Вы находитесь на странице: 1из 7


Facts: The primary purpose of the patent system is not the reward of the individual
but the advancement of the artsand sciences. The function of a patent is to add to
the sumof useful knowledge and one of the purposes of the patent s y s t e m i s
t o e n c o u r a g e d i s s e mi n a t i o n o f i n f o r ma t i o n concerning discoveries and
inventions.FACTS:A n g e l i t a Ma n a n o ! l e d " " # a n a c t i o n f o r
t h e cancellation of $etters "atent for a gas burner registered int h e n a m e
o f r e s p o n d e n t M e l e c i a M a d o l a r i a w h o subse%uent l y
assi gned t he l et t er s pat ent t o &ew 'ni t ed Foundry and Manufacturing
Corporation ('&)T*+ F#'&+,-.f or brevi t y/ . "et i t i oner al l eged t hat ( a/ t he
ut i l i t y model covered by t he l et t er s pat ent . i n t hi s case. an $"0
gas b u r n e r . w a s n o t i n v e n t i v e . n e w o r u s e f u l 1 ( b /
t h e speci!cation of the letters patent did not comply with ther e % u i r e me n t s
o f S e c . 2 3 . ,A &o . 2 4 5 . a s a me n d e d 1 ( c / respondent Melecia Madolaria was
not the original. true anda c t u a l i n v e n t o r n o r d i d s h e d e r i v e h e r r i g h t s
f r o m t h e o r i g i n a l . t r u e a n d a c t u a l i n v e n t o r o f t h e u t i l i t y
mo d e l covered by t he l et t er s pat ent 1 and. ( d/ t he l et t er s pat ent was
secured by means of fraud or misrepresentation. Testifying for herself petitioner
narrated that herhusband #ng 6un Tua wor ked as a hel per i n t he
'&) T*+F#'&+,- where respondent Melecia Madolaria used to bea7liated with
from 2845 to 289:1 that #ng helped in thecasting of an $"0 burner which was
the same utility model of a burner and that after her husband;s separation from theshop
she or gani ed 6esco Met al Manuf act ur i ng ( 6*SC#M*TA$. f or brevi t y/ f or
t he cast i ng of $"0 bur ner s one of whi ch had t he con! gur at i on. f or m and
component par t s similar to those being manufactured by '&)T*+ F#'&+,-." e t i t i o n e r
p r e s e n t e d t wo ( < / o t h e r wi t n e s s e s . namely. her husband #ng 6un Tua and
Fidel Francisco."rivate respondent. on the other hand. presentedonly one witness.
,olando Madolaria. who testi!ed. amongothers. that he was the 0eneral
Supervisor of the '&)T*+F#'&+,-.+irector of "atents Cesar C. Sandiego denied
thepetition for cancellation and holding that the evidence of petitioner was not
able to establish convincingly that thep a t e n t e d u t i l i t y m o d e l o f
p r i v a t e r e s p o n d e n t w a s anticipated."etitioner elevated the decision of
the +irector of "atents to the Court of Appeals which a7rmed the decisionof the
+irector of "atents. =ence. this petition for review on
ISSUE: >hether the dismissal is proper where the patent applied for has no
substantial di?erence between the modelto be patented and those sold by petitioner.
HELD: The el ement of novel t y i s an essent i al re%ui si t e of
t hepat ent abi l i t y of an i nvent i on or di scover y. ) f a devi ce or p r o c e s s h a s
b e e n k n o wn o r u s e d b y o t h e r s p r i o r t o i t s invention or discovery by the
applicant. an application for apatent therefor should be denied1 and if the
application hasbeen gr ant ed. t he cour t . i n a @ udi ci al proceedi ng i n
whi chthe validity of the patent is drawn in %uestion. will hold it voi d and
i ne? ect i ve. ) t has been repeat edl y hel d t hat aninvention must possess the
essential elements of novelty.or i gi nal i t y and precedence. and f or t he
pat ent ee t o beentitled to the protection the invention must be new to
theworld.=owever. The validity of the patent issued by the"hilippine "atent #7ce
in favor of private respondent andthe %uestion over the inventiveness. novelty and
usefulnessof the improved model of the $"0 burner are matters whichare better
determined by the "atent #7ce. The technicalsta? of the "hilippine "atent
#7ce composed of eAperts int hei r ! el d has by t he i ssuance of t he pat ent
i n %uest i onaccept ed pr i vat e respondent ; s model of gas bur ner as
adi scover y. There i s a presumpt i on t hat t he #7 ce has correctly determined
the patentability of the model

and sucha c t i o n mu s t n o t b e i n t e r f e r e d wi t h i n t h e a b s e n c e
o f competent evidence to the contrary. The rule is settled that the !ndings of fact of
the+irector of "atents. especially when a7rmed by the Court of Appeals. are conclusive
on this Court when supported bys u b s t a n t i a l e v i d e n c e . " e t i t i o n e r h a s
f a i l e d t o s h o wc o mp e l l i n g g r o u n d s f o r a r e v e r s a l o f t h e ! n d i n g s
a n d conclusions of the "atent #7ce and the Court of Appeals.
Creser Precisio S!ste"s# Ic$ vs$ Co%rt o& A''ea(s
)$R$ No$ **87+8# 286 SCRA *,# Fe-r%ar! +2# *..8
Facts: ,espondent was granted by the 6ureau of "atents. Trademarks and Technology
Transfer (6"TTT/ a $etter of patent for its aerial fue on Banuary <C. 288:. Sometime in 288C.
respondent discovered that the petitioner submitted samples of its patented aerial fue to
the AF" for testing claiming to be his own. To protect its right. respondent sent letter of
warning to petitioner on a possible court action should it proceed its testing by the AF". )n
response the petitioner !led a complaint for in@unction and damages arising from alleged
infringement before the ,TC asserting that it is the true and actual inventor of the aerial fue
which it developed on 28D2 under the Self ,eliance +efense "osture "rogram of the AF". )t
has been supplying the military of the aerial fue since then and that the fue of the
respondent is similar as that of the petitioner. "etitioner prayed for restraining order and
in@unction from marketing. manufacturing and pro!ting from the said invention by the
respondent. The trial court ruled in favor of the petitioner citing the fact that it was the !rst
to develop the aerial fue since 28D2 thsu it concludes that it is the petitioner;s aerial fue
that was copied by the respondent. Moreover. the claim of respondent is solely based on its
letter of patent which validity is being %uestioned. #n appeal. respondent argued that the
petitioner has no cause of action since he has no right to assert there being no patent issued
to his aerial fue. The Court of Appeals reversed the decision of the trial court dismissing the
complaint of the petitioner. )t was the contention of the petitioner that it can !le under
Section 3< of the "atent $aw an action for infringement not as a patentee but as an entity in
possession of a right. title or interest to the patented invention. )t theories that while the
absence of a patent prevents one from lawfully suing another for infringement of said
patent. such absence does not bar the true and actual inventor of the patented invention
from suing another in the same nature as a civil action for infringement.
)ssue: >hether or not the petitioner has the right to assail the validity of the patented work
of the respondentE
=eld: The court !nds the argument of the petitioner untenable. Section 3< of the $aw on
"atent (,A 245/ provides that only the patentee or his successorsFinFinterest may !le an
action against infringement. >hat the law contemplates in the phrase Ganyone possessing
any right. title or interest in and to the patented inventionH refers only to the patentee;s
successorsFinFinterest. assignees or grantees since the action on patent infringement may
be brought only in the name of the person granted with the patent. There can be no
infringement of a patent until a patent has been issued since the right one has over the
invention covered by the patent arises from the grant of the patent alone. Therefore. a
person who has not been granted letter of patent over an invention has not ac%uired right or
title over the invention and thus has no cause of action for infringement. "etitioner admitted
to have no patent over his invention. ,espondent;s aerial fue is covered by letter of patent
issued by the 6ureau of "atents thus it has in his favor not only the presumption of validity
of its patent but that of a legal and factual !rst and true inventor of the invention.
s"it/ 0(ie vs$ co%rt o& a''ea(s 1$r$ o$ *26627
Intellectual Property Law Law on Patents - Doctrine of Equivalents
Smith Iline is a 'S corporation licensed to do business in the "hilippines. )n 28D2. a patent
was issued to it for its invention entitled GMethods and Compositions for "roducing 6iphasic
"arasiticide Activity 'sing Methyl 5 "ropylthioF<F6enimidaole Carbamate.H The invention is
a means to !ght o? gastrointestinal parasites from various cattles and pet animals.
Tryco "harma is a local corporation engaged in the same business as Smith Iline.
Smith Iline sued Tryco "harma because the latter was selling a veterinary product called
)mpregon which contains a drug called Albendaole which !ghts o? gastroFintestinal
roundworms. lungworms. tapeworms and Juke infestation in carabaos. cattle and goats.
Smith Iline is claiming that Albendaole is covered in their patent because substantially the
same as methyl 5 propylthioF<Fbenimidaole carbamate covered by its patent since both of
them are meant to combat worm or parasite infestation in animals. And that Albendaole is
actually patented under Smith Iline by the 'S.
Tryco "harma averred that nowhere in )mpregon;s packaging does it mention that
Albendaole is present but even if it were. the same is GunpatentableH.
Smith Iline thus invoked the doctrine of e%uivalents. which implies that the two substances
substantially do the same function in substantially the same way to achieve the same
results. thereby making them truly identical for in spite of the fact that the word Albendaole
does not appear in petitioner;s letters patent. it has ably shown by evidence its sameness
with methyl 5 propylthioF<Fbenimidaole carbamate.
ISSUE: >hether or not there is patent infringement in this case
HELD: &o. Smith Iline failed to prove that Albendaole is a compound inherent in the
patented invention. &owhere in the patent does the word Albendaole found. >hen the
language of its claims is clear and distinct. the patentee is bound thereby and may not claim
anything beyond them. Further. there was a separate patent for Albendaole given by the
'S which implies that Albendaole is indeed separate and distinct from the patented
compound here.
A scrutiny of Smith Iline;s evidence fails to prove the substantial sameness of the patented
compound and Albendaole. >hile both compounds have the e?ect of neutraliing parasites
in animals. identity of result does not amount to infringement of patent unless Albendaole
operates in substantially the same way or by substantially the same means as the patented
compound. even though it performs the same function and achieves the same result. )n
other words. the principle or mode of operation must be the same or substantially the same.
The doctrine of e%uivalents thus re%uires satisfaction of the functionFmeansFandFresult test.
the patentee having the burden to show that all three components of such e%uivalency test
are met.
)o2ies vs$ Co%rt o& A''ea(s
)$R$ No$ .7,3,# 226 SCRA ,,8 # Se'te"-er *,# *..,
Through this petition for review in certiorari of a decision of the Court of Appeals a7rming
the decision of the trial court. petitioner "ascual 0odines seeks to reverse the adverse
decision of the Court a %uo that he was liable for infringement of patent and unfair
competition. The dispositive portion of the assailed decision is hereby %uoted to wit:
>=*,*F#,*. with the elimination of the award for attorneyKs fees. the @udgment appealed
from is hereby AFF),M*+. with costs against appellant. 2
The patent involved in this case is $etters "atent &o. 'MF<<C4 issued by the "hilippine
"atent #7ce to one Magdalena S. Lillaru on Buly 25. 2894. )t covers a utility model for a
hand tractor or power tiller. the main components of which are the following: M(2/ a
vacuumatic house Joat1 (</ a harrow with ad@ustable operating handle1 (C/ a pair of paddy
wheels1 (3/ a protective water covering for the engine main drive1 (5/ a transmission case1
(4/ an operating handle1 (9/ an engine foundation on the top midportion of the vacuumatic
housing Joat to which the main engine drive is detachedly installed1 (D/ a frontal frame
eAtension above the %uarter N circularly shaped water covering hold (sic/ in place the
transmission case1 (8/ a LFbelt connection to the engine main drive with transmission gear
through the pulley. and (2:/ an idler pulley installed on the engine foundation.M < The
patented hand tractor works in the following manner: Mthe engine drives the transmission
gear thru the LFbelt. a driven pulley and a transmission shaft. The engine drives the
transmission gear by tensioning of the LFbelt which is controlled by the idler pulley. The LF
belt drives the pulley attached to the transmission gear which in turn drives the shaft where
the paddy wheels are attached. The operator handles the hand tractor through a handle
which is inclined upwardly and supported by a pair of substanding pipes and reinforced by a
'Fshaped 0.). pipe at the LFshaped end.M C
The above mentioned patent was ac%uired by SLFAgro )ndustries *nterprises. )nc.. herein
private respondent. from Magdalena Lillaru. its chairman and president. by virtue of a +eed
of Assignment eAecuted by the latter in its favor. #n #ctober C2. 2898. SLFAgro )ndustries
caused the publication of the patent in 6ulletin Today. a newspaper of general circulation.
)n accordance with the patent. private respondent manufactured and sold the patented
power tillers with the patent imprinted on them. )n 2898. SLFAgro )ndustries su?ered a
decline of more than 5:O in sales in its Molave. Pamboanga del Sur branch. 'pon
investigation. it discovered that power tillers similar to those patented by private respondent
were being manufactured and sold by petitioner herein. Conse%uently. private respondent
noti!ed "ascual 0odines about the eAisting patent and demanded that the latter stop selling
and manufacturing similar power tillers. 'pon petitionerKs failure to comply with the
demand. SLFAgro )ndustries !led before the ,egional Trial Court a complaint for infringement
of patent and unfair competition.
After trial. the court held "ascual 0odines liable for infringement of patent and unfair
competition. The dispositive portion of the decision reads as follows:
>=*,*F#,*. premises considered. B'+0M*&T is hereby rendered in favor of the plainti? SLF
Agro )ndustries *nterprises. )nc.. and against defendant "ascual 0odines:
2. +eclaring the writ of preliminary in@unction issued by this Court against defendant as
<. #rdering defendant "ascual 0odines to pay plainti? the sum of Fifty Thousand "esos
("5:.:::.::/ as damages to its business reputation and goodwill. plus the further sum of
*ighty Thousand "esos ("D:.:::.::/ for unrealied pro!ts during the period defendant was
manufacturing and selling copied or imitation Joating power tiller1
C. #rdering the defendant to pay the plainti?. the further sum of *ight Thousand "esos
("D.:::.::/ as reimbursement of attorneyKs fees and other eApenses of litigation1 and to pay
the costs of the suit.
S# #,+*,*+. 3
The decision was a7rmed by the appellate court.
Thereafter. this petition was !led. "etitioner maintains the defenses which he raised before
the trial and appellate courts. to wit: that he was not engaged in the manufacture and sale
of the power tillers as he made them only upon the special order of his customers who gave
their own speci!cations1 hence. he could not be liable for infringement of patent and unfair
competition1 and that those made by him were di?erent from those being manufactured and
sold by private respondent.
>e !nd no merit in his arguments. The %uestion of whether petitioner was manufacturing
and selling power tillers is a %uestion of fact better addressed to the lower courts. )n
dismissing the !rst argument of petitioner herein. the Court of Appeals %uoted the !ndings
of the court. to wit:
)t is the contention of defendant that he did not manufacture or make imitations or copies of
plainti?Ks turtle power tiller as what he merely did was to fabricate his Joating power tiller
upon speci!cations and designs of those who ordered them. =owever. this contention
appears untenable in the light of the following circumstances: 2/ he admits in his Answer
that he has been manufacturing power tillers or hand tractors. selling and distributing them
long before plainti? started selling its turtle power tiller in Pamboanga del Sur and Misamis
#ccidental. meaning that defendant is principally a manufacturer of power tillers. not upon
speci!cation and design of buyers. but upon his own speci!cation and design1 </ it would be
unbelievable that defendant would fabricate power tillers similar to the turtle power tillers of
plainti? upon speci!cations of buyers without re%uiring a @ob order where the speci!cation
and designs of those ordered are speci!ed. &o document was (sic/ ever been presented
showing such @ob orders. and it is rather unusual for defendant to manufacture something
without the speci!cation and designs. considering that he is an engineer by profession and
proprietor of the #amis *ngineering shop. #n the other hand. it is also highly unusual for
buyers to order the fabrication of a power tiller or hand tractor and allow defendant to
manufacture them merely based on their verbal instructions. This is contrary to the usual
business and manufacturing practice. This is not only time consuming. but costly because it
involves a trial and error method. repeat @obs and material wastage. +efendant @udicially
admitted two (</ units of the turtle power tiller sold by him to "olicarpio 6erondo. 5
#f general acceptance is the rule imbedded in our @urisprudence that M. . . the @urisdiction of
the Supreme Court in cases brought to it from the Court of Appeals in a petition for certiorari
under ,ule 35 of the ,ules of Court is limited to the review of errors of law. and that said
appellate courtKs !ndings of fact are conclusive upon this Court.M 4
The fact that petitioner herein manufactured and sold power tillers without patenteeKs
authority has been established by the courts despite petitionerKs claims to the contrary.
The %uestion now arises: +id petitionerKs product infringe upon the patent of private
Tests have been established to determine infringement. These are (a/ literal infringement1
and (b/ the doctrine of e%uivalents. 9 )n using literal infringement as a test. M. . . resort must
be had. in the !rst instance. to the words of the claim. )f accused matter clearly falls within
the claim. infringement is made out and that is the end of it.M D To determine whether the
particular item falls within the literal meaning of the patent claims. the court must @uAtapose
the claims of the patent and the accused product within the overall conteAt of the claims
and speci!cations. to determine whether there is eAact identity of all material elements. 8
The trial court made the following observation:
Samples of the defendantKs Joating power tiller have been produced and inspected by the
court and compared with that of the turtle power tiller of the plainti? (see *Ahibits = to =F
<D/. )n appearance and form. both the Joating power tillers of the defendant and the turtle
power tiller of the plainti? are virtually the same. +efendant admitted to the Court that two
(</ of the power inspected on March 2<. 28D3. were manufactured and sold by him (see TS&.
March 2<. 28D3. p. 9/. The three power tillers were placed alongside with each other. At the
center was the turtle power tiller of plainti?. and on both sides thereof were the Joating
power tillers of defendant (*Ahibits = to =F</. >itness ,odrigo took photographs of the same
power tillers (front. side. top and back views for purposes of comparison (see *Ahibits =F3 to
=F<D/. Liewed from any perspective or angle. the power tiller of the defendant is identical
and similar to that of the turtle power tiller of plainti? in form. con!guration. design and
appearance. The parts or components thereof are virtually the same. 6oth have the
circularlyFshaped vacuumatic housing Joat. a paddy in front. a protective water covering. a
transmission boA housing the transmission gears. a handle which is LFshaped and inclined
upwardly. attached to the side of the vacuumatic housing Joat and supported by the
upstanding 0.). pipes and an engine base at the top midportion of the vacuumatic housing
Joat to which the engine drive may be attached. )n operation. the Joating power tiller of the
defendant operates also in similar manner as the turtle power tiller of plainti?. This was
admitted by the defendant himself in court that they are operating on the same principles.
(TS&. August 28. 28D9. p. 2C/ 2:
Moreover. it is also observed that petitioner also called his power tiller as a Joating power
tiller. The patent issued by the "atent #7ce referred to a Mfarm implement but more
particularly to a turtle hand tractor having a vacuumatic housing Joat on which the engine
drive is held in place. the operating handle. the harrow housing with its operating handle
and the paddy wheel protective covering.M 22 )t appears from the foregoing observation of
the trial court that these claims of the patent and the features of the patented utility model
were copied by petitioner. >e are compelled to arrive at no other conclusion but that there
was infringement.
"etitionerKs argument that his power tillers were di?erent from private respondentKs is that of
a drowning man clutching at straws.
,ecogniing that the logical fallback position of one in the place of defendant is to aver that
his product is di?erent from the patented one. courts have adopted the doctrine of
e%uivalents which recognies that minor modi!cations in a patented invention are su7cient
to put the item beyond the scope of literal infringement. 2< Thus. according to this doctrine.
M(a/n infringement also occurs when a device appropriates a prior invention by incorporating
its innovative concept and. albeit with some modi!cation and change. performs substantially
the same function in substantially the same way to achieve substantially the same result.M
2C The reason for the doctrine of e%uivalents is that to permit the imitation of a patented
invention which does not copy any literal detail would be to convert the protection of the
patent grant into a hollow and useless thing. Such imitation would leave room for N indeed
encourage N the unscrupulous copyist to make unimportant and insubstantial changes and
substitutions in the patent which. though adding nothing. would be enough to take the
copied matter outside the claim. and hence outside the reach of the law. 23
)n this case. the trial court observed:
+efendantKs witness *duardo CaQete. employed for 22 years as welder of the #amis
*ngineering. and therefore actually involved in the making of the Joating power tillers of
defendant tried to eAplain the di?erence between the Joating power tillers made by the
defendant. 6ut a careful eAamination between the two power tillers will show that they will
operate on the same fundamental principles. And. according to establish @urisprudence. in
infringement of patent. similarities or di?erences are to be determined. not by the names of
things. but in the light of what elements do. and substantial. rather than technical. identity
in the test. More speci!cally. it is necessary and su7cient to constitute e%uivalency that the
same function can be performed in substantially the same way or manner. or by the same or
substantially the same. principle or mode of operation1 but where these tests are satis!ed.
mere di?erences of form or name are immaterial.