DUPONT VS EMMA

Re: losartan

A patent is granted to provide rights and protection to the inventor after an invention is disclosed to
the public. It also seeks to restrain and prevent unauthorized persons 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 rules on the application and grant of patents established to protect against
any infringement. To balance public interests involved, failure to comply with strict procedural rules will
result in the failure to obtain a patent.

On revival of patent:
An abandoned patent application may only be revived within 4 months from the date of abandonment.
1962 Revised Rules of Practice, section 113
-delay was unavoidable
-may be revived as a pending application within 4 months from the date of abandonment
-upon good cause shown
-upon payment of required fee

Effect: an application not revived within the specified period shall be deemed forfeited

Chapter VII, Section 1 II(a) of 1962 Revised Rules of Practice:

A patent application is deemed abandoned if the applicant fails to prosecute the application within 4
months from the date of the mailing of J the notice of the last action by the Bureau of Patents,
Trademarks, and Technology Transfer, and not from applicant’s actual notice.

111. if an applicant fails to prosecute his application within four months after the date when the last
official notice of action by the Office was mailed to him, or within such time as may be fixed, the
application will become abandoned.

In this case, petition of revival was filed 13 years after the date of abandonment.

Intellectual Property Code, section 133.4 : three months to file for revival

The court do not provide any exception that could extend this 4-month period to 13 years.

Negligence: is inexcusable if its commission could have been avoided through ordinary diligence and
prudence. It is also settled that negligence of counsel binds the client as this “ensures against the
resulting uncertainty and tentativeness of proceedings if clients were allowed merely to disown their
counsel’s conduct.”

Bernardo vs CA No prudent party will leave the fate of his case entirely to his lawyer… it is the duty of a
party-litigant to be in contact with his counsel from time to time in order to be informed of the progress
of his case.

Schuartz- negligence of a patent applicant’s counsel binds the applicant

The law firm filed petitions for revival of its patent applications from March 1988, all of which were
denied by the Director of the Bureau of Patents for being filed out of time.

Petitioners lost sight of the fact that the petition could not be granted because of laches.
… an unreasonable period of time had lapsed due to the negligence of petitioner’s counsel

“a lawyer’s fidelity to the cause of his client reuires him to be ever mindful of the responsibilities that
should be expected of him. A lawyer shall not neglect a legal matter entrusted to him.”

Right of priority is only relevant when there are two or more conflicting patent applications on the same
invention. It does not automatically grant letters patent to an applicant.

Section 31 of Intellectual Property Code (IPC) right of priority

An application for patent filed by any person who has previously applied for the same invention in
another country which by treaty, convention, or law affords similar privileges to Filipino citizens, shall be
considered as filed as of the date of filing the foreign application: provided, that:
a. The local application expressly claims priority
b. It is filed within 12 months from the date the earliest foreign application was filed, and
c. A certified copy of the foreign application together with an English translation filed within 6
months from the date of filing in the Philippines

*e.g. an applicant who has filed a patent application in the US may have a right of priority over
the same invention in a patent application in the Philippines.

Section 29 IPC- First to File Rule -if two or more persons have made the invention separately and
independently of each other, the right to the patent shall belong to the person who filed an application
for such invention, or where two or more applications are filed for the same invention, the applicant
who has the earliest filing date or, the earliest priority date.

Creser Precision Systems vs CA: An inventor has no common-law right to a monopoly of his invention.
He has the right to make, use and vend his own invention, but if he voluntarily discloses it, such as by
offering it for sale, the world is free to copy and use it with impunity. A patent, however, gives the
inventor the right to exclude all others. As a patentee, he has the exclusive right of making, using or
selling the invention.

Pearl and Dean vs Shoemart The ultimate goal of a patent system is to bring new designs and
technologies into the public domain through disclosure. Ideas, once disclosed to the public without the
protection of a valid patent, are subject to appropriation without significant restraint.

Bauer & Cie vs O’Donnell the act secured to the inventor the exclusive right to make use, and vend the
thing patented and consequently to prevent others from exercising like privileges without the consent
of the patentee.

THREE-FOLD PURPOSE OF PATENT

1. Patent law seeks to foster and reward invention.
2. It promote disclosures of inventions to stimulate further innovation and to permit the public to
practice the invention once the patent expires.
3. The stringent requirements for patent protection. Seek to ensure that ideas in the public domain
remain there for the free use of the public.

RA NO. 165 AND IPC

Compulsory licensing- (IPC) grant a license to exploit a patented invention, even without the agreement
of the patent owner
-Under RA 165, it may be granted to any applicant three years after the grant of a patent if the invention
relates to food or medicine necessary for public health or safety.
-Under the same act, the legislative intent in the grant of a compulsory license was not only to afford
others an opportunity to provide the public with the quantity of the patented product, but also to
prevent the growth of monopolies, pursuant to the case of Smith Kline & French Laboratories vs CA.

ROYALTY
The patent holder’s proprietary right over the patent only lasts for 3 years from the grant of the patent,
after which any person may be allowed to manufacture, use or sell the invention subject to the payment
of royalties.

(a patentee is given a period of 3 years of complete monopoly over the patent)

Thus, compulsory licensing of a patent on food and medicine without regard to the other conditions
imposed in section 34 is not an undue deprivation of proprietary interests over a patent right because
the law sees to it that even after three years of complete monopoly something is awarded to the
inventor in the form of a bilateral and workable licensing agreement and a reasonable royalty to be
agreed upon by the parties and in default of such agreement, the Director of Patent may fix the terms
and conditions of the license.

In this case, the patent application for losartan products were forfeited as it would prejudice public
interest if granted of its petition for revival, for the loss of competition in the market for losartan
products may result in higher prices as it took 7-13 years for the IPO to act on the said patent
application.

AGUAS VS DE LEON
Re: pre-cast tiles

Section 7, RA 165
Any invention of a new and useful machine, manufactured product or substance, process, or an
improvement of the foregoing, shall be patentable.

There is presumption that the Philippines Patent Office has correctly determined the patentability of the
improvement by the private respondent of the process in question.

In this case, there were novel and inventive features mentioned in the process. He has introduced a new
kind of tile for a new purpose.

Issue: process involved in making the tile

In this case, Aguas indeed infringe de Leon’s patent and should pay damages.

Section 42, Patent Law any patentee whose rights have been infringed is entitled to damages which,
according to the circumstances of the case may be in sum above the amount found as actual damages
sustained provided the award does not exceed three times the amount of such actual damages.

Exemplary damages to discourage patent infringements and to give more teeth to the provisions of the
patent law thus promoting a stronger public policy committed to afford greater incentives and
protection to inventors.

Moral damages: Article 2219 NCC, Willful injury to property may be a legal ground for awarding moral
damages if the court should find that, under the circumstances such damages are justly due.

In this case, there was moral suffering.

CHING VS SALINAS
Re: utility model described as Leaf Spring Eye Bushing for Automobile
-not copyrightable, but subject to a patent-

It is worthy to state that the works protected under the Law on Copyright are:
Literary or artistic works (section 72)
And derivative works (sec. 173)

In this case, the leaf spring keme does not fall on either of the classification.
If in the first place, the item subject of the petition is not entitled to be protected by law on copyright,
how can there be any violation?

“ownership of a valid copyright is essential”

To determine whether the crime for infringement under RA 8293 is committed, the following must be
proved:
1. Owners of the copyrighted material
2. The copyrighted material was being copied and distributed

Ownership of copyrighted material is shown by proof of originality and copyrightability.

 a. Originality- meant that the material was not copied, and evidences at least minimal creativity;
that it was independently created by the author and that it possess at least same minimal
degree of creativity.
b. Copying- shown by proof of access to copyrighted material and substantial similarity between
the two works

Absence of copyright protection, even original creation may be freely copied.

A copyright certificate provides prima facie evidence of originality which is one element of copyright
validity.

The presumption of validity to a certificate of copyright registration merely orders the burden of proof.

Section 218.2 of RA 8293 provides:

a. Copyright shall be presumed to subsist in the work or other subject matter to which the action
relates if the defendant does not put in issue the question whether copyright subsist in the work
or other subject matter; and
b. Where the subsistence of the copyright is established, the plaintiff shall be presumed to be the
owner of the copyright if he claims to be the owner of the copyright and the defendant does not
put in issue the question of his ownership.

A certificate of registration creates no rebuttable presumption of copyright validity where other evidence
in the record casts doubt on the question. In such a case, validity will not be presumed.

Section 172.1 of RA 8293 Literary and Artistic works, hereinafter referred to as “works”, are original
intellectual creations in the literary and artistic domain protected from the moment of their creation
and shall include in particular:
…
h. original ornamental designs or models for articles of anufacture, whether or not registrable as an
industrial design, and other works of applied art.

In this case, Leaf spring is only a utility model.

Issue: whether the article is a work of art

Works of applied art include all original pictorials, graphics, and sculptural works that are intended to be
or have been embodied in useful article regardless of factors such as mass production, commercial
exploitation, and the potential availability of design patent protection.

Indeed, while works of applied art , original intellectual, literary and artistic works are copyrightable,
useful articles and works of industrial design are not.

A useful article may be copyrightable only if and only to the extent that such design incorporates
pictorial, graphic, or sculptural features that can be identified separately from , and are capable of
existing independently of the utilitarian aspects of the article.

In this case, the leaf spring are utility models, useful articles, albeit with no artistic design or value.

No copyright granted by law can be said to arise in favor of the petitioner despite the issuance of the
certificates of copyright registration and the deposit of the leaf spring and vehicle bushing.

Joaquin, Jr. vs. Drilon and Pearl & Dean, Inc. vs Shoemart Inc:
Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right
granted by the statute, and not simply a pre-existing right regulated by it. Being statutory grant, the
rights are only such as the statute confers, and may be obtained and enjoyed only with respect to the
subjects and by the persons, and on terms and conditions specified in the statute. Accordingly, it can
cover only the works falling within the statutory enumeration or description.
In this case, the works of petitioner are proper subject of a patent and does not entitle him to the
issuance of search warrant for violation of copyright laws.

Kho vs CA “these copyright and patent rights are completely distinct and separate from one another,
and the protection afforded by one cannot be used interchangeably to cover items or works that
exclusively pertain to others”

“thus, trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. A trademark is any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and shall include a stamped or marked container
of goods. In relation thereto, a trade name means the name or designation identifying or distinguishing
an enterprise. Meanwhile, the scope of a copyright s confined to literary and artistic works which are
original intellectual creations in the literary and artistic domain protected from the moment of their
creation. Patentable inventions, on the other hand, refer to any technical solution of a problem in any
field of human activity which is new, involves an inventive step and is industrially applicable.”

The dichotomy of protection for the aesthetic is not beauty and utility but art for the copyright and the
invention of original and ornamental design for design patents.

“the sole intrinsic function of an article is utility, the fact that the work is unique and attractively shaped
will not qualify it as a work of art”

Hence, the subjects in this case are not works of art, but are utility models which may be the subject of a
patent.

GODINES VS CA
Re: hand tractor or power tiller
-on infringement of patent and unfair competition-

Tests established to determine infringement:

a. Literal infringement -> resort must be had, in the first instance, to the words of the claim. If
accused matter clearly falls within the claim, infringement is made out and that is the end of it.
To determine whether the particular item falls within the literal meaning of the patent claims,
the court must juxtapose the claims of the patent and the accused product within the overall
context of the claims and specifications, to determine whether there is exact identity of all
material elements.
b. Doctrine of equivalents -> infringement also occurs when a device appropriates a prior
invention by incorporating its innovative concept and, albeit with some modification and
change, performs substantially the same function in substantially the same way to achieve
substantially the same result.

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

In this case, petitioner is liable for infringement.

Section 37 of RA 165
Right of Patentees- A patentee shall have the exclusive right to make, use and sell the patented
machine, article or product, and to use the patented process for the purpose of industry or commerce,
throughout the territory of the Philippines for the terms of the patent; and such making, using or selling
by any person without the authorization of the Patentee constitutes infringement of the patent.

Unfair Competition
Section 29 of RA 166
Unfair competition, rights and remedies- …
In particular, and without in any way limiting the scope of unfair competition, the following shall be
deemed guilty of unfair competition:
 a. Any person, who in selling his goods shall give them the general appearance of goods of another
manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in
which they are contained, or the devices or words thereon, or in any other feature of their
appearance, which would be likely to influence purchasers that the goods offered re those of a
manufacturer or dealer other than the actual manufacturer or dealer, or who otherwise clothes
the goods with such appearance shall deceive the public and defraud another of his legitimate
trade…

In this case, Godinez is liable for infringement of patent and unfair competition.

MAGUAN VS CA
Re: cancellation of patent

Section 45 and 46 of Patent Law: the court to make a finding on the validity or invalidity of patents and
in the event there exists a fair question of its invalidity, the situation calls for a denial of the writ of
preliminary injunction pending the evaluation of the evidence presented.

Issue: WON in an action for infringement the court a quo had jurisdiction to determine the invalidity of
patents at issue which invalidity was still pending consideration in the patent office

“when a patent is sought to be enforced, the questions of invention, novelty or prior use, and each of
them, are open to judicial examination”- Vargas vs FM Yaptico

Section 37 of RA 165: A patentee shall have the exclusive right to make, use and sell the patented article
or product and the making, using or selling by any person without the authorization of the patentee
constitutes infringement of the patent.

Section 42 of RA 165: Any patentee whose rights have been infringed upon may bring an action before
the proper CFI (now RTC) and to secure an injunction for the protection of his rights.

Section 45- defenses in an action for infringement

Section 46- if the court shall find the patent or any claim thereof invalid, the Director shall on
certification of the final judgment… issue an order cancelling the patent or the claims found invalid and
shall publish a notice thereof in the Official Gazette.

The burden of proof to substantiate a charge of infringement is with the plaintiff. But where the plaintiff
introduces the patent in evidence, and the same is in due form, there is created a prima facie
presumption of its correctness and validity. The decision of the Commissioner (now Director) of Patent in
granting the patent is presumed to be correct.

Frank, et.al. vs Kosuyama Vargas

An invention must possess the essential elements of novelty, originality and precedence and for the
patentee to be entitled to protection, the invention must be new to the world. Accordingly, a single
instance of public use of the invention by a patentee for more than two years (now for more than one
year only under sec. 9 of the Patent Law) before the date of his application for his patent, will be fatal to
the validity of the patent when issued.

Section 9. Invention not considered new or patentable- an invention shall not be considered new or
capable of being patented if it was known or used by others in the Philippines before the invention
thereof by the inventor named in an application for patent for the invention; or if it was patented or
described in any printed publication in the Philippines or any foreign country more than one year before
the application for a patent therefor; or if it had been in public use or on sale in the Philippines for more
than one year before the application for a patent therefor; or if it is the subject matter of a validity
issued patent in the Philippines granted on an application filed before the filing of the application for
patent therefor.
Vargas vs Yaptico- a preliminary injunction will not issue for patent infringement unless the validity of
the patent is clear and beyond question. The issuance of letters patent , standing alone, is not sufficient
to support such drastic relief. In cases of infringement of patent, no preliminary injunction will be
granted unless the patent is valid and infringed beyond question and the record conclusively proves the
defense is sham.

Sangki vs Comelec- the right to the relief demanded must be clear and unmistakable.

MANZANO VS CA
Re: utility model, an LPG gas burner
-action for cancellation for a gas burner registered patent-

The primary purpose of the patent system is not the reward of the individual but the advancement of
the arts and sciences. The function of a patent is to add to the sum of useful knowledge and one of the
purposes of the patent system is to encourage dissemination of information concerning discoveries and
inventions. This is a matter which is properly within the competence of the Patent Office the official
action of which has the presumption of correctness and may not be interfered with in the absence of
new evidence carrying thorough conviction that the Office has erred. Since the Patent Office is an expert
body preeminently qualified to determine questions of patentability, its findings must be accepted if
they are consistent with the evidence, with doubts as to patentability resolved in favor of the Patent
Office.

Section 7 of RA 165- Inventions patentable. Any invention of a new and useful machine, manufactured
product or substance, process or an improvement of any of the foregoing, shall be patentable.

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

Element of novelty is essential.

If a device or process has been known or used by others prior to its invention or discovery by the
applicant, an application for a patent therefore should be denied.

If the application has been granted, the court, in a judicial proceeding in which the validity of the patent
is drawn in question, will hold it void and ineffective.

An invention mst possess the essential elements of novelty, originality and precedence, and for the
patentee to be entitled to the protection the invention must be new to the world.

The issuance of patent by the Philippine Patent Office creates a presumption which yields clear and
cogent evidence that the patentee was the original and first inventor.

The burden of proving want of novelty is on him who avers it and the burden is a heavy one which is met
only by clear and satisfactory proof which overcomes every reasonable doubt.

PEAR & DEAN VS SHOEMART

Re: light boxes- Poster Ads
-fabricated-
-copyright infringement-

Faberge, Inc. vs Intermediate Appellate Court: the protective mantle of the Trademark Law extends
only to the goods used by the first user as specified in the certificate of registration, following section 20
of the Trademark law.
Section 20: certification of registration prima facie evidence of validity- a certificate of registration of a
mark or trade-name shall be prima facie evidence of the validity of the registration, the registrant’s
ownership of the mark or trade-name, and of the registrant’s exclusive right to use the name in
connection with the goods, business or services specified in the certificate, subject to any conditions and
limitations stated therein.

Jurisprudence has interpreted section 20 of the Trademark Law as an “implicit permission to a

manufacturer to venture into the production of goods and allow that producer to appropriate the brand
name of the senior registrant on goods other than those stated in the certificate of registration”

In this case, defendants cannot be liable for infringement of trademark. Poster Ads has for its specific
use in its stationeries, in contrast to the defendant’s use in their advertising display units.

In the absence of any convincing proof that “Poster Ads” has acquired a secondary meaning, the court
finds that Pear and Dean’s exclusive right to use “Poster Ads” is limited to what is written in its
certificate of registration, namely, stationeries.

Issue: copyright infringement

There was no copyright infringement, the copyright was limited to the drawings alone and not to the
light box itself.

Copyright, in the strict sense of the term, is purely a statutory right. Being a mere statutory grant, the
rights are limited to what the statute confers. It may be obtained and enjoyed only with respect to the
subjects and by the persons, and on terms and conditions specified in the statute. Accordingly, it can
cover only the works falling within the statutory enumeration or description.

What the law does not include, it excludes, and for the good reason: the light box was not a literary or
artistic piece which could be copyrighted under the copyright law.

Kho vs CA “these copyright and patent rights are completely distinct and separate from one another,
and the protection afforded by one cannot be used interchangeably to cover items or works that
exclusively pertain to others”

“thus, trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. A trademark is any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and shall include a stamped or marked container
of goods. In relation thereto, a trade name means the name or designation identifying or distinguishing
an enterprise. Meanwhile, the scope of a copyright s confined to literary and artistic works which are
original intellectual creations in the literary and artistic domain protected from the moment of their
creation. Patentable inventions, on the other hand, refer to any technical solution of a problem in any
field of human activity which is new, involves an inventive step and is industrially applicable.”

Issue: patent infringement

Petitioner never secured a patent for the light boxes.

Creser Precision Systems, Inc. vs CA: There can be no infringement of a patent until a patent has been
issued, since whatever right one has to the invention covered by the patent arises alone from the grant
of a patent. X x x An inventor has no common law right to a monopoly of his invention. He has the right
to make use of and vend his invention, but if he voluntarily discloses it, such as by offering it for sale, the
world is free to copy and use it with impunity. A patent however, gives the inventor the right to exclude
all others. As a patentee, he has the exclusive right of making, selling or using the invention.

No patent, no protection.

Bauer & Cie vs O’Donnel: the act secured to the inventor the exclusive right to make use, and vend the
thing patented, and consequently to prevent others from exercising like privileges without the consent
of the patentee. It was passed for the purpose of encouraging useful invention and promoting new and
useful inventions by the protection and stimulation given to inventive genius, and was intended to
secure the public, after the lapse of the exclusive privileges granted the benefit of such inventions and
improvements.

The patent system thus embodies a carefully crafted bargain for encouraging the creation and disclosure
of new and useful and non-obvious advances in technology and design, in return for the exclusive right
to practice the invention for a number of years. The inventor may keep his invention secret and reap its
fruit indefinitely. In consideration of its disclosure and the consequent benefit to the community, the
patent is granted. An exclusive enjoyment is guaranteed him for 17 years, but upon the expiration of
that period, the knowledge of the invention inures to the people, who are thus enabled to practice it
and profit by its use.

The patent law has a three-fold purpose:

1. Patent law seeks to foster and reward invention.
2. It promotes disclosures of inventions to stimulate further innovation and to permit the public to
practice the invention once the patent expires;
3. The stringent requirements for patent protection seek to ensure that ideas in the public domain
remain there for the free use of the public.

In this case, not having gone through the arduous examination for patents, the petitioner cannot
exclude others from the manufacture, sale or commercial use of the light boxes on the sole basis of its
copyright certificate over the technical drawings.

Baker vs Selden. US Supreme Court held that only the expression of an idea is protected by copyright,
not the idea itself.

To give to the author of the book an exclusive property in the art described therein, when no
examination of its novelty has ever been officially made, would be a surprise and a fraud upon the public.
That is the province of letters patent, not of copyright. The claim to an invention of discovery of an art or
manufacture must be subjected to the examination of the Patent Office before an exclusive right therein
can be obtained; and a patent from the government can only secure it.

If the discoverer writes and publishes a book on the subject (as regular physicians generally do), he gains
no exclusive right to the manufacture and sale of the medicine; he gives that to the public. If he desires
to acquire such exclusive right, he must obtain a patent for the mixture as a new art, manufacture or
composition of matter. He may copyright his book, if he pleases; but that only secures to him the
exclusive right of printing and publishing his book. So of all other inventions or discoveries.

The use of art is a totally different thing from a publication of the book explaining it.

The description of the art in a book, though entitled to the benefit of copyright, lays no foundation for an
exclusive claim to the art itself. The object of the one is explanation; the object of the other is use. The
former may be secured by copyright. The latter can only be secured at all, by letters patent.

Faberge Inc. vs Intermediate Appellate Court: “the certificate of registration issued by the Director of
Patents can confer (upon petitioner) the excusive right to use its own symbol only to those goods
specified in the certificate, subject to any conditions and limitations specified in the certificate x x x. One
who has adopted and used a trademark on his goods does not prevent the adoption and use of the
same trademark by others for products which are of a different description.”

Issue: unfair competition

Doctrine of secondary meaning cannot be applied in this case as “Poster Ads” was generic and
incapable of being used as a trademark because it was used in the field of poster advertising, the very
business engaged in by petitioner.

PHARMA VS PFIZER
Re:
Can an injunctive relief be issued based on an action of patent infringement when the patent allegedly
infringed has already lapsed?

Exclusive right to monopolize the subject matter of the patent exists only within the term of the patent.

Section 37 of RA 165: Right of patentees. A patentee shall have the exclusive right to make, use and sell
the patented machine, article or product, and to use the patented process for the purpose of industry or
commerce, throughout the territory of the Philippines for the term of the patent; and such making,
using or selling by any person without the authorization of the patentee constitutes infringement of the
patent.

Two requisites must exist to warrant the issuance of an injunctive relief, namely:
1. The existence of a clear and unmistakable right that must be protected; and
2. An urgent and paramount necessity for the writ to prevent serious damage.

Since the patent which was the basis for issuing the injunction, was no longer valid, any issue as to the
propriety of extending the life of the injunction was already rendered moot and academic.

What tribunal has jurisdiction to review the decisions of the Director of Legal Affairs of the IPO?

In this case, what is being questioned is an interlocutory order of the BLA-IPO denying respondent’s
motion to extend the life of the preliminary injunction.

RA 8293 is silent with respect to any remedy available to litigants who intends to question an
interlocutory order issued by the BLA-IPO.

Interlocutory orders shall not be appealable.

In the absence of such remedy, the provisions of Rules Of Court shall apply in a suppletory manner.
Hence, in this case, respondents correctly resorted to the filing of a special civil action for certiorari with
the CA to question the assailed orders of the BLA-IPO, as they cannot appeal therefrom and they have
no other plain, speedy and adequate remedy in the ordinary course of law.

Note: Doctrine of Primary Jurisdiction

It applies where the claim is originally cognizable in the courts and comes into play whenever
enforcement of the claim requires the resolution of issues which, under a regulatory scheme, has been
placed within the special competence of an administrative body; in such a case, the judicial process is
suspended pending referral of such issues to the administrative body for its view.

One of the exceptions to the doctrine of primary jurisdiction is where the question involved is purely
legal and will ultimately have to be decided by the courts of justice.

NOTE: *Judicial power *Forum shopping and its elements

Is there forum shopping when a party files two actions with two seemingly different causes of action and
yet pray for the same relief?

Yes. It is settled by this Court in several cases that filing by a party of two apparently different actions
but with the same objective constitutes forum shopping.

A decision in one case will necessarily amount to res judicata in the other action.

CRESER PRECISION SYSTEMS, INC. VS CA

Re: military armaments- aerial fuze

Section 42 of RA 165
Civil action for infringement- any patentee, r anyone possessing any right, title or interest in and to the
patented invention, whose rights have been infringed, may bring a civil action before the proper Court
of First Instance (now RTC), to recover from the infringer damages sustained by reason of the
infringement and to secure an injunction for the protection of his right.

Only the patentee or his successirs-in-interest may file an action for infringement.

There can be no infringement of a patent until a patent has been issued, since whatever right one has to
the invention covered by the patent arises alone from the grant of patent.

The remedy of declaratory judgment or injunctive suit on patent invalidity relied upon by petitioner
cannot be likened to the civil action for infringement under section 42 of the Patent Law.

He can, under section 28, file a petition for cancellation of patent within three (3) years from the
publication of said patent with the Director of Patents and raise as a ground therefor that the person to
whom the patent was issued is not the true and actual inventor.

Aguas vs De Leon: There is a presumption that the Philippine Patent Office has correctly determined the
patentability of the improvement by the private respondent of the process in question.

PRINCE VS UNILAB
Re: aminoalkyl furan derivatives
On compulsory licensing

Section 36 of RA 165: Grant of License- of the Director finds that a case for the grant of license under
section 34, hereof made out, he may order the grant of an appropriate license and in default of
agreement among the parties as to the terms and conditions of the license he shall fix the terms and
conditions of the license in the order.

The order of the Director granting a license under this Chapter, when final, shall operate as a deed
granting a- license executed by the patentee and the other parties interest.

Section 35 of PD 1263 amending portions of RA 165: Grant of license- if the Director finds that a case
for the grant of a license under section 34 hereof has been made out, he shall within one hundred eighty
(180) days from the date the petition was filed, order the grant of an appropriate license. The order shall
state the terms and conditions of the license which he himself must fix in default of an agreement on
the matter manifested or submitted by the parties during the hearing.

On royalty:
Royalty payments shall not exceed 5% of the net wholesale price (as defined in section 33-A) of the
products manufactured under the license.

If the product, substance or process subject of the compulsory license is involved in an industrial project
approved by the Board of Investments, the royalty payable to the patentee or patentees shall not
exceed 3%.

Said provision grants to the Director of Patents the use of his sound discretion in fixing the percentage
for the royalty rate.

In this case, what the UNILAB has with the compulsory license is the bare right to use the patented
chemical compound in the manufacture of a special product.

The patented invention in this case relates to medicine and is necessary for public health as it can be
used as component in the manufacture of anti-ulcer medicine.

Here, there is no law requiring that the license be limited to a specific embodiment of the invention, or
to a particular claim.
Since the petitioner will be paid royalties on the sales of any products the licensee may manufacture
using any or all of the patented compounds, the petitioner cannot complain of deprivation of property
rights without just compensation.

SMITH VS CA
Re: methods and compositions for product biphasic parasiticide activity using methyl 5 propylthio-2-
benzimidazole carbamate

Patent infringement

The burden of proof to substantiate a charge for patent infringement rests on the plaintiff.

When the language of its claims is clear and distinct, the patentee is bound thereby and may not claim
anything beyond them. And so are the courts bound which may not add to or detract from the claims
matters not expressed or necessarily implied, nor may they enlarge the patent beyond the scope of that
which the inventor claimed and the patent office allowed, even if the patentee may have been entitled
to something more than the words it had chosen would include.

The doctrine of equivalents provides that an infringement also takes place when a device appropriates a
prior invention by incorporating its innovative concept and, although with some modification and
change, performs substantially the same function in substantially the same way to achieve substantially
the same result.

Identity of results does not amount to infringement of patent unless it operates substantially the same
way or by substantially the same means as the patented compound, even though it performs the same
function and achieves the same result. In other words, the principle or mode of operation must be the
same or substantially the same.

Doctrine of equivalents requires the satisfaction of the function-means-and-result test.

As for the concept of divisional applications, it comes into play when two or more inventions are
claimed in a single application but are of such nature that a single patent may not be issued for them.
The applicant is thus required “to divide”, that is, to limit the claims to whichever invention he may
elect, whereas those inventions not elected may be made the subject of separate applications which are
called “divisional applications”.

In this case, the said methyl is an invention distinct from the other inventions claimed in the original
application divided out, Albendazole being one of those other inventions.