ROSARIO C. MAGUAN (formerly ROSARIO C. TAN) vs. THE HONORABLE COURT OF APPEALS and SUSANA LUCHAN, G.R.

L-45101, November 28, 1986 FACTS: Herein petitioner Rosario C. Maguan is doing business under the firm name of SWAN MANUFACTURING while private respondent Susana Luchan is doing business under the firm name of SUSANA LUCHAN POWDER PUFFMANUFACTURING. Maguan informed Luchan that the powder puffs the latter are manufacturing and selling resemble Identical or substantially Identical powder puffs of which petitioner is a patent holder. Maguan explained to Luchan that such production and sale constitute infringement of said patents and therefore demanded its immediate discontinuance from the latter, otherwise judicial action will be resorted to. Luchan replied stating that her products are different and countered that Maguans patents are void because the utility models applied for were not new and patentable and the person to whom the patents were issued was not the true and actual author nor were her rights derived from such author. Maguan filed a complaint for damages with injunction and preliminary injunction against Luchan with the then Court of First Instance of Rizal. The trial court issued an Order granting the preliminary injunction prayed for. Consequently, the corresponding writ was subsequently issued. ISSUE: Whether or not in an action for infringement the trial court had jurisdiction to determine the invalidity of the patents at issue. RULING: 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. Under the Patent Law, trial court has jurisdiction to declare the patents in question invalid. 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. 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. 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 of Patent in granting the patent is

presumed to be correct. The burden of going forward with the evidence then shifts to the defendant to overcome by competent evidence this legal presumption. PASCUAL GODINES vs. THE HONORABLE COURT OF APPEALS, SPECIAL FOURTH DIVISION and SV-AGRO ENTERPRISES, INC., G.R. No. 97343, September 13, 1993 FACTS: A Letters Patent was issued by the Philippine Patent Office to one Magdalena S. Villaruz. It covers a utility model for a hand tractor or power tiller. The said patent was acquired by herein private respondent SV-Agro Industries Enterprises, Inc., from Villaruz, by virtue of a Deed of Assignment. In accordance with the Letters Patent, SV-Agro Industries manufactured and sold the patented power tillers. Years after, it was found out that power tillers similar to those patented by private respondent were being manufactured and sold by herein petitioner Pascual Godines. Consequently, private respondent notified Godines about the existing patent and demanded that the latter stop selling and manufacturing similar power tillers. Godines did not heed to the demand, hence SV-Agro Industries filed a complaint for infringement of patent and unfair competition. It is observed by the court that the parts or components of the power tillers of SV-Agro Industries are virtually the same with that of Godines with respect to design, form, configuration, and appearance. After trial, the court held Pascual Godines liable for infringement of patent and unfair competition. The decision was affirmed by the appellate court. Godines contended that he did not manufacture or make imitations of SV Agro Industries turtle power tiller since he merely fabricate his floating power tiller upon specifications and designs of those who ordered them. ISSUE: Whether or not petitioner Pascual Godines is liable for infringement of patent and unfair competition. RULING: Section 37 of Republic Act No. 165, as amended, provides that 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 . There are two tests to determine infringement. These are (a) literal infringement; and (b) the doctrine of equivalents. Under the literal infringement test, "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 patent and the accused product must be compared whether there is exact identity of all material elements. In the case at bar, in appearance and form, both the floating power tillers of the defendant and the turtle power tiller of the plaintiff are virtually the same. Viewed from any perspective or angle, the power tiller of the defendant is identical and similar to that of the turtle power tiller of plaintiff in form, configuration, design and appearance. Moreover, it is also observed that petitioner also called his power tiller as a floating power tiller. On the other hand, under the doctrine of equivalents, an infringement 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." In this case, a careful examination between the two power tillers will show that they will operate on the same fundamental principles. In infringement of patent, similarities or differences are to be determined, not by the names of things, but in the light of what elements do, and substantial, rather than technical, identity in the test. More specifically, it is necessary and sufficient to constitute equivalency that the same function can be performed in substantially the same way or manner, or by the same or substantially the same, principle or mode of operation; but where these tests are satisfied, mere differences of form or name are immaterial.

ANGELITA MANZANO vs. COURT OF APPEALS, and MELECIA MADOLARIA, as Assignor to NEW UNITED FOUNDRY MANUFACTURING CORPORATION, G.R. No. 113388, September 5, 1997 FACTS: Herein petitioner Angelita Manzano filed an action for the cancellation of Letters Patent covering a gas burner registered in the name of respondent Melecia Madolaria who subsequently assigned the letters patent to New United Foundry and Manufacturing Corporation (UNITED FOUNDRY). Petitioner alleged that private respondent was not the original, true, and actual inventor nor did she derive her rights from the original, true and actual inventor of the utility model covered by the letters patent. Petitioner further alleged that the utility model covered by the letters patent of respondent had been known or used by others in the Philippines for more than one (1) year before respondent filed her application for letters patent. For failure to present substantive proof of her allegations, the lower court and Court of Appeals denied the action for cancellation, hence, the present petition. ISSUE: Whether or not the Letters Patent may be cancelled. RULING: The Court ruled in the negative. Section 7 of RA No. 165, as amended, provides that any invention of a new and useful machine, manufactured product or substance, process or an improvement of any of the foregoing, shall be patentable. An invention must possess the essential elements of novelty, originality and precedence, and for the patentee to be entitled to the protection the invention must be new to the world. The element of novelty is an essential

requisite of the patentability of an invention or discovery. In issuing Letters Patent to Melecia Madolaria, the Philippine Patent Office found her invention novel and patentable. The issuance of such patent creates a presumption which yields only to 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. As found by the Director of Patents, the standard of evidence sufficient to overcome the presumption of legality of the issuance of patent to respondent Madolaria was not legally met by petitioner in her action for the cancellation of the patent. There is a presumption that the Office has correctly determined the patentability of the model and such action must not be interfered with in the absence of competent evidence to the contrary.

SMITH KLINE BECKMAN CORPORATION vs. THE HONORABLE COURT OF APPEALS and TRYCO PHARMA CORPORATION, G. R. No. 126627, August 14, 2003 FACTS: Smith Kline Beckman Corporation (petitioner) was granted a patent over an invention entitled Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate. From a reading of the claims of Letters Patent, all that the claims disclose are the covered invention, that is, the compound methyl 5 propylthio-2-benzimidazole carbamate and the patented methods, compositions or preparations involving the compound to maximize its efficacy against certain kinds of parasites infecting specified animals. Herein private respondent Tryco Pharma Corporation distributes and sells veterinary products including Impregon, a drug that has Albendazole claimed to be effective against gastro-intestinal infestation in carabaos, cattle and goats. Petitioner sued private respondent for infringement of patent and unfair competition claiming that its patent covers or includes the substance Albendazole and the manufacture and sale of private respondent of the same infringes his right. Private respondent alleged that Letters Patent does not cover the substance Albendazole for nowhere in it does that word appear and that there is no proof that it passed off in any way its veterinary products as

those of petitioner. The trial court ruled in favor of private respondent. On appeal, the Court of Appeals, upheld the trial courts findings. ISSUE: Whether or not petitioners right to patent is infringe. RULING: The Court ruled in the negative. The burden of proof to substantiate a charge for patent infringement rests on the plaintiff. In the case at bar, petitioners evidence consists primarily of its Letters by which it sought to show that its patent for the compound methyl 5 propylthio-2-benzimidazole carbamate also covers the substance Albendazole. From a reading of the claims of Letters Patent in relation to the other portions thereof, no mention is made of the compound Albendazole. 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.

ETEPHA,

A.G.

vs.

DIRECTOR

OF

PATENTS

and

WESTMONT

PHARMACEUTICALS, INC., G.R. No. L-20635, March 31, 1966 FACTS: Respondent Westmont Pharmaceuticals, Inc., a New York corporation, sought registration of trademark "Atussin" placed on its "medicinal preparation of expectorant antihistaminic, bronchodilator sedative, ascorbic acid (Vitamin C) used in the treatment of cough". The trademark is used exclusively in the Philippines since January 21, 1959. Petitioner, Etepha, A. G., a Liechtenstin corporation, objected claiming that it will be damaged because Atussin is so confusedly similar to its Pertussin used on a preparation for the treatment of coughs and that the buying public will be misled into believing that Westmont's product is that of petitioner's which allegedly enjoys goodwill. The Director of Patents ruled that the trademark Atussin may be registered even though Pertussin had been previously registered with its office, hence the appeal.

ISSUE: Whether or not Atussin so resembles Pertussin as to be likely, when applied to or used in connection with the goods of the applicant, to cause confusion or mistake or to deceive purchasers. RULING: The validity of a cause for infringement is predicated upon colorable imitation. The phrase "colorable imitation" denotes such a "close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser, giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other." A practical approach to the problem of similarity or dissimilarity is to go into the whole of the two trademarks pictured in their manner of display. Inspection should be undertaken from the viewpoint of a prospective buyer. The trademark complained of should be compared and contrasted with the purchaser's memory of the trademark said to be infringed. Some such factors as "sound; appearance; form, style, shape, size or format; color; ideas connoted by marks; the meaning, spelling, and pronunciation, of words used; and the setting in which the words appear" may be considered. The possibility that buyers might be able to obtain Pertussin or Attusin without prescription is not convincing. When this happens, then the buyer must be one thoroughly familiar with what he intends to get, else he would not have the temerity to ask for a medicine specifically needed to cure a given ailment. In which case, the more improbable it will be to palm off one for the other. For a person who purchases with open eyes is hardly the man to be deceived.