C.

Rights and Infringement of Patents

1. Boothe vs. Director of 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", a new derivative of chlortetracycline (popularly known as
"aureomycin")
PETITIONERS CLAIMS: On February 19, 1954, petitioners applied for Letters Patent
covering said invention to respondent Director of Patents claiming the right of priority
granted to foreign applicants under section 15 of the Patent Law (RA 165). Receipt of
petitioners' application was acknowledged by respondent Director on March 6, 1954
On April 14, 1954, petitioners filed with respondent Director a legalized copy of their
Application for Letters Patent in the United States for the same invention (U.S. Serial
No.342556). Said legalized copy indicated that the application in the United States was
filed onMarch 16, 1963.
Petitioner claims to benefit from Section 15 of the Patent Law, which provides that:
Section 15. Application previously filed abroad. An application for patent for an
invention filed
in this country by any person who has previously regularly filed an
application for a patent for the same invention in a foreign country, which by treaty,
convention or law affords similar privileges to citizens of the Philippines, shall have the
same force and effect as the same
application would have if filed in this country on
the date on which the application for patent for the same invention was first filed in such
foreign country: Provided, That the application in this country is filed within twelve
months from the earliest date on which such foreign application
was filed and a
certified copy of the foreign application together with a translation thereof into
English..
Petitioners claim that it would be entitled 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.
RESPONDENTS CLAIM: Respondent uphold the "Philippine Patent No. 254
November 29, 1956", which refer sto a local Patent obtained by Pfizer and Co.,
presumably covering the same invention. Also, respondent claims that the
"Specification" petitioner submitted in their application was "incomplete".

Respondent Director opined that the portions subsequently supplied in the

localapplication are not new matter a comparison between the foreign and local
applications showedthat the foreign application included the missing portions of the
local one. However, respondentDirect qualified that petitioners' application may be
considered complete only on April 14, 1954when the certified copy of the foreign
application was submitted. Consequently, the instantapplication is to be considered an
ordinary application, not entitled to the right of priority grantedby section 15 of the
Patent Law, inasmuch as said application was not complete within themeaning of Rules
47 and 48 of the Revised Rules of Practice in Patent Case when first filed onMarch 5,
1954

ISSUE: WHETHER RESPONDENT DIRECTOR OF PATENTS ERRED IN HOLDING

THATPETITIONERS' APPLICATION, MAY NOT BE TREATED AS FILED UNDER
SECTION 15 AS AMENDED, OF REPUBLIC ACT NO. 165 KNOWN AS THE PATENT
LAW.

HELD: NO. It is imperative that the application be complete in order that it may be
accepted. Itis essential to the validity of Letters Patent that the specifications be full,
definite, andspecific. The purpose of requiring a definite and accurate description of the
process is toapprise the public of what the patentee claims as his invention, to inform
the Courts as to whatthey are called upon to construe, and to convey to competing
manufacturers and dealersinformation of exactly what they are bound to avoid.
The specification which petitioners submitted on March 5, 1954 was far from complete.
Thatdefect 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 deemedas complete only on July 2, 1963 when they submitted the additional
pages on theSpecifications 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 tocomplete 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, thedate of the foreign application
for, to be entitled to the filing date of the patent application, aninvention disclosed in a
previously filed application must be described within the instantapplication in such a
manner as to enable one skilled in the art to use the same for a legallyadequate utility.

2. Aguas vs. De Leon

FACTS:
This is a petition for certiorari to review the decision of the Court of Appeals.
On April 14, 1962, respondent Conrado de Leon filed in the CFI of Rizal at
Quezon City a complaint for infringement of patent against petitioner DomicianoAguas
and F.H. Aquino and Sons alleging among others that being the original first and sole
inventor of certain new and useful improvements in the process of making mosaic precast tiles, and thereafter lawfully acquired from the Philippine Patent Office, Patent No.
658, the latter infringed the same by making, using and selling tiles embodying said
patent invention. A writ of Preliminary Injuction was subsequently issued.
Petitioner Aguas, in his answer, denied the allegations and instead averred inter
alia that respondent De Leon is neither the original first nor sole inventor of the
improvements in the process of making mosaic pre-cast tiles, the same having been
used by several tile-making factories both here and abroad years before the alleged
invention by De Leon; hence, it is not patentable.
The trial court and the Court of Appeals, upon appeal rendered judgment in
favor of respondent de Leon. Thus, this petition.
ISSUE:
Whether or not the alleged invention or discovery of respondent is patentable.
HELD:
Yea. x xx It should be noted that the private respondent does not claim to be the
discoverer or inventor of the old process of tile-making. He only claims to have
introduced an improvement of said process. In fact, Letters Patent No. 658 was issued
by the Philippine Patent Office to the private respondent Conrado G. De Leon, to protect
his rights as the inventor of an alleged new and useful improvement in the process of
making pre-cast tiles. Indeed, section 7, Republic Act No. 165, as amended provides:
Any invention of a new and useful machine, manufactured product or substance,
process, or an improvement of the foregoing, shall be patentable.

3. Maguan vs. CA
FACTS:
Petitioner is doing business under the firm name and style of SWAN
MANUFACTURING" while private respondent is likewise doing business under the firm
name and style of "SUSANA LUCHAN POWDER PUFF MANUFACTURING. And
holder
petitioner informed private respondent that the powder puffs the latter is
manufacturing and selling to various enterprises particularly those in the cosmetics
industry, resemble Identical or substantially Identical powder puffs of which the former is
a patent holder under Registration Certification Nos. Extension UM-109, Extension UM110 and Utility Model No. 1184; petitioner explained such production and sale constitute
infringement of said patents and therefore its immediate discontinuance is demanded,
otherwise it will be compelled to take judicial action
Private respondent replied stating that her products are different and countered
that petitioner'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.
Petitioner filed a complaint for damages with injunction and preliminary
injunction against private respondent with the then Court of First Instance of Rizal
The trial court issued an Order granting the preliminary injunction prayed for by
petitioner. Consequently, the corresponding writ was subsequently issued.
In challenging these Orders private respondent filed a petition for certiorari with
the respondent court but was denied. Hence this petition.
ISSUE:
(1) Whether or not in an action for infringement the Court a quo had jurisdiction to
determine the invalidity of the patents at issue which invalidity was still pending
consideration in the patent office.
(2) Whether or not the Court a quo committed grave abuse of discretion in the issuance
of a writ of preliminary injunction.
(3) Whether or not certiorari is the proper remedy.
HELD:
1) The first issue has been laid to rest in a number of cases where the Court ruled that
"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, R.A. 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.
2) The burden of proof to substantiate a charge of infringement is with the plaintiff. But
where the plaintiff introduces the patent in evidence, and the same is in due form, there

is created a prima facie presumption of its correctness and validity. The decision of the
Commissioner (now Director) of Patent in granting the patent is presumed to be correct.
The burden of going forward with the evidence (burden of evidence) then shifts to the
defendant to overcome by competent evidence this legal presumption.
The question then in the instant case is whether or not the evidence introduced by
private respondent herein is sufficient to overcome said presumption.
After a careful review of the evidence consisting of 64 exhibits and oral testimonies of
five witnesses presented by private respondents before the Court of First Instance
before the Order of preliminary injunction was issued as well as those presented by the
petitioner, respondent Court of Appeals was satisfied that there is a prima facie showing
of a fair question of invalidity of petitioner's patents on the ground of lack of novelty. As
pointed out by said appellate court said evidence appeared not to have been
considered at all by the court a quo for alleged lack of jurisdiction, on the mistaken
notion that such question in within the exclusive jurisdiction of the patent office.
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 protection,
the invention must be new to the world.
Accordingly, a single instance of public use of the invention by a patentee for more than
two years (now for more than one year only under Sec. 9 of the Patent Law) before the
date of his application for hispatent, will be fatal to, the validity of the patent when
issued.
It will be noted that the validity of petitioner's patents is in question for want of novelty.
Private respondent contends that powder puffs Identical in appearance with that
covered by petitioner's patents existed and were publicly known and used as early as
1963 long before petitioner was issued the patents in question. (List of Exhibits, Rollo,
pp. 194-199). As correctly observed by respondent Court of Appeals, "since sufficient
proofs have been introduced in evidence showing a fair question of the invalidity of the
patents issued for such models, it is but right that the evidence be looked into,
evaluated and determined on the merits so that the matter of whether the patents
issued were in fact valid or not may be resolved." (Rollo, pp. 286-287).
All these notwithstanding, the trial court nonetheless issued the writ of preliminary
injunction which under the circumstances should be denied.
For failure to determine first the validity of the patents before aforesaid issuance of the
writ, the trial court failed to satisfy the two requisites necessary if an injunction is to
issue, namely: the existence of the right to be protected and the violation of said right.
(Buayan Cattle Co., Inc. v. Quintillan, 128 SCRA 276).
Under the above established principles, it appears obvious that the trial court committed
a grave abuse of discretion which makes certiorari the appropriate remedy.

As found by respondent Court of Appeals, the injunctive order of the trial court is of so
general a tenor that petitioner may be totally barred from the sale of any kind of powder
puff. Under the circumstances, respondent appellate court is of the view that ordinary
appeal is obviously inadequate.
4. Price vs. United Laboratories
-Full text is short lang

5. Cresser Precision Systems vs. CA

Facts:
Respondent was granted by the Bureau of Patents, Trademarks and Technology
Transfer (BPTTT) a Letter of patent for its aerial fuze on January 23, 1990. Sometime in
1993, respondent discovered that the petitioner submitted samples of its patented aerial
fuze to the AFP for testing claiming to be his own. To protect its right, respondent sent
letter of warning to petitioner on a possible court action should it proceed its testing by
the AFP. In response the petitioner filed a complaint for injunction and damages arising
from alleged infringement before the RTC asserting that it is the true and actual inventor
of the aerial fuze which it developed on 1981 under the Self Reliance Defense Posture
Program of the AFP. It has been supplying the military of the aerial fuze since then and
that the fuze of the respondent is similar as that of the petitioner.
Petitioner prayed for restraining order and injunction from marketing, manufacturing and
profiting from the said invention by the respondent. The trial court ruled in favor of the
petitioner citing the fact that it was the first to develop the aerial fuze since 1981 thsu it
concludes that it is the petitioners aerial fuze that was copied by the respondent.
Moreover, the claim of respondent is solely based on its letter of patent which validity is
being questioned.
On appeal, respondent argued that the petitioner has no cause of action since he has
no right to assert there being no patent issued to his aerial fuze. The Court of Appeals
reversed the decision of the trial court dismissing the complaint of the petitioner. It was
the contention of the petitioner that it can file under Section 42 of the Patent Law an
action for infringement not as a patentee but as an entity in possession of a right, title or
interest to the patented invention. It theorizes that while the absence of a patent
prevents one from lawfully suing another for infringement of said patent, such absence
does not bar the true and actual inventor of the patented invention from suing another in
the same nature as a civil action for infringement

Issue: Whether or not the petitioner has the right to assail the validity of the patented
work of the respondent?
Ruling:The court finds the argument of the petitioner untenable. Section 42 of the Law
on Patent (RA 165) provides that only the patentee or his successors-in-interest may file
an action against infringement. What the law contemplates in the phrase anyone
possessing any right, title or interest in and to the patented invention refers only to the
patentees successors-in-interest, assignees or grantees since the action on patent
infringement may be brought only in the name of the person granted with the patent.
There can be no infringement of a patent until a patent has been issued since the right
one has over the invention covered by the patent arises from the grant of the patent
alone. Therefore, a person who has not been granted letter of patent over an invention
has not acquired right or title over the invention and thus has no cause of action for
infringement. Petitioner admitted to have no patent over his invention. Respondents
aerial fuze is covered by letter of patent issued by the Bureau of Patents thus it has in
his favor not only the presumption of validity of its patent but that of a legal and factual
first and true inventor of the invention.

6. Smith Kline & French lab vs. CA 386 SCRA 9

Law on Intellectual Property Law on Patents Compulsory License
Facts:In August 1989, Danlex Research Laboratories petitioned before Bureau of
Patents, Trademarks and Technology Transfer (BPTTT) that it may be granted a
compulsory license for the use and manufacture of the pharmaceutical
product Cimetidine. Cimetidine is useful as an antihistamine and in the treatment of
ulcers. Cimetidine is originally patented to Smith Kline and French Laboratories in 1978,
and the 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 ofAppeals.
Smith Kline assailed the grant as it argued, among others, 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.
To explain the 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 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.
ISSUE: Whether or not Smith Kline is correct.
HELD: No. 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.
On the second contention, Section A(2) of Article 5 [of the 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. An example
provided of possible abuses is failure to work; however, as such, is merely supplied by
way of an example, it is plain that the treaty does not preclude the inclusion of other
forms of categories of abuses. The legislative intent in the grant of a compulsory license
was not only to afford others an opportunity to provide the public with the quantity of the
patented product, but also to prevent the growth of monopolies. Certainly, the growth of
monopolies was among the abuses which Section A, Article 5 of the Convention
foresaw, and which our Congress likewise wished to prevent in enacting.
7.Smith Kline & French lab vs. CA 276 SCRA 224
-no digest

8. Parke Davis vs. Doctor Pharmaceuticals

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 patent contains ten
claims, nine of which are process claims, and the other is a product claim to the
chemical substance chloramphenicol.
Doctors 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.

Doctors 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 Doctors Pharmaceuticals.
ISSUE:
Is the decision of the Director of Patents in granting Doctors Pharmaceutical
Inc. compulsory license to use the substance chloramphenicol,valid?
HELD:
Yes the decision of the Director of Patents in granting Doctors 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.

9. Godinez vs. CA
-No digest

10. Smith Kline Beckman vs. CA

409 SCRA 33 Intellectual Property Law Law on Patents Doctrine of Equivalents
FACTS:Smith Kline is a US corporation licensed to do business in the Philippines. In
1981, a patent was issued to it for its invention entitled Methods and Compositions for
Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole
Carbamate. The invention is a means to fight off gastrointestinal parasites from various
cattles and pet animals.
Tryco Pharma is a local corporation engaged in the same business as Smith Kline.
Smith Kline sued Tryco Pharma because the latter was selling a veterinary product
called Impregon which contains a drug called Albendazole which fights off gastrointestinal roundworms, lungworms, tapeworms and fluke infestation in carabaos, cattle
and goats.

Smith Kline is claiming that Albendazole is covered in their patent because it is

substantially the same as methyl 5 propylthio-2-benzimidazole carbamate covered by its
patent since both of them are meant to combat worm or parasite infestation in animals.
And that Albendazole is actually patented under Smith Kline in the US.
Tryco Pharma averred that nowhere in Smith Klines patent does it mention that
Albendazole is present but even if it were, the same is unpatentable.
Smith Kline thus invoked the doctrine of equivalents, which implies that the two
substances substantially do the same function in substantially the same way to achieve
the same results, thereby making them truly identical for in spite of the fact that the word
Albendazole does not appear in TrycoPaharmas letters of patent, it has ably shown by
evidence its sameness with methyl 5 propylthio-2-benzimidazole carbamate.
ISSUE: Whether or not there is patent infringement in this case
HELD: No. Smith Kline failed to prove that Albendazole is a compound inherent in the
patented invention. Nowhere in the patent is the word Albendazole found. When the
language of its claims is clear and distinct, the patentee is bound thereby and may not
claim anything beyond them. Further, there was a separate patent for Albendazole
given by the US which implies that Albendazole is indeed separate and distinct from the
patented compound here.
A scrutiny of Smith Klines evidence fails to prove the substantial sameness of the
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.

11. Manzano vs. CA

The primary purpose of the patent system is not the reward of the individual but the
advancement of the arts and sciences. The function of a patent is to add to the sum of
useful knowledge and one of the purposes of the patent system is to encourage
dissemination of information concerning discoveries and inventions.
FACTS: AngelitaManzano filed PPO an action for the cancellation of Letters Patent for
a gas burner registered inthe name of respondent MeleciaMadolaria who subsequently

assigned the letters patent to New United Foundry and Manufacturing Corporation
(UNITED FOUNDRY,for brevity). Petitioner alleged that (a) the utility model covered by
the letters patent, in this case, an LPG gasburner, was not inventive, new or useful; (b)
the specification of the letters patent did not comply with the requirements of Sec. 14,
RA No. 165, as amended; (c)respondent MeleciaMadolaria was not the original, true
and actual inventor nor did she derive her rights from the original, true and actual
inventor of the utility model covered by the letters patent; and, (d) the letters patent was
secured by means of fraud or misrepresentation.
Testifying for herself petitioner narrated that her husband Ong Bun Tua worked as a
helper in the UNITEDFOUNDRY where respondent MeleciaMadolaria used to be
affiliated with from 1965 to 1970; that Ong helped in the casting of an LPG burner which
was the same utility model of a burner and that after her husbands separation from the
shop she organized Besco Metal Manufacturing (BESCOMETAL, for brevity) for the
casting of LPG burners one of which had the configuration, form and component parts
similar to those being manufactured by UNITED FOUNDRY.
Petitioner presented two (2) other witnesses,namely, her husband Ong Bun Tua and
Fidel Francisco.
Private respondent, on the other hand, presentedonly one witness, Rolando Madolaria,
who testified, amongothers, that he was the General Supervisor of the
UNITEDFOUNDRY.
Director of Patents Cesar C. Sandiego denied thepetition for cancellation and holding
that the evidence of petitioner was not able to establish convincingly that thepatented
utility model of private respondent was anticipated.
Petitioner elevated the decision of the Director of Patents to the Court of Appeals which
affirmed the decisionof the Director of Patents. Hence, this petition for review on
certiorari.
ISSUE:Whether the dismissal is proper where the patentapplied for has no substantial
difference between the modelto be patented and those sold by petitioner.
HELD: The element of novelty is an essential requisite of thepatentability of an
invention or discovery. If a device orprocess has been known or used by others prior to
itsinvention or discovery by the applicant, an application for apatent therefor should be
denied; and if the application hasbeen granted, the court, in a judicial proceeding in
whichthe validity of the patent is drawn in question, will hold itvoid and ineffective. It has
been repeatedly held that aninvention must possess the essential elements of
novelty,originality and precedence, and for the patentee to beentitled to the protection
the invention must be new to theworld.

However, the validity of the patent issued by thePhilippine Patent Office in favor of
private respondent andthe question over the inventiveness, novelty and usefulnessof
the improved model of the LPG burner are matters whichare better determined by the
Patent Office. The technicalstaff of the Philippine Patent Office composed of experts
intheir field has by the issuance of the patent in questionaccepted private respondents
model of gas burner as adiscovery. There is a presumption that the Office hascorrectly
determined the patentability of the model and suchaction must not be interfered with in
the absence of competent evidence to the contrary.

The rule is settled that the findings of fact of theDirector of Patents, especially when
affirmed by the Court of Appeals, are conclusive on this Court when supported
bysubstantial evidence. Petitioner has failed to showcompelling grounds for a reversal
of the findings andconclusions of the Patent Office and the Court of Appeals.Petition
DISMISSED