First 10 Cases Ip Law

8/10/2019 First 10 Cases Ip Law

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I. G.R. No. 121867 July 24, 1997

SMITH KLINE & FRENCH LABRATRIES, LT!., petitioner,vs.C"RT F A##EALS, B"REA" F #ATENTS, TRA!EMARKS AN!TECHNLG$ TRANSFER %' !CTRS #HARMACE"TICALS,INC. respondents.

!A(I!E, JR.,J.:

This is an appeal under Rule 45 of the Rules of Court from the decision14November 1994 of the Court of Appeals in CA-.R. !" No. ##5$%, &hicha'rmed the 14 (ebruar) 1994 decision2of the *irector of the +ureau of"atents, Trademars and Technolo) Transfer +"TTT/ rantin acompulsor) non-e0clusive and non-transferable license to privaterespondent to manufacture, use and sell in the "hilippines its o&n brandsof pharmaceutical products containin petitioners patentedpharmaceutical product no&n as Cimetidine.

"etitioner is a forein corporation &ith principal o'ce at 2el&)n ardenCit), 3nland. t o&ns "hilippine etters "atent No. 1$$%6 issued b) the+"TTT for the patent of the dru Cimetidine.

"rivate respondent is a domestic corporation enaed in the business ofmanufacturin and distributin pharmaceutical products. 7n #% 8arch196, it :led a petition for compulsor) licensin)&ith the +"TTT forauthori;ation to manufacture its o&n brand of medicine from thedru Cimetidine and to maret the resultin product in the "hilippines. Thepetition &as :led pursuant to the provisions of !ection #4 of Republic ActNo. 1


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c/ Credits or allo&ances, if an), iven or made on account ofreDection or return of the patented product previousl) delivered=and

d/ An) ta0, e0cise or overnment chare included in such amount,or measured b) the production sale, transportation, use of deliver)of the products.

n case private respondentsB product containin the patentedsubstance shall contain one or more active inredients admi0edthere&ith, said product hereinafter identi:ed as admi0ed product,the ro)alt) to be paid shall be determined in accordance &ith thefollo&in formula?

Net !ales on Halue of "atented

R7IATI J Admi0ed "roduct 0 %.%$5 0 !ubstance

GGGGGGGGGG GGGGGGGG

Halue of "atented Halue of 7ther

!ubstance Active nredients

4. The ro)alties shall be computed after the end of each calendar>uarter to all oods containin the patented substance hereininvolved, made and sold durin the precedent >uarter and to bepaid b) private respondentB at its place of business on or beforethe thirtieth da) of the month follo&in the end of each calendar>uarter. "a)ments should be made to petitionersB authori;edrepresentative in the "hilippines=

5. "rivate respondentB shall eep records in su'cient detail to

enable petitionerB to determine the ro)alties pa)able and shallfurther permit its boos and records to be e0amined from time totime at private respondentsB premises durin o'ce hours, to thee0tent necessar) to be made at the e0pense of petitionerB b) acerti:ed public accountant appointed b) petitionerB andacceptable to private respondentB.

uirin previous clinical tests and approval of properovernment authorities before sellin to the public its o&nproducts manufactured under the license=

. "etitionerB shall have the riht to terminate the license rantedto private respondentB b) ivin the latter thirt) #%/ da)s noticein &ritin to that eKect, in the event that private respondentBdefault sicB in the pa)ment of ro)alt) provided herein or if private

respondentB shall default in the performance of other convenantsor conditions of this areement &hich are to be performed b)private respondentB?

a/ "rivate respondentB shall have the rihtprovided it is not in default to pa)ment or ro)altiesor other obliations under this areement, toterminate the license ranted to its, sicB ivinpetitionerB thirt) #%/ da)s-notice in &ritin to thateKect=

b/ An) termination of this license as provided forabove shall not in an) &a) operate to den)petitionerB its rihts or remedies, either at la&ssicB or e>uit), or relieve private respondentB ofthe pa)ment of ro)alties or satisfaction of otherobliations incurred prior to the eKective date ofsuch termination= and

c/ Notice of termination of this license shall be:led &ith the +ureau of "atents, Trademars and

Technolo) Transfer.

9. n case of dispute as to the enforcement of the provisions of thislicense, the matter shall be submitted for arbitration before the

*irector of +ureau of "atents, Trademars and Technolo) Transferor an) ranin o'cial of the +ureau of "atents, Trademars and

Technolo) Transfer dul) deleated b) him.

1%. This icense shall inure to the bene:t of each of the partiesherein, to the subsidiaries and assins of petitionerB and to thesuccessors and assins of private respondentB= and

11. This license tae sicB eKect immediatel).4

$


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"etitioner then appealed to the Court of Appeals b) &a) of a petition forrevie&, &hich &as doceted as CA-.R. !" No. ##5$%. "etitioner claimedthat the appealed decision &as erroneous because?

. . . TB H7AT3! NT3RNAT7NA A2 A! 38+7*3* N T@3 "AR!C7NH3NT7N (7R T@3 "R7T3CT7N 7( N*!TRA "R7"3RTIAN* 8!T ACC7R*NI +3 !3T A!*3 AN* 87*(3*.

. . . TB ! AN NHA* 3L3RC!3 7( "7C3 "723R.

C7NC3*N AR3N*7 T@3 M3!T7N3* *3C!7N! HA*TI,T@3 +"TTT! "R7N7NC383NT (LN T@3 R7IATI AT $.5E 7(T@3 N3T 2@73!A3 "RC3 N "@""N3 CRR3NCI 2A!R3N*3R3* 2T@7T ANI (ACTA +A!! AN* A87NT! T73L"R7"RAT7N 7( "RHAT3 "R7"3RTI 2T@7T !TC78"3N!AT7N 2@C@ ! H7AT3 7( T@3 C7N!TTT7N.

H

. . . TB !@7* N7T @AH3 "R7C33*3* T7 *3C*3 T@3 CA!3+372 (7R (AR3 7( "RHAT3 R3!"7N*3NT T7 A((R8ATH3I"R7H3 T@3 R!*CT7NA (ACT 7( "+CAT7N.*

n its decision of 4 November 1994,6the Court of Appeals a'rmed intotothe challened decision. 2e >uote its :ndins and conclusion upon&hich the a'rmance is anchored, viz.?

An assiduous scrutin) of the impuned decision of the publicrespondent reveals that the same is supported b) substantialevidence. t appears that at the time of the :lin of the petition forcompulsor) license on 8arch $4, 196, the subDect letters "atentNo. 1$$%6 issued on November $9, 196 has been in eKect formore than t&o $/ )ears. The patented invention relates tocompound and compositions used in inhibitin certain actions ofthe histamine, hence, it relates to medicine. 8oreover, afterhearin and careful consideration of the evidence presented, the*irector of "atents ruled that G Fthere is ample evidence to sho&that private respondentB possesses such capabilit), havin

competent personnel, machines and e>uipment as &ell as permitto manufacture diKerent drus containin patented activeinredients such as ethambutol of American C)anamid andAmpicillin and Amo0icillin of +eecham roups, td.F

As to the claim b) the petitioner that it has the capacit) to &orthe patented product althouh it &as not sho&n that an)pretended abuse has been committed, thus the reason for rantincompulsor) license Fis intended not onl) to ive a chance to others

to suppl) the public &ith the >uantit) of the patented article butespeciall) to prevent the buildin up of patent monopolities sicB.F"are *avis v. *octors "harmaceuticals, nc., 14 !CRA 1%5#B.

2e :nd that the rantin of compulsor) license is not simpl)because !ec. #4 1/ e, RA 1


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nvestments, the ro)alt) pa)able to the patentee or patentees shallnot e0ceed three percent #E/ of the net &holesale price asde:ned in !ection #4-A/ of the patented commodit) andOorcommodit) manufactured under the patented process, the samerate of ro)alt) shall be distributed to the patentees in ratesproportional to the e0tent of commercial use b) the licensee ivinpreferential values to the holder of the oldest subsistin productpatent.

The foreoin provision rants the *irector of "atents the use ofhis sound discretion in :0in the percentae for the ro)alt) rate. nthe instant case, the *irector of "atents e0ercised his discretionand ruled that a rate of $.5E of the net &holesale price is fairenouh for the parties. n "are *avis P Co. vs. *" and Tiburcio,-$6%%4, Auust uasi-Dudicial in nature, in connection &ith theenforcement of la&s aKectin particular :elds of

activit), the proper reulation andOor promotion of&hich re>uires a technical or special trainin, asidefrom a ood no&lede and rasp of the overallconditions, relevant to said :eld, obtainin in thenations. The polic) and practice underl)in ourAdministrative a& is that courts of Dustice shouldrespect the :ndins of fact of said administrativeaencies, unless there is absolutel) no evidence insupport thereof or such evidence is clearl),manifestl) and patentl) insubstantial. .R. No.6


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T@3 @7N. C7RT 7( A""3A! 3RR3* N N7T @7*N T@AT T@3+"TTT! "R7N7NC383NT (LN T@3 R7IATI (7R ANNH7NTARI C3N!3 AT $.5E 7( T@3 N3T 2@73!A3 "RC3 N"@""N3 CRR3NCI 2A! R3N*3R3* 2T@7T ANI (ACTA+A!! AN* A87NT! T7 3L"7RTAT7N 7( "RHAT3 "R7"3RTI2T@7T !T C78"3N!AT7N AN* ! N H7AT7N 7( T@3C7N!TTT7NA R@T T7 *3 "R7C3!!.

H

T@3 @7N. C7RT 7( A""3A! 3RR3* N N7T @7*N T@3+"TTT! ACT7N 2A! R3N*3R3* N AN* H7* (7R (AR3 7("RHAT3 R3!"7N*3NT T7 A((R8ATH3I "R7H3 T@3

R!*CT7NA (ACT 7( "+CAT7N A! R3MR3* +I A2.

2e resolved to ive due course to the petition and re>uired the parties tosubmit their respective memoranda, &hich the) did, &ith that of publicrespondent :led onl) on 6 (ebruar) 1996.

After a careful perusal of the pleadins and evaluation of the arumentsadduced b) the parties, &e :nd this petition to be &ithout merit.

n its :rst assined error, petitioner invoes Article 5 of the "arisConvention for the "rotection of ndustrial "ropert),8or F"aris Convention,Ffor short, of &hich the "hilippines became a part) thereto onl) in19uotedprovisions of Article 5 of the "aris Convention. n the e0planator) note of+ill No. 115< &hich eventuall) became R.A. No. 1uantit) of the patented product,but also to prevent the ro&th of monopolies.1+Certainl), the ro&th ofmonopolies &as amon the abuses &hich !ection A, Article 5 of theConvention foresa&, and &hich our Conress lie&ise &ished to prevent inenactin R.A. No. 1


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d/ f the &orin of the invention &ithin the countr) is beinprevented or hindered b) the importation of the patented article=or

e/ If t"e patented invention or article relates to food or medicineor manufactured products or su#stances $"ic" can #e used asfood or medicine% or is necessary for pu#lic "ealt" or pu#lic safety.

$/ n an) of the above cases, a compulsor) license shall beranted to the petitioner provided that he has proved his capabilit)to &or the patented product or to mae use of the patentedproduct in the manufacture of a useful product, or to emplo) thepatented process.

#/ The term F&oredF or F&orinF as used in this section meansthe manufacture and sale of the patented article, of the patentedmachine, or the application of the patented process for production,in or b) means of a de:nite and substantial establishment ororani;ation in the "hilippines and on a scale &hich is reasonableand ade>uate under the circumstances. mportation shall notconstitute F&orin.F

000 000 000

!ec. #5. !rant of License. G 1/ f the *irector :nds that a case forthe rant is a license under !ection #4 hereof has been made out,he shall, &ithin one hundred eiht) da)s from the date the petition&as :led, order the rant of an appropriate license. The order shallstate the terms and conditions of the license &hich he himselfmust :0 in default of an areement on the matter manifested orsubmitted b) the parties durin the hearin.

$/ A compulsor) license souht under !ection #4-+ shall be issued&ithin one hundred t&ent) da)s from the :lin of the proponents

application or receipt of the +oard of nvestments endorsement.

The case at bar refers more particularl) to subpararaph e/ of pararaph1 of !ection #4 G the patented invention or article relates to food ormedicine or manufactured products or substances &hich can be used asfood or medicine, or is necessar) for public health or public safet). And itma) not be doubted that the afore>uoted provisions of R.A. No. 1


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protective period of t&o )ears to enDo) his e0clusive rihts thereto= butsubse>uentl), the la& reconi;es Dust compensation in the form ofro)alties.1*

n Par&e% 'avis ( Co.v.'octors) P"armaceuticals% Inc.,16&e held?

The riht to e0clude others from the manufacturin, usin, orvendin an invention relatin to, food or medicine should beconditioned to allo&in an) person to manufacture, use, or vendthe same after a period of three no& t&oB )ears from the date ofthe rant of the letters patent. After all, the patentee is not entirel)deprived of an) proprietar) riht. n fact, he has been iven theperiod of three )ears no& t&o )earsB of complete monopol) overthe patent. Compulsor) licensin of a patent on food or medicine&ithout reard to the other conditions imposed in !ection #4 no&!ection #5B is not an undue deprivation of proprietar) interestsover a patent riht because the la& sees to it that even after three)ears of complete monopol) somethin is a&arded to the inventorin the form of bilateral and &orable licensin areement and areasonable ro)alt) to be areed upon b) the parties and in defaultof such an areement, the *irector of "atents ma) :0 the termsand conditions of the license.

As to the fourth assined error, &e hold that petitioner can no loner assailthe Durisdiction of the +"TTT, raisin this issue onl) for the :rst time onappeal. n Pantranco Nort" *press% Inc.v.Court of Appeals,17&e ruledthat &here the issue of Durisdiction is raised for the :rst time on appeal, thepart) invoin it is so barred on the round of laches or estoppel under thecircumstances therein stated. t is no& settled that this rule applies &ithe>ual force to >uasi-Dudicial bodies18such as the +"TTT. @ere, petitionerhave not furnished an) coent reason to depart from this rule.

2@3R3(7R3, the petition is hereb) *3N3* and the challened decision ofthe Court of Appeals in CA-.R. !" No. ##5$% is A((R83* in toto.

Costs aainst petitioner.

!7 7R*3R3*.

Narvasa% C+,+% Melo% -rancisco and Pangani#an% ,,+% concur+

II. G. R. No. 126627. Au-u/ 14, 2++)0

SMITH KLINE BECKMAN CR#RATIN,petitioner, vs.THEHNRABLE C"RT F A##EALS %' TR$C #HARMACR#RATIN, respondents.

! E C I S I N

CAR#IMRALES,J.

!mith line +ecman Corporation petitioner/, a corporation e0istinb) virtue of the la&s of the state of "enns)lvania, nited !tates of America.!./ and licensed to do business in the "hilippines, :led on 7ctober ,196


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7n motion of petitioner, +ranch 1$5 of the Caloocan RTC issued atemporar) restrainin order aainst private respondent enDoinin it fromcommittin acts of patent infrinement and unfair competition. uentl) issued.6B

"rivate respondent in its Ans&erBaverred that etters "atent No.145


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. T@3 C7RT 7( A""3A! RAH3I 3RR3* NA2AR*N T7 "RHAT3 R3!"7N*3NT TRIC7 "@AR8AC7R"7RAT7N "##%,%%%.%% ACTA *A8A3! AN*"1%%,%%%.%% ATT7RN3IU! (33!.

"etitioner arues that under the doctrine of e.uivalentsfordeterminin patent infrinement, Albenda;ole, the active inredient itallees &as appropriated b) private respondent for its dru mpreon, issubstantiall) the same as meth)l 5 prop)lthio-$-ben;imida;ole carbamatecovered b) its patent since both of them are meant to combat &orm or

parasite infestation in animals. t cites the Sunrebutted testimon) of its&itness *r. odofredo C. 7rinion *r. 7rinion/ that the chemical formula inetters "atent No. 145


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been adduced to prove that Albenda;ole inheres in petitionerUs patent inspite of its omission therefrom or that the meanin of the claims of thepatent embraces the same.

2hile petitioner concedes that the mere literal &ordins of its patentcannot establish private respondentUs infrinement, it ures this Court toappl) the doctrine of e.uivalents.

The doctrine of e.uivalentsprovides that an infrinement also taesplace &hen a device appropriates a prior invention b) incorporatin its

innovative concept and, althouh &ith some modi:cation and chane,performs substantiall) the same function in substantiall) the same &a) toachieve substantiall) the same result.19BIet aain, a scrutin) ofpetitionerUs evidence fails to convince this Court of the substantialsameness of petitionerUs patented compound and Albenda;ole. 2hile bothcompounds have the eKect of neutrali;in parasites in animals,identit) ofresult does not amount to infrinement of patent unless Albenda;oleoperates in substantiall) the same &a) or b) substantiall) the same meansas the patented compound, even thouh it performs the same function andachieves the same result.$%Bn other &ords, the 3553l o o' oo3%/5o must be the same or substantiall) the same.$1B

The doctrine of e.uivalentsthus re>uires satisfaction of the function-means-and-result test, the patentee havin the burden to sho& that allthree components of such e>uivalenc) test are met.$$B

As stated earl) on, petitionerUs evidence fails to e0plain ho&Albenda;ole is in ever) essential detail identical to meth)l 5 prop)lthio-$-ben;imida;ole carbamate. Apart from the fact that Albenda;ole is ananthelmintic aent lie meth)l 5 prop)lthio-$-ben;imida;ole carbamate,nothin more is asserted and accordinl) substantiated reardin themethod or means b) &hich Albenda;ole &eeds out parasites in animals,thus ivin no information on &hether that method is substantiall) thesame as the manner b) &hich petitionerUs compound &ors. Thetestimon) of *r. 7rinion lends no support to petitionerUs cause, he nothavin been presented or >uali:ed as an e0pert &itness &ho has theno&lede or e0pertise on the matter of chemical compounds.

As for the concept of divisional applications proKered b) petitioner, itcomes into pla) &hen t&o or more inventions are claimed in a sinleapplication but are of such a nature that a sinle patent ma) not be issuedfor them.$#BThe applicant thus is re>uired Sto divide, that is, to limit theclaims to &hichever invention he ma) elect, &hereas those inventions notelected ma) be made the subDect of separate applications &hich are calledSdivisional applications.$4B2hat this onl) means is that petitionerUsmeth)l 5 prop)lthio-$-ben;imida;ole carbamate is an invention distinctfrom the other inventions claimed in the oriinal application divided out,Albenda;ole bein one of those other inventions. 7ther&ise, meth)l 5prop)lthio-$-ben;imida;ole carbamate &ould not have been the subDect of

a divisional application if a sinle patent could have been issued for it as&ell as Albenda;ole.

The foreoin discussions not&ithstandin, this Court does not sustainthe a&ard of actual damaes and attorne)Us fees in favor of privaterespondent. The claimed actual damaes of"##%,%%%.%% representin lostpro:ts or revenues incurred b) private respondent as a result of theissuance of the inDunction aainst it, computed at the rate of #%E of itsalleed"1%%,%%%.%% monthl) ross sales for eleven months, &eresupported b) the testimonies of private respondentUs "resident$5Band

30ecutive Hice-"resident that the averae monthl) sale of mpreon&as "1%%,%%%.%% and that sales plummeted to ;ero after the issuance ofthe inDunction.$


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III. G.R. No. 11))88. S3/; *, 19970

ANGELITA MANuali:ed todetermine >uestions of patentabilit), its :ndins must be accepted if the)are consistent &ith the evidence, &ith doubts as to patentabilit) resolvedin favor of the "atent 7'ce.1B

"etitioner Anelita 8an;ano :led &ith the "hilippine "atent 7'ce on19 (ebruar) 19$ an action for the cancellation of etters "atent No. 8-4uentl) assined the letters patent to Ne& nited(oundr) and 8anufacturin Corporation NT3* (7N*RI, forbrevit)/. "etitioner alleed that a/ the utilit) model covered b) the letters

patent, in this case, an " as burner, &as not inventive, ne& or useful=b/ the speci:cation of the letters patent did not compl) &ith there>uirements of !ec. 14, RA No. 1


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section= that in his earl) )ears &ith the compan), NT3* (7N*RI &asenaed in the manufacture of diKerent inds of as stoves as &ell asburners based on setches and speci:cations furnished b) customers= thatthe compan) manufactured earl) models of sinle-piece t)pes of burners&here the mouth and throat &ere not detachable= that in the latter part of196 respondent 8elecia 8adolaria con:ded in him that complaints &erebein brouht to her attention concernin the earl) models beinmanufactured= that he &as then instructed b) private respondent to castseveral e0perimental models based on revised setches and speci:cations=

that private respondent aain made some innovations= that after a fe&months, private respondent discovered the solution to all the defects of theearlier models and, based on her latest setches and speci:cations, he &asable to cast several models incorporatin the additions to the innovationsintroduced in the models. Harious tests &ere conducted on the latest modelin the presence and under the supervision of 8elecia 8adolaria and the)obtained perfect results. Rolando 8adolaria testi:ed that privaterespondent decided to :le her application for utilit) model patent in*ecember 1969.

7n 6 ul) 19< the *irector of "atents Cesar C. !andieo issued*ecision No. uir).

"etitioner elevated the decision of the *irector of "atents to the Courtof Appeals &hich on 15 7ctober 199# a'rmed the decision of the *irectorof "atents. @ence, this petition for revie& on certiorariallein that theCourt of Appeals erred a/ in rel)in on imainar) diKerences &hich inactualit) did not e0ist bet&een the model of private respondent covered b)etters "atent No. 8-4


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(inall), it is arued that the testimon) of private respondentUs lone&itness Rolando 8adolaria should not have been iven &eiht b) the"atent 7'ce and the Court of Appeals because it contained mere after-thouhts and pretensions.

2e cannot sustain petitioner. !ection 6 of RA No. 1


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&orin aainst the "etitionerUs claims is that an e0amination of 30h. S&ould disclose that there is no indication of the time or date it &asmanufactured. This 7'ce, thus has no &a) of determinin &hether 30h.S &as reall) manufactured before the :lin of the aforesaid application&hich matured into etters "atent No. 8-4uisitionof patent b) private respondent.

t has been held that the >uestion on priorit) of invention is one offact. Novelt) and utilit) are lie&ise >uestions of fact. The validit) ofpatent is decided on the basis of factual in>uiries. 2hether evidencepresented comes &ithin the scope of prior art is a factual issue to beresolved b) the "atent 7'ce.1%BThere is >uestion of fact &hen the doubtor diKerence arises as to the truth or falsehood of alleed facts or &henthe >uer) necessaril) invites calibration of the &hole evidence considerinmainl) the credibilit) of &itnesses, e0istence and relevance of speci:csurroundin circumstances, their relation to each other and to the &holeand the probabilities of the situation.11B

Time and aain &e have held that it is not the function of the !upremeCourt to anal);e or &eih all over aain the evidence and credibilit) of&itnesses presented before the lo&er tribunal or o'ce. The !upremeCourt is not a trier of facts. ts Durisdiction is limited to revie&in andrevisin errors of la& imputed to the lo&er court, its :ndins of fact beinconclusive and not revie&able b) this Court.

:HEREFRE, the "etition is *3N3*. The *ecision of the Court ofAppeals a'rmin that of the "hilippine "atent 7'ce is A((R83*. Costsaainst petitioner.

S R!ERE!.

3itug% 2apunan% and4ermosisima% ,r+% ,,+% concur+

14
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I(. G.R. No. L2779) M%= 1*, 1928

#ATRICK HENR$ FRANK %' :ILLIAM HENR$ GHN,plaintiK-appellees,vs.CNSTANCI BENIT,defendant-appellant.

A#ad Santos% Camus% 'elgado and 5ecto for appellant+,+ 6+ -errier for appellees+

!TAT383NT

"laintiKs allee that the) are the o&ners of a patent coverin hemp-strippin machine No. 1519569 issued to them b) the nited !tates "atent7'ce of *ecember 1uired to accountto plaintiKs for an) pro:ts he ma) have made b) reason of suchinfrinement, and for a temporar) inDunction restrainin him in themanufacture of other machines of the same ind of its e0hibition, and thatupon the :nal hearin, the inDunction be made permanent.

The defendant demurred to the complaint upon the round that the factsalleed therein do not constitute a cause of action, that it is ambiuousand vaue, and that it &as error to mae 2illiam @enr) ohn plaintiK.

After the demurrer &as overruled, the defendant :led an ans&er in &hichhe denied all of the material alleations of the complaint, e0cept those&hich are hereinafter admitted, and as a special defense allees?

(irst. That the defendant has never had at an) time nor does hehave an) no&lede of an) suppose invention of the plaintiKs of&hatever ind of hemp-strippin machine, &hether patented or

not, &hich has circulated or not in the "hilippine slands for thesale thereof or its private e0ploitation.

!econd. That not havin had an) no&lede of an) ind of hemp-strippin machine supposed to have been invented b) theplaintiKs, it never occurred to the defendant to imitate theunno&n invention of the plaintiKs.

Third. That the hemp-strippin machine of the plaintiKs, no&n as

Fa Constancia,F patent of &hich is dul) reistered, has itscharacteristics and oriinal invention belonin to the defendant&hich consist of t$o pinions $it" "orizontal grooves $"ic" formt"e tool for e*tracting t"e 7#ers #et$een a straig"t &nife uponanot"er $"ic" is cylindrical and provided $it" teet" and on t"ecenter of said t$o pinions t"ere is a 8ying $"eel its transmission#elt connecting it $it" t"e motor.

As a counterclaim, the defendant allees?

(irst. That he reproduces in this pararaph each and ever)alleation contained in the precedin special defense, as thouh

the same &ere literall) copied here.

!econd. That b) the :lin of the complaint of the plaintiKs and theissuance, as a conse>uence thereof, of a &rit of inDunction in thiscase, undul) obtained b) the said plaintiKs throuh false andfraudulent representations, the defendant has suKered damaes inthe sum of :ve thousand pesos "5,%%%/, "hilippine currenc).

6"erefore, the defendant pra)s this court that he be absolvedfrom the herein complaint, and that the plaintiKs be ordered Dointl)and severall) to pa) the sum of :ve thousand pesos "5,%%%/,"hilippine currenc), as damaes, &ith leal interest thereon fromthe :lin of this action until full) paid= &ith the costs of this case,

as &ell as an) other remed) that ma) be proper in la& and e>uit).

The lo&er court rendered Dudment in leal eKect rantin the plaintiKsthe inDunction pra)ed for in their complaint, and absolvin them fromdefendants counterclaim, and Dudment aainst the defendant for costs.

The defendants motion for a ne& trial &as overruled, and on appeal, hecontends that the court erred in holdin the same spindles used b) theparties in this case, thouh diKerent in material and form, have the sameutilit) and e'cienc) and that the) are the same, and in :ndin thatspindles used b) the defendant are an imitation of those of the plaintiKs,

15


16/39

and in :ndin that the defendant infrined upon plaintiKs patent, and innot renderin Dudment aainst the plaintiKs, re>uirin them to pa)defendant "5,%%% as damaes, and in enDoinin the appellant from themanufacture, use and sale of this hemp-strippin machine.

JHNS,J.:

t is conceded that on *ecember 1


17/39

bet&een the nife and rest, said po&er driven means includin arotatin spindle, said spindle bein free at one end and taperinreularl) to&ard its free end.

#. n a hemp strippin machine, a strippin head havin ahori;ontal table portion and an upriht bracet portion a restholder adDustabl) on the table portion, a rest resilientl) supportedb) the holder, a nife carr)in lever of anular formation and beinpivotall) attached substantiall) at the Duncture of the arms thereof

to the bracet portion of the strippin head, &hereb) one arm ofthe lever overlies the rest, a blade adDustabl) supported on saidone arm, for cooperatin &ith said rest and ravit) meansconnected &ith the other arm of the lever and actuatin the latterto continousl) ure the blade to&ard the rest.

The spindle upon &hich the patent &as obtained, toether &ith the spindleupon &hich the defendant relies are e0hibits in the record and &ere beforethe court at the time this case &as arued. The spindle of the plaintiKs &asmade of &ood, conical in shape and &ith a smooth surface. That of thedefendant &as some&hat similar in shape, but &as made of metal &ithrouh surface, and the defendant claims that his spindle &as moreeKective and &ould do better &or than that of the plaintiKs. +e that as it

ma), the plaintiKs have a patent for their machine, and the defendant doesnot have a patent, and the basic principle of plaintiKs patent is the spindleupon &hich the) rel), toether &ith its speci:ed manner and mode ofoperation, and in the :nal anal)sis, it must be conceded that the basicprinciple of the spindle upon &hich the defendant relies is founded uponthe basic principle of the spindle for &hich the plaintiKs have a patent.Assumin, &ithout decidin, that the defendants spindle is animprovement upon and is a better spindle than that of the plaintiKs, )et,under the authorit) above cited, the defendant had no leal riht toappropriate the basic principle upon &hich the plaintiKs obtained theirpatent. The plaintiKs havin obtained their patent, &hich &as dul)reistered in the "hilippines slands, the defendant cannot infrine upon itsbasic principle.

The defendant contends that the basic principle of the spindle &as a ver)old one in mechanics, and that there &as nothin ne& or novel in theapplication of it b) the plaintiKs. +e that as it ma), the plaintiKs applied forand obtained their patent &ith its speci:cations &hich are attached to, andmade part of, the patent, and the proof is conclusive that the defendant isinfrinin upon the basic principle of the spindle as it is de:ned andspeci:ed in plaintiKs patent.

The Dudment of the lo&er court is a'rmed, &ith costs. !o ordered.

,o"nson% Malcolm% 3illamor% 9strand% 5omualdez and 3illa15eal% ,,+% concur+

(. G.R. No. L472+ J%u%y 19, 19+9

CARLS GSELL,plaintiK-appellee,vs.(ALERIAN (ELS $A#J"E,defendant-appellant.

C"icote and Miranda% for appellant+4aussermann and Co"n% for appellee+

CARSN,J.?

This an appeal from a :nal order of the Court of (irst nstance of the cit) of8anila, in contempt proceedins prosecuted under the provisions ofsection 16$ of the Code of Civil "rocedure. The principal case to &hichthese proceedins are ancillar), &as an action to enDoin infrinement of apatented process for the manufacture of curved handles for canes,parasols, and umbrellas. n that case plaintiK established his title to a validpatent coverin the process in >uestion, and obtained aainst thisdefendant a Dudment, rantin a perpetual inDunction restrainin its

infrinement, &hich Dudment &as a'rmed b) this court on appeal < "hil.Rep., 14#./ The order &as couched in the follo&in terms?

t is ordered that the defendant abstain from manufacturin canesand umbrellas &ith a curved handle b) means of a lamp orblo&pipe fed &ith mineral oil or petroleum, &hich process &asprotected b) patent No. 19$$, issued in favor of @enr) sell, andb) him transferred to Carlos sell G

and the process therein mentioned is full) described in the follo&instatement &hich accompanied the application for the patent?

After the canes have been cut for cane or umbrella handles, theoutsides are thorouhl) cleaned. This operation havin beenperformed, the) are then trimmed and the interior cleaned b)means of a imlet of about 15 centimeters in lenth operated b) a&heel, b) means of &hich the nots inside are broen. There isthen introduced to a depth of about 15 centimeters a piece of ver)clean bamboo, &hich completel) :lls the hole made b) the imlet,thereb) ivin to the cane the necessar) strenth to resist theheat of the lamp or blo&pipe &ithout breain or cracin.

16


18/39

This operation havin been performed, the cane, the end of &hichis attached to a :0ed point, is iven the shape of a hoo or someother form b) means of :re and pressure. 7nce the cane has beenshaped as desired, it is allo&ed to cool, and is then cleaned,varnished, and ornamented at &ill.

This industr) re>uires sillful, handi&or, o&in to the reat risenendered b) the treatment of such fraile material as a lihtcane. 7n the other hand, ho&ever, it aKords lare pro:ts to the

&orman.

N7T3. G The patent applied for shall be for the industrial productFcane handles for &alin stics and umbrellas, curved b) meansof a small lamp or blo&pipe, fed b) petroleum or mineral fuel.F

Thereafter the defendant continued to manufacture curved cane handledfor &alin stics and umbrellas b) a process in all respectes identical &iththat used b) the plaintiK under his patent, e0cept onl) that he besubstituted for a lamp fed &ith petroleum or mineral oil, lamp fed &ithalcohol, as appears from a stipulation entered into bet&een plaintiK anddefendant in the follo&in terms?

The plaintiK and defendant aree upon the fact that the defendanthas used and is still usin a process for curvin handles of canesand umbrellas identical &ith that described in the application forthe patent b) the plaintiK &ith the e0ception that he hassubstituted for the lamp fed &ith all other lamp fed &ith alcohol.

Contempt proceedins &ere instituted aainst the defendant in the monthof (ebruar), 19%4, the plaintiK in the oriinal action allein that the G

*efendant in disobediencce of the Dudment of the same &as andis no& enaed in the unla&ful manufacture of umbrella handlesb) the identical process described in and protected said patent, No.

19$$, or a process so lie the patented process as to beindistinuishable.

The trial court found the defendant Fnot uilt)F of contempt as chared=and this court, on appeal, held that G a character that it could be madepatent b) the mere annunciation of the acts performed b) the defendant,&hich are alleed to constitute the said violation. These acts &ere notclearl) and manifestl) contrar) to the precise terms of the prohibition.Accordin to the e0press lanuae of the Dudment, the prohibition isaainst the manufacture of canes and umbrellas &ith curved handles b)means of the use of a cool or mineral oil-burnin lamp or blo&pipe and the

parties have stipulated that the defendant did not use a coal or mineral oil-burnin lamp but an alcohol-burnin lamp.

The >uestion, ho&ever, arises as to &hether that prohibitionincluded the substitution of alcohol for coal or mineral oil. n moreabstract and eneral terms, the appellant propounds this >uestionin his brief, as follo&s? FThe >uestion presented b) this appeal is&hether or not the use of a patented process b) a third person,&ithout license or authorit) therefor, constitutes an infrinement

&hen the alleed infriner has substituted in lieu ofsome unessential partof the patented process a $ell1&no$nmec"anical e.uivalent+:t has seen that b) its ver) terms this>uestion implies in the present case the e0istence of t&ofundamental facts &hich must :rst be dul) established, vi;? 1/

That the use of the lamp fed &ith petroleum or mineral oil &as anunessential part of the patented process the use of &hich b) theaccused &as prohibited b) the said Dudment= and $/ that alcoholis an e>uivalent and proper substitute, &ell no&n as such, formineral oil or petroleum in connection &ith the said process. Theappellant has failed to a'rmativel) establish either of these t&oessential facts. @e has merel) assumed their e0istence, &ithoutprovin the same, thus bein the &hole >uestion. Conse>uentl)

the contempt &ith &hich the accused is chared has not been full)and satisfactoril) proved, and the order appealed from shouldaccordinl) be a'rmed in so far as it holds that the defendant isnot uilt) of contempt. 6 "hil. Rep., 1#%/.

Thereafter the plaintiK continued the use of the patented process, saveonl) for the substitutions of a lamp fed b) alcohol for a lamp fed b)petroleum or mineral oil, and ne& proceedins &ere instituted under theprovisions of section 16$ for the purpose of enforcin the oriinalinDunction above cited. !ubstantiall) the same >uestion is submitted inthese ne& proceedins as that submitted in the former case, but at thetrial of this case testimon) &as introduced &hich, in our opinion, leaves noroom for doubt, :rst, that alcohol is an e>uivalent or substitute, &ell no&n

as such at the time &hen the patent &as issued, for mineral oil orpetroleum, in connection &ith blast lamps or blo&pipes such as that &hichplaintiK uses in the patented process, and, second, that the use of a blastlamp or blo&pipe fed &ith petroleum or mineral oil, rather than one fed&ith alcohol, is an unessential part of the patented process the use of&hich &as prohibited b) the said Dudment.

t &as clearl) proven at the trial, that erosene and alcohol blast lamps areaencies for producin and appl)in heat, &ell no&n throuhout the &orldlon prior to 19%


19/39

heat in the manner described in the patent= that the onl) consideration&hich determines the emplo)ment of one in place of the other is theconvenience of the user and the >uestion of relative cost= and that theprinciple upon &hich both lamps &or is substantiall) identical, the onl)diKerence in construction bein occasioned b) the application of thisprinciple to oils of diKerent ph)sical and chemical composition.

The plaintiK does not and can not claim a patent upon the particular lampused b) him. The patent, ho&ever, ives him the e0clusive riht to the use

of Fla lamparilla o soplete, alimentada de petroleo o esencia mineralF thesmall lamp or blo&pipe fed &ith petroleum or mineral oil/ in manufacturincurved handles for umbrellas and canes, to &hich reference is made in theabove-cited descriptive statement and anne0ed note. FThe small lamp orblo&pipeF mentioned in the descriptive statement and anne0ed note &hichaccompanied the application for the patent, evidentl) referred to thedesin of a blast lamp &hich &as attached thereto= and in our opinion bothplaintiK and defendant mae use of a blast lamp substantiall) similar, inprinciple and desin, to that referred to in the descriptive statement andthe anne0ed note, for the e0clusive use of &hich in the manufacture ofcurved handles, plaintiK holds a patent. True, defendants blast lamp is fed&ith alcohol, and its shape varies in unimportant details, for the purpose ofaccommodatin the principle, b) &hich the Qame is secured, to the

diKerent ph)sical and chemical composition of the fuel used therein= butthe principle on &hich it &ors, its mode of application, and its eneraldesin distinuish it in no essential particular from that used b) theplaintiK. f the oriinal desin accompan)in the statement had sho&n ablast lamp made of brass or delf, he &ould be a recless advocate &ho&ould claim that the patent miht la&full) be evaded b) the use of a lampmade of iron or tin= or if the oriinal desin had sho&n a blast lamp uences of an action for damaes forinfrinement. +ut in the liht of the evidence of record in this case, thereasonin upon &hich these h)pothetical claims should be reDected applies&ith e>ual force to the contentions of the defendant, the round for the

reDection of the claims in each case bein the same, and restin on the factthat unessential chanes, &hich do not aKect the principle of the blastlamp used in the patented process, or the mode of application of heatauthori;ed b) the patent, are not su'cient to support a contention that theprocess in one case is in an) essential particular diKerent from that used inthe other.

Counsel for plaintif invoes the doctrine of Fmechanical e>uivalentsF insupport of his contention, and indeed that doctrine is striinl) applicableto the facts in this case. This doctrine is founded upon sound rules ofreason and loic, and unless restrained or modi:ed b) la& in particular

Durisdiction, is of universal application, so that it matters not &hether apatent be issued b) one sovereint) or another, the doctrine ma) properl)be invoed to protect the patentee from colorable invasions of his patentunder the uise of substitution of some part of his invention b) some &ellno&n mechanical e>uivalent. 7ur attention has not been called to an)provision of the patent la& of !pain, &hich denies to patentees thereunderthe Dust and e>uitable protection of the doctrine= and indeed a patent la&&hich failed to reconi;e this doctrine &ould aKord scant protection toinventors, for it is di'cult if not impossible to conceive an invention, &hichis incapable of alteration or chane in some unessential part, so as to brinthat part outside of the e0press terms of an) form of lanuae &hich mihtbe used in rantin a patent for the invention= and has been &ell said b)counsel for plaintiK, human inenuit) &ould be ta0ed be)ond its po&ers inpreparin a rant of a patent so comprehensive in its terms, Fas to include&ithin the e0press terms of its detailed description ever) possiblealternative of form, si;e, shape, material, location, color, &eiht, etc., ofever) &heel, rod, bolt, nut, scre&, plate, and other component parts of aninvention.F

The follo&in citations from various decisions of the (ederal Courts of thenited !tates illustrate the application of the doctrine in that Durisdiction,and clearl) point the &a) to the proper solution of the >uestions involved

in the case at bar?

Can the defendant have the riht of infrinement, b) substitutinin lieu of some parts of the combination &ell-no&n mechanicale>uivalentsX am >uite clear that be can not, both on principle andauthorit). t is not to be disputed that the inventor of an ordinar)machine is, b) his letters patent, protected aainst all mere formalalterations and aainst the substitution of mere mechanicale>uivalents. 2h) should not the inventor of a ne& combinationreceive the same protectionX f he can not, then &ill his patent notbe &orth the parchment on &hich it is &ritten.

If no one can #e "eld to infringe a patent for a com#ination unless

"e uses all t"e parts of t"e com#ination and t"e identicalmac"inery as t"at of t"e patentee% t"en $il l no patent for acom#ination #e infringed;for certainl) no one capable of operatina machine can be incapable of adoptin some formal alteration inthe machiner), or of substitutin mechanical e>uivalents. No oneinfrines a patent for a combination &ho does not emplo) all of theinredients of the combination= but if he emplo)s all theinredients, or adopts mere formal alterations, or substitutes, forone inredient another &hich &as &ell no&n at the date of thepatent as a proper substitute for the one &ithdra&n, and &hichperforms substantiall) the same function as the one &ithdra&n, hedoes infrine. in vs. ouisville Cement Co., (ed. Cas., 669./

19


20/39

Bona 7de inventors of a combination are as much entitled toe>uivalents as the inventors other patentable improvements= b)&hich is meant that a patentee in such a case ma) substituteanother inredient for an) one of the inredients of his invention, ifthe inredient substituted performs the same function as the oneomitted and as &ell no&n at the date of his patent as a propersubstitute for the one omitted in the patented combination. Appl)that rule and it is clear that an alteration in a patented combination&hich merel) substitutes another old inredient for one of theinredients in the patented combination, is an infrinement of thepatent, if the substitute performs the same function and &as &ellno&n at the date of the patent as a proper substitute for theomitted inredient. ould vs+Rees, $ .!., 16, 194./

8ere formal alterations in a combination in letters patent are nodefense to the chare of infrinement and the &ithdra&al of oneinredient from the same and the substitution of another &hich&as &ell no&n at the date of the patent as a proper substitute forthe one &ithdra&n is a mere formal alteration of the combination ifthe inredient substituted performs substantiall) the same functionas the one &ithdra&n.

Bona 7deinventors of a combination are as much entitled tosuppress ever) other combination of the same inredients toproduce the same result, not substantiall) diKerent from &hat the)have invented and caused to be patented as to an) other class ofinventors. All alie have the riht to suppress ever) colorableinvasion of that &hich is secured to them b) letters patent.!e)mour vs+7sborne, 6 .!., 51uivalent simpl) because the same result isthereb) produced G but e>uivalent as bein substantiall) thesame device in structure, arranement and mode of operation.

+urden vs+Cornin, (ed. Cas., $14#. ottfriedvs+ "hilip +est+re&in Co., (ed. Cas., 5uivalent device is such as a mechanic of ordinar) sill inconstruction of similar machiner), havin the forms, speci:cationsand machine before him, could substitute in the place of themechanism described &ithout the e0ercise of the inventive facult).+urden vs+Cornin, supra+/

All the elements of the invention in this case are old, and the rulein such cases, as before e0plained, undoubtedl) is that a purpose

can not invoe the doctrine of e>uivalents to suppress all otherimprovements of the old machine, but he is entitled to treatever)one as an infriner &ho maes, uses, or vends his patentedimprovement &ithout an) other chane than the emplo)ment of asubstitute for one of its elements, &ell no&n as such at the dateof his invention, and &hich an) constructor ac>uainted &ith the art&ill no& ho& to compl). The reason for the >uali:cation of the ruleas stated is, that such chane G that is, the mere substitution of a&ellno&n element for another G &here it appears that thesubstituted element &as &ell no&n as a usual substitute for theelement left out G is merel) a formal one, and nothin better thana colorable evasion of the patent. nion !uar Re:ninCo. vs+8atthieson, (ed. Cas., 14#99./

Counsel for the defendant insists that, under !panish la&, none of thesteps of the process described in the descriptive statement, save thosementioned in the FnoteF thereto attached are included in the patent, andthat the patent rihts secured thereunder are strictl) limited to the preciselanuae of the FnoteF attached to the descriptive statement= &hilecounsel for plaintiK appears to thin that the lanuae of the patent coversan) process or device &hereb) &ood or cane ma) be bent or curved b) theuse of heat. +ut for the purpose of this decision it is not necessar) toconsider these >uestions, further than to hold, as &e do, that under thedoctrine of e>uivalents, the lanuae of the note in the descriptivestatement applies to the operation of appl)in heat for the purpose ofcurvin handles or canes and umbrellas b) means of a blast lamp fed &ithalcohol, as &ell as b) means of a blast lamp fed &ith petroleum or mineraloil= and the defendant havin admitted the fact that he applied heat for thepurpose of curvin handles for canes and umbrellas b) means of a blastlamp fed &ith alcohol, he must be deemed to have contempt of violatinthe terms and the inDunction issued in the principal case, &herein plaintiK&as declared the o&ner of the patent in >uestion, and defendant enDoinedfrom its infrinement.

The arument of counsel for defendant and appellant, based on the theor)

that the >uestions herein discussed and decided to have been heretoforesettled b) this court, and that the subDect-matter of this proceedin isresad


21/39

(I. G.R. No. L)216+ J%u%y )+, 1982

!MICIAN A. AG"AS, petitioner,vs.CNRA! G. !E LEN %' C"RT F A##EALS, respondents.

FERNAN!Euino and !ons, defendants-appellants,F the dispositive portion of &hich reads?

2@3R3(7R3, &ith the modi:cation that plintiK-appleesa&ard of moral damaes is hereb) redured to "#,%%%.%%,the appealed Dudment is hereb) a'rmed, in all otherespects, &ith costs aainst appellants. 1

7n April 14, 19uino and !ons allein that bein theoriinal :rst and sole inventor of certain ne& and useful improvements inthe process of main mosaic pre-cast tiles, he la&full) :led andprosecuted an application for "hilippine patent, and havin complied in allrespects &ith the statute and the rules of the "hilippine "atent 7'ce,"atent No. uested them to desist, but nevertheless, defendants have refused andnelected to desist and have disrearded such re>uest, and continue to soinfrine causin reat and irreparable damae to plaintiK= that if theaforesaid infrinement is permitted to continue, further losses anddamaes and irreparable inDur) &ill be sustained b) the plaintiK= that thereis an urent need for the immediate issuance of a preliminar) inDunction=that as a result of the defendants &ronful conduct, plaintiK has suKeredand the defendants are liable to pa) him, in addition to actual damaesand loss of pro:ts &hich &ould be determined upon proper accountin,moral and e0emplar) or corrective damaes in the sum of "9%,%%%.%%= thatplaintiK has been compelled to o to court for the protection andenforcement of his and to enae the service of counsel, thereb) incurrinattorne)s fees and e0penses of litiation in the sum of "5,%%%.%%. 2

7n April 14, 19


22/39

2@3R3(7R3, Dudment is hereb) rendered in favor ofplaintiK and aainst the defendants?

1. *eclarin plaintiKs patent valid and infrined?

$. rantin a perpetual inDunction restrainin defendants,their o'cers, aents, emplo)ees, associates, confederates,and an) and all persons actin under their authorit) frommain andOor usin andOor vendin tiles embod)in said

patented invention or adapted to be used in combinationembod)in the same, and from main, manufacturin,usin or sellin, enravins, castins and devises desinedand intended for use in apparatus for the main of tilesembod)in plaintiKs patented invention, and from oKerinor advertisin so to do, and from aidin and abettin or inan) &a) contributin to the infrinement of said patent=

#. 7rderin that each and all of the infrinin tiles,enravins, castins and devices, &hich are in thepossession or under the control of defendants be deliveredto plaintiK=

4. 7rderin the defendants to Dointl) and severall) pa) tothe plaintiK the follo&in sums of mone), to &it?

a/ "1%,%$%.99 b) &a) of actual damaes=

b/ "5%,%%%.%% b) &a) of moral damaes=

c/ "5,%%%.%% b) &a) of e0emplar) damaes=

d/ "5,%%%.%% b) &a) of attorne)s fees and

e/ costs of suit.*

The defendant *omiciano Auas appealed to the Court of Appeals,assinin the follo&in errors. 6

T@3 TRA C7RT 3RR3* N N7T @7*N T@AT"ANT((! "AT3NT (7R T@3 "R7C3!! 7( 8AN87!AC "R3-CA!T T3 ! NHA* +3CA!3 !A*A33* "R7C3!! ! N7T AN NH3NT7N 7R *!C7H3RI

A! T@3 !A83 @A! AR3A*I 7N +33N !3* +I T38AN(ACTR3R! +7T@ A+R7A* AN* N T@! C7NTRI.

T@3 TRA C7RT 3RR3* N @7*N T@AT T@3 "AT3NT 7("ANT(( ! HA* +3CA!3 T ! AN 8"R7H383NT 7R

T@3 A3-7* T3 8AN !I!T38.

T@3 TRA C7RT 3RR3* N N7T 7R*3RN T@3CANC3AT7N 7( "ANT((-A""333! 3TT3R! "AT3NTN7.


23/39

The petitioner assins the follo&in errors supposedl) committed b) theCourt of Appeals?

t is no& respectfull) submitted that the Court of Appealscommitted the follo&in errors involvin >uestions of la&,to &it?

(irst error. G 2hen it did not conclude that the letterspatent of the respondent althouh entitled on the cover

pae as a patent for improvements, &as in truth and infact, on the basis of the bod) of the same, a patent for theold and non-patentable process of main mosaic pre-casttiles=

!econd error. G 2hen it did not conclude from theadmitted facts of the case, particularl) the contents of theletters patent, 30h. and the pieces of ph)sical evidenceintroduced consistin of samples of the tiles andcataloues, that the alleed improvements introduced b)the respondent in the manufacture of mosaic pre-cast tilesare not patentable, the same bein not ne&, useful andinventive.

Third error. G As a corollar), &hen it sentenced the hereinpetitioner to pa) the damaes enumerated in the decisionof the lo&er court Record on Appeal, pp. 64-65/, ascon:rmed b) it the Court of Appeals/, but &ith themodi:cation that the amount of "5%,%%%.%% moraldamaes &as reduced to "#,%%%.%%. 8

The facts, as found b) the Court of Appeals, are?

The basic facts borne out b) the record are to the eKectthat on *ecember 1, 1959 plaintiK-appellee :led a patent

application &ith the "hilippine "atent 7'ce, and on 8a) 5,19


24/39

The Court of Appeals found that the private respondent has introduced animprovement in the process of tile-main because?

... &e :nd that plaintiK-appellee has introduced animprovement in the process of tile-main, &hich proceedsnot merel) from mechanical sill, said improvementconsistin amon other thins, in the ne& critical depth, lip&idth, easement and :eld of desins of the ne& tiles. Theimproved lip &idth of appellees tiles ensures the durabilit)

of the :nished product preventin the Qain oK of theedes. The easement caused b) the inclination of theprotrusions of the patented moulds is for the purpose offacilitatin the removal of the ne&l) processed tile fromthe female die. 3videntl), appellees improvement consistsin the solution to the old critical problem b) main theprotrusions on his moulds attain an optimum heiht, sothat the enravin thereon &ould be deep enouh toproduce tiles for sculptured and decorative purposes,stron optimum thicness of appellees ne& tiles of onl)1O of an inch at the deepest easement 30hs. F*F and F*-1F/ is a most critical feature, suestive of discover) andinventiveness, especiall) considerin that, despite saidthinness, the freshl) formed tile remains stron enouh forits intended purpose.

2hile it is true that the matter of easement, lip &idth,depth, protrusions and depressions are no&n to somesculptors, still, to be able to produce a ne& and useful &alltile, b) usin them all toether, amounts to an invention.8ore so, if the totalit) of all these features are vie&ed incombination &ith the deal composition of cement, sodiumsilicate and screened :ne sand.

+) usin his improved process, plaintiK has succeeded inproducin a ne& product - a concrete sculptured tile &hich

could be utili;ed for &allin and decorative purposes. Noproof &as adduced to sho& that an) tile of the same indhad been produced b) others before appellee. 8oreover, itappears that appellee has been derivin considerable pro:tfrom his manufacture and sale of such tiles. Thiscommercial success is evidence of patentabilit) 2aler on"atents, *ellers 3dition, Hol. , p. $#6/. 12

The validil) of the patent issued b) the "hilippines "atent 7'ce in favor ofthe private respondent and the >uestion over the inventiveness, novelt)and usefulness of the improved process therein speci:ed and described are

matters &hich are better determined b) the "hilippines "atent 7'ce. Thetechnical staK of the "hilippines "atent 7'ce, composed of e0perts in their:eld, have, b) the issuance of the patent in >uestion, accepted thethinness of the private respondents ne& tiles as a discover). There is apresumption that the "hilippines "atent 7'ce has correctl) determined thepatentabilit) of the improvement b) the private respondent of the processin >uestion.

Anent this matter, the Court of Appeals said?

Appellant has not adduced evidence su'cient to overcomethe above established leal presumption of validit) or to&arrant reversal of the :ndins of the lo&er court relativeto the validit) of the patent in >uestion. n fact, as &e havealread) pointed out, the clear preponderance of evidencebolsters said presumption of validit) of appellees patent.

There is no indication in the records of this case and thisCourt is una&are of an) fact, &hich &ould tend to sho&that concrete &all tiles similar to those produced b)appellee had ever been made b) others before he startedmanufacturin the same. n fact, durin the trial, appellant&as challened b) appellee to present a tile of the same

ind as those produced b) the latter, from an) earliersource but, despite the fact that appellant had ever)chance to do so, he could not present an). There is,therefore, no concrete proof that the improved process oftile-main described in appellees patent &as used b), orno&n to, others previous to his discover) thereof. 1)

The contention of the petitioner Auas that the letters patent of de eon&as actuall) a patent for the old and non-patentable process of mainmosaic pre-cast tiles is devoid of merit. *e eon never claimed to haveinvented the process of tile-main. The Claims and !peci:cations of"atent No. uantities and can be convenientl) stoc-piled, handled and paced &ithout an) intolerable incidence ofbreaaes. 14

$4


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The petitioner also contends that the improvement of respondent is notpatentable because it is not ne&, useful and inventive. This contention is&ithout merit.

The records disclose that de eons process is an improvement of the oldprocess of tile main. The tiles produced from de eons process aresuitable for construction and ornamentation, &hich previousl) had notbeen achieved b) tiles made out of the old process of tile main. *eeons invention has therefore brouht about a ne& and useful ind of tile.

The old t)pe of tiles &ere usuall) intended for Qoors althouh there isnothin to prevent one from usin them for &allin purposes. These tilesare neither artistic nor ornamental. The) are heav) and massive.

The respondents improvement is indeed inventive and oes be)ond thee0ercise of mechanical sill. @e has introduced a ne& ind of tile for a ne&purpose. @e has improved the old method of main tiles and pre-castarticles &hich &ere not satisfactor) because of an intolerable number ofbreaaes, especiall) if deep enravins are made on the tile. @e hasovercome the problem of producin decorative tiles &ith deep enravin,but &ith su'cient durabilit). 1**urabilit) inspite of the thinness andlihtness of the tile, is assured, provided that a certain critical depth ismaintained in relation to the dimensions of the tile. 16

The petitioner also claims that chanin the desin from embossed toenraved tiles is neither ne& nor inventive because the 8achuca Tile(actor) and the "omona Tile 8anufacturin Compan) have beenmanufacturin decorative &all ti les that are embossed as &ell asenraved= 17that these tiles have also depth, lip &idth, easement and :eldof desins= 18and that the private respondent had copied some desins of"omona. 19

The 8achuca tiles are diKerent from that of the private respondent. Thedesins are embossed and not enraved as claimed b) the petitioner.

There ma) be depressions but these depressions are too shallo& to beconsidered enraved. +esides, the 8achuca tiles are heav) and massive.

There is no similarit) bet&een the "omona Tiles and de eons tiles. The"omona tiles are made of ceramics. 2+The process involved in maincement tiles is diKerent from ceramic tiles. Cement tiles are made &ith theuse of &ater, &hile in ceramics :re is used. As reards the alleation of thepetitioner that the private respondent copied some desins of "omona,su'ce it to sa) that &hat is in issue here is the process involved in tilemain and not the desin.

n vie& of the foreoin, this Court :nds that "atent No.


26/39

e0emplar) damaes in the sum of "5,%%%.%% to be paidDointl) and severall) b) defendants. Considerin the statusof plaintiK as a reputable businessman, and o&ner of thelie&ise reputed @ouse of "re-Cast, he is entitled to ana&ard of moral damaes in the sum of "5%,%%%.%%. 2)

n reducin the amount of moral damaes the Court of Appeals said?

As reards the >uestion of moral damaes it has been

sho&n that as a result of the unla&ful acts of infrinmentcommitted b) defendants, plaintiK &as unstandabl) ver)sad= he &orried and became nervous and lostconcentration on his &or in connection &ith his tilebusiness pp. $, #%, t.s.n., (eb. $, 19uestion because defendants, b) theiracts of infrinement have created a doubt or suspicion inthe public mind concernin the truth and honest) ofplaintiKs advertisements and public announcements of hisvalid patent. Necessaril), said acts of defendants havecaused plaintiK considerable mental suKerin, considerinespeciall), the fact that he staed ever)thin on his pre-

cast tile business p. #


27/39

7n 7ctober 14, 19oz Palma% ,,+%concur+

(III. G.R. No. 1187+8 F;u%y 2, 1998

CRESER #RECISIN S$STEMS, INC., petitioner,vs.C"RT F A##EALS AN! FLR INTERNATINALCR#., respondents.

MARTINE


28/39

petitioner of a possible court action andOor application for inDunction,should it proceed &ith the scheduled testin b) the militar) on *ecember6, 199#.

n response to private respondents demand, petitioner :led on *ecember, 199# a complaint6for inDunction and damaes arisin from the alleedinfrinement before the Reional Trial Court of Mue;on Cit), +ranch . Thecomplaint alleed, amon others? that petitioner is the :rst, true andactual inventor of an aerial fu;e denominated as F(u;e, "*R 66 C+4F &hich

it developed as earl) as *ecember 191 under the !elf-Reliance *efense"osture "roram !R*"/ of the A("= that sometime in 19


29/39

"atent No. 8-uestioned in this case.

2@3R3(7R3, premises considered, the 8otion forReconsideration is hereb) denied for lac of merit.

!7 7R*3R3*.

Arieved, private respondent on une $6, 1994, :led a petition

for certiorari% mandamusand prohibition 1+before respondent Court ofAppeals raisin as rounds the follo&in?

a. "etitioner has no cause of action for infrinementaainst private respondent, the latter not havin an)patent for the aerial fuze&hich it claims to have inventedand developed and alleedl) infrined b) privaterespondent=

b. the case bein an action for cancellation or invalidationof private respondents etters "atent over its o&n aerialfuze, the proper venue is the 7'ce of the *irector of

"atents=

c. The trial court acted in rave abuse of discretion andOorin e0cess of Durisdiction in :ndin that petitioner has full)established its clear title or riht to preliminar) inDunction=

d. The trial court acted in rave abuse of discretion andOorin e0cess of Durisdiction in rantin the preliminar)inDunction, it bein disruptive of the status >uo= and

e. The trial court acted in rave abuse of discretion andOorin e0cess of Durisdiction in rantin the preliminar)inDunction thereb) deprivin private respondent of itspropert) rihts over the patentedaerial fuzeand cause itirreparable damaes.

7n November 9, 1994, the respondent court rendered the no& assaileddecision reversin the trial courts 7rder of *ecember $9, 199# anddismissin the complaint :led b) petitioner.

The motion for reconsideration &as also denied on anuar) 16,1995. 11@ence, this present petition.

t is petitioners contention that it can :le, under !ection 4$ of the "atenta& R.A. 1


30/39

mae, use and vend his o&n invention, but if he voluntaril) discloses it,such as b) oKerin it for sale, the &orld is free to cop) and use it &ithimpunit). A patent, ho&ever, ives the inventor the riht to e0clude allothers. As a patentee, he has the e0clusive riht of main, usin or sellinthe invention. 1*

(urther, the remed) of declarator) Dudment or inDunctive suit on patentinvalidit) relied upon b) petitioner cannot be liened to the civil action forinfrinement under !ection 4$ of the "atent a&. The reason for this is that

the said remed) is available onl) to the patent holder or his successors-in-interest. Thus, an)one &ho has no patent over an invention but claims tohave a riht or interest thereto can not :le an action for declarator)

Dudment or inDunctive suit &hich is not reconi;ed in this Durisdiction. !aidperson, ho&ever, is not left &ithout an) remed). @e can, under !ection $of the aforementioned la&, :le a petition for cancellation of the patent&ithin three #/ )ears from the publication of said patent &ith the *irectorof "atents and raise as round therefor that the person to &hom the patent&as issued is not the true and actual inventor. @ence, petitioners remed)is not to :le an action for inDunction or infrinement but to :le a petition forcancellation of private respondents patent. "etitioner ho&ever failed to doso. As such, it can not no& assail or impun the validit) of the privaterespondents letters patent b) claimin that it is the true and actualinventor of the aerial fuze.

Thus, as correctl) ruled b) the respondent Court of Appeals in its assaileddecision? Fsince the petitioner private respondent herein/ is the patenteeof the disputed invention embraced b) letters of patent 8 No.


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The N+ subse>uentl) :led a complaint aainst Rodriue; for violation of!ection 4 in relation to !ections # and 5/ of Republic Act No. $%#, alsono&n as the !pecial a& on Counterfeit *rus !C*/, &ith the 7'ce ofthe "rovincial "rosecutor in !an (ernando, "ampana. The section prohibitsthe sale of counterfeit drus, &hich under !ection #b/#/, includes Fanunreistered imported dru product.F The term FunreisteredF sini:es thelac of reistration &ith the +ureau of "atent, Trademar and Technolo)

Transfer of a trademar, tradename or other identi:cation mar of a druin the name of a natural or Duridical person, the process of &hich isoverned under "art of the ntellectual "ropert) Code.

n this case, there is no doubt that the subDect sei;ed drus are identical incontent &ith their "hilippine-reistered counterparts. There is no claim thatthe) &ere adulterated in an) &a) or mislabeled at least. Their classi:cationas FcounterfeitF is based solel) on the fact that the) &ere imported fromabroad and not purchased from the "hilippine-reistered o&ner of thepatent or trademar of the drus.

*urin preliminar) investiation, Rodriue; challened the constitutionalit)of the !C*. @o&ever, Assistant "rovincial "rosecutor Celerina C. "inedasirted the challene and issued a Resolution dated 16 Auust $%%1recommendin that Rodriue; be chared &ith violation of !ection 4a/ of

the !C*. The recommendation &as approved b) "rovincial "rosecutoresus I. 8anaran approved the recommendation.#

@ence, the present "etition for "rohibition >uestin the RTC-uaua"ampana and the "rovincial "rosecutor to desist from further prosecutinRodriue;, and that !ections #b/#/, 4 and 5 of the !C* be declaredunconstitutional. n ist, Rodriue; asserts that the challened provisionscontravene three provisions of the Constitution. The :rst is the e>ualprotection clause of the +ill of Rihts. The t&o other provisions are !ection11, Article L, &hich mandates that the !tate mae Fessential oods,health and other social services available to all the people at aKordablecost=F and !ection 15, Article , &hich states that it is the polic) of the!tate Fto protect and promote the riht to health of the people and instill

health consciousness amon them.F

Throuh its Resolution dated 15 7ctober $%%1, the Court issued atemporar) restrainin order enDoinin the RTC from proceedin &ith thetrial aainst Rodriue;, and the +(A*, the N+ and la0o !mithline fromprosecutin the petitioners.4

la0o !mithline and the 7'ce of the !olicitor eneral 7!/ haveopposed the petition, the latter in behalf of public respondents RTC,"rovincial "rosecutor and +ureau of (ood and *rus +(A*/. 7n theconstitutional issue, la0o !mithline asserts the rule that the !C* is

presumed constitutional, aruin that both !ection 15, Article and!ection 11, Article L Fare not self-e0ecutin provisions, the disreard of&hich can ive rise to a cause of action in the courts.F t adds that !ection11, Article L in particular cannot be &or Fto the oppression and unla&fulof the propert) rihts of the leitimate manufacturers, importers ordistributors, &ho tae pains in havin imported dru products reisteredbefore the +(A*.F la0o !mithline further claims that the !C* does notin fact conQict &ith the aforementioned constitutional provisions and in factare in accord &ith constitutional precepts in favor of the peopleUs riht tohealth.

The 7'ce of the !olicitor eneral casts the >uestion as one of polic)&isdom of the la& that is, be)ond the interference of the Dudiciar). 5Aain,the presumption of constitutionalit) of statutes is invoed, and theassertion is made that there is no clear and une>uivocal breach of theConstitution presented b) the !C*.

II+

The constitutional aspect of this petition raises obviousl) interestin>uestions. @o&ever, such >uestions have in fact been mooted &ith thepassae in $%% of Republic Act No. 95%$, also no&n as the Fniversall)

Accessible Cheaper and Mualit) 8edicines Act of $%%F.uired under an)la& of the "hilippines or of another countr) that reulates themanufacture, construction, use or sale of an) product? "rovided,

That, in order to protect the data submitted b) the oriinal patent

holder from unfair commercial use provided in Article #9.# of theAreement on Trade-Related Aspects of ntellectual "ropert) RihtsTR"! Areement/, the ntellectual "ropert) 7'ce, in consultation&ith the appropriate overnment aencies, shall issue theappropriate rules and reulations necessar) therein not later thanone hundred t&ent) 1$%/ da)s after the enactment of this la&=

F6$.5. 2here the act consists of the preparation for individualcases, in a pharmac) or b) a medical professional, of a medicine inaccordance &ith a medical shall appl) after a dru or medicine hasbeen introduced in the "hilippines or an)&here else in the &orld b)the patent o&ner, or b) an) part) authori;ed to use the invention?"rovided, further, That the riht to import the drus and medicines

contemplated in this section shall be available to an) overnmentaenc) or an) private third part)= 0006

The un>uali:ed riht of private third parties such as petitioner to import orpossess Funreistered imported drusF in the "hilippines is furthercon:rmed b) the Fmplementin Rules to Republic Act No. 95%$Fpromulated on 4 November $%%.The relevant provisions thereof read?

Rul 9. L55/%/5o o #%// R5-=/.The o&ner of a patent has noriht to prevent third parties from performin, &ithout his authori;ation,the acts referred to in !ection 61 of the " Code as enumerated hereunder?

@5 I/o'u/5o 5 /= #=5l5335 o Ay= El 5 /= :ol'.

sin a patented product &hich has been put on the maret in the"hilippines b) the o&ner of the product, or &ith his e0press consent,insofar as such use is performed after that product has been so put on thesaid maret?Provided, That, &ith reard to drus and medicines, thelimitation on patent rihts shall appl) after a dru or medicine has beenintroduced in the "hilippines or an)&here else in the &orld b) the patento&ner, or b) an) part) authori;ed to use the invention? Provided% furt"er,

That the riht to import the drus and medicines contemplated in thissection shall be available to an) overnment aenc) or an) private thirdpart). 0?@+/avvp"i

The drus and medicines are deemed introduced &hen the) have beensold or oKered for sale an)&here else in the &orld. 0n/

t ma) be that Rep. Act No. 95%$ did not e0pressl) repeal an) provision ofthe !C*. @o&ever, it is clear that the !C7Us classi:cation ofFunreistered imported drusF as Fcounterfeit drus,F and of correspondincriminal penalties therefore are irreconcilabl) in the imposition conQict &ithRep. Act No. 95%$ since the latter indubitabl) rants private third personsthe un>uali:ed riht to import or other&ise use such drus. 2here a

statute of later date, such as Rep. Act No. 95%$, clearl) reveals anintention on the part of the leislature to abroate a prior act on thesubDect that intention must be iven eKect.92hen a subse>uentenactment coverin a :eld of operation coterminus &ith a prior statutecannot b) an) reasonable construction be iven eKect &hile the prior la&remains in operative e0istence because of irreconcilable conQict bet&eenthe t&o acts, the latest leislative e0pression prevails and the prior la&)ields to the e0tent of the conQict.1%rreconcilable inconsistenc) bet&eent&o la&s embracin the same subDect ma) e0ist &hen the later la& nulli:esthe reason or purpose of the earlier act, so that the latter loses all meaninand function.11eis posteriors priores contrarias abroant.

(or the reasons above-stated, the prosecution of petitioner is no loner

&arranted and the >uested &rit of prohibition should accordinl) be issued.

.

@ad the Court proceeded to directl) confront the constitutionalit) of theassailed provisions of the !C*, it is apparent that it &ould have at leastplaced in doubt the validit) of the provisions. As &ritten, the la& maes acriminal of an) person &ho imports an unreistered dru reardless of thepurpose, even if the medicine can spell life or death for someone in the"hilippines. t does not accommodate the situation &here the dru is out ofstoc in the "hilippines, be)ond the reach of a patient &ho urentl)

#$
http://www.lawphil.net/judjuris/juri2009/apr2009/gr_149907_2009.html#fnt7http://www.lawphil.net/judjuris/juri2009/apr2009/gr_149907_2009.html#fnt8http://www.lawphil.net/judjuris/juri2009/apr2009/gr_149907_2009.html#fnt9http://www.lawphil.net/judjuris/juri2009/apr2009/gr_149907_2009.html#fnt10http://www.lawphil.net/judjuris/juri2009/apr2009/gr_149907_2009.html#fnt11http://www.lawphil.net/judjuris/juri2009/apr2009/gr_149907_2009.html#fnt7http://www.lawphil.net/judjuris/juri2009/apr2009/gr_149907_2009.html#fnt8http://www.lawphil.net/judjuris/juri2009/apr2009/gr_149907_2009.html#fnt9http://www.lawphil.net/judjuris/juri2009/apr2009/gr_149907_2009.html#fnt10http://www.lawphil.net/judjuris/juri2009/apr2009/gr_149907_2009.html#fnt11


33/39

depends on it. t does not allo& husbands, &ives, children, siblins, parentsto import the dru in behalf of their loved ones too ph)sicall) ill to traveland avail of the meaer personal use e0emption allotted b) the la&. tdiscriminates, at the e0pense of health, aainst poor (ilipinos &ithoutmeans to travel abroad to purchase less e0pensive medicines in favor oftheir &ealthier brethren able to do so. ess urentl) perhaps, but still&ithin the rane of constitutionall) protected behavior, it deprives (ilipinosto choose a less e0pensive reime for their health care b) den)in them aplausible and safe means of purchasin medicines at a cheaper cost.

The absurd results from this far-reachin ban e0tends to implications thatden) the basic decencies of humanit). The la& &ould mae criminals ofdoctors from abroad on medical missions of such humanitarianorani;ations such as the nternational Red Cross, the nternational RedCrescent, 8edicin !ans (rontieres, and other

lie-minded roups &ho necessaril) brin their o&n pharmaceutical drus&hen the) embar on their missions of merc). After all, the) are disabledfrom invoin the bare Fpersonal useF e0emption aKorded b) the !C*.

3ven &orse is the fact that the la& is not content &ith simpl) bannin, atcivil costs, the importation of unreistered drus. t e>uates the importers

of such drus, man) of &hom motivated to do so out of altruism or basichuman love, &ith the malevolents &ho &ould alter or counterfeitpharmaceutical drus for reasons of pro:t at the e0pense of public safet).Note that the !C* is a special la&, and the traditional treatment of penalprovisions of special la&s is that of malum prohibitumYor punishablereardless of motive or criminal intent. (or a la& that is intended to helpsave lives, the !C* has revealed itself as a heartless, soulless leislativepiece.

The challened provisions of the !C* apparentl) proscribe a rane ofconstitutionall) permissible behavior. t is laudable that &ith the passae ofRep. Act No. 95%$, the !tate has reversed course and allo&ed for asensible and compassionate approach &ith respect to the importation of

pharmaceutical drus urentl) necessar) for the peopleUs constitutionall)-reconi;ed riht to health.

2@3R3(7R3, the petition is RANT3* in part. A &rit of prohibition ishereb) !!3* commandin respondents from prosecutin petitionerRomeo Rodriue; for violation of !ection 4 or Rep. Act No. $%#. The

Temporar) Restrainin 7rder dated 15 7ctober $%%1 is hereb) made"3R8AN3NT. No pronouncements as to costs.

!7 7R*3R3*.

!ANTE . TINGAAssociate ustice

Zp

23 C7NCR?

LENAR! A. "IS"MBINGAssociate ustice

Chairperson

CNCHITA CAR#I MRALESAssociate ustice

#RESBITER J. (ELASC, JR.Associate ustice

ART"R !. BRINAssociate ustice

A T T 3 ! T A T 7 N

attest that the conclusions in the above *ecision had been reached inconsultation before the case &as assined to the &riter of the opinion ofthe CourtUs *ivision.

LENAR! A. "IS"MBINGAssociate usticeChairperson, !econd *ivision

C 3 R T ( C A T 7 N

"ursuant to !ection 1#, Article H of the Constitution, and the *ivisionChairpersonUs Attestation, it is hereb) certi:ed that the conclusions in theabove *ecision had been reached in consultation before the case &asassined to the &riter of the opinion of the CourtUs *ivision.

RE$NAT S. #"NChief ustice

WWWWWWWWWWWWWWWWWWWWWWWWWWWWWWWWWWWWWWWWW

?. G.R. No. 11*1+6 M%= 1*, 1996

RBERT L. !EL RSARI, petitioner,vs.C"RT F A##EALS AN! JANIT CR#RATIN, respondents.

##


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BELLSILL,J.:p

Roberto del Rosario petitions this Court to revie& the decision of the Courtof Appeals 1&hich set aside the order of the Reional Trial Court of 8aatirantin a &rit of preliminar) inDunction in his favor.

The antecedents? 7n 1 anuar) 199# petitioner :led a complaint for

patent infrinement aainst private respondent anitoCorporation.2Roberto . del Rosario alleed that he &as a patentee of anaudio e>uipment and improved audio e>uipment commonl) no&n as thesin-alon !)stem or &arao&eunder etters "atent No. 8-5$uestioned order of the trial court. t e0pressed the vie& thatthere &as no infrinement of the patents of petitioner b) the fact alonethat private respondent had manufactured the miyata &arao&eor audios)stem, and that the &arao&es)stem &as a universal productmanufactured, advertised and mareted in most countries of the &orldlon before the patents &ere issued to petitioner. The motion to reconsiderthe rant of the &rit &as denied=4hence, the instant petition for revie&.

This petition allees that? a/ it &as improper for the Court of Appeals toconsider >uestions of fact in a certiorariproceedin= b/ the Court ofAppeals erred in tain Dudicial notice of private respondents self-servinpresentation of facts= c/ the Court of Appeals erred in disreardin the:ndins of fact of the trial court= and, d/ there &as no basis for the Courtof Appeals to rant a &rit of preliminar) inDunction in favor of privaterespondent. *

"etitioner arues that in a certiorariproceedin >uestions of fact are notenerall) permitted the in>uir) bein limited essentiall) to &hether thetribunal has acted &ithout or in e0cess of Durisdiction or &ith rave abuseof discretion= that respondent court should not have disturbed butrespected instead the factual :ndins of the trial court= that the movanthas a clear leal riht to be protected and that there is a violation of suchriht b) private respondent. Thus, petitioner herein claims, he has satis:edthe leal re>uisites to Dustif) the order of the trial court directin theissuance of the &rit of inDunction. 7n the other hand, in the absence of apatent to Dustif) the manufacture and sale b) private respondent of sin-alon s)stems, it is not entitled to the inDunctive relief ranted b)respondent appellate court.

The cru0 of the controvers) before us hines on &hether respondent Courtof Appeals erred in :ndin the trial court to have committed rave abuseof discretion in enDoinin private respondent from manufacturin, sellinand advertisin the miyata &arao&ebrand sin-alon s)stem for beinsubstantiall) similar if not identical to the audio e>uipment covered b)letters patent issued to petitioner.

nDunction is a preservative remed) for the protection of substantive rihtsor interests. t is not a cause of action in itself but merel) a provisionalremed), an adDunct to a main suit. The controllin reason for the e0istenceof the Dudicial po&er to issue the &rit is that the court ma) thereb) prevent

#4


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a threatened or continuous irremediable inDur) to some of the partiesbefore their claims can be thorouhl) investiated and advisedl)adDudicated. t is to be resorted to onl) &hen there is a pressin necessit)to avoid inDurious conse>uences &hich cannot be remedied under an)standard of compensation. The application of the &rit rests upon analleed e0istence of an emerenc) or of a special reason for such an orderbefore the case can be reularl) heard, and the essential conditions forrantin such temporar) inDunctive relief are that the complaint alleesfacts &hich appear to be su'cient to constitute a cause of action forinDunction and that on the entire sho&in from both sides, it appears, in

vie& of all the circumstances, that the inDunction is reasonabl) necessar)to protect the leal rihts of plaintiK pendin the litiation.6

A preliminar) inDunction ma) be ranted at an) time after thecommencement of the action and before Dudment &hen it is establishedthat the defendant is doin, threatens, or is about to do, or is procurin orsuKerin to be done, some act probabl) in violation of the plaintiKs rihts.

Thus, there are onl) t&o re>uisites to be satis:ed if an inDunction is toissue, namel), the e0istence of the riht to be protected, and that the factsaainst &hich the inDunction is to be directed are violative of said riht.7

(or the &rit to issue the interest of petitioner in the controvers) or the riht

he sees to be protected must be a present riht, a leal riht &hich mustbe sho&n to be clear and positive.

n this reard !ec. 55 of R.A. 1


36/39

speaer :tted inside said front compartment of said casinand connected to the output of said ampli:er circuit.9

The terms of both etters "atents &ere e0tended for another :ve 5/ )earseach, the :rst beinnin $ une 19 and the second, 14 November 1991.

The "atent a& e0pressl) acno&ledes that an) ne& model ofimplements or tools of an) industrial product even if not possessed of the>ualit) of invention but &hich is of practical utilit) is entitled to a patent for

utilit) model.1+

@ere, there is no dispute that the letters patent issued topetitioner are for utilit) models of audio e>uipment.

n issuin, reissuin or &ithholdin patents and e0tensions thereof, the*irector of "atents determines &hether the patent is ne& and &hether themachine or device is the proper subDect of patent. n passin on anapplication, the *irector decides not onl) >uestions of la& but also>uestions of fact, i.e. &hether there has been a prior public use or sale ofthe article souht to be patented. 112here petitioner introduces the patentin evidence, if it is in due form, it aKords aprima faciepresumption of itscorrectness and validit). The decision of the *irector of "atents in rantinthe patent is al&a)s presumed to be correct, and the burden then shifts torespondent to overcome this presumption b) competent evidence. 12

nder !ec. 55 of The "atent a& a utilit) model shall not be consideredFne&F if before the application for a patent it has been publicl) no&n orpublicl) used in this countr) or has been described in a printed publicationor publications circulated &ithin the countr), or if it is substantiall) similarto an) other utilit) model so no&n, used or described &ithin the countr).Respondent corporation failed to present befo

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