awph

JOSE MARIA COLLEGE – COLLEGE OF LAW

Philippines-Japan Friendship Highway, Sasa, Davao City, Philippines

COPYRIGHT & INTELLECTUAL PROPERTY LAW

Atty. Bruneson Alabastro
CASE DIGESTS COMPILATION
Part 1 – IPO to Law on Patents Cases

INTELLECTUAL PROPERTY OFFICE

(STRUCTURE & ADMINISTRATIVE JURISDICTION)
Jurisdiction of the Director General
1 Agar, Bai IN-N-OUT BURGER, INC., vs. SEHWANI, G.R. No. 179127
Mina INCORPORATED AND/OR BENITA’S December 24, 2008
Shahida FRITES, INC.
2 Amadora, PHIL PHARMAWEALTH, INC., vs. G.R. No. 167715
Jordan PFIZER, INC. and PFIZER (PHIL.) INC. November 17, 2010
3 Apil, E.I DUPONT DE NEMOURS AND CO., G.R. No. 174379
Edzrapil (assignee of inventors Carino, Duncia and August 31, 2016
Wong), vs. DIRECTOR EMMA C.
FRANCISCO (in ger capacity as
DIRECTOR GENERAL OF THE
INTELLECTUAL PROPERTY OFFICE),
DIRECTOR EPIFANIO M. VELASCO (in
his capacity as the DIRECTOR OF THE
BUREAU OF PATENTS, and
THERAPHARMA, INC.
4 Arangcon, DIVINA PALAO, vs. FLORENTINO G.R. No. 186967
Ladyh INTERNATIONAL, INC. January 18, 2017
April
Appeals from the IPO to the Court of Appeals
5 Archua, LEVI STRAUSS vs. ATTY. RICARDO R. G.R. No. 206779
Ivy BLANCAFLOR April 20, 2016
6 Balijani, SOCIETE DES PRODUITS, NESTLE, S.A G.R. No. 217194
Mera vs. PUREGOLD PRICE CLUB, INC. September 6, 2017

LAW ON PATENTS
Concept of Novelty
7 Calizo, ANGEL VARGAS vs. F. M. YAPTICO & G.R. No. 14101
Juztine CO. (Ltd.) September 24, 1919
8 Castillo, ANGEL VARGAS, vs. PETRONILA G.R. No L-36650
May CHUA, ET AL. January 27, 1933
9 Castillon- PATRICK HENRY FRANK and WILLIAM G.R. No. 38010
Maglente, HENRY GOHN, v. G. KOSUYAMA December 21, 1933
Chary Joy
10 Castillon, ROSARIO C. MAGUAN (formerly G.R. L-45101
Jay-ar ROSARIO C. TAN), vs. THE November 28, 1986
HONORABLE COURT OF APPEALS and
SUSANA LUCHAN
11 Codilla, ROBERTO L. DEL ROSARIO, vs. COURT G.R. No. 115106
John Rey OF APPEALS AND JANITO March 15, 1996
CORPORATION
12 Comania, ANGELITA MANZANO, vs. COURT OF G.R. No. 113388
Eryel APPEALS, and MELECIA MADOLARIA, September 5, 1997
as Assignor to NEW UNITED FOUNDRY
MANUFACTURING CORPORATION
Concept of Inventive Step
13 Coquilla, DOMICIANO A. AGUAS, vs. CONRADO G.R. No. L-32160
Paolo G. DE LEON and COURT OF APPEALS January 30, 1982
Registration of Utility Models
14 Cruz, Samson, Jr. v. Tarroza G.R. No. L-20354
Dorothy July 28, 1969
Grace
15 Duhaylo, JESSIE G. CHING, vs. WILLIAM M. G.R. No. 161295
Arjay SALINAS, SR., WILLIAM M. SALINAS, June 29, 2005
JR., JOSEPHINE L. SALINAS, JENNIFER
Y. SALINAS, ALONTO SOLAIMAN
SALLE, JOHN ERIC I. SALINAS, NOEL
M. YABUT (Board of Directors and Officers
of WILAWARE PRODUCT
CORPORATION)
Right of Priority
16 Dura, JAMES HOWARD BOOTHE and JOHN G.R. L-24919
Vanessa MORTON, II, vs. THE DIRECTOR OF January 28, 1980
Gayle PATENTS
17 Ebueza, E.I DUPONT DE NEMOURS AND CO., G.R. No. 174379
Andy (assignee of inventors Carino, Duncia and August 31, 2016
Glenn Wong), vs. DIRECTOR EMMA C.
FRANCISCO (in ger capacity as
DIRECTOR GENERAL OF THE
INTELLECTUAL PROPERTY OFFICE),
DIRECTOR EPIFANIO M. VELASCO (in
 his capacity as the DIRECTOR OF THE
BUREAU OF PATENTS, and
THERAPHARMA, INC.
Divisional Applications
18 Fernando, SMITH KLINE BECKMAN G. R. No.126627
Develyn CORPORATION, vs. THE HONORABLE August 14, 2003
Ross COURT OF APPEALS and TRYCO
PHARMA CORPORATION

Procedure for Application

19 Forro, JAMES HOWARD BOOTHE and JOHN G.R. L-24919
Danilo Jr. MORTON, II, vs. THE DIRECTOR OF January 28, 1980
PATENTS
20 Fortuna, LOTHAR SCHUARTZ, FRIEDEL G.R. No. 113407
Elaine VERDERBERG, UDOLF KUEHNE, July 12, 2000
DIETER FISCHER, JOHN BERNARD
WATKINS, HARRY GREAVES, CHEN
WOO CHIN, YOSHIMI IWASAKI, FABIO
CARLI, MORTIMER THOMPSON,
MALCOLM JOHN LAW, MICHIBAZU
OCHI, KENJI SHIGEMATSU, ENI
SHINOZAKI, ROBERT CABI-AKMAN,
ARTHUR SPRENGER, REMY SIMOND
and HEINRICH EVBERGGER vs. THE
HONORABLE COURT OF APPEALS
(SPECIAL FIFTH DIVISION) and THE
BUREAU OF PATENTS, TRADEMARKS
AND TECHNOLOGY TRANSFER
Confidentiality before Publication; Rights granted to patent holder
21 Laranas, E.I DUPONT DE NEMOURS AND CO., G.R. No. 174379
Rascille (assignee of inventors Carino, Duncia and August 31, 2016
Wong), vs. DIRECTOR EMMA C.
FRANCISCO (in ger capacity as
DIRECTOR GENERAL OF THE
INTELLECTUAL PROPERTY OFFICE),
DIRECTOR EPIFANIO M. VELASCO (in
his capacity as the DIRECTOR OF THE
BUREAU OF PATENTS, and
THERAPHARMA, INC.
Rights of a Patentee; Limitations on Patent Rights
- C.f. Limitations under Philippine Competition Act
22 Libatique, ROMA DRUG and ROMEO RODRIGUEZ, G.R. No. 149907
Aleiah Jane as Proprietor of ROMA DRUG, vs. THE April 16, 2009
REGIONAL TRIAL COURT OF GUAGUA,
PAMPANGA, THE PROVINCIAL
PROSECUTOR OF PAMPANGA,
BUREAU OF FOOD & DRUGS (BFAD)
and GLAXO SMITHKLINE
Assignment of Patents
23 Magandam Feliciano v. Director of Patents G.R. No. L-4572
 , Jevn Paul May 22, 1953
Who may sue for patent infringement?
24 Mateo, CARLOS GSELL, vs. VALERIANO G.R. No. 1816
Maria VELOSO YAP-JUE April 17, 1906
Helinda
25 Mulit, CRESER PRECISION SYSTEMS, INC., vs. G.R. No. 118708
Mark COURT OF APPEALS AND FLORO February 2, 1998
INTERNATIONAL CORP.

Rights of a patentee and injunctive relief

26 Musa, PARKE, DAVIS & COMPANY v. G.R. No L-27361
Raihanna DOCTORS' PHARMACEUTICALS, INC. May 29, 1981
Mae and V-LAB DRUGHOUSE
CORPORATION
Process Patent Infringement; Doctrine of Mechanical Equivalents
27 Odoy, CARLOS GSELL, vs. VALERIANO G.R. No. 4720
Jethro VELOSO YAP-JUE January 19, 1909
Patent Infringement; Tests of Infringement
28 Payot, ROSARIO C. MAGUAN (formerly G.R. L-45101
Keely ROSARIO C. TAN), vs. THE November 28, 1986
HONORABLE COURT OF APPEALS and
SUSANA LUCHAN
29 Puertollano PASCUAL GODINES, vs. THE G.R. No. 97343
, Santino HONORABLE COURT OF APPEALS, September 13, 1993
SPECIAL FOURTH DIVISION and SV-
AGRO ENTERPRISES, INC.
30 Rañon, ROBERTO L. DEL ROSARIO, vs. COURT G.R. No. 115106
Rexie OF APPEALS AND JANITO March 15, 1996
CORPORATION
31 Salcedo, SMITH KLINE BECKMAN G. R. No.126627
Deanne CORPORATION, vs. THE HONORABLE August 14, 2003
Aubrey COURT OF APPEALS and TRYCO
PHARMA CORPORATION
32 Suaybagui PEARL & DEAN (PHIL.), G.R. No. 148222
o, Mervin INCORPORATED, vs. SHOEMART, August 15, 2003
Jay INCORPORATED, and NORTH EDSA
MARKETING, INCORPORATED
33 Trajano, PHIL PHARMAWEALTH, INC., vs. G.R. No. 167715
Jovelyn PFIZER, INC. and PFIZER (PHIL.) INC. November 17, 2010

Voluntary Licensing
34 Villanueva, DOLORITO M. FELICIANO and MAXIMO G.R. No. L-4572
Rosalyn B. TAPINIO, MELITON D ALBAÑA, vs. May 22, 1953
THE DIRECTOR OF PATENT
Compulsory Licensing
- C.f. Anti-Competitive Agreements under Philippine Competition Act
35 Agar, Mina PARKE, DAVIS and COMPANY vs. G.R. No L-22221
DOCTORS' PHARMACEUTICALS, INC., August 31, 1965
ET AL.
 36 Amadora, PARKE, DAVIS & COMPANY, vs. G.R. No L-27004
Jordan DOCTOR'S PHARMACEUTICALS, INC. August 16, 1983
and TIBURCIO S. EVALLE, in his capacity
as Director of Patents
37 Apil, BARRY JOHN PRICE, JOHN WATSON G.R. No. 82542
Edzrapil CLITHERON and JOHN BRADSHAW, September 29, 1988
Assignors to ALLEN & HANBURYS, LTD.,
vs. UNITED LABORATORIES
38 Arangcon, SMITH KLINE & FRENCH G.R. No. 121867
Ladyh LABORATORIES, LTD., vs. COURT OF July 24, 1997
April APPEALS, BUREAU OF PATENTS,
TRADEMARKS AND TECHNOLOGY
TRANSFER and DOCTORS
PHARMACEUTICALS, INC.
39 Archua, SMITH KLINE & FRENCH G.R. No. 174379
Ivy LABORATORIES, LTD. , vs. COURT OF August 31, 2016
APPEALS and DANLEX RESEARCH
LABORATORIES, INC.
Industrial Designs
40 Balijani, CO SAN aka KING CHONG, GR No. L-5943
Mera vs. CELEDONIO AGRAVA, as Director April 12, 1954
of the Patent Office, and JOSE ONG
LIAN BIO5
41 Calizo, SANDOVAL V. SPS. BISCOCHO APPEAL NO. 10-
Juztine 2004-00001 IPV NO.1
0- 2001-000036
December 7, 2004
42 Caharian, Yan Yan International Philippines v. Wilson BLA Decision
Camille Dy Go September 28, 2015
No. 15-2057
43 Castillon- KPI MANUFACTURING INC. vs. ALWIN IPC No. 13 2015-
Maglente, T. GO 005238 , IPC No. 13-
Charry Joy
2015-005259, and IPC
Case No. 13-2015-
0052610
5
NOTE: use google translate to read full text
6
https://onlineservices.ipophil.gov.ph/ipcaselibrary/ipcasepdf/IPV10200400001.pdf
7
http://onlineservices.ipophil.gov.ph/ipcaselibrary/main.html
8
http://www.federislaw.com.ph/wp-content/uploads/2016/10/KPI-MANUFACTURING-INC.-vs.-ALWIN-T.-
GO-IPC-No.-13-2015-00523-September14-2016-1.pdf
9
http://www.federislaw.com.ph/wp-content/uploads/2016/10/KPI-MANUFACTURING-INC.-vs.-ALWIN-T.-
GO-IPC-No.-13-2015-00525-September-14-2016.pdf
10
http://www.federislaw.com.ph/wp-content/uploads/2016/10/KPI-MANUFACTURING-INC.-vs.-ALWIN-
T .-GO-IPC-No.-13-2015-00526-September-14-2016.pdf
 INTELLECTUAL PROPERTY OFFICE
(STRUCTURE & ADMINISTRATIVE JURISDICTION)
Jurisdiction of the Director General

Agar, Bai IN-N-OUT BURGER, INC., vs. G.R. No. 179127

Mina SEHWANI, INCORPORATED AND/OR December 24, 2008
Shahida BENITA’S FRITES, INC.

FACTS:
On June 2, 1997, petitioner filed trademark and service mark applications with the Bureau of
Trademarks (BOT) of the IPO for IN-N-OUT and IN-N-OUT Burger & Arrow Design.
Petitioner later found out, through the Official Action Papers issued by the IPO on May
31,2000 that respondent Sehwani, Incorporated had already obtained Trademark Registration
for the mark IN-N-OUT (the inside of the letter “O” formed like a star.
Petitioner eventually filed on June 4, 2001 before the Bureau of Legal Affairs (BLA) of the
IPO an administrative complaint against respondents for unfair competition and cancellation
of trademark registration. Petitioner pointed out that its internationally well-known
trademarks and the mark of the respondents are all registered for the restaurant business and
are clearly identical and confusingly similar.
ISSUE:
Whether the IPO Director General correctly found respondent guilty of unfair competition
RULING:
Yes. The evidence on record shows that the herein respondents were not using, do not bear
the mark registered by the respondent, but the petitioner’s IN-N-OUT Burger’s name and
trademark IN-N-OUT with Arrow Design. Respondent's use of IN-N-OUT Burgers in
businesses signages reveals fraudulent intent to deceive purchasers. Respondents also failed
to explain why they are using the marks of petitioner particularly DOUBLE DOUBLE, and
the mark IN-N-OUT Burger and Arrow Design. Even in their listing of menus, respondents
used Appellants marks of DOUBLE DOUBLE and IN-N-OUT Burger and Arrow Design.

BACK TO INDEX

Amadora, PHIL PHARMAWEALTH, INC., vs. G.R. No. 167715

Jordan PFIZER, INC. and PFIZER (PHIL.) INC. November 17, 2010

FACTS:  
Pfizer is the registered owner of a patent pertaining to Sulbactam Ampicillin. It is marketed
under the brand name “Unasyn.” Pfizer discovered that Pharmawealth submitted bids for the
supply of Sulbactam Ampicillin to several hospitals without the Pfizer’s consent. Pfizer then
demanded that the hospitals cease and desist from accepting such bids. Pfizer also demanded
that Pharmawealth immediately withdraw its bids to supply Sulbactam Ampicillin.
Pharmawealth and the hospitals ignored the demands.
Pharmawealth filed a motion to dismiss the case in the CA, on the ground of forum shopping.
Nevertheless, the CA issued a temporary restraining order. Pharmawealth again filed a
motion to dismiss, alleging that the patent, the main basis of the case, had already lapsed, thus
making the case moot, and that the CA had no jurisdiction to review the order of the IPO-
BLA because this was granted to the Director General.
ISSUE:
WHETHER OR NOT the Director General of the IPO has jurisdiction to review the
questioned Orders of the Director of the BLA-IPO.
HELD:
According to IP Code, the Director General of the IPO exercises exclusive jurisdiction over
decisions of the IPO-BLA. The question in the CA concerns an interlocutory order, and not a
decision. Since the IP Code and the Rules and Regulations are bereft of any remedy regarding
interlocutory orders of the IPO-BLA, the only remedy available to Pfizer is to apply the Rules
and Regulations suppletorily. Under the Rules, a petition for certiorari to the CA is the proper
remedy. This is consistent with the Rules of Court. Thus, the CA had jurisdiction.

BACK TO INDEX
 Apil, E.I DUPONT DE NEMOURS AND CO., G.R. No. 174379
Edzrapil (assignee of inventors Carino, Duncia and August 31, 2016
Wong), vs. DIRECTOR EMMA C.
FRANCISCO (in ger capacity as
DIRECTOR GENERAL OF THE
INTELLECTUAL PROPERTY OFFICE),
DIRECTOR EPIFANIO M. VELASCO
(in his capacity as the DIRECTOR OF
THE BUREAU OF PATENTS, and
THERAPHARMA, INC.
FACTS:
In 1987, E.I Dupont Nemours filed Philippine Patent Application No. 35526 before Bureau of
Patents. Application was for Angiotensin II Receptor Blocking Imidazole (losartan), an
invention related to the treatment of hypertension and congestive heart failure. This patent
application was handled by Atty. Mapili In 2000, Dupont, through its new counsel, sent a
letter requesting Office action for the issuance of its application and subsequently filed a
petition for Revival, because its former counsel, Atty. Mapili did not inform them about the
abandonment of the application, and that they were not aware that Atty. Mapili had already
passed away. It was only on 2002 when actual notice of abandonment came into their
knowledge. However, this application for revival was denied for having filed beyond
reglementary period. This was later appealed to the Director General and the CA.
During the pendency of the case, Therapharma Inc., moved for leave to intervene and was
granted for the reason that the revival of the application of E.I Dupont would prejudice the
public interest for there are at least 12.6 million Filipinos who are afflicted by hypertension,
and the revival thereof would also prejudice Therapharma’s interest, on that it had already
invested more than P20M to develop its own losartan product (lifezar) and that Therapharma
acted in good faith when it marketed its product. Therapharma filed an application for
product registration before Bureau of Food and Drugs in 2003 and was granted a Certificate
of Product Registration in 2004. It conducted patent searches and found that no patent
application for losartan had been filed either before the Bureau of Patents or before
Intellectual Property Office.
ISSUES:
1. Whether or not Therapharma should have waited for Dupont to be granted a patent over
losartan.
2. What is the jurisdiction of the Director General?
3. What is right of priority?
RULING:
1. No. If Therapharma waited until Dupont was granted a patent application so it could file a
petition for compulsory licensing and petition for cancellation of patents, its continued
marketing of lifezar would be considered as an infringement of Dupont’s patent. Under RA
165, a compulsory license may be granted to any applicant 3 years after the grant of a patent
if the invention relates to food or medicine necessary for public health or safety. The
explanatory note of Bill No. 1156 which eventually became RA 165, the legislative intent in
the grant of 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. Certainly, the growth of monopolies among the abuses which Sec A, Article 5 of
the Convention foresaw, and which our Congress likewise wished to prevent in enacting RA
165. Compulsory licensing of a patent on food or medicine without regard to the other
conditions imposed in Sec. 34 is no an undue deprivation of proprietary interests over a
patent right because the law sees to it that even after 3 years of complete monopoly,
something is awarded to the inventor in the form of 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.
2. Sec 7, Par 1 (b) of IPC provides, that Director General shall exercise exclusive appellate
jurisdiction over all decisions rendered by the Director of Legal Affairs, the Director of
Patents, the Director of Trademarks, and the Director of the Documentation, Information and
Technology Transfer Bureau. The decisions of the Director General in the exercise of his
appellate jurisdiction in respect of the decisions of the Director of Patents, and the Director of
Trademarks shall be appealable to the Court of Appeals in accordance with the Rules of
Court; and those in respect of the decisions of the Director of Documentation, Information
and Technology Transfer Bureau shall be appealable to the Secretary of Trade and Industry.
3. The right of priority given to a patent applicant is only relevant when there are 2 or more
confliction patent applications on the same invention. Because a right of priority does not
automatically grant letters patent to an applicant, possession of a right of priority does not
confer any property rights on the application the absence of an actual patent. Under Sec 31 of
IPC, a right of priority is given to any patent applicant who has previously applied for a
patent in a country that grants the same privilege to Filipinos. A patent applicant with a right
of priority is given preference in the grant of a patent when there are 2 or more applicants for
the same invention. Under Sec 29 of IPC, if 2 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 2 or more applications are filed for the
same invention, to the applicant who has the earliest filing date or, the earliest priority date.
Since both US and Philippines are signatories to the Paris Convention for the Protection of
Industrial Property, 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. However, this
right of priority does not immediately entitle a patent applicant the grant of a patent. A right
of priority is not equivalent to a patent. Otherwise, a patent holder of any member-state of the
Paris Convention need not apply for patents in other countries where it wishes to exercise its
patent.

BACK TO INDEX

Arangcon, DIVINA PALAO, vs. FLORENTINO G.R. No. 186967

Ladyh INTERNATIONAL, INC. January 18, 2017
April

FACTS:
On July 30, 2008, Florentino appealed to the Office of the Director General of the Intellectual
Property Office. This appeal’s Verification and Certification of Non-Forum Shopping was
signed by Atty. John Labsky P. Maximo (Atty. Maximo) of the firm Balgos and Perez.
However, Florentino failed to attach to its appeal a secretary’s certificate or board resolution
authorizing Balgos and Perez to sign the Verification and Certification of Non-Forum
Shopping. Thus, on August 14, 2008, the Office of the Director General issued the Order
requiring Florentino to submit proof that Atty. Maximo or Balgos and Perez was authorized
to sign the Verification and Certification of Non-Forum Shopping. In his Order dated
September 22, 2008, Intellectual Property Office Director General Adrian S. Cristobal, Jr.
(Director General Cristobal) dismissed Florentino’s appeal He noted that the Secretary’s
Certificate pertained to an August 14, 2008 Resolution issued by Florentino’s Board of
Directors, and reasoned that the same Certificate failed to establish the authority of
Florentino’s counsel to sign the Verification and Certification of Non-Forum Shopping as of
the date of the filing of Florentino’s appeal (i.e., on July 30, 2008). Florentino then filed
before the Court of Appeals a Petition for Review under Rule 43 of the 1997 Rules of Civil
Procedure. In its assailed January 8, 2009 Decision,22 the Court of Appeals faulted Director
General Cristobal for an overly strict application of procedural rules. Thus, it reversed
Director General Cristobal’s September 22, 2008 Order and reinstated Florentino’s appeal.
ISSUE:
Whether the Court of Appeals erred in reversing the September 22, 2008 Order of Intellectual
Property Office Director General Adrian S. Cristobal, Jr., and in reinstating respondent
Florentino III International, Inc.’s appeal.
RULING:
The need for a certification of non-forum shopping to be attached to respondent’s appeal
before the Office of the Director General of the Intellectual Property Office is established.
Section 3 of the Intellectual Property Office’s Uniform Rules on Appeal specifies the form
through which appeals may be taken to the Director General. These requirements
notwithstanding, the Intellectual Property Office’s own Regulations on Inter Partes
Proceedings (which governs petitions for cancellations of a mark, patent, utility model,
industrial design, opposition to registration of a mark and compulsory licensing, and which
were in effect when respondent filed its appeal) specify that the Intellectual Property Office
“shall not be bound by the strict technical rules of procedure and evidence.” Given these
premises, it was an error for the Director General of the Intellectual Property Office to have
been so rigid in applying a procedural rule and dismissing respondent’s appeal. It is
reasonable, therefore-consistent with the precept of liberally applying procedural rules in
administrative proceedings, and with the room allowed by jurisprudence for substantial
compliance with respect to the rule on certifications of non-forum shopping-to construe the
error committed by respondent as a venial lapse that should not be fatal to its cause.
BACK TO INDEX
Appeals from the IPO to the Court of Appeals
Archua, LEVI STRAUSS vs. ATTY. RICARDO R. G.R. No. 206779
Ivy BLANCAFLOR April 20, 2016

Doctrine: Motions for extensions are not granted as a matter of right but in the sound
discretion of the court and lawyers should never presume that their motions for extensions or
postponement will be granted or that they will be granted the length of time they pray for
FACTS:
Levi’s filed an application before IPO to register the mark TAB DEVICE. The trademark
examiner rejected Levi’s trademark application because a tab of textile is customarily used on
the products covered by the trademark application. Levi’s appealed to the IPO Director of
Trademarks. The Director affirmed the trademark examiner’s findings. Levi’s filed a motion
for reconsideration of the Director’s decision, which the Director denied for “lack of merit”.
Levi’s filed its Appeal Memorandum with the respondent IPO Director-General and provided
a list of certificates of registration in other countries covering “nearly identical TAB DEVICE
trademark registrations.” The Director-General issued a decision rejecting the TAB DEVICE
trademark application and dismissing Levi’s appeal.
Levi’s only recourse was to file a Petition for review with the CA within 15 days from receipt
of the IPO Director-General ruling, or until March 29, 2012, under Rule 43 of the Rules of
Court to assail the IPO Director-General’s ruling. On March 28, 2012, Levi’s filed a Motion
for Extension of Time to file a verified petition for review with the CA; it sought an
additional 15 days, or until April 13, 2012 to file the petition for review. On April 13, 2012,
Levi’s filed a Second Motion for Extension of Time; it asked this time for an additional 15
days, or until April 28, 2012, to file the petition for review. On April 27, 2012, Levi’s filed its
petition for review (CA petition for review). On June 1, 2012, the CA granted the first motion
for extension. On August 13, 2012, the CA dismissed Levi’s petition outright. The CA held
that Levi’s failed to present a compelling reason for CA to grant the second motion for
extension. According to the CA, Levi’s should secure the necessary SPA earlier and
anticipated the closure of the Philippine Consulate Office due to the Philippine Holidays.
Further, pressure from other equally urgent professional work is not a compelling reason for
an extension. On September 6, 2012, Levi’s filed a motion for reconsideration of the CA
dismissal of the petition. In CA Resolution dated April 17, 2013, the CA denied Levi’s
motion for reconsideration. The CA held that Levi’s should have been diligent enough to
decide before the end of the first fifteen days or until March 29, 2012 whether it would
proceed with the filing of the petition for review. Levi’s filed the present petition for review
on certiorari to challenge the CA resolutions which dismissed Levi’s CA petition for review.
Whether or not Levi’s argument of compelling reasons to grant the second motion for
extension is valid.
ISSUE:
Whether or not the CA gravely erred in dismissing Levi’s CA petition for review on the
ground that Levi’s filed the CA petition beyond the extended reglementary period.
HELD:
No. Rule 43 of the Rules of Court governs the appeals from quasi-judicial agencies, such as
the IPO to the CA.
Section 4. Period of appeal. The appeal shall be taken within fifteen (15) days from notice of
the award, judgement, final order or resolution, or from the date of its last publication, if
publication is required by law for its effectivity, or of the denial of petitioner’s motion for
new trial or reconsideration duly filed in accordance with the governing law of court or
agency a quo. Only one (1) motion for reconsideration shall be allowed. Upon proper motion
and the payment of the full amount of the docket fee before the expiration of the
reglementary period, the Court of Appeals may grant an additional period of fifteen (15) days
only within which to file the petition for review. No further extension shall be granted except
for the most compelling reason and in no case to exceed fifteen (15) days.
The rule is clear that an appeal to the CA must be filed within a period of 15 days. While an
extension of 15 days and a further extension of another 15 days may be requested, the second
extension may be granted at the CA’s discretion and only for the most compelling reason.
Motions for extensions are not granted as a matter of right but in the sound discretion of the
court, and lawyers should never presume that their motions for extensions or postponement
will be granted or that they will be granted the length of time they pray for. Further, the
general rule is that a second motion for extension is not granted, except when the CA finds a
compelling reason to grant the extension.
The CA correctly held that Levi’s failed to present a compelling reason to grant the second
motion for extension. While the CA’s late action on Levi’s motions for extension is a
response that this Court does not approve of. Levi’s cannot use the CA’s delay as an excuse
to assume that the ca granted its second motion for extension and delay the filing of the CA
petition for review. Levi’s request for the Court to review its case on the merits should be
denied as well. The ruling of the IPO became final and executory after the period to appeal
expired without the perfection of Levi’s appeal. The Court, therefore may no longer review it.
WHEREFORE, we hereby DENY the petition for review on certiorari.

BACK TO INDEX

Balijani, SOCIETE DES PRODUITS, NESTLE, G.R. No. 217194

Mera S.A vs. PUREGOLD PRICE CLUB, INC. September 6, 2017

FACTS: Petitioner Societe des Produits Nestle, S.A. (Nestle) is a corporation organized and
existing under the laws of Switzerland which is engaged in the business of marketing and
selling of coffee, ice cream, chocolates, cereals, sauces, soups, condiment mixes, dairy and
non-dairy products, etc. Respondent Puregold Price Club, Inc. (Puregold) is a corporation
organized under Philippine law which is engaged in the business of trading goods such as
consumer goods on wholesale or on retail basis. On 14 June 2007, Puregold filed an
application for the registration of the trademark “COFFEE MATCH” with the Intellectual
Property Office (IPO). The registration was filed by Puregold for use on coffee, tea, cocoa,
sugar, artificial coffee, flour and preparations made from cereals, bread, pastry and
confectionery, and honey under Class 30 of the International Classification of Goods. On 5
December 2008, Nestle filed an opposition against Puregold’s application for registration.
Nestle alleged that it is the exclusive owner of the “COFFEE-MATE” trademark and that
there is confusing similarity between the “COFFEE-MATE” trademark and Puregold’s
“COFFEE MATCH” application. Nestle alleged that “COFFEE-MATE” has been declared
an internationally well-known mark and Puregold’s use of “COFFEE MATCH” would
indicate a connection with the goods covered in Nestle’s “COFFEE-MATE” mark because of
its distinct similarity. Nestle claimed that it would suffer damages if the application were
granted since Puregold’s “COFFEE MATCH” would likely mislead the public that the mark
originated from Nestle. The Decision of the Bureau of Legal Affairs-Intellectual Property
Office In a Decision dated 16 April 2012, the Bureau of Legal Affairs-Intellectual Property
Office (BLA- IPO) dismissed Nestle’s opposition. The BLA-IPO ruled that Nestle’s
opposition was defective because the verification and certification against forum shopping
attached to Nestle’s opposition did not include a board of directors’ resolution or secretary’s
certificate stating Mr. Dennis Jose R. Barot’s (Barot) authority to act on behalf of Nestle. The
BLA-IPO ruled that the defect in Nestle’s opposition was sufficient ground to dismiss.
ISSUE: WON THE CASE WAS PROPERLY DISMISSED ON THE GROUND OF LACK
OF CERTIFICATION FOR NON-FORUM SHOPPING
RULING: YES. Nestle, itself, acknowledged in this petition the absence of a board
resolution or secretary’s certificate issued by the board of directors of Nestle to prove the
authority of Barot to sign the certification against forum shopping on behalf of Nestle, to wit:
“[t]hus, while there is no board resolution and/or secretary’s certificate to prove the authority
of Dennis Jose R. Barot to file the petition and Verification/Certification of Non-Forum
Shopping on behalf of petitioner-corporation, there is a Power of Attorney evidencing such
authority.” The power of attorney submitted by Nestle in favor of Barot was signed by Céline
Jorge. However, the authority of Céline Jorge to sign the power of attorney on behalf of
Nestle, allowing Barot to represent Nestle, was not accompanied by a board resolution or
secretary’s certificate from Nestle showing that Céline Jorge was authorized by the board of
directors of Nestle to execute the power of attorney in favor of Barot. Accordingly, the CA
did not err in ruling that the petition for review should be dismissed due to the failure of
Nestle to comply with the proper execution of the certification against forum shopping
required by Section 5, Rule 7 of the Rules of Court.

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LAW ON PATENTS
Concept of Novelty
Calizo, ANGEL VARGAS vs. F. M. YAPTICO & G.R. No. 14101
Juztine CO. (Ltd.) September 24, 1919

FACTS:
Angel Vargas, a farmer from Iloilo, produced an improved adjustable plow from his own
native plow. In July 1910, he applied for a United States patent for such invention. Finally, in
March 1912, letters patent was issued in favor of him and in April 1912, a certified copy of
the patents was filed in the Division of Patents, Copyrights, and Trademarks of the Executive
Bureau, Government of the Philippine Islands. On the same period, F.M. Yaptico & Co.
(Ltd.), a firm engaged in the foundry business in the same place, was a manufacturer of plow
parts and produced points, shares, shoes, and heel pieces in a significant amount adapted to
replace the worn-out parts of the Vargas plow.
Vargas filed a case in the Court of First Instance of Iloilo to prohibit the alleged infringement
of his U.S. Patent by F.M. Yaptico & Co. (Ltd.) and to recover damages suffered by
him. The lower court issued the preliminary injunction Vargas prayed for. On the other hand,
the defendant manufacturer denied the allegations and contended that the patent lacked
novelty or invention, that there was no priority of ideas and device in the principle and
construction of the plow, whose manufacture was sought to have enjoined by the plaintiff,
had already been in public use for more than two years before the application of Vargas for
his patent. Because of this, a judgment was rendered in favor of the defendant, declaring the
patent null and void.
ISSUES:
(1) Whether or not the invention is void or invalid for lack of novelty and invention.
(2) Whether or not the patent is invalid because the plow had already been in public use for
over two years before Vargas filed an application for a patent.
RULING:
(1) The invention is void. The Supreme Court agreed with the trial court’s finding that
Vargas’ plow is not that different from the native plow, except in the material, flow, weight,
and grade of the result. It neither gave a new function nor a new result which is completely
different from the native plow. In addition, its production does not presume the exercise of
the inventive faculty but merely the mechanical skill, which does not give a right to a patent
of an invention under the provisions of the Patent Law.
(2) The patent is invalid. Under the provisions of the statute, a person’s invention must not be
in public use or in sale in the United States and the Philippine Islands for more than two years
prior to his application. Moreover, several witnesses of different nationalities testified that the
invention has been used for over two years before Vargas applied for a patent.

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Castillo, ANGEL VARGAS, vs. PETRONILA G.R. No L-36650

May CHUA, ET AL. January 27, 1933

FACTS:
Angel Vargas is the registered owner and possessor of patent No. 1,507,530 issued by the
United States Patent Office on September 2, 1924. The defendants Petronila Chua, Coo Pao
and Coo Teng Hee have been selling plows similar brought this action to restrain the
appellants (CHUA) and the other defendant entity. Cham Samco and Sons, their agents and
mandatories, from continuing the manufacture and sale.
ISSUE:
Whether the plow, Exhibit F, constitutes, a real invention or an improvement for which a
patent may be obtained, or if, on the contrary, it is substantially the same plow represented by
Exhibit 3-Chua the patent for which was declared null and void in the aforementioned case of
Vargas vs F.M. Yaptico & Co., supra.
RULING:
We have carefully examined all the plows presented as exhibits as well as the designs of
those covered by the patent, and we are convinced that no substantial difference exists
between the plow, Exhibit F, and the plow, Exhibit 3-Chua which was originally patented by
the appellee, Vargas. The only difference noted by us is the suppression of the bolt and the
three holes on the metal strap attached to the handle bar. These holes and bolt with its nut
were suppressed in Exhibit F in which the beam is movable as in the original plow. The
members of this court, with the plows in view, arrived at the conclusion that not only is there
no fundamental difference between the two plows but no improvement whatever has been
made on the latest model, for the same working and movement of the beam existed in the
original model with the advantage, perhaps, that its graduation could be carried through with
more certainty by the use of the bolt which as has already been stated, was adjustable and
movable. As to the fact, upon which much emphasis was laid, that deeper furrows can be
made with the new model, we have seen that the same results can be had with the old
implement. In view of the foregoing, we are firmly convinced that the appellee is not entitled
to the protection he seeks for the simple reason that his plow, Exhibit F, does not constitute
an invention in the legal sense, and because, 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 the Province of Iloilo, long before he obtained his last
patent.
In the above-mentioned case of Vargas vs. F. M. Yaptico & Co., we said:
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.” The burden of proof to
substantiate a charge of infringement is with the plaintiff. Where, however, the
plaintiff introduces the patent in evidence, if it is the due form, it affords a prima facie
presumption of its correctness and validity. The decision of the Commissioner of
Patents in granting the patent is always presumed to be correct. The burden then shifts
to the defendant to overcome by competent evidence this legal presumption. With all
due respects, therefore, for the critical and expert examination of the invention by the
United States Patent Office, the question of the validity of the patent is one for
judicial determination, and since a patent has been submitted, the exact question is
whether the defendant has assumed the burden of proof as to anyone of his defenses.
(See Agawan Co. vs. Jordan [1869], 7 Wall., 583; Blanchard vs. Putnam [1869], 8
Wall., 420; Seymour vs. Osborne [1871], 11 Wall., 516; Reckendorfer vs. Faber
[1876], 92 U. S., 347; 20 R. C. L., 1112, 1168, 1169.)
We repeat that in view of the evidence presented, and particularly of the examination we have
made of the plows, we cannot escape the conclusion that the plow upon which the
appellee's contention is based, does not constitute an invention and, consequently, the
privilege invoked by him is untenable and the patent acquired by him should be declared
ineffective.
The judgment appealed from is hereby reversed and the appellants are absolved from the
complaint, with costs of this instance against the appellee. So ordered.

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 Castillon- PATRICK HENRY FRANK and G.R. No. 38010
Maglente, WILLIAM HENRY GOHN, v. G. December 21, 1933
Chary Joy KOSUYAMA

FACTS:
The suit brought by the plaintiffs originated from Patent No. 1519579 on improvement in
hemp stripping machines, issued by the United States Patent Office on December 16,1924,
and registered in the Bureau of Commerce and Industry of the Philippine Islands on March
17,1925.
The action is based upon the alleged infringement by the defendant of the rights and
privileges acquired by the plaintiffs over the patent through the manufacture and sale by the
former of machines similar to that covered by the aforesaid patent.
RTC dismissed the complaint on the ground that the hemp stripping machine of the plaintiffs
does not constitute an invention since it lacks the elements of novelty, originality and
precedence. Nevertheless, RTC did not annul the patent of the plaintiffs in view of the nature
of the action brought by the plaintiffs and in the absence of a cross-complaint to that effect.
Plaintiffs appealed to RTC’s decision.
ISSUE:
Whether or not the hemp stripping machine of plaintiffs constitute an invention.
RULING:
No. The Supreme Court agreed with the trial court that the hemp stripping machine of the
plaintiffs does not constitute an invention on the ground that it lacks the elements of novelty,
originality and precedence. In fact, before the plaintiffs obtained their patent, they themselves
had already publicly used the same kind of machine for some months and various other
machines, having in general, the same characteristics and important parts as that of the said
plaintiffs, which were known in the Province of Davao.

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Castillon, ROSARIO C. MAGUAN (formerly G.R. L-45101

Jay-ar ROSARIO C. TAN), vs. THE November 28, 1986
HONORABLE COURT OF APPEALS
and SUSANA LUCHAN

FACTS:
Maguan sued Susana Luchan for patent infringement of her powder puff. Luchan countered
that her products were different and the petitioner’s patent was void for it lacks the element of
novelty. The RTC ruled that the respondent should stop the production and sale of the said
product.
Upon appeal, the decision was changed by the Court of Appeals. It suspended the preliminary
injunction issued by the RTC.
ISSUE:
Whether or not the element of novelty is essential in a patented property.
RULING:
Yes, an invention must be new to the public in order for the inventor to be entitled to
protection. In this case, the RTC erred in not diving into the issue of novelty. It did not rule in
the issue whether or not the patent was valid. Therefore, it is premature for the court to issue
a preliminary injunction without first ruling on the validity of the patent.

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Codilla, ROBERTO L. DEL ROSARIO, vs. G.R. No. 115106

John Rey COURT OF APPEALS AND JANITO March 15, 1996
CORPORATION

FACTS:
Del Rosario filed a complaint for patent infringement against Janito Corporation. He alleged
that he was a patentee of an audio equipment and improved audio equipment commonly
known as the sing-along system or karaoke. He learned that Janito Corp. was manufacturing a
sing-along system bearing the trademark or miyata karaoke substantially similar if not
identical to the sing-along system covered by the patents issued in his favor. Consequently,
he sought from the trial court the issuance of a writ of preliminary injunction to enjoin private
respondent from using, selling and advertising the miyata karaoke brand. RTC issued a writ
of preliminary injunction. Janito Corp. assailed the order before the CA. CA set aside the trial
court order, arguing that there was no infringement of the patents by the fact alone that the
karaoke system was a universal product manufactured, advertised and marketed in most
countries of the world long before the patents were issued to petitioner. Del Rosario
petitioned before the SC to review the CA decision.
ISSUE:
Whether or not the Court of Appeals erred in its decision in disregarding the findings of the
trial court.
RULING:
Yes, Court of Appeals erred in its decision and in disregarding the findings of the trial court.
The Patent Law expressly acknowledges that any new model of implements or tools of any
industrial product even if not possessed of the quality of invention but which is of practical
utility is entitled to a patent for utility model. Here, it is undisputed that Del Rosario was a
holder of Letters Patent and such are for utility models of audio equipment. Under Sec. 55 of
The Patent Law a utility model shall not be considered “new” if before the application for a
patent it has been publicly known or publicly used in this country or has been described in a
printed publication or publications circulated within the country, or if it is substantially
similar to any other utility model so known, used or described within the country. Respondent
corporation failed to present before the trial court competent evidence that the utility models
covered by the Letters Patents issued to petitioner were not new. As may be gleaned herein,
the rights of petitioner as a patentee have been sufficiently established, contrary to the
findings and conclusions of respondent Court of Appeals. Petitioner established before the
trial court that respondent Janito Corporation was manufacturing a similar sing-along system
bearing the trademark miyata which infringed his patented models. It is elementary that a
patent may be infringed where the essential or substantial features of the patented invention
are taken or appropriated, or the device, machine or other subject matter alleged to infringe is
substantially identical with the patented invention. In order to infringe a patent, a machine or
device must perform the same function, or accomplish the same result by identical or
substantially identical means and the principle or mode of operation must be substantially the
same. It may be noted that respondent corporation failed to present before the trial court a
clear, competent and reliable comparison between its own model and that of petitioner.

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Comania, ANGELITA MANZANO, vs. COURT OF G.R. No. 113388
Eryel APPEALS, and MELECIA September 5, 1997
MADOLARIA, as Assignor to NEW
UNITED FOUNDRY
MANUFACTURING CORPORATION

FACTS:
Petitioner Manzano filed before the Philippine Patent Office an action for the cancellation of
patent for a gas burner registered under the name of respondent Madolaria, who assigned the
letters patent to United Foundry. Manzano claimed, among others, that the gas burner was not
inventive, new or useful and that Madaloria was not the original and actual inventor thereof.
Manzano also alleged that the gas burner in question had already been in use and on sale in
the Philippines for more than a year prior to respondent’s filing for the application. To
support her contention, Manzano presented two undated brochures of two different Gas
companies which allegedly depicted an identical gas burner with that covered in Madolaria’s
letters patent. Madolaria’s husband testified that Madolaria, after customers’ complaint,
devised a way to solve the defects in the gas burners, which is now the subject of this case.
Citing the petitioner’s inability to convincingly establish that the patented utility model was
not novel, the Director of Patents denied the petition for cancellation, which was affirmed by
the CA. Hence, this appeal.
ISSUE: Whether or not Madolaria’s patented utility was novel.
RULING:
YES. The element of novelty is an essential requisite of the patentability of an invention or
discovery. 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 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 hold it void and ineffective. It has been repeatedly held that
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.
In issuing Letters Patent No. UM-4609 to Melecia Madolaria for an “LPG Burner” xxx, 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. A utility model shall not be considered “new” if before the
application for a patent it has been publicly known or publicly used in this country or has
been described in a printed publication or publications circulated within the country, or if it is
substantially similar to any other utility model so known, used or described within the
country. 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 improved
model of the LPG burner are matters which are better determined by the Patent Office. The
technical staff of the Philippine Patent Office composed of experts in their field has, by the
issuance of the patent in question, accepted private respondent’s model of gas burner as a
discovery. 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.
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Concept of Inventive Step
Coquilla, DOMICIANO A. AGUAS, vs. CONRADO G.R. No. L-32160
Paolo G. DE LEON and COURT OF APPEALS January 30, 1982

FACTS:
On April 14, 1962, Conrado G. de Leon filed a complaint of infringement against Domician
A Aguas and F. Aquino and Sons as for the original and sole inventor of the making pre-
mosaic tiles namely, Patent No. 658. The defendant: Aguas was complained by De Leon as
using his patented design towards tiles as the latter was issued patent to his designs and
engravings in a tile as warned the former, the former did not desist. Aguas responded that the
allegations were wrong that the plaintiff is not the original first nor inventor of improvements
on making pre-cast titles. Additionally, Aguas cited that the petitioner unlawfully acquired
the patent as before it registration, the tiles were already used by many factories and the
design was neither inventive nor new therefore not patentable. And lastly, the designs of
defendants were different from the allegations of complainant.
ISSUE:
Whether or not the petition for infringement of De Leon regarding infringement towards
newly inventive is valid?
HELD:
The court held the following errors contested by the petitioner towards the decision of the
Court of Appeals, First, is that the letters of patent of respondent was a patent for the old and
non-patentable process of making mosaic pre-cast titles. Second, the exhibits regarding the
physical evidence of the tiles presented were the same being not new, useful, and inventive.
The inventions of the respondent De Leon as in response to the first assigned error that the
designs were old and non-patentable by the petitioner was devoid of merit because the Patent
No. 658 was not an invention of process of tile making but an improvement with novel and
inventive features. As for the second assigned errors which it is not new, useful and inventive
was without merit. As held by the court that the tiles produced by de Leon’s process are
suitable for construction and ornamentation which are not produced by old process of tile
making. Making these designs useful, new and inventive. These were respondent’s
improvement were inventive which goes beyond mechanical skills, improving the old method
of making tiles and pre-cast articles.
WHEREFORE, the decision of the Court of Appeals in CA G.R. No. 37824-R appealed from
is hereby affirmed, without pronouncement as to costs. SO ORDERED.

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Registration of Utility Models

Cruz, Samson, Jr. v. Tarroza G.R. No. L-20354
Dorothy July 28, 1969
Grace

FACTS: Petitioner Samson was awarded Utility Model Patent No. 27 for a Dumping and
Detachable Wheelbarrow, noted as: “consists of a wheeled carriage base and an upper
pivoted and detachable carrying tray. The carriage base is comprised of a wheel and two
equal lengths of continuous pipes bent to provide wheel forks at the front and at the rear to
support the back portion of the tray, with the ends of the pipes being adopted as the carrying
handles for the wheelbarrow. The two pipes thus bent are joined together by cross braces in
the front and at the rear. The tray is removably pivoted at its front end through hook catches
at its bottom corners, to the forward cross brace, and its rear end rests solidly over the rear
portion of the legs. To dump the load the user pulls a dumping handle at the back end to
cause the tray to pivot upwardly about the front brace to a position of about 45 degrees with
the horizontal and with its front end panel being supported by the wheel. Meanwhile,
respondent Tarroza was granted a Side Tilting-Dumping Wheelbarrow, which: “consists of
wheeled carriage made of tubular frames essentially as in petitioner’s. Welded transversely to
the parallel frames are two brackets provided with holes designed to complement similar
holes on brackets provided on the tray. The brackets on the tray are so placed that with the
provision of a bolt through the openings the tray may be tilted approximately 170 degrees to
the left or to the right of the wheelbarrow with its axis running longitudinally through the
center of the bottom face of the tray.”
ISSUE: Whether or not respondent Tarroza is entitled to a patent for practical utility, as
granted by respondent Director of Patents.
RULING: Yes. Under Patent Law, any new model of implements or tools or of any
industrial product even if not possessed of the quality of invention but which is of “practical
utility” is entitled to a patent for a utility model. From the description of the side of tilting-
dumping wheelbarrow, the product of ingenuity and industry, it is quite apparent that it has a
place in the market and possesses what the statute refers to as “practical utility”. The
requirement explicitly set forth in the statute has thus been met. Respondent Tarroza is
entitled to its benefits. The grant to him of a patent for a utility model is in accordance with
law. There was no reason, therefore, for its cancellation. So it was held by the Director of
Patents. That decision as already noted should stand. In appeals from a decision of the
Director of Patents, only questions of law may be reviewed, findings of facts being
conclusive unless supported by substantial evidence. It was not error then, to reiterate, for the
respondent Director of Patents to deny the cancellation of the utility patent granted
respondent Tarroza. Even on the sole issue alone, the petition for review must fail.
Petitioner’s theory with respect to the second ground for cancellation, to wit: that respondent
is not the true and actual inventor or designer of the utility model is premised on the fact that
because of the proximity of the two, the petitioner and the respondent being brothers-in-law,
and living in adjoining residential lots, the latter has had ample time and opportunity to
observe and copy the former’s wheelbarrow. But the testimonial evidence thus presented is
not clear, satisfactory, and free from doubt, in the face of allegations to the contrary by the
respondent.

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Duhaylo, JESSIE G. CHING, vs. WILLIAM M. G.R. No. 161295
Arjay SALINAS, SR., WILLIAM M. SALINAS, June 29, 2005
JR., JOSEPHINE L. SALINAS,
JENNIFER Y. SALINAS, ALONTO
 SOLAIMAN SALLE, JOHN ERIC I.
SALINAS, NOEL M. YABUT (Board of
Directors and Officers of WILAWARE
PRODUCT CORPORATION)

FACTS: On September 20, 2001, Ching requested the National Bureau of Investigation
(NBI) for police/investigative assistance for the apprehension and prosecution of illegal
manufacturers, producers and/or distributors of the works. After due investigation, the NBI
filed applications for search warrants in the RTC of Manila against William Salinas, Sr. and
the officers and members of the Board of Directors of Wilaware Product Corporation.  It was
alleged that the respondents therein reproduced and distributed the said models penalized
under Sections 177.1 and 177.3 of Republic Act (R.A.) No. 8293. The RTC granted the
application and issued Search Warrant Nos. 01-2401 and 01-2402 for the seizure of the
aforecited articles. In the inventory submitted by the NBI agent, it appears that the following
articles/items were seized based on the search warrants: Leaf Spring eye bushing
Budder for C190 mold 
Diesel Mold
The respondents filed a motion to quash the search warrants. The respondents averred that the
works covered by the certificates issued by the National Library are not artistic in nature;
they are considered automotive spare parts and pertain to technology.  They aver that the
models are not original, and as such are the proper subject of a patent, not copyright. On
January 3, 2002, the trial court issued an Order granting the motion, and quashed the search
warrant on its finding that there was no probable cause for its issuance.  The court ruled that
the work covered by the certificates issued to the petitioner pertained to solutions to technical
problems, not literary and artistic as provided in Article 172 of the Intellectual Property Code.
His motion for reconsideration of the order having been denied by the trial court’s Order of
February 14, 2002, the petitioner filed a petition for certiorari in the CA, contending that the
RTC had no jurisdiction to delve into and resolve the validity of the copyright certificates
issued to him by the National Library. He insisted that his works are covered by Sections
172.1 and 172.2 of the Intellectual Property Code. The petitioner asserted that the
respondents failed to adduce evidence to support their motion to quash the search warrants.
The CA rendered judgment dismissing the petition on its finding that the RTC did not
commit any grave abuse of its discretion in issuing the assailed order. The petitioner’s motion
for reconsideration of the said decision suffered the same fate.  The petitioner forthwith filed
the present petition for review on certiorari, contending that the revocation of his copyright
certificates should be raised in a direct action and not in a search warrant proceeding. The
petitioner insists, notwithstanding the classification of the works as either literary and/or
artistic, the said law, likewise, encompasses works which may have a bearing on the utility
aspect to which the petitioner’s utility designs were classified. Moreover, according to the
petitioner, what the Copyright Law protects is the author’s intellectual creation, regardless of
whether it is one with utilitarian functions or incorporated in a useful article produced on an
industrial scale. The petitioner faults the CA for ignoring Section 218 of R.A. No. 8293
which gives the same presumption to an affidavit executed by an author who claims
copyright ownership of his work.
ISSUES:
1. WON the utility models can be considered literary and artistic works.
2. WON the petitioner’s copyright registration is valid.
RULING:
1. No. As gleaned from the specifications appended to the application for a copyright
certificate filed by the petitioner, the said Leaf Spring Eye Bushing for Automobile is merely
a utility model. Plainly, these are not literary or artistic works. 
It bears stressing that the focus of copyright is the usefulness of the artistic design, and not its
marketability.  The central inquiry is whether the article is a work of art. Works for 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. A utility
model is a technical solution to a problem in any field of human activity which is new and
industrially applicable.  It may be, or may relate to, a product, or process, or an improvement
of any of the aforesaid. Essentially, a utility model refers to an invention in the mechanical
field.  This is the reason why its object is sometimes described as a device or useful object.
Being plain automotive spare parts that must conform to the original structural design of the
components they seek to replace; the Leaf Spring Eye Bushing and Vehicle Bearing Cushion
are not ornamental.  They lack the decorative quality or value that must characterize authentic
works of applied art.  They are not even artistic creations with incidental utilitarian functions
or works incorporated in a useful article. Neither are we to regard the Leaf Spring Eye
Bushing and Vehicle Bearing Cushion as included in the catch-all phrase “other literary,
scholarly, scientific and artistic works” in Section 172.1(a) of R.A. No. 8293.  Applying the
principle of ejusdem generis which states that “where a statute describes things of a particular
class or kind accompanied by words of a generic character, the generic word will usually be
limited to things of a similar nature with those particularly enumerated, unless there be
something in the context of the state which would repel such inference,” the Leaf Spring Eye
Bushing and Vehicle Bearing Cushion are not copyrightable, being not of the same kind and
nature as the works enumerated in Section 172 of R.A. No. 8293.
2. No. 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 Eye
Bushing and Vehicle Bearing Cushion. 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 a 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. That the works of the
petitioner may be the proper subject of a patent does not entitle him to the issuance of a
search warrant for violation of copyright laws. In this case, the bushing and cushion are not
works of art.  They are, as the petitioner himself admitted, utility models which may be the
subject of a patent.
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Right of Priority
Dura, JAMES HOWARD BOOTHE and JOHN G.R. L-24919
Vanessa MORTON, II, vs. THE DIRECTOR OF January 28, 1980
Gayle PATENTS

FACTS: Petitioners James Howard Boothe and John Morton II, chemists, citizens and
residents of the United States, claim to be the inventors of a new antibiotic designated as
“tetracycline”. They applied for Letters Patent for their invention and claimed entitlement to
the priority date of March 16, 1953 if their application is considered filed in the Philippines
as of March 5, 1954, since the latter date would fall within the one-year period prior to March
5, 1954. However, the Letter Patent was awarded to Pfizer and Co., presumably covering the
same invention. Also, respondent claims that the “Specification” petitioner submitted in their
application was “incomplete” and that it can only considered complete only on April 14,
1954 when the certified copy of the foreign application was submitted. Consequently, the
instant application is to be considered an ordinary application, not entitled to the right of
priority granted by section 15 of the Patent Law.
ISSUE: WON Director of Patents erred in holding that petitioners’ application.
RULING: NO. It is imperative that the application be complete in order that it may be
accepted. It is essential to the validity of Letters Patent that the specifications be full, definite,
and specific. The purpose of requiring a definite and accurate description of the process is to
apprise the public of what the patentee claims as his invention, to inform the Courts as to
what they are called upon to construe, and to convey to competing manufacturers and
dealers’ information of exactly what they are bound to avoid. The specification which
petitioners submitted on March 5, 1954 was far from complete. That defect was one of
substance and not merely one of form. What petitioners claimed as their invention was not
completely determinable therefrom. Petitioners’; application could be deemed as complete
only on July 2, 1963 when they submitted the additional pages on the Specifications and
Claims. Respondent Director, therefore, did not err in converting petitioners'
application into an ordinary application filed on April 14, 1954, not only for their having
failed to complete their application within the four-month period provided for by Rules 47
and 48, Revised Rules of Practice in Patent Cases, and as required of them by Paper No. 6,
but also for their having failed to file a complete application within twelve months from
March 16, 1953, the date of the foreign application. For, to be entitled to the filing date of the
patent application, an invention disclosed in a previously filed application must be described
within the instant application in such a manner as to enable one skilled in the art to use the
same for a legally adequate utility.
We have held that in the absence of arbitrariness, and provided they are supported by
substantial evidence, as in this case, the conclusions reached by the Director of Patents are to
be accorded respect and must be upheld.
 BACK TO INDEX

Ebueza, E.I DUPONT DE NEMOURS AND CO., G.R. No. 174379

Andy (assignee of inventors Carino, Duncia and August 31, 2016
Glenn Wong), vs. DIRECTOR EMMA C.
FRANCISCO (in ger capacity as
DIRECTOR GENERAL OF THE
INTELLECTUAL PROPERTY OFFICE),
DIRECTOR EPIFANIO M. VELASCO
(in his capacity as the DIRECTOR OF
THE BUREAU OF PATENTS, and
THERAPHARMA, INC.

FACTS:
E.I. Dupont Nemours and Comapany (E.I. Dupont Nemours) is an American corporation
organized under the laws of the State of Delaware. On July 10, 1982 said company files
Philippine Patent with Application No. 35526 before the Bureau of Patents Trademarks and
Technology Transfer. The said application covers Angiotensin II Receptor Blocking
Imidazole (losartan), an invention related to the treatment of hypertension and congestive
heart failure. The product was produced by and marketed by Merck, Sharpe and Dohme
Corporation (Merck), E.I Dupont Nemours’ licensee, under the brand names Cozaar and
Hyzaar.
The patent application was handled by Atty. Nicanor D. Mapili, a local resident agent who
handled a majority of E.I. Dupont nemours’ patent applications in the Philippines from 1972
to 1996.
On December 19, 2000, E.I. Dupont Nemours’ new counsel, Ortega, Del Castillo, Bacorro,
Odulio, Calma and Carbonell, sent the Intellectual Property Office a letter requesting that an
office action be issued on Philippine Patent Application No. 35526. In response to said letter
request, Patent Examiner Precila O. Bulihan of the Intellectual Office sent an office action
marked Paper No. 2 on January 30, 2002. She informed the requesting party that the
appointed attorney on record was the late Atty. Nicanor D. Mapili. The said document did not
provide any authority to prosecute the said application and be transferred to the present
counsel. Further, there was no official revocation on record is available.
On May 29, 2002, E.I. Dupont Nemours replied to the IPO by submitting a Power of
Attorney executed by Miriam Meconnahey, authorizing Ortega, del Castillo, Bacorro,
Odulio, Calma and Carbonell to prosecute and handle its patent applications. On the same
day, it also filed a petition for Revival with Cost of Philippine Patent Application No. 35526.
In its Petition for Revival, E.I. Dupont Nemours argued that its former counsel, Atty. Mapili
did not inform about the abandonment of said patent application. They also said that they are
not aware that said counsel had died already. it argued that its Petition for Revival was
properly filed under Section 113 of the 1962 Revised Rules of Practice before the Philippines
Patent Office in Patent cases. On April 18, 2002, the Director nof Patents denied the Petition
for Revival for having filed out of time.
According to the Director of Patents, there is a limitation in filing for patent application under
Rule 115. The Petition for Revival was filed beyond the reglementary period. It also stressed
that the mistake of E.I. Dupont Nemours’ counsel bind the client in this case.
E.I. Dupont Nemours appeailed the denial to the Director- General of the Intellectual
Property Office on August 26, 2002. However, it was denied on October 22, 2003 and
affirmed the Resolution of the Director of Patent. On November 21, 2003, petitioner filed
before the Court of Appeals a Petition for review seeking to set aside the Intellectual property
Office’s Decision dated October 22, 2003. On August 31, 2004, the Court of Appeals granted
the Petition for Review.
ISSUE: Whether or not the patent application of losartan by Dupont should be revived.
HELD: No, the patent application for its revival was filed out of time.
Under Rule 115, the Petition for Revival was filed beyond the reglementary period. There is a
clear gross negligence on the part of E.I. Dupont Nemours’ counsel in handling this very
important Patent Application. His action jeopardizes the Patent Application of the company.
There was a correlative duty on its part to be diligent in keeping itself updated on the
progress of its patent applications. Its failure to be informed of the abandonment of its patent
application was caused by its own lack of prudence.
Petitioner issued a Power of Attorney and Appointment of Resident Agent in favor of Bito,
Lozada, Ortega & Castillo on March 25, 1996 but it only requested a status update of
Philippine Patent Application No. 35526 on December 14, 2000, or four (4) years after it
learned of Atty. Mapili’s death. The Power of Attorney shows that it was only to inform the
Bureau that all notices relating to its pending patent applications should be sent to it and there
was no request for specific status update.
The four (4)-month period in Section 113 of the 1962 Revised Rules of Practice is not
counted from actual notice of abandonment but from mailing of the notice. Since it appears
from the Intellectual Property Office’s records that a notice of abandonment was mailed to
petitioner’s resident agent on July 19, 1988, the time for taking action is counted from this
period.

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 Divisional Applications
Fernando, SMITH KLINE BECKMAN G. R. No.126627
Develyn CORPORATION, vs. THE HONORABLE August 14, 2003
Ross COURT OF APPEALS and TRYCO
PHARMA CORPORATION

FACTS: Smith Kline filed an application before the Philippine Patent Office (now Bureau of
Patents, Trademarks and Technology Transfer) for an invention: “Methods and Compositions
for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole
Carbamate.” Smith Kline sued Tryco Pharma for infringement of patent and unfair
competition before the Regional Trial Court claiming that Tryco infringed the Letters Patent
and committed unfair competition in violation of the RPC and The Trademark Law after the
use of a substance Albendazole without its authorization. As a result, a TRO was issued.
Smith argues that under the doctrine of equivalents for determining patent infringement,
Albendazole, the active ingredient it alleges was appropriated by Tryco for its drug
Impregon, is substantially the same as methyl propylthio-benzimidazole carbamate covered
by its patent since both of them are meant to combat worm or parasite infestation in animals.
Tryco argued that the Letters Patent does not cover the substance Albendazole for nowhere in
it does that word appear; that even if the patent were to include Albendazole, such substance
is unpatentable; that the Bureau of Food and Drugs allowed it to manufacture and market
Impregon with Albendazole as its known ingredient; that there is no proof that it passed off in
any way its veterinary products as those of Smith; that Letters Patent No. 14561 is null and
void, the application for the issuance thereof having been filed beyond the one year period
from the filing of an application abroad for the same invention covered thereby, in violation
of Section 15 of The Patent Law and that Smith is not the registered patent holder.
ISSUE: Whether or not there is a patent infringement.
RULING: No. There is no patent infringement. The Court was not convinced that there is
substantial sameness of petitioner’s patented compound and Albendazole. The compound
Albendazole was not claimed in the patent of the petitioner. The Court further ruled that
language of Letter Patent No. 14561 fails to yield anything at all regarding Albendazole. And
no extrinsic evidence had been adduced to prove that Albendazole inheres in petitioner’s
patent in spite of its omission therefrom or that the meaning of the claims of the patent
embraces the same. 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. In other
words, the principle or mode of operation must be the same or substantially the same. The
doctrine of equivalents requires satisfaction of the function-means-and-result test. While both
compounds have the effect of neutralizing parasites in animals, identity of result does not
amount to infringement of patent unless Albendazole operates in 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. Further, for failure to prove substantial sameness
of both compounds, the doctrine of equivalents could not be applied. What is the concept of
divisional applications? This comes into play when two or more inventions are claimed in a
single application but are of such a nature that a single patent may not be issued for them.
The applicant thus is 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.” What this only means is that methyl 5
propylthio-2-benzimidazole carbamate is an invention distinct from the other inventions
claimed in the original application divided out, Albendazole being one of those other
inventions. Otherwise, methyl 5 propylthio-2-benzimidazole carbamate would not have been
the subject of a divisional application if a single patent could have been issued for it as well
as Albendazole. Finally, the burden of proof to substantiate a charge for patent infringement
rests on the plaintiff. And the witness of Smith failed to prove and explain in detail how the
two substances are identical.

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 Procedure for Application
Forro, JAMES HOWARD BOOTHE and JOHN G.R. L-24919
Danilo Jr. MORTON, II, vs. THE DIRECTOR OF January 28, 1980
PATENTS
FACTS:
Petitioner’s Claims:
Boothe and Morton, chemists, citizens and residents of the United States, claim to be the
inventors of a new antibiotic designated as tetracycline, a new derivative of chlortetracycline.
They filed an application for Letters Patent in the Philippines with a claim for priority right
pursuant to section 15 of the Patent Law. According to them, they are entitled to the right of
priority granted to foreign applicants since they have filed their application for Letters Patent
with Specifications before the Director of Patents on March 5, 1954 or within 1 year from
March 16, 1953, the date of their Application for Letters Patent in the United States.
However, the Chief Patent Examiner treated the same as an ordinary application since the
Specifications submitted by Boothe and Morton within the one-year period lack nine pages
thus, incomplete. Boothe and Morton appealed to the Director of Patent and have claimed
that the defect was a mere minor informality and that they should still be given the priority
right. The Director of Patents ruled on matter not raised by Boothe and Morton. Hence, the
latter claims that the Director of Patents should only confine his decision to the issue of
whether or not the additional nine pages of Specification they had submitted should be treated
as new matter.
Respondent’s Claims:
The Director of Patents allowed the lacking pages but however ruled that the application of
Boothe and Morton should only be treated as an ordinary one because they have only filed
the required certified copy of their foreign application on April 14, 1954. Thus, the filing date
of the application should be changed from March 5,1954 to April 14, 1954.
ISSUES:
1. Whether or not the DIR OF PATENTS shall only confine his decision to the matters
appealed
2. Whether or not the DIR OF PATENTS erred in holding that the aforesaid application does
not fall under Section 15 of the Patent Law.
RULING:
1. NO. The Director of Patent is empowered to consider grounds which may have come to his
knowledge other than those specifically raised in an appeal. He need not confine himself only
to issues invoked. It was earlier concluded by the Supervising Patent Examiner that in as
much as the submitted pages did not correspond with the certified copy of the US application,
“the present application cannot therefore be granted priority date under Section15 as
requested by applicant”. What Respondent Director exercised was within his authority to
review the decisions of Patents Examiners.
2. NO. Under Sections 47 and 48 of the Patent Law, it is imperative that the application be
complete in order that it may be accepted. It is essential to the validity of Letters Patent that
the specification be full, definite and specific. The purpose of said requirement is to apprise
the public of that patentee claims as his invention, to inform Courts as to what they are called
to construe, and to convey to competing manufacturers and dealers’ information what they
are bound to avoid. The defect was one of substance and not merely one of form. An
invention disclosed in a previously filed application must be described within the instant
application such a manner as to enable one skilled in the art to use the same for a legally
adequate utility. The specification which Boothe and Morton submitted on March 5, 1954
was far from complete. That defect was one of substance and not merely one of form. What
Boothe and Morton claimed as their invention was not completely determinable therefrom.
The application of Boothe and Morton could be deemed as complete only on July 2, 1963
when they submitted the additional pages on the Specifications and Claims.
BACK TO INDEX
 Fortuna, SCHUARTZ, et al. vs. THE G.R. No. 113407
Elaine HONORABLE COURT OF APPEALS July 12, 2000
(SPECIAL FIFTH DIVISION) and THE
BUREAU OF PATENTS,
TRADEMARKS AND TECHNOLOGY
TRANSFER

FACTS:
Petitioners applied for registration of patents to the Bureau of Patents & Trademark through a
law firm.
For lack of some requirements, the law firm was informed through correspondence called
“office actions.” However, for failure to respond to the office actions within the prescribed
time which is 4 months from the date of the office action, notices of abandonment were sent
to each applicant.
Said notices of abandonment were discovered when the law firm made an inventory of
documents from the lawyers entrusted with patent application. By the time they filed a
petition to revive the patent applications, a period of more than 4 months had elapsed from
the time of the date of abandonment.
Illustration:
Patent application (earliest Date of Office Date of Abandonment Date of petition
to latest) Action to revive
 xxxxx-01 Jun 18, 1986 Oct 21, 1986 Mar 3, 1988

… … … …
xxxxx-08 Jul 23, 1987 Sep 24, 1987 Mar 14, 1988

The Director of Bureau of Patents denied the petition for revival because they were filed out
of time. On appeal, the CA dismissed the petition for review for it was filed beyond the 15-
day reglementary period to appeal.
ISSUE:
Whether or not granting the appeal was done within the reglementary period, can petitioners’
revival of their patent applications be given due course?
RULING:
No. The petition to revive the patent applications should be denied. The applicable Rules of
Practice in Patent cases at that time provides:
“Section 111. Abandonment for failure to respond within time limit.
(a) If an applicant fails to prosecute his application within four months after the date when the
last official notice of any action by the Office was mailed to him, or within such shorter time
as may be fixed (Rule 112), the application will become abandoned.”

Still, an abandoned application may be given due course as provided in the said rule, to wit:
“Section 113. Revival of abandoned application.- An application abandoned for failure to
prosecute may be revived as a pending application within four months from the date of
abandonment upon good cause shown, upon the payment of the required fee and upon tender
of the proposed response to the last office action. An application not revived within the
specified period shall be deemed forfeited.”
In the case at bar, the patent lawyers failed to act on the office actions sent to them and so
their applications were deemed abandoned after the lapse of 4 months from the sending of the
office actions. They also failed to revive the application within the 4-month period from the
date of abandonment. Hence, their applications are deemed forfeited by the time they filed
the petition to revive the applications.

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 Confidentiality before Publication; Rights granted to patent holder
Laranas, E.I DUPONT DE NEMOURS AND CO., G.R. No. 174379
Rascille (assignee of inventors Carino, Duncia and August 31, 2016
Wong), vs. DIRECTOR EMMA C.
FRANCISCO (in ger capacity as
DIRECTOR GENERAL OF THE
INTELLECTUAL PROPERTY OFFICE),
DIRECTOR EPIFANIO M. VELASCO (in
his capacity as the DIRECTOR OF THE
BUREAU OF PATENTS, and
THERAPHARMA, INC.

FACTS:
E.I. Dupont Nemours and Company (E.I. Dupont Nemours) is an American corporation
organized under the laws of the State of Delaware. It is the assignee of inventors David John
Carini, John Jonas Vytautas Duncia, and Pancras Chor Bun Wong, all citizens of the United
States of America. On July 10, 1987, E.I. Dupont Nemours filed Philippine Patent
Application No. 35526 before the Bureau of Patents, Trademarks, and Technology Transfer.
The application was for Angiotensin II Receptor Blocking Imidazole (losartan), an invention
related to the treatment of hypertension and congestive heart failure. The product was
produced and marketed by Merck, Sharpe, and Dohme Corporation (Merck), E.I. Dupont
Nemours' licensee, under the brand names Cozaar and Hyzaar. The patent application was
handled by Atty. Nicanor D. Mapili (Atty. Mapili) from 1972 to 1996.
On December 19, 2000, E.I. Dupont Nemours' new counsel, Ortega, Del Castillo, Bacorro,
Odulio, Calma, and Carbonell, sent the Intellectual Property Office a letter requesting that an
office action be issued on Philippine Patent Application No. 35526. In response, Patent
Examiner Precila O. Bulihan of the Intellectual Property Office sent an office action marked
Paper No. 2 on January 30, 2002, stating that the authority to prosecute the instant application
is now transferred to the present counsel. It also noted that it took thirteen (13) long years for
the applicant to request for an office action.
On May 29, 2002, E.I. Dupont Nemours replied to the office action by submitting a Power of
Attorney executed by Miriam Meconnahey, authorizing Ortega, Castillo, Del Castillo,
Bacorro, Odulio, Calma, and Carbonell to prosecute and handle its patent applications. On
the same day, it also filed a Petition for Revival with Cost of Philippine Patent Application
No. 35526.
In its Petition for Revival, E.I. Dupont Nemours argued that its former counsel, Atty. Mapili,
did not inform it about the abandonment of the application, and it was not aware that Atty.
Mapili had already died.
On April 18, 2002, the Director of Patents denied the Petition for Revival for having been
filed out of time. E.I. Dupont Nemours appealed the denial to the Director-General of the
Intellectual Property Office but was denied.
On November 21, 2003, E.I. Dupont Nemours filed before the Court of Appeals a Petition for
Review seeking to set aside the Intellectual Property Office's Decision dated October 22,
2003. On August 31, 2004, the Court of Appeals granted the Petition for Review.
The Office of the Solicitor General, on behalf of the Intellectual Property Office, moved for
reconsideration of this Decision on September 22, 2004. In the interim, Therapharma, Inc.
moved for leave to intervene and argued that the Court of Appeals' August 31, 2004 Decision
directly affects its "vested" rights to sell its own product. Therapharma, Inc. alleged that on
January 4, 2003, it filed before the Bureau of Food and Drugs its own application for a
losartan product "Lifezar," a medication for hypertension, which the Bureau granted.
It argued that it made a search of existing patent applications for similar products before its
application, and that no existing patent registration was found since E.I. Dupont Nemours'
application for its losartan product was considered abandoned by the Bureau of Patents,
Trademarks, and Technology Transfer. It alleged that sometime in 2003 to 2004, there was an
exchange of correspondence between Therapharma, Inc. and Merck. In this exchange, Merck
informed Therapharma, Inc. that it was pursuing a patent on the losartan products in the
Philippines and that it would pursue any legal action necessary to protect its product.
On January 31, 2006, the Court of Appeals issued the Resolution granting the Motion· for
Leave to Intervene. According to the Court of Appeals, Therapharma, Inc. had an interest in
the revival of E.I. Dupont Nemours' patent application since it was the local competitor for
the losartan product. It stated that even if the Petition for Review was premised on the
revival of the patent application, Therapharma, Inc.' s intervention was not premature since
E.I. Dupont Nemours, through Merck, already threatened Therapharma, Inc. with legal action
if it continued to market its losartan product. E.I. Dupont Nemours moved for reconsideration
on February 22, 2006, assailing the Court of Appeals' January 31, 2006 Resolution.
On August 30, 2006, the Court of Appeals resolved both Motions for Reconsideration and
rendered the Amended Decision reversing its August 31, 2004 Decision. The Court of
Appeals ruled that the public interest would be prejudiced by the revival of E.I. Dupont
Nemours' application. It found that losartan was used to treat hypertension, "a chronic ailment
afflicting an estimated 12.6 million Filipinos," and noted that the presence of competition
lowered the price for losartan products. It also found that the revival of the application
prejudiced Therapharma, Inc.' s interest, in that it had already invested more than
P20,000,000.00 to develop its own losartan product and that it acted in good faith when it
marketed its product. The Court of Appeals likewise found that it erroneously based its
August 31, 2004 Decision on E.I Dupont Nemours' allegation that it took seven (7) to 13
years for the Intellectual Property Office to act on a patent application. It stated that while it
might have taken that long to issue the patent, it did not take that long for the Intellectual
Property Office to act on application. Citing Schuartz v. Court of Appeals, it found that both
E.I. Dupont Nemours and Atty. Mapili were inexcusably negligent in prosecuting the patent
application. On October 19, 2006, petitioner E.I. Dupont Nemours filed before this Court this
Petition for Review on Certiorari. Both respondents Intellectual Property Office and
Therapharma, Inc. were directed to comment on the comment on the Petition. Upon
submission of their respective Comments, petitioner was directed to file its Consolidated
Reply. Thereafter, the parties were directed to file their respective memoranda.
ISSUE:
Whether or not E.I. Dupont can claim secrecy/confidentiality in its pending patent application
barring Therapherma or other interested parties to intervene.

RULING:
No. Therapharma, Inc. was able to show that it had legal interest to intervene in the appeal of
E.I. Dupont's revival of its patent application. While its intervention may have been
premature as no patent has been granted yet, petitioner's own actions gave rise to respondent
Therapharma, Inc.' s right to protect its losartan product.
Therapharma, Inc. filed an application for product registration before the Bureau of Food and
Drugs on June 4, 2003 and was granted a Certificate of Product Registration on January 27,
2004. It conducted patent searches from October 15, 1995 and found that no patent
application for losartan had been filed either before the Bureau of Patents, Trademarks, and
Technology Transfer or before the Intellectual Property Office.
The absolute secrecy required by the 1962 Revised Rules of Practice would not be applicable
to a patent application before the Intellectual Property Office. Section 13 of the 1962 Revised
Rules of Practice does not appear in the Intellectual Property Code, in the Rules and
Regulations on Inventions, or in the Revised Implementing Rules and Regulations for
Patents, Utility Models and Industrial Design. The Intellectual Property Code now states that
all patent applications must be published in the Intellectual Property Office Gazette and that
any interested party may inspect all documents submitted to the Intellectual Property Office.
The patent application is only confidential before its publication. Sections 44 and 45 of the
Intellectual Property Code provide:
SECTION 44. Publication of Patent Application. -
44.1. The patent application shall be published in the IPO Gazette together with a search
document established by or on behalf of the Office citing any documents that reflect prior art,
after the expiration of eighteen (18) months from the filing date or priority date.
44.2. After publication of a patent application, any interested party may inspect the
application documents filed with the Office.
44.3. The Director General, subject to the approval of the Secretary of Trade and Industry,
may prohibit or restrict the publication of an application, if in his opinion, to do so would be
prejudicial to the national security and interests of the Republic of the Philippines.
SECTION 45. Confidentiality Before Publication. -A patent application, which has not yet
been published, and all related documents, shall not be made available for inspection without
the consent of the applicant.
It was inaccurate, therefore, for E.I. Dupont to argue that secrecy in patent applications
prevents any intervention from interested parties. The confidentiality in patent applications
under the Intellectual Property Code is not absolute since a party may already intervene after
the publication of application.

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Rights of a Patentee; Limitations on Patent Rights

- C.f. Limitations under Philippine Competition Act
Libatique, ROMA DRUG and ROMEO RODRIGUEZ, G.R. No. 149907
Aleiah Jane as Proprietor of ROMA DRUG, vs. THE April 16, 2009
REGIONAL TRIAL COURT OF GUAGUA,
PAMPANGA, THE PROVINCIAL
PROSECUTOR OF PAMPANGA,
BUREAU OF FOOD & DRUGS (BFAD)
and GLAXO SMITHKLINE

FACTS:
The NBI and the Bureau of Food and Drugs (BFAD) conducted a raid on Roma Drug, owned
by Romeo Rodriguez. The raid was conducted pursuant to a search warrant, issued by
RTCAngeles City, requested by SmithKline, the local distributor of the seized medicines.
The raiding team seized imported medicines such as Augmentin, Orbenin, Amoxil and
Ampiclox. These medicines were imported from abroad and not purchased through
SmithKline. Per the complaint filed by the NBI, Rodriguez violated the Special Law on
Counterfeit Drug (SLCD) which prohibited the sale of counterfeit drugs and that includes
unregistered imported drug products which are not registered with the Bureau of Patent,
Trademark and Technology. Their classification as “counterfeit” was solely based on the fact
that they were imported from abroad and not purchased from SmithKline.
Rodriguez challenged the constitutionality of the SLCD. He based his arguments on the
following, based on the Constitution: a. equal protection clause of the Bill of Rights b.
essential goods, health and other social services available to all people at affordable cost c. to
protect and promote the right to health of the people and instill health consciousness among
them.
The question of constitutionality was mooted with the passage of RA 9502 which is
“Universally Accessible Cheaper and Quality Medicines Act of 2008.” Third persons were
granted the right to import drugs or medicines whose patent were registered in the Philippines
by the owner of the product.
Under the Acct, with regard to drugs and medicines, the limitation on patent rights shall
apply after a drug or medicine has been introduced in the Philippines or anywhere else in the
world by the patent owner, or by any party authorized to use the invention. The right to
import shall be available to any government agency or private party.
The drugs and medicines are deemed introduced when they have been sold or offered for sale
anywhere else in the world. 8. With regards to the two statutes, the latest legislative
expression prevails and the prior law yields to the extent of the conflict.
ISSUE: Should Rodriguez still be prosecuted even with the passage of RA 9502?
HELD: NO. The prior law has deprived Filipinos the choice of a less expensive drug for
their health by denying them a plausible and safe means of purchasing the medicine at a
cheaper cost. The law would make criminals out of doctors coming from abroad who do
humanitarian missions here and bringing their own pharmaceutical drugs. The importers, per
the old law, would be equated with malevolents who would alter or counterfeit drugs for
reasons of profits at the expense of public safety. Normally, these importers are motivated
only to do so out of altruism or basic human love. For a law intended to help save lives, the
SLCD has revealed itself as a heartless, soulless legislative piece. With the passage of RA
9502, the State has reversed course and allowed for a sensible and compassionate approach
with respect to the importation of drugs urgently needed for the people’s constitutionally-
recognized right to health. Dispositive: WHEREFORE, the petition is GRANTED in part. A
writ of prohibition is hereby ISSUED commanding respondents from prosecuting petitioner
Romeo Rodriguez for violation of Section 4 or Rep. Act No. 8203. The Temporary
Restraining Order dated 15 October 2001 is hereby made PERMANENT. No
pronouncements as to costs.
 BACK TO INDEX

Assignment of Patents
Magandam, Feliciano v. Director of Patents G.R. No. L-4572
Jevn Paul May 22, 1953

FACTS:
An application for patent was filed with the Patent Office by applicant- inventors Feliciano
and Tapinio. Pending examination of the application, Meliton D. Albaña filed a motion to
intervene claiming that the applicant-inventors had "sold and/or bartered and assigned to him
their right to contract or deal the sale of their invention called Fel-Tap Meter Guard and
Detector to or through the Corporation that they were then organizing under his direction and
praying that applicant-inventor Tapinio be compelled to sign a contract and, together with the
other applicant-inventor Feliciano who had already signed it, to acknowledge it and another
contract before a notary public, to have both contracts recorded in the Patent Office and in the
Office of the Register of Deeds, and that the patent for the invention be issued in his name
and in the name of the inventors.
The motion was denied on the ground under the provisions of the Patent Law (Republic Act
No. 165) the Director of Patents has no jurisdiction or power to decide the question submitted
to him.
The movant Albaña filed an amended motion to intervene claiming that he is the assignee of
inventors Feliciano and Tapinio of the undivided part interest in the invention for whose
letter-patent the latter’s name are herein applying.
The amended motion was denied on the ground that the assignment made to the movant is not
one of exclusive right to make, use, and sell the electrical contrivance for which a patent is
applied for; that it is just an authority to act as the selling agent for the inventors of the patent,
if granted, and the invention covered thereby and to receive compensation therefor; and that
not being entitled to have his name included as one of the patentees, if patent for the
invention be granted, the movant has no right to intervene in the proceedings for the grant of
the patent.
ISSUES:
1.Whether or not there was an assignment of patent.
2. Whether or not the Patent Office has authority to compel the applicant-inventors to do
what Albaña is asking them to perform.
RULING:
1. No. Assignments of patents and inventions covered thereby may be recorded in books and
records kept for the purpose in the Patent Office if presented in due form (Republic Act 165,
sections 51-53), but the appellant Albaña does not ask for the registration of the alleged
agreement between him and the inventors, because as it is not in due form it cannot be
recorded, hence, there was no assignment of patent.
2. No. Under the provisions of the Patent Law (Republic Act No. 165), the Director of Patent
has no power and authority to compel the applicant-inventors to do what the appellant is
asking them to perform. What the appellant asked the Director Patents to do for him is
essentially a judicial function which would require the determination or finding by a court of
competent jurisdiction as to whether there was a meeting of the minds of the contracting
parties before it could compel the applicant-inventors to perform what the appellant prays the
court to order them to do. Aside from want of authority and power, the Director of Patent
lacks the means to make such determination and finding which would be necessary before he
could act on the appellant's motion.
BACK TO INDEX
Who may sue for patent infringement?
Mateo, CARLOS GSELL, vs. VALERIANO G.R. No. 1816
Maria VELOSO YAP-JUE April 17, 1906
Helinda
FACTS: The principal case to which these proceedings are ancillary, was an action to enjoin
infringement of a patented process for manufacture of curved handles for canes, parasols, and
umbrellas. In that case, plaintiff established his title to a valid patent covering the process in question,
and obtained against this defendant a judgment, granting a perpetual injunction restraining its
infringement, which judgment was affirmed by this Court on appeal. The order was couched in the
following terms:

“It is ordered that the defendant abstain from manufacturing canes and umbrellas with a curved
handle by means of a lamp or blowpipe fed with mineral oil or petroleum, which process was
protected by patent no. 19288, issued in favor of Henry Gsell, and by him transferred to Carlos
Gsell”.

            Thereafter the defendant continued to manufacture curved cane handles for walking sticks and
umbrellas by a process in all respects identical with that used by the plaintiff under his patent, except
only that he substituted for a lamp fed with petroleum or mineral oil, a lamp fed with alcohol. The
trial court found the defendant “not guilty” of contempt as charged; and this court, on appeal, held that
“The violation, if there has been any, was not of such a character that it could be made patent by the
mere annunciation of the acts performed by the defendant, which are alleged to constitute the said
violation. Consequently, the contempt with which the accused is charged has not been fully and
satisfactorily proved, and the order appealed from should accordingly be affirmed in so far as it holds
that the defendant is not guilty of contempt. Substantially, the same question is submitted in these new
proceedings as that submitted in the former case.

ISSUE: Whether the use of a patented process by a third person, without license or authority
therefore, constitutes an infringement when the alleged infringer has substituted in lieu of some
unessential part of the patented process a well-known mechanical equivalent.

HELD: Counsel for plaintiff invokes the doctrine of “mechanical equivalents” in support of his
contention, and indeed that doctrine is applicable to the facts of the case. This doctrine is founded
upon sound rules of reason and logic, and unless restrained or modified by law in particular
jurisdiction, is of universal application, so that it matters not whether a patent be issued by one
sovereignty or another, the doctrine may properly be invoked to protect the patentee from colorable
invasions of his patent under the guise of a substitution of some part of his invention by some well-
known mechanical equivalent.

            The use of a process in all respects identical with a process protected by a valid patent, save
only that a well-known mechanical equivalent is substituted in lieu of some particular part of the
patented process is an infringement upon the rights of the owner of the patent, which will be enjoined
in appropriate proceeding, and the use of such process, after the order enjoining its use has been
issued, is a “contempt”, under the provision of section 172 of the Code of Civil Procedure.

BACK TO INDEX
 Mulit, CRESER PRECISION SYSTEMS, INC., G.R. No. 118708
Mark vs. COURT OF APPEALS AND FLORO February 2, 1998
INTERNATIONAL CORP.

FACTS:
Private respondent Floro is a domestic corporation engaged in the manufacture, production,
distribution and sale of military armaments, munitions, airmunitions and other similar
materials. On Jan. 23, 1990, private respondent Floro was granted by the Bureau of Patents,
Trademarks and Technology Transfer a Letters Patent covering an aerial fuze.

However, Floro’s President, Mr. Gregory Floro discovered that petitioner Creser submitted
samples of its patented aerial fuze to the Armed Forces of the Philippines (AFP) for testing
and that petitioner is claiming the aerial fuze as its own and planning to bid and manufacture
it commercially. Petitioner Creser contends that it is the first, true and actual inventor of an
aerial fuze denominated as which it developed as early as December 1981 under the Self-
Reliance Defense Posture Program (SRDP) of the AFP; that sometime in 1986, petitioner
began supplying the AFP with the said aerial fuze; that private respondent's aerial fuze is
identical in every respect to the petitioner's fuze; and that the only difference between the two
fuzes are miniscule and merely cosmetic in nature.

RTC issued a TRO and later on granted the preliminary injunction filed by plaintiff against
private respondent. While CA reversed the RTC’s decision and dismissed the complaint filed
by petitioner.

ISSUE: Whether Petitioner can file an action for infringement not as a patentee but as an
entity in possession of a right, title or interest in and to the patented invention?

RULING:

NO. Section 42 of R.A. 165, otherwise known as the Patent Law, explicitly provides:
Sec. 42. Civil action for infringement. — Any patentee, or anyone possessing any right, title
or interest in and to the patented invention, whose rights have been infringed, may bring a
civil action before the proper Court of First Instance (now Regional Trial court), to recover
from the infringer damages sustained by reason of the infringement and to secure an
injunction for the protection of his right. . . .

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. In short,
a person or entity who has not been granted letters patent over an invention and has not
acquired any light or title thereto either as assignee or as licensee, has no cause of action for
infringement because the right to maintain an infringement suit depends on the existence of
the patent. Petitioner admits it has no patent over its aerial fuze. Therefore, it has no legal
basis or cause of action to institute the petition for injunction and damages arising from the
alleged infringement by private respondent. While petitioner claims to be the first inventor of
the aerial fuze, still it has no right of property over the same upon which it can maintain a suit
unless it obtains a patent therefor.
 BACK TO INDEX
Rights of a patentee and injunctive relief
Musa, PARKE, DAVIS & COMPANY v. G.R. No L-27361
Raihanna DOCTORS' PHARMACEUTICALS, INC. May 29, 1981
Mae and V-LAB DRUGHOUSE
CORPORATION

FACTS: This is an appeal from the order of the Court of First Instance dismissing, on the
ground of lack of cause of action, the complaint for damages for infringement of patent and
unfair competition, with preliminary injunction, filed by the herein appellant against the
herein appellees. That defendants have derived unlawful gains and profits from the aforesaid
infringement to the great and irreparable injury, damage and prejudice of plaintiff, and have
deprived plaintiff of legitimate returns which plaintiff would have otherwise received had it
not been for defendants’ infringing acts. In the complaint for damages for infringement of
patent and unfair competition, plaintiff alleged that it was the owner of Letters Patent Nos. 50
and 279 covering the products known as ‘Chloramphenicol" and "Chloramphenicol
Palmitate", respectively, and that defendant pharmaceutical company had used
"Chloramphenicol Palmitate" in its medicine called "Venimicetin Suspension" ; had deceived
the public by representing that said medicine contained "Chloramphenicol" when in fact it
contained "Chloramphenicol Palmitate", an entirely different substance; and had
misrepresented itself to be the plaintiff’s compulsory licensee for said product, while its co-
defendant had acted as its distributor. Defendants moved to dismiss the complaint alleging
that defendant pharmaceutical company is a compulsory licensee of "Chloramphenicol."
Premised on the assumption that "Chloramphenicol" and "Chloramphenicol Palmitate" are
the same substance, the trial Court granted the motion on the ground of failure to state a cause
of action. Contrary to that, plaintiff claimed that the compulsory licensing case between it and
defendant No. 1 dealt with plaintiff’s Letters Patent No. 50 (which covers
"Chloramphenicol") and not with plaintiff’s Letters Patent No. 279 (which covers
"Chloramphenicol Palmitate"). The lower court, however, ruled in favour of the defendants
and dismissed the case for lack of cause of action, hence the present petition.

ISSUE: WON court was correct in dismissing the case on the ground of failure to state a
cause of action, if not, what are the rights and recourse of the Plaintiff as a Patentee.

HELD: NO, the Supreme Court held that the case was improperly dismissed on the ground
of failure to state the cause of action. (Although this is remedial law in nature, I believe that it
is necessary to discuss this portion to understand the case in its entirety.) The SC in its
decision, emphasized that in resolving a motion to dismiss a complaint on the ground of
failure to state a cause of action, the court should hypothetically assume the truth of the
factual allegations of the complaint (except allegations of facts the falsity of which the court
may take judicial notice of) and determine whether on the basis thereof, the complainant is
entitled to the relief demanded. The CFI, in this case, failed to do so and wrongfully
dismissed the case. Had the lower court hypothetically assumed as true, for the purpose of the
motion to dismiss, the allegations in the complaint that "Chloramphenicol" and
"Chloramphenicol Palmitate" are entirely different substances and that "Venimicetin
Suspension" actually contains "Chloramphenicol Palmitate" and not "Chloramphenicol" as
indicated in its package and label, it necessarily would have to conclude that the complaint
states causes of action for infringement of patent and for unfair competition. For defendants
would then be guilty of infringement of patent by selling, causing to be sold, using and
causing to be used "Chloramphenicol Palmitate", without the consent or authority of the
plaintiff as the holder of Letters Patent No. 279, Claim 4 of which allegedly covers said
substance.
The SC further emphasized the rights of the Patentees and the civil action for
infringement had the case not been dismissed. Provided in Sections 37 and 42 of R.A. No.
165 that:

"SEC. 37. RIGHTS 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 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."

"SEC. 42. CIVIL ACTION FOR INFRINGEMENT . — Any patentee, or anyone possessing
any right, title or interest in and to the patented invention, whose rights have been infringed,
may bring a civil action before the proper Court of First Instance, to recover from the
infringer damages sustained by reason of the infringement and to secure an injunction for the
protection of his rights."

Likewise, the defendants would be guilty of unfair competition by falsely stating that
defendant No. 1’s medicine called "Venimicetin Suspension" contains "Chloramphenicol"
when in fact it actually contains "Chloramphenicol Palmitate", and that it is covered by a
compulsory license from the plaintiff. Section 29 of R.A. No. 166 provides, inter alia; "In
particular, and without in any way limiting the scope of unfair competition, the following
shall be deemed guilty of unfair competition: chanrob1es "(c) Any person who shall make
any false statement in the course of trade. . . Clearly, the lower court erred in dismissing, on
the ground of failure to state a cause of action, the complaint for damages for infringement of
patent and unfair competition.

Therefore, the court ruled that the appealed order of dismissal is set aside and the
complaint for damages for infringement of patent and unfair competition reinstated.

BACK TO INDEX
 Process Patent Infringement; Doctrine of Mechanical Equivalents
Odoy, CARLOS GSELL, vs. VALERIANO G.R. No. 4720
Jethro VELOSO YAP-JUE January 19, 1909

FACTS:
            The principal case to which these proceedings are ancillary, was an action to enjoin
infringement of a patented process for manufacture of curved handles for canes, parasols, and
umbrellas. In that case, plaintiff established his title to a valid patent covering the process in
question, and obtained against this defendant a judgment, granting a perpetual injunction
restraining its infringement, which judgment was affirmed by this Court on appeal. The order
was couched in the following terms:
“It is ordered that the defendant abstain from manufacturing canes and umbrellas with
a curved handle by means of a lamp or blowpipe fed with mineral oil or petroleum, which
process was protected by patent no. 19288, issued in favor of Henry Gsell, and by him
transferred to Carlos Gsell”.
            Thereafter the defendant continued to manufacture curved cane handles for walking
sticks and umbrellas by a process in all respects identical with that used by the plaintiff under
his patent, except only that he substituted for a lamp fed with petroleum or mineral oil, a
lamp fed with alcohol.
            The trial court found the defendant “not guilty” of contempt as charged; and this
court, on appeal, held that “The violation, if there has been any, was not of such a character
that it could be made patent by the mere annunciation of the acts performed by the defendant,
which are alleged to constitute the said violation. Consequently, the contempt with which the
accused is charged has not been fully and satisfactorily proved, and the order appealed from
should accordingly be affirmed in so far as it holds that the defendant is not guilty of
contempt.
Substantially, the same question is submitted in these new proceedings as that
submitted in the former case.
ISSUE:
            Whether the use of a patented process by a third person, without license or authority
therefore, constitutes an infringement when the alleged infringer has substituted in lieu of
some unessential part of the patented process a well-known mechanical equivalent.
HELD:
            Counsel for plaintiff invokes the doctrine of “mechanical equivalents” in support of
his contention, and indeed that doctrine is applicable to the facts of the case. This doctrine is
founded upon sound rules of reason and logic, and unless restrained or modified by law in
particular jurisdiction, is of universal application, so that it matters not whether a patent be
issued by one sovereignty or another, the doctrine may properly be invoked to protect the
patentee from colorable invasions of his patent under the guise of a substitution of some part
of his invention by some well-known mechanical equivalent.
            The use of a process in all respects identical with a process protected by a valid
patent, save only that a well-known mechanical equivalent is substituted in lieu of some
particular part of the patented process is an infringement upon the rights of the owner of the
patent, which will be enjoined in appropriate proceeding, and the use of such process, after
the order enjoining its use has been issued, is a “contempt”, under the provision of section
172 of the Code of Civil Procedure.

BACK TO INDEX
 Patent Infringement; Tests of Infringement
Payot, ROSARIO C. MAGUAN (formerly G.R. L-45101
Keely ROSARIO C. TAN), vs. THE November 28, 1986
HONORABLE COURT OF APPEALS and
SUSANA LUCHAN

FACTS:
Maguan is doing business under the firm name and style of “SWAN MANUFACTURING”
while Luchan is likewise doing business under the firm name and style of “SUSANA
LUCHAN POWDERPUFF MANUFACTURING”. Maguan informed Luchan that the
powder puffs Luchan is manufacturing and selling to various enterprises particularly those in
the cosmetics industry resemble, identical or substantially Identical powder puffs of which
Maguan is a patent holder. Maguan 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.
Luchan replied stating that her products are different and countered that Maguan’s 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 CFI 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 Maguan has a right to file an action before the CFI for injunction due to
infringement of her patent?

HELD:
Yes. 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 present Patent Law, there is
even less reason to doubt that the 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 (Sec. 37, 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.

The burden of proof to substantiate a charge of infringement is with the Maguan. But where
she introduces the patent in evidence, and the same is due form, there is created a prima facie
presumption of its correctness and validity. The decision of the Commissioner (now Director)
of Patent in granting the patent is presumed to be correct. The burden of going forward with
the evidence (burden of evidence) then shifts to the defendants to overcome by competent
evidence this legal presumption.

BACK TO INDEX
Puertollano, PASCUAL GODINES, vs. THE G.R. No. 97343
Santino HONORABLE COURT OF APPEALS, September 13, 1993
SPECIAL FOURTH DIVISION and SV-
AGRO ENTERPRISES, INC.

FACTS:
Respondent SV-Agro Industries acquired a letter patent issued to one Magdalena Villaruz
which covers a utility model for hand tractor or power tiller by virtue of a deed of assignment
executed by the latter in its favor. Respondent after suffering a decline in sales of the patented
power tillers, investigated and discovered that petitioner Godines was manufacturing the
same power tillers as they have. Respondent thus filed a complaint for patent infringement
and unfair competition against petitioner Godines. The trial court held petitioner liable for
infringement. CA affirmed.
ISSUE:
Whether or not petitioner’s products infringe upon the patent of respondent SV-Agro.
RULING:
YES. Tests have been established to determine infringement. These are (a) literal
infringement; and (b) the doctrine of equivalents. In using literal infringement as a 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 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. It appears from the observation of the trial court that these claims of the patent and
the features of the patented utility model were copied by petitioner: 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. The parts or components thereof are virtually the same. In operation, the
floating power tiller of the defendant operates also in similar manner as the turtle power tiller
of plaintiff.
Petitioner’s argument that his power tillers were different from private respondent’s is that of
a drowning man clutching at straws. Recognizing that the logical fallback position of one in
the place of defendant is to aver that his product is different from the patented one, courts
have adopted the doctrine of equivalents. Thus, according to this doctrine, “(a)n 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.” In this case,
the trial court observed: But a careful examination between the two power tillers will show
that they will operate on the same fundamental principles.

BACK TO INDEX

Rañon, ROBERTO L. DEL ROSARIO, vs. COURT G.R. No. 115106

Rexie OF APPEALS AND JANITO March 15, 1996
CORPORATION

The petitioner filed a complaint for patent infringement against private respondent Janito
Corporation. Roberto L. del Rosario alleged that he was a patentee of an audio equipment
and improved audio equipment commonly known as the sing-along system or karaoke under
Letters Patent No. UM-5269 dated 2 June 1983 as well as Letters Patent No. UM-6237 dated
14 November 1986 issued by the Director of Patents. The effectivity of both Letters Patents
was for five (5) years and was extended for another five (5) years starting 2 June 1988 and 14
November 1991, respectively.

In the early part of 1990 petitioner learned that private respondent was manufacturing a sing-
along system bearing the trademark Miyata or Miyata karaoke substantially similar if not
identical to the sing-along system covered by the patents issued in his favor. Thus he sought
from the trial court the issuance of a writ of preliminary injunction to enjoin private
respondent, its officers and everybody elsewhere acting on its behalf, from using, selling and
advertising the Miyata or Miyata karaoke brand, the injunction to be made, permanent after
trial, and praying for damages, attorney's fees and costs of suit. On February 5, 1993 the trial
court temporarily restrained private respondent from manufacturing, using and/or selling and
advertising the Miyata sing-along system or any sing-along system substantially identical to
the sing-along system patented by petitioner until further orders. On February 24, 1993 the
trial court issued a writ of preliminary injunction upon a bond on the basis of its finding that
petitioner was a holder of a utility model patent for a sing-along system and that without his
approval and consent private respondent was admittedly, manufacturing and selling its own
sing-along system under the brand name Miyata which was substantially similar to the
patented utility model of petitioner.
Private respondent assailed the order of February 24, 1993 directing the issuance of the writ
by way of a petition for certiorari with prayer for the issuance of a writ of preliminary
injunction and a temporary restraining order before respondent Court of Appeals. On
November 15, 1993 respondent appellate court granted the writ and set aside the questioned
order of the trial court. It expressed the view that there was no infringement of the patents of
petitioner by the fact alone that private respondent had manufactured the Miyata karaoke or
audio system, and that the karaoke system was a universal product manufactured, advertised
and marketed in most countries of the world long before the patents were issued to petitioner.
This petition alleges that: (a) it was improper for the Court of Appeals to consider questions
of fact in a certiorari proceeding; (b) the Court of Appeals erred in taking judicial notice of
private respondent's self-serving presentation of facts; (c) the Court of Appeals erred in
disregarding the findings of fact of the trial court; and, (d) there was no basis for the Court of
Appeals to grant a writ of preliminary injunction in favor of private respondent The
petitioner herein claims, he has satisfied the legal requisites to justify the order of the trial
court directing the issuance of the writ of injunction. On the other hand, in the absence of a
patent to justify the manufacture and sale by private respondent of sing-along systems, it is
not entitled to the injunctive relief granted by respondent to the appellate court.

ISSUES: Whether or not there was a patent infringement on the Janito Corporation. Whether
or not respondent Court of Appeals erred in finding the trial court to have committed grave
abuse of discretion in enjoining private respondent from manufacturing, selling and
advertising the Miyata karaoke brand sing-along system for being substantially similar if not
identical to the audio equipment covered by letters patent issued to petitioner.

RULING: Yes. Injunction is a preservative remedy for the protection of substantive rights
or interests. It is not a cause of action in itself but merely a provisional remedy, an adjunct to
a main suit. The controlling reason for the existence of the judicial power to issue the writ is
that the court may thereby prevent a threatened or continuous irremediable injury to some of
the parties before their claims can be thoroughly investigated and advisedly adjudicated.
Injunction is reasonably necessary to protect the legal rights of plaintiff pending the litigation.
A preliminary injunction may be granted at any time after the commencement of the action
and before judgment when it is established that the defendant is doing, threatens, or is about
to do, or is procuring or suffering to be done, some act probably in violation of the plaintiff's
rights. Thus, there are only two requisites to be satisfied if an injunction is to issue, namely,
the existence of the right to be protected, and that the facts against which the injunction is to
be directed are violative of said right.

Admittedly, petitioner is a holder of Letters Patent No. UM-5629 dated June 2, 1985 issued
for a term of five (5) years from the grant of a Utility Model herein described Again, on
November 14, 1986, the petitioner was granted Letters Patent No. UM-6237 for a term of five
(5) years from the grant of a Utility Model. The terms of both Letters Patents were extended
for another five (5) years each, the first beginning June 2, 1988 and the second, November
14, 1991. The Patent Law expressly acknowledges that any new model of implements or
tools of any industrial product even if not possessed of the quality of invention but which is
of practical utility is entitled to a patent for utility model. Here, there is no dispute that the
letters patent issued to petitioner are for utility models of audio equipment. In issuing,
reissuing or withholding patents and extensions thereof, the Director of Patents determines
whether the patent is new and whether the machine or device is the proper subject of patent.
In passing on an application, the Director decides not only questions of law but also questions
of fact, i.e. whether there has been a prior public use or sale of the article sought to be
patented. Where petitioner introduces the patent in evidence, if it is in due form, it affords a
prima facie presumption of its correctness and validity. The decision of the Director of
Patents in granting the patent is always presumed to be correct, and the burden then shifts to
respondent to overcome this presumption by competent evidence. Under Sec. 55 of The
Patent Law a utility model shall not be considered "new" if before the application for a patent
it has been publicly known or publicly used in this country or has been described in a printed
publication or publications circulated within the country, or if it is substantially similar to any
other utility model so known, used or described within the country. Respondent Corporation
failed to present before the trial court competent evidence that the utility models covered by
the Letters Patents issued to petitioner were not new. As may be gleaned herein, the rights of
petitioner as a patentee have been sufficiently established, contrary to the findings and
conclusions of respondent Court of Appeals. Consequently, under Sec. 37 of The Patent law,
petitioner as a patentee shall have the exclusive right to make, use and sell the patented
machine, article or product 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 authorization of the patentee constitutes infringement of his patent.

Respondent Janito Corporation denied that there was any violation of petitioner's patent
rights, and cited the differences between its miyata equipment and petitioner's audio
equipment. But, it must be emphasized, respondent only confined its comparison to the first
model, Utility Model No. 5269, and completely disregarded Utility Model No. 6237 which
improved on the first. It is elementary that a patent may be infringed where the essential or
substantial features of the patented invention are taken or appropriated, or the device,
machine or other subject matter alleged to infringe is substantially identical with the patented
invention. In order to infringe a patent, a machine or device must perform the same function,
or accomplish the same result by identical or substantially identical means and the principle
or mode of operation must be substantially the same. It may be noted that respondent
corporation failed to present before the trial court a clear, competent and reliable comparison
between its own model and that of petitioner, and disregarded completely petitioner's Utility
Model No. 6237 which improved on his first patented model. Notwithstanding the differences
cited by respondent corporation, it did not refute and disprove the allegations of petitioner
before the trial court, we find that petitioner had established before the trial court prima facie
proof of violation of his rights as patentee to justify the issuance of a writ of preliminary
injunction in his favor during the pendency of the main suit for damages resulting from the
alleged infringement, we find that petitioner had established before the trial court prima facie
proof of violation of his rights as patentee to justify the issuance of a writ of preliminary
injunction in his favor during the pendency of the main suit for damages resulting from the
alleged infringement.

BACK TO INDEX
Salcedo, SMITH KLINE BECKMAN G. R. No.126627
Deanne CORPORATION, vs. THE HONORABLE August 14, 2003
Aubrey COURT OF APPEALS and TRYCO
PHARMA CORPORATION

FACTS:
 Smith Kline Beckman Corporation (Beckman Corp.), the petitioner, is a
corporation existing in Pennsylvania, United States of America and is licensed to do
business in the Philippines. They filed on 08 October 1976, as an assignee, for the
application of a patent over an invention entitled “Methods and Compositions for
Producing Biphasic Parasiticide Activity using Methyl 5 Propylthio-2-
Benzimidazole Carbamate”.
 Subsequently, the application of Beckman Corporation was granted for a term of
seventeen years. In the Letters Patent No. 14561, it provides in its claim that the
patented invention consisted of a new compound named Methyl 5 Propylthio-2-
Benzimidazole Carbamate and the methods or composition utilizing the compound as
an active ingredient in fighting infections caused by gastrointestinal parasites and
lungworms in animals such as swine, sheep, cattle, goats, horses, and even pet
animals.
 Tryco Pharma Corporation (Tryco), the private respondent, is a domestic
corporation that manufactures, distributes, and sells veterinary products including
 Impregon, a drug that has Albendazole for its active ingredient and is claimed to be
effective also against gastrointestinal roundworms, lungworms, tapeworms, and
fluke infestation in carabaos, cattle, and goats.
 Beckman Corp., sued Tryco for infringement of patent and unfair competition before
the RTC Caloocan. They claimed that its patent covers or includes the substance
Albendazole such that Tryco, by manufacturing, selling, using, and causing to be sold
and used the drug Impregon without its authorization. They also alleged that the
Tryco committed unfair competition under Article 189 of the RPC and Section 29 of
RA 166 for advertising and selling as its own the drug Impregon although the same
contained Beckman Corp.’s patented Albendazole.
 Tryco in its answer averred that the Letters Patent No. 14561 does not cover the
substance Albendazole for nowhere in it does that word appear; that even if the patent
were to include Albendazole, such substance is unpatentable. The Bureau of Food and
Drugs also allowed Tryco to manufacture and market Impregon with Albendazole as
its known ingredient; that there is no proof that it passed off in any way its veterinary
products as those of Beckman Corp.,; that Letters Patent No. 14561 is null and void,
the application for the issuance thereof having been filed beyond the one year period
from the filing of an application abroad for the same invention covered thereby, in
violation of Section 15 of Republic Act No. 165 (The Patent Law); and that Beckman
Corp., is not the registered patent holder.
 The RTC ruled in favor of Tryco, it was declared that the Letters Patent No. 14561
issued was null and void, and directed the Director of Bureau of Patents to cancel the
said letters patent and publish such cancellation in the Official Gazette.
 The decision is upheld by the Court of Appeals with modifications. The CA declared
that the letters patent were not void.
ISSUE:
 Whether or not Tyco committed patent infringement to the prejudice of Beckman
Corporation.
RULING:
 No, Tyco did not commit patent infringement.
 The Supreme Court held that “the burden of proof to substantiate a charge for patent
infringement rests on the plaintiff. In the case at bar, Beckman Corporation’s evidence
consists primarily of its Letters Patent No. 14561, and the testimony of Dr. Orinion,
its general manager in the Philippines for its Animal Health Products Division, 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 9 claims of Letters Patent No. 14561 in relation to the other portions thereof, no
mention is made of the compound Albendazole . All that the claims disclose are: the
covered invention, that is, the compound methyl 5 propylthio-2-benzimidazole
carbamate; the compound’s being anthelmintic but nontoxic for animals or its ability
to destroy parasites without harming the host animals; and the patented methods,
compositions or preparations involving the compound to maximize its efficacy against
certain kinds of parasites infecting specified animals.”
  The Supreme Court said that “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.”

AS TO THE DOCTRINE OF EQUIVALENTS

 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. Yet
again, a scrutiny of petitioner’s evidence fails to convince this Court of the
substantial sameness of petitioner’s patented compound and Albendazole. While
both compounds have the effect of neutralizing parasites in animals, identity of result
does not amount to infringement of patent unless Albendazole operates in
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.

 THE DOCTRINE OF EQUIVALENTS THUS REQUIRES SATISFACTION OF

THE FUNCTION-MEANS-AND-RESULT TEST, THE PATENTEE HAVING
THE BURDEN TO SHOW THAT ALL THREE COMPONENTS OF SUCH
EQUIVALENCY TEST ARE MET.

BACK TO INDEX
Suaybaguio, PEARL & DEAN (PHIL.), G.R. No. 148222
Mervin Jay INCORPORATED, vs. SHOEMART, August 15, 2003
INCORPORATED, and NORTH EDSA
MARKETING, INCORPORATED

FACTS: Pearl and Dean (Phil.), Inc. (P&D) is engaged in the manufacture of advertising
display units simply referred to as light boxes. It secured a Certificate of Copyright
Registration and the advertising light boxes were marketed under the trademark “Poster
Ads”.
In 1985, P&D negotiated with defendant-appellant Shoemart, Inc. (SMI) for the lease and
installation of the light boxes in SM Makati and SM Cubao. PDI submitted for signature the
contracts covering both stores, but only the contract for SM Makati, however, was returned
signed. Eventually, SMI informed PDI that it was rescinding the contract for SM Makati due
to non-performance of the terms thereof.
Years later, P&D found out that exact copies of its light boxes were installed at different SM
stores. It was further discovered that SMI’s sister company North Edsa Marketing Inc.
(NEMI), sold advertising space in lighted display units located in SMI’s different branches.
P&D sent a letter to both SMI and NEMI enjoining them to cease using the subject light
boxes, remove the same from SMI’s establishments and to discontinue the use of the
trademark “Poster Ads,” as well as the payment of compensatory damages.
Claiming that both SMI and NEMI failed to meet all its demands, P&D filed the instant case
for infringement of trademark and copyright, unfair competition and damages.
SMI maintained that it independently developed its poster panels using commonly known
techniques and available technology, without notice of or reference to P&D’s copyright. SMI
noted that the registration of the mark “Poster Ads” was only for stationeries such as
letterheads, envelopes, and the like. Besides, according to SMI, the word “Poster Ads” is a
generic term which cannot be appropriated as a trademark, and, as such, registration of such
mark is invalid. On this basis, SMI, aside from praying for the dismissal of the case, also
counterclaimed for moral, actual and exemplary damages and for the cancellation of PDI’s
Certification of Copyright Registration, and Certificate of Trademark Registration.
The RTC of Makati City decided in favor of PDI, finding SMI and NEMI jointly and
severally liable for infringement of copyright and infringement of trademark
On appeal, however, the Court of Appeals reversed the trial court.
ISSUES:
1. Whether the light box depicted in such engineering drawings ipso facto also protected
by such copyright
2. Whether there was a patent infringement
3. Whether the owner of a registered trademark legally prevent others from using such
trademark if it is a mere abbreviation of a term descriptive of his goods, services or
business

RULING:
ON THE ISSUE OF COPYRIGHT INFRINGEMENT
The Court of Appeals correctly held that the copyright was limited to the drawings alone and
not to the light box itself. Although petitioner’s copyright certificate was entitled
“Advertising Display Units” (which depicted the box-type electrical devices), its claim of
copyright infringement cannot be sustained.
Copyright, in the strict sense of the term, is purely a statutory right. Accordingly, it can cover
only the works falling within the statutory enumeration or description.
Even as we find that P&D indeed owned a valid copyright, the same could have referred only
to the technical drawings within the category of “pictorial illustrations.” It could not have
possibly stretched out to include the underlying light box. The light box was not a literary or
artistic piece which could be copyrighted under the copyright law.
The Court reiterated the ruling in the case of Kho vs. Court of Appeals, differentiating
patents, copyrights and trademarks, namely:
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 is 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.
ON THE ISSUE OF PATENT INFRINGEMENT
Petitioner never secured a patent for the light boxes. It therefore acquired no patent rights
which and could not legally prevent anyone from manufacturing or commercially using the
contraption. To be able to effectively and legally preclude others from copying and profiting
from the invention, a patent is a primordial requirement. No patent, no protection.
ON THE ISSUE OF TRADEMARK INFRINGEMENT
On the issue of trademark infringement, the petitioner’s president said “Poster Ads” was a
contraction of “poster advertising.” P&D was able to secure a trademark certificate for it, but
one where the goods specified were “stationeries such as letterheads, envelopes, calling cards
and newsletters.” Petitioner admitted it did not commercially engage in or market these
goods. On the contrary, it dealt in electrically operated backlit advertising units which,
however, were not at all specified in the trademark certificate.
Assuming arguendo that “Poster Ads” could validly qualify as a trademark, the failure of
P&D to secure a trademark registration for specific use on the light boxes meant that there
could not have been any trademark infringement since registration was an essential element
thereof.
ON THE ISSUE OF UNFAIR COMPETITION
There was no evidence that P&D’s use of “Poster Ads” was distinctive or well-known. As
noted by the Court of Appeals, petitioner’s expert witnesses himself had testified that ”
‘Poster Ads’ was too generic a name. So it was difficult to identify it with any company,
honestly speaking.” This crucial admission that “Poster Ads” could not be associated with
P&D showed that, in the mind of the public, the goods and services carrying the trademark
“Poster Ads” could not be distinguished from the goods and services of other entities.
“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. “Secondary
meaning” means that a word or phrase originally incapable of exclusive appropriation with
reference to an article in the market might nevertheless have been used for so long and so
exclusively by one producer with reference to his article that, in the trade and to that branch
of the purchasing public, the word or phrase has come to mean that the article was his
property.

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Trajano, PHIL PHARMAWEALTH, INC., vs. G.R. No. 167715

Jovelyn PFIZER, INC. and PFIZER (PHIL.) INC. November 17, 2010

Facts:
Pfizer is the registered owner of Philippine Letters Patent No. 21116 (the "Patent") which
was issued by this Honorable Office on July 16, 1987. The patent is valid until July 16, 2004.
The claims of this Patent are directed to "a method of increasing the effectiveness of a beta-
lactam antibiotic in a mammalian subject, which comprises co-administering to said subject a
beta-lactam antibiotic effectiveness increasing amount of a compound of the formula IA."
The scope of the claims of the Patent extends to a combination of penicillin such as...
ampicillin sodium and beta-lactam antibiotic like sulbactam sodium
Patent No. 21116 thus covers ampicillin sodium/sulbactam sodium. Ampicillin sodium is a
specific example of the broad beta-lactam antibiotic disclosed and claimed in the Patent
Sulbactam sodium, on the other hand, is a specific compound of the formula IA disclosed and
claimed in the Patent.
Sometime in January and February 2003, complainants came to know that respondent [herein
petitioner] submitted bids for the supply of Sulbactam Ampicillin to several hospitals without
the consent of complainants and in violation of the complainants' intellectual property rights
Complainants thus wrote the above hospitals and demanded that the latter immediately cease
and desist from accepting bids for the supply [of] Sulbactam Ampicillin or awarding the same
to entities other than complainants. Complainants, in the same letters sent through
undersigned counsel, also demanded that respondent immediately withdraw its bids to supply
Sulbactam Ampicillin.
Respondent and the hospitals, willfully ignored complainants' just, plain and valid demands,
refused to comply therewith and continued to infringe the Patent
Respondents prayed for permanent injunction, damages and the forfeiture and impounding of
the alleged infringing products.
LA-IPO issued a preliminary injunction which was effective for ninety days from petitioner's
receipt of the said Order.
respondents filed a Motion for Extension of Writ of Preliminary Injunction which, however,
was denied by the BLA-IPO
Respondents then filed a special civil action for certiorari with the CA assailing the October
15, 2003 and January 23, 2004 Resolutions of the BLA-IPO.
While the case was pending before the CA, respondents filed a Complaint with the Regional
Trial Court (RTC) of Makati City for infringement and unfair competition with damages
against herein petitioner. In said case, respondents prayed for the issuance of a temporary
restraining order and preliminary injunction to prevent herein petitioner from importing,
distributing, selling or offering for sale sulbactam ampicillin products to any entity in the
Philippines.
On August 24, 2004, the RTC of Makati City issued an Order directing the issuance of a
temporary restraining order conditioned upon respondents' filing of a bond.
Petitioner filed a Motion to Dismiss the petition filed with the CA on the ground of forum
shopping, contending that the case filed with the RTC has the same objective as the petition
filed with the CA, which is to obtain an injunction prohibiting petitioner from importing,
distributing and selling Sulbactam Ampicillin products.
Petitioner again filed a Motion to Dismiss the case for being moot and academic, contending
that respondents' patent had already lapsed. In the same manner, petitioner also moved for the
reconsideration of the temporary restraining... order issued by the CA on the same basis that
the patent right sought to be protected has been extinguished due to the lapse of the patent
license
Issues:
a) Can an injunctive relief be issued based on an action of patent infringement when the
patent allegedly infringed has already lapsed?
b) What tribunal has jurisdiction to review the decisions of the Director of Legal Affairs of
the Intellectual Property Office?
c) Is there forum shopping when a party files two actions with two seemingly different
causes of action and yet pray for the same relief?
Ruling:
In the first issue raised, petitioner argues that respondents' exclusive right to monopolize the
subject matter of the patent exists only within the term of the patent. Petitioner claims that
since respondents' patent expired on July 16, 2004, the latter no longer possess any... right of
monopoly and, as such, there is no more basis for the issuance of a restraining order or
injunction against petitioner insofar as the disputed patent is concerned.
The Court agrees.
Section 37. Rights 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.
It is clear from the above-quoted provision of law that the exclusive right of a patentee to
make, use and sell a patented product, article or process exists only during the term of the
patent.
In the instant case, Philippine Letters Patent No. 21116, which was the basis of respondents
in filing their complaint with the BLA-IPO, was issued on July 16, 1987. This fact was
admitted by respondents themselves in their complaint. They also admitted that the validity of
the said patent is until July 16, 2004, which is in conformity with Section 21 of RA 165,
providing that the term of a patent shall be seventeen (17) years from the date of issuance
thereof. On the basis of the foregoing, the Court agrees with petitioner that after July 16,
2004, respondents no longer possess the exclusive right to make, use and sell the articles or
products covered by Philippine Letters Patent No. 21116.
In the instant case, it is clear that when the CA issued its January 18, 2005 Resolution
approving the bond filed by respondents, the latter no longer had a right that must be
protected, considering that Philippine Letters Patent No. 21116 which was issued to them
already expired on July 16, 2004. Hence, the issuance by the CA of a temporary restraining
order in favor of the respondents is not proper.
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
As to the second issue raised, the Court, is not persuaded by petitioner's argument that,
pursuant to the doctrine of primary jurisdiction, the Director General of the IPO and not the
CA has jurisdiction to review the questioned Orders of the Director of the BLA-IPO.

BACK TO INDEX
 Voluntary Licensing
Villanueva, DOLORITO M. FELICIANO and MAXIMO G.R. No. L-4572
Rosalyn B. TAPINIO, MELITON D ALBAÑA, vs. May 22, 1953
THE DIRECTOR OF PATENT

FACTS:

An application for patent was filed with the Patent Office. Pending examination for the
application, Petitioner Meliton D. Albaña filed a motion to intervene claiming that the
applicant-inventors had sold and/or bartered and assigned to him their rights to contract or
deal the sale of their invention called ‘Fel-Tap Meter Guard and Detector to or through a
Corporation that they were organizing under his direction.

Also, the petitioner prayed for the applicant-inventor Maximo Tapinio be compelled to sign a
contract together with the other applicant-inventor Dolorito Feliciano who had already signed
it, to acknowledged it and another contract before a notary public, to have both contracts
recorded in the Patent Office and in the Office of the Register of Deeds, and that the patent
for the invention be issued in his name and in the name of the inventors.

The motion was denied on the ground under the provisions of the Patent Law (Republic Act
No. 165) the Director of Patents has no jurisdiction or power to decide the question submitted
to him.

The movant filed an amended motion to intervene claiming "that he is the assignee of
inventors Dolorito M. Feliciano and Maximo Tapinio of the undivided part interest in the
invention for whose letter-patent the named petitioners Dolorito M. Feliciano and Maximo
Tapinio are herein applying."

The amended motion was denied on the ground that the assignment made to the movant is not
one of exclusive right to make, use the sell 1 the electrical contrivance for which a patent is
applied for; that it is just an authority to act as the selling agent for the inventors of the patent,
if granted, and the invention covered thereby and to receive compensation therefor; and that
not being entitled to have his name included as one of the patentees, if patent for the
invention be granted, the movant has no right to intervene in the proceedings for the grant of
the patent

ISSUE: WON the Director of Patent has no power and authority to compel the applicant-
inventors to do what the appellant is asking them to perform

HELD:

YES, What the appellant asked the Director Patents to do for him is essentially a judicial
function which would require the determination or finding by a court of competent
jurisdiction as to whether there was a meeting of the minds of the contracting parties before it
could compel the applicant-inventors to perform what the appellant prays the court to order
them to do. Aside from want of authority and power, the Director of Patent lacks the means
to make such determination and finding which would be necessary before he could act on the
appellant's motion.

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Compulsory Licensing
- C.f. Anti-Competitive Agreements under Philippine Competition Act
Agar, Mina PARKE, DAVIS and COMPANY vs. G.R. No L-22221
DOCTORS' PHARMACEUTICALS, INC., August 31, 1965
ET AL.

Facts:

Parke Davies and Company is an owner of a Patent entitled “Process for the Manufacturing
of Antibiotics which was issued by the Philippine Patent Office on February 9, 1950. The
patent relates to a chemical compound represented by a formula commonly called
chloramphenicol. The patent contains ten claims, nine of which are process claims, and the
other is a product claim to the chemical substance chloramphenicol.

Doctor’s Pharmaceuticals Inc requested that it be granted a voluntary license to manufacture

and produce our own brand of medicine, containing chloramphenicol, and to use, sell,
distribute, or otherwise dispose of the same in the Philippines under such terms and
conditions as may be deemed reasonable and mutually satisfactory, which Parke Davies
declined.

Doctor’s Pharmaceuticals Inc filed a petition with the Director of Patents requesting the
Director to grant a compulsory license. After careful evaluation and hearings, the Director
granted the request of Doctor’s Pharmaceuticals.

Issue:

Is the decision of the Director of Patents in granting Doctor’s Pharmaceutical Inc compulsory
license to use the substance chloramphenicol valid?

Held:

Yes. The decision of the Director of Patents in granting Doctor’s Pharmaceutical Inc
compulsory license to use the substance chloramphenicol is valid. The Supreme Court says
that patents issued to foods and medicines are not exclusive so as not to prevent the building
up of patent monopolies. Public benefit is foremost.

The Court dismissed the contention of Parke Davies that the Director of Patents erred in
granting compulsory license. The decision appealed from is affirmed, with costs against
petitioner.
 BACK TO INDEX

Amadora, PARKE, DAVIS & COMPANY, vs. G.R. No L-27004

Jordan DOCTOR'S PHARMACEUTICALS, INC. August 16, 1983
and TIBURCIO S. EVALLE, in his capacity
as Director of Patents

FACTS: Parke Davies and Company is an owner of a Patent entitled "Process for the
Manufacturing of Antibiotics" (Letters Patent No. 50) which was issued by the Philippine
Patent Office on February 9, 1950. The patent relates to a chemical compound represented by
a formula commonly called chloramphenicol. The Doctors’ Pharmaceuticals Inc. requested
that it be granted a voluntary license to manufacture and produce own brand of medicine,
containing chloramphenicol, and to use, sell, distribute, or otherwise dispose of the same in
the Philippines under such terms and conditions as may be deemed reasonable and mutually
satisfactory, Parke Davies declined.

ISSUE: WHETHER OR NOT the decision of the Director of Patents in granting Doctor’s
Pharmaceutical Inc. compulsory license to use the substance chloramphenicol, valid?

HELD: YES. The decision of the Director of Patents in granting Doctor’s Pharmaceutical
Inc. compulsory license to use the substance chloramphenicol is valid. The Supreme Court
says that patents issued to foods and medicines are not exclusive so as not to prevent the
building up of patent monopolies.

—Compulsory licensing of a patent on 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 Patents may fix the terms and conditions of the license. (See Sec. 36, Republic
Act No. 165).

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 Apil, BARRY JOHN PRICE, JOHN WATSON G.R. No. 82542
Edzrapil CLITHERON and JOHN BRADSHAW, September 29, 1988
Assignors to ALLEN & HANBURYS, LTD.,
vs. UNITED LABORATORIES

Facts:
Price et. al., the petitioners, are the owners-assignees of Philippine Patent No. 13540
which was granted to them on June 26, 1980 for a pharmaceutical compound known as
“amino alkyl furan derivatives”
October of 1982, UNILAB filed in the Philippine Patent Office a petition for the issuance
of a compulsory license to use the patented compound in its own brands of medicines and
pharmaceuticals and to sell, distribute, or otherwise dispose of such medicines or
pharmaceutical preparations in the country.
After the hearing, the Philippine Patent Office rendered a decision, granting UNILAB a
compulsory license subject to 10 terms and conditions, No. 3 of which grants Price et. al. the
royalty to be paid by UNILAB.
The patentees, price et al, filed an appeal alleging that the Director of Patents erred in its
unilateral determination of the terms and conditions of the compulsory license, without
affording the parties an opportunity to negotiate the terms and conditions freely and by
themselves.

Issue:
Whether or not the Director of Patents erred in granting a compulsory license over the
entire patented invention in favor of UNILAB.

Ruling:
No, the Director of Patents did not err in granting a compulsory license over the
entire patented invention, for there is no law requiring that the license be limited to a
specific embodiment of the invention, or, to a particular claim.
The Director’s finding that UNILAB has the capability to use the patented compound in
the manufacture of an anti-ulcer pharmaceutical preparation is a factual finding which is
supported by substantial evidence. UNILAB has been engaged in the business of
manufacturing drugs and pharmaceutical products for the past 30 years, that it is the leading
drug manufacturer in the country, that it has the necessary equipment and technological
expertise for the development of solid dosage forms or for tablet, capsule, and liquid
preparations, and that it maintains standards and procedure to ensure the quality of its
products.
In any event, since Price, et al will be paid royalties on the sales of any products, the
UNILAB may manufacture using any or all of the patented compounds, Price et al, cannot
complain of a deprivation of property rights without just compensation.
 BACK TO INDEX

Arangcon, SMITH KLINE & FRENCH G.R. No. 121867

Ladyh April LABORATORIES, LTD., vs. COURT OF July 24, 1997
APPEALS, BUREAU OF PATENTS,
TRADEMARKS AND TECHNOLOGY
TRANSFER and DOCTORS
PHARMACEUTICALS, INC.
FACTS: Smith Kline and French is the assignee of Cimetidine (Patent No. 12207) issued by
the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) granted to Graham
John Durant, John Collin Emmet, and Robin Genelin. Meanwhile private respondent filed
with the BPTTT a petition for compulsory license to manufacture and produce its own brand
of medicine using Cimetidine invoking Section 34 (1) (e) of RA 165. Petitioner opposed the
petition for compulsory license. After hearing both parties, BPTTT directed the issuance of
compulsory license and ordered the payment to petitioner of royalties. Aggrieved, petitioner
appealed but the CA affirmed the decision of the BPTTT.
Arguments of petitioner:
(1) The grant of compulsory license to private respondent is an invalid exercise of police
power since it was not shown that there is an overwhelming public necessity of such grant,
considering that petitioner is able to provide an adequate supply of Cimetidine to satisfy the
needs of the Philippine market;
(2) The grant of compulsory license to private respondent unjustly deprives it of a reasonable
return on its investment;
(3) The provisions of the Patent Law in compulsory licensing contravene the Convention of
Paris for the Protection of Industrial Property;
(4) The grant of a compulsory license to private respondent will allow the latter to liberally
manufacture and sell medicinal products containing Cimetidine without even extending to
Smith Kline due recognition for pioneering the development and worldwide acceptance of
said invention, and will unreasonably dilute Smith Kline’s right over the patent.
Argument of the private respondent:
Under Section 31 (1) (e) of RA 165, an application for the grant of a compulsory license
under a particular patent may be filed with the BPTTT at any time after the lapse of two years
from the date of grant of such patent, if patented invention or article relates to food or
medicine, or manufactured substances which can be used as food or medicine, or is necessary
for public health or public safety.
ISSUE: Whether or not the granting of compulsory license over CIMETIDINE in favor of
private respondent is valid.
HELD: Yes. The CA did not err in affirming the validity of the grant by the BPTTT of
compulsory license to private respondent for the use, manufacture and sale of Cimetidine.
Under Section 34 (1) of the Patent Law, any person may apply to the Director for the grant of
a license under a particular patent at any time after the expiration of two years from the date
of the patent, under the following circumstance: xxx (e ) if the patented invention or article
relates to food or medicine, or is necessary for public health or public safety; (2 ) In any of
the above cases, a compulsory license shall be granted to the petitioner provided that he has
proved his capability to work the patented product or to make use of the patented product in
the manufacturer of a useful product, or to employ the patented process. The grant of the
compulsory license satisfies the requirement of the foregoing provision. More than ten years
have passed since the patent for Cimetidine was issue to Smith Kline and its predecessors-in-
interest, and the compulsory license applied for by private respondent is for the use,
manufacture and sale of a medical product. Furthermore, both the CA and the BPTTT found
that private respondent had the capability to work Cimetidine or to make use therefore in the
manufacture of a useful product. Wherefore, the petition is hereby denied.
BACK TO INDEX
Archua, Ivy SMITH KLINE & FRENCH G.R. No. 174379
LABORATORIES, LTD. , vs. COURT OF August 31, 2016
APPEALS and DANLEX RESEARCH
LABORATORIES, INC.

FACTS:
In August 1989, Danlex Research Laboratories petitioned before Bureau of Patents,
Tradmearks and Technology Transfer (BPTTT) that it may be granted a compulsory license
for the use and manufacture of the pharmaceutical product Cimetidine. Cimetidine is
originally patented to Smith Kline and French Laboratories, Ltd in 1978, and the said patent
is still in force at the time of application by Danlex Research.
Smith Kline and French Laboratories, Ltd in 1978, and said patent is still in force at the time
of application by Danlex Research.
The BPTTT granted the application of Danlex Research together with a provision that Danlex
Research should be paying 2.5% of the net wholesale price as royalty payment to Smith
Kline. This was affirmed by the Court of Appeals.
Petitioners Argument:
-That the same is an invalid exercise of police power because there is no overwhelming
public necessity for such grant considering that Smith Kline is able to provide an adequate
supply of it to satisfy the needs of the Philippine market; that a provision in the Philippine
Patent Laws is violative of the Paris Convention to which the Philippines is a signatory.
- Second contention, Smith Kline states that the Paris Convention only allows compulsory
licensing if the original licensee (patent holder) has failed to work on the patent; that
therefore, the provision un the Philippine Patent Laws which adds other grounds for the
granting of compulsory license i.e. monopoly, is invalid and contrary to the Paris Convention.
- It is also contended that the grant of a compulsory license to private respondent will allow
the latter to liberally manufacture and sell medicinal products containing Cimetidine without
even extending to petitioner due recognition for pioneering the development and worldwide
acceptance of said intervention, and will unreasonably dilute petitioners right over the patent.
-Petitioner likewise asseverates that the rate of royalty fixed by the BPTTT at 2.5 % of net
sales is grossly inadequate, taking into consideration its huge investments of money, time and
other resources in the research and development, as well as marketing of Cimetidine. It is
further alleged that such rate has no factual basis since the appellate court and the BPTTT
relied solely on analogous cases and did not explain how such rate was arrived at.
Issues:
1. Whether or not it is an invalid exercise of Police Power
2. Whether or not, the provision in the Philippine Patent Laws which adds other grounds
for the granting of compulsory license, i.e. monopoly, is invalid and contrary to the
Paris Convention.
3. Whether or not the grant of compulsory license to respondent prevents recognition on
the part of petitioner.
4. Whether or not 2.5% of net sales is grossly inadequate.
RULING:
1. SC argued the CA was correct in affirming BPTTT’s ruling because it is in
accordance with Section 34 (1) and Section 34 (2). Further, the granting is a valid
exercise of police power. Cimetidine is medicinal in nature, and therefore necessary
for the promotion of public health and safety.
2. Section A(2) of Article 5 (of Paris Convention) unequivocally and explicitly respects
the right of member countries to adopt legislative measures to provide for the grant of
compulsory licenses to prevent abuses which might result from the exercise of the
exclusive rights conferred by the patent. The phrase “failure to work”, however, as
such, is merely supplied by way of an example. The main purpose of the provision
was to prevent growth of monopolies.
3. SC does not agree with petitioner because by the grant of the compulsory license,
private respondent as licensee explicitly acknowledges that petitioner is the source of
the patented product Cimetidine. Also, the disadvantage is far outweighed by the
benefits resulting from the grant of the compulsory licensee. Therefore, there is no
deprivation of petitioners property.
4. In connection with section 35, because there was absence of government, the director
of the BPTTT may fix terms thereof, including the rate of the royalty payable to the
licensor. The law explicitly provides that the rate of royalty shall not exceed five
percent (5%) of the net wholesale price.

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 Industrial Designs
Balijani, CO SAN aka KING CHONG, GR No. L-5943
Mera vs. CELEDONIO AGRAVA, as Director of April 12, 1954
the Patent Office, and JOSE ONG LIAN
BIO5

SPANISH TEXT: RULING

SEC. 55. Design patents and patents for utility models. — (a) Any new, original, and
ornamental design for an article or manufacture and (b) any new models 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
subject to the same provisions and requirements as relate to patents for inventions in so
far as they are applicable, except as otherwise herein provided.

The standard of novelty established by section nine thereof for inventions shall apply to
ornamental designs.

A utility model shall not be considered "new" if, before the application for a patent, it has
been publicly known or publicly used in the country, or has been described in a printed
publication or publications circulated within the country, or if it is substantially similar to
any other utility model so known, used or described within the country.

Applications for design patents and patents for utility models shall be subject to
interference proceedings as authorized in section ten of this Act, as amended by section
one of Republic Act Numbered Six hundred and thirty-seven.

Patents for designs and for utility models shall be subject to compulsory license as
authorized in section thirty-four of this Act. They shall not be subject to the payment of
annual fees provided for invention patents in Chapter V hereof." — Republic Act No. 165,
as amended by Republic Act No. 637, and further amended by Republic Act No. 864,
section 1.

Y del articulo 28 de dicha ley, segun esta enmendado, dice:

 SEC. 28. General grounds for cancellation. — Any person may on payment of the
required fee petition he Director within three years from the date of publication of the
issue of the patent in the Official Gazette, to cancel the patent or any claim thereof, on
any of the following grounds:

(a) That the invention is not new or patentable in accordance with sections seven, eight,
and nine, or or that the design or utility model is not new or patentable under section fifty-
five thereof;

(b) That the specification in the case of an invention does not comply with the
requirement of section fourteen, Chapter III hereof; or

(c) That the person to whom the patent was issued was not the true and actual inventor,
designer or author of the utility model or did not derive his rights from the true and actual
inventor, designer or author of the utility model. — Republic Act No. 165, as amended by
Republic Act No. 864, section 2.

FULL TEXT

G.R. No. L-5943             April 12, 1954

CO SAN alias KING CHONG, recurrente-apelante,

vs.
CELEDONIO AGRAVA, como Director de la Oficina de Patentes, y JOSE ONG LIAN BIO,

DIOKNO, J.:

La cuestion legal la apelacion plantea es si el Director de la Oficina de Patentes tiene faculdad

para considerar la cancelacion de patentes de diseños industriales que ha librado cuando se
alega que no son nuevos y originales, sino meras copias de los que el mocionante viene usando
en los articulos que manufactura y que estan tomados de catalogos impresos de manufactureros
americanos de articulos identicos.

Se trata de unas franjas ornamentalas en los bordes de maletines de viaje por las que el Director
de Patentes concedio dos patentes de diseño industrial al recurrido Jose Ong Lian Bio, sin
previa notificacion publica o privada. Habiendose enterado de las patentes a los tres meses de
concedidas, el recurrente acudio al Director de Patentes pidiendo la cancelacion de las mismas
por los motivos arriba brevemente mencionados, pero, a mocion del recurrido Ong, el Director
sobreseyo la peticion por creerse sin autoridad legal para considerarla. Contra esta resolucion el
recurrente apelo para ante esta Corte de conformidad con los articulos 61 al 66 de la Ley de la
Republica No. 165.

La expedicion de patentes de diseños industriales esta regulada por el articulo 55 de la Ley

citada, que dice asi, segun esta enmendado:

SEC. 55. Design patents and patents for utility models. — (a) Any new, original, and
ornamental design for an article or manufacture and (b) any new models 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
subject to the same provisions and requirements as relate to patents for inventions in so
far as they are applicable, except as otherwise herein provided.
 The standard of novelty established by section nine thereof for inventions shall apply to
ornamental designs.

A utility model shall not be considered "new" if, before the application for a patent, it has
been publicly known or publicly used in the country, or has been described in a printed
publication or publications circulated within the country, or if it is substantially similar to
any other utility model so known, used or described within the country.

Applications for design patents and patents for utility models shall be subject to
interference proceedings as authorized in section ten of this Act, as amended by section
one of Republic Act Numbered Six hundred and thirty-seven.

Patents for designs and for utility models shall be subject to compulsory license as
authorized in section thirty-four of this Act. They shall not be subject to the payment of
annual fees provided for invention patents in Chapter V hereof." — Republic Act No. 165,
as amended by Republic Act No. 637, and further amended by Republic Act No. 864,
section 1.

Y del articulo 28 de dicha ley, segun esta enmendado, dice:

SEC. 28. General grounds for cancellation. — Any person may on payment of the
required fee petition he Director within three years from the date of publication of the
issue of the patent in the Official Gazette, to cancel the patent or any claim thereof, on
any of the following grounds:

(a) That the invention is not new or patentable in accordance with sections seven, eight,
and nine, or or that the design or utility model is not new or patentable under section fifty-
five thereof;

(b) That the specification in the case of an invention does not comply with the
requirement of section fourteen, Chapter III hereof; or

(c) That the person to whom the patent was issued was not the true and actual inventor,
designer or author of the utility model or did not derive his rights from the true and actual
inventor, designer or author of the utility model. — Republic Act No. 165, as amended by
Republic Act No. 864, section 2.

Este articulo es aplicable a este caso, no solo porque concierne al procedimiento de cancelacion
de patentes de diseños industriales indebiamente expedidos, sino tambien porque refleja la
correcta interpretacion del articulo 55 de la Ley, en el tiempo en que se presento la peticion de
cancelacion de patentes de diseños industriales, en relcion con los articulos que preceden de la
misma ley.

En virtud de lo expuesto, se revoca la decision apelada, y se devuelve el asunto para ulteriores

tramites de acuerdo con le ley, con las costas al recurrente Ong en esta instancia. Descartese al
Director de Patentes como parte recurrida en esta apelacion. Asi se ordena.

BACK TO INDEX
 Calizo, SANDOVAL V. SPS. BISCOCHO APPEAL NO. 10- 2004-
Juztine 00001 IPV NO.1 0- 2001-
000036
December 7, 2004

FACTS: Eriberto Sandoval filed a case for infringement and copyright of industrial design
against the spouses Liberato and Heidi Biscocho. Sandoval said that he is the maker, designer
and registered owner of a wall décor named “Goddess of Fortune and Good Will” which was
issued two certificates: Certificate of Copyright Registration and Certificate of Registration
of Industrial Design in 2000 and 2001, respectively. Around February 2001, he discovered
that the spouses had been making, producing, distributing and selling a product which is an
imitation of his work.

The spouses denied the allegations of Sandoval and sought for the dismissal of the case. They
answered that Sandoval was not the maker of the product as it was in the market even before
he filed an application for copyright and industrial design registrations. Moreover, there were
even a lot more identical and similar designs in the market.

ISSUE: Whether or not Eriberto Sandoval has the ownership of copyright of his work
“Goddess of Fortune and Good Will.”

RULING: Eriberto Sandoval does not have the ownership of copyright for his work because
it is not original and it is a mere copy of a 16 th century-old baroque painting by Guido Reni
entitled “Aurora.” His wall décor and Reni’s painting have the same number of characters
with the same positions and elements. Copyright Law protects the originality of creation and
not effort. Moreover, during the trial, Sandoval had a hard time explaining every detail of his
work except the horses which he claims was his idea. It was also discovered that he was not
the only one who contributed in the “Goddess of Fortune and Good Will” wall décor. There
were more people who joined him in creating it and one of them was Rolando Dadula who
was able to explain the details of the work more.
Sandoval’s certificate for industrial design was also cancelled. Under Section 113 of the
Intellectual Property Code, only industrial designs that are new or original shall benefit from
the protection. Also, in Section 119, in relation to Section 23, an industrial design shall not be
considered new if it forms part of a prior art. To be patentable, the design should show a
different effect not suggested by the prior art. In the eye of an ordinary observer, there’s no
difference between the work of Sandoval and Reni.

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Castillo, Yan Yan International Philippines v. Wilson BLA Decision September

May Dy Go 28, 2015 No. 15-2057

BACK TO INDEX
 Castillon- KPI MANUFACTURING INC. vs. ALWIN IPC No. 13 2015-005238 ,
Maglente, T. GO
IPC No. 13- 2015-005259,
Charry Joy
and IPC Case No. 13-2015-
0052610
FACTS:
KPI Manufacturing, Inc. filed a petition for the cancellation of industrial design
registered under Respondent Alwin T. Go.
The petitioner relies on the following grounds:
a. The respondent is not the true and original designer of the car mat product
under the Registered Industrial Design; and
b. the respondent's car mat product under the Certificate of lacks novelty as it
forms part of the prior art therefore void.
Petitioner KPI alleges that it was already dealing with car mats with designs similar to
respondents registered Industrial Design, prior to the registration date, as shown by the
various business or sales transactions of petitioner and printed publication/catalog of the said
product. Thus, it can be reasonably presumed that said car mat design was already available
to the public at the time the said respondent filed his application for registration.
The petitioner also asserts that the respondent’s disclosed his design to third parties
more than twelve months before the filing of the application. According to the Petitioner, this
renders the registration void for lack of novelty.
ISSUE: Should the Respondent-Registrant's industrial design registration be cancelled?
RULING: NO.
The catalogue presented as evidence by petitioner does not specify the exact date of
its publication, hence, it cannot be verified when it was actually printed. Furthermore, a
cursory examination of the mats fails to yield any marking showing its production or
manufacturing date. Without the dates, these cannot serve to anticipate Respondent-
Registrant's design.
Moreover, the representative proforma invoices and delivery were mere photocopies;
hence the evidence is insufficient to prove that this item code corresponds to the actual design
in the catalog or the actual mat.
As to petitioner’s contention on the lack of novelty due to the respondent’s disclosure
of the design, the IPO held that his act of purchasing a mould for his car mat design is not
tantamount to a prejudicial disclosure because the mould is merely a prelude or preparatory to
making the article bearing the new industrial design. The records are bereft of any evidence
that Respondent's car mat was disclosed, known to the public or sold more than twelve
months before the filing date. Therefore, at the time of the application the design has not been
anticipated by any prior art.
WHEREFORE, premises considered, the Petition for Cancellation is, as it is hereby
DENIED.
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