front compartment serving as loud speaker many other companies which already have (sic)
baffle, said second cubical casing being adapted to said first the sing-along system even before the patent
cubical casing so that said first and second casings are secured application of Mr. del Rosario and as a matter of
together in compact and portable form; and a second loud fact you mentioned Sanyo, Sony and Sharp, is that
speaker fitted inside said front compartment of said casing and right?
connected to the output of said amplifier circuit.9
A. Musicmate and Asahi.
The terms of both Letters Patents were extended for another five (5) years
each, the first beginning 2 June 1988 and the second, 14 November 1991. Q. Now do you recall that your lawyer filed with
this Honorable Court an Urgent Motion to Lift
The Patent Law expressly acknowledges that any new model of implements Temporary Restraining Order of this Honorable
or tools of any industrial product even if not possessed of the quality of Court. I am sure you were the one who provided
invention but which is of practical utility is entitled to a patent for utility him with the information about the many other
model. 10Here, there is no dispute that the letters patent issued to petitioner companies selling the sing-along system, is that
are for utility models of audio equipment. right? These 18 which you enumerated here.

In issuing, reissuing or withholding patents and extensions thereof, the A. More than that because. . . .
Director of Patents determines whether the patent is new and whether the
machine or device is the proper subject of patent. In passing on an Q. Now you will agree with me that in your
application, the Director decides not only questions of law but also questions statement Sharp you put the date as 1985
of fact, i.e. whether there has been a prior public use or sale of the article agreed?
sought to be patented. 11 Where petitioner introduces the patent in evidence, if
it is in due form, it affords a prima facie presumption of its correctness and A. No.
validity. The decision of the Director of Patents in granting the patent is
always presumed to be correct, and the burden then shifts to respondent to Q. You mean your lawyer was wrong when he put
overcome this presumption by competent evidence. 12 the word Sharp 1985?

Under Sec. 55 of The Patent Law a utility model shall not be considered A. Maybe I informed him already.
"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 x x x           x x x          x x x
publications circulated within the country, or if it is substantially similar to any
Q. You mean your lawyer was wrong in alleging to A. More or less. We said more or less.
this Court that Sharp manufactured and sold (in)
1985 as found in the Urgent Motion? Q. Nakabutshi by Asahi Electronics that is also
wrong?
A. Since it is urgent it is more or less.
A. No that is 1979.
Q. The same also with Sanyo 1985 which you put,
more or less? Q. Electone by DICO 1989 is this correct or
wrong?
A. Sanyo is wrong.
A. Correct. More or less.
Q. It is not 1985?
Q. Skylers 1985 is that correct or wrong?
A. Sanyo is 1979 I think.
A. It is more or less because it is urgent. We don't
Q. So this is also wrong. Panasonic 1986 is also have time to exact the date.
wrong?
Q. Musicmate of G.A. Yupangco 1981 this is more
A. Panasonic I think. or less? You are not also sure?

Q. So you don't think this is also correct. A. 95% sure.

A. The date? Q. Now you are sure 1981.

Q. So you don't think also that this allegation here A. This one because. . . .
that they manufactured in 1986 is correct?
Q. Mr. Witness so you are now trying to tell this
A. Wrong. Earlier. Honorable Court that all your allegations here of
the dates in this Urgent Motion except for
Q. National by Precision Electronic 1986 this is Musicmate which you are only 95% sure they are
also wrong? all wrong or they are also more or less or not sure,
is that right?
A. I think earlier.
A. More or less.
Q. So that means all your allegations here from 2
to 5 are wrong? OK. By Philipps Philippines 1986, Q. Now do you have any proof, any advertisement,
this is also correct or wrong? anything in writing that would show that all these
instruments are in the market, do you have it.
 A. No I don't have it because. . . . Respondent Janito Corporation denied that there was any violation of
petitioner's patent rights, and cited the differences between its miyata
Q. No I am satisfied with your answer. Now Mr. equipment and petitioner's audio equipment. But, it must be emphasized,
Witness, you don't also have a proof that Akai respondent only confined its comparison to the first model, Utility Model No.
instrument that you said was also in the market 5269, and completely disregarded Utility Model No. 6237 which improved on
before 1982? You don't have any written proof, the first. As described by respondent corporation, 15 these differences are —
any advertisement?
First. Under Utility Model 5269, the unit is a substantially cubical
A. I have the product. casing with a window at its rear and upper corner fitted with
slightly inclined control panel, while the miyata equipment is a
Q. But you have not brought the product in (sic) substantially rectangular casing with panel vertically positioned.
this Honorable Court, right?
Second. Under Utility Model 5269, the cubical casing has a
A. No. 13 vertical partition wall defining a rear compartment and a front
compartment serving as a speaker baffle, while
As may be gleaned herein, the rights of petitioner as a patentee have been the miyata equipment has no rear compartment and front
sufficiently established, contrary to the findings and conclusions of respondent compartment in its rectangular casing; it has only a front
Court of Appeals. Consequently, under Sec. 37 of The Patent law, petitioner compartment horizontally divided into 3 compartments like a 3-
as a patentee shall have the exclusive right to make, use and sell the storey building, the 1st compartment being a kit, the 2nd also
patented machine, article or product for the purpose of industry or commerce, the speaker, and the 3rd are kits.
throughout the territory of the Philippines for the term of the patent, and such
making, using or selling by any person without authorization of the patentee Third. Under Utility Model No. 5269, a transistorized amplifier
constitutes infringement of his patent. circuit with an echo section wired in at least 2 printed circuit
boards is placed inside the rear compartment of the casing and
Petitioner established before the trial court that respondent Janito Corporation attached to the vertical partition wall, the printed circuit board
was manufacturing a similar sing-along system bearing the having 1 amplifier and 1 echo, while in the miyataequipment the
trademark miyata which infringed his patented models. He also alleged that amplifier is mainly IC (Integrated Circuit) — powered with 8
both his own patented audio equipment and respondent's sing-along system printed circuit boards almost all of which are IC controlled, with 1
were constructed in a casing with a control panel, the casing having a vertical amplifier with power supply, 1 main tuner, 1 equalizer (3-band),
partition wall defining the rear compartment from the front compartment, with 1 IC controlled volume control, 1 echo IC, 1 tape pream, 1
the front compartment consisting of a loud speaker baffle, both containing a instrument and 1 wireless microphone.
transistorized amplifier circuit capable of being operated from outside through
various controls mounted on the control panel, and that both had loud Fourth. Under Utility Model 5269, 4 printed circuits are placed
speakers fitted inside the front compartment of the casing and connected to inside the compartment of its casing attached to the vertical
the output of the main audio amplifier section both having a tape recorder and partition wall, while in the miyata, the 7 printed circuit boards
a tape player mounted on the control panel with the tape recorder and tape (PCB) are attached to the front panel and 1 attached to the
player being both connected to the transistorized amplifier circuit. 14 horizontal divider.
 Fifth. Under Utility Model 5269, there are various controls and other instruments; (h) both are
mounted on the control panel of the casing, while in miyata, the encased in a box-like cabinets; and, (i) both can be used with one or more
various controls are all separated from the printed circuit boards microphones. 17
and the various controls are all attached thereto.
Clearly, therefore, both petitioner's and respondent's models involve
Sixth. Under Utility Model 5269, a loud speaker fitted inside the substantially the same modes of operation and produce substantially the
front compartment of the casing is connected to the output of same if not identical results when used.
the main audio amplifier section of the transistorized amplifier
circuit, while in miyata, there is no other way but to use 2 loud In view thereof, we find that petitioner had established before the trial
speakers connected to the amplifier. court prima facie proof of violation of his rights as patentee to justify the
issuance of a writ of preliminary injunction in his favor during the pendency of
Seventh. Under Utility Model 5269, a tape player is mounted on the main suit for damages resulting from the alleged infringement.
the top wall of the casing, while in miyata, 2 tape players are
used mounted side by side at the front. WHEREFORE, the Decision of the Court of Appeals dated 15 November
1993 is REVERSED and SET ASIDE and the Order of the trial court dated 24
It is elementary that a patent may be infringed where the essential or February 1993 granting petitioner the writ of injunction is REINSTATED.
substantial features of the patented invention are taken or appropriated, or
the device, machine or other subject matter alleged to infringe is substantially The trial court is directed to continue with the proceedings on the main action
identical with the patented invention. In order to infringe a patent, a machine pending before it in order to resolve with dispatch the issues therein
or device must perform the same function, or accomplish the same result by presented.
identical or substantially identical means and the principle or mode of
operation must be substantially the same. 16

It may be noted that respondent corporation failed to present before the trial
court a clear, competent and reliable comparison between its own model and
that of petitioner, and disregarded completely petitioner's utility Model No.
6237 which improved on his first patented model. Notwithstanding the
differences cited by respondent corporation, it did not refute and disprove the
allegations of petitioner before the trial court that: (a) both are used by a
singer to sing and amplify his voice; (b) both are used to sing with a minus-
one or multiplex tapes, or that both are used to play minus-one or standard
cassette tapes for singing or for listening to; (c) both are used to sing with a
minus-one tape and multiplex tape and to record the singing and the
accompaniment; (d) both are used to sing with live accompaniment and to
record the same; (e) both are used to enhance the voice of the singer using
echo effect, treble, bass and other controls; (g) both are equipped with
cassette tape decks which are installed with one being used for playback and
the other, for recording the singer and the accompaniment, and both may also G.R. No. 97343 September 13, 1993
be used to record a speaker's voice or instrumental playing, like the guitar
PASCUAL GODINES, petitioner,  or hand tractor and allow defendant to manufacture them merely
vs. based on their verbal instructions. This is contrary to the usual
THE HONORABLE COURT OF APPEALS, SPECIAL FOURTH DIVISION business and manufacturing practice. This is not only time
and SV-AGRO ENTERPRISES, INC., respondents. consuming, but costly because it involves a trial and error
method, repeat jobs and material wastage. Defendant judicially
Thereafter, this petition was filed. Petitioner maintains the defenses which he admitted two (2) units of the turtle power tiller sold by him to
raised before the trial and appellate courts, to wit: that he was not engaged in Policarpio Berondo.5
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 Of general acceptance is the rule imbedded in our jurisprudence that ". . . the
could not be liable for infringement of patent and unfair competition; and that jurisdiction of the Supreme Court in cases brought to it from the Court of
those made by him were different from those being manufactured and sold by Appeals in a petition for certiorari under Rule 45 of the Rules of Court is
private respondent. limited to the review of errors of law, and that said appellate court's findings of
fact are conclusive upon this Court."6
We find no merit in his arguments. The question of whether petitioner was
manufacturing and selling power tillers is a question of fact better addressed The fact that petitioner herein manufactured and sold power tillers without
to the lower courts. In dismissing the first argument of petitioner herein, the patentee's authority has been established by the courts despite petitioner's
Court of Appeals quoted the findings of the court, to wit: claims to the contrary.

It is the contention of defendant that he did not manufacture or The question now arises: Did petitioner's product infringe upon the patent of
make imitations or copies of plaintiff's turtle power tiller as what private respondent?
he merely did was to fabricate his floating power tiller upon
specifications and designs of those who ordered them. Tests have been established to determine infringement. These are (a) literal
However, this contention appears untenable in the light of the infringement; and (b) the doctrine of equivalents.7 In using literal infringement
following circumstances: 1) he admits in his Answer that he has as a test, ". . . resort must be had, in the first instance, to the words of the
been manufacturing power tillers or hand tractors, selling and claim. If accused matter clearly falls within the claim, infringement is made out
distributing them long before plaintiff started selling its turtle and that is the end of it."8 To determine whether the particular item falls within
power tiller in Zamboanga del Sur and Misamis Occidental, the literal meaning of the patent claims, the court must juxtapose the claims of
meaning that defendant is principally a manufacturer of power the patent and the accused product within the overall context of the claims
tillers, not upon specification and design of buyers, but upon his and specifications, to determine whether there is exact identity of all material
own specification and design; 2) it would be unbelievable that elements.9
defendant would fabricate power tillers similar to the turtle power
tillers of plaintiff upon specifications of buyers without requiring a The trial court made the following observation:
job order where the specification and designs of those ordered
are specified. No document was (sic) ever been presented Samples of the defendant's floating power tiller have been
showing such job orders, and it is rather unusual for defendant produced and inspected by the court and compared with that of
to manufacture something without the specification and designs, the turtle power tiller of the plaintiff (see Exhibits H to H-28). In
considering that he is an engineer by profession and proprietor appearance and form, both the floating power tillers of the
of the Ozamis Engineering shop. On the other hand, it is also defendant and the turtle power tiller of the plaintiff are virtually
highly unusual for buyers to order the fabrication of a power tiller the same. Defendant admitted to the Court that two (2) of the
 power inspected on March 12, 1984, were manufactured and adopted the doctrine of equivalents which recognizes that minor modifications
sold by him (see TSN, March 12, 1984, p. 7). The three power in a patented invention are sufficient to put the item beyond the scope of
tillers were placed alongside with each other. At the center was literal infringement. 12 Thus, according to this doctrine, "(a)n infringement also
the turtle power tiller of plaintiff, and on both sides thereof were occurs when a device appropriates a prior invention by incorporating its
the floating power tillers of defendant (Exhibits H to H-2). innovative concept and, albeit with some modification and change, performs
Witness Rodrigo took photographs of the same power tillers substantially the same function in substantially the same way to achieve
(front, side, top and back views for purposes of comparison (see substantially the same result." 13 The reason for the doctrine of equivalents is
Exhibits H-4 to H-28). Viewed from any perspective or angle, the that to permit the imitation of a patented invention which does not copy any
power tiller of the defendant is identical and similar to that of the literal detail would be to convert the protection of the patent grant into a
turtle power tiller of plaintiff in form, configuration, design and hollow and useless thing. Such imitation would leave room for — indeed
appearance. The parts or components thereof are virtually the encourage — the unscrupulous copyist to make unimportant and insubstantial
same. Both have the circularly-shaped vacuumatic housing changes and substitutions in the patent which, though adding nothing, would
float, a paddy in front, a protective water covering, a be enough to take the copied matter outside the claim, and hence outside the
transmission box housing the transmission gears, a handle reach of the law. 14
which is V-shaped and inclined upwardly, attached to the side of
the vacuumatic housing float and supported by the upstanding In this case, the trial court observed:
G.I. pipes and an engine base at the top midportion of the
vacuumatic housing float to which the engine drive may be Defendant's witness Eduardo Cañete, employed for 11 years as
attached. In operation, the floating power tiller of the defendant welder of the Ozamis Engineering, and therefore actually
operates also in similar manner as the turtle power tiller of involved in the making of the floating power tillers of defendant
plaintiff. This was admitted by the defendant himself in court that tried to explain the difference between the floating power tillers
they are operating on the same principles. (TSN, August 19, made by the defendant. But a careful examination between the
1987, p. 13) 10 two power tillers will show that they will operate on the same
fundamental principles. And, according to establish
Moreover, it is also observed that petitioner also called his power tiller as a jurisprudence, in infringement of patent, similarities or
floating power tiller. The patent issued by the Patent Office referred to a "farm differences are to be determined, not by the names of things,
implement but more particularly to a turtle hand tractor having a vacuumatic but in the light of what elements do, and substantial, rather than
housing float on which the engine drive is held in place, the operating handle, technical, identity in the test. More specifically, it is necessary
the harrow housing with its operating handle and the paddy wheel protective and sufficient to constitute equivalency that the same function
covering." 11 It appears from the foregoing observation of the trial court that can be performed in substantially the same way or manner, or
these claims of the patent and the features of the patented utility model were by the same or substantially the same, principle or mode of
copied by petitioner. We are compelled to arrive at no other conclusion but operation; but where these tests are satisfied, mere differences
that there was infringement. of form or name are immaterial. . . . 15

Petitioner's argument that his power tillers were different from private It also stated:
respondent's is that of a drowning man clutching at straws.
To establish an infringement, it is not essential to show that the
Recognizing that the logical fallback position of one in the place of defendant defendant adopted the device or process in every particular;
is to aver that his product is different from the patented one, courts have Proof of an adoption of the substance of the thing will be
 sufficient. "In one sense," said Justice Brown, "it may be said thereon, or in any other feature of their appearance, which
that no device can be adjudged an infringement that does not would be likely to influence purchasers that the goods offered
substantially correspond with the patent. But another are those of a manufacturer or dealer other than the actual
construction, which would limit these words to exact mechanism manufacturer or dealer, or who otherwise clothes the goods with
described in the patent, would be so obviously unjust that no such appearance as shall deceive the public and defraud
court could be expected to adopt it. . . . another of his legitimate trade. . . .

The law will protect a patentee against imitation of his patent by x x x           x x x          x x x

other forms and proportions. If two devices do the same work in
substantially the same way, and accomplish substantially the Considering the foregoing, we find no reversible error in the decision of the
same result, they are the same, even though they differ in Court of Appeals affirming with modification the decision of the trial court.
name, form, or shape. 16
WHEREFORE, premises considered, the decision of the Court of
We pronounce petitioner liable for infringement in accordance with Section 37 Appeals is hereby AFFIRMED and this petition DENIED for lack of merit.
of Republic Act No. 165, as amended, providing, inter alia:

Sec. 37. Right of Patentees. — A patentee shall have the

exclusive right to make, use and sell the patented machine,
article or product, and to use the patented process for the
purpose of industry or commerce, throughout the territory of the
Philippines for the terms of the patent; and such making, using,
or selling by any person without the authorization of the
Patentee constitutes infringement of the patent. (Emphasis ours)

As far as the issue regarding unfair competition is concerned, suffice it to say

that Republic Act No. 166, as amended, provides, inter alia:

Sec. 29. Unfair competition, rights and remedies. — . . .

xxx xxx xxx

In particular, and without in any way limiting the scope of unfair

competition, the following shall be deemed guilty of unfair
competition:

(a) Any person, who in selling his goods shall give them the
general appearance of goods of another manufacturer or dealer,
either as to the goods themselves or in the wrapping of the
packages in which they are contained, or the devices or words
 The burden of proof to substantiate a charge of infringement is with the
plaintiff. But where the plaintiff introduces the patent in evidence, and the
same is in due form, there is created a prima facie presumption of its
correctness and validity. The decision of the Commissioner (now Director) of
Patent in granting the patent is presumed to be correct. The burden of going
G.R. L-45101 November 28, 1986 forward with the evidence (burden of evidence) then shifts to the defendant to
overcome by competent evidence this legal presumption.
ROSARIO C. MAGUAN (formerly ROSARIO C. TAN), petitioner, 
vs. The question then in the instant case is whether or not the evidence
THE HONORABLE COURT OF APPEALS and SUSANA introduced by private respondent herein is sufficient to overcome said
LUCHAN, respondents. presumption.

The first issue has been laid to rest in a number of cases where the Court After a careful review of the evidence consisting of 64 exhibits and oral
ruled that "When a patent is sought to be enforced, the questions of invention, testimonies of five witnesses presented by private respondents before the
novelty or prior use, and each of them, are open to judicial examination." Court of First Instance before the Order of preliminary injunction was issued
(Vargas v. F.M. Yaptico & Co. 40 Phil. 199 [1919]; Vargas v. Chua, 57 Phil. as well as those presented by the petitioner, respondent Court of Appeals
790-791 [1933]; Frank and Gohn v. Kosuyana 59 Phil. 207 [1933]). 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
Under the present Patent Law, there is even less reason to doubt that the trial appellate court said evidence appeared not to have been considered at all by
court has jurisdiction to declare the patents in question invalid. A patentee the court a quo for alleged lack of jurisdiction, on the mistaken notion that
shall have the exclusive right to make, use and sell the patented article or such question in within the exclusive jurisdiction of the patent office.
product and the making, using, or selling by any person without the
authorization of the patentee constitutes infringement of the patent (Sec. 37, It has been repeatedly held that an invention must possess the essential
R.A. 165). Any patentee whose rights have been infringed upon may bring an elements of novelty , originality and precedence and for the patentee to be
action before the proper CFI now (RTC) and to secure an injunction for the entitled to protection, the invention must be new to the world. Accordingly, a
protection of his rights (Sec. 42, R.A. 165). Defenses in an action for single instance of public use of the invention by a patentee for more than two
infringement are provided for in Section 45 of the same law which in fact were years (now for more than one year only under Sec. 9 of the Patent Law)
availed of by private respondent in this case. Then, as correctly stated by before the date of his application for his patent, will be fatal to, the validity of
respondent Court of Appeals, this conclusion is reinforced by Sec. 46 of the the patent when issued. (Frank, et al. v. Kosuyama Vargas v. F.M. Yaptico &
same law which provides that if the Court shall find the patent or any claim Co. and Vargas v. Chua, et al., supra).
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 The law provides:
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). SEC. 9. Invention not considered new or patentable. — An
invention shall not be considered new or capable of being
II. 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 All these notwithstanding, the trial court nonetheless issued the writ of
patent therefor; or if it had been in public use or on sale in the preliminary injunction which under the circumstances should be denied.
Philippines for more than one year before the application for a
patent therefor; or if it is the subject matter of a validity issued For failure to determine first the validity of the patents before aforesaid
patent in the Philippines granted on an application filed before issuance of the writ, the trial court failed to satisfy the two requisites
the filing of the application for patent therefor. 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,
Thus, more specifically, under American Law from which our Patent Law was 128 SCRA 276).
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 Under the above established principles, it appears obvious that the trial court
validity of the patent is clear and beyond question. The issuance of letters committed a grave abuse of discretion which makes certiorari the appropriate
patent, standing alone, is not sufficient to support such drastic relief (8 remedy.
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 As found by respondent Court of Appeals, the injunctive order of the trial court
beyond question and the record conclusively proves the defense is sham. is of so general a tenor that petitioner may be totally barred from the sale of
(Ibid., p. 402) 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
In the same manner, under our jurisprudence, as a general rule because of parallel was drawn from a decision of the Supreme Court in the case
the injurious consequences a writ of injunction may bring, the right to the relief of Sanchez v. Hon. Court of Appeals, 69 SCRA 328 [1976] where the First
demanded must be clear and unmistakable. (Sangki v. Comelec, 21 SCRA Division of the Supreme Court ruled that "The prerogative writ of certiorari
1392; December 26, 1967) and the dissolution of the writ is proper where may be applied for by proper petition notwithstanding the existence of the
applicant has doubtful title to the disputed property. (Ramos v. C.A., 95 SCRA regular remedy of an appeal in due cause when among other reasons, the
359). broader interests of justice so require or an ordinary appeal is not an
adequate remedy."
III.
Private respondent maintains the position that the resolutions sought to be
It will be noted that the validity of petitioner's patents is in question for want of appealed from had long become final and executory for failure of Hon.
novelty. Private respondent contends that powder puffs Identical in Reynaldo P. Honrado, the trial court judge, to appeal by certiorari from the
appearance with that covered by petitioner's patents existed and were resolutions of respondent Court of Appeals. (Rollo, pp. 291-292).
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 Such contention is untenable.
observed by respondent Court of Appeals, "since sufficient proofs have been
introduced in evidence showing a fair question of the invalidity of the patents There is no dispute that petitioner has seasonably petitioned. On the other
issued for such models, it is but right that the evidence be looked into, hand, it is elementary that the trial judge is a mere nominal party as clearly
evaluated and determined on the merits so that the matter of whether the provided in Section 5, Rule 65 of the Revised Rules of Court where it shall be
patents issued were in fact valid or not may be resolved." (Rollo, pp. 286- the duty of such person or persons interested in sustaining the proceedings in
287). 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 G.R. No. L-38010         December 21, 1933
under aforesaid law.
PATRICK HENRY FRANK and WILLIAM HENRY GOHN, plaintiffs-
PREMISES CONSIDERED, the assailed resolutions of the Court of Appeals appellants, 
are hereby AFFIRMED. vs.
G. KOSUYAMA, defendant-appellee.
SO ORDERED.
J.W. Ferrier for appellants.
Pablo Lorenzo for appellee.

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 Wherefore, reiterating that the defendant cannot be held civilly liable for
annulment of the plaintiffs' patent and the herein defendant-appellee insists alleged infringement of the patent upon which the present action is based on
that the patent in question should be declared null and void. We are of the the ground that there is no essential part of the machine manufactured and
opinion that it would be improper and untimely to render a similar judgment, in sold by him, which was unknown to the public in the Province of Davao at the
view of the nature of the action brought by the plaintiffs and in the absence of time the plaintiffs applied for and obtained their patent for improved hemp
a cross-complaint to that effect. For the purposes of this appeal, suffice it to stripping machines, the judgment appealed from is hereby affirmed, with the
hold that the defendant is not civilly liable for alleged infringement of the costs against the plaintiffs-appellants. So ordered.
patent in question.
Avanceña, C.J., Malcolm, Villa-Real, and Hull, JJ., concur.
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 G.R. No. L-22221             August 31, 1965
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. PARKE, DAVIS and COMPANY, petitioner, 
vs.
In support of their claim the plaintiffs invoke the doctrine laid down by this DOCTORS' PHARMACEUTICALS, INC., ET AL., respondents.
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 Ross, Selph and Carrascoso for petitioner.
plaintiffs. It may be noted that the plaintiffs in the former and those of the latter Manuel Serapio, Jr., for respondent Doctors' Pharmaceuticals, Inc.
case are the same and that the patent then involved is the very same one Solicitor General for respondent Director of Patents.
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 In due time, Parke Davis & Company interposed the present petition for
the plaintiffs-appellants on the ground that the facts in one case entirely review.
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 In this appeal, Parke, Davis & Company imputes to the Director of Patents
answer and the plaintiffs therein confined themselves to presenting the eleven errors which may be briefly stated as follows:
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 1. Respondent has not proven the ground relied upon by it in its
characteristics thereof which was imitated or copied by the then defendant. petition;
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' 2. Respondent Doctors' Pharmaceuticals, Inc. has no intention to work
machine allegedly imitated by the then defendant. In the case under the patent but merely to import the patented article chloramphenicol;
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 3. Petitioner's invention is being worked in the Philippines;
their patent inasmuch as it was expressly excluded in their application, as
evidenced by the aforesaid Exhibit 41.
 4. Respondent is not competent to work petitioner's patented invention, SEC. 34. Grounds for compulsory license. — Any person may apply to
that is, to manufacture chloramphenicol and sell the same in the the Director for the grant of a license under a particular patent at any
Philippines; time after the expiration of three years from the date of the grant of the
patent, under any of the following circumstances:
5. The grant of the license is against public interest;
(a) If the patented invention is not being worked within the Philippines
6. The license requested by respondent will not serve any legitimate on a commercial scale, although capable of being so worked, without
purpose; satisfactory reason;

7. Respondent is not competent to use the license requested; (b) If the demand for the patented article in the Philippines is not being
met to an adequate extent and on reasonable terms, without
8. The theory that a compulsory license under a patented invention, satisfactory reason;
after the expiration of three years after the grant of the letters patent,
may be granted to one who petitions for a license, is erroneous; (c) If by reason of the refusal of the patentee to grant a license or
licenses on reasonable terms, or by reason of the conditions attached
9. Respondent Director of Patents cannot issue an in personam order by the patentee to licenses or to the purchase, lease or use of the
against petitioner to grant the licence; patented article or working of the patented process or machine of
production the establishment of any new trade or industry in the
10. Respondent Director of Patents erred in not considering the Philippines is prevented, or the trade or industry therein is unduly
defenses interposed by petitioner to the application for license; and restrained; or

11. Respondent Director of Patents erred in rendering his decision (d) If the patented invention relates to food or medicine or is necessary
ordering petitioner to grant a compulsory license to co-respondent for public health or public safety.
Doctors' Pharmaceuticals, Inc.
The term "worked" or "working" as used in this section means the
As may be gleaned from the errors above pointed out, the principal issue manufacture and sale of a patented article, or the carrying on of a patented
raised by petitioner boils down to whether or not the Director of Patents process or the use of a patented machine for production, in or by means of a
gravely abused his discretion in ordering the grant of compulsory license to definite and substantial establishment or organization in the Philippines and
respondent under Section 34(d) of Republic Act No. 165 for the manufacture on a scale which is adequate and reasonable under the circumstances.
of preparations containing chloramphenicol under Letters Patent No. 50
issued to petitioner despite the written objection interposed against it by the SEC. 35. Notice and hearing. — Upon the filing of a petition under
latter based on the ground therein enumerated. section thirty-four hereof, notice shall be given in the same manner and
form as that provided in section thirty-one, Chapter VII hereof.
The pertinent statutory provisions that govern the issues raised herein are
found in Chapter VIII of Republic Act No. 165, as amended, which for ready SEC. 36. Grant of license. — If The Director finds that a case for the
reference are hereunder quoted: grant of a license under section thirty-four hereof has been made out,
he may order the grant of an appropriate license and in default of an
CHAPTER VIII. — Compulsory Licensing agreement among the parties as to the terms and conditions of the
license he shall fix the terms and conditions of the license in the order.
 The order of the Director granting a license under this Chapter, when But, even if we assume that the patented invention is not only related to
final, shall operate as a deed granting a license executed by the medicine but to one that is also indispensable or necessary to public health
patentee and the other parties in interest. and public safety, here we can say that both conditions are present, since
according to Dr. Leon V. Picache, who testified in this case, the
A cursory reading of the provisions above-quoted will reveal that any person substance chloramphenicol is one that constitutes an effective cure for gastro-
may apply for the grant of a license under any of the circumstances stated in enteritis diseases, while the inventor's own specifications attest
Section 34 (a), (b), (c) or (d), which are in the disjunctive, showing that any of that chloramphenicol is a "therapeutic agent notably in the case of shigella
the circumstances thus enumerated would be sufficient to support the grant, pradysenteria. Chloramphenicol is much more active than streptomycin" and
as evidenced by the use of the particle "or" between paragraphs (c) and (d). "is the first antibiotic exhibiting a high degree of activity against gram negative
As may be noted, each of these circumstances stands alone and is bacteria which is therapeutically effective upon oral administration" (Exhibit 6).
independent of the others. And from them we can see that in order that any Again, Dr. Querbral-Greaga in the June, 1961 issue of the Scientific Digest, a
person may be granted a license under a particular patented invention publication of the Manila Medical Society, affirmed that antibiotics
relating to medicine under Section 34(d), it is sufficient that the application be like chloramphenicol have played a very important role in the control of
made after the expiration of three years from the date of the grant of the diarrhea-enteritis which is the third most rampant killer of infants in this
patent and that the Director should find that a case for granting such license country.
has been made out. Since in the instant case it is admitted by petitioner that
the chemical substance chloramphenicol is a medicine, while Letters Patent The claim that a compulsory license cannot be granted to respondent
No. 50 covering said substance were granted to Parke Davis & Company on because the latter does not intend to work the patented invention itself but
February 9, 1950, and the instant application for license under said patent merely to import it has also no legal nor factual basis. In the first place,
was only filed in 1960, verily the period that had elapsed then is more than Section 34 of Republic Act No. 165 does not require the petitioner of a license
three years, and so the conditions for the grant of the license had been to work the patented invention if the invention refers to medicine, for the term
fulfilled. We find, therefore, no error in the decision of the Director of Patents "worked" or "working" used in said section does not apply to the circumstance
on this aspect of the controversy. mentioned in subsection (d), which relates to medicine or to one necessary
for public health and public safety. Indeed, the Director of Patents has already
The claim that respondent has not proven the ground it relies upon in its correctly stated in previous cases that, in its strict sense, the term "worked" or
petition to the effect that chloramphenicol is not only a medicine but is "working" mentioned in the last paragraph of Section 34 of the Patent Law
indispensable to public health and safety is not quite correct, for the main "has no applicability to those cited patented matters and the qualification of
reliance of respondent is on the fact that chloramphenicol is an invention that the petitioner to work the invention is immaterial, it being not a condition
is related to medicine and as such it comes under Section 34(d) of Republic precedent before any person may apply for the grant of the license." In the
Act 165. Respondent does not predicate its claim on the fact that invention is second place, it is not the intention of respondent to work or manufacture the
necessary for public health or public safety, although either ground is patented invention itself but merely to manufacture its brand of medicinal
recognized as valid in itself for the grant of a license under said Section 34(d). preparations containing such substance. And even if it be required that
Indeed, it is sufficient that the invention be related to medicine. It is not respondent should work itself the invention that it intends to use in the
required that it be at the same time necessary for public health or public manufacture of its own brand of medicinal preparations said respondent
safety. Moreover, the claim of petitioner that the word "necessary" means would not be found wanting for it is staffed with adequate and competent
"indispensable" does not hold water, for necessity admits of many degrees, personnel and technicians; it has several laboratories where medicines are
as it is clearly explained in Bouvier's Law Dictionary. 1 prepared for safety and quality; it is equipped with machines for subdividing
antibiotics; and it has capsule-filling machines and adequate personnel and
facilities to test the quality of chloramphenicol.
Finally, we may add that it is not a valid ground to refuse the license applied Finally, with regard to the contention that petitioner is entitled to the exclusive
for the fact that the patentee is working the invention and as such has the use of the invention for a term which under the law extends to 17 years,
exclusive right to the invention for a term of 17 years (Sections 20 & 21, suffice it for us to quote what the Director of Patents says on this point:
Republic Act 165) as claimed in the third assignment of error, the reason for it
being that the provision permitting the grant of compulsory license is intended The right to exclude others from the manufacturing, using, or vending
not only to give a chance to others to supply the public with the quantity of the an invention relating to food or medicine should be conditioned to
patented article but especially to prevent the building up of patent allowing any person to manufacture, use, or vend the same after a
monopolies. 2 period of three years from the date of the grant of the letters patent.
After all, the patentee is not entirely deprived of any proprietary right. In
The point is raised that the grant of the license is against public interest for it act, he has been given the period of three years of complete monopoly
would force Parke, Davis & Company to close or stop manufacturing the over the patent. Compulsory licensing of a patent on food or medicine
patented invention which would thereby adversely affect local employment without regard to the other conditions imposed in Section 34 is not an
and prejudice technology and chemical manufacturing and cut off the local undue deprivation of proprietary interests over a patent right because
supply of medicinal products. It should be noted, however, that respondent the law sees to it that even after three years of complete monopoly
does not intend to compete with petitioner in the manufacture something is awarded to the inventor in the form of a bilateral and
of chloramphenicolfor it would either obtain the same from petitioner or would workable licensing agreement and a reasonable royalty to be agreed
import whatever it may need in the manufacture of its own brand of medicinal upon by the parties and in default of such agreement, the Director of
preparations. But even assuming that the consequence the petitioner has Patents may fix the terms and conditions of the license. (See Sec. 36,
envisioned may come true if the license is granted, still that should not stand Rep. Act No. 165)
in the way of the grant for that is in line with an express provision of our law.
The grant of such license may work disadvantage on petitioner but the law WHEREFORE, the decision appealed from is affirmed, with costs against
must be observed until modified or repealed. On the other hand, there is the petitioner.
advantage that the importation of chloramphenicol might redound to the
benefit of the public in general as it will increase the supply of medicines in
our country containing chloramphenicol thereby reducing substantially the
price of this drug.

We find no merit in the contention that the Director of Patents erred in

ordering the grant of the patent to respondent for the simple reason that the
application does not automatically entitle the person applying to such a grant
as was done by said Director. Though in substance such is the effect of the G.R. No. 82542 September 29, 1988
grant, it cannot however be said that the Director of Patents automatically
ordered the grant of the license for it was only after hearing and a careful BARRY JOHN PRICE, JOHN WATSON CLITHERON and JOHN
consideration of the evidence that he ordered the grant. In fact, the decision BRADSHAW, Assignors to ALLEN & HANBURYS, LTD., petitioners, 
states that the Director has carefully weighed the evidence of the parties and vs.
the arguments in support of their contentions and that it was only after UNITED LABORATORIES, respondent.
analyzing the same that he became convinced of the right of respondent to
the compulsory license he prayed for.
The patentees appealed the decision to the Court of Appeals (CA-G.R. No. and under Section 35 of P.D. 1263, amending portions of Republic Act
SP-09308) which dismissed the appeal on December 4, 1 987. They have No.165 which reads:
come to his Court praying for a review of the Appellate Court's decision on the
grounds that it erred: Sec. 35. GRANT OF LICENSE.—(1)If the Director finds that a
case for the grant of a license under Sec. 34 hereof has been
1. in upholding the Director's unilateral determination of the made out, he shall within one hundred eighty (180) days from
terms and conditions of the compulsory license, without the date the petition was filed, order the grant of an appropriate
affording the parties an opportunity to negotiate the terms and license. The order shall state the terms and conditions of the
conditions freely and by themselves; license which he himself must fix in default of an agreement on
the matter manifested or submitted by the parties during the
2. in finding that the respondent possess the legally required hearing.
capability to make use of the petitioner's patented compound in
the manufacture of a useful product; The Court of Appeals found that the 2.5% royalty fixed by the Director of
Patents 'is just and reasonable.' We quote its observations hereunder:
3. in affirming the Director's award of the entire patent to the
respondent, when only one claim of the patent was controverted Respondent-appellant contends further that the 2.5% royalty
and rate is unfair to respondent-appellant as to amount to an undue
deprivation of its property right. We do not hold this view. The
4. in considering evidence that UNILABs capability to use the royalty rate of 2.5% provided for by the Director of Patents is
compound was acquired after, not before, filing its petition for reasonable. Paragraph 3, Section 35-B, Republic Act No. 165,
compulsory licensing. as amended by Presidential Decree No. 1263, provides:

The first assignment of error has no merit. The terms and conditions of the (3) A compulsory license shall only be granted
compulsory license were fixed by the Director of Patents after a hearing and subject to the payment of adequate royalties
careful consideration of the evidence of the parties and in default of an commensurate with the extent to which the
agreement between them as to the terms of the license. This he is authorized invention is worked. However, royalty payments
to do under Section 36 of Republic Act No. 165 which provides: shall not exceed five per cent (5%) of the net
wholesale price (as defined in Section 33-A) of the
Sec. 36. GRANT OF LICENSE.—If the Director finds that a case products manufactured under the license. If the
for the grant of license under Section 34, hereof made out, he product, substance, or process subject of the
may order the grant of an appropriate license and in default of compulsory license is involved in an industrial
agreement among the parties as to the terms and conditions of project approved by the Board of Investments, the
the license he shall fix the terms and conditions of the license in royalty payable to the patentee or patentees shall
the order. not exceed three per cent (3%) of the net
wholesale price (as defined in Section 34-A) of the
The order of the Director granting a license under this Chapter, patented commodity and/or commodity
when final, shall operate as a deed granting a- license executed manufactured under the patented process; the
by the patentee and the other patties in interest. same rule of royalty shall be paid whenever two or
more patents are involved, which royalty shall be
 distributed to the patentees in rates proportional to The Director's finding that UNILAB has the capability to use the patented
the extent of commercial use by the licensee compound in the manufacture of an anti-ulcer pharmaceutical preparation is a
giving preferential values to the holder of the factual finding which is supported by substantial evidence, hence, the Court of
oldest subsisting product patent. Appeals did not commit a reversible error in affirming it (Philippine Nut
Industry, Inc. vs. Standard Brands, Inc., 65 SCRA 575; Sy Ching vs. Gaw Liu
Thus, said provision grants to the Director of Patents the use of 44 SCRA 143; De Gala Sison vs. Manalo, 8 SCRA 595; Goduco vs. Court of
his sound discretion in fixing the percentage for the royalty rate Appeals, 14 SCRA 282; Ramos vs. Pepsi-Cola Bottling Company of the P.I.,
and We find that the Director of Patents committed no abuse of 19 SCRA 289. Of indubitable relevance to this point is the evidence that
this discretion. Also, there is always a presumption of regularity UNILAB has been engaged in the business of manufacturing drugs and
in the performance of one's official duties. pharmaceutical products for the past thirty (30) years, that it is the leading
drug manufacturer in the country, that it has the necessary equipment and
Moreover, what UNILAB has with the compulsory license is the technological expertise for the development of solid dosage forms or for
bare right to use the patented chemical compound in the tablet, capsule, and liquid preparations, and that it maintains standards and
manufacture of a special product, without any technical procedures to ensure the quality of its products. Even if it were true, as
assistance from herein respondent-appellant. Besides, the alleged by the patentee (although it is denied by UNILAB), that its capability to
special product to be manufactured by UNILAB will only be use the patented compound was only acquired after the petition for
used, distributed, and disposed locally. Therefore, the royalty compulsory licensing had been filed, the important thing is that such capability
rate of 2.5% is just and reasonable. (pp. 10-11, CA Decision, pp. was proven to exist during the hearing of the petition.
44-45, Rollo)
The patented invention in this case relates to medicine and is necessary for
Furthermore, as pointed out in the respondent's comment on the petition, public health as it can be used as component in the manufacture of anti-ulcer
Identical terms and conditions had been prescribed for the grant of medicine. The Director of Patents did not err in granting a compulsory license
compulsory license in a good number of patent cases (United Laboratories, over the entire patented invention for there is no law requiring that the license
Inc. vs. Boehringer Ingelhelm, GMBH, IPC 929, July 27, 1981; United be limited to a specific embodiment of the invention, or, to a particular claim.
Laboratories, Inc. vs. Bristol-Myers Company, IPC 1179, Aug. 20, 1981; The invention in this case relates to new aminoalkyl derivatives which have
United Laboratories, Inc. vs. E.R. Squibb & Sons, Inc., IPC 1349, Sept. 30, histamine H2 blocking activity, having the general formula (I) and
1981; United Laboratories, Inc. vs. Helmut Weber, et al., IPC 949, Dec. physiologically acceptable salts, Noxides and dehydrates thereof. The
13,1982; Oceanic Pharmacal Inc. vs. Gruppo Lepetit S.A. IPC 1549, Dec. 21, compound ranitidine hydrochloride named in Claim 45 is also covered by
1982; United Laboratories. Inc. vs. Boehringer Ingelheim, IPC 1185, June 8, General Claim I and several other sub-generic claims. Therefore, a license for
1983; United Laboratories, Inc. vs. Pfizer Corp., IPC 1184, June 10,, 1983; Claim 45 alone would not be fully comprehensive. In any event, since the
Doctors Pharmaceuticals, Inc. vs. Maggi, et al., July 11, 1983; Drugmaker's petitioner will be paid royalties on the sales of any products the licensee may
Laboratories v. Herningen et al., IPC 1679, September 22,1983; Superior manufacture using any or all of the patented compounds, the petitioner
Pharmacraft Inc. vs. Maggi, et al., IPC 1759, January 10, 1984; United cannot complain of a deprivation of property rights without just compensation.
Laboratories, Inc. vs. Van Gelder et al., IPC 1627, June 29, 1984;
Drugmaker's Laboratories, Inc. vs. Janssen Pharmaceutical N.V. IPC 1555, WHEREFORE, the petition for review is denied for lack of merit.
August 27,1984; United Laboratories Inc. vs. Graham John Durant et al., IPC
1731, August 14, 1987; United Laboratories, Inc. vs. Albert Anthony Carr, IPC
1906, August 31, 1987).
 Accordingly, if, in the first place, the item subject of the petition is not entitled
to be protected by the law on copyright, how can there be any violation?14

The petitioner’s motion for reconsideration of the said decision suffered the
same fate. The petitioner forthwith filed the present petition for review
on certiorari, contending that the revocation of his copyright certificates
should be raised in a direct action and not in a search warrant proceeding.

The petitioner posits that even assuming ex argumenti that the trial court may
resolve the validity of his copyright in a proceeding to quash a search warrant
for allegedly infringing items, the RTC committed a grave abuse of its
discretion when it declared that his works are not copyrightable in the first
place. He claims that R.A. No. 8293, otherwise known as the Intellectual
Property Code of the Philippines, which took effect on January 1, 1998,
provides in no uncertain terms that copyright protection automatically attaches
to a work by the sole fact of its creation, irrespective of its mode or form of
expression, as well as of its content, quality or purpose.15 The law gives a
non-inclusive definition of "work" as referring to original intellectual creations
in the literary and artistic domain protected from the moment of their creation;
and includes original ornamental designs or models for articles of
G.R. No. 161295               June 29, 2005 manufacture, whether or not registrable as an industrial design and other
works of applied art under Section 172.1(h) of R.A. No. 8293.lawphil.net
JESSIE G. CHING, petitioner, 
vs. As such, the petitioner insists, notwithstanding the classification of the works
WILLIAM M. SALINAS, SR., WILLIAM M. SALINAS, JR., JOSEPHINE L. as either literary and/or artistic, the said law, likewise, encompasses works
SALINAS, JENNIFER Y. SALINAS, ALONTO SOLAIMAN SALLE, JOHN which may have a bearing on the utility aspect to which the petitioner’s utility
ERIC I. SALINAS, NOEL M. YABUT (Board of Directors and Officers of designs were classified. Moreover, according to the petitioner, what the
WILAWARE PRODUCT CORPORATION), respondents. Copyright Law protects is the author’s intellectual creation, regardless of
whether it is one with utilitarian functions or incorporated in a useful article
In the instant case, the petitioner is praying for the reinstatement of the search produced on an industrial scale.
warrants issued, but subsequently quashed, for the offense of Violation of
Class Designation of Copyrightable Works under Section 177.1 in relation to The petitioner also maintains that the law does not provide that the intended
Section 177.3 of Republic Act 8293, when the objects subject of the same, use or use in industry of an article eligible for patent bars or invalidates its
are patently not copyrightable. registration under the Law on Copyright. The test of protection for the
aesthetic is not beauty and utility, but art for the copyright and invention of
It is worthy to state that the works protected under the Law on Copyright are: original and ornamental design for design patents.16 In like manner, the fact
literary or artistic works (Sec. 172) and derivative works (Sec. 173). The Leaf that his utility designs or models for articles of manufacture have been
Spring Eye Bushing and Vehicle Bearing Cushion fall on neither classification. expressed in the field of automotive parts, or based on something already in
the public domain does not automatically remove them from the protection of and deposit of work is not conclusive as to copyright outlay or the time of
the Law on Copyright.17 copyright or the right of the copyright owner. The respondents maintain that a
copyright exists only when the work is covered by the protection of R.A. No.
The petitioner faults the CA for ignoring Section 218 of R.A. No. 8293 which 8293.
gives the same presumption to an affidavit executed by an author who claims
copyright ownership of his work. The petition has no merit.

The petitioner adds that a finding of probable cause to justify the issuance of The RTC had jurisdiction to delve into and resolve the issue whether the
a search warrant means merely a reasonable suspicion of the commission of petitioner’s utility models are copyrightable and, if so, whether he is the owner
the offense. It is not equivalent to absolute certainty or a finding of actual and of a copyright over the said models. It bears stressing that upon the filing of
positive cause.18 He assists that the determination of probable cause does not the application for search warrant, the RTC was duty-bound to determine
concern the issue of whether or not the alleged work is copyrightable. He whether probable cause existed, in accordance with Section 4, Rule 126 of
maintains that to justify a finding of probable cause in the issuance of a the Rules of Criminal Procedure:
search warrant, it is enough that there exists a reasonable suspicion of the
commission of the offense. SEC. 4. Requisite for issuing search warrant. – A search warrant shall not
issue but upon probable cause in connection with one specific offense to be
The petitioner contends that he has in his favor the benefit of the presumption determined personally by the judge after examination under oath or
that his copyright is valid; hence, the burden of overturning this presumption is affirmation of the complainant and the witnesses he may produce, and,
on the alleged infringers, the respondents herein. But this burden cannot be particularly, describing the place to be searched and the things to be seized.
carried in a hearing on a proceeding to quash the search warrants, as the
issue therein is whether there was probable cause for the issuance of the In Solid Triangle Sales Corporation v. The Sheriff of RTC QC, Br. 93,19 the
search warrant. The petitioner concludes that the issue of probable cause Court held that in the determination of probable cause, the court must
should be resolved without invalidating his copyright. necessarily resolve whether or not an offense exists to justify the issuance of
a search warrant or the quashal of one already issued by the court. Indeed,
In their comment on the petition, the respondents aver that the work of the probable cause is deemed to exist only where facts and circumstances exist
petitioner is essentially a technical solution to the problem of wear and tear in which could lead a reasonably cautious and prudent man to believe that an
automobiles, the substitution of materials, i.e., from rubber to plastic matter of offense has been committed or is being committed. Besides, in Section 3,
polyvinyl chloride, an oil resistant soft texture plastic material strong enough Rule 126 of the Rules of Criminal Procedure, a search warrant may be issued
to endure pressure brought about by the vibration of the counter bearing and for the search and seizure of personal property (a) subject of the offense; (b)
thus brings bushings. Such work, the respondents assert, is the subject of stolen or embezzled and other proceeds or fruits of the offense; or (c) used or
copyright under Section 172.1 of R.A. No. 8293. The respondents posit that a intended to be used as the means of committing an offense.
technical solution in any field of human activity which is novel may be the
subject of a patent, and not of a copyright. They insist that the certificates The RTC is mandated under the Constitution and Rules of Criminal
issued by the National Library are only certifications that, at a point in time, a Procedure to determine probable cause. The court cannot abdicate its
certain work was deposited in the said office. Furthermore, the registration of constitutional obligation by refusing to determine whether an offense has
copyrights does not provide for automatic protection. Citing Section 218.2(b) been committed.20 The absence of probable cause will cause the outright
of R.A. No. 8293, the respondents aver that no copyright is said to exist if a nullification of the search warrant.21
party categorically questions its existence and legality. Moreover, under
Section 2, Rule 7 of the Implementing Rules of R.A. No. 8293, the registration
For the RTC to determine whether the crime for infringement under R.A. No. (a) Copyright shall be presumed to subsist in the work or other subject
8293 as alleged in an application is committed, the petitioner-applicant was matter to which the action relates if the defendant does not put in issue
burdened to prove that (a) respondents Jessie Ching and Joseph Yu were the the question whether copyright subsists in the work or other subject
owners of copyrighted material; and (b) the copyrighted material was being matter; and
copied and distributed by the respondents. Thus, the ownership of a valid
copyright is essential.22 (b) Where the subsistence of the copyright is established, the plaintiff
shall be presumed to be the owner of the copyright if he claims to be
Ownership of copyrighted material is shown by proof of originality and the owner of the copyright and the defendant does not put in issue the
copyrightability. By originality is meant that the material was not copied, and question of his ownership.
evidences at least minimal creativity; that it was independently created by the
author and that it possesses at least same minimal degree of A certificate of registration creates no rebuttable presumption of copyright
creativity.23 Copying is shown by proof of access to copyrighted material and validity where other evidence in the record casts doubt on the question. In
substantial similarity between the two works.24 The applicant must thus such a case, validity will not be presumed.30
demonstrate the existence and the validity of his copyright because in the
absence of copyright protection, even original creation may be freely copied.25 To discharge his burden of probable cause for the issuance of a search
warrant for violation of R.A. No. 8293, the petitioner-applicant submitted to the
By requesting the NBI to investigate and, if feasible, file an application for a RTC Certificate of Copyright Registration Nos. 2001-197 and 2001-204 dated
search warrant for infringement under R.A. No. 8293 against the respondents, September 3, 2001 and September 4, 2001, respectively, issued by the
the petitioner thereby authorized the RTC (in resolving the application), to National Library covering work identified as Leaf Spring Eye Bushing for
delve into and determine the validity of the copyright which he claimed he had Automobile and Vehicle Bearing Cushion both classified under Section
over the utility models. The petitioner cannot seek relief from the RTC based 172.1(h) of R.A. No. 8293, to wit:
on his claim that he was the copyright owner over the utility models and, at
the same time, repudiate the court’s jurisdiction to ascertain the validity of his SEC. 172. Literary and Artistic Works. – 172.1. Literary and artistic works,
claim without running afoul to the doctrine of estoppel. hereinafter referred to as "works," are original intellectual creations in the
literary and artistic domain protected from the moment of their creation and
To discharge his burden, the applicant may present the certificate of shall include in particular:
registration covering the work or, in its absence, other evidence.26 A copyright
certificate provides prima facie evidence of originality which is one element of ...
copyright validity. It constitutes prima facie evidence of both validity and
ownership27 and the validity of the facts stated in the certificate.28 The (h) Original ornamental designs or models for articles of manufacture,
presumption of validity to a certificate of copyright registration merely orders whether or not registrable as an industrial design, and other works of applied
the burden of proof. The applicant should not ordinarily be forced, in the first art.
instance, to prove all the multiple facts that underline the validity of the
copyright unless the respondent, effectively challenging them, shifts the Related to the provision is Section 171.10, which provides that a "work of
burden of doing so to the applicant.29 Indeed, Section 218.2 of R.A. No. 8293 applied art" is an artistic creation with utilitarian functions or incorporated in a
provides: useful article, whether made by hand or produced on an industrial scale.

218.2. In an action under this Chapter: But, as gleaned from the specifications appended to the application for a
copyright certificate filed by the petitioner, the said Leaf Spring Eye Bushing
for Automobile is merely a utility model described as comprising a generally articles, no matter how artistically designed, have generally been denied
cylindrical body having a co-axial bore that is centrally located and provided copyright protection unless they are separable from the useful article.37
with a perpendicular flange on one of its ends and a cylindrical metal jacket
surrounding the peripheral walls of said body, with the bushing made of In this case, the petitioner’s models are not works of applied art, nor artistic
plastic that is either polyvinyl chloride or polypropylene.31 Likewise, the works. They are utility models, useful articles, albeit with no artistic design or
Vehicle Bearing Cushion is illustrated as a bearing cushion comprising a value. Thus, the petitioner described the utility model as follows:
generally semi-circular body having a central hole to secure a conventional
bearing and a plurality of ridges provided therefore, with said cushion bearing LEAF SPRING EYE BUSHING FOR AUTOMOBILE
being made of the same plastic materials.32 Plainly, these are not literary or
artistic works. They are not intellectual creations in the literary and artistic Known bushings inserted to leaf-spring eye to hold leaf-springs of automobile
domain, or works of applied art. They are certainly not ornamental designs or are made of hard rubber. These rubber bushings after a time, upon subjecting
one having decorative quality or value. them to so much or intermittent pressure would eventually wore (sic) out that
would cause the wobbling of the leaf spring.
It bears stressing that the focus of copyright is the usefulness of the artistic
design, and not its marketability. The central inquiry is whether the article is a The primary object of this utility model, therefore, is to provide a leaf-spring
work of art.33 Works for applied art include all original pictorials, graphics, and eye bushing for automobile that is made up of plastic.
sculptural works that are intended to be or have been embodied in useful
article regardless of factors such as mass production, commercial Another object of this utility model is to provide a leaf-spring eye bushing for
exploitation, and the potential availability of design patent protection.34 automobiles made of polyvinyl chloride, an oil resistant soft texture plastic or
polypropylene, a hard plastic, yet both causes cushion to the leaf spring, yet
As gleaned from the description of the models and their objectives, these strong enough to endure pressure brought about by the up and down
articles are useful articles which are defined as one having an intrinsic movement of said leaf spring.
utilitarian function that is not merely to portray the appearance of the article or
to convey information. Indeed, while works of applied art, original intellectual, Yet, an object of this utility model is to provide a leaf-spring eye bushing for
literary and artistic works are copyrightable, useful articles and works of automobiles that has a much longer life span than the rubber bushings.
industrial design are not.35 A useful article may be copyrightable only if and
only to the extent that such design incorporates pictorial, graphic, or sculptural Still an object of this utility model is to provide a leaf-spring eye bushing for
features that can be identified separately from, and are capable of existing automobiles that has a very simple construction and can be made using
independently of the utilitarian aspects of the article. simple and ordinary molding equipment.

We agree with the contention of the petitioner (citing Section 171.10 of R.A. A further object of this utility model is to provide a leaf-spring eye bushing for
No. 8293), that the author’s intellectual creation, regardless of whether it is a automobile that is supplied with a metal jacket to reinforce the plastic eye
creation with utilitarian functions or incorporated in a useful article produced bushing when in engaged with the steel material of the leaf spring.
on an industrial scale, is protected by copyright law. However, the law refers
to a "work of applied art which is an artistic creation." It bears stressing that These and other objects and advantages will come to view and be
there is no copyright protection for works of applied art or industrial design understood upon a reading of the detailed description when taken in
which have aesthetic or artistic features that cannot be identified separately conjunction with the accompanying drawings.
from the utilitarian aspects of the article.36Functional components of useful
Figure 1 is an exploded perspective of a leaf-spring eye bushing according to Figures 4 and 5 show another embodiment wherein the leaf eye bushing 10 is
the present utility model; elongated and cylindrical as to its construction. Said another embodiment is
also made of polypropylene or polyvinyl chloride plastic material. The steel
Figure 2 is a sectional view taken along line 2-2 of Fig. 1; tube 17 and metal jacket 14 may also be applied to this embodiment as an
option thereof.38
Figure 3 is a longitudinal sectional view of another embodiment of this utility
model; VEHICLE BEARING CUSHION

Figure 4 is a perspective view of a third embodiment; and Known bearing cushions inserted to bearing housings for vehicle propeller
shafts are made of hard rubber. These rubber bushings after a time, upon
Figure 5 is a sectional view thereof. subjecting them to so much or intermittent pressure would eventually be worn
out that would cause the wobbling of the center bearing.
Referring now to the several views of the drawings wherein like reference
numerals designated same parts throughout, there is shown a utility model for The primary object of this utility model therefore is to provide a vehicle-
a leaf-spring eye bushing for automobile generally designated as reference bearing cushion that is made up of plastic.
numeral 10.
Another object of this utility model is to provide a vehicle bearing cushion
Said leaf-spring eye bushing 10 comprises a generally cylindrical body 11 made of polyvinyl chloride, an oil resistant soft texture plastic material which
having a co-axial bore 12 centrally provided thereof. causes cushion to the propeller’s center bearing, yet strong enough to endure
pressure brought about by the vibration of the center bearing.
As shown in Figs. 1 and 2, said leaf-spring eye bushing 10 is provided with a
perpendicular flange 13 on one of its ends and a cylindrical metal jacket 14 Yet, an object of this utility model is to provide a vehicle-bearing cushion that
surrounding the peripheral walls 15 of said body 11. When said leaf-spring has a much longer life span than rubber bushings.
bushing 10 is installed, the metal jacket 14 acts with the leaf-spring eye (not
shown), which is also made of steel or cast steel. In effect, the bushing 10 will Still an object of this utility model is to provide a vehicle bearing cushion that
not be directly in contact with steel, but rather the metal jacket, making the life has a very simple construction and can be made using simple and ordinary
of the bushing 10 longer than those without the metal jacket. molding equipment.

In Figure 2, the bushing 10 as shown is made of plastic, preferably polyvinyl These and other objects and advantages will come to view and be
chloride, an oil resistant soft texture plastic or a hard polypropylene plastic, understood upon a reading of the detailed description when taken in
both are capable to endure the pressure applied thereto, and, in effect, would conjunction with the accompanying drawings.
lengthen the life and replacement therefor.
Figure 1 is a perspective view of the present utility model for a vehicle-bearing
Figure 3, on the other hand, shows the walls 16 of the co-axial bore 12 of said cushion; and
bushing 10 is insertably provided with a steel tube 17 to reinforce the inner
portion thereof. This steel tube 17 accommodates or engages with the leaf- Figure 2 is a sectional view thereof.
spring bolt (not shown) connecting the leaf spring and the automobile’s
chassis.
Referring now to the several views of the drawing, wherein like reference of ejusdem generis which states that "where a statute describes things of a
numeral designate same parts throughout, there is shown a utility model for a particular class or kind accompanied by words of a generic character, the
vehicle-bearing cushion generally designated as reference numeral 10. generic word will usually be limited to things of a similar nature with those
particularly enumerated, unless there be something in the context of the state
Said bearing cushion 10 comprises of a generally semi-circular body 11, which would repel such inference,"46 the Leaf Spring Eye Bushing and Vehicle
having central hole 12 to house a conventional bearing (not shown). As Bearing Cushion are not copyrightable, being not of the same kind and nature
shown in Figure 1, said body 11 is provided with a plurality of ridges 13 which as the works enumerated in Section 172 of R.A. No. 8293.
serves reinforcing means thereof.
No copyright granted by law can be said to arise in favor of the petitioner
The subject bearing cushion 10 is made of polyvinyl chloride, a soft texture oil despite the issuance of the certificates of copyright registration and the
and chemical resistant plastic material which is strong, durable and capable of deposit of the Leaf Spring Eye Bushing and Vehicle Bearing Cushion. Indeed,
enduring severe pressure from the center bearing brought about by the in Joaquin, Jr. v. Drilon47 and Pearl & Dean (Phil.), Incorporated v. Shoemart,
rotating movement of the propeller shaft of the vehicle.39 Incorporated,48 the Court ruled that:

A utility model is a technical solution to a problem in any field of human Copyright, in the strict sense of the term, is purely a statutory right. It is a new
activity which is new and industrially applicable. It may be, or may relate to, a or independent right granted by the statute, and not simply a pre-existing right
product, or process, or an improvement of any of the aforesaid. 40Essentially, a regulated by it. Being a statutory grant, the rights are only such as the statute
utility model refers to an invention in the mechanical field. This is the reason confers, and may be obtained and enjoyed only with respect to the subjects
why its object is sometimes described as a device or useful object.41 A utility and by the persons, and on terms and conditions specified in the statute.
model varies from an invention, for which a patent for invention is, likewise, Accordingly, it can cover only the works falling within the statutory
available, on at least three aspects: first, the requisite of "inventive step"42 in a enumeration or description.
patent for invention is not required; second, the maximum term of protection is
only seven years43 compared to a patent which is twenty years,44 both That the works of the petitioner may be the proper subject of a patent does
reckoned from the date of the application; and third, the provisions on utility not entitle him to the issuance of a search warrant for violation of copyright
model dispense with its substantive examination45 and prefer for a less laws. In Kho v. Court of Appeals49 and Pearl & Dean (Phil.), Incorporated v.
complicated system. Shoemart, Incorporated,50 the Court ruled that "these copyright and patent
rights are completely distinct and separate from one another, and the
Being plain automotive spare parts that must conform to the original structural protection afforded by one cannot be used interchangeably to cover items or
design of the components they seek to replace, the Leaf Spring Eye Bushing works that exclusively pertain to the others." The Court expounded further,
and Vehicle Bearing Cushion are not ornamental. They lack the decorative thus:
quality or value that must characterize authentic works of applied art. They
are not even artistic creations with incidental utilitarian functions or works Trademark, copyright and patents are different intellectual property rights that
incorporated in a useful article. In actuality, the personal properties described cannot be interchanged with one another. A trademark is any visible sign
in the search warrants are mechanical works, the principal function of which is capable of distinguishing the goods (trademark) or services (service mark) of
utility sans any aesthetic embellishment. 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
Neither are we to regard the Leaf Spring Eye Bushing and Vehicle Bearing distinguishing an enterprise. Meanwhile, the scope of a copyright is confined
Cushion as included in the catch-all phrase "other literary, scholarly, scientific to literary and artistic works which are original intellectual creations in the
and artistic works" in Section 172.1(a) of R.A. No. 8293. Applying the principle literary and artistic domain protected from the moment of their creation.
Patentable inventions, on the other hand, refer to any technical solution of a In this case, the bushing and cushion are not works of art. They are, as the
problem in any field of human activity which is new, involves an inventive step petitioner himself admitted, utility models which may be the subject of a
and is industrially applicable. patent.

The petitioner cannot find solace in the ruling of the United States Supreme IN LIGHT OF ALL THE FOREGOING, the instant petition is hereby DENIED
Court in Mazer v. Stein51 to buttress his petition. In that case, the artifacts for lack of merit. The assailed Decision and Resolution of the Court of
involved in that case were statuettes of dancing male and female figures Appeals in CA-G.R. SP No. 70411 are AFFIRMED. Search Warrant Nos. 01-
made of semi-vitreous china. The controversy therein centered on the fact 2401 and 01-2402 issued on October 15, 2001 are ANNULLED AND SET
that although copyrighted as "works of art," the statuettes were intended for ASIDE. Costs against the petitioner.
use and used as bases for table lamps, with electric wiring, sockets and
lampshades attached. The issue raised was whether the statuettes were SO ORDERED.
copyright protected in the United States, considering that the copyright
applicant intended primarily to use them as lamp bases to be made and sold
in quantity, and carried such intentions into effect. At that time, the Copyright
Office interpreted the 1909 Copyright Act to cover works of artistic
craftsmanship insofar as their form, but not the utilitarian aspects, were
concerned. After reviewing the history and intent of the US Congress on its
copyright legislation and the interpretation of the copyright office, the US
Supreme Court declared that the statuettes were held copyrightable works of
art or models or designs for works of art. The High Court ruled that:

"Works of art (Class G) – (a) – In General. This class includes works of artistic
craftsmanship, in so far as their form but not their mechanical or utilitarian
aspects are concerned, such as artistic jewelry, enamels, glassware, and
tapestries, as well as all works belonging to the fine arts, such as paintings,
drawings and sculpture. …"

So we have a contemporaneous and long-continued construction of the

statutes by the agency charged to administer them that would allow the
registration of such a statuette as is in question here.52

The High Court went on to state that "[t]he dichotomy of protection for the
aesthetic is not beauty and utility but art for the copyright and the invention of
original and ornamental design for design patents." Significantly, the copyright
office promulgated a rule to implement Mazer to wit:

… [I]f "the sole intrinsic function of an article is its utility, the fact that the work
is unique and attractively shaped will not qualify it as a work of art."