IPL Notes for Finals

7/28/2019 IPL Notes for Finals

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Intellectual Property Law (Notes for Finals) Llanera, M.A. (2011)

LAW ON PATENTS, UTILITY MODELS AND INDUSTRIAL DESIGNS

1. Purpose of the Patent Law

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. This is a matter which is

properly within the competence of the Patent Office the official action of which has the presumption of correctness and

may not be interfered with in the absence of new evidence carrying thorough conviction that the Office has erred.

Since the Patent Office is an expert body preeminently qualified to determine questions of patentability, its findings

must be accepted if they are consistent with the evidence, with doubts as to patentability resolved in favor of the

Patent Office.

Facts:

Petitioner Angelita Manzano filed with the Philippine Patent Office on 19 February 1982 an action for the cancellation

of Letters Patent for a gas burner registered in the name of respondent Melecia Madolaria who subsequently assigned

the letters patent to New United Foundry and Manufacturing Corporation. Petitioner alleged that (a) the utility model

covered by the letters patent, in this case, an LPG gas burner, 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 Melecia

Madolaria 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. In support of her petition for cancellation petitioner further alleged that (a) the utility model

covered by the letters patent of respondent had been known or used by others in the Philippines for more than one (1)

year before she filed her application for letters patent on 9 December 1979; (b) the products which were produced in

accordance with the utility model covered by the letters patent had been in public use or on sale in the Philippines for

more than one (1) year before the application for patent therefor was filed.

Testifying for herself petitioner narrated that her husband Ong Bun Tua worked as a helper in the UNITED FOUNDRY

where respondent Melecia Madolaria 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 for which Letters Patent No. UM-4609 was issued, and that

after her husbands separation from the shop, she organized Besco Metal Manufacturing (BESCO METAL, 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 in evidence an alleged model of an LPG burner and covered

by the Letters Patent of respondent, and testified that it was given to her in January 1982 by one of her customers who

allegedly acquired it from UNITED FOUNDRY. Petitioner also presented in evidence her own model of an LPG burner

called Ransome burner which was allegedly manufactured in 1974 or 1975 and sold by her in the course of her business

operation in the name of BESCO METAL. Petitioner claimed that this Ransome burner had the same configuration and

mechanism as that of the model which was patented in favor of private respondent Melecia Madolaria. Also presented

by petitioner was a burner cup of an imported Ransome burner which was allegedly existing even before the patent

application of private respondent.

Private respondent, on the other hand, presented only one witness, Rolando Madolaria, who testified, among others,

that he was the General Supervisor of the UNITED FOUNDRY in the foundry, machine and buffing section; that in his

early years with the company, UNITED FOUNDRY was engaged in the manufacture of different kinds of gas stoves aswell as burners based on sketches and specifications furnished by customers; that the company manufactured early

models of single-piece types of burners where the mouth and throat were not detachable.

Comment [m1]:

SIR QUIRANTES SLIDES:

Relation of protection and disclosure by

protecting, the state requires disclosure

Utilitarian theory

Economic Incentives:

1.Incentive to invent

2.Incentive to disclose

3.Incentive to commercialize

4.Incentive to design around

Purposes of the Patent law:

1.To encourage inventors to disclose their

inventions

2.Incentive for future research

3.To enable inventor to recoup the cost of i

4.To facilitate technology transfer or licens

Patent originates from Latin term patere

means to lay open, and more directly as a s

version of the term letters patent

-A temporary monopoly granted to an inven

the government in return for disclosing an

-The exclusive right to exploit the invention

years from the time of filing

-Government-issued to the owner the right

exclude others from making, using, or sellin

particular location

Patent in two senses:

1.May refer to the document

2.Relates to the content of the protection

Applicable laws:

1.Constitution

2.Statutory laws and legislative enactments

3.International treaties

4.Rules of Court

5.Jurisprudence

Art II, Section 17, Constitution. The State sh

priority to education, science and technolo

culture, and sports to foster patriotism a nd

nationalism, accelerate social progress, and

promote total human liberation and develo

Art XII, Section 19, Constitution. The State s

regulate or prohibit monopolies when the p

interest so requires. No combinations in res

trade or unfair competition shall be allowed

IP Code (Patent) Salient points:

-Patentability

-examination process

-rights and remedies of inventors and othe

-obligations of patent holders


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Issue:

Whether or not the petitioner was able to establish convincingly that the patented utility model of private respondentwas anticipated

Held:

No. The validity of the patent issued by the Philippine Patent Office in favor of private respondent and the question

over the inventiveness, novelty and usefulness of the improved model of the LPG burner are matters which are better

determined by the Patent Office. The technical staff of the Philippine Patent Office composed of experts in their field

has by the issuance of the patent in question accepted private respondents model of gas burner as a discovery. There

is a presumption that the Office has correctly determined the patentability of the model and such action must not be

interfered with in the absence of competent evidence to the contrary.

The element of novelty is an essential requisite of the patentability of an invention or discovery. If a device or process

has been known or used by others prior to its invention or discovery by the applicant, an application for a patent

therefor should be denied; and if the application has been granted, the court, in a judicial proceeding in which the

validity of the patent is drawn in question, will hold it void and ineffective. It has been repeatedly held that an inventionmust possess the essential elements of novelty, originality and precedence, and for the patentee to be entitled to the

protection the invention must be new to the world.

In issuing Letters Patent to Melecia Madolaria for an LPG Burner on 22 July 1981, the Philippine Patent Office found her

invention novel and patentable. The issuance of such patent creates a presumption which yields only to clear and

cogent evidence that the patentee was the original and first inventor. The burden of proving want of novelty is on him

who avers it and the burden is a heavy one which is met only by clear and satisfactory proof which overcomes every

reasonable doubt. Hence, a utility model shall not be considered new if before the application for a patent it has been

publicly known or publicly used in this country or has been described in a printed publication or publications circulated

within the country, or if it is substantially similar to any other utility model so known, used or described within the

country.

As found by the Director of Patents, the standard of evidence sufficient to overcome the presumption of legality of the

issuance of patent to respondent Madolaria was not legally met by petitioner in her action for the cancellation of the

patent. Thus the Director of Patents explained his reasons for the denial of the petition to cancel private respondents

patent:

a. Not one of the various pictorial representations of burners clearly and convincingly show that the device presentedtherein is identical or substantially identical in construction with the aforesaid utility model. It is relevant and

material to state that in determining whether novelty or newness is negatived by any prior art, only one item of the

prior art may be used at a time. For anticipation to occur, the prior art must show that each element is found either

expressly or described or under principles of inherency in a single prior art reference or that the claimed invention

was probably known in a single prior art device or practice.

b. Even assuming gratia arguendi that the aforesaid brochures do depict clearly on all fours each and every elementof the patented gas burner device so that the prior art and the said patented device become identical, although in

truth they are not, they cannot serve as anticipatory bars for the reason that they are undated. The dates when

they were distributed to the public were not indicated and, therefore, they are useless prior art references.

c. Furthermore, and more significantly, the model does not show whether or not it was manufactured and/or castbefore the application for the issuance of patent for the LPG burner was filed by Melecia Madolaria.

d. With respect to Ransome burner, petitioner claimed it to be her own model of LPG burner allegedly manufacturedsometime in 1974 or 1975 and sold by her in the course of her business operation in the name of Besco Metal

Manufacturing, which burner was denominated as Ransome burner. But a careful examination of the burner would

show that it does not bear the word Ransome which is the burner referred to as the product being sold by the

Comment [m2]:

RA 165 vs. IP Code (Patent)

RA 165

-First to invent system

-Invention-17 yrs from grant

-No opposition proceedings-mandatory exa

-Publication after grant

IP Code (Patent)

-First to file system

-Invention-20 yrs from filing date

-Examination upon request of applicant

-Publication after 18 months from filing or

date

Treaties and International Agreements:

1.Paris Convention on the Protection of Ind

Property

2.TRIPS Agreement

3.Patent Cooperation Treaty (PCT) signed

19, 1970, entered into force on Ja nuary 24,

provides a unified procedure for filing paten

applications to protect inventions in each o

contracting states


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Petitioner. This is not the way to prove that the burner anticipates Letters Patent through the brochures. Another

factor working against the Petitioners claims is that an examination of the Ransome burner would disclose that

there is no indication of the time or date it was manufactured. This Office, thus has no way of determining whetherRansome burner was really manufactured before the filing of the aforesaid application which matured into Letters

Patent, subject matter of the cancellation proceeding.

e. At this juncture, it is worthwhile to point out that petitioner also presented the alleged burner cup of an importedRansome burner. Again, this Office finds the same as unreliable evidence to show anticipation. It observed that

there is no date indicated therein as to when it was manufactured and/or imported before the filing of the

application for issuance of patent of the subject utility model. What is more, some component parts of it are

missing, as only the cup was presented so that the same could not be compared to the utility model (subject

matter of this case) which consists of several other detachable parts in combination to form the complete LPG

burner.

f. It must likewise be pointed out that Ong Bun Tua testified on the brochures allegedly of Manila Gas and of EssoGasul and on the alleged fact that Manila Gas Corporation was importing from the United States Ransome burners.

But the same could not be given credence since he himself admitted during cross- examination that he has never

been connected with Manila Gas Corporation. He could not even present any importation papers relating to the

alleged imported ransome burners. Neither did his wife

It has been held that the question on priority of invention is one of fact. Novelty and utility are likewise questions of

fact. The validity of patent is decided on the basis of factual inquiries. Whether evidence presented comes within the

scope of prior art is a factual issue to be resolved by the Patent Office. There is question of fact when the doubt or

difference arises as to the truth or falsehood of alleged facts or when the query necessarily invites calibration of the

whole evidence considering mainly the credibility of witnesses, existence and relevance of specific surrounding

circumstances, their relation to each other and to the whole and the probabilities of the situation. Supreme Court is not

a trier of facts. WHEREFORE, the Petition is DENIED. The Decision of the Court of Appeals affirming that of the

Philippine Patent Office is AFFIRMED.

2. Patentability

a. Patentable Inventions Sec. 21

SECTION 21. Patentable Inventions. Any technical solution of a problem in any field of human activity which is new,involves an inventive step and is industrially applicable shall be patentable. It may be, or may relate to, a product, or

process, or an improvement of any of the foregoing.

Inventor Sec. 25.2

25.2. For the purposes of Subsection 25.1, "inventor" also means any person who, at the filing date of application, had

the right to the patent. (n)

Novelty Sec. 23

SECTION 23. Novelty. An invention shall not be considered new if it forms part of a prior art. (Sec. 9, R.A. No. 165a)

Prior Art Sec. 24

SECTION 24. Prior Art. Prior art shall consist of:

24.1. Everything which has been made available to the public anywhere in the world, before the filing date or the

priority date of the application claiming the invention; and

Comment [m3]:Technical Solution

Technical character of the contribution to

-Must relate to a technical field

-Must be concerned with a technical proble

Not purely aesthetic creations but gives a t

solution:

a.Rubber tire design of tire is not entirely

aesthetic purpose but to provide more frict

b.Binding/Pasting of books

The benefit of having economy can be incid

only if it can be considered as a solution to

technical problem

Comment [m4]:

Prior art all information that has been dis

the public in any form before a given date

Examples:

a.Existing patents

b.Technological publications

c.Conference papers

d.Marketing brochures

e.Textbooks

f.Newspapers

g.Lectures

h.Demonstrations

i.Exhibitions

Prior use prior use which is not present in

Philippines even if widespread in a foreign c

cannot form part of the prior art if such use

disclosed in printed documents or in any ta

form

-May be constituted by producing, offering,

marketing or otherwise ex ploiting.

Examples:

-details of a demonstration of a manufactur

process in a factory

-the delivery and sale of a product may w el

information as regards the possibility of the

matter having made available to the public


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24.2. The whole contents of an application for a patent, utility model, or industrial design registration, published in

accordance with this Act, filed or effective in the Philippines, with a filing or priority date that is earlier than the filing or

priority date of the application: Provided, That the application which has validly claimed the filing date of an earlier

application under Section 31 of this Act, shall be prior art with effect as of the filing date of such earlier application:

Provided, further, That the applicant or the inventor identified in both applications are not one and the same. (Sec. 9,

R.A. No. 165a)

Priority Date Sec 20.6

20.6. "Priority date" means the date of filing of the foreign application for the same invention referred to in Section

31 of this Act. (n)

Inventive Step Sec. 26

SECTION 26. Inventive Step. An invention involves an inventive step if, having regard to prior art, it is not obvious to

a person skilled in the art at the time of the filing date or priority date of the application claiming the invention. (n)

Graham v. John Deere Co. of Kansas City (383 U.S. 1, 1966)

Facts:

Petitioners sued for infringement of a patent over the validity of a single patent on a "Clamp for vibrating Shank Plows."

It consists of a combination of old mechanical elements, for a device designed to absorb shock from plow shanks in

rocky soil to prevent damage to the plow. In 1955, the Fifth Circuit had held the patent valid under its rule that, when a

combination produces an "old result in a cheaper and otherwise more advantageous way," it is patentable. However,

the supreme court reversed the decision.

Held:

The 1952 Patent Act sets out the conditions of patentability in three sections. An analysis of the structure of these three

sections indicates that patentability is dependent upon three explicit conditions: novelty and utility, as articulated and

defined in 101 and 102, and nonobviousness, the new statutory formulation, as set out in 103. The pivotal section

around which the present controversy centers is 103. It provides:

" 103. Conditions for patentability; non-obvious subject matter"

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102

of this title, if the differences between the subject matter sought to be patented and the prior art are such that the

subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary

skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the

invention was made. "

This means that an invention which has been made, and which is new in the sense that the same thing has not been

made before, may still not be patentable if the difference between the new thing and what was known before is not

considered sufficiently great to warrant a patent. Congress intended to abolish "flash of creative genius."

The emphasis on non-obviousness is one of inquiry, not quality, and, as such, comports with the constitutional

strictures. While the ultimate question of patent validity is one of law, the 103 condition, which is but one of three

conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope andcontent of the prior art are to be determined; differences between the prior art and the claims at issue are to be

ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or

nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt

but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of

Comment [m5]:

Use on non-public property is not conside

use made

Examples:

-military weapons which are top secret

-use of an object in factories and barracks

Public availability as a subject matter:

1.A written description, i.e. a document sho

regarded as made available to the public if

relevant date, it was possible for

example: an undergraduate thesis sometim

cannot be considered as printed publication

because usually, the same is not catalogued

indexed or shelved.

2. Object if an object is sold unconditiona

member of the public, the buyer thereby ac

unlimited possession of any knowledge whbe obtained from the object

Example: laser pointer

What can be considered prior art:

a.Any publication ex. Scientific journals

b.

c.Public availability and exhibitions of produ

d.Oral disclosures

Enabling disclosures

-A patent application for the invention may

validly obtained if the disclosure is not ena

Science-fiction novel

-Prior art communication must enable an o

mechanic, without exercise of any ingenuit

special skill on his part, to construct and pu

improvement in successful operation.

Prior art search

Importance of conducting a search:a.To determine whether or not to file a pate

application and how best to write the appli

b.To avoid wasting time and money in furth

developing/trying to patent an invention

c.To speed up patent prosecution by allowi

to be tailored

d.To help agent/attorney broaden the desc

the invention to the fullest extent possible.

(Hire patent agent and do not just rely on in

searching)


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the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have

relevancy.

The Prior Art. Five prior patents indicating the state of the art were cited by the Patent Office in the prosecution of the

'798 application. Four of these patents, 10 other United States patents, and two prior-use spring-clamp arrangements

not of record in the '798 file wrapper were relied upon by respondents as revealing the prior art. The District Court and

the Court of Appeals found that the prior art "as a whole in one form or another contains all of the mechanical

elements of the 798 Patent." One of the prior-use clamp devices not before the Patent Examiner -- Glencoe -- was

found to have "all of the elements." Graham's '798 patent application contained 12 claims. All were rejected as not

distinguished from the Graham '811 patent. The inverted position of the shank was specifically rejected, as was the

bolting of the shank to the hinge plate. The Patent Office examiner found these to be "matters of design well within the

expected skill of the art and devoid of invention." Graham withdrew the original claims and substituted the two new

ones which are substantially those in issue here. His contention was that wear was reduced in patent '798 between the

shank and the heel or rear of the upper plate. [Footnote 11] He also emphasized several new features, the relevant one

here being that the bolt used to connect the hinge plate and shank maintained the upper face of the shank in

continuing and constant contact with the underface of the hinge plate.

The Obviousness of the Differences. Still we do not believe that the argument on which petitioners' contention is

bottomed supports the validity of the patent. The tendency of the shank to flex is the same in all cases. If free-flexing,

as petitioners now argue, is the crucial difference above the prior art, then it appears evident that the desired result

would be obtainable by not boxing the shank within the confines of the hinge. The only other effective place available

in the arrangement was to attach it below the hinge plate and run it through a stirrup or bracket that would not disturb

its flexing qualities. Certainly a person having ordinary skill in the prior art, given the fact that the flex in the shank could

be utilized more effectively if allowed to run the entire length of the shank, would immediately see that the thing to do

was what Graham did, i.e., invert the shank and the hinge plate.

Petitioners' argument basing validity on the free-flex theory, raised for the first time on appeal. No "flexing" argument

was raised in the Patent Office. Indeed, the trial judge specifically found that "flexing is not a claim of the patent in suit .

. . ," and would not permit interrogation as to flexing in the accused devices. Moreover, the clear testimony of

petitioners' experts shows that the flexing advantages flowing from the '798 arrangement are not, in fact, a significant

feature in the patent.

Cases mentioned:

Calmar, Inc. v. Cook Chemical Co. - Petitioner in Calmar is the manufacturer of a finger-operated sprayer with a "hold-

down" cap of the type commonly seen on grocers' shelves inserted in bottles of insecticides and other liquids prior to

shipment. Petitioner in Colgate-Palmolive is a purchaser of the sprayers, and uses them in the distribution of its

products. Each action sought a declaration of invalidity and noninfringement of a patent on similar sprayers issued to

Cook Chemical as assignee of Baxter I. Scoggin, Jr., the inventor. By cross-action, Cook Chemical claimed infringement.

The actions were consolidated for trial, and the patent was sustained by the District Court. The Court of Appeals

affirmed, but the supreme court reversed it.

Hotchkiss v. Greenwood - The patent involved a mere substitution of materials -- porcelain or clay for wood or metal in

doorknobs -- and the Court condemned it, holding: "[U]nless more ingenuity and skill . . . were required . . . than were

possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and

ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the

skillful mechanic, not that of the inventor." Hotchkiss, by positing the condition that a patentable invention evidence

more ingenuity and skill than that possessed by an ordinary mechanic acquainted with the business, merely

distinguished between new and useful innovations that were capable of sustaining a patent and those that were not.

The Hotchkiss test laid the cornerstone of the judicial evolution suggested by Jefferson and left to the courts by

Congress. The language in the case, and in those which followed, gave birth to "invention" as a word of legal art


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signifying patentable inventions. Yet, as this Court has observed, "the truth is, the word 'invention' cannot be defined in

such manner as to afford any substantial aid in determining whether a particular device involves an exercise of the

inventive faculty or not." Its use as a label brought about a large variety of opinions as to its meaning both in the PatentOffice, in the courts, and at the bar. The Hotchkiss formulation, however, lies not in any label, but in its functional

approach to questions of patentability. In practice, Hotchkiss has required a comparison between the subject matter of

the patent, or patent application, and the background skill of the calling. It has been from this comparison that

patentability was in each case determined.

Industrial Applicability Sec. 27

SECTION 27. Industrial Applicability. An invention that can be produced and used in any industry shall be industrially

applicable. (n)

Manzano vs. CA

Section 7 of RA No. 165, as amended, which is the law on patents, expressly provides -

Sec. 7. Inventions patentable. Any invention of a new and useful machine, manufactured product or substance, processor an improvement of any of the foregoing, shall be patentable.

Further, Sec. 55 of the same law provides -

Sec. 55. Design patents and patents for utility models. - (a) Any new, original and ornamental design for an article of

manufacture and (b) any new model of implements or tools or of any industrial product or of part of the same, which

does not possess the quality of invention, but which is of practical utility by reason of its form, configuration,

construction or composition, may be protected by the author thereof, the former by a patent for a design and the latter

by a patent for a utility model, in the same manner and subject to the same provisions and requirements as relate to

patents for inventions insofar as they are applicable except as otherwise herein provided.

Maguan vs. CA, 146 SCRA 107 (1986)

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." It is

undisputed that petitioner is a patent holder of powder puff. In a letter dated July 10, 1974, 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;

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. And on July 25, 1974, private

respondent assailed the validity of the patents involved and filed with the Philippine Patent Office petitions for

cancellation of petitioners patent. In view thereof, petitioner, on August 24, 1974, filed a complaint for damages withinjunction and preliminary injunction against private respondent. The trial court issued an Order granting the

preliminary injunction prayed for by petitioner.


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In challenging these Orders private respondent filed a petition for certiorari with the court of appeals but the latter

dismissed it. In said decision respondent court stated that in disposing of the petition it tackled only the issue of

whether the court a quo acted with grave abuse of discretion in issuing the challenged orders. It made clear thequestion of whether the patents have been infringed or not was not determined considering the court a quo has yet to

decide the case on the merits. Upon motion for reconsideration, the CA reversed its previous decision.

Issues:

(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) Yes. 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 (Sec. 42, R.A. 165). Defenses

in an action for infringement are provided for in Section 45 of the same law which in fact were availed of by private

respondent in this case. Then, as correctly stated by respondent Court of Appeals, this conclusion is reinforced by Sec.

46 of the same law which provides that if the Court "shall find the patent or any claim thereof invalid, the Director shall

on certification of the final judgment . . . issue an order cancelling the patent or the claims found invalid and shall

publish a notice thereof in the Official Gazette." Upon such certification, it is ministerial on the part of the patent office

to execute the judgment.

(2) Yes. 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 his patent, will be fatal to the validity of the patentwhen issued.

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.

Under American Law from which our Patent Law was derived, it is generally held that in patent cases a preliminary

injunction will not issue for patent infringement unless the validity of the patent is clear and beyond question. The

issuance of letters patent, standing alone, is not sufficient to support such drastic relief. In cases of infringement of

patent no preliminary injunction will be gr anted unless the patent is valid and infringed beyond question and the record

conclusively proves the defense is sham.

For failure to determine first the validity of the patents before aforesaid issuance of the writ, the trial court failed tosatisfy 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. Under the above established principles, it appears obvious that the trial court committed a

grave abuse of discretion which makes certiorari the appropriate remedy.


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(3) Yes. 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. The prerogative writ of certiorari may beapplied for by proper petition notwithstanding the existence of the regular remedy of an appeal in due cause when

among other reasons, the broader interests of justice so require or an ordinary appeal is not an adequate remedy.

Creser Precision Systems Inc. vs. Court of Appeals, G.R. No. 118708, Feb. 2, 1998

Facts:

Private respondent is a domestic corporation engaged in the manufacture, production, distribution and sale of military

armaments, munitions, airmunitions and other similar materials. On January 23, 1990, private respondent was granted

by the Bureau of Patents, Trademarks and Technology Transfer (BPTTT), a Letters Patent covering an aerial fuze.

Sometime in November 1993, private respondent, through its president, Mr. Gregory Floro, Jr., discovered that

petitioner submitted samples of its patented aerial fuze to the Armed Forces of the Philippines (AFP) for testing. He

learned that petitioner was claiming the aforesaid aerial fuze as its own and planning to bid and manufacture the samecommercially without license or authority from private respondent. To protect its right, private respondent on

December 3, 1993, sent a letter 5 to petitioner advising it of its existing patent and its rights thereunder, warning

petitioner of a possible court action and/or application for injunction, should it proceed with the scheduled testing by

the military on December 7, 1993.

In response to private respondent's demand, petitioner filed on December 8, 1993 a complaint 6 for injunction and

damages arising from the alleged infringement before the Regional Trial Court of Quezon City, Branch 88. The

complaint alleged, among others: that petitioner is the first, true and actual inventor of an aerial fuze denominated as

"Fuze, PDR 77 CB4" which it developed as early as December 1981 under the Self-Reliance Defense Posture Program

(SRDP) of the AFP; that sometime in 1986, petitioner began supplying the AFP with the said aerial fuze; that private

respondent's aerial fuze is identical in every respect to the petitioner's fuze; and that the only difference between the

two fuzes are miniscule and merely cosmetic in nature.

Private respondent submitted its memorandum 7 alleging that petitioner has no cause of action to file a complaint for

infringement against it since it has no patent for the aerial fuze which it claims to have invented; that petitioner's

available remedy is to file a petit ion for cancellation of patent before the Bureau of Patents. It is petitioner's contention

that it can file, under Section 42 of the Patent Law (R.A. 165), an action for infringement not as a patentee but as an

entity in possession of a right, title or interest in and to the patented invention. It advances the theory that while the

absence of a patent may prevent one from lawfully suing another for infringement of said patent, such absence does

not bar the first true and actual inventor of the patented invention from suing another who was granted a patent in a

suit for declaratory or injunctive relief recognized under American patent laws. This remedy, petitioner points out, may

be likened to a civil action for infringement under Section 42 of the Philippine Patent Law.

Issue:

Whether or not the petitioner has cause of action against private respondent

Held:

Section 42 of R.A. 165, otherwise known as the Patent Law, explicitly provides:

SEC. 42. Civil action for infringement. Any patentee, or anyone possessing any right, title or interest in and to the

patented invention, whose rights have been infringed, may bring a civil action before the proper Court of First Instance


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(now Regional Trial court), to recover from the infringer damages sustained by reason of the infringement and to

secure an injunction for the protection of his right. . .

Under the aforequoted law, only the patentee or his successors-in-interest may file an action for infringement. The

phrase "anyone possessing any right, title or interest in and to the patented invention" upon which petitioner maintains

its present suit, refers only to the patentee's successors-in-interest, assignees or grantees since actions for infringement

of patent may be brought in the name of the person or persons interested, whether as patentee, assignees, or as

grantees, of the exclusive right. 12 Moreover, there can be no infringement of a patent until a patent has been issued,

since whatever right one has to the invention covered by the patent arises alone from the grant of patent. 13 In short, a

person or entity who has not been granted letters patent over an invention and has not acquired any right or title

thereto either as assignee or as licensee, has no cause of action for infringement because the right to maintain an

infringement suit depends on the existence of the patent.

Petitioner admits it has no patent over its aerial fuze. Therefore, it has no legal basis or cause of action to institute the

petition for injunction and damages arising from the alleged infringement by private respondent. While petitioner

claims to be the first inventor of the aerial fuze, still it has no right of property over the same upon which it can

maintain a suit unless it obtains a patent therefor. Under American jurisprudence, an inventor has no common-law

right to a monopoly of his invention. He has the right to make, use and vend his own invention, but if he voluntarily

discloses it, such as by offering it for sale, the world is free to copy and use it with impunity. A patent, however, gives

the inventor the right to exclude all others. As a patentee, he has the exclusive right of making, using or selling the

invention.

Further, the remedy of declaratory judgment or injunctive suit on patent invalidity relied upon by petitioner cannot be

likened to the civil action for infringement under Section 42 of the Patent Law. The reason for this is that the said

remedy is available only to the patent holder or his successors-in-interest. Thus, anyone who has no patent over an

invention but claims to have a right or interest thereto can not file an action for declaratory judgment or injunctive suit

which is not recognized in this jurisdiction. Said person, however, is not left without any remedy. He can, under Section

28 of the aforementioned law, file a petition for cancellation of the patent within three (3) years from the publication of

said patent with the Director of Patents and raise as ground therefor that the person to whom the patent was issued is

not the true and actual inventor. Hence, petitioner's remedy is not to file an action for injunction or infringement but to

file a petition for cancellation of private respondent's patent. Petitioner however failed to do so. As such, it can not now

assail or impugn the validity of the private respondent's letters patent by claiming that it is the true and actual inventorof the aerial fuze.

Thus, as correctly ruled by the respondent Court of Appeals in its assailed decision: "since the petitioner (private

respondent herein) is the patentee of the disputed invention embraced by letters of patent UM No. 6938 issued to it on

January 23, 1990 by the Bureau of Patents, it has in its favor not only the presumption of validity of its patent, but that

of a legal and factual first and true inventor of the invention."

b. Non-Patentable Inventions Sec. 22

SECTION 22. Non-Patentable Inventions. The following shall be excluded from patent protection:

22.1. Discoveries, scientific theories and mathematical methods;

22.2. Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for

computers;

22.3. Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on

the human or animal body. This provision shall not apply to products and composition for use in any of these methods;


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22.4. Plant varieties or animal breeds or essentially biological process for the production of plants or animals. This

provision shall not apply to micro-organisms and non-biological and microbiological processes.

Provisions under this subsection shall not preclude Congress to consider the enactment of a law providing sui generis

protection of plant varieties and animal breeds and a system of community intellectual rights protection:

22.5. Aesthetic creations; and

22.6. Anything which is contrary to publ ic order or morality. (Sec. 8, R.A. No. 165a)

c. Novelty and Non-Prejudicial Disclosure Sec. 25

SECTION 25. Non-Prejudicial Disclosure. 25.1. The disclosure of information contained in the application during the

twelve (12) months preceding the filing date or the priority date of the application shall not prejudice the applicant on

the ground of lack of novelty if such disclosure was made by:

(a) The inventor;

(b) A patent office and the information was contained (a) in another application filed by the inventor and should nothave been disclosed by the office, or (b) in an application filed without the knowledge or consent of the inventor by a

third party which obtained the information directly or indirectly from the inventor; or

(c) A third party which obtained the information directly or indirectly from the inventor.

25.2. For the purposes of Subsection 25.1, "inventor" also means any person who, at the filing date of application, had

the right to the patent. (n)

3. Right to Patent

a. Right to Patent Sec. 28

SECTION 28. Right to a Patent. The right to a patent belongs to the inventor, his heirs, or assigns. When two (2) or

more persons have jointly made an invention, the right to a patent shall belong to them jointly. (Sec. 10, R.A. No. 165a)

b. First to File rule Sec. 29

SECTION 29. First to File Rule. If two (2) or more persons have made the invention separately and independently of

each other, the right to the patent shall belong to the person who filed an application for such invention, or where two

or more applications are filed for the same invention, to the applicant who has the earliest filing date or, the earliest

priority date. (3rd sentence, Sec. 10, R.A. No. 165a)

c. Inventions Created Pursuant to Commission Sec. 30

SECTION 30. Inventions Created Pursuant to a Commission. 30.1. The person who commissions the work shall own

the patent, unless otherwise provided in the contract.

30.2. In case the employee made the invention in the course of his employment contract, the patent shall belong to:

(a) The employee, if the inventive activity is not a part of his regular duties even if the employee uses the time, facilities

and materials of the employer.

(b) The employer, if the invention is the result of the performance of his regularly-assigned duties, unless there is an

agreement, express or implied, to the contrary. (n)


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d. Right of Priority Sec. 31

SECTION 31. Right of Priority. An application for patent filed by any person who has previously applied for the same

invention in another country which by treaty, convention, or law affords similar privileges to Filipino citizens, shall be

considered as filed as of the date of filing the foreign application: Provided, That: (a) the local application expressly

claims priority; (b) it is filed within twelve (12) months from the date the earliest foreign application was filed; and (c) a

certified copy of the foreign application together with an English translation is filed within six (6) months from the date

of filing in the Philippines. (Sec. 15, R.A. No. 165a)

4. Patent Application

a. Application Sec. 32; 32.2; 33

SECTION 32. The Application. 32.1. The patent application shall be in Filipino or English and shall contain the

following:

(a) A request for the grant of a patent;

(b) A description of the invention;

(c) Drawings necessary for the understanding of the invention;

(d) One or more claims; and

(e) An abstract.

32.2. No patent may be granted unless the application identifies the inventor. If the applicant is not the inventor, the

Office may require him to submit said authority. (Sec. 13, R.A. No. 165a) cdtai

SECTION 33. Appointment of Agent or Representative. An applicant who is not a resident of the Philippines must

appoint and maintain a resident agent or representative in the Philippines upon whom notice or process for judicial or

administrative procedure relating to the application for patent or the patent may be served. (Sec. 11, R.A. No. 165a)

b. Disclosure and Description of Invention Sec. 35

SECTION 35. Disclosure and Description of the Invention. 35.1. Disclosure. The application shall disclose the

invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Where the

application concerns a microbiological process or the product thereof and involves the use of a micro-organism which

cannot be sufficiently disclosed in the application in such a way as to enable the invention to be carried out by a person

skilled in the art, and such material is not available to the public, the application shall be supplemented by a deposit of

such material with an international depository institution.

35.2. Description. The Regulations shall prescribe the contents of the description and the order of presentation. (Sec.

14, R.A. No. 165a)

c. Unity of Invention Sec. 38

SECTION 38. Unity of Invention. 38.1. The application shall relate to one invention only or to a group of inventions

forming a single general inventive concept.

38.2. If several independent inventions which do not form a single general inventive concept are claimed in one

application, the Director may require that the application be restricted to a single invention. A later application filed for

an invention divided out shall be considered as having been filed on the same day as the first application: Provided,

That the later application is filed within four (4) months after the requirement to divide becomes final, or within such


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additional time, not exceeding four (4) months, as may be granted: Provided, further, That each divisional application

shall not go beyond the disclosure in the initial application.

38.3. The fact that a patent has been granted on an application that did not comply with the requirement of unity of

invention shall not be a ground to cancel the patent. (Sec. 17, R.A. No. 165a)

5. Procedure for Grant of Patent

a. Filing Date Requirements Sec. 40

SECTION 40. Filing Date Requirements. 40.1. The filing date of a patent application shall be the date of receipt by the

Office of at least the following elements:

(a) An express or implicit indication that a Philippine patent is sought;

(b) Information identifying the applicant; and

(c) Description of the invention and one (1) or more claims in Filipino or English.

40.2. If any of these elements is not submitted within the period set by the Regulations, the application shall be

considered withdrawn. (n)

b. Examination Process - Sec. 42-48

SECTION 42. Formality Examination. 42.1. After the patent application has been accorded a filing date and the

required fees have been paid on time in accordance with the Regulations, the applicant shall comply with the formal

requirements specified by Section 32 and the Regulations within the prescribed period, otherwise the application shall

be considered withdrawn.

42.2. The Regulations shall determine the procedure for the re-examination and revival of an application as well as the

appeal to the Director of Patents from any final action by the examiner. (Sec. 16, R.A. No. 165a)

SECTION 43. Classification and Search. An application that has complied with the formal requirements shall be

classified and a search conducted to determine the prior art. (n)

SECTION 44. Publication of Patent Application. 44.1. The patent application shall be published in the IPO Gazette

together with a search document established by or on behalf of the Office citing any documents that reflect prior art,

after the expiration of eighteen (18) months from the filing date or priority date.

44.2. After publication of a patent application, any interested party may inspect the application documents filed with

the Office.

44.3. The Director General, subject to the approval of the Secretary of Trade and Industry, may prohibit or restrict the

publication of an application, if in his opinion, to do so would be prejudicial to the national security and interests of the

Republic of the Philippines. (n)

SECTION 45. Confidentiality Before Publication. A patent application, which has not yet been published, and all

related documents, shall not be made available for inspection without the consent of the applicant. (n)

SECTION 46. Rights Conferred by a Patent Application After Publication. The applicant shall have all the rights of apatentee under Section 76 against any person who, without his authorization, exercised any of the rights conferred

under Section 71 of this Act in relation to the invention claimed in the published patent application, as if a patent had

been granted for that invention: Provided, That the said person had:

Comment [m6]:

Filing date - An application for patent in th

of Patent


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46.1. Actual knowledge that the invention that he was using was the subject matter of a published application; or

46.2. Received written notice that the invention that he was using was the subject matter of a published application

being identified in the said notice by its serial number: Provided, That the action may not be filed until after the grant of

a patent on the published application and within four (4) years from the commission of the acts complained of. (n)

SECTION 47. Observation by Third Parties. Following the publication of the patent application, any person may

present observations in writing concerning the patentability of the invention. Such observations shall be communicated

to the applicant who may comment on them. The Office shall acknowledge and put such observations and comment in

the file of the application to which it relates. (n)

SECTION 48. Request for Substantive Examination. 48.1. The application shall be deemed withdrawn unless within six

(6) months from the date of publication under Section 41, a written request to determine whether a patent application

meets the requirements of Sections 21 to 27 and Sections 32 to 39 and the fees have been paid on time.

48.2. Withdrawal of the request for examination shall be irrevocable and shall not authorize the refund of any fee. (n)

c. Publication and Search Sec. 44.1

SECTION 44. Publication of Patent Application. 44.1. The patent application shall be published in the IPO Gazette

together with a search document established by or on behalf of the Office citing any documents that reflect prior art,

after the expiration of eighteen (18) months from the filing date or priority date.

d. Confidentiality Before Publication Sec. 45

SECTION 45. Confidentiality Before Publication. A patent application, which has not yet been published, and all

related documents, shall not be made available for inspection without the consent of the applicant. (n)

e. Rights Conferred by Patent Application After Publication Sec. 46

SECTION 46. Rights Conferred by a Patent Application After Publication. The applicant shall have all the rights of a

patentee under Section 76 against any person who, without his authorization, exercised any of the rights conferred

under Section 71 of this Act in relation to the invention claimed in the published patent application, as if a patent had

been granted for that invention: Provided, That the said person had:

46.1. Actual knowledge that the invention that he was using was the subject matter of a published application; or

46.2. Received written notice that the invention that he was using was the subject matter of a published application

being identified in the said notice by its serial number: Provided, That the action may not be filed until after the grant of

a patent on the published application and within four (4) years from the commission of the acts complained of. (n)

f. Grant of Patent Sec. 50.3; 52.1

50.3. A patent shall take effect on the date of the publication of the grant of the patent in the IPO Gazette. (Sec. 18, R.A.

No. 165a)

SECTION 52. Publication Upon Grant of Patent. 52.1. The grant of the patent together with other related information

shall be published in the IPO Gazette within the time prescribed by the Regulations.

Manzano vs. CA, 278 SCRA 688

An invention must possess the essential elements of novelty, originality and precedence, and for the patentee to be

entitled to the protection the invention must be new to the world.


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g. Annual Fees Sec. 55.1; 55.2

SECTION 55. Annual Fees. 55.1. To maintain the patent application or patent, an annual fee shall be paid upon the

expiration of four (4) years from the date the application was published pursuant to Section 44 hereof, and on each

subsequent anniversary of such date. Payment may be made within three (3) months before the due date. The

obligation to pay the annual fees shall terminate should the application be withdrawn, refused, or cancelled.

55.2. If the annual fee is not paid, the patent application shall be deemed withdrawn or the patent considered as lapsed

from the day following the expiration of the period within which the annual fees were due. A notice that the application

is deemed withdrawn or the lapse of a patent for non-payment of any annual fee shall be published in the IPO Gazette

and the lapse shall be recorded in the Register of the Office.

6. Cancellation of Patents; Substitution of Patentee

a. Cancellation of Patents Sec. 61.1; 61. 2

SECTION 61. Cancellation of Patents. 61.1. Any interested person may, upon payment of the r equired fee, petition to

cancel the patent or any claim thereof, or parts of the claim, on any of the following grounds:

(a) That what is claimed as the invention is not new or patentable;

(b) That the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out

by any person skilled in the art; or

(c) That the patent is contrary to public order or morality.

61.2. Where the grounds for cancellation relate to some of the claims or parts of the claim, cancellation may be

effected to such extent only. (Secs. 28 and 29, R.A. No. 165a)

b. Effect of Cancellation Sec. 66

SECTION 66. Effect of Cancellation of Patent or Claim. The rights conferred by the patent or any specified claim or

claims cancelled shall terminate. Notice of the cancellation shall be published in the IPO Gazette. Unless restrained by

the Director General, the decision or order to cancel by Director of Legal Affairs shall be immediately executory evenpending appeal. (Sec. 32, R.A. No. 165a)

7. Remedies of Person with Patent

a. Application by Persons Not Having Right to Patent- Sec. 67

SECTION 67. Patent Application by Persons Not Having the Right to a Patent. 67.1. If a person referred to in Section

29 other than the applicant, is declared by final court order or decision as having the right to the patent, such person

may, within three (3) months after the decision has become final:

(a) Prosecute the application as his own application in place of the applicant;

(b) File a new patent application in respect of the same invention;

(c) Request that the application be refused; or

(d) Seek cancellation of the patent, if one has already been issued.

67.2. The provisions of Subsection 38.2 shall apply mutatis mutandis to a new application filed under Subsection

67.1(b). (n)


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b. Remedies of True and Actual Inventor Sec. 68; 70

SECTION 68. Remedies of the True and Actual Inventor. If a person, who was deprived of the patent without his

consent or through fraud is declared by final court order or decision to be the true and actual inventor, the court shall

order for his substitution as patentee, or at the option of the true inventor, cancel the patent, and award actual and

other damages in his favor if warranted by the circumstances. (Sec. 33, R.A. No. 165a)

SECTION 70. Time to File Action in Court. The actions indicated in Sections 67 and 68 shall be filed within one (1) year

from the date of publication made in accordance with Sections 44 and 51, respectively. (n)

Creser Precision Systems vs. CA, 286 SCRA 13 (1998)

Further, the remedy of declaratory judgment or injunctive suit on patent invalidity relied upon by petitioner cannot be

likened to the civil action for infringement under Section 42 of the Patent Law. The reason for this is that the said

remedy is available only to the patent holder or his successors-in-interest. Thus, anyone who has no patent over an

invention but claims to have a right or interest thereto can not file an action for declaratory judgment or injunctive suit

which is not recognized in this jurisdiction. Said person, however, is not left without any remedy. He can, under Section

28 of the aforementioned law, file a petition for cancellation of the patent within three (3) years from the publication ofsaid patent with the Director of Patents and raise as ground therefor that the person to whom the patent was issued is

not the true and actual inventor. Hence, petitioner's remedy is not to file an action for injunction or infringement but to

file a petition for cancellation of private respondent's patent. Petitioner however failed to do so. As such, it can not now

assail or impugn the validity of the private respondent's letters patent by claiming that it is the true and actual inventor

of the aerial fuze.

8. Rights of Patentees and Infringement of Patents

a. Rights Conferred by Patent Sec. 71; 71.2 and 103.2

SECTION 71. Rights Conferred by Patent. 71.1. A patent shall confer on its owner the following exclusive rights:

(a) Where the subject matter of a patent is a product, to restrain, prohibit and prevent any unauthorized person

or entity from making, using, offering for sale, selling or importing that product;

(b) Where the subject matter of a patent is a process, to restrain, prevent or prohibit any unauthorized person or

entity from using the process, and from manufacturing, dealing in, using, selling or offering for sale, or importing any

product obtained directly or indirectly from such process.

71.2. Patent owners shall also have the right to assign, or transfer by succession the patent, and to conclude

licensing contracts for the same. (Sec. 37, R.A. No. 165a)

103.2. Inventions and any right, title or interest in and to patents and inventions covered thereby, may be assigned or

transmitted by inheritance or bequest or may be the subject of a license contract. (Sec. 50, R.A. No. 165a)

Form of Assignment Sec. 104

SECTION 104. Assignment of Inventions. An assignment may be of the entire right, title or interest in and to the

patent and the invention covered thereby, or of an undivided share of the entire patent and invention, in which event

the parties become joint owners thereof. An assignment may be limited to a specified territory. (Sec. 51, R.A. No. 165)


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Recording Sec. 106.2

106.2. Such instruments shall be void as against any subsequent purchaser or mortgagee for valuable consideration and

without notice, unless, it is so recorded in the Office, within three (3) months from the date of said instrument, or prior

to the subsequent purchase or mortgage. (Sec. 53, R.A. No. 165a)

Rights of Joint Owners Sec. 107

SECTION 107. Rights of Joint Owners. If two (2) or more persons jointly own a patent and the invention covered

thereby, either by the issuance of the patent in their joint favor or by reason of the assignment of an undivided share in

the patent and invention or by reason of the succession in title to such share, each of the joint owners shall be entitled

to personally make, use, sell, or import the invention for his own profit: Provided, however, That neither of the joint

owners shall be entitled to grant licenses or to assign his right, title or interest or part thereof without the consent of

the other owner or owners, or without proportionally dividing the proceeds with such other owner or owners. (Sec. 54,

R.A. No. 165)

Documents

IPL Notes for Finals