G.R. No. 113388. September 5, 1997 marked Exh.

D; and, (c) a brochure distributed by Esso

Gasul or Esso Standard Eastern, Inc., of the Philippines
ANGELITA MANZANO, Petitioner, v. COURT OF showing a picture of another similar burner with top
APPEALS, and MELECIA MADOLARIA, as Assignor elevation view and another perspective view of the same
to NEW UNITED FOUNDRY MANUFACTURING burner, marked Exh. E.
CORPORATION, Respondents.
Testifying for herself petitioner narrated that her husband
DECISION Ong Bun Tua worked as a helper in the UNITED
FOUNDRY where respondent Melecia Madolaria used to
be affiliated with from 1965 to 1970; that Ong helped in
BELLOSILLO, J.:
the casting of an LPG burner which was the same utility
model of a burner for which Letters Patent No. UM-4609
The primary purpose of the patent system is not the was issued, and that after her husbands separation from
reward of the individual but the advancement of the arts the shop she organized Besco Metal Manufacturing
and sciences. The function of a patent is to add to the (BESCO METAL, for brevity) for the casting of LPG
sum of useful knowledge and one of the purposes of the burners one of which had the configuration, form and
patent system is to encourage dissemination of component parts similar to those being manufactured by
information concerning discoveries and inventions. This UNITED FOUNDRY. Petitioner presented in evidence an
is a matter which is properly within the competence of alleged model of an LPG burner marked Exh. K and
the Patent Office the official action of which has the covered by the Letters Patent of respondent, and
presumption of correctness and may not be interfered testified that it was given to her in January 1982 by one
with in the absence of new evidence carrying thorough of her customers who allegedly acquired it from UNITED
conviction that the Office has erred. Since the Patent FOUNDRY. Petitioner also presented in evidence her
Office is an expert body preeminently qualified to own model of an LPG burner called Ransome burner
determine questions of patentability, its findings must be marked Exh. L, which was allegedly manufactured in
accepted if they are consistent with the evidence, with 1974 or 1975 and sold by her in the course of her
doubts as to patentability resolved in favor of the Patent business operation in the name of BESCO METAL.
Office.1chanroblesvirtuallawlibrary Petitioner claimed that this Ransome burner (Exh. L) had
the same configuration and mechanism as that of the
Petitioner Angelita Manzano filed with the Philippine model which was patented in favor of private respondent
Patent Office on 19 February 1982 an action for the Melecia Madolaria. Also presented by petitioner was a
cancellation of Letters Patent No. UM-4609 for a gas burner cup of an imported Ransome burner marked Exh
burner registered in the name of respondent Melecia M which was allegedly existing even before the patent
Madolaria who subsequently assigned the letters patent application of private respondent.
to New United Foundry and Manufacturing Corporation
(UNITED FOUNDRY, for brevity). Petitioner alleged that Petitioner presented two (2) other witnesses, namely,
(a) the utility model covered by the letters patent, in this her husband Ong Bun Tua and Fidel Francisco. Ong
case, an LPG gas burner, was not inventive, new or testified that he worked as a helper in the UNITED
useful; (b) the specification of the letters patent did not FOUNDRY from 1965 to 1970 where he helped in the
comply with the requirements of Sec. 14, RA No. 165, as casting of LPG burners with the same form, configuration
amended; (c) respondent Melecia Madolaria was not the and mechanism as that of the model covered by the
original, true and actual inventor nor did she derive her Letters Patent issued to private respondent. Francisco
rights from the original, true and actual inventor of the testified that he had been employed with the Manila Gas
utility model covered by the letters patent; and, (d) the Corporation from 1930 to 1941 and from 1952 up to
letters patent was secured by means of fraud or 1969 where he retired as supervisor and that Manila Gas
misrepresentation. In support of her petition for Corporation imported Ransome burners way back in
cancellation petitioner further alleged that (a) the utility 1965 which were advertised through brochures to
model covered by the letters patent of respondent had promote their sale.
been known or used by others in the Philippines for more
than one (1) year before she filed her application for
Private respondent, on the other hand, presented only
letters patent on 9 December 1979; (b) the products
one witness, Rolando Madolaria, who testified, among
which were produced in accordance with the utility model
others, that he was the General Supervisor of the
covered by the letters patent had been in public use or
UNITED FOUNDRY in the foundry, machine and buffing
on sale in the Philippines for more than one (1) year
section; that in his early years with the company,
before the application for patent therefor was filed.
UNITED FOUNDRY was engaged in the manufacture of
different kinds of gas stoves as well as burners based on
Petitioner presented the following documents which she sketches and specifications furnished by customers; that
correspondingly marked as exhibits: (a) affidavit of the company manufactured early models of single-piece
petitioner alleging the existence of prior art, marked Exh. types of burners where the mouth and throat were not
A; (b) a brochure distributed by Manila Gas Corporation detachable; that in the latter part of 1978 respondent
disclosing a pictorial representation of Ransome Burner Melecia Madolaria confided in him that complaints were
made by Ransome Torch and Burner Company, USA,
being brought to her attention concerning the early Petitioner submits that the differences cited by the Court
models being manufactured; that he was then instructed of Appeals between the utility model of private
by private respondent to cast several experimental respondent and the models of Manila Gas Corporation
models based on revised sketches and specifications; and Esso Standard Eastern, Inc., are more imaginary
that private respondent again made some innovations; than real. She alleges that based on Exhs. E, E-1, F and
that after a few months, private respondent discovered F-1 or the brochures of Manila Gas Corporation and
the solution to all the defects of the earlier models and, Esso Standard Eastern, Inc., presented by petitioner, the
based on her latest sketches and specifications, he was cup-shaped burner mouth and threaded hole on the side
able to cast several models incorporating the additions to are shown to be similar to the utility model of private
the innovations introduced in the models. Various tests respondent. The exhibits also show a detachable burner
were conducted on the latest model in the presence and mouth having a plurality of upwardly existing undulations
under the supervision of Melecia Madolaria and they adopted to act as gas passage when the cover is
obtained perfect results. Rolando Madolaria testified that attached to the top of said cup-shaped mouth all of
private respondent decided to file her application for which are the same as those in the patented model.
utility model patent in December 1979. Petitioner also denies as substantial difference the short
cylindrical tube of the burner mouth appearing in the
On 7 July 1986 the Director of Patents Cesar C. brochures of the burners being sold by Manila Gas
Sandiego issued Decision No. 86-56 denying the petition Corporation and the long cylindered tube of private
for cancellation and holding that the evidence of respondents model of the gas burner.
petitioner was not able to establish convincingly that the
patented utility model of private respondent was Petitioner argues that the actual demonstration made
anticipated. Not one of the various pictorial during the hearing disclosed the similarities in form,
representations of business clearly and convincingly operation and mechanism and parts between the utility
showed that the devices presented by petitioner was model of private respondent and those depicted in the
identical or substantially identical with the utility model of brochures. The findings of the Patent Office and the
the respondent. The decision also stated that even Court of Appeals that the brochures of Manila Gas
assuming that the brochures depicted clearly each and Corporation and Esso Standard Eastern, Inc., are
every element of the patented gas burner device so that undated cannot overcome the fact of their circulation
the prior art and patented device became identical before private respondent filed her application for utility
although in truth they were not, they could not serve as model patent. Petitioner thus asks this Court to take
anticipatory bars for the reason that they were undated. judicial notice of the fact that Esso Standard Eastern,
The dates when they were distributed to the public were Inc., disappeared before 1979 and reappeared only
not indicated and, therefore, were useless prior art during the Martial Law years as Petrophil Corporation.
references. The records and evidence also do not Petitioner also emphasizes that the brochures indicated
support the petitioners contention that Letters Patent No. the telephone number of Manila Gas Corporation as 5-
UM-4609 was obtained by means of fraud and/or 79-81 which is a five (5) numbered telephone number
misrepresentation. No evidence whatsoever was existing before 1975 because telephones in Metro
presented by petitioner to show that the then applicant Manila started to have six (6) numbers only after that
Melecia Madolaria withheld with intent to deceive year.
material facts which, if disclosed, would have resulted in
the refusal by the Philippine Patent Office to issue the Petitioner further contends that the utility model of
Letters Patent under inquiry. private respondent is absolutely similar to the LPG
burner being sold by petitioner in 1975 and 1976, and
Petitioner elevated the decision of the Director of Patents also to the Ransome burner depicted in the old
to the Court of Appeals which on 15 October 1993 brochures of Manila Gas Corporation and Esso Standard
affirmed the decision of the Director of Patents. Hence, Eastern, Inc., fabricated by Ransome Torch and Burner
this petition for review on certiorari alleging that the Company of Oakland, California, USA, especially when
Court of Appeals erred (a) in relying on imaginary considered through actual physical examination,
differences which in actuality did not exist between the assembly and disassembly of the models of petitioner
model of private respondent covered by Letters Patent and private respondent. Petitioner faults the Court of
No. UM-4609 and the previously known model of Esso Appeals for disregarding the testimonies of Ong Bun Tua
Standard Eastern, Inc., and Manila Gas Corporation, and Fidel Francisco for their failure to produce
making such imaginary differences grounded entirely on documents on the alleged importation by Manila Gas
speculation, surmises and conjectures; (b) in rendering Corporation of Ransome burners in 1965 which had the
judgment based on misapprehension of facts; (c) in same configuration, form and mechanism as that of the
relying mainly on the testimony of private respondents private respondents patented model.
sole witness Rolando Madolaria; and, (d) in not
canceling Letters Patent No. UM-4609 in the name of Finally, it is argued that the testimony of private
private respondent. respondents lone witness Rolando Madolaria should not
have been given weight by the Patent Office and the
Court of Appeals because it contained mere after- legality of the issuance of UM-4609 to respondent
thoughts and pretensions. Madolaria was not legally met by petitioner in her action
for the cancellation of the patent. Thus the Director of
We cannot sustain petitioner. Section 7 of RA No. 165, Patents explained his reasons for the denial of the
as amended, which is the law on patents, expressly petition to cancel private respondents patent -
provides -
Scrutiny of Exhs. D and E readily reveals that the utility
Sec. 7. Inventions patentable. Any invention of a new model (LPG Burner) is not anticipated. Not one of the
and useful machine, manufactured product or substance, various pictorial representations of burners clearly and
process or an improvement of any of the foregoing, shall convincingly show that the device presented therein is
be patentable. identical or substantially identical in construction with the
aforesaid utility model. It is relevant and material to state
that in determining whether novelty or newness is
Further, Sec. 55 of the same law provides -
negatived by any prior art, only one item of the prior art
may be used at a time. For anticipation to occur, the
Sec. 55. Design patents and patents for utility models. - prior art must show that each element is found either
(a) Any new, original and ornamental design for an expressly or described or under principles of inherency
article of manufacture and (b) any new model of in a single prior art reference or that the claimed
implements or tools or of any industrial product or of part invention was probably known in a single prior art device
of the same, which does not possess the quality of or practice. (Kalman v. Kimberly Clark, 218 USPQ 781,
invention, but which is of practical utility by reason of its 789)
form, configuration, construction or composition, may be
protected by the author thereof, the former by a patent
Even assuming gratia arguendi that the aforesaid
for a design and the latter by a patent for a utility model,
brochures do depict clearly on all fours each and every
in the same manner and subject to the same provisions
element of the patented gas burner device so that the
and requirements as relate to patents for inventions
prior art and the said patented device become identical,
insofar as they are applicable except as otherwise herein
although in truth they are not, they cannot serve as
provided.
anticipatory bars for the reason that they are undated.
The dates when they were distributed to the public were
The element of novelty is an essential requisite of the not indicated and, therefore, they are useless prior art
patentability of an invention or discovery. If a device or references.
process has been known or used by others prior to its
invention or discovery by the applicant, an application for
xxxx
a patent therefor should be denied; and if the application
has been granted, the court, in a judicial proceeding in
which the validity of the patent is drawn in question, will Furthermore, and more significantly, the model marked
hold it void and ineffective.2 It has been repeatedly held Exh. K does not show whether or not it was
that an invention must possess the essential elements of manufactured and/or cast before the application for the
novelty, originality and precedence, and for the patentee issuance of patent for the LPG burner was filed by
to be entitled to the protection the invention must be new Melecia Madolaria.
to the world.3chanroblesvirtuallawlibrary
With respect to Exh. L, petitioner claimed it to be her
In issuing Letters Patent No. UM-4609 to Melecia own model of LPG burner allegedly manufactured
Madolaria for an LPG Burner on 22 July 1981, the sometime in 1974 or 1975 and sold by her in the course
Philippine Patent Office found her invention novel and of her business operation in the name of Besco Metal
patentable. The issuance of such patent creates a Manufacturing, which burner was denominated as
presumption which yields only to clear and cogent Ransome burner
evidence that the patentee was the original and first
inventor. The burden of proving want of novelty is on him xxxx
who avers it and the burden is a heavy one which is met
only by clear and satisfactory proof which overcomes But a careful examination of Exh. L would show that it
every reasonable doubt.4 Hence, a utility model shall not does not bear the word Ransome which is the burner
be considered new if before the application for a patent it referred to as the product being sold by the Petitioner.
has been publicly known or publicly used in this country This is not the way to prove that Exh. L anticipates
or has been described in a printed publication or Letters Patent No. UM-4609 through Exhs. C and D.
publications circulated within the country, or if it is Another factor working against the Petitioners claims is
substantially similar to any other utility model so known, that an examination of Exh. L would disclose that there is
used or described within the no indication of the time or date it was manufactured.
country.5chanroblesvirtuallawlibrary This Office, thus has no way of determining whether
Exh. L was really manufactured before the filing of the
As found by the Director of Patents, the standard of aforesaid application which matured into Letters Patent
evidence sufficient to overcome the presumption of
No. UM-4609, subject matter of the cancellation evidence to overthrow the presumption of validity of a
proceeding. patent, it has been held that oral testimony to show
anticipation is open to suspicion and if uncorroborated by
At this juncture, it is worthwhile to point out that petitioner cogent evidence, as what occurred in this case, it may
also presented Exh. M which is the alleged burner cup of be held insufficient.9chanroblesvirtuallawlibrary
an imported Ransome burner. Again, this Office finds the
same as unreliable evidence to show anticipation. It Finally, petitioner would want this Court to review all over
observed that there is no date indicated therein as to again the evidence she presented before the Patent
when it was manufactured and/or imported before the Office. She argues that contrary to the decision of the
filing of the application for issuance of patent of the Patent Office and the Court of Appeals, the evidence she
subject utility model. What is more, some component presented clearly proves that the patented model of
parts of Exh. M are missing, as only the cup was private respondent is no longer new and, therefore, fraud
presented so that the same could not be compared to attended the acquisition of patent by private respondent.
the utility model (subject matter of this case) which
consists of several other detachable parts in combination It has been held that the question on priority of invention
to form the complete LPG burner. is one of fact. Novelty and utility are likewise questions of
fact. The validity of patent is decided on the basis of
xxxx factual inquiries. Whether evidence presented comes
within the scope of prior art is a factual issue to be
It must likewise be pointed out that Ong Bun Tua resolved by the Patent Office.10 There is question of fact
testified on the brochures allegedly of Manila Gas and of when the doubt or difference arises as to the truth or
Esso Gasul marked Exhs. E and F and on the alleged falsehood of alleged facts or when the query necessarily
fact that Manila Gas Corporation was importing from the invites calibration of the whole evidence considering
United States Ransome burners. But the same could not mainly the credibility of witnesses, existence and
be given credence since he himself admitted during relevance of specific surrounding circumstances, their
cross- examination that he has never been connected relation to each other and to the whole and the
with Manila Gas Corporation. He could not even present probabilities of the situation.11chanroblesvirtuallawlibrary
any importation papers relating to the alleged imported
ransome burners. Neither did his Time and again we have held that it is not the function of
wife.6chanroblesvirtuallawlibrary the Supreme Court to analyze or weigh all over again the
evidence and credibility of witnesses presented before
The above findings and conclusions of the Director of the lower tribunal or office. The Supreme Court is not a
Patent were reiterated and affirmed by the Court of trier of facts. Its jurisdiction is limited to reviewing and
Appeals.7chanroblesvirtuallawlibrary revising errors of law imputed to the lower court, its
findings of fact being conclusive and not reviewable by
this Court.
The validity of the patent issued by the Philippine Patent
Office in favor of private respondent and the question
over the inventiveness, novelty and usefulness of the WHEREFORE, the Petition is DENIED. The Decision of
improved model of the LPG burner are matters which are the Court of Appeals affirming that of the Philippine
better determined by the Patent Office. The technical Patent Office is AFFIRMED. Costs against petitioner.
staff of the Philippine Patent Office composed of experts
in their field has by the issuance of the patent in question SO ORDERED.
accepted private respondents model of gas burner as a
discovery. There is a presumption that the Office has
correctly determined the patentability of the model8 and
such action must not be interfered with in the absence of
competent evidence to the contrary.

The rule is settled that the findings of fact of the Director

of Patents, especially when affirmed by the Court of
Appeals, are conclusive on this Court when supported by
substantial evidence. Petitioner has failed to show
compelling grounds for a reversal of the findings and
conclusions of the Patent Office and the Court of
Appeals.

The alleged failure of the Director of Patents and the

Court of Appeals to accord evidentiary weight to the
testimonies of the witnesses of petitioner showing
anticipation is not a justification to grant the petition.
Pursuant to the requirement of clear and convincing
 Cozaar and Hyzaar.8chanrobleslaw

The patent application was handled by Atty. Nicanor D.

Mapili (Atty. Mapili), a local resident agent who handled
a majority of E.I. Dupont Nemours' patent applications in
the Philippines from 1972 to 1996.9chanrobleslaw

On December 19, 2000, E.I. Dupont Nemours' new

counsel, Ortega, Del Castillo, Bacorro, Odulio, Calma,
G.R. No. 174379, August 31, 2016 and Carbonell,10 sent the Intellectual Property Office11 a
letter requesting that an office action be issued on
E.I. DUPONT DE NEMOURS AND CO. (ASSIGNEE OF Philippine Patent Application No. 35526.12chanrobleslaw
INVENTORS CARINI, DUNCIA AND
WONG), Petitioner, v. DIRECTOR EMMA C. In response, Patent Examiner Precila O. Bulihan of the
FRANCISCO (IN HER CAPACITY AS DIRECTOR Intellectual Property Office sent an office action marked
GENERAL OF THE INTELLECTUAL PROPERTY Paper No. 2 on January 30, 2002,13 which
OFFICE), DIRECTOR EPIFANIO M. EVASCO (IN HIS stated:ChanRoblesVirtualawlibrary
CAPACITY AS THE DHUECTOR OF THE BUREAU OF
PATENTS), AND THERAPHARMA, The appointed attorney on record was the late Atty.
INC., Respondents. Nicanor D. Mapili. The reconstituted documents provided
no documents that will show that the authority to
DECISION prosecute the instant application is now transferred to
the present counsel. No official revocation on record is
LEONEN, J.: available.

Therefore, an official revocation of the Power of Attorney

A patent is granted to provide rights and protection to the
of the former counsel and the appointment of the present
inventor after an invention is disclosed to the public. It
by the applicant is therefore required before further
also seeks to restrain and prevent unauthorized persons
action can be undertaken.
from unjustly profiting from a protected invention.
However, ideas not covered by a patent are free for the
public to use and exploit. Thus, there are procedural 1. Contrary to what was alleged, the
rules on the application and grant of patents established Chemical Examining Division's (CED)
to protect against any infringement. To balance the record will show that as far as the said
public interests involved, failure to comply with strict division is concerned, it did not fail to
procedural rules will result in the failure to obtain a issue the proper and timely action on the
patent. instant application. CED record shows
that the subject application was
This resolves a Petition for Review on assigned to the examiner on June 7,
Certiorari1 assailing the Court of Appeals Amended 1988. A month after that was July 19,
Decision2 dated August 30, 2006, which denied the 1988, the first Office Action was mailed
revival of Philippine Patent Application No. 35526, and but was declared abandoned as of
the Court of Appeals Resolution3 dated January 31, September 20, 1988 for applicant's
2006, which granted the intervention of Therapharma, failure to respond within the period as
Inc. in the revival proceedings. prescribed under Rule 112. Since then,
no other official transactions were
E.I. Dupont Nemours and Company (E.I. Dupont recorded. This record is complemented
Nemours) is an American corporation organized under by the Examiner-in-charge's own
the laws of the State of Delaware.4 It is the assignee of record . . . .
inventors David John Carini, John Jonas Vytautas
Duncia, and Pancras Chor Bun Wong, all citizens of the ....
United States of America.5chanrobleslaw
2. It was noted that it took thirteen (13)
On July 10, 1987, E.I. Dupont Nemours filed Philippine long years for the applicant to request
Patent Application No. 35526 before the Bureau of for such Office Action. This is not
Patents, Trademarks, and Technology Transfer.6 The expected of the applicant since it is an
application was for Angiotensin II Receptor Blocking acceptable fact that almost all
Imidazole (losartan), an invention related to the inventors/applicants wish for the early
treatment of hypertension and congestive heart disposition for their applications.14
failure.7 The product was produced and marketed by
Merck, Sharpe, and Dohme Corporation (Merck), E.I. On May 29, 2002, E.I. Dupont Nemours replied to the
Dupont Nemours' licensee, under the brand names office action by submitting a Power of Attorney executed
by Miriam Meconnahey, authorizing Ortega, Castillo, Del doctrine in this case, and to afford petitioner some relief
Castillo, Bacorro, Odulio, Calma, and Carbonell to from the gross negligence committed by its former
prosecute and handle its patent applications.15 On the lawyer, Atty. Nicanor D.
same day, it also filed a Petition for Revival with Cost of Mapili[.]28chanroblesvirtuallawlibrary
Philippine Patent Application No. 35526.16chanrobleslaw The Office of the Solicitor General, on behalf of the
Intellectual Property Office, moved for reconsideration of
In its Petition for Revival, E.I. Dupont Nemours argued this Decision on September 22, 2004.29chanrobleslaw
that its former counsel, Atty. Mapili, did not inform it
about the abandonment of the application, and it was not In the interim, Therapharma, Inc. moved for leave to
aware that Atty. Mapili had already died.17 It argued that intervene and admit the Attached Motion for
it discovered Atty. Mapili's death when its senior-level Reconsideration dated October 11, 200430 and argued
patent attorney visited the Philippines in 1996.18 It that the Court of Appeals' August 31, 2004 Decision
argued that it only had actual notice of the abandonment directly affects its "vested" rights to sell its own
on January 30, 2002, the date of Paper No. 2.19 Thus, it product.31chanrobleslaw
argued that its Petition for Revival was properly filed
under Section 113 of the 1962 Revised Rules of Practice Therapharma, Inc. alleged that on January 4, 2003, it
before the Philippines Patent Office in Patent Cases filed before the Bureau of Food and Drugs its own
(1962 Revised Rules of Practice).20chanrobleslaw application for a losartan product "Lifezar," a medication
for hypertension, which the Bureau granted.32 It argued
On April 18, 2002, the Director of Patents denied the that it made a search of existing patent applications for
Petition for Revival for having been filed out of similar products before its application, and that no
time.21 The existing patent registration was found since E.I. Dupont
Resolution22 stated:ChanRoblesVirtualawlibrary Nemours' application for its losartan product was
Propriety dictates that the well-settled rule on agency considered abandoned by the Bureau of Patents,
should be applied to this case to maintain the objectivity Trademarks, and Technology Transfer.33 It alleged that
and discipline of the Office. Therefore, for cases such as sometime in 2003 to 2004, there was an exchange of
the instant case, let the Office maintain its position that correspondence between Therapharma, Inc. and Merck.
mistakes of the counsel bind the client,' regardless of the In this exchange, Merck informed Therapharma, Inc. that
degree of negligence committed by the former counsel. it was pursuing a patent on the losartan products in the
Although it appears that the former counsel, Arty. Philippines and that it would pursue any legal action
Nicanor Mapili was remiss in his obligations as counsel necessary to protect its product.34chanrobleslaw
for the applicants, the Office cannot revive the
abandoned application because of the limitations On January 31, 2006, the Court of Appeals issued the
provided in Rule 115. Clearly, the Petition for Revival Resolution35 granting the Motion for Leave to Intervene.
was filed beyond the reglementary period. Since the law According to the Court of Appeals, Therapharma, Inc.
and rules do not give the Director of Patents the had an interest in the revival of E.I. Dupont Nemours'
discretion to stretch the period for revival, the Office is patent application since it was the local competitor for
constrained to apply Rule 115 to the instant case. the losartan product.36 It stated that even if the Petition
for Review was premised on the revival of the patent
In view of the foregoing considerations, applicants' application, Therapharma, Inc.'s intervention was not
petition to revive the subject application is hereby premature since E.I. Dupont Nemours, through Merck,
denied. already threatened Therapharma, Inc. with legal action if
it continued to market its losartan
SO ORDERED.23chanroblesvirtuallawlibrary product.37chanrobleslaw
E.I. Dupont Nemours appealed the denial to the Director-
General of the Intellectual Property Office on August 26, E.I. Dupont Nemours moved for reconsideration on
2002.24 In the Decision25cralawred dated October 22, February 22, 2006, assailing the Court of Appeals'
2003, Director-General Emma C. Francisco denied the January 31, 2006 Resolution.38chanrobleslaw
appeal and affirmed the Resolution of the Director of
Patents. On August 30, 2006, the Court of Appeals resolved both
Motions for Reconsideration and rendered the Amended
On November 21, 2003, petitioner filed before the Court Decision39 reversing its August 31, 2004 Decision.
of Appeals a Petition for Review seeking to set aside the
Intellectual Property Office's Decision dated October 22, The Court of Appeals ruled that the public interest would
2003.26chanrobleslaw be prejudiced by the revival of E.I. Dupont Nemours'
application.40 It found that losartan was used to treat
On August 31, 2004, the Court of Appeals granted the hypertension, "a chronic ailment afflicting an estimated
Petition for Review.27 In allowing the Petition for Revival, 12.6 million Filipinos,"41 and noted that the presence of
the Court of Appeals stated:ChanRoblesVirtualawlibrary competition lowered the price for losartan products.42 It
After an exhaustive examination of the records of this also found that the revival of the application prejudiced
case, this Court believes that there is sufficient Therapharma, Inc.'s interest, in that it had already
justification to relax the application of the above-cited invested more than P20,000,000.00 to develop its own
losartan product and that it acted in good faith when it assails an interlocutory order and requests a review of a
marketed its product.43chanrobleslaw lower court's exercise of discretion. Generally, a petition
for certiorari under Rule 65 of the Rules of Court will lie
The Court of Appeals likewise found that it erroneously to raise this issue in a limited manner. There must be a
based its August 31, 2004 Decision on E.I Dupont clear showing of grave abuse of discretion for the writ of
Nemours' allegation that it took seven (7) to 13 years for certiorari to be issued.
the Intellectual Property Office to act on a patent
application.44 It stated that while it might have taken that However, when the Court of Appeals has already
long to issue the patent, it did not take that long for the resolved the question of intervention and the merits of
Intellectual Property Office to act on the case, an appeal through a petition for review on
application.45 Citing Schuartz v. Court of Appeals,46 it certiorari under Rule 45 of the Rules of Court is the
found that both E.I. Dupont Nemours and Arty. Mapili proper remedy.
were inexcusably negligent in prosecuting the patent
application.47chanrobleslaw Respondent Therapharma, Inc. argues that the Petition
should be dismissed outright for being the wrong mode
On October 19, 2006, petitioner E.I. Dupont Nemours of appeal.53 It argues that petitioner should have filed a
filed before this Court this Petition for Review on petition for certiorari under Rule 65 since petitioner was
Certiorari.48 Both respondents Intellectual Property Office assailing an act done by the Court of Appeals in the
and Therapharma, Inc. were directed to comment on the exercise of its discretion.54 It argues that petitions under
comment on the Petition.49 Upon submission of their Rule 45 are limited to questions of law, and petitioner
respective Comments,50 petitioner was directed to file its raised findings of fact that have already been affirmed by
Consolidated Reply.51 Thereafter, the parties were the Court of Appeals.55chanrobleslaw
directed to file their respective
memoranda.52chanrobleslaw Petitioner, on the other hand, argues that Rule 65 is only
available when there is no appeal or any plain, speedy
The arguments of the parties present several issues for remedy in the ordinary course of law. Since a petition for
this Court's resolution, as follows: review under Rule 45 was still available to it, it argues
that it correctly availed itself of this remedy.56 Petitioner
chanRoblesvirtualLawlibraryFirst, whether the Petition also argues that there are exceptions to the general rule
for Review on Certiorari complied with Rule 45, Section on the conclusiveness of the Court of Appeals' findings
4 of the Rules of Court when petitioner failed to attach of fact.57 It argues that it was necessary for it to discuss
certain documents to support the allegations in the relevant facts in order for it to show that the Court of
complaint; Appeals made a misapprehension of
facts.58chanrobleslaw
Second, whether petitioner should have filed a petition
for certiorari under Rule 65 of the Rules of Court; The special civil action of certiorari under Rule 65 is
intended to correct errors of jurisdiction.59 Courts lose
Third, whether the Petition for Review on Certiorari competence in relation to an order if it acts in grave
raises questions of fact; abuse of discretion amounting to lack or excess of
jurisdiction.60 A petition for review under Rule 45, on the
Fourth, whether the Court of Appeals erred in allowing other hand, is a mode of appeal intended to correct
the intervention of respondent Therapharma, Inc. in errors of judgment.61 Errors of judgment are errors
petitioner's appeal; committed by a court within its jurisdiction.62 This
includes a review of the conclusions of law63 of the lower
Fifth, whether the Court of Appeals erred in denying court and, in appropriate cases, evaluation of the
petitioner's appeal for the revival of its patent application admissibility, weight, and inference from the evidence
on the grounds that (a) petitioner committed inexcusable presented.
negligence in the prosecution of its patent application;
and (b) third-party rights and the public interest would be Intervention results in an interlocutory order ancillary to a
prejudiced by the appeal; principal action.64 Its grant or denial is subject to the
sound discretion of the court.65 Interlocutory orders, or
Sixth, whether Schuartz applies to this case in that the orders that do not make a final disposition of the merits
negligence of a patent applicant's counsel binds the of the main controversy or cause of action,66 are
applicant; and cralawlawlibrary generally not reviewable.67 The only exception is a
limited one, in that when there is no plain, speedy, and
Lastly, whether the invention has already become part of adequate remedy, and where it can be shown that the
public domain. court acted without, in excess, or with such grave abuse
of discretion that such action ousts it of jurisdiction.
I
Judicial economy, or the goal to have cases prosecuted
The question of whether the Court of Appeals may with the least cost to the parties, 68 requires that
resolve a motion for intervention is a question that unnecessary or frivolous reviews of orders by the trial
court, which facilitate the resolution of the main merits of to attach relevant portions of the record.
the case, be reviewed together with the main merits of Thus:ChanRoblesVirtualawlibrary
the case. After all, it would be more efficient for an In Galvez v. Court of Appeals, a case that involved the
appellate court to review a case in its entire context dismissal of a petition for certiorari to assail an
when the case is finally disposed. unfavorable ruling brought about by the failure to attach
copies of all pleadings submitted and other material
The question of whether intervention is proper is a portions of the record in the trial court (like the complaint,
question of law. Settled is the distinction between a answer and position paper) as would support the
question of law and a question of fact. A question of fact allegations of the petition, the Court recognized three
arises when there is doubt as to the truth or falsity of guideposts for the CA to consider in determining whether
certain facts.69 A question of law, on the other hand, or not the rules of procedures should be relaxed, as
arises when "the appeal raises doubt as to the follows:ChanRoblesVirtualawlibrary
applicable law on a certain set of facts."70 The test often First, not all pleadings and parts of case records are
used by this Court to determine whether there is a required to be attached to the petition. Only those which
question of fact or a question of law "is not the are relevant and pertinent must accompany it. The test
appellation given to such question by the party raising of relevancy is whether the document in question will
the same; rather, it is whether the appellate court can support the material allegations in the petition, whether
determine the issue raised without reviewing or said document will make out a prima facie case of grave
evaluating the evidence, in which case, it is a question of abuse of discretion as to convince the court to give due
law; otherwise it is a question of fact."71chanrobleslaw course to the petition.

Petitioner raises the question of whether Republic Act Second, even if a document is relevant and pertinent to
No. 165 allows the Court of Appeals to grant a motion for the petition, it need not be appended if it is shown that
intervention. This necessarily requires a determination of the contents thereof can also [sic] found in another
whether Rule 19 of the Rules of Court72 applies in document already attached to the petition. Thus, if the
appeals of cases filed under Republic Act No. 165. The material allegations in a position paper are summarized
determination of this question does not require a review in a questioned judgment, it will suffice that only a
of re-evaluation of the evidence. It requires a certified true copy of the judgment is attached.
determination of the applicable law.
Third, a petition lacking an essential pleading or part of
II the case record may still be given due course or
reinstated (if earlier dismissed) upon showing that
If a petition fails to attach material portions of the record, petitioner later submitted the documents required, or that
it may still be given due course if it falls under certain it will serve the higher interest of justice that the case be
exceptions. Although Rule 45, Section 4 of the Rules of decided on the merits.79chanroblesvirtuallawlibrary
Court requires that the petition "be accompanied by . . . Although Magsino referred to a petition for review under
such material portions of the record as would support the Rule 42 before the Court of Appeals, the procedural
petition," the failure to do so will not necessarily warrant guideposts cited in Magsino may apply to this case since
the outright dismissal of the complaint.73chanrobleslaw the contents of a pleading under Rule 4280 are
substantially the same as the contents of a pleading
Respondent Therapharma, Inc. argues that the Petition under Rule 45,81 in that both procedural rules require the
should have been outright dismissed since it failed to submission of "material portions of the record as would
attach certain documents to support its factual support the allegations of the petition."82chanrobleslaw
allegations and legal arguments, particularly: the
annexes of the Petition for Review it had filed before the In support of its Petition for Review on Certiorari,
Court of Appeals and the annexes in the Motion for petitioner attached the Court of Appeals Decision dated
Leave to Intervene it had filed.74 It argues that petitioner's August 31, 2004,83 the Resolution dated January 31,
failure to attach the documents violates Rule 45, Section 2006,84 and the Amended Decision dated August 30,
4, which requires the submission of material portions of 2006.85 The Court of Appeals Resolution and Amended
the record.75chanrobleslaw Decision quoted extensive portions of its rollo in support
of its rulings.86 These conclusions were sufficient to
On the other hand, petitioner argues that it was able to convince this Court not to outright dismiss the Petition
attach the Court of Appeals Decision dated August 31, but to require respondents to first comment on the
2004, the Resolution dated January 31, 2006, and the Petition, in satisfaction of the first and second procedural
Amended Decision dated August 30, 2006, all of which guideposts in Magsino.
were sufficient for this Court to give due course to its
Petition.76chanrobleslaw Upon filing of its Consolidated Reply,87 petitioner was
able to attach the following additional documents:
In Magsino v. De Ocampo,77 this Court applied the
procedural guideposts in Galvez v. Court of Appeals78 in chanRoblesvirtualLawlibrary
determining whether the Court of Appeals correctly
dismissed a petition for review under Rule 42 for failure (1) Petition for Review filed before the Court of
 Appeals;88 petitioner's invention.106 It further argues that its
intervention did not violate the confidentiality of the
(2) Letters dated July 18, 1995, December 12, patent application proceedings since petitioner was not
1995, and December 29, 1995;89 required to divulge confidential information regarding its
patent application.107chanrobleslaw
(3) Declaration of Ms. Miriam Meconnahey dated
June 25, 2002;90 In the 1962 Revised Rules of Practice, final decisions of
(4) Spreadsheet of petitioner's patent applications the Director of Patents are appealed to this Court and
handled by Atty. Mapili;91 governed by Republic Act No. 165. In
particular:ChanRoblesVirtualawlibrary
(5) Power of Attorney and Appointment of Resident PART X
Agent dated September 26, 1996;92 PETITION AND APPEALS
(6) Letter dated December 19, 2000 requesting an . . . .
Office Action on Patent Application No. 35526;93
(7) Paper No. 2 dated January 30, 2002;94 CHAPTER IV
APPEALS TO THE SUPREME COURT FROM FINAL
(8) Petition for Revival dated January 30, 2002 with ORDERS OR DECISIONS OF THE DIRECTOR OF
attached Power of Attorney and Appointment of PATENTS IN EX PARTE AND INTER PARTES
Resident Agent;95 PROCEEDINGS
(9) Resolution dated July 24, 2002 by Director of
265. Appeals to the Supreme Court in ex parte and inter
the Bureau of Patents;96 and
partes proceedings.—Any person who is dissatisfied with
(10) Notice of and Memorandum on Appeal before the final decision of the Director of Patents, (affirming
the Director-General of the Intellectual Property that of a Principal Examiner) denying him a patent for an
Office.97 invention, industrial design or utility model; any person
who is dissatisfied with any final decision of the Director
of Patents (affirming that of the Executive Examiner) in
The third procedural guidepost in Magsino was complied
any proceeding; and any party who is dissatisfied with
with upon the submission of these documents.
any final decision of the Director of Patents in an inter
Petitioner, therefore, has substantially complied with
partes proceeding, may appeal such final decision to the
Rule 45, Section 4 of the Rules of Court.
Supreme Court within thirty days from the date he
receives a copy of such decision. (Republic Act No. 165,
III section 16, as amended by section 3, Republic Act No.
864.)
Appeal is not a right but a mere privilege granted by
statute.98 It may only be exercised in accordance with the 266. Procedure on appeal to the Supreme Court.—For
law that grants it. the procedure on appeal to the Supreme Court, from the
final decisions of the Director of Patents, see sections 63
Accordingly, the Court of Appeals is not bound by the to 73, inclusive, of Republic Act No. 165 (patent law).
rules of procedure in administrative agencies. The
procedural rules of an administrative agency only govern Particularly instructive is Section 73 of Republic Act No.
proceedings within the agency. Once the Court of 165, which provides:ChanRoblesVirtualawlibrary
Appeals has given due course to an appeal from a ruling Section 73. Rules of Court applicable. — In all other
of an administrative agency, the proceedings before it matters not herein provided, the applicable provisions of
are governed by the Rules of Court. the Rules of Court shall govern.
Republic Act No. 165 has since been amended by
However, petitioner argues that intervention should not Republic Act No. 8293, otherwise known as the
have been allowed on appeal99 since the revival of a Intellectual Property Code of the Philippines (Intellectual
patent application is ex parte and is "strictly a contest Property Code), in 1997. This is the applicable law with
between the examiner and the applicant"100 under regard to the revival of petitioner's patent application.
Sections 78101 and 79102 of the 1962 Revised Rules of Section 7(7.1)(a) of the Intellectual Property Code
Practice.103 It argues that the disallowance of any states:ChanRoblesVirtualawlibrary
intervention is to ensure the confidentiality of the SECTION 7. The Director General and Deputies Director
proceedings under Sections 13 and 14 of the 1962 General. —
Revised Rules of Practice.104chanrobleslaw
7.1. Functions. — The Director General shall exercise
Respondents argue that the 1962 Revised Rules of the following powers and functions:
Practice is only applicable before the Intellectual
Property Office.105 In particular, respondent chanRoblesvirtualLawlibrary. . . .
Therapharma, Inc. argues that the issue before the Court
of Appeals was beyond the realm of patent examination b. Exercise exclusive appellate jurisdiction over all
proceedings since it did not involve the patentability of
decisions rendered by the Director of Legal Affairs, the
Director of Patents, the Director of Trademarks, and the Respondent Therapharma, Inc. was able to show that it
Director of the Documentation, Information and had legal interest to intervene in the appeal of
Technology Transfer Bureau. The decisions of the petitioner's revival of its patent application. While its
Director General in the exercise of his appellate intervention may have been premature as no patent has
jurisdiction in respect of the decisions of the Director of been granted yet, petitioner's own actions gave rise to
Patents, and the Director of Trademarks shall be respondent Therapharma, Inc.'s right to protect its
appealable to the Court of Appeals in accordance with losartan product.
the Rules of Court; and those in respect of the decisions
of the Director of Documentation, Information and Respondent Therapharma, Inc. filed an application for
Technology Transfer Bureau shall be appealable to the product registration before the Bureau of Food and
Secretary of Trade and Industry[.] (Emphasis supplied) Drugs on June 4, 2003 and was granted a Certificate of
Product Registration on January 27, 2004.111 It
Thus, it is the Rules of Court, not the 1962 Revised
conducted patent searches from October 15, 1995 and
Rules of Practice, which governs the Court of Appeals'
found that no patent application for losartan had been
proceedings in appeals from the decisions of the
filed either before the Bureau of Patents, Trademarks,
Director-General of the Intellectual Property Office
and Technology Transfer or before the Intellectual
regarding the revival of patent applications.
Property Office.112chanrobleslaw
Rule 19 of the Rules of Court provides that a court has
As early as December 11, 2003, petitioner through
the discretion to determine whether to give due course to
Merck was already sending communications threatening
an intervention. Rule 19, Section 1
legal action if respondent Therapharma, Inc. continued
states:ChanRoblesVirtualawlibrary
to develop and market losartan in the Philippines. The
RULE 19
letter stated:ChanRoblesVirtualawlibrary
INTERVENTION
Merck is strongly committed to the protection of its
valuable intellectual property rights, including the subject
SECTION 1. Who may intervene. — A person who has a
losartan patents. While fair competition by sale of
legal interest in the matter in litigation, or in the success
pharmaceutical products which are domestically
of either of the parties, or an interest against both, or is
produced legally is always welcomed by Merck and MSD
so situated as to be adversely affected by a distribution
Philippines, Merck will vigorously pursue all available
or other disposition of property in the custody of the court
legal remedies against any unauthorized manufacturer,
or of an officer thereof may, with leave of court, be
distributor or supplier of losartan in countries where its
allowed to intervene in the action. The court shall
patents are in force and where such activity is prohibited
consider whether or not the intervention will unduly delay
by law. Thus, Merck is committed to preventing the
or prejudice the adjudication of the rights of the original
distribution of losartan in the Philippines if it originates
parties, and whether or not the intervenor's rights may
from, or travels through, a country in which Merck holds
be fully protected in a separate proceeding.
patent rights.113 (Emphasis supplied)
The only questions the court need to consider in a
This letter was presented before the Court of Appeals,
motion to intervene are whether the intervenor has
which eventually granted the revival of the patent
standing to intervene, whether the motion will unduly
application in its August 31, 2004 Decision. Petitioner
delay the proceedings or prejudice rights already
had no pending patent application for its losartan product
established, and whether the intervenor's rights may be
when it threatened respondent Therapharma, Inc. with
protected in a separate action.108chanrobleslaw
legal action.114chanrobleslaw
If an administrative agency's procedural rules expressly
Respondent Therapharma, Inc. expressed its willingness
prohibit an intervention by third parties, the prohibition is
to enter into a Non-Use and Confidentiality Contract if
limited only to the proceedings before the administrative
there was a pending patent application.115 After several
agency. Once the matter is brought before the Court of
negotiations on the clauses of the contract,116 the parties
Appeals in a petition for review, any prior prohibition on
were unable to come to an agreement. In its letter dated
intervention does not apply since the only question to be
May 24, 2004,117 respondent Therapharma, Inc.
determined is whether the intervenor has established a
expressed its frustration on petitioner's refusal to give a
right to intervene under the Rules of Court.
clear answer on whether it had a pending patent
application:ChanRoblesVirtualawlibrary
In this case, respondent Therapharma, Inc. filed its
For easy reference, we have reproduced below
Motion for Leave to Intervene109 before the Court of
paragraph 5 of the Confidentiality and Non-Use
Appeals, not before the Intellectual Property Office. In
Agreement ("Confidentiality Agreement"), underscoring
assessing whether to grant the intervention, the Court of
your proposed amendment:ChanRoblesVirtualawlibrary
Appeals considered respondent Therapharma, Inc.'s
"THERAPHARMA agrees that upon receipt of
legal interest in the case and its other options for the
Specifications and Claims of Application No. 35526 or at
protection of its interests.110 This was within the
any time thereafter, before it becomes part of the public
discretion of the Court of Appeals under the Rules of
domain, through no fault of THERAPHARMA, it will not,
Court.
either directly or indirectly, alone, or through, on behalf
of, or in conjunction with any other person or entity, Director of Patents for the proper conduct of business
make use of any information contained therein, before the Office.
particularly the product covered by its claims and the The Intellectual Property Code, however, changed
equivalents thereof, in any manner whatsoever." numerous aspects of the old patent law. The Intellectual
We find your proposed insertion odd. What may be Property Code was enacted not only to amend certain
confidential, and which we agree you have every right to provisions of existing laws on trademark, patent, and
protect by way of the Confidentiality Agreement, are the copyright, but also to honor the country's commitments
Specifications and Claims in the patent application, not under the World Trade Organization - Agreement on
the product per se. The product has been in the market Trade-Related Aspects of Intellectual Property Rights
for years. Hence, how can it be confidential? Or is the (TRIPS Agreement), a treaty that entered force in the
ambiguity intended to create a legal handle because you Philippines on January 1, 1995.122chanrobleslaw
have no cause of action against us should we launch our
own version of the losartan product? The mandatory disclosure requirement in the TRIPS
Agreement123 precipitated the shift from a first-to-invent
. . . . system to a first-to-file system. The first-to-file system
required citizens of foreign countries to register their
Finally, the questions we posed in our previous letters patents in the Philippines before they can sue for
are plain and simple — Is the Philippine Patent infringement.124chanrobleslaw
Application No. 35526 still pending before the IPO, i.e., it
has neither been withdrawn by your licensor nor denied Lawmakers, however, expressed their concern over the
registration by the IPO for any reason whatsoever? extension of the period of protection for registered
When did your licensor file said application with the patents.125 Under Section 21126 of Republic Act No. 165,
IPO? These questions are easy to answer, unless there a patent had a term of 17 years. The Intellectual
is an intention to mislead. You are also aware that the Property Code extended the period to 20
IPO is the only government agency that can grant letters years.127chanrobleslaw
patent. This is why we find disturbing your statement that
the pendency of the patent application before the IPO is During the interpellations before the House of
"not relevant". Hence, unless we receive unequivocal Representatives, then Representative Neptali Gonzales
answers to the questions above, we regret that we II (Gonzales) explained that under the Intellectual
cannot agree to execute the Confidentiality Agreement; Property Code, the period of protection would have been
otherwise, we may be acknowledging by contract a right shortened because of the publication
that you do not have, and never will have, by requirement:ChanRoblesVirtualawlibrary
law.118 (Emphasis and underscoring in the original) MR. TAÑADA. Under the proposed measure, Your
Honor, what is the period of protection that is given to
The threat of legal action against respondent
the holder of the patent registered?
Therapharma, Inc. was real and imminent. If respondent
Therapharma, Inc. waited until petitioner was granted a
MR. GONZALES. Seventeen years from grant of patent,
patent application so it could file a petition for
Mr. Speaker. Unlike before . . .
compulsory licensing and petition for cancellation of
patent under Section 240119 and Section 247120 of the
MR. TAÑADA. Under the present law, Mr. Speaker.
1962 Revised Rules of Practice,121 its continued
marketing of Lifezar would be considered as an
MR. GONZALES. I mean 17 years from filing, Mr.
infringement of petitioner's patent.
Speaker, unlike before which is 20 years from grant.
Okay.
Even assuming that the Intellectual Property Office
granted the revival of Philippine Patent Application No.
I am sorry, Mr. Speaker. Seventeen years from filing
35526 back in 2000, petitioner's claim of absolute
under the existing law, 20 years from grant under the
confidentiality in patent proceedings is inaccurate.
proposed measure. It would appear, Mr. Speaker, that
the proposed measure seeks to extend the grant of the
In the 1962 Revised Rules of Practice, the Bureau of
patent.
Patents, Trademarks, and Technology Transfer
previously required secrecy in pending patent
MR. TAÑADA. But you have made the period of
applications. Section 13
protection longer, Mr. Speaker.
states:ChanRoblesVirtualawlibrary
13. Pending applications are preserved in secrecy. —
MR. GONZALES. On the contrary, Mr. Speaker, when a
No information will be given to anyone respecting the
similar question was previously propounded before,
filing by any particular person of any application for a
actually Mr. Speaker, it may decrease in fact the period
patent, the pendency of any particular case before the
of protection, Mr. Speaker. Because unlike before 17
Office, or the subject matter of any particular application,
years from grant, Mr. Speaker, now 20 years from
unless the same is authorized by the applicant in writing,
application or from filing but actually, Mr. Speaker, it
and unless it shall be necessary, in the opinion of the
normally takes three to four years before a patent is
actually granted even under the proposed measure.
Because as you can see[,] publication in the BPTTT would require the filing of a description of the invention
Gazette would even taken place after 18 months from that can be carried out by a person similarly trained in
filing. In other words, the procedure itself is such a the arts and sciences as that of the patent
manner that normally takes a period of about three years holder.129chanroblesvirtuallawlibrary
to finally grant the patent. So even if 20 years is given Thus, the absolute secrecy required by the 1962
from the time of filing actually in essence it will be the Revised Rules of Practice would not be applicable to a
same, Mr. Speaker, because under the existing law 17 patent application before the Intellectual Property Office.
years from grant. But even under our existing law from Section 13 of the 1962 Revised Rules of Practice does
the time that a patent application is filed it also takes not appear in the Intellectual Property Code,130 in the
about three to four years, Mr. Speaker, to grant the Rules and Regulations on Inventions,131 or in the
same. Revised Implementing Rules and Regulations for
Patents, Utility Models and Industrial Design.132 The
Now, why from filing, Mr. Speaker? Because the patent Intellectual Property Code now states that all patent
holder applicant is now required to publish in a manner applications must be published in the Intellectual
easily understood by a person trained or with the same Property Office Gazette and that any interested
skill as that of a patent holder. And from that time this is party may inspect all documents submitted to the
published, this process covered by the patent is already Intellectual Property Office. The patent application is only
made available. In fact, from the time that it is published, confidential before its publication. Sections 44 and 45 of
any interested person may even examine and go over the Intellectual Property Code
the records as filed with the BPTTT and, therefore, this provide:ChanRoblesVirtualawlibrary
new technology or new invention is now made available SECTION 44. Publication of Patent Application. —
to persons equipped or possessed with the same skills
as that of the patent holder. And that is the reason why 44.1. The patent application shall be published in the
the patent is — the time of the patent is now tacked from IPO Gazette together with a search document
the time it is filed because as a compromise it is now established by or on behalf of the Office citing any
mandatory to publish the said patent together with its documents that reflect prior art, after the expiration of
description - the description of the process and even eighteen (18) months from the filing date or priority date.
would, at times demand the deposit of sample of the
industrial design, Mr. 44.2. After publication of a patent application, any
Speaker.128chanroblesvirtuallawlibrary interested party may inspect the application documents
Gonzales further clarified that the publication filed with the Office.
requirements of the Intellectual Property Code would
necessarily shorten the period for confidentiality of 44.3. The Director General, subject to the approval of the
patent applications:ChanRoblesVirtualawlibrary Secretary of Trade and Industry, may prohibit or restrict
MR. MONFORT. Now, another question is, (another is) the publication of an application, if in his opinion, to do
you know, the time from the filing of the date up to so would be prejudicial to the national security and
publication which is the period of pendency or interests of the Republic of the Philippines. (n)
confidentiality, may I know how many years will it take,
that confidentiality period, variability. SECTION 45. Confidentiality Before Publication. — A
patent application, which has not yet been published,
MR. GONZALES. Eighteen months, Mr. Speaker. and all related documents, shall not be made available
for inspection without the consent of the applicant.
MR. MONFORT. How many? It was inaccurate, therefore, for petitioner to argue that
secrecy in patent applications prevents any intervention
MR. GONZALES. Eighteen months. from interested parties. The confidentiality in patent
applications under the Intellectual Property Code is not
MR. MONFORT. I do not think it is 18 months. absolute since a party may already intervene after the
publication of the application.
MR. GONZALES. It is provided for in the law, Mr.
Speaker, because prior to the publication, naturally, the
IV
records become confidential because the essence of a
patent, trademark, or copyright is to give the author or
An abandoned patent application may only be revived
the inventor exclusive right to work on his own invention.
within four (4) months from the date of abandonment. No
And that is his invention, and naturally, it is but right that
extension of this period is provided by the 1962 Revised
he should have the exclusive right over his invention.
Rules of Practice. Section 113
states:ChanRoblesVirtualawlibrary
On the other hand, the law requires that after 18 months,
113. Revival of abandoned application. — An application
it should now be published. When it is now published,
abandoned for failure to prosecute may be revived as a
naturally, it ceases to be confidential in character
pending application if it is shown to the satisfaction of the
because it is now ready for examination. It is now ready
Director that the delay was unavoidable. An abandoned
for possible copying of any interested person because
application may be revived as a pending application
the application, as we have repeatedly said on the floor,
within four months from the date of abandonment upon Rules and Regulations on Inventions, and Rule 929 of
good cause shown and upon the payment of the the Revised Implementing Rules and Regulations for
required fee of P25. An application not revived within the Patents, Utility Models and Industrial Design. The period
specified period shall be deemed forfeited. of four (4) months from the date of abandonment,
however, remains unchanged. The Intellectual Property
Petitioner argues that it was not negligent in the
Code even provides for a shorter period of three (3)
prosecution of its patent application133 since it was Atty.
months within which to file for
Mapili or his heirs who failed to inform it of crucial
revival:ChanRoblesVirtualawlibrary
developments with regard to its patent application.134 It
SECTION 133. Examination and Publication. —
argues that as a client in a foreign country, it does not
have immediate supervision over its local counsel so it
. . . .
should not be bound by its counsel's negligence. 135 In
any case, it complied with all the requirements for the
133.4. An abandoned application may be revived as a
revival of an abandoned application under Rule 113 of
pending application within three (3) months from the date
the 1962 Revised Rules of Practice.136chanrobleslaw
of abandonment, upon good cause shown and the
payment of the required fee.
Respondents, on the other hand, argue that petitioner
was inexcusably and grossly negligent in the prosecution Rule 930 of the Rules and Regulations on Inventions
of its patent application since it allowed eight (8) years to provides:ChanRoblesVirtualawlibrary
pass before asking for a status update on its Rule 930. Revival of application. - An application
application.137 Respondent Intellectual Property Office deemed withdrawn for failure to prosecute may be
argues that petitioner's inaction for eight (8) years revived as a pending application within a period of four
constitutes actual abandonment.138 It also points out that (4) months from the mailing date of the notice of
from the time petitioner submitted its new Special Power withdrawal if it is shown to the satisfaction of the Director
of Attorney on September 29, 1996, it took them another that the failure was due to fraud, accident, mistake or
four (4) years to request a status update on its excusable negligence.
application.139chanrobleslaw
A petition to revive an application deemed withdrawn
Under Chapter VII, Section 111(a) of the 1962 Revised must be accompanied by (1) a showing of the cause of
Rules of Practice, a patent application is deemed the failure to prosecute, (2) a complete proposed
abandoned if the applicant fails to prosecute the response, and (3) the required fee.
application within four months from the date of
the mailing of the notice of the last action by the Bureau An application not revived in accordance with this rule
of Patents, Trademarks, and Technology Transfer, and shall be deemed forfeited.
not from applicant's actual notice. Section 111 (a) Rule 929 of the Revised Implementing Rules and
states:ChanRoblesVirtualawlibrary Regulations for Patents, Utility Models and Industrial
Chapter VII Design provides:ChanRoblesVirtualawlibrary
TIME FOR RESPONSE BY APPLICANT; Rule 929. Revival of Application. - An application
ABANDONMENT OF APPLICATION deemed withdrawn for failure to prosecute may be
revived as a pending application within a period of four
111. Abandonment for failure to respond within the time (4) months from the mailing date of the notice of
limit. — (a) If an applicant fails to prosecute his withdrawal if it is shown to the satisfaction of the Director
application within four months after the date when the that the failure was due to fraud, accident, mistake, or
last official notice of action by the Office was mailed to excusable negligence.
him, or within such time as may be fixed (rule 112), the
application will become abandoned. A petition to revive an application deemed withdrawn
According to the records of the Bureau of Patents, shall be accompanied by:
Trademarks, and Technology Transfer Chemical
Examining Division, petitioner filed Philippine Patent chanRoblesvirtualLawlibrary(a) A showing of a justifiable
Application No. 35526 on July 10, 1987. It was assigned reason for the failure to prosecute;
to an examiner on June 7, 1988. An Office Action was (b) A complete proposed response; and
mailed to petitioner's agent, Atty. Mapili, on July 19, (c) Full payment of the required fee.
1988. Because petitioner failed to respond within the
allowable period, the application was deemed No revival shall be granted to an application that has
abandoned on September 20, 1988.140 Under Section been previously revived with cost.
113, petitioner had until January 20, 1989 to file for a
revival of the patent application. Its Petition for Revival, An application not revived in accordance with this Rule
however, was filed on May 30, 2002,14113 years after the shall be deemed forfeited.
date of abandonment. Even if the delay was unavoidable, or the failure to
prosecute was due to fraud, accident, mistake, or
Section 113 has since been superseded by Section excusable negligence, or the Petition was accompanied
133.4 of the Intellectual Property Code, Rule 930 of the by a complete proposed response, or all fees were paid,
the Petition would still be denied since these regulations 1996.148 Despite the immediate action in the substitution
only provide a four (4)-month period within which to file of its resident agent, it only requested a status update of
for the revival of the application. The rules do not Philippine Patent Application No. 35526 from the
provide any exception that could extend this four (4)- Intellectual Property Office on December 14, 2000,149 or
month period to 13 years. four (4) years after it learned of Atty. Mapili's death.

Petitioner's patent application, therefore, should not be Petitioner attempts to explain that it took them four (4)
revived since it was filed beyond the allowable period. years to request a status update because the Bureau of
Patents, Trademarks, and Technology Transfer failed to
V take any action when it submitted its Power of Attorney
and Appointment of Resident Agent in favor of Bito,
Even assuming that the four (4)-month period could be Lozada, Ortega & Castillo.150 The Power of Attorney,
extended, petitioner was inexcusably negligent in the however, shows that it was only to inform the Bureau
prosecution of its patent application. that all notices relating to its pending patent applications
should be sent to it. Philippine Patent Application No.
Negligence is inexcusable if its commission could have 35526 was declared abandoned on September 20, 1988.
been avoided through ordinary diligence and As far as the Bureau was concerned, it was a forfeited
prudence.142 It is also settled that negligence of counsel application that had already been archived. It was not
binds the client as this "ensures against the resulting the Bureau's duty to resurrect previous notices of
uncertainty and tentativeness of proceedings if clients forfeited and abandoned applications to be sent to new
were allowed to merely disown their counsels' resident agents unless a specific status update was
conduct."143chanrobleslaw requested. Considering that petitioner only requested a
status update on December 14, 2000, it was only then
Petitioner's resident agent, Atty. Mapili, was undoubtedly that the Intellectual Property Office would start sending
negligent in failing to respond to the Office Action sent by notices to it.
the Bureau of Patents, Trademarks, and Technology
Transfer on June 19, 1988. Because of his negligence, Contrary to the posturing of petitioner, Schuartz is
petitioner's patent application was declared abandoned. applicable.
He was again negligent when he failed to revive the
abandoned application within four (4) months from the In Schuartz, several foreign inventors seeking to file
date of abandonment. patent applications in the Philippines hired the law firm
Siguion Reyna, Montecillo and Ongsiako to process their
Petitioner tries to disown Atty. Mapili's conduct by applications.151 The Bureau of Patents, Trademarks, and
arguing that it was not informed of the abandonment of Technology Transfer mailed the law firm several notices
its patent application or of Atty. Mapili's death. By its of abandonment on its patent applications from June
own evidence, however, petitioner requested a status 1987 to September 1987. The law firm only found out
update from Atty. Mapili only on July 18, 1995, eight (8) about this in December 1987, after it dismissed two (2)
years after the filing of its application.144It alleged that it of its employees in charge of handling correspondences
only found out about Atty. Mapili's death sometime in from the Bureau.152 The law firm filed petitions for revival
March 1996, as a result of its senior patent attorney's of its patent applications from March 1988, all of which
visit to the Philippines.145 Although it was in petitioner's were denied by the Director of the Bureau of Patents for
discretion as a foreign client to put its complete trust and being filed out of time.153 An appeal was subsequently
confidence on its local resident agent, there was a filed before the Court of Appeals but was dismissed for
correlative duty on its part to be diligent in keeping itself being filed beyond the reglementary
updated on the progress of its patent applications. Its period.154chanrobleslaw
failure to be informed of the abandonment of its patent
application was caused by its own lack of prudence. This Court found that although the Court of Appeals may
have erred in counting the period for appeal, it could not
In Bernardo v. Court of Appeals,146 "[n]o prudent party grant the Petition. This Court
will leave the fate of his case entirely to his lawyer . . . . It stated:ChanRoblesVirtualawlibrary
is the duty of a party-litigant to be in contact with his [Petitioners lost sight of the fact that the petition could
counsel from time to time in order to be informed of the not be granted because of laches. Prior to the filing of
progress of his case."147chanrobleslaw the petition for revival of the patent application with the
Bureau of Patents, an unreasonable period of time had
Even if Atty. Mapili's death prevented petitioner from lapsed due to the negligence of petitioners' counsel. By
submitting a petition for revival on time, it was clearly such inaction, petitioners were deemed to have forfeited
negligent when it subsequently failed to immediately their right to revive their applications for patent.
apprise itself of the status of its patent application.
Facts show that the patent attorneys appointed to follow
Upon learning of Atty. Mapili's death, petitioner issued a up the applications for patent registration had been
Power of Attorney and Appointment of Resident Agent in negligent in complying with the rules of practice
favor of Bito, Lozada, Ortega & Castillo on March 25, prescribed by the Bureau of Patents. The firm had been
notified about the abandonment as early as June 1987, right of priority is given to any patent applicant who has
but it was only after December 7, 1987, when their previously applied for a patent in a country that grants
employees Bangkas and Rosas had been dismissed, the same privilege to Filipinos. Section 31
that they came to know about it. This clearly showed that states:ChanRoblesVirtualawlibrary
petitioners' counsel had been remiss in the handling of SECTION 31. Right of Priority. — An application for
their clients' applications. patent filed by any person who has previously applied for
the same invention in another country which by treaty,
"A lawyer's fidelity to the cause of his client requires him convention, or law affords similar privileges to Filipino
to be ever mindful of the responsibilities that should be citizens, shall be considered as filed as of the date of
expected of him. A lawyer shall not neglect a legal filing the foreign application: Provided, That:
matter entrusted to him." In the instant case, petitioners'
patent attorneys not only failed to take notice of the chanRoblesvirtualLawlibrarya. the local application
notices of abandonment, but they failed to revive the expressly claims priority;
application within the four-month period, as provided in
the rules of practice in patent cases. These applications b. it is filed within twelve (12) months from the date the
are deemed forfeited upon the lapse of such earliest foreign application was filed;
period.155 (Emphasis supplied) and cralawlawlibrary
Petitioner attempts to distinguish itself from Schuartz by
c. a certified copy of the foreign application together with
arguing that the petitioners in Schuartz had actual notice
an English translation is filed within six (6) months from
of abandonment while petitioner here was only able to
the date of filing in the Philippines.
have actual notice when it received Paper No. 2.
A patent applicant with the right of priority is given
The four (4)-month period in Section 111156 of the 1962 preference in the grant of a patent when there are two or
Revised Rules of Practice, however, is not counted more applicants for the same invention. Section 29 of the
from actual notice of abandonment but from mailing of Intellectual Property Code
the notice. Since it appears from the Intellectual Property provides:ChanRoblesVirtualawlibrary
Office's records that a notice of abandonment was SECTION 29. First to File Rule. — If two (2) or more
mailed to petitioner's resident agent on July 19, persons have made the invention separately and
1988,157 the time for taking action is counted from this independently of each other, the right to the patent shall
period. Petitioner's patent application cannot be revived belong to the person who filed an application for such
simply because the period for revival has already lapsed invention, or where two or more applications are filed for
and no extension of this period is provided for by the the same invention, to the applicant who has the earliest
1962 Revised Rules of Practice. filing date or, the earliest priority date.
Since both the United States162 and the Philippines163 are
VI signatories to the Paris Convention for the Protection of
Industrial Property, an applicant who has filed a patent
The right of priority given to a patent applicant is only application in the United States may have a right of
relevant when there are two or more conflicting patent priority over the same invention in a patent application in
applications on the same invention. Because a right of the Philippines.164 However, this right of priority does not
priority does not automatically grant letters patent to an immediately entitle a patent applicant the grant of a
applicant, possession of a right of priority does not patent. A right of priority is not equivalent to a patent.
confer any property rights on the applicant in the Otherwise, a patent holder of any member-state of the
absence of an actual patent. Paris Convention need not apply for patents in other
countries where it wishes to exercise its patent.
Petitioner argues that its patent application was filed on
July 10, 1987, within 12 months from the prior filing of a It was, therefore, inaccurate for petitioner to argue that
U.S. patent application on July 11, 1986.158 It argues that its prior patent application in the United States removed
it is protected from becoming part of the public domain the invention from the public domain in the Philippines.
because of convention priority under the Paris This argument is only relevant if respondent
Convention for the Protection of Industrial Property and Therapharma, Inc. had a conflicting patent application
Section 9 of Republic Act No. 165.159chanrobleslaw with the Intellectual Property Office. A right of priority has
no bearing in a case for revival of an abandoned patent
Respondent Therapharma, Inc., on the other hand, application.
argues that a mere patent application does not vest any
right in the applicant before the issuance of the VII
patent.160 It argues that the "priority date" argued by
petitioner is only relevant in determining who has a The grant of a patent is to provide protection to any
better right to the patent among the other applicants who inventor from any patent infringement.165 Once an
subsequently apply for the same invention is disclosed to the public, only the patent
invention.161chanrobleslaw holder has the exclusive right to manufacture, utilize, and
Under Section 31 of the Intellectual Property Code, a
market the invention.166 In Creser Precision Systems v. his invention secret and reap its fruits indefinitely. In
Court of Appeals:167 consideration of its disclosure and the consequent
Under American jurisprudence, an inventor has no benefit to the community, the patent is granted. An
common-law right to a monopoly of his invention. He has exclusive enjoyment is guaranteed him for 17 years, but
the right to make, use and vend his own invention, but if upon the expiration of that period, the knowledge of the
he voluntarily discloses it, such as by offering it for sale, invention inures to the people, who are thus enabled to
the world is free to copy and use it with impunity. A practice it and profit by its use."
patent, however, gives the inventor the right to exclude The patent law has a three-fold purpose: "first, patent
all others. As a patentee, he has the exclusive right of law seeks to foster and reward invention; second, it
making, using or selling the promotes disclosures of inventions to stimulate further
invention.168chanroblesvirtuallawlibrary innovation and to permit the public to practice the
Under the Intellectual Property Code, a patent holder invention once the patent expires; third, the stringent
has the right to "to restrain, prohibit and prevent"169 any requirements for patent protection, seek to ensure that
unauthorized person or entity from manufacturing, ideas in the public domain remain therefor the free use
selling, or importing any product derived from the patent. of the public."
However, after a patent is granted and published in the
Intellectual Property Office Gazette,170 any interested It is only after an exhaustive examination by the patent
third party "may inspect the complete description, claims, office that a patent is issued. Such an in-depth
and drawings of the patent."171chanrobleslaw investigation is required because "in rewarding a useful
invention, the rights and welfare of the community must
The grant of a patent provides protection to the patent be fairly dealt with and effectively guarded. To that end,
holder from the indiscriminate use of the invention. the prerequisites to obtaining a patent are strictly
However, its mandatory publication also has the observed and when a patent is issued, the limitations on
correlative effect of bringing new ideas into the public its exercise are equally strictly enforced. To begin with, a
consciousness. After the publication of the patent, any genuine invention or discovery must be demonstrated
person may examine the invention and develop it into lest in the constant demand for new appliances, the
something further than what the original patent holder heavy hand of tribute be laid on each slight technological
may have envisioned. After the lapse of 20 years,172 the advance in art."174 (Emphasis supplied)
invention becomes part of the public domain and is free In addition, a patent holder of inventions relating to food
for the public to use. In Pearl and Dean v. Shoemart, or medicine does not enjoy absolute monopoly over the
Inc.:173 patent. Both Republic Act No. 165 and the Intellectual
To be able to effectively and legally preclude others from Property Code provide for compulsory licensing.
copying and profiting from the invention, a patent is a Compulsory licensing is defined in the Intellectual
primordial requirement. No patent, no protection. The Property Code as the "grant a license to exploit a
ultimate goal of a patent system is to bring new designs patented invention, even without the agreement of the
and technologies into the public domain through patent owner."175chanrobleslaw
disclosure. Ideas, once disclosed to the public without
the protection of a valid patent, are subject to Under Republic Act No. 165, a compulsory license may
appropriation without significant restraint. be granted to any applicant three (3) years after the
grant of a patent if the invention relates to food or
On one side of the coin is the public which will benefit medicine necessary for public health or
from new ideas; on the other are the inventors who must safety.176 In Smith Kline & French Laboratories, Ltd. vs.
be protected. As held in Bauer & Cie vs. O'Donnell, "The Court of Appeals:177
act secured to the inventor the exclusive right to make Section 34 of R.A. No. 165, even if the Act was enacted
use, and vend the thing patented, and consequently to prior to the Philippines' adhesion to the [Paris]
prevent others from exercising like privileges without the Convention, fits well within the aforequoted provisions of
consent of the patentee. It was passed for the purpose of Article 5 of the Paris Convention. In the explanatory note
encouraging useful invention and promoting new and of Bill No. 1156 which eventually became R.A. No. 165,
useful inventions by the protection and stimulation new the legislative intent in the grant of a compulsory license
and useful inventions by the protection and stimulation was not only to afford others an opportunity to provide
given to inventive genius, and was intended to secure to the public with the quantity of the patented product, but
the public, after the lapse of the exclusive privileges also to prevent the growth of monopolies. Certainly, the
granted the benefit of such inventions and growth of monopolies was among the abuses which
improvements." Section A, Article 5 of the Convention foresaw, and
which our Congress likewise wished to prevent in
The law attempts to strike an ideal balance between the enacting R.A. No. 165.178chanroblesvirtuallawlibrary
two interests:ChanRoblesVirtualawlibrary
"(The p)atent system thus embodies a carefully crafted The patent holder's proprietary right over the patent only
bargain for encouraging the creation and disclosure of lasts for three (3) years from the grant of the patent, after
new useful and non-obvious advances in technology and which any person may be allowed to manufacture, use,
design, in return for the exclusive right to practice the or sell the invention subject to the payment of
invention for a number of years. The inventor may keep royalties:ChanRoblesVirtualawlibrary
The right to exclude others from the manufacturing, PRICE PRICE
using, or vending an invention relating to food or  As of  Within one
medicine should be conditioned to allowing any person Lifezar's month from
to manufacture, use, or vend the same after a period of first entry Lifezar's
three years from the date of the grant of the letters into the entry or by
patent. After all, the patentee is not entirely deprived of market on July 4, 2004
any proprietary right. In fact, he has been given the June 4,
period of three years of complete monopoly over the 2004
patent. Compulsory licensing of a patent on food or
medicine without regard to the other conditions imposed 50 mg - 50mg -
LIFEZAR Therapharma
in Section 34 is not an undue deprivation of proprietary P20.20 P20.20
interests over a patent right because the law sees to it
that even after three years of complete monopoly 50mg - 50mg -
something is awarded to the inventor in the form of a P39.50 P39.50
COZAAR Merck
bilateral and workable licensing agreement and a  100mg -  100 -
reasonable royalty to be agreed upon by the parties and P55.00 P44.00
in default of such agreement, the Director of Patent may Respondent Therapharma, Inc. also presented figures
fix the terms and conditions of the showing that there was a 44% increase in the number of
license.179chanroblesvirtuallawlibrary losartan units sold within five (5) months of its entry into
the market.190 More Filipinos are able to purchase
A patent is a monopoly granted only for specific
losartan products when there are two (2) different
purposes and objectives. Thus, its procedures must be
players providing competitive prices in the market.
complied with to attain its social objective. Any request
for leniency in its procedures should be taken in this
Lifezar, and another of respondent Therapharma, Inc.'s
context. Petitioner, however, has failed to convince this
products, Combizar, have also been recommended as
court that the revival of its patent application would have
cheaper alternative losartan medication, since they were
a significant impact on the pharmaceutical industry.
priced "50 percent less than foreign
brands."191chanrobleslaw
Hypertension, or high blood pressure, is considered a
"major risk factor for cardiovascular disease"180 such as
Public interest will be prejudiced if, despite petitioner's
"heart disease, stroke, kidney failure and
inexcusable negligence, its Petition for Revival is
blindness."181 In a study conducted by the World Health
granted. Even without a pending patent application and
Organization, 25% of adults aged 21 years and older in
the absence of any exception to extend the period for
the Philippines suffer from high blood
revival, petitioner was already threatening to pursue
pressure.182 According to the Department of Health,
legal action against respondent Therapharma, Inc. if it
heart disease remains the leading cause of mortality in
continued to develop and market its losartan product,
the Philippines.183 Angiotensin II Receptor Blocking
Lifezar.192 Once petitioner is granted a patent for its
Imidazole or "losartan" is one of the medications used for
losartan products, Cozaar and Hyzaar, the loss of
the treatment of hypertension.184chanrobleslaw
competition in the market for losartan products may
result in higher prices. For the protection of public
In a study conducted by the Philippine Institute for
interest, Philippine Patent Application No. 35526 should
Development Studies, "affordability of drugs remains a
be considered a forfeited patent application.
serious problem"185 in the Philippines. It found that
because of the cost of drugs, accessibility to drugs
WHEREFORE, the Petition is DENIED. The Resolution
become prohibitive for the lowest-earning households
dated January 31, 2006 and the Amended Decision
and are "even more prohibitive for the unemployed and
dated August 30, 2006 of the Court of Appeals
indigent."186 Several measures have been enacted by the
are AFFIRMED.
government to address the high costs of medicine,
among them, parallel drug importation187 and the
passage of Republic Act No. 9502, otherwise known as
the Universally Accessible Cheaper and Quality
Medicines Act of 2008.188 Figures submitted by
respondent Therapharma, Inc., however, also show that
the presence of competition in the local pharmaceutical
market may ensure the public access to cheaper
medicines.

According to respondent Therapharma, Inc., the retail

price of petitioner's losartan product, Cozaar, decreased
within one (1) month of respondent Therapharma, Inc.'s
entry into the market:189
BRAND TRADER RETAIL RETAIL
 for a period of 5 years
from October 6, 1971)

2. UM-450 (extended
and/or renewed under
Extension No. UM110
for a period of 5 years
from January 26, 1972)

3. UM 1184, for a period

of 5years fromApril 5,
1974.(Petition, Rollo,
pp. 6-7).

In a letter dated July 10, 1974 (Annex "D", Rollo, p. 86),

petitioner informed private respondent that the powder
puffs the latter is manufacturing and selling to various
enterprises particularly those in the cosmetics industry,
resemble Identical or substantially Identical powder puffs
of which the former is a patent holder under Registration
Certification Nos. Extension UM-109, Extension UM-110
and Utility Model No. 1184; petitioner explained such
production and sale constitute infringement of said
patents and therefore its immediate discontinuance is
demanded, otherwise it will be compelled to take judicial
action. (Rollo, pp. 7-8).
G.R. L-45101 November 28, 1986
Private respondent replied stating that her products are
ROSARIO C. MAGUAN (formerly ROSARIO C. different and countered that petitioner's patents are void
TAN), petitioner, because the utility models applied for were not new and
vs. patentable and the person to whom the patents were
THE HONORABLE COURT OF APPEALS and issued was not the true and actual author nor were her
SUSANA LUCHAN, respondents. rights derived from such author. (Taken from allegations
in the Answer, par. 4, Rollo, p. 93). And on July 25,
PARAS, J.:p 1974, private respondent assailed the validity of the
patents involved and filed with the Philippine Patent
Submitted on December 9, 1977 for Our decision is this Office petitions for cancellation of (1) Utility Model Letter
petition for review on certiorari of the two Resolutions of Patent Extension No. UM-109 (Inter Partes Case No.
the Court of Appeals, the first dated July 6, 1976, setting 838, Susana Luchan v. Rosario C. Tan), (2) Utility Model
aside its Decision of February 16, 1976 in CA-G.R. No. Letters Patent No. UM-1184 (Inter Partes Case No. 839,
SP-04706, titled "SUSANA LUCHAN v. Hon. Susana Luchan v. Rosario C. Tan), (3) Utility Model
HONRADO, et al."  wherein it ruled for the dismissal of Letters Patent Extension No. UM-110 (Inter Partes Case
the petition for lack of merit and at the same time No. 840, Susana Luchan v. Rosario C. Tan. (Taken from
nullifying the writ of preliminary injunction it had allegations in the Answer, par. 10, Rollo, pp. 94-95).
previously issued; and the second, dated November 4,
1976, denying the motion for reconsideration of the first In view thereof, petitioner, on August 24, 1974, filed a
resolution above-mentioned. complaint for damages with injunction and preliminary
injunction against private respondent with the then Court
Petitioner is doing business under the firm name and of First Instance of Rizal, Pasig Branch, docketed as
style of SWAN MANUFACTURING" while private Civil Case No. 19908, for infringing the aforesaid letters
respondent is likewise doing business under the firm patent, and prayed, among others, that a writ of
name and style of "SUSANA LUCHAN POWDER PUFF preliminary injunction be immediately issued (Complaint,
MANUFACTURING." Rollo, p. 90).

It is undisputed that petitioner is a patent holder of In her answer, private respondent alleged that the
powder puff namely: products she is manufacturing and offering for sale are
not Identical, or even only substantially Identical to the
products covered by petitioner's patents and, by way of
1. UM-423 (extended affirmative defenses, further alleged that petitioner's
and/or renewed under patents in question are void on the following grounds:
Extension No. UM-109
 (1) at the time of filing of no one except to the
application for the general public; (Answer,
patents involved, the Rollo, pp. 93-94).
utility models applied for
were not new and On September 18, 1974, the trial court issued an Order
patentable under Sec. (Annex "K", Rollo, p. 125) granting the preliminary
55 of R.A. 165, as injunction prayed for by petitioner. Consequently, the
amended by R.A. 864; corresponding writ was subsequently issued (Annex "K-
and 1", Rollo, p. 131) enjoining the herein private respondent
(then defendant) and all other persons employed by her,
(2) the person to whom her agents, servants and employees from directly or
the patents were issued indirectly manufacturing, making or causing to be made,
was not the true and selling or causing to be sold, or using or causing to be
actual author of the used in accordance with, or embodying the utility models
utility models applied of the Philippine Patent Office Utility Model Letters
for, and neither did she Patent Nos. 423 (Extension No. UM-109), No. 450
derive her rights from (Extension No. UM-110), and Utility Model No. 1184 or
any true and actual from infringement upon or violating said letters patent in
author of these utility any way whatsoever (Annex " K-1 ", Rollo, p. 131).
models.
Private respondent questioned the propriety of the trial
for the following reasons: court's issuance of the Writ of Preliminary Injunction
arguing that since there is still a pending cancellation
(a) since years prior to proceedings before the Philippine Patent Office
the filing of applications concerning petitioner's patents, such cannot be the basis
for the patents involved, for preliminary injunction (Motion for Reconsideration,
powder puffs of the kind Rollo, p. 132).
applied for were then
already existing and In an Order dated September 11, 1975, the trial court
publicly being sold in denied private respondent's motion for reconsideration
the market; both in the (Annex "N", Rollo, p. 142).
Philippines and abroad;
and In challenging these Orders private respondent filed a
petition for certiorari with the respondent court on
(b) applicant's claims in September 29, 1975 (Annex "D", Rollo, pp. 148-171)
her applications, of reiterating among other things the invalidity of
"construction" or petitioner's patents and prayed that the trial court be
process of restrained from enforcing or continuing to enforce the
manufacturing the utility following:
models applied for, with
respect to UM-423 and (1) Order dated
UM-450, were but a September 18, 1974,
complicated and granting the preliminary
impractical version of an injunction;
old, simple one which
has been well known to (2) Writ of preliminary
the cosmetics industry injunction dated
since years previous to September 18, 1974;
her filing of applications, and
and which belonged to
no one except to the
general public; and with (3) Order dated
respect to UM1184; her September 11, 1974
claim in her application denying petitioner's
of a unitary powder puff, motion petition for
was but an limitation of reconsideration.
a product well known to
the cosmetics industry On October 15, 1975, the Writ of Preliminary Injunction
since years previous to was issued by the respondent Court of Appeals as
her firing of application, follows:
and which belonged to
 NOW, THEREFORE, you, respondents, RESPONDENT JUDGE
and/or any person/persons acting on THAT HE HAS NO
your stead, are hereby ENJOINED to JURISDICTION TO
RESTRAIN from enforcing or continuing INVALIDATE THE
to enforce, the proceedings complained PATENTS UPON
of in the petition to wit: 1) Order dated GROUND OF LACK OF
September 18, 1974, granting the NOVELTY OF THE
preliminary injunction; 2) Writ of PRODUCTS
Preliminary Injunction dated September PATENTED. (Motion for
18, 1974; and Order dated September Reconsideration, Rollo,
11, 1975, denying petitioner's motion for p. 190).
reconsideration, all issued in connection
with Civil Case No. 19908, UNTIL Reviewing on reconsideration, respondent court gave
FURTHER ORDERS FROM THIS weight to private respondent's allegation that the latter's
COURT. (Annex "P", Rollo, p. 1.73) products are not identical or even only substantially
identical to the products covered by petitioner's patents.
On February 16, 1976, respondent court promulgated a Said court noticed that contrary to the lower courts
decision the dispositive portion of which reads: position that the court a quo had no jurisdiction to
determine the question of invalidity of the patents,
WHEREFORE, finding no merit in the Section 45 and 46 of the Patent Law allow the court to
herein petition, the same is hereby make a finding on the validity or invalidity of patents and
dismissed and the preliminary injunction in the event there exists a fair question of its invalidity,
previously issued by this Court is hereby the situation calls for a denial of the writ of preliminary
set aside, with costs. injunction pending the evaluation of the evidence
presented (Rollo, pp. 218-226). Thus, finding the lower
court's position to have been opposed to Patent Law,
SO ORDERED. (CA Decision, Rollo, p.
respondent court considered it a grave abuse of
189).
discretion when the court a quo issued the writ being
questioned without looking into the defenses alleged by
ln said decision respondent court stated that in disposing herein private respondent. Further, it considered the
of the petition it tackled only the issue of whether the remedy of appeal, under the circumstances, to be
court a quo  acted with grave abuse of discretion in inadequate.
issuing the challenged orders. It made clear the question
of whether the patents have been infringed or not was
Thus, on July 6, 1976, respondent court made a
not determined considering the court a quo has yet to
complete turnabout from its original decision and
decide the case on the merits (Ibid., p. 186).
promulgated a Resolution, the dispositive portion of
which reads:
Feeling aggrieved, private respondent moved to
reconsider the afore-mentioned Decision based on the
WHEREFORE, our decision is hereby
following grounds:
set aside. The writ of certiorari is
ordered issued. Accordingly, the
I challenged orders, Exhibit H and H-1
and the order denying the motion for
THAT THIS reconsideration (Annex "K", Petition),
HONORABLE COURT are hereby set aside. The writ of
ERRED IN NOT preliminary injunction previously ordered
APPRECIATING THE by this Court and ordered lifted by the
EXISTENCE OF A Decision now being set aside is hereby
FAIR QUESTION OF reinstated and made permanent.
INVALIDITY OF Without pronouncement as to costs.
PRIVATE
RESPONDENT'S SO ORDERED. (CA Resolution, Rollo,
PATENTS. p. 226).

II In a Resolution dated November 4, 1976, respondent

court, not persuaded by the grounds embodied in the
THAT THIS motion for reconsideration filed by herein petitioner
HONORABLE COURT (Annex "V ", Rollo, p. 227), denied the same for lack of
ERRED IN NOT merit, thereby maintaining the same stand it took in its
REJECTING THE July 6, 1976 Resolution (Rollo, p. 281). Hence, this
THEORY OF petition.
On December 3, 1976, without giving due course to the the same law which provides that if the Court shall find
petition, this Court required respondent to file her the patent or any claim thereof invalid, the Director shall
Comment (Rollo, p. 290) which was filed on December on certification of the final judgment ... issue an order
16, 1976 (Rollo, pp. 291-316). Thereafter, petitioner filed cancelling the patent or the claims found invalid and
her Reply (Rollo, p. 323) and on May 30, 1977, the shall publish a notice thereof in the Official Gazette."
petition was given due course (Rollo, p. 345). Petitioner Upon such certification, it is ministerial on the part of the
filed her brief on July 14, 1977 (Rollo, p. 351) while patent office to execute the judgment. (Rollo, pp. 221-
private respondent filed her brief on August 25, 1977 222).
(Rollo, p. 359). Thereafter, petitioner having failed to file
reply brief, the Court resolved to declare the case II.
submitted for decision on December 9, 1977 (Rollo, p.
359). The burden of proof to substantiate a charge of
infringement is with the plaintiff. But where the plaintiff
The assignment of errors raised by the petitioner in this introduces the patent in evidence, and the same is in
case (Rollo, pp. 15-16) may be reduced to three main due form, there is created a prima facie presumption of
issues: its correctness and validity. The decision of the
Commissioner (now Director) of Patent in granting the
(1) Whether or not in an patent is presumed to be correct. The burden of going
action for infringement forward with the evidence (burden of evidence) then
the Court a quo  had shifts to the defendant to overcome by competent
jurisdiction to determine evidence this legal presumption.
the invalidity of the
patents at issue which The question then in the instant case is whether or not
invalidity was still the evidence introduced by private respondent herein is
pending consideration sufficient to overcome said presumption.
in the patent office.
After a careful review of the evidence consisting of 64
(2) Whether or not the exhibits and oral testimonies of five witnesses presented
Court a quo committed by private respondents before the Court of First Instance
grave abuse of before the Order of preliminary injunction was issued as
discretion in the well as those presented by the petitioner, respondent
issuance of a writ of Court of Appeals was satisfied that there is a prima
preliminary injunction. facie  showing of a fair question of invalidity of
petitioner's patents on the ground of lack of novelty. As
(3) Whether or not pointed out by said appellate court said evidence
certiorari is the proper appeared not to have been considered at all by the
remedy. court a quo for alleged lack of jurisdiction, on the
mistaken notion that such question in within the
The first issue has been laid to rest in a number of cases exclusive jurisdiction of the patent office.
where the Court ruled that "When a patent is sought to
be enforced, the questions of invention, novelty or prior It has been repeatedly held that an invention must
use, and each of them, are open to judicial examination." possess the essential elements of novelty , originality
(Vargas v. F.M. Yaptico & Co. 40 Phil. 199 [1919]; and precedence and for the patentee to be entitled to
Vargas v. Chua, 57 Phil. 790-791 [1933]; Frank and protection, the invention must be new to the world.
Gohn v. Kosuyana 59 Phil. 207 [1933]). Accordingly, a single instance of public use of the
invention by a patentee for more than two years (now for
Under the present Patent Law, there is even less reason more than one year only under Sec. 9 of the Patent Law)
to doubt that the trial court has jurisdiction to declare the before the date of his application for his patent, will be
patents in question invalid. A patentee shall have the fatal to, the validity of the patent when issued. (Frank, et
exclusive right to make, use and sell the patented article al. v. Kosuyama Vargas v. F.M. Yaptico & Co. and
or product and the making, using, or selling by any Vargas v. Chua, et al., supra).
person without the authorization of the patentee
constitutes infringement of the patent (Sec. 37, R.A. The law provides:
165). Any patentee whose rights have been infringed
upon may bring an action before the proper CFI now SEC. 9. Invention not considered new or
(RTC) and to secure an injunction for the protection of patentable. — An invention shall not be
his rights (Sec. 42, R.A. 165). Defenses in an action for considered new or capable of being
infringement are provided for in Section 45 of the same patented if it was known or used by
law which in fact were availed of by private respondent in others in the Philippines before the
this case. Then, as correctly stated by respondent Court invention thereof by the inventor named
of Appeals, this conclusion is reinforced by Sec. 46 of in an application for patent for the
 invention; or if it was patented or protected and the violation of said right. (Buayan Cattle
described in any printed publication in Co., Inc. v. Quintillan, 128 SCRA 276).
the Philippines or any foreign country
more than one year before the Under the above established principles, it appears
application for a patent therefor; or if it obvious that the trial court committed a grave abuse of
had been in public use or on sale in the discretion which makes certiorari the appropriate
Philippines for more than one year remedy.
before the application for a patent
therefor; or if it is the subject matter of a As found by respondent Court of Appeals, the injunctive
validity issued patent in the Philippines order of the trial court is of so general a tenor that
granted on an application filed before petitioner may be totally barred from the sale of any kind
the filing of the application for patent of powder puff. Under the circumstances, respondent
therefor. appellate court is of the view that ordinary appeal is
obviously inadequate. (Rollo, p. 288). A parallel was
Thus, more specifically, under American Law from which drawn from a decision of the Supreme Court in the case
our Patent Law was derived (Vargas v. F.M. Yaptico & of Sanchez v. Hon. Court of Appeals, 69 SCRA 328
Co. supra) it is generally held that in patent cases a [1976] where the First Division of the Supreme Court
preliminary injunction will not issue for patent ruled that "The prerogative writ of certiorari may be
infringement unless the validity of the patent is clear and applied for by proper petition notwithstanding the
beyond question. The issuance of letters patent, existence of the regular remedy of an appeal in due
standing alone, is not sufficient to support such drastic cause when among other reasons, the broader interests
relief (8 Deller's Walker on Patents p. 406). In cases of of justice so require or an ordinary appeal is not an
infringement of patent no preliminary injunction will be adequate remedy."
granted unless the patent is valid and infringed beyond
question and the record conclusively proves the defense Private respondent maintains the position that the
is sham. (Ibid., p. 402) resolutions sought to be appealed from had long become
final and executory for failure of Hon. Reynaldo P.
In the same manner, under our jurisprudence, as a Honrado, the trial court judge, to appeal by certiorari
general rule because of the injurious consequences a from the resolutions of respondent Court of Appeals.
writ of injunction may bring, the right to the relief (Rollo, pp. 291-292).
demanded must be clear and unmistakable. (Sangki v.
Comelec, 21 SCRA 1392; December 26, 1967) and the Such contention is untenable.
dissolution of the writ is proper where applicant has
doubtful title to the disputed property. (Ramos v. C.A., 95
SCRA 359). There is no dispute that petitioner has seasonably
petitioned. On the other hand, it is elementary that the
trial judge is a mere nominal party as clearly provided in
III. Section 5, Rule 65 of the Revised Rules of Court where
it shall be the duty of such person or persons interested
It will be noted that the validity of petitioner's patents is in in sustaining the proceedings in court, "to appear and
question for want of novelty. Private respondent defend, both in his or their own behalf and in behalf of
contends that powder puffs Identical in appearance with the court or judge affected by the proceedings."
that covered by petitioner's patents existed and were
publicly known and used as early as 1963 long before Relative thereto "the judge whose order is under attack
petitioner was issued the patents in question. (List of is merely a nominal party; wherefore, a judge in his
Exhibits, Rollo, pp. 194-199). As correctly observed by official capacity should not be made to appear as a party
respondent Court of Appeals, "since sufficient proofs seeking reversal of a decision that is unfavorable to the
have been introduced in evidence showing a fair action taken by him." (Hon. Alcasid v. Samson, 102 Phil.
question of the invalidity of the patents issued for such 735-736; Tarona v. Sayo, 67 SCRA 508, 524; Lim Se v.
models, it is but right that the evidence be looked into, Argel, 70 SCRA 378).
evaluated and determined on the merits so that the
matter of whether the patents issued were in fact valid or
not may be resolved." (Rollo, pp. 286-287). 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.
All these notwithstanding, the trial court nonetheless 28 of the Patent Law and not to a defense against an
issued the writ of preliminary injunction which under the action for infringement under Sec. 45 thereof which may
circumstances should be denied. be raised anytime, is evident under aforesaid law.

For failure to determine first the validity of the patents PREMISES CONSIDERED, the assailed resolutions of
before aforesaid issuance of the writ, the trial court failed the Court of Appeals are hereby AFFIRMED.
to satisfy the two requisites necessary if an injunction is
to issue, namely: the existence of the right to be
SO ORDERED. Trademarks of the Executive Bureau, Government of the
Philippine Islands. The patent and its registry was also
published in the newspaper, El Tiempo.

Since 1910, Vargas has engaged in the manufacture of

these plows in the city of Iloilo, Philippine Islands. On the
plows there was first stamped the words "Patent Applied
For," later after the patent had been granted, changed to
"Patented Mar. 12, 1912." Ninety per cent of the plows in
use in the Visayas (Iloilo and vicinity) are said to be
Vargas plows.

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

(Ltd.), was engaged in the foundry business in the City of
Iloilo. It openly held itself out as a manufacturer of plow
parts. It has in fact produced points, shares, shoes, and
heel pieces in a considerable amount adapted to replace
worn-out parts of the Vargas plow.

Such was the existing situation when, in the early part of

1918, the owner of the patent, and thus the proper party
to institute judicial proceedings, began action in the
Court of First Instance of Iloilo to enjoin the alleged
infringement of U.S. Patent No. 1020232 by the
defendant F. M Yaptico & Co. (Ltd.), and to recover the
damages suffered by reason of this infringement. The
court issued the preliminary injunction as prayed for. The
defendant, in addition to a general denial, alleged, as
special defenses, that the patent lacked novelty or
invention, that there was no priority of ideas or device in
the principle and construction of the plow, and that the
plow, whose manufacture it was sought to have enjoined
by the plaintiff, had already been in public use for more
than two years before the application of the plaintiff for
his patent. The parties subsequently entered into a
G.R. No. 14101           September 24, 1919 stipulation that the court should first resolve the question
of whether or not there had been an infraction of the
ANGEL VARGAS, plaintiff-appellant, patent, reserving the resultant question of damages for
vs. later decision. After the taking of evidence, including the
F. M. YAPTICO & CO. (Ltd.), defendant-appellee. presentation of exhibits, the trial judge, the Honorable
Antonio Villareal, in a very exhaustive and learned
Charles C. Cohn for appellants . decision, rendered judgment in favor of the defendant
John Bordman for appellee. and against the plaintiff, declaring null and without effect
the patent in question and dismissing the suit with costs
against the plaintiff .The preliminary injunction
MALCOLM, J.:
theretofore issued was dissolved.
Rude wooden implements for tilling the soil have been in
From this judgment the plaintiff has appealed, specifying
use in the Philippines, possibly not since the Israelites
five errors. The principal assignment No. 1 is, that the
"went down to sharpen every man his share and his
trial court erred in finding that the patented invention of
coulter," but certainly for many years. Iron plows called
the plaintiff is lacking in novelty and invention.
"Urquijo" and "Pony" have latterly been the vogue.
Defendant, in reply, relies on three propositions, namely:
(1) The judgment of the trial court in finding the patent
Angel Vargas, a farmer acquainted with local conditions granted plaintiff void for lack of novelty and invention
and alive to the commercial possibilities, took it upon should be affirmed; (2) The patent granted plaintiff is
himself to produce, with the native plow as the model, an void from the public use of his plow for over two years
improved, adjustable plow. On July 22, 1910, he made prior to his application for a patent, and (3) If the patent
application for a United States patent to cover his so- is valid, there has been no contributory infringement by
called invention. On March 12, 1912, letters patent were defendant.
issued by the United States Patent Office in favor of
Vargas .On April 24, 1912, a certified copy of the patent
was filed in the Division of Patents, Copyrights, and
Before resolving these rival contentions, we should have to a patent. On this point the trial court reached the
before us the relevant law. Act No. 2235 of the Philippine conclusion that "the patented plow of the plaintiff, Exhibit
Legislature, enacted on February 10, 1913, in effect D, is not different from the native plow, Exhibit 2, except
makes the United States Patent Laws applicable in the in the material, in the form, in the weight and the grade
Philippine Islands. It provides that "owners of patents, of the result, the said differences giving it neither a new
including design patents, which have been issued or function nor a new result distinct from the function and
may hereafter be issued, duly registered in the United the result obtained from the native plow; consequently,
States Patent Office under the laws of the United States its production does not presuppose the exercise of the
relating to the grant of patents, shall receive in the inventive faculty but merely of mechanical skill, which
Philippine Islands the protection accorded them in the does not give a right to a patent of an invention under
United States under said laws." (Sec. 1.) Turning to the the provisions of the Patent Law." In thus finding, the
United States Patent Laws, we find the Act of Congress court may have been right, since the Vargas plow does
of March 3, 1897, amendatory of section 4886 of the not appear to be such a "combination" as contains a
United States Revised Statutes, reading as follows: novel assemblage of parts exhibiting invention.
(See Stimpson vs. Woodman [1870], 10 Wall., 117 —
Any person who has invented or discovered any rollers; Hicks vs. Kelsey [1874], 20 Wall., 353 — stoves;
new and useful art, machine, manufacture, or Washburn & Moen Mfg. Co. vs. Beat 'Em All Barbed
composition of matter, or any new an useful Wire Co. [1892], 143 U.S., 275 — barbed wire;
improvements thereof, not known or used by Lynch vs .Dryden [1873], C. D., 73 — walking
others in this country, before his invention or cultivators; Torrey vs. Hancock [1910], 184 Fed., 61 —
discovery thereof, and not patented or described rotary plows.)
in any printed publication in this or any foreign
country, before his invention or discovery A second line of defense relates to the fact that
thereof, or more than two years prior to his defendant has never made a complete Vargas plow, but
application, and not in public use or on sale in only points, shares, shoes, and heel pieces, to serve as
this country for more than two years prior to his repairs. Defendant's contention is, that in common with
application, unless the same is proved to have other foundries, he has for years cast large numbers of
been abandoned, may upon payment of the fees plow points and shares suitable for use either on the
required by law, and other due proceeding had, native wooden plow, or on the Vargas plow. A difference
obtain a patent therefor. (29 Stat. L., 692, 7 has long been recognized between repairing and
Fed .Stat. Ann. [2d Ed.], p. 23.) reconstructing a machine. If, for instance, partial injuries,
whether they occur from accident or from wear and tear,
When a patent is sought to be enforced, "the question of to a machine for agricultural purposes, are made this is
invention, novelty, or prior use, and each of them, are only re-fitting the machine for use, and thus permissible.
open to judicial examination." The burden of proof to (Wilson vs. Simpson [1850], 9 How., 109.) Even under
substantiate a charge of infringement is with the plaintiff. the more rigorous doctrine of Leeds & Catlin Co. vs.
Where, however, the plaintiff introduces the patent in Victor Talking Machine Co. ([1909], 213 U.S., 325), it
evidence, if it is in due form, it affords a prima may be possible that all the defendant has done is to
facie presumption of its correctness and validity. The manufacture and sell isolated parts to be used to replace
decision of the Commissioner of Patents in granting the worn-out parts.
patent is always presumed to be correct. The burden
then shifts to the defendant to overcome by competent The third defense is, that under the provisions of the
evidence this legal presumption .With all due respect, statute, an inventor's creation must not have been in
therefore, for the critical and expert examination of the public use or on sale in the United States (and the
invention by the United States Patent Office, the Philippine Islands) for more than two years prior to his
question of the validity of the patent is one for judicial application .Without, therefore, committing ourselves as
determination, and since a patent has been submitted, to the first two defenses, we propose to base our
the exact question is whether the defendant has decision on the one just suggested as more easily
assumed the burden of proof as to anyone of his disposing of the case. (See  20 R. C. L., 1140-1142.) We
defenses. (See Agawan Co. vs. Jordan [1869], 7 Wall., do so with full consciousness of the doubt which arose in
583; Blanchard vs .Putnam [1869], 8 Wall., 420; the mind of the trial court, but with the belief that since it
Seymour vs. Osborne [1871], 11 Wall., 516; has been shown that the invention was used in public at
Reckendorfer vs. Faber [1876], 92 U.S., 347; 20 R. C. L., Iloilo by others than Vargas, the inventor, more than two
1112, 1168, 1169.) years before the application for the patent, the patent is
invalid.
As herein before stated, the defendant relies on three
special defenses. One such defense, on which the Although we have spent some time in arriving at this
judgment of the lower court is principally grounded, and point, yet having reached it, the question in the case is
to which appellant devotes the major portion of his single and can be brought to a narrow compass. Under
vigorous argument, concerns the element of novelty, the English Statute of Monopolies (21 Jac. Ch., 3), and
invention, or discovery, that gives existence to the right under the United States Patent Act of February 21, 1793,
later amended to be as herein quoted, it was always the believable that five or six witnesses for the defense
rule, as stated by Lord Coke, Justice Story and other would deliberately perjure themselves under oath. One
authorities, that to entitle a man to a patent, the invention might, but that all together, of different nationalities,
must be new to the world. (Pennock and Sellers vs. would enter into such a conspiracy, is to suppose the
Dialogue [1829], 2 Pet., 1.) As said by the United States improbable.
Supreme Court, "it has been repeatedly held by this
court that a single instance of public use of the Tested by the principles which go to make the law, we
invention  by a patentee for more than two years before think a preponderance of the evidence is to the effect
the date of his application for his patent will be fatal to that for more than two years before the application for
the validity of the patent  when issued." (Worley vs. the original letters patent, or before July 22, 1908, there
Lower Tobacco Co .[1882], 104 U. S., 340; McClurg vs. was, by the consent and allowance of Vargas, a public
Kingsland [1843], I How., 202; Consolidated Fruit Jar use of the invention covered by them.
Co. vs. Wright [1877], 94 U. S., 92; Egbert vs. Lippmann
[1881], 104 U. S., 333; Coffin vs. Ogden [1874], 18 Wall., To conclude, we are not certain but that appellee has
120; Manning vs. Cape Ann Isinglass and Glue Co. proved every one of his defenses. We are certain that he
[1883], 108 U. S., 462; Andrews vs. Hovey [1887], 123 has at least demonstrated the public use of the Vargas
U. S., 267; Campbell vs. City of New York [1881], 1 L. R. plow over two years prior to the application for a patent.
A., 48.) Such being the case, although on a different ground, we
must sustain the judgment of the lower court, without
On the facts, we think the testimony shows such a public prejudice to the determination of the damages resulting
use of the Vargas plow as to render the patent invalid from the granting of the injunction, with the costs of this
Nicolas Roces, a farmer, testified that he had bought instance against the appellant. So ordered.
twenty Vargas plows, of which Exhibit 5 was one, in
December, 1907; and Exhibit 5, the court found, was a
plow completely identical with that for which the plaintiff
had received a patent. The minor exception, and this in
itself corroborative of Roces' testimony, is that the
handle of plow Exhibit 5 is marked with the letters "A V"
and not with the words "Patent Applied For" or "Patented
Mar.12, 1912." Salvador Lizarraga, a clerk in a business
house, testified that he had received plows similar to
Exhibits D, 5, and 4, for sale on commission on May,
1908, from Bonifacio Araneta, partner of Vargas in the
plow business. Ko Pao Ko, a blacksmith, testified that he
had made fifty plow frames in 1905 for Vargas and
Araneta, of which Exhibit 4 is one; Exhibit 4, the court
found, is a plow identical with that patented by Vargas,
but without share and mould-board. Alfred Berwin, an
employee in the office of Attorney John Bordman,
testified that on September 21, 1908, he had knowledge
of a transaction wherein Vargas and Araneta desired to
obtain money to invest in a plow factory. George Ramon
Saul, a mechanic of the "Taller Visayas" of Strachan and
MacMurray, testified that he had made Vargas plow
points and shares of the present form upon order of
Araneta and Vargas in 1906 and 1907 .William
MacMurray, proprietor of the "Taller Visayas,"
corroborated the evidence of the witness Saul by the
exhibition of the account against Vargas and Araneta
wherein, under date of December 13, 1906, appears the
item "12 new soft steel plow shares forged and bored for
rivets as per sample." Against all this, was the testimony
of the plaintiff Angel Vargas who denied that Saul could
have been seen the Vargas plow in 1907 and 1907, who
denied that Roces purchased the Vargas plow in 1907,
who denied that Lizarraga could have acted as an agent
to sell two plows in November, 1908, who denied any
remembrance of the loan mentioned by Berwin as
having been negotiated in September, 1908, who denied
that Ko Pao Ko made fifty plows one of which is Exhibit
4, for Araneta and Vargas in 1905. Plaintiff introduced
his books to substantiate his oral testimony .It is hardly
 abstain from making, manufacturing, selling or
offering for a sale plows of the type of those
manufactured by the plaintiff, and particularly
plows of the model of Exhibits B, B-1 and B-2,
and to render to the plaintiff a detailed
accounting of the profits obtained by them from
the manufacture and sale of said type of plows
within thirty (30) days from the date of the
receipt by them of notice of this decision, with
costs against all of the defendants.

Angel Vargas, the plaintiff herein, brought this action to

restrain the appellants and the other defendant entity,
Cham Samco & Sons, their agents and mandatories,
from continuing the manufacture and sale of plows
similar to his plow described in his patent No. 1,507,530
issued by the United States Patent Office on September
2, 1924; and to compel all of said defendants, after
rendering an accounting of the profits obtained by them
from the sale of said plows from September 2, 1924, to
pay him damages equivalent to double the amount of
such profits.

It appears from the bill of exceptions that Cham Samco

& Sons did not appeal.

In addition to the evidence presented, the parties

submitted the following stipulation of facts:

The parties agree on the following facts:

1. That the plaintiff, Angel Vargas, is of age and

a resident of the municipality of Iloilo, Iloilo,
Philippine Islands.

2. That the defendant, Petronila Chua, is also of

age, and is married to Coo Pao alias Coo
Paoco, and resides in Iloilo.

3. That the defendant, Coo Teng Hee, is also of

age and a resident of Iloilo, and is the sole
owner of the business known as Coo Kun &
Sons Hardware Co. established in Iloilo.
G.R. No. L-36650             January 27, 1933
4. That the defendant, Cham Samco & Sons, is
ANGEL VARGAS, plaintiff-appellee, a commercial partnership duly organized under
vs. the laws of the Philippine Islands, with their
PETRONILA CHUA, ET AL., defendants-appellants. principal office in the City of Manila, and that the
defendants Cham Samco, Cham Siong E, Cham
IMPERIAL, J.: Ai Chia and Lee Cham Say, all of age and
residents of the City of Manila, are the partners
The defendants Petronila Chua, Coo Pao and Coo Teng of the firm Cham Samco & Sons.
Hee, appeal from the judgment of the Court of First
Instance of Manila, the dispositive part of which reads as 5. The parties take for granted that the complaint
follows: in this case is amended in the sense that it
includes Coo Paoco as party defendant in his
Wherefore judgment is rendered in favor of the capacity as husband of the defendant, Petronila
plaintiff and against the defendants, ordering Chua, with Attorney Jose F. Orozco also
each and every one of them, their agents, representing him, and that he renounces his
mandatories and attorneys, to henceforth rights to receive summons in this case by
reproducing the answer of his codefendant, 1, as shown by Invoice C-1, and that it has been
Petronila Chua. selling them in its store on Sto. Cristo St.,
Manila.
6. That the plaintiff is the registered owner and
possessor of United States Patent No. 13. That, on September 19, 1928, the defendant
1,507,530 on certain plow improvements, issued Cham Samco & Sons, sold in its store on Sto.
by the United States Patent Office on September Cristo St., Manila, the plow Exhibit B-1, for the
2, 1924, a certified copy of which was registered sale of which invoice Exhibit D was issued.
in the Bureau of Commerce and industry of the
Government of the Philippine Islands on October 14. That, on December 20, 1927, the plaintiff
17, 1924. A certified copy of said patent is herein, through his attorneys Paredes,
attached to this stipulation of facts as Exhibit A. Buencamino & Yulo, sent by registered mail to
the herein defendant, Coo Kun & Sons
7. That the plaintiff is now and has been Hardware Co., at Iloilo, the original of the letter
engaged, since the issuance of his patent, in the Exhibit E, which was received by it on
manufacture and sale of plows of the kind, type September 28, 1927, according to the receipt
and design covered by the aforementioned marked Exhibit E-1 attached hereto.
patent, said plows being of different sizes and
numbered in accordance therewith from 1 to 5. 15. That the plows manufactured by the plaintiff
in accordance with his patent, Exhibit A, are
8. That, since the filing of the complaint to date, commonly known to the trade in Iloilo, as well as
the defendant, Petronila Chua, has been in other parts of the Philippines, as "Arados
manufacturing and selling plows of the kind, type Vargas", and that the plaintiff is the sole
and design represented by Exhibits B, B-1 and manufacturer of said plows. A sample of these
B-2, of different sizes, designated by Nos. 2, 4 plows is presented as Exhibit F.
and 5.
16. That the document, Exhibit 1-Chua, is a
9. That, since the filing of the complaint to date, certified copy of the amended complaint, the
the defendant, Coo Teng Hee, doing business in decision of the Court of First Instance of Iloilo
Iloilo under the name of Coo Kun & Sons and that of the Supreme Court (R. G. No. 14101)
Hardware Co., has been obtaining his plows, of in civil case No. 3044 of Iloilo, entitled "Angel
the form and size of Exhibits B, B-1 and B-2, Vargas", plaintiff, vs. F. M. Yaptico & Co., Ltd.,
from the defendant Petronila Chua. defendant", and that Exhibit 2-Chua et al. is a
certified copy of Patent No. 1,020,232, to which
10. Without prejudice to the plaintiff's right to ask the aforementioned complaint and decision
the defendants to render an accounting in case refer, issued in favor of Angel Vargas by the
the court deem it proper, the parties agree that United States Patent Office on March 12, 1912,
the defendant Coo Teng Hee, doing business and that Exhibit 3-Chua et al., represents the
under the name of Coo Kun & Sons Hardware plow manufactured by Angel Vargas in
Co., has been selling to his customers in his accordance with his Patent marked Exhibit 2-
store on J. Ma. Basa Street in Iloilo, plows of the Chua et al.
kind, type and design represented by Exhibits B,
B-1 and B-2, having bought said plows from his The appellants assign the following errors:
codefendant, Petronila Chua, who manufactures
them in her factory on Iznart Street, Iloilo. FIRST ERROR

11. That, according to the invoices marked The trial court erred in declaring that the Vargas
Exhibits C and C-2 dated March 13, 1928, and plow, Exhibit F (covered by Patent No.
June 19, 1928, respectively, the defendant 1,507,530) is distinct from the old model Vargas
Cham Samco & Sons, on the dates mentioned, plow, Exhibit 2-Chua, covered by the former
had, in the ordinary course of business, bought Patent No. 1,020,232, which had been declared
of its codefendant Coo Kun & Sons Hardware null and void by this court.
Co., 90 plows of the form, type and design of
Exhibits B, B-1 and B-2 which it has been selling SECOND ERROR
in its store on Sto. Cristo Street, Manila.
The trial court erred in mistaking the
12. That the same defendant Cham Samco & improvement on the plow for the plow itself.
Sons, in the ordinary course of business, bought
on March 17, 1928, of the store "El Progreso"
owned by Yao Ki & Co., of Iloilo, a lot of 50 THIRD ERROR
plows, of the form, type and design of Exhibit B-
 The trial court erred in rendering judgment in the Province of Iloilo, long before he obtained his last
favor of the plaintiff and against the defendants. patent.

FOURTH ERROR In the above mentioned case of Vargas vs. F. M. Yaptico

& Co.,  we said:
The trial court erred in not dismissing the
complaint with costs against the plaintiff. When a patent is sought to be enforced, "the
questions of invention, novelty, or prior use, and
The evidence shows that Exhibit F is the kind of plows each of them, are open to judicial examination."
the plaintiff, Angel Vargas, manufactures, for which The burden of proof to substantiate a charge of
Patent No. 1,507,530, Exhibit A, was issued in his favor. infringement is with the plaintiff. Where,
Exhibits B, B-1 and B-2 are samples of the plows which however, the plaintiff introduces the patent in
the herein appellants, Coo Pao and Petronila Chua, evidence, if it is the due form, it affords a prima
have been manufacturing since 1918, and Exhibit 3- facie presumption of its correctness and validity.
Chua represents the plow for which, on March 12, 1912, The decision of the Commissioner of Patents in
the appellee obtained a patent from the United States granting the patent is always presumed to be
Patent Office, which was declared null and void by the correct. The burden then shifts to the defendant
Supreme Court in the case of Vargas vs. F. M. Yap Tico to overcome by competent evidence this legal
& Co.  (40 Phil., 195). presumption. With all due respects, therefore, for
the critical and expert examination of the
invention by the United States Patent Office, the
With these facts in view, the principal and perhaps the
question of the validity of the patent is one for
only question we are called upon to decide is whether
judicial determination, and since a patent has
the plow, Exhibit F, constitutes a real invention or an
been submitted, the exact question is whether
improvement for which a patent may be obtained, or if,
the defendant has assumed the burden of proof
on the contrary, it is substantially the same plow
as to anyone of his defenses. (See Agawan
represented by Exhibit 3-Chua the patent for which was
Co. vs. Jordan [1869], 7 Wall., 583;
declared null and void in the aforementioned case
Blanchard vs. Putnam [1869], 8 Wall., 420;
of Vargas vs. F. M. Yaptico & Co., supra.
Seymour vs. Osborne [1871], 11 Wall., 516;
Reckendorfer vs. Faber [1876], 92 U. S., 347; 20
We have carefully examined all the plows presented as R. C. L., 1112, 1168, 1169.)
exhibits as well as the designs of those covered by the
patent, and we are convinced that no substantial
Although we spent some time in arriving at this
difference exists between the plow, Exhibit F, and the
point, yet, having reached it, the question in the
plow, Exhibit 3-Chua which was originally patented by
case is single and can be brought to a narrow
the appellee, Vargas. The only difference noted by us is
compass. Under the English Statute of
the suppression of the bolt and the three holes on the
Monopolies (21 Jac. Ch., 3), and under the
metal strap attached to the handle bar. These holes and
United States Patent Act of February 21, 1793,
bolt with its nut were suppressed in Exhibit F in which
later amended to be as herein quoted, it was
the beam is movable as in the original plow. The
always the rule, as stated by Lord Coke, Justice
members of this court, with the plows in view, arrived at
Story and other authorities, that to entitle a man
the conclusion that not only is there no fundamental
to a patent, the invention must be new to the
difference between the two plows but no improvement
world. (Pennock and Sellers vs. Dialogue [1829],
whatever has been made on the latest model, for the
2 Pet., 1.) As said by the United States Supreme
same working and movement of the beam existed in the
Court, "it has been repeatedly held by this court
original model with the advantage, perhaps, that its
that a single instance of public use of the
graduation could be carried through with more certainty
invention  by a patentee of more than two years
by the use of the bolt which as has already been stated,
before the date of his application for his
was adjustable and movable.
patent will be fatal to the validity of the
patent  when issued." (Worley vs. Lower
As to the fact, upon which much emphasis was laid, that Tobacco Co. [1882], 104 U. S., 340;
deeper furrows can be made with the new model, we McClurg vs. Kingsland [1843], 1 How., 202;
have seen that the same results can be had with the old Consolidated Fruit Jar Co. vs. Wright [1877], 94
implement. U. S., 92; Egbert vs. Lippmann [1881], 104 U.
S., 333; Coffin vs. Ogden [1874], 18 Wall., 120;
In view of the foregoing, we are firmly convinced that the Manning vs. Cape Ann Isinglass and Glue Co.
appellee is not entitled to the protection he seeks for the [1883], 108 U. S., 462; Andrews vs. Hovey
simple reason that his plow, Exhibit F, does not [1887], 123 U. S., 267; Campbell vs. City of New
constitute an invention in the legal sense, and because, York [1888], 1 L. R. A., 48.)
according to the evidence, the same type of plows had
been manufactured in this country and had been in use
in many parts of the Philippine Archipelago, especially in
We repeat that in view of the evidence presented, and (48 C. J., sec. 101, p. 97, and sec. 102, p. 98).
particularly of the examination we have made of the
plows, we cannot escape the conclusion that the plow 2. ID.; KNOWLEDGE AND USE BY THE PUBLIC. —
upon which the appellee's contention is based, does not Before the plaintiffs herein obtained their patent, they
constitute an invention and, consequently, the privilege themselves had already publicly used the same kind of
invoked by him is untenable and the patent acquired by machine for many months, at least, and, various other
him should be declared ineffective. machines, having in general, the same characteristics
and important parts as that of the said plaintiffs, were
The judgment appealed from is hereby reversed and the known in the Province of Davao.
appellants are absolved from the complaint, with costs of
this instance against the appellee. So ordered. 3. ID.; ANNULMENT. — Notwithstanding all the facts
herein stated, the trial court did not annul the plaintiffs’
patent and the defendant herein insists that the patent in
question should be declared null and void. In view of the
nature of the action brought by the plaintiffs, annulment
does not lie in the absence of a cross-complaint to that
effect.

4. ID.; INFRINGEMENT. — The defendant cannot be

made civilly liable for alleged infringement of the patent
on which the action is based on the ground that the
machines manufactured and sold by him did not have
any essential part unknown to the public in the Province
of Davao at the time the plaintiffs applied for and
obtained their patent for improved abaca stripping
machines.

5. APPLICABILITY OF THE DOCTRINE OF "STARE

DECISIS." — The doctrine laid down in the case of
Frank and Gohn v. Benito (51 Phil., 712), to the effect
that the defendant therein had actually infringed upon
the patent of the therein plaintiffs cannot be invoked in
this case. It is true that the then plaintiffs in the former
and those in the latter case are the same but the
defendant therein did not set up the special defenses as
alleged by the herein defendant. Furthermore, the
plaintiffs therein had only confined themselves to
presenting the patent, or rather, a copy thereof, wherein
mention of the "spindle" was made, and this court took
for granted their claim that it was one of the essential
characteristics thereof which had been imitated or copied
by the therein defendant.

DECISION

IMPERIAL, J.:

G.R. No. 38010. December 21, 1933.

Patent No. 1519579 (Exhibit 117) on improvement in
PATRICK HENRY FRANK and WILLIAM HENRY hemp stripping machines, issued by the United States
GOHN, Plaintiffs-Appellants, v. G. Patent Office on December 16, 1924, and registered in
KOSUYAMA, Defendant-Appellee. the Bureau of Commerce and Industry of the Philippine
Islands on March 17, 1925, was the origin of this action
brought by the plaintiffs herein who prayed that judgment
SYLLABUS be rendered against the defendant, ordering him thereby
to refrain immediately from the manufacture and sale off
1. PATIENT; ESSENTIAL ELEMENTS. — Strictly machines similar to the one covered by the patent; to
speaking, the hemp stripping machine of the plaintiffs render an accounting of the profits realized from the
does not constitute an invention on the ground that it manufacture and sale of the machines in question; that
lacks the element of novelty, originality and precedence in case of refusal or failure to render such accounting,
the defendant be ordered to pay the plaintiffs the sum of Much less can it be said that they invented the pedal to
P60 as profit on each machine manufactured or sold by raise the knife in order to allow the hemp to be stripped
him; that upon approval of the required bond, said to pass under it, on the ground that the use of such
defendant be restrained from continuing the manufacture contrivance has, likewise, been known since the
and sale of the same kind of machines; that after the trial invention of the most primitive of hemp stripping
the preliminary injunction issued therein be declared machines.
permanent; and, lastly, that the said defendant be
sentenced to pay the costs and whatever damages the "On the other hand, although the plaintiffs alleged in their
plaintiffs might be able to prove therein. The action original complaint that ’the principal and important
therefore was based upon alleged infringement by the feature of said machine is a spindle upon which the
defendant of the rights patent through the manufacture hemp to be stripped is wound in the process of stripping,’
and sale by the former of machines similar to that nevertheless, in their amended complaint of March 3,
covered by the aforesaid patent. 1928, which was filed after a portion of the evidence
therein had already been submitted and it was known
The plaintiffs appealed from the judgment rendered by that the use of the spindle was nothing new, they still
the trial court dismissing their complaint, with costs, as made the allegations appearing in paragraph 3 of their
well as the defendant’s counterclaim of P10,000. The said amended complaint and reproduced on pages 2, 3,
defendant did not appeal. 4 and 5 hereof, copying the same from the application
which they filed with the United States Patent Office,
In their amended complaint, the plaintiffs alleged that under which they obtained their patent in question. The
their hemp stripping machines, for which they obtained a aforesaid application clearly shows that what they
patent, have the following characteristics: "A stripping applied for was not a patent for a ’pioneer or primary
head, a horizontal table, a stripping knife supported upon invention’ but only for some ’new and useful
such table, a tapering spindle, a rest holder adjustably improvement in hemp stripping machines.’"
secured on the table portion, a lever and means of
compelling the knife to close upon the table, a pallet or We have carefully reviewed the evidence presented and
rest in the bottom of the table, a resilient cushion under have had the opportunity of ascertaining the truth of the
such pallet or rest." In spite of the fact that they filed an conclusions above stated. We agree with the trial court
amended complaint from which the "spindle’ or conical that, strictly speaking, the hemp stripping machine of the
drum, which was the only characteristic feature of the plaintiffs does not constitute an invention on the ground
machine mentioned in the original complaint, was that it lacks the elements of novelty, originality and
eliminated, the plaintiffs insisted that the said part precedence (48 C. J., sec. 101, p. 97, and sec. 102, p.
constitutes the essential differences between the 98). In fact, before the plaintiffs herein obtained their
machine in question and other machines and it was the patent, they themselves had already publicly used the
principal consideration upon which their patent was same kind of machine for some months, at least, and,
issued. The said plaintiffs sustained their contention on various other machines, having in general, the same
this point even in their printed brief and memorandum characteristics and important parts as that of the said
filed in this appeal. plaintiffs, were known in the Province of Davao.
Machines known as Molo, Riesgo, Crumb, Icsiar,
During the trial, both parties presented voluminous Browne and McFie were already known in that locality
evidence from which the trial court arrived at the and used by the owners of hemp plantations before the
following conclusions:jgc:chanrobles.com.ph machine of the plaintiffs came into existence. It may also
be noted that Adrian de Icsiar applied for a patent on an
"In considering their machine the plaintiffs did nothing invention which resulted in the rejection by the United
but improve, to a certain degree, those that were already States Patent Office of the plaintiffs’ original application
in vogue and in actual use in hemp producing provinces. for a patent on the so-called "spindle" or conical drum
It cannot be said that they have invented the ’spindle’ which was then in actual use in the Dringman and Icsiar
inasmuch as this was already known since the year 1909 hemp stripping machines.
or 1910. Neither can it be said that they have invented
the stripping knife and the contrivance which controls the Notwithstanding the foregoing facts, the trial court did not
movement and pressure thereof on the ground that decree the annulment of the plaintiffs’ patent and the
stripping knives together with their control sets were herein defendant-appellee insists that the patent in
already in actual use in the different stripping machines question should be declared null and void. We are of the
long before their machines appeared. Neither can it be opinion that it would be improper and untimely to render
said that they invented the flywheel because that part or a similar judgment, in view of the nature of the action
piece thereof, so essential in every machine from time brought by the plaintiffs and in the absence of a cross-
immemorial, was already known and actually employed complaint to that effect. For the purposes of this appeal,
in hemp stripping machines such as those of Riesgo suffice it to hold that the defendant is not civilly liable for
(Exhibit 4-A), Crumb (Exhibit 1-A), Icsiar (Exhibit A- alleged infringement of the patent in question.
Suzara), Browne (Exhibit 28-A), McFie, etc., all of which
were in use for the benefit of hemp long before the In the light of sound logic, the plaintiffs cannot insists that
appearance of the plaintiffs’ machines in the market. the "spindle" was a patented invention on the ground
that said part of the machine was voluntarily omitted by CONRADO G. DE LEON and COURT OF
them from their application, as evidenced by the APPEALS, respondents.
photographic copy thereof (Exhibit 41) wherein it likewise
appears that the patent on Improved Hemp Stripping FERNANDEZ, J.:
Machines was issued minus the "spindle" in question.
Were we to stress to this part of the machine, we would This is a petition for certiorari to review the decision of
be giving the patent obtained by the plaintiffs a wider the Court of Appeals in CA G.R. NO. 37824-R entitled
range than it actually has, which is contrary to the "Conrado G. de Leon, plaintiff-appelle vs. Dominciano
principles of interpretation in matters to patents. Aguas and F.H. Aquino and Sons, defendants-
appellants," the dispositive portion of which reads:
In support of their claim the plaintiffs invoke the doctrine
laid down by this court in the case of Frank and Gohn v.
Benito (51 Phil., 712), wherein it was held that the WHEREFORE, with the modification
therein defendant really infringed upon the patent of the that plintiff-applee's award of moral
therein plaintiffs. It may be noted that the plaintiffs in the damages is hereby redured to
former and those in the latter case are the same and that P3,000.00, the appealed judgment is
the patent then involved is the very same one upon hereby affirmed, in all othe respects,
which the present action of the plaintiffs is based. The with costs against appellants. 1
above-cited case, however, cannot be invoked as a
precedent to justify a judgment in favor of the plaintiffs- On April 14, 1962, Conrado G. de Leon filed in the Court
appellants on the ground that the facts in one case are of First Instance of Rizal at Quezon City a complaint for
entirely different from those in the other. In the former infringement of patent against Domiciano A. Aguas and
case the defendant did not set up the same special F. H. Aquino and Sons alleging that being the original
defenses as those alleged by the herein defendant in his first and sole inventor of certain new and useful
answer and the plaintiffs therein confined themselves to improvements in the process of making mosaic pre-cast
presenting the patent, or rather a copy thereof, wherein tiles, he lawfully filed and prosecuted an application for
the "spindle’ was mentioned, and this court took for Philippine patent, and having complied in all respects
granted their claim that it was one of the essential with the statute and the rules of the Philippine Patent
characteristics thereof which was imitated or copied by Office, Patent No. 658 was lawfully granted and issued
the then defendant. Thus it came to pass that the to him; that said invention was new, useful, not known or
"spindle" in question was insistently mentioned in the used by others in this country before his invention
decision rendered on appeal as the essential part of the thereof, not patented or described in any printed
plaintiffs’ machine allegedly imitated by the then publication anywhere before his invention thereof, or
defendant. In the case under consideration, it is obvious more than one year prior to his application for patent
that the "spindle" is not an integral part of the machine thereof, not patented in any foreign country by him or his
patented by the plaintiffs on the ground that it was legal representatives on application filed more than one
eliminated from their patent inasmuch as it was year prior to his application in this country; that plaintiff
expressly excluded in their application, as evidenced by has the exclusive license to make, use and sell
the aforesaid Exhibit 41. throughout the Philippines the improvements set forth in
said Patent No. 658; that the invention patented by said
Wherefore, reiterating that the defendant cannot be held Patent No. 658 is of great utility and of great value to
civilly liable for alleged infringement of the patent upon plaintiff and of great benefit to the public who has
which the present action is based on the ground that demanded and purchased tiles embodying the said
there is no essential part of the machine manufactured invention in very large quantities and in very rapidly
and sold by him, which was unknown to the public in the increasing quant ies; that he has complied with the
Province of Davao at the time the plaintiffs applied for an Philippine statues relating to marking patented tiles sold
obtained their patent for improved hemp stripping by him; that the public has in general acknowledged the
machines, the judgment appealed from is hereby validity of said Patent No. 658, and has respected
affirmed, with costs against the plaintiffs-appellants. So plaintiff's right therein and thereunder; that the defendant
ordered. Domiciano A. Aguas infringed Letters of Patent No. 658
by making, using and selling tiles embodying said patent
invention and that defendant F. H. Aquino & Sons is
guilty of infringement by making and furnishing to the
defendant Domiciano A. Aguas the engravings, castings
and devices designed and intended of tiles embodying
plaintiff;s patented invention; that he has given direct and
personal notice to the defendants of their said acts of
G.R. No. L-32160 January 30, 1982 infringement and requested them to desist, but
nevertheless, defendants have refused and neglected to
DOMICIANO A. AGUAS, petitioner, desist and have disregarded such request, and continue
vs. to so infringe causing great and irreparable damage to
plaintiff; that if the aforesaid infringement is permitted to
continue, further losses and damages and irreparable confederates, and any and all persons
injury will be sustained by the plaintiff; that there is an acting under their authority from making
urgent need for the immediate issuance of a preliminary and/or using and/or vending tiles
injunction; that as a result of the defendants' wrongful embodying said patented invention or
conduct, plaintiff has suffered and the defendants are adapted to be used in combination
liable to pay him, in addition to actual damages and loss embodying the same, and from making,
of profits which would be determined upon proper manufacturing, using or selling,
accounting, moral and exemplary or corrective damages engravings, castings and devises
in the sum of P90,000.00; that plaintiff has been designed and intended for use in
compelled to go to court for the protection and apparatus for the making of tiles
enforcement of his and to engage the service of counsel, embodying plaintiff's patented invention,
thereby incurring attorney's fees and expenses of and from offering or advertising so to do,
litigation in the sum of P5,000.00. 2 and from aiding and abetting or in any
way contributing to the infringement of
On April 14, 1962, an order granting the plaintiff's said patent;
petition for a Writ of Preliminary Injunction was issued. 3
3. Ordering that each and all of the
On May 23, 1962, the defendant Domiciano A. Aguas infringing tiles, engravings, castings and
filed his answer denying the allegations of the plaintiff devices, which are in the possession or
and alleging that: the plaintiff is neither the original first under the control of defendants be
nor sole inventor of the improvements in the process of delivered to plaintiff;
making mosaic pre-cast tiles, the same having been
used by several tile-making factories in the Philippines 4. Ordering the defendants to jointly and
and abroad years before the alleged invention by de severally pay to the plaintiff the following
Leon; that Letters Patent No. 658 was unlawfully sums of money, to wit:
acquired by making it appear in the application in relation
thereto that the process is new and that the plaintiff is (a) P10,020.99 by way of actual
the owner of the process when in truth and in fact the damages;
process incorporated in the patent application has been
known and used in the Philippines by almost all tile (b) P50,000.00 by way of moral
makers long before the alleged use and registration of damages;
patent by plaintiff Conrado G. de Leon; that the
registration of the alleged invention did not confer any
right on the plaintiff because the registration was (c) P5,000.00 by way of exemplary
unlawfully secured and was a result of the gross damages;
misrepresentation on the part of the plaintiff that his
alleged invention is a new and inventive process; that (d) P5,000.00 by way of attorney's fees
the allegation of the plaintiff that Patent No. 658 is of and
great value to plaintiff and of great benefit to the public is
a mere conclusion of the plaintiff, the truth being that a) (e) costs of suit. 5
the invention of plaintiff is neither inventive nor new,
hence, it is not patentable, b) defendant has been The defendant Domiciano Aguas appealed to the Court
granted valid patents (Patents No. 108, 109, 110 issued of Appeals, assigning the following errors. 6
on December 21, 1961) on designs for concrete
decorative wall tiles; and c) that he can not be guilty of
I
infringement because his products are different from
those of the plaintiff. 4
THE TRIAL COURT ERRED IN NOT
HOLDING THAT PLAINTIFF'S PATENT
The trial court rendered a decision dated December 29,
FOR THE 'PROCESS OF MAKING
1965, the dispositive portion of which reads:
MOSAIC PRE-CAST TILE' IS INVALID
BECAUSE SAID ALLEGED PROCESS
WHEREFORE, judgment is hereby IS NOT AN INVENTION OR
rendered in favor of plaintiff and against DISCOVERY AS THE SAME HAS
the defendants: ALREADY LONG BEEN USED BY TILE
MANUFACTURERS BOTH ABROAD
1. Declaring plaintiff's patent valid and AND IN THIS COUNTRY.
infringed:
II
2. Granting a perpetual injunction
restraining defendants, their officers, THE TRIAL COURT ERRED IN
agents, employees, associates, HOLDING THAT THE PATENT OF
 PLAINTIFF IS VALID BECAUSE IT IS First error. — When it did not conclude
AN IMPROVEMENT OR THE AGE-OLD that the letters patent of the respondent
TILE MAKING SYSTEM. although entitled on the cover page as a
patent for improvements, was in truth
III and in fact, on the basis of the body of
the same, a patent for the old and non-
patentable process of making mosaic
THE TRIAL COURT ERRED IN NOT
pre-cast tiles;
ORDERING THE CANCELLATION OF
PLAINTIFF-APPELLEE'S LETTERS
PATENT NO. 658, EXHIBIT L, IN Second error. — When it did not
ACCORDANCE WITH THE conclude from the admitted facts of the
PERTINENT PROVISIONS OF THE case, particularly the contents of the
PATENT LAW, REPUBLIC ACT 165. letters patent, Exh. L and the pieces of
physical evidence introduced consisting
of samples of the tiles and catalouges,
IV
that the alleged improvements
introduced by the respondent in the
THE TRIAL COURT ERRED IN manufacture of mosaic pre-cast tiles are
HOLDING THAT DEFENDANT not patentable, the same being not new,
DOMICIANO A. AGUAS IS GUILTY OF useful and inventive.
INFRINGEMENT DESPITE THE FACT
THAT PLAINTIFF'S PATENT IS NOT A
Third error. — As a corollary, when it
VALID ONE.
sentenced the herein petitioner to pay
the damages enumerated in the
V decision of the lower court (Record on
Appeal, pp. 74-75), as confirmed by it
THE TRIAL COURT ERRED IN NOT (the Court of Appeals), but with the
HOLDING THAT THE DEFENDANT modification that the amount of
COULD NEVER BE GUILTY OF P50,000.00 moral damages was
INFRINGEMENT OF PLAINTIFF'S reduced to P3,000.00. 8
PATENT BECAUSE EVEN IN
MATTERS NOT PATENTED BY THE The facts, as found by the Court of Appeals, are:
PLAINTIFF - LIKE THE COMPOSITION
AND PROPORTION OF INGREDIENTS
The basic facts borne out by the record
USED AND THE STRUCTURAL
are to the effect that on December 1,
DESIGNS OF THE MOULD AND THE
1959 plaintiff-appellee filed a patent
TILE PRODUCED - THAT OF THE
application with the Philippine Patent
DEFENDANT ARE DIFFERENT.
Office, and on May 5, 1960, said office
issued in his favor Letters Patent No.
VI 658 for a "new and useful improvement
in the process of making mosaic pre-
THE TRIAL COURT ERRED IN NOT cast tiles" (Exh, "L"); that defendant F.H.
DISMISSING THE COMPLAINT AND IN Aquino & Sons engraved the moulds
HOLDING THE DEFENDANT, embodying plaintiff's patented
INSTEAD OF THE PLAINTIFF, LIABLE improvement for the manufacture of pre-
FOR DAMAGES, AND ATTORNEY'S cast tiles, plaintiff furnishing said
FEES. defendant the actual model of the tiles in
escayola and explained to said engraver
On August 5, 1969, the Court of Appeals affirmed the the plans, specifications and the details
decision of the trial court, with the modification that of the engravings as he wanted them to
plaintiff-appellee's award of moral damages was reduced be made, including an explanation of the
to P3,000.00. 7 lip width, artistic slope of easement and
critical depth of the engraving that
The petitioner assigns the following errors supposedly plaintiff wanted for his moulds; that
committed by the Court of Appeals: engraver Enrique Aquino knew that the
moulds he was engraving for plaintiff
were the latter's very own, which
It is now respectfully submitted that the
possession the new features and
Court of Appeals committed the
characteristics covered by plaintiff's
following errors involving questions of
parent; that defendant Aguas personally,
law, to wit:
as a building contractor, purchased from
 plaintiff, tiles shaped out of these The Court of Appeals found that the private respondent
moulds at the back of which was has introduced an improvement in the process of tile-
imprinted plaintiff's patent number making because:
(Exhs., "A" to "E"); that subsequently,
through a representative, Mr. Leonardo, ... we find that plaintiff-appellee has
defendant Aguas requested Aquino to introduced an improvement in the
make engravings of the same type and process of tile-making, which proceeds
bearing the characteristics of plaintiff's not merely from mechanical skill, said
moulds; that Mr. Aquino knew that the improvement consisting among other
moulds he was asked to engrave for things, in the new critical depth, lip
defendant Aguas would be used to width, easement and field of designs of
produce cement tiles similar to plaintiff's; the new tiles. The improved lip width of
that the moulds which F.H. Aquino & appellee's tiles ensures the durability of
Sons eventually engraved for Aguas and the finished product preventing the
for which it charged Aguas double the flaking off of the edges. The easement
rate it charged plaintiff De Leon, contain caused by the inclination of the
the very same characteristic features of protrusions of the patented moulds is for
plaintiff's mould and that Aguas used the purpose of facilitating the removal of
these moulds in the manufacture of his the newly processed tile from the female
tiles which he actually put out for sale to die. Evidently, appellee's improvement
the public (Exhs. "1" to "3" and Exhs. "A" consists in the solution to the old critical
to "E"); that both plaintiff's and problem by making the protrusions on
defendant Aguas' tiles are sculptured his moulds attain an optimum height, so
pre-cast wall tiles intended as a new that the engraving thereon would be
feature of construction and wag deep enough to produce tiles for
ornamentation substantially Identical to sculptured and decorative purposes,
each other in size, easement, lip width strong optimum thickness of appellee's
and critical depth of the deepest new tiles of only 1/8 of an inch at the
depression; and that the only significant deepest easement (Exhs. "D" and "D-1")
difference between plaintiff's mould and is a most critical feature, suggestive of
that engraved by Aquino for Aguas is discovery and inventiveness, especially
that, whereas plaintiff's mould turns out considering that, despite said thinness,
tiles 4 x 4 inches in size, defendant the freshly formed tile remains strong
Aguas' mould is made to fit a 4-1/4 x 4- enough for its intended purpose.
1/4 inch tile. 9
While it is true that the matter of
The patent right of the private respondent expired on easement, lip width, depth, protrusions
May 5, 1977. 10 The errors will be discuss only to and depressions are known to some
determine the right of said private respondent to sculptors, still, to be able to produce a
damages. new and useful wall tile, by using them
all together, amounts to an invention.
The petitioner questioned the validity of the patent of the More so, if the totality of all these
private respondent, Conrado G. de Leon, on the ground features are viewed in combination with
that the process, subject of said patent, is not an the Ideal composition of cement, sodium
invention or discovery, or an improvement of the old silicate and screened fine sand.
system of making tiles. It should be noted that the private
respondent does not claim to be the discoverer or By using his improved process, plaintiff
inventor of the old process of tile-making. He only claims has succeeded in producing a new
to have introduced an improvement of said process. In product - a concrete sculptured tile
fact, Letters Patent No. 658 was issued by the Philippine which could be utilized for walling and
Patent Office to the private respondent, Conrado G. de decorative purposes. No proof was
Leon, to protect his rights as the inventor of "an alleged adduced to show that any tile of the
new and useful improvement in the process of making same kind had been produced by others
mosaic pre-cast tiles." 11 Indeed, Section 7, Republic Act before appellee. Moreover, it appears
No. 165, as amended provides: "Any invention of a new that appellee has been deriving
and useful machine, manufactured product or substance, considerable profit from his manufacture
process, or an improvement of the foregoing, shall be and sale of such tiles. This commercial
patentable. success is evidence of patentability
(Walker on Patents, Dellers Edition, Vol.
I, p. 237). 12
The validily of the patent issued by the Philippines tiles decorative, artistic and suitable for wall
Patent Office in favor of the private respondent and the ornamentation, and the fact that the tiles can be mass
question over the inventiveness, novelty and usefulness produced in commercial quantities and can be
of the improved process therein specified and described conveniently stock-piled, handled and packed without
are matters which are better determined by the any intolerable incidence of breakages. 14
Philippines Patent Office. The technical staff of the
Philippines Patent Office, composed of experts in their The petitioner also contends that the improvement of
field, have, by the issuance of the patent in question, respondent is not patentable because it is not new,
accepted the thinness of the private respondent's new useful and inventive. This contention is without merit.
tiles as a discovery. There is a presumption that the
Philippines Patent Office has correctly determined the The records disclose that de Leon's process is an
patentability of the improvement by the private improvement of the old process of tile making. The tiles
respondent of the process in question. produced from de Leon's process are suitable for
construction and ornamentation, which previously had
Anent this matter, the Court of Appeals said: not been achieved by tiles made out of the old process
of tile making. De Leon's invention has therefore brought
Appellant has not adduced evidence about a new and useful kind of tile. The old type of tiles
sufficient to overcome the above were usually intended for floors although there is nothing
established legal presumption of validity to prevent one from using them for walling purposes.
or to warrant reversal of the findings of These tiles are neither artistic nor ornamental. They are
the lower court relative to the validity of heavy and massive.
the patent in question. In fact, as we
have already pointed out, the clear The respondent's improvement is indeed inventive and
preponderance of evidence bolsters said goes beyond the exercise of mechanical skill. He has
presumption of validity of appellee's introduced a new kind of tile for a new purpose. He has
patent. There is no indication in the improved the old method of making tiles and pre-cast
records of this case and this Court is articles which were not satisfactory because of an
unaware of any fact, which would tend intolerable number of breakages, especially if deep
to show that concrete wall tiles similar to engravings are made on the tile. He has overcome the
those produced by appellee had ever problem of producing decorative tiles with deep
been made by others before he started engraving, but with sufficient durability. 15 Durability
manufacturing the same. In fact, during inspite of the thinness and lightness of the tile, is
the trial, appellant was challenged by assured, provided that a certain critical depth is
appellee to present a tile of the same maintained in relation to the dimensions of the tile. 16
kind as those produced by the latter,
from any earlier source but, despite the The petitioner also claims that changing the design from
fact that appellant had every chance to embossed to engraved tiles is neither new nor inventive
do so, he could not present any. There because the Machuca Tile Factory and the Pomona Tile
is, therefore, no concrete proof that the Manufacturing Company have been manufacturing
improved process of tile-making decorative wall tiles that are embossed as well as
described in appellee's patent was used engraved; 17 that these tiles have also depth, lip width,
by, or known to, others previous to his easement and field of designs; 18 and that the private
discovery thereof. 13 respondent had copied some designs of Pomona. 19

The contention of the petitioner Aguas that the letters The Machuca tiles are different from that of the private
patent of de Leon was actually a patent for the old and respondent. The designs are embossed and not
non-patentable process of making mosaic pre-cast tiles engraved as claimed by the petitioner. There may be
is devoid of merit. De Leon never claimed to have depressions but these depressions are too shallow to be
invented the process of tile-making. The Claims and considered engraved. Besides, the Machuca tiles are
Specifications of Patent No. 658 show that although heavy and massive.
some of the steps or parts of the old process of tile
making were described therein, there were novel and
inventive features mentioned in the process. Some of the There is no similarity between the Pomona Tiles and de
novel features of the private respondent's improvements Leon's tiles. The Pomona tiles are made of
are the following: critical depth, with corresponding ceramics. 20 The process involved in making cement tiles
easement and lip width to such degree as leaves the tile is different from ceramic tiles. Cement tiles are made
as thin as 1/8 of an inch at its thinnest portion, Ideal with the use of water, while in ceramics fire is used. As
composition of cement and fine river sand, among other regards the allegation of the petitioner that the private
ingredients that makes possible the production of tough respondent copied some designs of Pomona, suffice it to
and durable wall tiles, though thin and light; the say that what is in issue here is the process involved in
engraving of deep designs in such a way as to make the tile making and not the design.
In view of the foregoing, this Court finds that Patent No. give more teeth to the provisions of the
658 was legally issued, the process and/or improvement patent law thus promoting a stronger
being patentable. public policy committed to afford greater
incentives and protection to inventors,
Both the trial court and the Court of Appeals found as a the Court hereby awards plaintiff
fact that the petitioner Domiciano A. Aguas did infringe exemplary damages in the sum of
de Leon's patent. There is no showing that this case falls P5,000.00 to be paid jointly and
under one of the exceptions when this Court may severally by defendants. Considering
overrule the findings of fact of the Court of Appeals. The the status of plaintiff as a reputable
only issue then to be resolved is the amount of damages businessman, and owner of the likewise
that should be paid by Aguas. reputed House of Pre-Cast, he is
entitled to an award of moral damages
in the sum of P50,000.00. 23
In its decision the Court of Appeals affirmed the amount
of damages awarded by the lower court with the
modification that the respondent is only entitled to In reducing the amount of moral damages the Court of
P3,000.00 moral damages. 21 Appeals said:

The lower court awarded the following damages: 22 As regards the question of moral
damages it has been shown that as a
result of the unlawful acts of infringment
a) P10,020.99 by way of actual
committed by defendants, plaintiff was
damages;
unstandably very sad; he worried and
became nervous and lost concentration
b) P50,000.00 by way of moral on his work in connection with his tile
damages; business (pp. 28, 30, t.s.n., Feb. 28,
1964). In addition, plaintiff's character
c) P5,000.00 by way of exemplary and reputation have been unnecessarily
damages; put in question because defendants, by
their acts of infringement have created a
d) P5,000.00 by way of attomey's fees doubt or suspicion in the public mind
and concerning the truth and honesty of
plaintiff's advertisements and public
e) Costs of suit announcements of his valid patent.
Necessarily, said acts of defendants
have caused plaintiff considerable
because:
mental suffering, considering especially,
the fact that he staked everything on his
An examination of the books of pre-cast tile business (p. 36, t.s.n., Id.)
defendant Aguas made before a The wantonness and evident bad faith
Commissioner reveals that during the characterizing defendants' prejudicial
period that Aguas was manufacturing acts against plaintiff justify the
and selling tiles similar to plaintiff's, he assessment of moral damages in
made a gross income of P3,340.33, plaintiff's favor, though we do not believe
which can be safely be considered the the amount of P50,000.00 awarded by
amount by which he enriched himself the lower court is warranted by the
when he infringed plaintiff's patent. circumstances. We feel that said amount
Under Sec. 42 of the Patent Law any should be reduced to P3,000.00 by way
patentee whose rights have been of compensating appellee for his moral
infringed is entitled to damages which, suffering. "Willful injury to property may
according to the circumstances of the be a legal ground for awarding moral
case may be in a sum above the amount damages if the court should find that,
found as actual damages sustained under the circumstances such damages
provided the award does not exceed are justly due" (Art. 2219 NCC).
three times the amount of such actual
damages. Considering the wantonness
There is no reason to reduce the amount of damages
of the infringement committed by the
and attorneys fees awarded by the trial court as modified
defendants who knew all the time about
by the Court of Appeals.
the existence of plaintiff's patent, the
Court feels there is reason to grant
plaintiff maximum damages in the sum WHEREFORE, the decision of the Court of Appeals in
of P10,020.99. And in order to CA G.R. No. 37824-R appealed from is hereby affirmed,
discourage patent infringements and to without pronouncement as to costs.
SO ORDERED.

Diamond v. Chakrabarty, 447 U.S. 303 (1980)

CERTIORARI TO THE UNITED STATES COURT OF

CUSTOMS

AND PATENT APPEALS

Syllabus

Title 35 U.S.C. § 101 provides for the issuance of a

patent to a person who invents or discovers "any" new
and useful "manufacture" or "composition of matter."
Respondent filed a patent application relating to his
invention of a human-made, genetically engineered
bacterium capable of breaking down crude oil, a property
which is possessed by no naturally occurring bacteria. A
patent examiner's rejection of the patent application's
claims for the new bacteria was affirmed by the Patent
Office Board of Appeals on the ground that living things
are not patentable subject matter under § 101. The Court
of Customs and Patent Appeals reversed, concluding
that the fact that micro-organisms are alive is without
legal significance for purposes of the patent law.

Held: A live, human-made micro-organism is patentable

subject matter under § 101. Respondent's micro-
organism constitutes a "manufacture" or "composition of
matter" within that statute. Pp. 447 U. S. 308-318.

(a) In choosing such expansive terms as "manufacture"

and "composition of matter," modified by the
comprehensive "any," Congress contemplated that the
patent laws should be given wide scope, and the
relevant legislative history also supports a broad
construction. While laws of nature, physical phenomena,
and abstract ideas are not patentable, respondent's
claim is not to a hitherto unknown natural phenomenon,
but to a nonnaturally occurring manufacture or
composition of matter -- a product of human ingenuity
"having a distinctive name, character [and]
use." Hartranft v. Wiegmann, 121 U. S. 609, 121 U. S.
615. Funk Brothers Seed Co. v. Kalo Inoculant Co., 333
U. S. 127, distinguished. Pp. 447 U. S. 308-310.

(b) The passage of the 1930 Plant Patent Act, which

afforded patent protection to certain asexually
reproduced plants, and the 1970 Plant Variety Protection
Act, which authorized protection for certain sexually
reproduced plants but excluded bacteria from its
protection, does not evidence congressional
understanding that the terms "manufacture" or
"composition of matter" in § 101 do not include living bacteria; and third, claims to the bacteria themselves.
things. Pp. 447 U. S. 310-314. The patent examiner allowed the claims falling into the
first two categories, but rejected claims for the bacteria.
Page 447 U. S. 304 His decision rested on two grounds: (1) that micro-
organisms are "products of nature," and (2) that, as living
things, they are not patentable subject matter under 35
(c) Nor does the fact that genetic technology was
U.S.C. § 101.
unforeseen when Congress enacted § 101 require the
conclusion that micro-organisms cannot qualify as
patentable subject matter until Congress expressly Chakrabarty appealed the rejection of these claims to
authorizes such protection. The unambiguous language the Patent Office Board of Appeals, and the Board
of § 101 fairly embraces respondent's invention. affirmed the examiner on the second ground. [Footnote
Arguments against patentability under § 101, based on 3] Relying on the legislative history of the 1930 Plant
potential hazards that may be generated by genetic Patent Act, in which Congress extended patent
research, should be addressed to the Congress and the protection to certain asexually reproduced plants, the
Executive, not to the Judiciary. Pp. 447 U. S. 314-318. Board concluded that § 101 was not intended to cover
living things such as these laboratory created micro-
organisms.
596 F.2d 952, affirmed.

The Court of Customs and Patent Appeals, by a divided

BURGER, C J., delivered the opinion of the Court, in
vote, reversed on the authority of its prior decision in In
which STEWART, BLACKMUN, REHNQUIST, and
re Bergy, 563 F.2d 1031, 1038 (1977), which held that
STEVENS, JJ., joined. BRENNAN, J., filed a dissenting
"the fact that micro-organisms . . . are alive . . . [is]
opinion, in which WHITE, MARSHALL, and POWELL,
without legal significance" for purposes of the patent law.
JJ., joined, post, p. 447 U. S. 318.
[Footnote 4] Subsequently, we granted the Acting
Commissioner of Patents and Trademarks' petition for
Page 447 U. S. 305 certiorari in Bergy, vacated the judgment, and remanded
the case "for further consideration in light of Parker v.
MR. CHIEF JUSTICE BURGER delivered the opinion of Flook, 437 U. S. 584 (1978)." 438 U.S. 902 (1978). The
the Court. Court of Customs and Patent Appeals then vacated its
judgment in Chakrabarty and consolidated the case
We granted certiorari to determine whether a live, with Bergy for reconsideration. After reexamining both
human-made micro-organism is patentable subject cases in the light of our holding in Flook, that court, with
matter under 35 U.S.C. § 101. one dissent, reaffirmed its earlier judgments. 596 F.2d
952 (1979).
I
Page 447 U. S. 307
In 1972, respondent Chakrabarty, a microbiologist, filed
a patent application, assigned to the General Electric Co. The Commissioner of Patents and Trademarks again
The application asserted 36 claims related to sought certiorari, and we granted the writ as to both
Chakrabarty's invention of Bergy and Chakrabarty. 444 U.S. 924 (1979). Since
then, Bergy has been dismissed as moot, 444 U.S. 1028
"a bacterium from the genus Pseudomons containing (1980), leaving only Chakrabarty for decision.
therein at least two stable energy-generating plasmids,
each of said plasmids providing a separate hydrocarbon II
degradative pathway. [Footnote 1]"
The Constitution grants Congress broad power to
This human-made, genetically engineered bacterium is legislate to
capable of breaking down multiple components of crude
oil. Because of this property, which is possessed by no "promote the Progress of Science and useful Arts, by
naturally occurring bacteria, Chakrabarty's invention is securing for limited Times to Authors and Inventors the
believed to have significant value for the treatment of oil exclusive Right to their respective Writings and
spills. [Footnote 2] Discoveries."

Chakrabarty's patent claims were of three types: first, Art. I, § 8, cl. 8. The patent laws promote this progress
process claims for the method of producing the bacteria; by offering inventors exclusive rights for a limited period
as an incentive for their inventiveness and research
Page 447 U. S. 306 efforts. Kewanee Oil Co. v. Bicron Corp., 416 U. S.
470, 416 U. S. 480-481 (1974); Universal Oil Co. v.
second, claims for an inoculum comprised of a carrier Globe Co., 322 U. S. 471, 322 U. S. 484 (1944). The
material floating on water, such as straw, and the new authority of Congress is exercised in the hope that
"[t]he productive effort thereby fostered will have a 14, p. 55 (1st ed.1937)). In choosing such expansive
positive effect on society through the introduction of new terms as "manufacture" and "composition of matter,"
products and processes of manufacture into the modified by the comprehensive "any," Congress plainly
economy, and the emanations by way of increased contemplated that the patent laws would be given wide
employment and better lives for our citizens." scope.

Kewanee, supra, at 416 U. S. 480. The relevant legislative history also supports a broad
construction. The Patent Act of 1793, authored by
The question before us in this case is a narrow one of Thomas Jefferson, defined statutory subject matter as
statutory interpretation requiring us to construe 35 "any new and useful art, machine, manufacture, or
U.S.C. § 101, which provides: composition of matter, or any new or useful improvement
[thereof]." Act of Feb. 21, 1793, § 1, 1 Stat. 319. The Act
embodied Jefferson's philosophy that "ingenuity should
"Whoever invents or discovers any new and useful
receive a liberal encouragement."
process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and Page 447 U. S. 309
requirements of this title."
5 Writings of Thomas Jefferson 75-76 (Washington ed.
Specifically, we must determine whether respondent's 1871). See Graham v. John Deere Co., 383 U. S. 1, 383
micro-organism constitutes a "manufacture" or U. S. 7-10 (1966). Subsequent patent statutes in 1836,
"composition of matter" within the meaning of the statute. 1870, and 1874 employed this same broad language. In
[Footnote 5] 1052, when the patent laws were recodified, Congress
replaced the word "art" with "process," but otherwise left
Jefferson's language intact. The Committee Reports
Page 447 U. S. 308
accompanying the 1952 Act inform us that Congress
intended statutory subject matter to "include anything
III under the sun that is made by man." S Rep. No 1979,
82d Cong., 2d Sess., 5 (1952); H.R.Rep. No. 1979, 82d
In cases of statutory construction we begin, of course, Cong., 2d Sess., 6 (1952). [Footnote 6]
with the language of the statute. Southeastern
Community College v. Davis, 442 U. S. 397, 442 U. S. This is not to suggest that § 101 has no limits, or that it
405 (1979). And "unless otherwise defined, words will be embraces every discovery. The laws of nature, physical
interpreted as taking their ordinary, contemporary, phenomena, and abstract ideas have been held not
common meaning." Perrin v. United States, 444 U. S. patentable. See Parker v. Flook, 437 U. S.
37, 444 U. S. 42 (1979). We have also cautioned that 584 (1978); Gottschalk v. Benson, 409 U. S. 63, 409 U.
courts "should not read into the patent laws limitations S. 67 (1972); Funk Brothers Seed Co. v. Kalo Inoculant
and conditions which the legislature has not Co., 333 U. S. 127, 333 U. S. 130 (1948); O'Reilly v.
expressed." United States v. Dubilier Condenser Morse, 15 How. 62, 56 U. S. 112-121 (1854); Le Roy v.
Corp., 289 U. S. 178, 289 U. S. 199 (1933) . Tatham, 14 How. 156, 55 U. S. 175 (1853). Thus, a new
mineral discovered in the earth or a new plant found in
Guided by these canons of construction, this Court has the wild is not patentable subject matter. Likewise,
read the term "manufacture" in § 101 in accordance with Einstein could not patent his celebrated law that E=mc2;
its dictionary definition to mean nor could Newton have patented the law of gravity. Such
discoveries are "manifestations of . . . nature, free to all
"the production of articles for use from raw or prepared men and reserved exclusively to none." Funk,
materials by giving to these materials new forms, supra at 333 U. S. 130.
qualities, properties, or combinations, whether by hand
labor or by machinery." Judged in this light, respondent's micro-organism plainly
qualifies as patentable subject matter. His claim is not to
American Fruit Growers, Inc. v. Brogdex Co., 283 U. S. a hitherto unknown natural phenomenon, but to a
1, 283 U. S. 11 (1931). Similarly, "composition of matter" nonnaturally occurring manufacture or composition of
has been construed consistent with its common usage to matter -- a product of human ingenuity "having a
include distinctive name, character [and]

"all compositions of two or more substances and . . . all Page 447 U. S. 310
composite articles, whether they be the results of
chemical union, or of mechanical mixture, or whether use." Hartranft v. Wiegmann, 121 U. S. 609, 121 U. S.
they be gases, fluids, powders or solids." 615 (1887). The point is underscored dramatically by
comparison of the invention here with that
Shell Development Co. v. Watson, 149 F. Supp. 279, in Funk. There, the patentee had discovered that there
280 (DC 1957) (citing 1 A. Deller, Walker on Patents § existed in nature certain species of root nodule bacteria
which did not exert a mutually inhibitive effect on each be unreasonable and impossible." Id. at 126.
other. He used that discovery to produce a mixed culture The Latimer case, it seems, came to "se[t] forth the
capable of inoculating the seeds of leguminous plants. general stand taken in these matters" that plants were
Concluding that the patentee had discovered "only some natural products not subject to patent protection. Thorne,
of the handiwork of nature," the Court ruled the product Relation of Patent Law to Natural Products, 6
nonpatentable: J.Pat.Off.Soc. 23, 24

"Each of the species of root-nodule bacteria contained in Page 447 U. S. 312

the package infects the same group of leguminous
plants which it always infected. No species acquires a (1923). [Footnote 8] The second obstacle to patent
different use. The combination of species produces no protection for plants was the fact that plants were
new bacteria, no change in the six species of bacteria, thought not amenable to the "written description"
and no enlargement of the range of their utility. Each requirement of the patent law. See 35 U.S.C. § 112.
species has the same effect it always had. The bacteria Because new plants may differ from old only in color or
perform in their natural way. Their use in combination perfume, differentiation by written description was often
does not improve in any way their natural functioning. impossible. See Hearings on H.R. 11372 before the
They serve the ends nature originally provided, and act House Committee on Patents, 71st Cong., 2d Sess., 7
quite independently of any effort of the patentee." (1930) (memorandum of Patent Commissioner
Robertson).
333 U.S. at 333 U. S. 131. Here, by contrast, the
patentee has produced a new bacterium with markedly In enacting the Plant Patent Act, Congress addressed
different characteristics from any found in nature, and both of these concerns. It explained at length its belief
one having the potential for significant utility. His that the work of the plant breeder "in aid of nature" was
discovery is not nature's handiwork, but his own; patentable invention. S.Rep. No. 315, 71st Cong., 2d
accordingly it is patentable subject matter under § 101. Sess., 8 (1930); H.R.Rep. No. 1129, 71st Cong., 2d
Sess., 7-9 (1930). And it relaxed the written description
IV requirement in favor of "a description . . . as complete as
is reasonably possible." 35 U.S.C. § 162. No Committee
Two contrary arguments are advanced, neither of which or Member of Congress, however, expressed the
we find persuasive. broader view, now urged by the petitioner, that the terms
"manufacture" or "composition of matter" exclude living
things. The sole support for that position in the legislative
(A)
history of the 1930 Act is found in the conclusory
statement of Secretary of Agriculture Hyde, in a letter to
The petitioner's first argument rests on the enactment of the Chairmen of the House and Senate Committees
the 1930 Plant Patent Act, which afforded patent considering the 1930 Act, that "the patent laws . . . at the
protection to certain asexually reproduced plants, and present time are understood to cover only inventions or
the 1970 Plant discoveries in the field of inanimate nature." See S.Rep.
No. 315, supra at Appendix A; H.R.Rep. No.
Page 447 U. S. 311 1129, supra at Appendix A. Secretary Hyde's opinion,
however, is not entitled to controlling weight. His views
Variety Protection Act, which authorized protection for were solicited on the administration of the new law. and
certain sexually reproduced plants but excluded bacteria not on the scope of patentable
from its protection. [Footnote 7] In the petitioner's view,
the passage of these Acts evidences congressional Page 447 U. S. 313
understanding that the terms "manufacture" or
"composition of matter" do not include living things; if subject matter -- an area beyond his competence.
they did, the petitioner argues, neither Act would have Moreover, there is language in the House and Senate
been necessary. Committee Reports suggesting that, to the extent
Congress considered the matter, it found the Secretary's
We reject this argument. Prior to 1930, two factors were dichotomy unpersuasive. The Reports observe:
thought to remove plants from patent protection. The first
was the belief that plants, even those artificially bred, "There is a clear and logical distinction between the
were products of nature for purposes of the patent law. discovery of a new variety of plant and of certain
This position appears to have derived from the decision inanimate things, such, for example, as a new and useful
of the Patent Office in Ex parte Latimer, 1889 natural mineral. The mineral is created wholly by nature
Dec.Com.Pat 123, in which a patent claim for fiber found unassisted by man. . . . On the other hand, a plant
in the needle of the Pinus australis was rejected. The discovery resulting from cultivation is unique, isolated,
Commissioner reasoned that a contrary result would and is not repeated by nature, nor can it be reproduced
permit "patents [to] be obtained upon the trees of the by nature unaided by man. . . ."
forest and the plants of the earth, which of course would
S.Rep. No. 315, supra at 6; H.R.Rep. No. 1129, supra at statement that the judiciary "must proceed cautiously
7 (emphasis added). Congress thus recognized that the when . . . asked to extend
relevant distinction was not between living and inanimate
things, but between products of nature, whether living or Page 447 U. S. 315
not, and human-made inventions. Here, respondent's
micro-organism is the result of human ingenuity and patent rights into areas wholly unforeseen by
research. Hence, the passage of the Plant Patent Act Congress." Id. at 437 U. S. 596.
affords the Government no support.
It is, of course, correct that Congress, not the courts,
Nor does the passage of the 1970 Plant Variety must define the limits of patentability; but it is equally
Protection Act support the Government's position. As the true that, once Congress has spoken, it is "the province
Government acknowledges, sexually reproduced plants and duty of the judicial department to say what the law
were not included under the 1930 Act because new is." Marbury v. Madison, 1 Cranch 137, 5 U. S.
varieties could not be reproduced true-to-type through 177 (1803). Congress has performed its constitutional
seedlings. Brief for Petitioner 27, n. 31. By 1970, role in defining patentable subject matter in § 101; we
however, it was generally recognized that true-to-type perform ours in construing the language Congress has
reproduction was possible, and that plant patent employed. In so doing, our obligation is to take statutes
protection was therefore appropriate. The 1970 Act as we find them, guided, if ambiguity appears, by the
extended that protection. There is nothing in its language legislative history and statutory purpose. Here, we
or history to suggest that it was enacted because § 101 perceive no ambiguity. The subject matter provisions of
did not include living things. the patent law have been cast in broad terms to fulfill the
constitutional and statutory goal of promoting "the
In particular, we find nothing in the exclusion of bacteria Progress of Science and the useful Arts" with all that
from plant variety protection to support the petitioner's means for the social and economic benefits envisioned
position. See n 7, supra. The legislative history gives no by Jefferson. Broad general language is not necessarily
reason for this exclusion. As the Court of Customs and ambiguous when congressional objectives require broad
terms.
Page 447 U. S. 314
Nothing in Flook is to the contrary. That case applied our
Patent Appeals suggested, it may simply reflect prior precedents to determine that a "claim for an
congressional agreement with the result reached by that improved method of calculation, even when tied to a
court in deciding In re Arzberger, 27 C.C.P.A.(Pat.) specific end use, is unpatentable subject matter under §
1315, 112 F.2d 834 (1940), which held that bacteria 101." 437 U.S. at 437 U. S. 595, n. 18. The Court
were not plants for the purposes of the 1930 Act. Or it carefully scrutinized the claim at issue to determine
may reflect the fact that, prior to 1970, the Patent Office whether it was precluded from patent protection under
had issued patents for bacteria under § 101. [Footnote 9] "the principles underlying the prohibition against patents
In any event, absent some clear indication that Congress for ideas' or phenomena of nature." Id.  at  437 U. S. 593.
"focused on [the] issues . . . directly related to the one We have done that here. Flook did not announce a new
presently before the Court," SEC v. Sloan, 436 U. S. principle that inventions in areas not contemplated by
103, 436 U. S. 120-121 (1978), there is no basis for Congress when the patent laws were enacted are
reading into its actions an intent to modify the plain unpatentable  per se.
meaning of the words found in § 101. See TVA v.
Hill, 437 U. S. 153, 437 U. S. 189-193 (1978); United To read that concept into Flook would frustrate the
States v. Price, 361 U. S. 304, 361 U. S. 313 (1960). purposes of the patent law. This Court frequently has
observed that a statute is not to be confined to the
(B) "particular application[s] . . . contemplated by the
legislators." Barr v. United States, 324 U. S. 83, 324 U.
The petitioner's second argument is that micro- S. 90 (1945). Accord, Browder v. United States, 312 U.
organisms cannot qualify as patentable subject matter S. 335, 312 U. S. 339 (1941); Puerto Rico v. Shell Co.,
until Congress expressly authorizes such protection. His
position rests on the fact that genetic technology was Page 447 U. S. 316
unforeseen when Congress enacted § 101. From this it
is argued that resolution of the patentability of inventions 302 U. S. 253, 302 U. S. 257 (1937). This is especially
such as respondent's should be left to Congress. The true in the field of patent law. A rule that unanticipated
legislative process, the petitioner argues, is best inventions are without protection would conflict with the
equipped to weigh the competing economic, social, and core concept of the patent law that anticipation
scientific considerations involved, and to determine undermines patentability. See Graham v. John Deere
whether living organisms produced by genetic Co., 383 U.S. at 383 U. S. 12-17. Mr. Justice Douglas
engineering should receive patent protection. In support reminded that the inventions most benefiting mankind
of this position, the petitioner relies on our recent holding are those that "push back the frontiers of chemistry.
in Parker v. Flook, 437 U. S. 584 (1978), and the physics, and the like." Great A. & P. Tea Co. v.
Supermarket Corp., 340 U. S. 147, 340 U. S. 154 (1950) "[o]ur individual appraisal of the wisdom or unwisdom of
(concurring opinion). Congress employed broad general a particular [legislative] course . . . is to be put aside in
language in drafting § 101 precisely because such the process of interpreting a statute."
inventions are often unforeseeable. [Footnote 10]
TVA v. Hill, 437 U.S. at 437 U. S. 194. Our task, rather,
To buttress his argument, the petitioner, with the support is the narrow one of determining what Congress meant
of amicus, points to grave risks that may be generated by the words it used in the statute; once that is done, our
by research endeavors such as respondent's. The briefs powers are exhausted. Congress is free to amend § 101
present a gruesome parade of horribles. Scientists, so as to exclude from patent protection organisms
among them Nobel laureates, are quoted suggesting that produced by genetic engineering. Cf. 42 U.S.C. §
genetic research may pose a serious threat to the 2181(a), exempting from patent protection inventions
human race, or, at the very least, that the dangers are "useful solely in the utilization of special nuclear material
far too substantial to permit such research to proceed or atomic energy in an atomic weapon." Or it may
apace at this time. We are told that genetic research and choose to craft a statute specifically designed for such
related technological developments may spread pollution living things. But, until Congress takes such action, this
and disease, that it may result in a loss of genetic Court must construe the language of § 101 as it is. The
diversity, and that its practice may tend to depreciate the language of that section fairly embraces respondent's
value of human life. These arguments are forcefully, invention.
even passionately, presented; they remind us that, at
times, human ingenuity seems unable to control fully the Accordingly, the judgment of the Court of Customs and
forces it creates -- that, with Hamlet, it is sometimes Patent Appeals is
better "to bear those ills we have than fly to others that
we know not of." Affirmed.

It is argued that this Court should weigh these potential [Footnote 1]

hazards in considering whether respondent's invention is
Plasmids are hereditary units physically separate from
Page 447 U. S. 317 the chromosomes of the cell. In prior research,
Chakrabarty and an associate discovered that plasmids
patentable subject matter under § 101. We disagree. control the oil degradation abilities of certain bacteria. In
The grant or denial of patents on micro-organisms is not particular, the two researchers discovered plasmids
likely to put an end to genetic research or to its attendant capable of degrading camphor and octane, two
risks. The large amount of research that has already components of crude oil. In the work represented by the
occurred when no researcher had sure knowledge that patent application at issue here, Chakrabarty discovered
patent protection would be available suggests that a process by which four different plasmids, capable of
legislative or judicial fiat as to patentability will not deter degrading four different oil components, could be
the scientific mind from probing into the unknown any transferred to and maintained stably in a single
more than Canute could command the tides. Whether Pseudomonas bacterium, which itself has no capacity for
respondent's claims are patentable may determine degrading oil.
whether research efforts are accelerated by the hope of
reward or slowed by want of incentives, but that is all. [Footnote 2]

What is more important is that we are without At present, biological control of oil spills requires the use
competence to entertain these arguments -- either to of a mixture of naturally occurring bacteria, each capable
brush them aside as fantasies generated by fear of the of degrading one component of the oil complex. In this
unknown or to act on them. The choice we are urged to way, oil is decomposed into simpler substances which
make is a matter of high policy for resolution within the can serve as food for aquatic life. However, for various
legislative process after the kind of investigation, reasons, only a portion of any such mixed culture
examination, and study that legislative bodies can survives to attack the oil spill. By breaking down multiple
provide and courts cannot. That process involves the components of oil, Chakrabarty's microorganism
balancing of competing values and interests, which, in promises more efficient and rapid oil-spill control.
our democratic system, is the business of elected
representatives. Whatever their validity, the contentions
now pressed on us should be addressed to the political [Footnote 3]
branches of the Government, the Congress and the
Executive, and not to the courts. [Footnote 11] The Board concluded that the new bacteria were not
"products of nature," because Pseudomonas bacteria
Page 447 U. S. 318 containing two or more different energy-generating
plasmids are not naturally occurring.
We have emphasized in the recent past that
[Footnote 4]
Bergy involved a patent application for a pure culture of Florists Exchange and Horticultural Trade World, July
the microorganism Streptomuces vellosus found to be 15, 1933, p. 9.
useful in the production of lincomycin, an antibiotic.
[Footnote 9]
[Footnote 5]
In 1873, the Patent Office granted Louis Pasteur a
This case does not involve the other "conditions and patent on "yeast, free from organic germs of disease, as
requirements" of the patent laws, such as novelty and an article of manufacture." And in 1967 and 1968,
nonobviousness. 35 U.S.C. §§ 102, 103. immediately prior to the passage of the Plant Variety
Protection Act, that Office granted two patents which, as
[Footnote 6] the petitioner concedes, state claims for living micro-
organisms. See Reply Brief for Petitioner 3, and n. 2.
This same language was employed by P. J. Federico, a
principal draftsman of the 1952 recodification, in his [Footnote 10]
testimony regarding that legislation:
Even an abbreviated list of patented inventions
"[U]nder section 101, a person may have invented a underscores the point: telegraph (Morse, No. 1,647);
machine or a manufacture, which may include anything telephone (Bell, No. 174,465); electric lamp (Edison, No.
under the sun that is made by man. . . ." 223,898); airplane (the Wrights, No. 821,393); transistor
(Bardeen & Brattain, No. 2,524,035); neutronic reactor
(Fermi & Szilard, No. 2,708,656); laser (Schawlow &
Hearings on H.R. 3760 before Subcommittee No. 3 of
Townes, No. 2,929,922). See generally Revolutionary
the House Committee on the Judiciary, 82d Cong., 1st
Ideas, Patents & Progress in America, United States
Sess., 37 (1951).
Patent and Trademark Office (1976).
[Footnote 7]
[Footnote 11]
The Plant Patent Act of 1930, 35 U.S.C. § 161, provides
We are not to be understood as suggesting that the
in relevant part:
political branches have been laggard in the consideration
of the problems related to genetic research and
"Whoever invents or discovers and asexually reproduces technology. They have already taken action. In 1976, for
any distinct and new variety of plant, including cultivated example, the National Institutes of Health released
sports, mutants, hybrids, and newly found seedlings, guidelines for NIH-sponsored genetic research which
other than a tuber propagated plant or a plant found in established conditions under which such research could
an uncultivated state, may obtain a patent therefor. . . ." be performed. 41 Fed.Reg. 27902. In 1978, those
guidelines were revised and relaxed. 43 Fed.Reg.
The Plant Variety Protection Act of 1970, provides in 60080, 60108, 60134. And Committees of the Congress
relevant part: have held extensive hearings on these matters. See,
e.g., Hearings on Genetic Engineering before the
"The breeder of any novel variety of sexually reproduced Subcommittee on Health of the Senate Committee on
plant (other than fungi, bacteria, or first generation Labor and Public Welfare, 94th Cong., 1st Sess. (1975);
hybrids) who has so reproduced the variety, or his Hearings before the Subcommittee on Science,
successor in interest, shall be entitled to plant variety Technology, and Space of the Senate Committee on
protection therefor. . . ." Commerce, Science, and Transportation, 95th Cong.,
1st Sess. (1977); Hearings on H.R. 4759 et al. before
84 Stat. 1547, 7 U.S.C. § 2402(a). See generally 3 A. the Subcommittee on Health and the Environment of the
Deller, Walker on Patents, ch. IX (2d ed.1964); R. Allyn, House Committee on Interstate and Foreign Commerce,
The First Plant Patents (1934). 95th Cong., 1st Sess. (1977).

[Footnote 8] MR. JUSTICE BRENNAN, with whom MR. JUSTICE

WHITE, MR. JUSTICE MARSHALL, and MR. JUSTICE
POWELL join, dissenting.
Writing three years after the passage of the 1930 Act, R.
Cook, Editor of the Journal of Heredity, commented:
I agree with the Court that the question before us is a
narrow one. Neither the future of scientific research, nor
"It is a little hard for plant men to understand why [Art. I,
even the ability of respondent Chakrabarty to reap some
§ 8] of the Constitution should not have been earlier
monopoly profits from his pioneering work, is at stake.
construed to include the promotion of the art of plant
Patents on the processes by which he has produced and
breeding. The reason for this is probably to be found in
employed the new living organism are not contested.
the principle that natural products are not patentable."
The only question we need decide is whether Congress,
exercising its authority under Art. I, § 8, of the previously unavailable benefits to be derived from
Constitution, intended that he be able to secure a extending patent protection to plants. [Footnote 2/5]
monopoly on the living organism itself, no matter how H.R.Rep.
produced or how used. Because I believe the Court has
misread the applicable legislation, I dissent. Page 447 U. S. 321

Page 447 U. S. 319 No. 91-1605, pp. 1-3 (1970); S.Rep. No. 315, 71st
Cong., 2d Sess., 1-3 (1930). Because Congress thought
The patent laws attempt to reconcile this Nation's deep- it had to legislate in order to make agricultural "human-
seated antipathy to monopolies with the need to made inventions" patentable, and because the
encourage progress. Deepsouth Packing Co. v. Laitram legislation Congress enacted is limited, it follows that
Corp., 406 U. S. 518, 406 U. S. 530-531 (1972); Graham Congress never meant to make items outside the scope
v. John Deere Co., 383 U. S. 1, 383 U. S. 7-10 (1966). of the legislation patentable.
Given the complexity and legislative nature of this
delicate task, we must be careful to extend patent Second, the 1970 Act clearly indicates that Congress
protection no further than Congress has provided. In has included bacteria within the focus of its legislative
particular, were there an absence of legislative direction, concern, but not within the scope of patent protection.
the courts should leave to Congress the decisions Congress specifically excluded bacteria from the
whether and how far to extend the patent privilege into coverage of the 1970 Act. 7 U.S.C. § 2402(a). The
areas where the common understanding has been that Court's attempts to supply explanations for this explicit
patents are not available. [Footnote 2/1] Cf. Deepsouth exclusion ring hollow. It is true that there is no mention in
Packing Co. v. Laitram Corp., supra. the legislative history of the exclusion, but that does not
give us license to invent reasons. The fact is that
In this case, however, we do not confront a complete Congress, assuming that animate objects as to which it
legislative vacuum. The sweeping language of the had not specifically legislated could not be patented,
Patent Act of 1793, as reenacted in 1952, is not the last excluded bacteria from the set of patentable organisms.
pronouncement Congress has made in this area. In
1930, Congress enacted the Plant Patent Act affording The Court protests that its holding today is dictated by
patent protection to developers of certain asexually the broad language of § 101, which cannot "be confined
reproduced plants. In 1970, Congress enacted the Plant to the particular application[s] . . . contemplated by the
Variety Protection Act to extend protection to certain new legislators.'" Ante at 447 U. S. 315, quoting  Barr v.
plant varieties capable of sexual reproduction. Thus, we United States, 324 U. S. 83, 324 U. S. 90 (1945). But as
are not dealing -- as the Court would have it -- with the I have shown, the Court's decision does not follow the
routine problem of "unanticipated unavoidable implications of the statute. Rather, it
inventions." Ante at 447 U.S. 316. In these two Acts, extends the patent system to cover living material
Congress has addressed the general problem of
patenting animate inventions and has chosen carefully Page 447 U. S. 322
limited language granting protection to some kinds of
discoveries, but specifically excluding others. These Acts
strongly evidence a congressional limitation that even though Congress plainly has legislated in the belief
excludes bacteria from patentability. [Footnote 2/2] that § 101 does not encompass living organisms. It is
the role of Congress, not this Court, to broaden or
narrow the reach of the patent laws. This is especially
Page 447 U. S. 320 true where, as here, the composition sought to be
patented uniquely implicates matters of public concern.
First, the Acts evidence Congress' understanding, at
least since 1930, that § 101 does not include living [Footnote 2/1]
organisms. If newly developed living organisms not
naturally occurring had been patentable under § 101, the
plants included in the scope of the 1930 and 1970 Acts I read the Court to admit that the popular conception,
could have been patented without new legislation. Those even among advocates of agricultural patents, was that
plants, like the bacteria involved in this case, were new living organisms were unpatentable. See ante at 447 U.
varieties not naturally occurring. [Footnote 2/3] Although S. 311-312, and n. 8.
the Court, ante at 447 U. S. 311, rejects this line of
argument, it does not explain why the Acts were [Footnote 2/2]
necessary unless to correct a preexisting situation.
[Footnote 2/4] I cannot share the Court's implicit But even if I agreed with the Court that the 1930 and
assumption that Congress was engaged in either idle 1970 Acts were not dispositive, I would dissent. This
exercises or mere correction of the public record when it case presents even more cogent reasons
enacted the 1930 and 1970 Acts. And Congress than Deepsouth Packing Co. not to extend the patent
certainly thought it was doing something significant. The monopoly in the face of uncertainty. At the very least,
Committee Reports contain expansive prose about the these Acts are signs of legislative attention to the
problems of patenting living organisms, but they give no
affirmative indication of congressional intent that bacteria
be patentable. The caveat of Parker v. Flook, 437 U. S.
584, 437 U. S. 596 (1978), an admonition to "proceed
cautiously when we are asked to extend patent rights
into areas wholly unforeseen by Congress," therefore
becomes pertinent. I should think the necessity for
caution is that much greater when we are asked to
extend patent rights into areas Congress has foreseen
and considered, but has not resolved.

[Footnote 2/3]

The Court refers to the logic employed by Congress in

choosing not to perpetuate the "dichotomy" suggested
by Secretary Hyde. Ante at 447 U. S. 313. But by this
logic, the bacteria at issue here are distinguishable from
a "mineral . . . created wholly by nature" in exactly the
same way as were the new varieties of plants. If a new
Act was needed to provide patent protection for the
plants, it was equally necessary for bacteria. Yet
Congress provided for patents on plants, but not on
these bacteria. In short, Congress decided to make only
a subset of animate "human-made
inventions," ibid., patentable.

[Footnote 2/4]

If the 1930 Act's only purpose were to solve the technical

problem of description referred to by the
Court, ante at 447 U. S. 312, most of the Act, and in
particular its limitation to asexually reproduced plants,
would have been totally unnecessary.

[Footnote 2/5]

Secretary Hyde's letter was not the only explicit

indication in the legislative history of these Acts that
Congress was acting on the assumption that legislation
was necessary to make living organisms patentable. The
Senate Judiciary Committee Report on the 1970 Act
states the Committee's understanding that patent
protection extended no further than the explicit
provisions of these Acts:

"Under the patent law, patent protection is limited to

those varieties of plants which reproduce asexually, that
is, by such methods as grafting or budding. No
protection is available to those varieties of plants which
reproduce sexually, that is, generally by seeds."

S.Rep. No. 91-1246, p. 3 (1970). Similarly,

Representative Poage, speaking for the 1970 Act, after
noting the protection accorded asexually developed
plants, stated that, "for plants produced from seed, there
has been no such protection." 116 Cong.Rec. 40295
(1970).