PATENTS: DIGESTS

MANZANO v CA 278 SCRA 688 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 !nowled"e and one of the purposes of the patent system is to encoura"e dissemination of information concernin" discoveries and inventions #A$TS: An"elita %an&ano filed PP' an action for the cancellation of (etters Patent for a "as burner re"istered in the name of respondent %elecia %adolaria who subse)uently assi"ned the letters patent to New *nited #oundry and %anufacturin" $orporation +*NITED #'*ND,-. for brevity/ Petitioner alle"ed that +a/ the utility model covered by the letters patent. in this case. an (PG "as burner. was not inventive. new or useful0 +b/ the specification of the letters patent did not comply with the re)uirements of Sec 12. ,A No 134. as amended0 +c/ respondent %elecia %adolaria was not the ori"inal. true and actual inventor nor did she derive her ri"hts from the ori"inal. true and actual inventor of the utility model covered by the letters patent0 and. +d/ the letters patent was secured by means of fraud or misrepresentation Testifyin" for herself petitioner narrated that her husband 'n" 5un Tua wor!ed as a helper in the *NITED #'*ND,- where respondent %elecia %adolaria used to be affiliated with from 1634 to 16780 that 'n" helped in the castin" of an (PG burner which was the same utility model of a burner and that after her husband9s separation from the shop she or"ani&ed 5esco %etal %anufacturin" +5ES$' %ETA(. for brevity/ for the castin" of (PG burners one of which had the confi"uration. form and component parts similar to those bein" manufactured by *NITED #'*ND,Petitioner presented two +:/ other witnesses. namely. her husband 'n" 5un Tua and #idel #rancisco Private respondent. on the other hand. presented only one witness. ,olando %adolaria. who testified. amon" others. that he was the General Supervisor of the *NITED #'*ND,Director of Patents $esar $ Sandie"o denied the petition for cancellation and holdin" that the evidence of petitioner was not able to establish convincin"ly that the patented utility model of private respondent was anticipated Petitioner elevated the decision of the Director of Patents to the $ourt of Appeals which affirmed the decision of the Director of Patents ;ence. this petition for review on certiorari. ISS*E: <hether the dismissal is proper where the patent applied for has no substantial difference between the model to be patented and those sold by petitioner ;E(D: The element of novelty is an essential re)uisite of the patentability of an invention or discovery If a device or process has been !nown or used by others prior to its invention or discovery by the applicant. an application for a patent therefor should be denied0 and if the application has been "ranted. the court. in a =udicial proceedin" in which the validity of the patent is drawn in )uestion. will hold it void and ineffective It has been repeatedly held that an invention must possess the essential elements of novelty. ori"inality and precedence. and for the patentee to be entitled to the protection the invention must be new to the world ;owever. The validity of the patent issued by the Philippine Patent 'ffice in favor of private respondent and the )uestion over the inventiveness. novelty and usefulness of the improved model of the (PG burner are matters which are better determined by the Patent 'ffice The technical staff of the Philippine Patent 'ffice composed of e>perts in their field has by the issuance of the patent in )uestion accepted private respondent9s model of "as burner as a discovery There is a presumption that the 'ffice 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 rule is settled that the findin"s of fact of the Director of Patents. especially when affirmed by the $ourt of Appeals. are conclusive on this $ourt when supported by substantial evidence Petitioner has failed to show compellin" "rounds for a reversal of the findin"s and conclusions of the Patent 'ffice and the $ourt of Appeals Petition DIS%ISSED MAGUAN v CA 146 SCRA 107 #A$TS: Petitioner is doin" business under the firm name and style of S<AN %AN*#A$T*,ING? while private respondent is li!ewise doin" business under the firm name and style of ?S*SANA (*$;AN P'<DE, P*## %AN*#A$T*,ING @ And holder petitioner informed private respondent that the powder puffs the latter is manufacturin" and sellin" to various enterprises particularly those in the cosmetics industry. resemble Identical or substantially Identical powder puffs of which the former is a patent holder under ,e"istration $ertification Nos E>tension *%A186. E>tension *%A118 and *tility %odel No 11B20 petitioner e>plained such production and sale constitute infrin"ement of said patents and therefore its immediate discontinuance is demanded. otherwise it will be compelled to ta!e =udicial action Private respondent replied statin" that her products are different and countered that petitionerCs 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 ri"hts derived from such author Petitioner filed a complaint for dama"es with in=unction and preliminary in=unction a"ainst private respondent with the then $ourt of #irst Instance of ,i&al The trial court issued an 'rder "rantin" the preliminary in=unction prayed for by petitioner $onse)uently. the correspondin" writ was subse)uently issued In challen"in" these 'rders private respondent filed a petition for certiorari with the respondent court but was denied ;ence this petition ISS*E: +1/ <hether or not in an action for infrin"ement the $ourt a quo had =urisdiction to determine the invalidity of the patents at issue which invalidity was still pendin" consideration in the patent office +:/ <hether or not the $ourt a quo committed "rave abuse of discretion in the issuance of a writ of preliminary in=unction +D/ <hether or not certiorari is the proper remedy ;E(D: 1/ The first issue has been laid to rest in a number of cases where the $ourt ruled that ?<hen a patent is sou"ht to be

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enforced. the )uestions of invention. novelty or prior use. and each of them. are open to =udicial e>amination ? *nder the present Patent (aw. there is even less reason to doubt that the trial court has =urisdiction to declare the patents in )uestion invalid A patentee shall have the e>clusive ri"ht to ma!e. use and sell the patented article or product and the ma!in". usin". or sellin" by any person without the authori&ation of the patentee constitutes infrin"ement of the patent +Sec D7. , A 134/ Any patentee whose ri"hts have been infrin"ed upon may brin" an action before the proper $#I now +,T$/ and to secure an in=unction for the protection of his ri"hts :/ The burden of proof to substantiate a char"e of infrin"ement is with the plaintiff 5ut 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 $ommissioner +now Director/ of Patent in "rantin" the patent is presumed to be correct The burden of "oin" forward with the evidence +burden of evidence/ then shifts to the defendant to overcome by competent evidence this le"al presumption The )uestion then in the instant case is whether or not the evidence introduced by private respondent herein is sufficient to overcome said presumption After a careful review of the evidence consistin" of 32 e>hibits and oral testimonies of five witnesses presented by private respondents before the $ourt of #irst Instance before the 'rder of preliminary in=unction was issued as well as those presented by the petitioner. respondent $ourt of Appeals was satisfied that there is a prima facie showin" of a fair )uestion of invalidity of petitionerCs patents on the "round of lac! of novelty As pointed out by said appellate court said evidence appeared not to have been considered at all by the court a quo for alle"ed lac! of =urisdiction. on the mista!en notion that such )uestion in within the e>clusive =urisdiction of the patent office It has been repeatedly held that an invention must possess the essential elements of novelty . ori"inality and precedence and for the patentee to be entitled to protection. the invention must be new to the world Accordin"ly. a sin"le instance of public use of the invention by a patentee for more than two years +now for more than one year only under Sec 6 of the Patent (aw/ before the date of his application for his patent. will be fatal to. the validity of the patent when issued It will be noted that the validity of petitionerCs patents is in )uestion for want of novelty Private respondent contends that powder puffs Identical in appearance with that covered by petitionerCs patents e>isted and were publicly !nown and used as early as 163D lon" before petitioner was issued the patents in )uestion +(ist of E>hibits. ,ollo. pp 162A166/ As correctly observed by respondent $ourt of Appeals. ?since sufficient proofs have been introduced in evidence showin" a fair )uestion of the invalidity of the patents issued for such models. it is but ri"ht that the evidence be loo!ed into. evaluated and determined on the merits so that the matter of whether the patents issued were in fact valid or not may be resolved ? +,ollo. pp :B3A:B7/ All these notwithstandin". the trial court nonetheless issued the writ of preliminary in=unction which under the circumstances should be denied #or failure to determine first the validity of the patents before aforesaid issuance of the writ. the trial court failed to satisfy the two re)uisites necessary if an in=unction is to issue. namely: the e>istence of the ri"ht to be protected and the violation of said ri"ht +5uayan $attle $o . Inc v Fuintillan. 1:B S$,A :73/ *nder the above established principles. it appears obvious that the trial court committed a "rave abuse of discretion which ma!es certiorari the appropriate remedy As found by respondent $ourt of Appeals. the in=unctive order of the trial court is of so "eneral a tenor that petitioner may be totally barred from the sale of any !ind of powder puff *nder the circumstances. respondent appellate court is of the view that ordinary appeal is obviously inade)uate VARGAS v YAPTICO & CO 40 PHIL 195 #A$TS: An"el Gar"as. a farmer ac)uainted with local conditions and alive to the commercial possibilities. too! it upon himself to produce. with the native plow as the model. an improved. ad=ustable plow ;e made application for a *nited States patent to cover his soAcalled invention The letters patent were issued by the *nited States Patent 'ffice in favor of Gar"as Acertified copy of the patent was filed in the Division of Patents. $opyri"hts. and Trademar!s of the E>ecutive 5ureau. Government of the Philippine Islands The patent and its re"istry was also published in the newspaper. El Tiempo Since 1618. Gar"as has en"a"ed in the manufacture of these plows in the city of Iloilo. Philippine Islands 'n the plows there was first stamped the words ?Patent Applied #or.? later after the patent had been "ranted. chan"ed to ?Patented %ar 1:. 161: ? Ninety per cent of the plows in use in the Gisayas +Iloilo and vicinity/ are said to be Gar"as plows Durin" this same period. the firm of # % -aptico H $o +(td /. was en"a"ed in the foundry business in the $ity of Iloilo It openly held itself out as a manufacturer of plow parts It has in fact produced points. shares. shoes. and heel pieces in a considerable amount adapted to replace wornA out parts of the Gar"as plow Such was the e>istin" situation when. in the early part of 161B. the owner of the patent. and thus the proper party to institute =udicial proceedin"s. be"an action in the $ourt of #irst Instance of Iloilo to en=oin the alle"ed infrin"ement of * S Patent No 18:8:D: by the defendant # % -aptico H $o +(td /. and to recover the dama"es suffered by reason of this infrin"ement The court issued the preliminary in=unction as prayed for The defendant. in addition to a "eneral denial. alle"ed. as special defenses. that the patent lac!ed novelty or invention. that there was no priority of ideas or device in the principle and construction of the plow. and that the plow. whose manufacture it was sou"ht to have en=oined by the plaintiff. had already been in public use for more than two years before the application of the plaintiff for his patent The parties subse)uently entered into a stipulation that the court should first resolve the )uestion of whether or not there had been an infraction of the patent. reservin" the resultant )uestion of dama"es for later decision After the ta!in" of evidence. includin" the presentation of e>hibits. the trial =ud"e. the ;onorable Antonio Gillareal. in a very e>haustive and learned decision. rendered =ud"ment in favor of the defendant and a"ainst the plaintiff. declarin" null and without effect the patent in )uestion and dismissin" the suit with costs a"ainst the plaintiff The preliminary in=unction theretofore issued was dissolved #rom this =ud"ment the plaintiff has appealed ISS*E: +1/ The =ud"ment of the trial court in findin" the patent "ranted plaintiff void for lac! of novelty and invention should be affirmed0

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+:/ The patent "ranted plaintiff is void from the public use of his plow for over two years prior to his application for a patent. and +D/ If the patent is valid. there has been no contributory infrin"ement by defendant ;E(D: +1/ <hen a patent is sou"ht to be enforced. ?the )uestion of invention. novelty. or prior use. and each of them. are open to =udicial e>amination ? The burden of proof to substantiate a char"e of infrin"ement is with the plaintiff <here. however. the plaintiff introduces the patent in evidence. if it is in due form. it affords a prima facie presumption of its correctness and validity The decision of the $ommissioner of Patents in "rantin" the patent is always presumed to be correct The burden then shifts to the defendant to overcome by competent evidence this le"al presumption <ith all due respect. therefore. for the critical and e>pert e>amination of the invention by the *nited States Patent 'ffice. the )uestion of the validity of the patent is one for =udicial determination. and since a patent has been submitted. the e>act )uestion is whether the defendant has assumed the burden of proof as to anyone of his defenses As herein before stated. the defendant relies on three special defenses 'ne such defense. on which the =ud"ment of the lower court is principally "rounded. and to which appellant devotes the ma=or portion of his vi"orous ar"ument. concerns the element of novelty. invention. or discovery. that "ives e>istence to the ri"ht to a patent 'n this point the trial court reached the conclusion that ?the patented plow of the plaintiff. E>hibit D. is not different from the native plow. E>hibit :. e>cept in the material. in the form. in the wei"ht and the "rade of the result. the said differences "ivin" it neither a new function nor a new result distinct from the function and the result obtained from the native plow0 conse)uently. its production does not presuppose the e>ercise of the inventive faculty but merely of mechanical s!ill. which does not "ive a ri"ht to a patent of an invention under the provisions of the Patent (aw ? In thus findin". the court may have been ri"ht. since the Gar"as plow does not appear to be such a ?combination? as contains a novel assembla"e of parts e>hibitin" invention A second line of defense relates to the fact that defendant has never made a complete Gar"as plow. but only points. shares. shoes. and heel pieces. to serve as repairs DefendantCs contention is. that in common with other foundries. he has for years cast lar"e numbers of plow points and shares suitable for use either on the native wooden plow. or on the Gar"as plow A difference has lon" been reco"ni&ed between repairin" and reconstructin" a machine If. for instance. partial in=uries. whether they occur from accident or from wear and tear. to a machine for a"ricultural purposes. are made this is only reAfittin" the machine for use. and thus permissible Even under the more ri"orous doctrine of (eeds H $atlin $o vs Gictor Tal!in" %achine $o +I1686J. :1D * S . D:4/. it may be possible that all the defendant has done is to manufacture and sell isolated parts to be used to replace wornAout parts The third defense is. that under the provisions of the statute. an inventorCs creation must not have been in public use or on sale in the *nited States +and the Philippine Islands/ for more than two years prior to his application <ithout. therefore. committin" ourselves as to the first two defenses. we propose to base our decision on the one =ust su""ested as more easily disposin" of the case +See :8 , $ ( . 1128A112: / <e do so with full consciousness of the doubt which arose in the mind of the trial court. but with the belief that since it has been shown that the invention was used in public at Iloilo by others than Gar"as. the inventor. more than two years before the application for the patent. the patent is invalid Althou"h we have spent some time in arrivin" at this point. yet havin" reached it. the )uestion in the case is sin"le and can be brou"ht to a narrow compass *nder the En"lish Statute of %onopolies +:1 Kac $h . D/. and under the *nited States Patent Act of #ebruary :1. 176D. later amended to be as herein )uoted. it was always the rule. as stated by (ord $o!e. Kustice Story and other authorities. that to entitle a man to a patent. the invention must be new to the world As said by the *nited States Supreme $ourt. ?it has been repeatedly held by this court that a single instance of public use of the invention by a patentee for more than two years before the date of his application for his patent will be fatal to the validity of the patent when issued ? 'n the facts. we thin! the testimony shows such a public use of the Gar"as plow as to render the patent invalid Nicolas ,oces. a farmer. testified that he had bou"ht twenty Gar"as plows. of which E>hibit 4 was one. in December. 16870 and E>hibit 4. the court found. was a plow completely identical with that for which the plaintiff had received a patent The minor e>ception. and this in itself corroborative of ,ocesC testimony. is that the handle of plow E>hibit 4 is mar!ed with the letters ?A G? and not with the words ?Patent Applied #or? or ?Patented %ar 1:. 161: ? Salvador (i&arra"a. a cler! in a business house. testified that he had received plows similar to E>hibits D. 4. and 2. for sale on commission on %ay. 168B. from 5onifacio Araneta. partner of Gar"as in the plow business Lo Pao Lo. a blac!smith. testified that he had made fifty plow frames in 1684 for Gar"as and Araneta. of which E>hibit 2 is one0 E>hibit 2. the court found. is a plow identical with that patented by Gar"as. but without share and mouldAboard Alfred 5erwin. an employee in the office of Attorney Kohn 5ordman. testified that on September :1. 168B. he had !nowled"e of a transaction wherein Gar"as and Araneta desired to obtain money to invest in a plow factory Geor"e ,amon Saul. a mechanic of the ?Taller Gisayas? of Strachan and %ac%urray. testified that he had made Gar"as plow points and shares of the present form upon order of Araneta and Gar"as in 1683 and 1687 <illiam %ac%urray. proprietor of the ?Taller Gisayas.? corroborated the evidence of the witness Saul by the e>hibition of the account a"ainst Gar"as and Araneta wherein. under date of December 1D. 1683. appears the item ?1: new soft steel plow shares for"ed and bored for rivets as per sample ? A"ainst all this. was the testimony of the plaintiff An"el Gar"as who denied that Saul could have been seen the Gar"as plow in 1687 and 1687. who denied that ,oces purchased the Gar"as plow in 1687. who denied that (i&arra"a could have acted as an a"ent to sell two plows in November. 168B. who denied any remembrance of the loan mentioned by 5erwin as havin" been ne"otiated in September. 168B. who denied that Lo Pao Lo made fifty plows one of which is E>hibit 2. for Araneta and Gar"as in 1684 Plaintiff introduced his boo!s to substantiate his oral testimony It is hardly believable that five or si> witnesses for the defense would deliberately per=ure themselves under oath 'ne mi"ht. but that all to"ether. of different nationalities. would enter into such a conspiracy. is to suppose the improbable Tested by the principles which "o to ma!e the law. we thin! a preponderance of the evidence is to the effect that for more than two years before the application for the ori"inal letters patent. or before Kuly ::. 168B. there was. by the consent and allowance of Gar"as. a public use of the invention covered by them To conclude. we are not certain but that appellee has proved every one of his defenses <e are certain that he has at least demonstrated the public use of the Gar"as

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plow over two years prior to the application for a patent Such bein" the case. althou"h on a different "round. we must sustain the =ud"ment of the lower court. without pre=udice to the determination of the dama"es resultin" from the "rantin" of the in=unction. with the costs of this instance a"ainst the appellant So ordered FRANK v KOSUYAMA 59 PHIL 206 #A$TS: Patent on improvement in hemp strippin" machines. issued by the *nited States Patent 'ffice and re"istered in the 5ureau of $ommerce and Industry of the Philippine. was the ori"in of this action brou"ht by the plaintiffs herein who prayed that the =ud"ment be rendered a"ainst the defendant. orderin" him thereby to refrain immediately from the manufacture and sale of machines similar to the one covered by the patent: to render an accountin" of the profits reali&ed from the manufacture and sale of the machines in )uestion0 that in case of refusal or failure to render such accountin". the defendants be ordered to pay the plaintiffs the sum of P38 as profit on each machine manufactured or sold by him0 that upon approval of the re)uired bond. said defendant be restrained from continuin" the manufacture and sale of the same !ind of machines0 that after the trial the preliminary in=unction issued therein be declared permanent and. lastly. that the said defendant be sentenced to pay the costs and whatever dama"es the plaintiffs mi"ht be able to prove therein The action therefore was based upon alle"ed infrin"ement by the defendant of the ri"hts and privile"es ac)uired by the plaintiffs over the aforesaid patent throu"h the manufacture and sale by the former of machines similar to that covered by the aforesaid patent The plaintiffs appealed from the =ud"ment rendered by the trial court dismissin" their complaint. with cost. as well as the defendantCs counterclaim of P18.888 The defendant did not appeal In their amended complaint. the plaintiff alle"ed that their hemp strippin" machines. for which they obtained a patent. have the followin" characteristics: ?A strippin" head. a hori&ontal table. a strippin" !nife supported upon such table. a tapperin" spindle. a rest holder ad=ustably secured on the table portion. a lever and means of compellin" the !nife to close upon the table. a pallet or rest in the bottom of the table. a resilient cushion under such palletor rest ? In spite of the fact that they filed an amended complaint from which the ?spindle? or conical drum. which was the only characteristic feature of the machine mentioned in the ori"inal complaint. was eliminated. the plaintiffs insisted that the said part constitutes the essential difference between the machine in )uestion and other machines and that it was the principal consideration upon which their patent was issued The said plaintiffs sustained their contention on this point even in their printed brief and memorandum filed in this appeal Durin" the trial. both parties presented voluminous evidence from which the trial court concluded that in constructin" their machine the plaintiffs did nothin" but improve. to a certain de"ree. those that were already in vo"ue and in actual us in hemp producin" provinces It cannot be said that they have invented the ?spindle? inasmuch as this was already !nown since the year 1686 or 1618 Neither it can be said that they have invented the strippin" !nife and the contrivance which controls the movement and pressure thereof on the "round that strippin" !nives to"ether with their control sets were already in actual use in the different strippin" machines lon" before their machine appeared ISS*E: ;E(D:

<hether there is an infrin"ement on the patents

The trial court did not decree the annulment of the plaintiffsC patent and the herein defendantAappellee insists that the patent in )uestion should be declared null and void <e are of the opinion that it would be improper and untimely to render a similar =ud"ment. in view of the nature of the action brou"ht by the plaintiffs and in the absence of a crossAcomplaint to that effect #or the purposes of this appeal. suffice it to hold that the defendant is not civilly liable for alle"ed infrin"ement of the patent in )uestion In the li"ht of sound lo"ic. the plaintiffs cannot insist that the ?spindle? was a patented invention on the "round that said part of the machine was voluntarily omitted by them from their application. as evidenced by the photo"raphic copy thereof +E>hibit 21/ wherein it li!ewise appears that the patent on Improved ;emp Strippin" %achines was issued minus the ?spindle? in )uestion <ere we to stress to this part of the machine. we would be "ivin" the patent obtained by the plaintiffs a wider ran"e than it actually has. which is contrary to the principles of interpretation in matters relatin" to patents In support of their claim the plaintiffs invo!e the doctrine laid down by this court in the case of #ran! and Gohn vs. 5enito +41 Phil . 71:/. wherein it was held that the therein defendant really infrin"ed upon the patent of the therein plaintiffs It may be noted that the plaintiffs in the former and those of the latter case are the same and that the patent then involved is the very same one upon which the present action of the plaintiffs is based The aboveAcited case. however. cannot be invo!ed as a precedent to =ustify a =ud"ment in favor of the plaintiffsAappellants on the "round that the facts in one case entirely different from those in the other In the former case the defendant did not set up the same special defenses as those alle"ed by the herein defendant in his answer and the plaintiffs therein confined themselves to presentin" the patent. or rather a copy thereof. wherein the ?spindle? was mentioned. and this court too! for "ranted their claim that it was one of the essential characteristics thereof which was imitated or copied by the then defendant Thus it came to pass that the ?spindle? in )uestion was insistently mentioned in the decision rendered on appeal as the essential part of the plaintiffsC machine alle"edly imitated by the then defendant In the case under consideration. it is obvious that the ?spindle? is not an inte"ral part of the machine patented by the plaintiffs on the "round that it was eliminated from their patent inasmuch as it was e>pressly e>cluded in their application. as evidenced by the aforesaid E>hibit 21 <herefore. reiteratin" that the defendant cannot be held civilly liable for alle"ed infrin"ement of the patent upon which the present action is based on the "round that there is no essential part of the machine manufactured and sold by him. which was un!nown to the public in the Province of Davao at the time the plaintiffs applied for and obtained their patent for improved hemp strippin" machines. the =ud"ment appealed from is hereby affirmed. with the costs a"ainst the plaintiffsAappellants So ordered VARGAS v CHUA 57 PHIL 784 #A$TS: An"el Gar"as. the plaintiff herein. brou"ht this action to restrain the appellants and the other defendant entity. $ham Samco H Sons. their a"ents and mandatories. from continuin" the manufacture and sale of plows similar to his plow described in his patent No 1.487.4D8 issued by the *nited States Patent 'ffice on September :. 16:20 and

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to compel all of said defendants. after renderin" an accountin" of the profits obtained by them from the sale of said plows from September :. 16:2. to pay him dama"es e)uivalent to double the amount of such profits The trial court rendered a =ud"ement in favor of plaintiffs and a"ainst the defendant It appears from the bill of e>ceptions that $ham Samco H Sons did not appeal ISS*E: <hether the plow. E>hibit #. constitutes a real invention or an improvement for which a patent may be obtained. or if. on the contrary. it is substantially the same plow represented by E>hibit DA$hua the patent for which was declared null and void in the aforementioned case of Vargas vs. F. M. Yaptico !o." supra. ;E(D: The appellee is not entitled to the protection he see!s for the simple reason that his plow. E>hibit #. does not constitute an invention in the le"al sense. and because. accordin" to the evidence. the same type of plows had been manufactured in this country and had been in use in many parts of the Philippine Archipela"o. especially in the Province of Iloilo. lon" before he obtained his last patent In the above mentioned case of Vargas vs. F. M. Yaptico !o." we said: <hen a patent is sou"ht to be enforced. ?the )uestions of invention. novelty. or prior use. and each of them. are open to =udicial e>amination ? The burden of proof to substantiate a char"e of infrin"ement is with the plaintiff <here. however. the plaintiff introduces the patent in evidence. if it is the due form. it affords a prima facie presumption of its correctness and validity The decision of the $ommissioner of Patents in "rantin" the patent is always presumed to be correct The burden then shifts to the defendant to overcome by competent evidence this le"al presumption <ith all due respects. therefore. for the critical and e>pert e>amination of the invention by the *nited States Patent 'ffice. the )uestion of the validity of the patent is one for =udicial determination. and since a patent has been submitted. the e>act )uestion is whether the defendant has assumed the burden of proof as to anyone of his defenses <e repeat that in view of the evidence presented. and particularly of the e>amination we have made of the plows. we cannot escape the conclusion that the plow upon which the appelleeCs contention is based. does not constitute an invention and. conse)uently. the privile"e invo!ed by him is untenable and the patent ac)uired by him should be declared ineffective The =ud"ment appealed from is hereby reversed and the appellants are absolved from the complaint. with costs of this instance a"ainst the appellee So ordered and issued to him0 that said invention was new. useful. not !nown or used by others in this country before his invention thereof That the defendant Domiciano A A"uas infrin"ed (etters of Patent No 34B by ma!in". usin" and sellin" tiles embodyin" said patent invention and that defendant # ; A)uino H Sons is "uilty of infrin"ement by ma!in" and furnishin" to the defendant Domiciano A A"uas the en"ravin"s. castin"s and devices desi"ned and intended of tiles embodyin" plaintiff0s patented invention0 that he has "iven direct and personal notice to the defendants of their said acts of infrin"ement and re)uested them to desist. but nevertheless. defendants have refused and ne"lected to desist and have disre"arded such re)uest. and continue to so infrin"e causin" "reat and irreparable dama"e to plaintiff0 that if the aforesaid infrin"ement is permitted to continue. further losses and dama"es and irreparable in=ury will be sustained by the plaintiff0 that there is an ur"ent need for the immediate issuance of a preliminary in=unction The court "ranted the in=unction And li!ewise held in favor of the plaintiff and a"ainst the defendant ISS*E: <hether the process. sub=ect of said patent. is not an invention or discovery. or an improvement of the old system of ma!in" tiles ;E(D: The validily of the patent issued by the Philippines Patent 'ffice in favor of the private respondent and the )uestion over the inventiveness. novelty and usefulness of the improved process therein specified and described are matters which are better determined by the Philippines Patent 'ffice The technical staff of the Philippines Patent 'ffice. composed of e>perts in their field. have. by the issuance of the patent in )uestion. accepted the thinness of the private respondentCs new tiles as a discovery There is a presumption that the Philippines Patent 'ffice has correctly determined the patentability of the improvement by the private respondent of the process in )uestion The contention of the petitioner A"uas that the letters patent of de (eon was actually a patent for the old and nonApatentable process of ma!in" mosaic preAcast tiles is devoid of merit De (eon never claimed to have invented the process of tileAma!in" The $laims and Specifications of Patent No 34B show that althou"h some of the steps or parts of the old process of tile ma!in" were described therein. there were novel and inventive features mentioned in the process In view of the fore"oin". this $ourt finds that Patent No 34B was le"ally issued. the process andMor improvement bein" patentable

#A$TS:

AGUAS v ! L!ON 111 SCRA 2"8

#A$TS:

PA,LE DAGIS H $' v D'$T',9S P;A,%A 1:2 S$,A 114

$onrado G de (eon filed in the $ourt of #irst Instance of ,i&al at Fue&on $ity a complaint for infrin"ement of patent a"ainst Domiciano A A"uas and # ; A)uino and Sons alle"in" that bein" the ori"inal first and sole inventor of certain new and useful improvements in the process of ma!in" mosaic preAcast tiles. he lawfully filed and prosecuted an application for Philippine patent. and havin" complied in all respects with the statute and the rules of the Philippine Patent 'ffice. Patent No 34B was lawfully "ranted

Par!e Davis H $ompany. petitioner herein. is a forei"n corporation is the owner of a patent entitled ?Process for the %anufacturin" of Antibiotics? +(etters Patent No 48/ The patent relates to a chemical compound represented by a formula commonly called chloramphenicol The patent contains ten claims. nine of which are process claims. and the other is a product claim to the chemical substance chloramphenicol ,espondent DoctorsC Pharmaceuticals. Inc . on the other hand. is a domestic corporation which applied for a

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PATENTS: DIGESTS
petition with the Director of Patents. which was later amended. prayin" that it be "ranted a compulsory license under (etters Patent No 48 "ranted to Par!e Davis H $ompany based on the followin" "rounds: +1/ the patented invention relates to medicine and is necessary for public health and safety0 +:/ Par!e Davis H $ompany is unwillin" to "rant petitioner a voluntary license under said patent by reason of which the production and manufacture of needed medicine containin" chloramphenicol has been unduly restrained to a certain e>tent that it is becomin" a monopoly0 +D/ the demand for medicine containin" chloramphenicol is not bein" met to an ade)uate e>tent and on reasonable prices0 and +2/ the patented invention is not bein" wor!ed in the Philippines on a commercial scale In its petition. DoctorsC Pharmaceuticals. Inc prayed that it be authori&ed to manufacture. use. and sell its own products containin" chloramphenicol as well as choose its own brand or trademar! Par!e Davis H $ompany filed a written opposition settin" up the followin" affirmative defenses: +1/ a compulsory license may only be issued to one who will wor! the patent and respondent does not intend to wor! it itself but merely to import the patented product0 +:/ respondent has not re)uested any license to wor! the patented invention in the Philippines0 +D/ respondent is not competent to wor! the patented invention0 +2/ to "rant respondent the re)uested license would be a"ainst public interest and would only serve its monetary interest0 and +3/ the patented invention is not necessary for public health and safety the Director of Patents rendered a decision "rantin" to respondent the license prayed for ;ence this petition ISS*E: <hether or not the Director of Patents erred =n orderin" the "rant of compulsory license ;E(D: Each of the circumstances mentioned in the law as "rounds stands alone and is independent of the others And from them we can see that in order that any person may be "ranted a license under a particular patented invention relatin" to medicine under Section D2+d/. it is sufficient that the application be made after the e>piration of three years from the date of the "rant of the patent and that the Director should find that a case for "rantin" such license has been made out Since in the instant case it is admitted by petitioner that the chemical substance chloramphenicol is a medicine. while (etters Patent No 48 coverin" said substance were "ranted to Par!e Davis H $ompany on #ebruary 6. 1648. and the instant application for license under said patent was only filed in 1638. verily the period that had elapsed then is more than three years. and so the conditions for the "rant of the license had been fulfilled <e find. therefore. no error in the decision of the Director of Patents on this aspect of the controversy

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