CRESER PRECISION SYSTEMS, INC., petitioner, vs. COURT OF APPEALS AND FLORO INTERNATIONAL CORP., respondents.

DECISION
MARTINEZ, J.:
This petition for review on certiorari assails the decision[1]. The decision of the Court of Appeals was penned by Justice Gloria C. Paras and
concurred in by Justice Salome A. Montoya and Justice Hector L. Hofilea.
1 of the Court of Appeals dated November 9, 1994 in C.A.-G.R. SP. No. 34425 entitled Floro International Corp. vs. Hon. Tirso D.C Cruz and
Creser Precision System, Inc., the dispositive portion of which reads:
WHEREFORE, THE PETITION IS HEREBY GRANTED. THE COMPLAINT FOR INJUNCTION AND DAMAGES, CIVIL CASE NO. 93-1856
BEFORE THE RESPONDENT JUDGE IS HEREBY ORDERED DISMISSED AND HIS ORDERS THEREIN OF DECEMBER 29, 1993 AND
MAY 11, 1994 ARE ORDERED SET ASIDE.
Private respondent is a domestic corporation engaged in the manufacture, production, distribution and sale of military armaments, munitions,
airmunitions and other similar materials.[2]
On January 23, 1990, private respondent was granted by the Bureau of Patents, Trademarks and Technology Transfer (BPTTT), a Letters
Patent No. UM-6938[3] covering an aerial fuze which was published in the September-October 1990, Vol. III, No. 5 issue of the Bureau of Patents
Official Gazette.[4]
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 same commercially 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 fro 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 respondents 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 is 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
respondents aerial fuze is identical in every respect to the petitioners fuze; and that the only difference between the two fuzes are miniscule and
merely cosmetic in nature. Petitioner prayed that a temporary restraining order and/or writ of preliminary injunction be issued enjoining private
respondent including any and all persons acting on its behalf from manufacturing, marketing and/or profiting therefrom, and/or from performing any
other act in connection therewith or tending to prejudice and deprive it of any rights, privileges and benefits to which it is duly entitled as the first,
true and actual inventor of the aerial fuze.
On December 10, 1993, the trial court issued a temporary restraining order. Thereafter, hearings were held on the application of petitioner for
the issuance of a writ of preliminary injunction, with both parties presenting their evidence. After the hearings, the trial court directed the parties to
submit their respective memoranda in support of their positions.
On December 27, 1993, private respondent submitted its memorandum[7] alleging that petitioner has no cause of action to file a complaint of
infringement against it since it has no patent for the aerial fuze which it claims to have invented; that petitioners available remedy is to file a petition
for cancellation of patent before the Bureau of Patents; that private respondent as the patent holder cannot be stripped of its property right over the
patented aerial fuze consisting of the exclusive right to manufacture, use and sell the same and that it stands to suffer irreparable damage and injury if
it is enjoined from the exercise of its property right over its patent.
On December 29, 1993, the trial court issued an Order[8] granting the issuance of a writ of preliminary injunction against private respondent the
dispositive portion of which reads:
WHEREFORE, plaintiffs application for the issuance of a writ of preliminary injunction is granted and, upon posting of the corresponding bond by
plaintiff in the amount of PHP 200,000.00, let the writ of preliminary injunction be issued by the branch Clerk of this Court enjoining the defendant
and any and all persons acting on its behalf or by and under its authority, from manufacturing, marketing and/or selling aerial fuzes identical, to those
of plaintiff, and from profiting therefrom, and/or from performing any other act in connection therewith until further orders from this Court.
Private respondent moved for reconsideration but this was denied by the trial courts in its Order [9] of May 11, 1994, pertinent portions of which
read:
For resolution before this Court is the Motion for Reconsideration filed by the defendant and the plaintiffs Opposition thereto. The Court finds no
sufficient cause to reconsider its order dated December 29, 1993. During the hearing for the issuance of the preliminary injunction, the plaintiff has
amply proven its entitlement to the relief prayed for. It is undisputed that the plaintiff has developed its aerial fuze way back in 1981 while the
defendant began manufacturing the same only in 1987. Thus, it is only logical to conclude that it was the plaintiffs aerial fuze that was copied or
imitated which gives the plaintiff the right to have the defendant enjoined from manufacturing, marketing and/or selling aerial fuzes identical to those
of the plaintiff, and from profiting therefrom and/or performing any other act in connection therewith until further orders from this Court. With
regards to the defendants assertion that an action for infringement may only be brought by anyone possessing right, title or interest to the patented
invention, (Section 42, RA 165) qualified by Section 10, RA 165 to include only the first true and actual inventor, his heirs, legal representatives to
assignees, this court finds the foregoing to be untenable. Sec. 10 merely enumerates the persons who may have an invention patented which does not
necessarily limit to these persons the right to institute an action for infringement. Defendant further contends that the order in issue is disruptive of
thestatus quo. On the contrary, the order issued by the Court in effect maintained the status quo. The last actual , peaceable uncontested status
existing prior to this controversy was the plaintiff manufacturing and selling its own aerial fuzes PDR 77 CB4 which was ordered stopped through
the defendants letter. With issuance of the order, the operations of the plaintiff continue. Lastly, this court believes that the defendant will not suffer
irreparable injury by virtue of said order. The defendants claim is primarily hinged on its patent (Letters Patent No. UM-6983) the validity of which
is being questioned in this case.
WHEREFORE, premises considered, the Motion for Reconsideration is hereby denied for lack of merit.
SO ORDERED.
Aggrieved, private respondent on June 27, 1994, filed a petition for certiorari, mandamus and prohibition[10]before respondent Court of
Appeals raising as grounds the following:
a. Petitioner has no cause of action for infringement against private respondent, the latter not having any patent for the aerial fuze which
it claims to have invented and developed and allegedly infringed by private respondent;

1
 b. The case being an action for cancellation or invalidation of private respondents Letters Patent over its own aerial fuze, the proper
venue is the Office of the Director of Patents;
c. The trial court acted in grave abuse of discretion and or in excess of jurisdiction in finding that petitioner has fully established its clear
title or right to preliminary injunction;
d. The trial court acted in grave abuse of discretion and/or in excess of jurisdiction in granting the preliminary injunction, it being
disruptive of the status quo; and
e. The trial court acted in grave abuse of discretion and/or in excess of jurisdiction in granting the preliminary injunction thereby
depriving private respondent of its property rights over the patented aerial fuze and cause it irreparable damages.
On November 9, 1994, the respondent court rendered the now assailed decision reversing the trial courts Order of December 29, 1993 and
dismissing the complaint filed by petitioner.
The motion for reconsideration was also denied on January 17, 1995. [11] Hence, this present petition.
It is petitioners 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.
We find the above arguments untenable.
Section 42 of R.A. 165, otherwise known as the Patent Law, explicitly provides:
SECTION. 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 (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. x x x
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 patentees 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 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. [14]
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, and 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. [15]
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,
petitioners remedy is not to file an action for injunction or infringement but to file a petition for cancellation of private respondent patent. Petitioner
however failed to do so. As such, it can not now assail or impugn the validity of the private respondents letters patent by claiming that it is the true
and actual inventor of 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.
In the case of Aguas vs. De Leon,[16] we stated that:
The validity of the patent issued by the Philippine Patent Office in favor of the private respondent and the question over the investments, novelty and
usefulness of the improved process therein specified and described are matters which are better determined by the Philippines patent Office,
composed of experts in their field, have, by the issuance of the patent in question, accepted the thinness of the private respondents new tiles as a
discovery. There is a presumption that the Philippine Patent Office has correctly determined the patentability of the improvement by the private
respondent of the process in question.
In fine, in the absence of error or abuse of power or lack or jurisdiction or grave abuse of discretion, we sustain the assailed decision of the
respondent Court of Appeal.
WHEREFORE, the decision of the Court of Appeals is hereby AFFIRMED. No pronouncement as to costs.
SO ORDERED.

Digest nasa laptop

G.R. No. 149907 April 16, 2009

ROMA DRUG and ROMEO RODRIGUEZ, as Proprietor of ROMA DRUG, Petitioners,
vs.
THE REGIONAL TRIAL COURT OF GUAGUA, PAMPANGA, THE PROVINCIAL PROSECUTOR OF PAMPANGA, BUREAU OF
FOOD & DRUGS (BFAD) and GLAXO SMITHKLINE, Respondents.
DECISION
TINGA, J.:

2
On 14 August 2000, a team composed of the National Bureau of Investigation (NBI) operatives and inspectors of the Bureau of Food and Drugs
(BFAD) conducted a raid on petitioner Roma Drug, a
duly registered sole proprietorship of petitioner Romeo Rodriguez (Rodriguez) operating a drug store located at San Matias, Guagua, Pampanga. The
raid was conducted pursuant to a search warrant1 issued by the Regional Trial Court (RTC), Branch 57, Angeles City. The raiding team seized
several imported medicines, including Augmentin (375mg.) tablets, Orbenin (500mg.) capsules, Amoxil (250mg.) capsules and Ampiclox
(500mg.).2 It appears that Roma Drug is one of six drug stores which were raided on or around the same time upon the request of SmithKline
Beecham Research Limited (SmithKline), a duly registered corporation which is the local distributor of pharmaceutical products manufactured by its
parent London-based corporation. The local SmithKline has since merged with Glaxo Wellcome Phil. Inc to form Glaxo SmithKline, private
respondent in this case. The seized medicines, which were manufactured by SmithKline, were imported directly from abroad and not purchased
through the local SmithKline, the authorized Philippine distributor of these products.
The NBI subsequently filed a complaint against Rodriguez for violation of Section 4 (in relation to Sections 3 and 5) of Republic Act No. 8203, also
known as the Special Law on Counterfeit Drugs (SLCD), with the Office of the Provincial Prosecutor in San Fernando, Pampanga. The section
prohibits the sale of counterfeit drugs, which under Section 3(b)(3), includes "an unregistered imported drug product." The term "unregistered"
signifies the lack of registration with the Bureau of Patent, Trademark and Technology Transfer of a trademark, tradename or other identification
mark of a drug in the name of a natural or juridical person, the process of which is governed under Part III of the Intellectual Property Code.
In this case, there is no doubt that the subject seized drugs are identical in content with their Philippine-registered counterparts. There is no claim that
they were adulterated in any way or mislabeled at least. Their classification as "counterfeit" is based solely on the fact that they were imported from
abroad and not purchased from the Philippine-registered owner of the patent or trademark of the drugs.
During preliminary investigation, Rodriguez challenged the constitutionality of the SLCD. However, Assistant Provincial Prosecutor Celerina C.
Pineda skirted the challenge and issued a Resolution dated 17 August 2001 recommending that Rodriguez be charged with violation of Section 4(a)
of the SLCD. The recommendation was approved by Provincial Prosecutor Jesus Y. Manarang approved the recommendation. 3
Hence, the present Petition for Prohibition questing the RTC-Guagua Pampanga and the Provincial Prosecutor to desist from further prosecuting
Rodriguez, and that Sections 3(b)(3), 4 and 5 of the SLCD be declared unconstitutional. In gist, Rodriguez asserts that the challenged provisions
contravene three provisions of the Constitution. The first is the equal protection clause of the Bill of Rights. The two other provisions are Section 11,
Article XIII, which mandates that the State make "essential goods, health and other social services available to all the people at affordable cost;" and
Section 15, Article II, which states that it is the policy of the State "to protect and promote the right to health of the people and instill health
consciousness among them."
Through its Resolution dated 15 October 2001, the Court issued a temporary restraining order enjoining the RTC from proceeding with the trial
against Rodriguez, and the BFAD, the NBI and Glaxo Smithkline from prosecuting the petitioners. 4
Glaxo Smithkline and the Office of the Solicitor General (OSG) have opposed the petition, the latter in behalf of public respondents RTC, Provincial
Prosecutor and Bureau of Food and Drugs (BFAD). On the constitutional issue, Glaxo Smithkline asserts the rule that the SLCD is presumed
constitutional, arguing that both Section 15, Article II and Section 11, Article XIII "are not self-executing provisions, the disregard of which can give
rise to a cause of action in the courts." It adds that Section 11, Article XIII in particular cannot be work "to the oppression and unlawful of the
property rights of the legitimate manufacturers, importers or distributors, who take pains in having imported drug products registered before the
BFAD." Glaxo Smithkline further claims that the SLCD does not in fact conflict with the aforementioned constitutional provisions and in fact are in
accord with constitutional precepts in favor of the peoples right to health.
The Office of the Solicitor General casts the question as one of policy wisdom of the law that is, beyond the interference of the judiciary.5 Again, the
presumption of constitutionality of statutes is invoked, and the assertion is made that there is no clear and unequivocal breach of the Constitution
presented by the SLCD.
II.
The constitutional aspect of this petition raises obviously interesting questions. However, such questions have in fact been mooted with the passage
in 2008 of Republic Act No. 9502, also known as the "Universally Accessible Cheaper and Quality Medicines Act of 2008". 6
Section 7 of Rep. Act No. 9502 amends Section 72 of the Intellectual Property Code in that the later law unequivocally grants third persons the right
to import drugs or medicines whose patent were registered in the Philippines by the owner of the product:
Sec. 7. Section 72 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, is hereby amended to read as
follows:
"Sec. 72. Limitations of Patent Rights. The owner of a patent has no right to prevent third parties from performing, without his authorization, the
acts referred to in Section 71 hereof in the following circumstances:
"72.1. Using a patented product which has been put on the market in the Philippines by the owner of the product, or with his express consent, insofar
as such use is performed after that product has been so put on the said market: Provided, That, with regard to drugs and medicines, the limitation
on patent rights shall apply after a drug or medicine has been introduced in the Philippines or anywhere else in the world by the patent
owner, or by any party authorized to use the invention: Provided,
further, That the right to import the drugs and medicines contemplated in this section shall be available to any government agency or any
private third party;
"72.2. Where the act is done privately and on a non-commercial scale or for a non-commercial purpose: Provided, That it does not
significantly prejudice the economic interests of the owner of the patent;
"72.3. Where the act consists of making or using exclusively for experimental use of the invention for scientific purposes or educational
purposes and such other activities directly related to such scientific or educational experimental use;
"72.4. In the case of drugs and medicines, where the act includes testing, using, making or selling the invention including any data related
thereto, solely for purposes reasonably related to the development and submission of information and issuance of approvals by government
regulatory agencies required under any law of the Philippines or of another country that regulates the manufacture, construction, use or sale
of any product: Provided, That, in order to protect the data submitted by the original patent holder from unfair commercial use provided in
Article 39.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), the Intellectual Property
Office, in consultation with the appropriate government agencies, shall issue the appropriate rules and regulations necessary therein not
later than one hundred twenty (120) days after the enactment of this law;

3
 "72.5. Where the act consists of the preparation for individual cases, in a pharmacy or by a medical professional, of a medicine in
accordance with a medical shall apply after a drug or medicine has been introduced in the Philippines or anywhere else in the world by the
patent owner, or by any party authorized to use the invention: Provided, further, That the right to import the drugs and medicines
contemplated in this section shall be available to any government agency or any private third party; xxx 7
The unqualified right of private third parties such as petitioner to import or possess "unregistered imported drugs" in the Philippines is further
confirmed by the "Implementing Rules to Republic Act No. 9502" promulgated on 4 November 2008. 8 The relevant provisions thereof read:
Rule 9. Limitations on Patent Rights. The owner of a patent has no right to prevent third parties from performing, without his authorization, the
acts referred to in Section 71 of the IP Code as enumerated hereunder:
(i) Introduction in the Philippines or Anywhere Else in the World.
Using a patented product which has been put on the market in the Philippines by the owner of the product, or with his express consent, insofar as
such use is performed after that product has been so put on the said market:Provided, That, with regard to drugs and medicines, the limitation on
patent rights shall apply after a drug or medicine has been introduced in the Philippines or anywhere else in the world by the patent owner, or by any
party authorized to use the invention: Provided, further, That the right to import the drugs and medicines contemplated in this section shall be
available to any government agency or any private third party. (72.1)1avvphi1
The drugs and medicines are deemed introduced when they have been sold or offered for sale anywhere else in the world. (n)
It may be that Rep. Act No. 9502 did not expressly repeal any provision of the SLCD. However, it is clear that the SLCOs classification of
"unregistered imported drugs" as "counterfeit drugs," and of corresponding criminal penalties therefore are irreconcilably in the imposition conflict
with Rep. Act No. 9502 since the latter indubitably grants private third persons the unqualified right to import or otherwise use such drugs. Where a
statute of later date, such as Rep. Act No. 9502, clearly reveals an intention on the part of the legislature to abrogate a prior act on the subject that
intention must be given effect.9 When a subsequent enactment covering a field of operation coterminus with a prior statute cannot by any reasonable
construction be given effect while the prior law remains in operative existence because of irreconcilable conflict between the two acts, the latest
legislative expression prevails and the prior law yields to the extent of the conflict. 10 Irreconcilable inconsistency between two laws embracing the
same subject may exist when the later law nullifies the reason or purpose of the earlier act, so that the latter loses all meaning and function.11 Legis
posteriors priores contrarias abrogant.
For the reasons above-stated, the prosecution of petitioner is no longer warranted and the quested writ of prohibition should accordingly be issued.
III.
Had the Court proceeded to directly confront the constitutionality of the assailed provisions of the SLCD, it is apparent that it would have at least
placed in doubt the validity of the provisions. As written, the law makes a criminal of any person who imports an unregistered drug regardless of the
purpose, even if the medicine can spell life or death for someone in the Philippines. It does not accommodate the situation where the drug is out of
stock in the Philippines, beyond the reach of a patient who urgently depends on it. It does not allow husbands, wives, children, siblings, parents to
import the drug in behalf of their loved ones too physically ill to travel and avail of the meager personal use exemption allotted by the law. It
discriminates, at the expense of health, against poor Filipinos without means to travel abroad to purchase less expensive medicines in favor of their
wealthier brethren able to do so. Less urgently perhaps, but still within the range of constitutionally protected behavior, it deprives Filipinos to
choose a less expensive regime for their health care by denying them a plausible and safe means of purchasing medicines at a cheaper cost.
The absurd results from this far-reaching ban extends to implications that deny the basic decencies of humanity. The law would make criminals of
doctors from abroad on medical missions of such humanitarian organizations such as the International Red Cross, the International Red Crescent,
Medicin Sans Frontieres, and other
like-minded groups who necessarily bring their own pharmaceutical drugs when they embark on their missions of mercy. After all, they are disabled
from invoking the bare "personal use" exemption afforded by the SLCD.
Even worse is the fact that the law is not content with simply banning, at civil costs, the importation of unregistered drugs. It equates the importers of
such drugs, many of whom motivated to do so out of altruism or basic human love, with the malevolents who would alter or counterfeit
pharmaceutical drugs for reasons of profit at the expense of public safety. Note that the SLCD is a special law, and the traditional treatment of penal
provisions of special laws is that of malum prohibitumor punishable regardless of motive or criminal intent. For a law that is intended to help save
lives, the SLCD has revealed itself as a heartless, soulless legislative piece.
The challenged provisions of the SLCD apparently proscribe a range of constitutionally permissible behavior. It is laudable that with the passage of
Rep. Act No. 9502, the State has reversed course and allowed for a sensible and compassionate approach with respect to the importation of
pharmaceutical drugs urgently necessary for the peoples constitutionally-recognized right to health.
WHEREFORE, the petition is GRANTED in part. A writ of prohibition is hereby ISSUED commanding respondents from prosecuting petitioner
Romeo Rodriguez for violation of Section 4 or Rep. Act No. 8203. The Temporary Restraining Order dated 15 October 2001 is hereby made
PERMANENT. No pronouncements as to costs.
SO ORDERED.

Roma Drug vs RTC

G.R. No. 149907 April 16, 2009

FACTS: The petitioner Roma Drug was among the 6 local drugstores in Pampanga raided by the joint NBI and BFAD inspectors where various
medicines were found and seized on the strength of a search warrant issued by the RTC of Pampanga and upon the request of Glaxo Smithkline, a
registered corporation and the authorized Philippine distributor of the medicines seized from said drugstores. The NBI proceeded in filing a
complaint against petitioner for violation of Section 4 (in relation to Sections 3 and 5) of Republic Act No. 8203, also known as the Special Law on
Counterfeit Drugs (SLCD), with the Office of the Provincial Prosecutor in San Fernando, Pampanga. The law prohibits the sale of counterfeit drugs,
which include an "unregistered imported drug product". The term "unregistered" signifies lack of registration with the Bureau of Patent, Trademark
and Technology Transfer of a trademark of a drug in the name of a natural or juridical person. The seized drugs are identical in content with their
Philippine-registered counterparts. No claim was made that the drugs were adulterated in any way or mislabeled at the least. Their classification as
"counterfeit" is based solely on the fact that they were imported from abroad and not purchased from Philippine-registered owner of the patent or
trademark of the drugs.
4
Petitioner Roma Drug challenged the constitutionality of the SLCD during the preliminary investigation but the provincial prosecutors issued a
resolution recommending that Rodriguez, the owner of Roma Drug, be charged with violation of Section 4 of the SLCD.

Thus, Roma Drug filed a Petition for Prohibition before the Supreme Court questing the RTC-Guagua Pampanga and the Provincial Prosecutor to
desist from further prosecuting Rodriguez, and that Sections 3(b)(3), 4 and 5 of the SLCD be declared unconstitutional.

The Court issued a temporary restraining order enjoining the RTC from proceeding with the trial against Rodriguez, and the BFAD, the NBI and
Glaxo Smithkline from prosecuting the petitioners.

Glaxo Smithkline and the Office of the Solicitor General (OSG) have opposed the petition. On the constitutional issue, Glaxo Smithkline asserts the
rule that the SLCD is presumed constitutional. The OSG invokes the presumption of constitutionality of statutes and asserts that there is no clear and
unequivocal breach of the Constitution presented by the SLCD.

ISSUE: WON RA 9502 impliedly abrogates the provisions of RA 8203 (SLCD) with which the petitioner is criminally charged? Yes
HELD: (petition granted, writ of prohibition issued, TRO made permanent)
It may be that Rep. Act No. 9502 (Universally Accessible Cheaper and Quality Medicines Act of 2008) did not expressly repeal any provision of the
SLCD. However, it is clear that the SLCD's classification of "unregistered imported drugs" as "counterfeit drugs," and of corresponding criminal
penalties therefore are irreconcilably in the imposition conflict with Rep. Act No. 9502 since the latter indubitably grants private third persons the
unqualified right to import or otherwise use such drugs. Where a statute of later date, such as Rep. Act No. 9502, clearly reveals an intention on
the part of the legislature to abrogate a prior act on the subject that intention must be given effect. When a subsequent enactment covering a
field of operation co-terminus with a prior statute cannot by any reasonable construction be given effect while the prior law remains in operative
existence because of irreconcilable conflict between the two acts, the latest legislative expression prevails and the prior law yields to the extent of the
conflict. Irreconcilable inconsistency between two laws embracing the same subject may exist when the later law nullifies the reason or purpose of
the earlier act, so that the latter loses all meaning and function. Legis posteriors priores contrarias abrogant.
For the reasons above-stated, the prosecution of petitioner is no longer warranted and the quested writ of prohibition should accordingly be issued.

G.R. No. 97343 September 13, 1993

PASCUAL GODINES, petitioner,
vs.
THE HONORABLE COURT OF APPEALS, SPECIAL FOURTH DIVISION and SV-AGRO ENTERPRISES, INC.,respondents.
Jesus S. Anonat for petitioner.
Arturo M. Alinio for private respondent.
ROMERO, J.:
Through this petition for review in certiorari of a decision of the Court of Appeals affirming the decision of the trial court, petitioner Pascual
Godines seeks to reverse the adverse decision of the Court a quo that he was liable for infringement of patent and unfair competition. The dispositive
portion of the assailed decision is hereby quoted to wit:
WHEREFORE, with the elimination of the award for attorney's fees, the judgment appealed from is hereby AFFIRMED, with
costs against appellant. 1
The patent involved in this case is Letters Patent No. UM-2236 issued by the Philippine Patent Office to one Magdalena S. Villaruz on July 15, 1976.
It covers a utility model for a hand tractor or power tiller, the main components of which are the following: "(1) a vacuumatic house float; (2) a
harrow with adjustable operating handle; (3) a pair of paddy wheels; (4) a protective water covering for the engine main drive; (5) a transmission
case; (6) an operating handle; (7) an engine foundation on the top midportion of the vacuumatic housing float to which the main engine drive is
detachedly installed; (8) a frontal frame extension above the quarter circularly shaped water covering hold (sic) in place the transmission case; (9)
a V-belt connection to the engine main drive with transmission gear through the pulley, and (10) an idler pulley installed on the engine
foundation." 2 The patented hand tractor works in the following manner: "the engine drives the transmission gear thru the V-belt, a driven pulley and
a transmission shaft. The engine drives the transmission gear by tensioning of the V-belt which is controlled by the idler pulley. The V-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 U-shaped G.I. pipe at the V-shaped
end." 3
The above mentioned patent was acquired by SV-Agro Industries Enterprises, Inc., herein private respondent, from Magdalena Villaruz, its chairman
and president, by virtue of a Deed of Assignment executed by the latter in its favor. On October 31, 1979, SV-Agro Industries caused the publication
of the patent in Bulletin Today, a newspaper of general circulation.
In accordance with the patent, private respondent manufactured and sold the patented power tillers with the patent imprinted on them. In 1979, SV-
Agro Industries suffered a decline of more than 50% in sales in its Molave, Zamboanga del Sur branch. Upon investigation, it discovered that power
tillers similar to those patented by private respondent were being manufactured and sold by petitioner herein. Consequently, private respondent
notified Pascual Godines about the existing patent and demanded that the latter stop selling and manufacturing similar power tillers. Upon petitioner's
failure to comply with the demand, SV-Agro Industries filed before the Regional Trial Court a complaint for infringement of patent and unfair
competition.
After trial, the court held Pascual Godines liable for infringement of patent and unfair competition. The dispositive portion of the decision reads as
follows:

5
 WHEREFORE, premises considered, JUDGMENT is hereby rendered in favor of the plaintiff SV-Agro Industries Enterprises,
Inc., and against defendant Pascual Godines:
1. Declaring the writ of preliminary injunction issued by this Court against defendant as permanent;
2. Ordering defendant Pascual Godines to pay plaintiff the sum of Fifty Thousand Pesos (P50,000.00) as damages to its business
reputation and goodwill, plus the further sum of Eighty Thousand Pesos (P80,000.00) for unrealized profits during the period
defendant was manufacturing and selling copied or imitation floating power tiller;
3. Ordering the defendant to pay the plaintiff, the further sum of Eight Thousand Pesos (P8,000.00) as reimbursement of
attorney's fees and other expenses of litigation; and to pay the costs of the suit.
SO ORDERED. 4
The decision was affirmed by the appellate court.
Thereafter, this petition was filed. Petitioner 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
specifications; hence, he could not be liable for infringement of patent and unfair competition; and that those made by him were different from those
being manufactured and sold by private respondent.
We find no merit in his arguments. The question of whether petitioner was manufacturing and selling power tillers is a question of fact better
addressed to the lower courts. In dismissing the first argument of petitioner herein, the Court of Appeals quoted the findings of the court, to wit:
It is the contention of defendant that he did not manufacture or make imitations or copies of plaintiff's turtle power tiller as what
he merely did was to fabricate his floating power tiller upon specifications and designs of those who ordered them. However, this
contention appears untenable in the light of the following circumstances: 1) he admits in his Answer that he has been
manufacturing power tillers or hand tractors, selling and distributing them long before plaintiff started selling its turtle power
tiller in Zamboanga del Sur and Misamis Occidental, meaning that defendant is principally a manufacturer of power tillers, not
upon specification and design of buyers, but upon his own specification and design; 2) it would be unbelievable that defendant
would fabricate power tillers similar to the turtle power tillers of plaintiff upon specifications of buyers without requiring a job
order where the specification and designs of those ordered are specified. No document was (sic) ever been presented showing
such job orders, and it is rather unusual for defendant to manufacture something without the specification and designs,
considering that he is an engineer by profession and proprietor of the Ozamis Engineering shop. On 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 jobs and material wastage. Defendant judicially
admitted two (2) units of the turtle power tiller sold by him to Policarpio Berondo. 5
Of general acceptance is the rule imbedded in our jurisprudence that ". . . the jurisdiction of the Supreme Court in cases brought to it from the Court
of Appeals in a petition for certiorari under Rule 45 of the Rules of Court is limited to the review of errors of law, and that said appellate court's
findings of fact are conclusive upon this Court." 6
The fact that petitioner herein manufactured and sold power tillers without patentee's authority has been established by the courts despite petitioner's
claims to the contrary.
The question now arises: Did petitioner's product infringe upon the patent of private respondent?
Tests have been established to determine infringement. These are (a) literal infringement; and (b) the doctrine of equivalents. 7 In using literal
infringement as a test, ". . . resort must be had, in the first instance, to the words of the claim. If accused matter clearly falls within the claim,
infringement is made out and that is the end of it." 8 To determine whether the particular item falls within the literal meaning of the patent claims, the
court must juxtapose the claims of the patent and the accused product within the overall context of the claims and specifications, to determine
whether there is exact identity of all material elements. 9
The trial court made the following observation:
Samples of the defendant's floating power tiller have been produced and inspected by the court and compared with that of the
turtle power tiller of the plaintiff (see Exhibits H to H-28). In appearance and form, both the floating power tillers of the
defendant and the turtle power tiller of the plaintiff are virtually the same. Defendant admitted to the Court that two (2) of the
power inspected on March 12, 1984, were manufactured and sold by him (see TSN, March 12, 1984, p. 7). The three power
tillers were placed alongside with each other. At the center was the turtle power tiller of plaintiff, and on both sides thereof were
the floating power tillers of defendant (Exhibits H to H-2). Witness Rodrigo took photographs of the same power tillers (front,
side, top and back views for purposes of comparison (see Exhibits H-4 to H-28). Viewed from any perspective or angle, the
power tiller of the defendant is identical and similar to that of the turtle power tiller of plaintiff in form, configuration, design and
appearance. The parts or components thereof are virtually the same. Both have the circularly-shaped vacuumatic housing float, a
paddy in front, a protective water covering, a transmission box housing the transmission gears, a handle which is V-shaped and
inclined upwardly, attached to the side of the vacuumatic housing float and supported by the upstanding G.I. pipes and an engine
base at the top midportion of the vacuumatic housing float to which the engine drive may be attached. In operation, the floating
power tiller of the defendant operates also in similar manner as the turtle power tiller of plaintiff. This was admitted by the
defendant himself in court that they are operating on the same principles. (TSN, August 19, 1987, p. 13) 10
Moreover, it is also observed that petitioner also called his power tiller as a floating power tiller. The patent issued by the Patent Office referred to a
"farm implement but more particularly to a turtle hand tractor having a vacuumatic housing float 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." 11 It 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. We are compelled
to arrive at no other conclusion but that there was infringement.
Petitioner's argument that his power tillers were different from private respondent's is that of a drowning man clutching at straws.
Recognizing that the logical fallback position of one in the place of defendant is to aver that his product is different from the patented one, courts
have adopted the doctrine of equivalents which recognizes that minor modifications in a patented invention are sufficient to put the item beyond the
scope of literal infringement. 12 Thus, according to this doctrine, "(a)n infringement also occurs when a device appropriates a prior invention by
incorporating its innovative concept and, albeit with some modification and change, performs substantially the same function in substantially the

6
same way to achieve substantially the same result." 13 The reason for the doctrine of equivalents 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 indeed encourage 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. 14
In this case, the trial court observed:
Defendant's witness Eduardo Caete, employed for 11 years as welder of the Ozamis Engineering, and therefore actually
involved in the making of the floating power tillers of defendant tried to explain the difference between the floating power tillers
made by the defendant. But a careful examination between the two power tillers will show that they will operate on the same
fundamental principles. And, according to establish jurisprudence, in infringement of patent, similarities or differences 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 specifically, it is necessary and sufficient to constitute equivalency 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 operation; but where these
tests are satisfied, mere differences of form or name are immaterial. . . . 15
It also stated:
To establish an infringement, it is not essential to show that the defendant adopted the device or process in every particular; Proof
of an adoption of the substance of the thing will be sufficient. "In one sense," said Justice Brown, "it may be said that no device
can be adjudged an infringement that does not substantially correspond with the patent. But another construction, which would
limit these words to exact mechanism described in the patent, would be so obviously unjust that no court could be expected to
adopt it. . . .
The law will protect a patentee against imitation of his patent by other forms and proportions. If two devices do the same work in
substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name,
form, or shape. 16
We pronounce petitioner liable for infringement in accordance with Section 37 of Republic Act No. 165, as amended, providing, inter alia:
Sec. 37. Right of Patentees. A patentee shall have the exclusive right to make, use and sell the patented machine, article or
product, and to use the patented process for the purpose of industry or commerce, throughout the territory of the Philippines for
the terms of the patent; and such making, using, or selling by any person without the authorization of the Patentee constitutes
infringement of the patent. (Emphasis ours)
As far as the issue regarding unfair competition is concerned, suffice it to say that Republic Act No. 166, as amended, provides, inter alia:
Sec. 29. Unfair competition, rights and remedies. . . .
xxx xxx xxx
In particular, and without in any way limiting the scope of unfair competition, the following shall be deemed guilty of unfair
competition:
(a) Any person, who in selling his goods shall give them the general appearance of goods of another manufacturer or dealer,
either as to the goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon,
or in any other feature of their appearance, which would be likely to influence purchasers that the goods offered are those of a
manufacturer or dealer other than the actual manufacturer or dealer, or who otherwise clothes the goods with such appearance as
shall deceive the public and defraud another of his legitimate trade. . . .
xxx xxx xxx
Considering the foregoing, we find no reversible error in the decision of the Court of Appeals affirming with modification the decision of the trial
court.
WHEREFORE, premises considered, the decision of the Court of Appeals is hereby AFFIRMED and this petition DENIED for lack of merit.

Facts:
Respondent SV-Agro Industries acquired a letter patent issued to one Magdalena Villaruz which covers a utility model for hand tractor or power tiller
by virtue of a deed of assignment executed by the latter in its favor. Respondent after suffering a decline in sales of the patented power tillers,
investigated and discovered that petitioner Godines was manufacturing the same power tillers as they have. Respondent thus filed a complaint for
patent infringement and unfair competition against petitioner Godines. The trial court held petitioner liable for infringement. CA affirmed.
Issue:
Whether or not petitioners products infringe upon the patent of respondent SV-Agro.
Ruling: YES.
Tests have been established to determine infringement. These are (a) literal infringement; and (b) the doctrine of equivalents. In using literal
infringement as a test, . . . resort must be had, in the first instance, to the words of the claim. If accused matter clearly falls within the claim,
infringement is made out and that is the end of it. To determine whether the particular item falls within the literal meaning of the patent claims, the
court must juxtapose the claims of the patent and the accused product within the overall context of the claims and specifications, to determine
whether there is exact identity of all material elements. It appears from the observation of the trial court that these claims of the patent and the
features of the patented utility model were copied by petitioner: In appearance and form, both the floating power tillers of the defendant and the
turtle power tiller of the plaintiff are virtually the same. Viewed from any perspective or angle, the power tiller of the defendant is identical and
similar to that of the turtle power tiller of plaintiff in form, configuration, design and appearance. The parts or components thereof are virtually the
same. In operation, the floating power tiller of the defendant operates also in similar manner as the turtle power tiller of plaintiff.
Petitioners argument that his power tillers were different from private respondents is that of a drowning man clutching at straws. Recognizing that
the logical fallback position of one in the place of defendant is to aver that his product is different from the patented one, courts have adopted the
doctrine of equivalents. Thus, according to this doctrine, (a)n infringement also occurs when a device appropriates a prior invention by
incorporating its innovative concept and, albeit with some modification and change, performs substantially the same function in substantially the
same way to achieve substantially the same result. In this case, the trial court observed: But a careful examination between the two power tillers will
show that they will operate on the same fundamental principles.
We are compelled to arrive at no other conclusion but that there was infringement.

7
G. R. No. 126627 August 14, 2003
SMITH KLINE BECKMAN CORPORATION, Petitioner,
vs.
THE HONORABLE COURT OF APPEALS and TRYCO PHARMA CORPORATION, Respondents.
DECISION
CARPIO-MORALES, J.:
Smith Kline Beckman Corporation (petitioner), a corporation existing by virtue of the laws of the state of Pennsylvania, United States of America
(U.S.) and licensed to do business in the Philippines, filed on October 8, 1976, as assignee, before the Philippine Patent Office (now Bureau of
Patents, Trademarks and Technology Transfer) an application for patent over an invention entitled "Methods and Compositions for Producing
Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate." The application bore Serial No. 18989.
On September 24, 1981, Letters Patent No. 145611 for the aforesaid invention was issued to petitioner for a term of seventeen (17) years.
The letters patent provides in its claims2 that the patented invention consisted of a new compound named methyl 5 propylthio-2-benzimidazole
carbamate and the methods or compositions utilizing the compound as an active ingredient in fighting infections caused by gastrointestinal parasites
and lungworms in animals such as swine, sheep, cattle, goats, horses, and even pet animals.
Tryco Pharma Corporation (private respondent) is a domestic corporation that manufactures, distributes and sells veterinary products including
Impregon, a drug that has Albendazole for its active ingredient and is claimed to be effective against gastro-intestinal roundworms, lungworms,
tapeworms and fluke infestation in carabaos, cattle and goats.
Petitioner sued private respondent for infringement of patent and unfair competition before the Caloocan City Regional Trial Court (RTC).3 It
claimed that its patent covers or includes the substance Albendazole such that private respondent, by manufacturing, selling, using, and causing to be
sold and used the drug Impregon without its authorization, infringed Claims 2, 3, 4, 7, 8 and 9 of Letters Patent No. 145614 as well as committed
unfair competition under Article 189, paragraph 1 of the Revised Penal Code and Section 29 of Republic Act No. 166 (The Trademark Law) for
advertising and selling as its own the drug Impregon although the same contained petitioners patented Albendazole. 5
On motion of petitioner, Branch 125 of the Caloocan RTC issued a temporary restraining order against private respondent enjoining it from
committing acts of patent infringement and unfair competition. 6 A writ of preliminary injunction was subsequently issued. 7
Private respondent in its Answer8 averred that Letters Patent No. 14561 does not cover the substance Albendazole for nowhere in it does that word
appear; that even if the patent were to include Albendazole, such substance is unpatentable; that the Bureau of Food and Drugs allowed it to
manufacture and market Impregon with Albendazole as its known ingredient; that there is no proof that it passed off in any way its veterinary
products as those of petitioner; that Letters Patent No. 14561 is null and void, the application for the issuance thereof having been filed beyond the
one year period from the filing of an application abroad for the same invention covered thereby, in violation of Section 15 of Republic Act No. 165
(The Patent Law); and that petitioner is not the registered patent holder.
Private respondent lodged a Counterclaim against petitioner for such amount of actual damages as may be proven; P1,000,000.00 in moral
damages; P300,000.00 in exemplary damages; and P150,000.00 in attorneys fees.
Finding for private respondent, the trial court rendered a Decision dated July 23, 1991, 9 the dispositive portion of which reads:
WHEREFORE, in view of the foregoing, plaintiffs complaint should be, as it is hereby, DISMISSED. The Writ of injunction issued in connection
with the case is hereby ordered DISSOLVED.
The Letters Patent No. 14561 issued by the then Philippine Patents Office is hereby declared null and void for being in violation of Sections 7, 9 and
15 of the Patents Law.
Pursuant to Sec. 46 of the Patents Law, the Director of Bureau of Patents is hereby directed to cancel Letters Patent No. 14561 issued to the plaintiff
and to publish such cancellation in the Official Gazette.
Defendant Tryco Pharmaceutical Corporation is hereby awarded P330,000.00 actual damages and P100,000.00 attorneys fees as prayed for in its
counterclaim but said amount awarded to defendant is subject to the lien on correct payment of filing fees.
SO ORDERED. (Underscoring supplied)
On appeal, the Court of Appeals, by Decision of April 21, 1995, 10 upheld the trial courts finding that private respondent was not liable for any
infringement of the patent of petitioner in light of the latters failure to show that Albendazole is the same as the compound subject of Letters Patent
No. 14561. Noting petitioners admission of the issuance by the U.S. of a patent for Albendazole in the name of Smith Kline and French Laboratories
which was petitioners former corporate name, the appellate court considered the U.S. patent as implying that Albendazole is different from methyl 5
propylthio-2-benzimidazole carbamate. It likewise found that private respondent was not guilty of deceiving the public by misrepresenting that
Impregon is its product.
The appellate court, however, declared that Letters Patent No. 14561 was not void as it sustained petitioners explanation that Patent Application
Serial No. 18989 which was filed on October 8, 1976 was a divisional application of Patent Application Serial No. 17280 filed on June 17, 1975 with
the Philippine Patent Office, well within one year from petitioners filing on June 19, 1974 of its Foreign Application Priority Data No. 480,646 in
the U.S. covering the same compound subject of Patent Application Serial No. 17280.
Applying Section 17 of the Patent Law, the Court of Appeals thus ruled that Patent Application Serial No. 18989 was deemed filed on June 17, 1995
or still within one year from the filing of a patent application abroad in compliance with the one-year rule under Section 15 of the Patent Law. And it
rejected the submission that the compound in Letters Patent No. 14561 was not patentable, citing the jurisprudentially established presumption that
the Patent Offices determination of patentability is correct. Finally, it ruled that petitioner established itself to be the one and the same assignee of
the patent notwithstanding changes in its corporate name. Thus the appellate court disposed:
WHEREFORE, the judgment appealed from is AFFIRMED with the MODIFICATION that the orders for the nullification of Letters Patent No.
14561 and for its cancellation are deleted therefrom.
SO ORDERED.
Petitioners motion for reconsideration of the Court of Appeals decision having been denied 11 the present petition for review on certiorari12 was
filed, assigning as errors the following:
I. THE COURT OF APPEALS GRAVELY ERRED IN NOT FINDING THAT ALBENDAZOLE, THE ACTIVE INGREDIENT IN
TRYCOS "IMPREGON" DRUG, IS INCLUDED IN PETITIONERS LETTERS PATENT NO. 14561, AND THAT CONSEQUENTLY
TRYCO IS ANSWERABLE FOR PATENT INFRINGEMENT.
8
 II. THE COURT OF APPEALS GRAVELY ERRED IN AWARDING TO PRIVATE RESPONDENT TRYCO PHARMA
CORPORATION P330,000.00 ACTUAL DAMAGES AND P100,000.00 ATTORNEYS FEES.
Petitioner argues that under the doctrine of equivalents for determining patent infringement, Albendazole, the active ingredient it alleges was
appropriated by private respondent for its drug Impregon, is substantially the same as methyl 5 propylthio-2-benzimidazole carbamate covered by its
patent since both of them are meant to combat worm or parasite infestation in animals. It cites the "unrebutted" testimony of its witness Dr.
Godofredo C. Orinion (Dr. Orinion) that the chemical formula in Letters Patent No. 14561 refers to the compound Albendazole. Petitioner adds that
the two substances substantially do the same function in substantially the same way to achieve the same results, thereby making them truly identical.
Petitioner thus submits that the appellate court should have gone beyond the literal wordings used in Letters Patent No. 14561, beyond merely
applying the literal infringement test, for in spite of the fact that the word Albendazole does not appear in petitioners letters patent, it has ably shown
by evidence its sameness with methyl 5 propylthio-2-benzimidazole carbamate.
Petitioner likewise points out that its application with the Philippine Patent Office on account of which it was granted Letters Patent No. 14561 was
merely a divisional application of a prior application in the U. S. which granted a patent for Albendazole. Hence, petitioner concludes that both
methyl 5 propylthio-2-benzimidazole carbamate and the U.S.-patented Albendazole are dependent on each other and mutually contribute to produce a
single result, thereby making Albendazole as much a part of Letters Patent No. 14561 as the other substance is.
Petitioner concedes in its Sur-Rejoinder13 that although methyl 5 propylthio-2-benzimidazole carbamate is not identical with Albendazole, the former
is an improvement or improved version of the latter thereby making both substances still substantially the same.
With respect to the award of actual damages in favor of private respondent in the amount of P330,000.00 representing lost profits, petitioner assails
the same as highly speculative and conjectural, hence, without basis. It assails too the award of P100,000.00 in attorneys fees as not falling under
any of the instances enumerated by law where recovery of attorneys fees is allowed.
In its Comment,14 private respondent contends that application of the doctrine of equivalents would not alter the outcome of the case, Albendazole
and methyl 5 propylthio-2-benzimidazole carbamate being two different compounds with different chemical and physical properties. It stresses that
the existence of a separate U.S. patent for Albendazole indicates that the same and the compound in Letters Patent No. 14561 are different from each
other; and that since it was on account of a divisional application that the patent for methyl 5 propylthio-2-benzimidazole carbamate was issued, then,
by definition of a divisional application, such a compound is just one of several independent inventions alongside Albendazole under petitioners
original patent application.
As has repeatedly been held, only questions of law may be raised in a petition for review on certiorari before this Court. Unless the factual findings of
the appellate court are mistaken, absurd, speculative, conjectural, conflicting, tainted with grave abuse of discretion, or contrary to the findings culled
by the court of origin,15 this Court does not review them.
From an examination of the evidence on record, this Court finds nothing infirm in the appellate courts conclusions with respect to the principal issue
of whether private respondent committed patent infringement to the prejudice of petitioner.
The burden of proof to substantiate a charge for patent infringement rests on the plaintiff.16 In the case at bar, petitioners evidence consists primarily
of its Letters Patent No. 14561, and the testimony of Dr. Orinion, its general manager in the Philippines for its Animal Health Products Division, by
which it sought to show that its patent for the compound methyl 5 propylthio-2-benzimidazole carbamate also covers the substance Albendazole.
From a reading of the 9 claims of Letters Patent No. 14561 in relation to the other portions thereof, no mention is made of the compound
Albendazole. All that the claims disclose are: the covered invention, that is, the compound methyl 5 propylthio-2-benzimidazole carbamate; the
compounds being anthelmintic but nontoxic for animals or its ability to destroy parasites without harming the host animals; and the patented
methods, compositions or preparations involving the compound to maximize its efficacy against certain kinds of parasites infecting specified animals.
When the language of its claims is clear and distinct, the patentee is bound thereby and may not claim anything beyond them. 17 And so are the courts
bound which may not add to or detract from the claims matters not expressed or necessarily implied, nor may they enlarge the patent beyond the
scope of that which the inventor claimed and the patent office allowed, even if the patentee may have been entitled to something more than the words
it had chosen would include.18
It bears stressing that the mere absence of the word Albendazole in Letters Patent No. 14561 is not determinative of Albendazoles non-inclusion in
the claims of the patent. While Albendazole is admittedly a chemical compound that exists by a name different from that covered in petitioners
letters patent, the language of Letter Patent No. 14561 fails to yield anything at all regarding Albendazole. And no extrinsic evidence had been
adduced to prove that Albendazole inheres in petitioners patent in spite of its omission therefrom or that the meaning of the claims of the patent
embraces the same.
While petitioner concedes that the mere literal wordings of its patent cannot establish private respondents infringement, it urges this Court to apply
the doctrine of equivalents.
The doctrine of equivalents provides that an infringement also takes place when a device appropriates a prior invention by incorporating its
innovative concept and, although with some modification and change, performs substantially the same function in substantially the same way to
achieve substantially the same result.19 Yet again, a scrutiny of petitioners evidence fails to convince this Court of the substantial sameness of
petitioners patented compound and Albendazole. While both compounds have the effect of neutralizing parasites in animals,identity of result does
not amount to infringement of patent unless Albendazole operates in substantially the same way or by substantially the same means as the patented
compound, even though it performs the same function and achieves the same result.20 In other words, the principle or mode of operation must be
the same or substantially the same.21
The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the patentee having the burden to show that all three
components of such equivalency test are met.22
As stated early on, petitioners evidence fails to explain how Albendazole is in every essential detail identical to methyl 5 propylthio-2-
benzimidazole carbamate. Apart from the fact that Albendazole is an anthelmintic agent like methyl 5 propylthio-2-benzimidazole carbamate,
nothing more is asserted and accordingly substantiated regarding the method or means by which Albendazole weeds out parasites in animals, thus
giving no information on whether that method is substantially the same as the manner by which petitioners compound works. The testimony of Dr.
Orinion lends no support to petitioners cause, he not having been presented or qualified as an expert witness who has the knowledge or expertise on
the matter of chemical compounds.
As for the concept of divisional applications proffered by petitioner, it comes into play when two or more inventions are claimed in a single
application but are of such a nature that a single patent may not be issued for them. 23 The applicant thus is required "to divide," that is, to limit the
claims to whichever invention he may elect, whereas those inventions not elected may be made the subject of separate applications which are called

9
"divisional applications."24 What this only means is that petitioners methyl 5 propylthio-2-benzimidazole carbamate is an invention distinct from the
other inventions claimed in the original application divided out, Albendazole being one of those other inventions. Otherwise, methyl 5 propylthio-2-
benzimidazole carbamate would not have been the subject of a divisional application if a single patent could have been issued for it as well as
Albendazole.1wphi1
The foregoing discussions notwithstanding, this Court does not sustain the award of actual damages and attorneys fees in favor of private
respondent. The claimed actual damages of P330,000.00 representing lost profits or revenues incurred by private respondent as a result of the
issuance of the injunction against it, computed at the rate of 30% of its alleged P100,000.00 monthly gross sales for eleven months, were supported
by the testimonies of private respondents President25 and Executive Vice-President that the average monthly sale of Impregon was P100,000.00 and
that sales plummeted to zero after the issuance of the injunction. 26 While indemnification for actual or compensatory damages covers not only the
loss suffered (damnum emergens) but also profits which the obligee failed to obtain (lucrum cessans or ganacias frustradas), it is necessary to prove
the actual amount of damages with a reasonable degree of certainty based on competent proof and on the best evidence obtainable by the injured
party.27 The testimonies of private respondents officers are not the competent proof or best evidence obtainable to establish its right to actual or
compensatory damages for such damages also require presentation of documentary evidence to substantiate a claim therefor. 28
In the same vein, this Court does not sustain the grant by the appellate court of attorneys fees to private respondent anchored on Article 2208 (2) of
the Civil Code, private respondent having been allegedly forced to litigate as a result of petitioners suit. Even if a claimant is compelled to litigate
with third persons or to incur expenses to protect its rights, still attorneys fees may not be awarded where no sufficient showing of bad faith could be
reflected in a partys persistence in a case other than an erroneous conviction of the righteousness of his cause. 29 There exists no evidence on record
indicating that petitioner was moved by malice in suing private respondent.
This Court, however, grants private respondent temperate or moderate damages in the amount of P20,000.00 which it finds reasonable under the
circumstances, it having suffered some pecuniary loss the amount of which cannot, from the nature of the case, be established with certainty. 30
WHEREFORE, the assailed decision of the Court of Appeals is hereby AFFIRMED with MODIFICATION. The award of actual or compensatory
damages and attorneys fees to private respondent, Tryco Pharma Corporation, is DELETED; instead, it is hereby awarded the amount of P20,000.00
as temperate or moderate damages.
SO ORDERED.

When the language of its claims is clear and distinct, the patentee is bound thereby and may not claim anything beyond them.
Petitioner Smith Kline Beckman Corporation (SKBC) was granted by the Philippine Patent Office Letters Patent No. 14561 over an invented
compound entitled Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole
Carbamate. Such compound is claimed to be an active ingredient in fighting various parasites in certain types of domestic and livestock animals.
Respondent Tryco Pharma (Tryco) sells veterinary products including a drug Impregon which contains Albendazole as an activeingredient which
fights against parasites in animals. Petitioner SKBC then filed an action against respondent Tryco for patent infringement claiming that the patent
granted to them includes said Albendazole. In their defense respondent Tryco alleges that Letters Patent No. 14561 granted to petitioner SKBC does
not include Albendazole for nowhere is such word found in the patent. The Trial Court rendered its decision in favor of respondent Tryco which was
affirmed by the Court of Appeals.
ISSUES:
Whether or not the Court of Appeals erred in not finding that Albendazole is included in petitioners Letter Pattent No. 14561
HELD:
From an examination of the evidence on record, the Court finds nothing infirm in the appellate courts conclusions with respect to the
principal issue of whether Tycho Pharma committed patent infringement to the prejudice of SKBC. The burden of proof to substantiate a charge for
patent infringement rests on the plaintiff. In the case at bar, petitioners evidence consists primarily of its Letters Patent No. 14561, and the testimony
of Dr. Orinion, its general manager in the Philippines for its Animal Health Products Division, by which it sought to show that its patent for the
compound methyl 5 propylthio-2- benzimidazole carbamate also covers the substance Albendazole. From a reading of the 9 claims of Letters Patent
No. 14561 in relation to the other portions thereof, no mention is made of the compound Albendazole.
When the language of its claims is clear and distinct, the patentee is bound thereby and may not claim anything beyond them. And so are the courts
bound which may not add to or detract from the claims matters not expressed or necessarily implied, nor may they enlargethe patent beyond the
scope of that which the inventor claimed and the patent office allowed, even if the patentee may have been entitled to something more than the words
it had chosen would include. It bears stressing that the mere absence of the word Albendazole in Letters Patent No. 14561 is not determinative of
Albendazoles non-inclusion in the claims of the patent. While Albendazole is admittedly a chemical compound that exists by a name different from
that covered in SKBCs letters patent, the language of Letter Patent No. 14561 fails to yield anything at all regarding Albendazole. And no extrinsic
evidence had been adduced to prove that Albendazole inheres in SKBCs patent in spite of its omission therefrom or that the meaning of the claims
of the patent embraces the same. While SKBC concedes that the mere literal wordings of its patent cannot establish Tyco Pharmas infringement, it
urges the Court to apply the doctrine of equivalents.
The doctrine of equivalents provides that an infringement also takes place when a device appropriates a prior invention by incorporating its
innovative concept and, although with some modification and change, performs substantially the same function in substantially the same way to
achieve substantially the same result. Yet again, a scrutiny of SKBCs evidence fails to convince the Court of the substantial sameness of SKBCs
patented compound and Albendazole. While both compounds have the effect of neutralizing parasites in animals, identity of result does
not amount to infringement of patent unless Albendazole operates in substantially the same way or by substantially the same means as the patented
compound, even though it performs the same function and achieves the same result.
In other words, the principle or mode of operation must be the same or substantially the same. The doctrine of equivalents thus requires satisfaction
of the function-means-and-result test, the patentee having the burden to show that all three components of such equivalency test are met.

[G.R. No. 134217. May 11, 2000]

KENNETH ROY SAVAGE/K ANGELIN EXPORT TRADING, owned and managed by GEMMA DEMORAL-SAVAGE, petitioners,
vs. JUDGE APRONIANO B. TAYPIN, Presiding Judge, RTC-BR. 12, Cebu City, CEBU PROVINCIAL PROSECUTOR'S OFFICE,
NATIONAL BUREAU OF INVESTIGATION, Region VII, Cebu City, JUANITA NG MENDOZA, MENDCO DEVELOPMENT
CORPORATION, ALFREDO SABJON and DANTE SOSMEA, respondents.

10
 DECISION
BELLOSILLO, J.: Supreme
Petitioners KENNETH ROY SAVAGE and K ANGELIN EXPORT TRADING, owned and managed by GEMMA DEMORAL-SAVAGE, seek to
nullify the search warrant issued by respondent Judge Aproniano B. Taypin of the Regional Trial Court, Br. 12 Cebu City, which resulted in the
seizure of certain pieces of wrought iron furniture from the factory of petitioners located in Biasong, Talisay, Cebu. Their motion to quash the search
warrant was denied by respondent Judge as well as their motion to reconsider the denial. Hence, this petition for certiorari.
The antecedent facts: Acting on a complaint lodged by private respondent Eric Ng Mendoza, president and general manager of Mendco Development
Corporation (MENDCO),[1]Supervising Agent Jose Ermie Monsanto of the National Bureau of Investigation (NBI) filed an application for search
warrant with the Regional Trial Court of Cebu City.[2] The application sought the authorization to search the premises of K Angelin Export
International located in Biasong, Talisay, Cebu, and to seize the pieces of wrought iron furniture found therein which were allegedly the object of
unfair competition involving design patents, punishable under Art. 189 of the Revised Penal Code as amended. The assailed Search Warrant No.
637-10-1697-12 was issued by respondent Judge on 16 October 1997 and executed in the afternoon of the following day by NBI agents. [3] Seized
from the factory were several pieces of furniture, indicated in the Inventory Sheet attached to the Return of Search Warrant, and all items seized have
remained in NBI custody up to the present.[4]
On 30 October 1997 petitioners moved to quash the search warrant alleging that: (a) the crime they were accused of did not exist; (b) the issuance of
the warrant was not based on probable cause; (c) the judge failed to ask the witnesses searching questions; and, (d) the warrant did not particularly
describe the things to be seized.[5]
On 10 November 1997 petitioners filed a Supplemental Motion to Quash where they additionally alleged that the assailed warrant was applied for
without a certification against forum shopping.[6] On 30 January 1998 respondent Judge denied the Motion to Quash and the Supplemental Motion to
Quash.[7] On 2 March 1998 petitioners moved to reconsider the denial of their motion to quash and alleged substantially the same grounds found in
their original Motion to Quash but adding thereto two (2) new grounds, namely: (a) respondent court has no jurisdiction over the subject-matter; and,
(b) respondent court failed to "substantiate" the order sought to be reconsidered. [8] The denial of their last motion[9] prompted petitioners to come to
this Court. Court
The principal issues that must be addressed in this petition are: (a) questions involving jurisdiction over the offense; (b) the need for a certification of
non-forum shopping; and, (c) the existence of the crime.
Petitioners claim that respondent trial court had no jurisdiction over the offense since it was not designated as a special court for Intellectual Property
Rights (IPR), citing in support thereof Supreme Court Administrative Order No. 113-95 designating certain branches of the Regional Trial Courts,
Metropolitan Trial Courts and Municipal Trial Courts in Cities as Special Courts for IPR. The courts enumerated therein are mandated to try and
decide violations of IPR including Art. 189 of the Revised Penal Code committed within their respective territorial jurisdictions. The sala of Judge
Benigno G. Gaviola of the RTC-Br. 9, Cebu City, was designated Special Court for IPR for the 7th Judicial Region. [10] Subsequently Supreme Court
Administrative Order No.104-96 was issued providing that jurisdiction over all violations of IPR was thereafter confined to the Regional Trial
Courts.[11]
The authority to issue search warrants was not among those mentioned in the administrative orders. But the Court has consistently ruled that a search
warrant is merely a process issued by the court in the exercise of its ancillary jurisdiction and not a criminal action which it may entertain pursuant to
its original jurisdiction.[12] The authority to issue search warrants is inherent in all courts and may be effected outside their territorial
jurisdiction.[13] In the instant case, the premises searched located in Biasong, Talisay, Cebu, are well within the territorial jurisdiction of the
respondent court.[14]
Petitioners apparently misconstrued the import of the designation of Special Courts for IPR. Administrative Order No. 113-95 merely specified
which court could "try and decide" cases involving violations of IPR. It did not, and could not, vest exclusive jurisdiction with regard to all matters
(including the issuance of search warrants and other judicial processes) in any one court. Jurisdiction is conferred upon courts by substantive law; in
this case, BP Blg.129, and not by a procedural rule, much less by an administrative order. [15] The power to issue search warrants for violations of IPR
has not been exclusively vested in the courts enumerated in Supreme Court Administrative Order No.113-95. J lexj
Petitioners next allege that the application for a search warrant should have been dismissed outright since it was not accompanied by a certification of
non-forum shopping, citing as authority therefor Washington Distillers, Inc. v. Court of Appeals. [16] In that case, we sustained the quashal of the
search warrant because the applicant had been guilty of forum shopping as private respondent sought a search warrant from the Manila Regional
Trial Court only after he was denied by the courts of Pampanga. The instant case differs significantly, for here there is no allegation of forum-
shopping, only failure to acquire a certification against forum-shopping. The Rules of Court as amended requires such certification only from
initiatory pleadings, omitting any mention of "applications."[17] In contrast, Supreme Court Circular 04-94, the old rule on the matter, required such
certification even from "applications." Our ruling in Washington Distillers required no such certification from applications for search warrants.
Hence, the absence of such certification will not result in the dismissal of an application for search warrant.
The last question to be resolved is whether unfair competition involving design patents punishable under Art. 189 of the Revised Penal Code exists in
this case. Prosecutor Ivan Herrero seems to agree as he filed the corresponding Information against petitioners on 17 March 1998.[18] However, since
the IPR Code took effect on 1 January 1998 any discussion contrary to the view herein expressed would be pointless. The repealing clause of the
Code provides -
All Acts and parts of Acts inconsistent herewith, more particularly, Republic Act No. 165, as amended; Republic Act No. 166, as
amended; and Articles 188 and 189 of the Revised Penal Code; Presidential Decree No. 49, including Presidential Decree No.
285, as amended, are hereby repealed (italics ours).[19]
The issue involving the existence of "unfair competition" as a felony involving design patents, referred to in Art. 189 of the Revised Penal Code, has
been rendered moot and academic by the repeal of the article.
The search warrant cannot even be issued by virtue of a possible violation of the IPR Code. The assailed acts specifically alleged were the
manufacture and fabrication of wrought iron furniture similar to that patented by MENDCO, without securing any license or patent for the same, for
the purpose of deceiving or defrauding Mendco and the buying public.[20] The Code defines "unfair competition" thus - Lexj uris
168.2. Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods
manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill, or
shall commit any acts calculated to produce said result, shall be guilty of unfair competition, and shall be subject to an action
therefor.

11
 168.3. In particular, and without in any way limiting the scope of protection against unfair competition, the following shall be
deemed guilty of unfair competition:
(a) Any person who is selling his goods and gives them the general appearance of goods of another
manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in which they
are contained, or the devices or words thereon, or in any other feature of their appearance which would be
likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer, other
than the actual manufacturer or dealer, or who otherwise clothes the goods with such appearance as shall
deceive the public and defraud another of his legitimate trade, or any subsequent vendor of such goods or any
agent of any vendor engaged in selling such goods with a like purpose;
(b) Any person who by any artifice, or device, or who employs any other means calculated to induce the false
belief that such person is offering the services of another who has identified such services in the mind of the
public; or
(c) Any person who shall make any false statement in the course of trade or who shall commit any other act
contrary to good faith of a nature calculated to discredit goods, businesses or services of another. [21]
There is evidently no mention of any crime of "unfair competition" involving design patents in the controlling provisions on Unfair Competition. It is
therefore unclear whether the crime exists at all, for the enactment of RA 8293 did not result in the reenactment of Art. 189 of the Revised Penal
Code. In the face of this ambiguity, we must strictly construe the statute against the State and liberally in favor of the accused, [22] for penal statutes
cannot be enlarged or extended by intendment, implication or any equitable consideration. [23] Respondents invoke jurisprudence to support their
contention that "unfair competition" exists in this case.[24] However, we are prevented from applying these principles, along with the new provisions
on Unfair Competition found in the IPR Code, to the alleged acts of the petitioners, for such acts constitute patent infringement as defined by the
same Code-Juri smis
Sec. 76. Civil Action for Infringement. - 76.1. The making, using, offering for sale, selling, or importing a patented product or a
product obtained directly or indirectly from a patented process, or the use of a patented process without authorization of the
patentee constitutes patent infringement.[25]
Although this case traces its origins to the year 1997 or before the enactment of the IPR Code, we are constrained to invoke the provisions of the
Code. Article 22 of the Revised Penal Code provides that penal laws shall be applied retrospectively, if such application would be beneficial to the
accused.[26] Since the IPR Code effectively obliterates the possibility of any criminal liability attaching to the acts alleged, then that Code must be
applied here.
In the issuance of search warrants, the Rules of Court requires a finding of probable cause in connection with one specific offense to be determined
personally by the judge after examination of the complainant and the witnesses he may produce, and particularly describing the place to be searched
and the things to be seized.[27] Hence, since there is no crime to speak of, the search warrant does not even begin to fulfill these stringent
requirements and is therefore defective on its face. The nullity of the warrant renders moot and academic the other issues raised in petitioners' Motion
to Quash and Motion for Reconsideration. Since the assailed search warrant is null and void, all property seized by virtue thereof should be returned
to petitioners in accordance with established jurisprudence. [28]
In petitioners' Reply with Additional Information they allege that the trial court denied their motion to transfer their case to a Special Court for IPR.
We have gone through the records and we fail to find any trace of such motion or even a copy of the order denying it. All that appears in the records
is a copy of an order granting a similar motion filed by a certain Minnie Dayon with regard to Search Warrant No. 639-10-1697-12.[29] This
attachment being immaterial we shall give it no further attention. Jjj uris
WHEREFORE, the Order of the Regional Trial Court, Br. 12, Cebu City, dated 30 January 1998, denying the Motion to Quash Search Warrant No.
637-10-1697-12 dated 30 October 1997 and the Supplemental Motion to Quash dated 10 November 1997 filed by petitioners, as well as the Order
dated 8 April 1998 denying petitioners' Motion for Reconsiderationdated 2 March 1998, is SET ASIDE. Search Warrant No. 637-10-1697-12 issued
on 16 October 1997 is ANNULLED and SET ASIDE, and respondents are ordered to return to petitioners the property seized by virtue of the illegal
search warrant.
SO ORDERED.

FACTS:

Acting on a complaint lodged by private respondent Eric Ng Mendoza, president and general manager of Mendco Development Corporation
(MENDCO), Supervising Agent Monsanto of the NBI filed an application for search warrant with the RTC of Cebu City. The application sought the
authorization to search the premises of K Angelin Export International located in Talisay, Cebu, and to seize the pieces of wrought iron furniture
found therein which were allegedly the object of unfair competition involving design patents, punishable under Art. 189 of the Revised Penal Code as
amended. Thereafter, seized from the factory were several pieces of furniture, indicated in search warrant, and all items seized have remained in NBI
custody up to the present.
Petitioners moved to quash the search warrant. Respondent Judge denied the Motion to Quash.
Petitioners claim that respondent trial court had no jurisdiction over the offense since it was not designated as a special court for Intellectual Property
Rights (IPR), citing in support thereof Supreme Court Administrative Order No. 113-95 designating certain branches of the Regional Trial Courts,
Metropolitan Trial Courts and Municipal Trial Courts in Cities as Special Courts for IPR. The courts enumerated therein are mandated to try and
decide violations of IPR including Art. 189 of the Revised Penal Code committed within their respective territorial jurisdictions. Subsequently
Supreme Court Administrative Order No. 104-96 was issued providing that jurisdiction over all violations of IPR was thereafter confined to the
Regional Trial Courts.

ISSUES:

1) Whether the respondent judge had authority/jurisdiction to issue the said search warrant
2) Whether unfair competition involving design patents punishable under Art. 189 of the Revised Penal Code exists

12
HELD:

1) YES, respondent judge has authority (Note: the search warrant issued was, however, NOT valid).The authority to issue search warrants was not
among those mentioned in the administrative orders. But the Court has consistently ruled that a search warrant is merely a process issued by the court
in the exercise of its ancillary jurisdiction and not a criminal action which it may entertain pursuant to its original jurisdiction. The authority to issue
search warrants is inherent in all courts and may be effected outside their territorial jurisdiction. In the instant case, the premises searched located in
Talisay, Cebu, are well within the territorial jurisdiction of the respondent court.
Petitioners apparently misconstrued the import of the designation of Special Courts for IPR. Administrative Order No. 113-95 merely specified
which court could "try and decide" cases involving violations of IPR. It did not, and could not, vest exclusive jurisdiction with regard to all matters
(including the issuance of search warrants and other judicial processes) in any one court. The power to issue search warrants for violations of IPR has
not been exclusively vested in the courts enumerated in Supreme Court Administrative Order No.113-95.

2) NO. Since the IPR Code took effect on 1 January 1998 any discussion contrary to the view herein expressed would be pointless. The repealing
clause of the Code provides that all Acts and parts of Acts inconsistent with the Code are repealed.
The issue involving the existence of "unfair competition" as a felony involving design patents, referred to in Art. 189 of the Revised Penal Code, has
been rendered moot and academic by the repeal of the article.
The search warrant cannot even be issued by virtue of a possible violation of the IPR Code. The assailed acts specifically alleged were the
manufacture and fabrication of wrought iron furniture similar to that patented by MENDCO, without securing any license or patent for the same, for
the purpose of deceiving or defrauding Mendco and the buying public. The Code defines "unfair competition" thus 2
168.2. Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him
or in which he deals, or his business, or services for those of the one having established such goodwill, or shall commit any acts calculated to produce
said result, shall be guilty of unfair competition, and shall be subject to an action therefor.
There is evidently no mention of any crime of "unfair competition" involving design patents in the controlling provisions on Unfair Competition. It is
therefore unclear whether the crime exists at all, for the enactment of RA 8293 did not result in the reenactment of Art. 189 of the Revised Penal
Code. In the face of this ambiguity, we must strictly construe the statute against the State and liberally in favor of the accused, for penal statutes
cannot be enlarged or extended by intendment, implication or any equitable consideration.

ROBERTO L. DEL ROSARIO, petitioner, vs. COURT OF APPEALS AND JANITO CORPORATION, respondents.
DECISION
BELLOSILLO, J.:
Roberto del Rosario petitions this Court to review the decision of the Court of Appeals [1] which set aside the order of the Regional Trial Court
of Makati granting a writ of preliminary injunction in his favor.
The antecedents: On 18 January 1993 petitioner filed a complaint for patent infringement against private respondent Janito
Corporation.[2] Roberto L. del Rosario alleged that he was a patentee of an audio equipment and improved audio equipment commonly known as the
sing-along system or karaoke under Letters Patent No. UM-5269 dated 2 June 1983 as well as Letters Patent No. UM-6237 dated 14 November 1986
issued by the Director of Patents. The effectivity of both Letters Patents was for five (5) years and was extended for another five (5) years starting 2
June 1988 and 14 November 1991, respectively. He described his sing-along system as a handy multi-purpose compact machine which incorporates
an amplifier speaker, one or two tape mechanisms, optional tuner or radio and microphone mixer with features to enhance ones voice, such as the
echo or reverb to stimulate an opera hall or a studio sound, with the whole system enclosed in one cabinet casing.
In the early part of 1990 petitioner learned that private respondent was manufacturing a sing-along system bearing the
trademark miyata or miyata karaoke substantially similar if not identical to the sing-along system covered by the patents issued in his favor. Thus he
sought from the trial court the issuance of a writ of preliminary injunction to enjoin private respondent, its officers and everybody elsewhere acting
on its behalf, from using, selling and advertising the miyata or miyata karaoke brand, the injunction to be made permanent after trial, and praying for
damages, attorneys fees and costs of suit.
On 5 February 1993 the trial court temporarily restrained private respondent from manufacturing, using and/or selling and advertising
the miyata sing-along system or any sing-along system substantially identical to the sing-along system patented by petitioner until further orders.
On 24 February 1993 the trial court issued a writ of preliminary injunction upon a bond on the basis of its finding that petitioner was a holder
of a utility model patent for a sing-along system and that without his approval and consent private respondent was admittedly manufacturing and
selling its own sing-along system under the brand name miyata which was substantially similar to the patented utility model[3] of petitioner.
Private respondent assailed the order of 24 February 1993 directing the issuance of the writ by way of a petition for certiorari with prayer for
the issuance of a writ of preliminary injunction and a temporary restraining order before respondent Court of Appeals.
On 15 November 1993 respondent appellate court granted the writ and set aside the questioned order of the trial court. It expressed the view
that there was no infringement of the patents of petitioner by the fact alone that private respondent had manufactured the miyata karaoke or audio
system, and that the karaoke system was a universal product manufactured, advertised and marketed in most countries of the world long before the
patents were issued to petitioner. The motion to reconsider the grant of the writ was denied;[4] hence, the instant petition for review.
This petition alleges that: (a) it was improper for the Court of Appeals to consider questions of fact in a certiorari proceeding; (b) the Court of
Appeals erred in taking judicial notice of private respondents self-serving presentation of facts; (c) the Court of Appeals erred in disregarding the
findings of fact of the trial court; and, (d) there was no basis for the Court of Appeals to grant a writ of preliminary injunction in favor of private
respondent.[5]
Petitioner argues that in a certiorari proceeding, questions of fact are not generally permitted the inquiry being limited essentially to whether the
tribunal has acted without or in excess of jurisdiction or with grave abuse of discretion; that respondent court should not have disturbed but respected
instead the factual findings of the trial court; that the movant has a clear legal right to be protected and that there is a violation of such right by private
respondent. Thus, petitioner herein claims, he has satisfied the legal requisites to justify the order of the trial court directing the issuance of the writ of
injunction. On the other hand, in the absence of a patent to justify the manufacture and sale by private respondent of sing-along systems, it is not
entitled to the injunctive relief granted by respondent appellate court.

13
 The crux of the controversy before us hinges on whether respondent Court of Appeals erred in finding the trial court to have committed grave
abuse of discretion in enjoining private respondent from manufacturing, selling and advertising the miyata karaoke brand sing-along system for being
substantially similar if not identical to the audio equipment covered by letters patent issued to petitioner.
Injunction is a preservative remedy for the protection of substantive rights or interests. It is not a cause of action in itself but merely a
provisional remedy, an adjunct to a main suit.The controlling reason for the existence of the judicial power to issue the writ is that the court may
thereby prevent a threatened or continuous irremediable injury to some of the parties before their claims can be thoroughly investigated and advisedly
adjudicated. It is to be resorted to only when there is a pressing necessity to avoid injurious consequences which cannot be remedied under any
standard of compensation. The application of the writ rests upon an alleged existence of an emergency or of a special reason for such an order before
the case can be regularly heard, and the essential conditions for granting such temporary injunctive relief are that the complaint alleges facts which
appear to be sufficient to constitute a cause of action for injunction and that on the entire showing from both sides, it appears, in view of all the
circumstances, that the injunction is reasonably necessary to protect the legal rights of plaintiff pending the litigation. [6]
A preliminary injunction may be granted at any time after the commencement of the action and before judgment when it is established that the
defendant is doing, threatens, or is about to do, or is procuring or suffering to be done, some act probably in violation of the plaintiffs rights. Thus,
there are only two requisites to be satisfied if an injunction is to issue, namely, the existence of the right to be protected, and that the facts against
which the injunction is to be directed are violative of said right.[7]
For the writ to issue the interest of petitioner in the controversy or the right he seeks to be protected must be a present right, a legal right which
must be shown to be clear and positive.
In this regard Sec. 55 of R.A. 165 as amended, known as The Patent 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) new model
or 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 provide x x x
Admittedly, petitioner is a holder of Letters Patent No. UM-5629 dated 2 June 1985 issued for a term of five (5) years from the grant of a
Utility Model herein described
The construction of an audio equipment comprising a substantially cubical casing having a window at its rear and upper corner fitted with a slightly
inclined control panel, said cubical (casing) having a vertical partition wall therein defining a rear compartment and a front compartment, and said
front compartment serving as a speaker baffle; a transistorized amplifier circuit having an echo section and writhed in at least the printed circuit
boards placed inside said rear compartment of said casing and attached to said vertical partition wall, said transistorized amplifier circuit capable of
being operated from outside, through various controls mounted on said control panel of such casing; a loud speaker fitted inside said front
compartment of said casing and connected to the output of the main audio amplifier section of said transistorized amplifier circuit and a tape player
mounted on the top wall of said casing and said tape player being connected in conventional manner to said transistorized amplifier circuit.[8]
Again, on 14 November 1986 petitioner was granted Letters Patent No. UM-6237 for a term of five (5) years from the grant of a Utility Model
described as
In an audio equipment consisting of a first cubical casing having an opening at its rear and upper rear portion and a partition therein forming a rear
compartment and a front compartment serving as a loud speaker baffle, a control panel formed by vertical and horizontal sections, a transistorized
amplifier circuit wired in at least two printed circuit boards attached at the back of said control panel, a first loud speaker fitted inside said first
compartment of such first casing and connected to the output of said transistorized amplifier circuit; the improvement wherein said control panel
being removably fitted to said first cubical casing and further comprises a set of tape recorder and tape player mounted on the vertical section of said
control panel and said recorder and player are likewise connected to said transistorized amplifier circuit; a second cubical casing having an opening at
its rear, said second cubical casing having (being ?) provided with a vertical partition therein defining a rear compartment and a front compartment,
said rear compartment being provided with a door and enclosing therein a set of tape racks and said front compartment serving as loud speaker baffle,
said second cubical casing being adapted to said first cubical casing so that said first and second casings are secured together in compact and portable
form; and a second loud speaker fitted inside said front compartment of said casing and connected to the output of said amplifier circuit.[9]
The terms of both Letters Patents were extended for another five (5) years each, the first beginning 2 June 1988 and the second, 14 November
1991.
The Patent Law expressly acknowledges that any new model of implements or tools of any industrial product even if not possessed of the
quality of invention but which is of practical utility is entitled to a patent for utility model. [10] Here, there is no dispute that the letters patent issued to
petitioner are for utility models of audio equipment.
In issuing, reissuing or withholding patents and extensions thereof, the Director of Patents determines whether the patent is new and whether
the machine or device is the proper subject of patent. In passing on an application, the Director decides not only questions of law but also questions
of fact, i.e. whether there has been a prior public use or sale of the article sought to be patented. [11] Where petitioner 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 Director of Patents in granting the patent is
always presumed to be correct, and the burden then shifts to respondent to overcome this presumption by competent evidence. [12]
Under Sec. 55 of The Patent Law 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. Respondent corporation failed to present before the trial court
competent evidence that the utility models covered by the Letters Patents issued to petitioner were not new. This is evident from the testimony of
Janito Cua, President of respondent Janito Corporation, during the hearing on the issuance of the injunction, to wit -
Q. Mr. Cua, you testified that there are (sic) so many other companies which already have (sic) the sing-along system even before the
patent application of Mr. del Rosario and as a matter of fact you mentioned Sanyo, Sony and Sharp, is that right?
A. Musicmate and Asahi.
Q. Now do you recall that your lawyer filed with this Honorable Court an Urgent Motion to Lift Temporary Restraining Order of this
Honorable Court. I am sure you were the one who provided him with the information about the many other companies selling the
sing-along system, is that right? These 18 which you enumerated here.
A. More than that because x x x

14
 Q. Now you will agree with me that in your statement Sharp you put the date as 1985 agreed?
A. No.
Q. You mean your lawyer was wrong when he put the word Sharp 1985?
A. Maybe I informed him already.
xxx xxx xxx
Q. You mean your lawyer was wrong in alleging to this Court that Sharp manufactured and sold (in) 1985 as found in the Urgent
Motion?
A. Since it is urgent it is more or less.
Q. The same also with Sanyo 1985 which you put, more or less?
A. Sanyo is wrong.
Q. It is not 1985?
A. Sanyo is 1979 I think.
Q. So this is also wrong. Panasonic 1986 is also wrong?
A. Panasonic I think.
Q. So you dont think this is also correct.
A. The date?
Q. So you dont think also that this allegation here that they manufactured in 1986 is correct?
A. Wrong. Earlier.
Q. National by Precision Electronic 1986 this is also wrong?
A. I think earlier.
Q. So that means all your allegations here from 2 to 5 are wrong? OK. By Philipps Philippines 1986, this is also correct or wrong?
A. More or less. We said more or less.
Q. Nakabutshi by Asahi Electronics that is also wrong?
A. No, that is 1979.
Q. Electone by DICO 1989 is this correct or wrong?
A. Correct. More or less.
Q. Skylers 1985 is that correct or wrong?
A. It is more or less because it is urgent. We dont have time to exact the date.
Q. Musicmate of G.A. Yupangco 1981 this is more or less? You are not also sure?
A. 95% sure.
Q. Now you are sure 1981.
A. This one because x x x
Q. Mr. Witness so you are now trying to tell this Honorable Court that all your allegations here of the dates in this Urgent Motion except
for Musicmate which you are only 95% sure they are all wrong or they are also more or less or not sure, is that right?
A. More or less.
Q. Now do you have any proof, any advertisement, anything in writing that would show that all these instruments are in the market, do
you have it?
A. No, I dont have it because x x x
Q. No. I am satisfied with your answer. Now Mr. Witness, you dont also have a proof that Akai instrument that you said was also in the
market before 1982? You dont have any written proof. any advertisement?
A. I have the product.
Q. But you have not brought the product in (sic) this Honorable Court, right?
A. No.[13]
As may be gleaned herein, the rights of petitioner as a patentee have been sufficiently established, contrary to the findings and conclusions of
respondent Court of Appeals. Consequently, under Sec. 37 of The Patent law, petitioner as a patentee shall have the exclusive right to make, use and
sell the patented machine, article or product for the purpose of industry or commerce, throughout the territory of the Philippines for the term of the
patent, and such making, using or selling by any person without authorization of the patentee constitutes infringement of his patent.
Petitioner established before the trial court that respondent Janito Corporation was manufacturing a similar sing-along system bearing the
trademark miyata which infringed his patented models. He also alleged that both his own patented audio equipment and respondents sing-along
system were constructed in a casing with a control panel, the casing having a vertical partition wall defining the rear compartment from the front
compartment, with the front compartment consisting of a loud speaker baffle, both containing a transistorized amplifier circuit capable of being
operated from outside through various controls mounted on the control panel, and that both had loud speakers fitted inside the front compartment of
the casing and connected to the output of the main audio amplifier section both having a tape recorder and a tape player mounted on the control panel
with the tape recorder and tape player being both connected to the transistorized amplifier circuit. [14]
Respondent Janito Corporation denied that there was any violation of petitioners patent rights, and cited the differences between its miyata
equipment and petitioners audio equipment. But, it must be emphasized, respondent only confined its comparison to the first model, Utility Model
No. 5269, and completely disregarded Utility Model No. 6237 which improved on the first. As described by respondent corporation, [15] these
differences are
First. Under Utility Model 5269, the unit is a substantially cubical casing with a window at its rear and upper corner fitted with slightly inclined
control panel, while the miyataequipment is a substantially rectangular casing with panel vertically positioned.
Second. Under Utility Model 5269, the cubical casing has a vertical partition wall defining a rear compartment and a front compartment serving
as a speaker baffle, while the miyataequipment has no rear compartment and front compartment in its rectangular casing; it has only a front
compartment horizontally divided into 3 compartments like a 3-storey building, the 1st compartment being a kit, the 2nd also the speaker, and the 3rd
are kits.
Third. Under Utility Model No. 5269, a transistorized amplifier circuit with an echo section wired in at least 2 printed circuit boards is placed
inside the rear compartment of the casing and attached to the vertical partition wall, the printed circuit board having 1 amplifier and 1 echo, while in

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the miyata equipment the amplifier is mainly IC (Integrated Circuit) - powered with 8 printed circuit boards almost all of which are IC controlled,
with 1 amplifier with power supply, 1 main tuner, 1 equalizer (3-band), 1 IC controlled volume control, 1 echo IC, 1 tape pream, 1 instrument and 1
wireless microphone.
Fourth. Under Utility Model 5269, 4 printed circuits are placed inside the compartment of its casing attached to the vertical partition wall,
while in the miyata, the 7 printed circuit boards (PCB) are attached to the front panel and 1 attached to the horizontal divider.
Fifth. Under Utility Model 5269, there are various controls mounted on the control panel of the casing, while in miyata, the various controls are
all separated from the printed circuit boards and the various controls are all attached thereto.
Sixth. Under Utility Model 5269, a loud speaker fitted inside the front compartment of the casing is connected to the output of the main audio
amplifier section of the transistorized amplifier circuit, while in miyata, there is no other way but to use 2 loud speakers connected to the amplifier.
Seventh. Under Utility Model 5269, a tape player is mounted on the top wall of the casing, while in miyata, 2 tape players are used mounted
side by side at the front.
It is elementary that a patent may be infringed where the essential or substantial features of the patented invention are taken or appropriated, or
the device, machine or other subject matter alleged to infringe is substantially identical with the patented invention. In order to infringe a patent, a
machine or device must perform the same function, or accomplish the same result by identical or substantially identical means and the principle or
mode of operation must be substantially the same. [16]
It may be noted that respondent corporation failed to present before the trial court a clear, competent and reliable comparison between its own
model and that of petitioner, and disregarded completely petitioners Utility Model No. 6237 which improved on his first patented
model. Notwithstanding the differences cited by respondent corporation, it did not refute and disprove the allegations of petitioner before the trial
court that: (a) both are used by a singer to sing and amplify his voice; (b) both are used to sing with a minus-one or multiplex tapes, or that both are
used to play minus-one or standard cassette tapes for singing or for listening to; (c) both are used to sing with a minus-one tape and multiplex tape
and to record the singing and the accompaniment; (d) both are used to sing with live accompaniment and to record the same; (e) both are used to
enhance the voice of the singer using echo effect, treble, bass and other controls; (g) both are equipped with cassette tape decks which are installed
with one being used for playback and the other, for recording the singer and the accompaniment, and both may also be used to record a speakers
voice or instrumental playing, like the guitar and other instruments; (h) both are encased in a box-like cabinets; and, (i) both can be used with one or
more microphones.[17]
Clearly, therefore, both petitioners and respondents models involve substantially the same modes of operation and produce substantially the
same if not identical results when used.
In view thereof, we find that petitioner had established before the trial court prima facie proof of violation of his rights as patentee to justify the
issuance of a writ of preliminary injunction in his favor during the pendency of the main suit for damages resulting from the alleged infringement.
WHEREFORE, the Decision of the Court of Appeals dated 15 November 1993 is REVERSED and SET ASIDE and the Order of the trial
court dated 24 February 1993 granting petitioner the writ of injunction is REINSTATED.
The trial court is directed to continue with the proceedings on the main action pending before it in order to resolve with dispatch the issues
therein presented.
SO ORDERED.

Del Rosario vs CA

Del Rosario filed a complaint for patent infringement against private respondent Janito Corporation and alleged that he was a grantee for to patents
one for an audio equipment, and other, for improved audio equipment commonly known as the sing-along system or karaoke. He described his sing-
along system as a handy multi-purpose compact machine which incorporates an amplifier speaker, one or two tape mechanisms, optional tuner or
radio and microphone mixer with features to enhance ones voice, such as the echo or reverb to stimulate an opera hall or a studio sound, with the
whole system enclosed in one cabinet casing.heeffectivity of both Letters Patents was for five (5) years and was extended for another five (5) years
starting 2 June 1988 and 14 November 1991, respectively.

In 1990 petitioner learned that private respondent was manufacturing a sing-along system bearing the trademark miyata or miyata
karaoke substantially similar to the sing-along system covered by the patents issued in his favor. He then sought from trial court the issuance of a
writ of preliminary injunction to enjoin private respondentfrom using, selling and the said product. The the trial court issued a writ of preliminary
injunction which was assailed by the respondent by way of a petition for certiorari with prayer for the issuance of a writ of preliminary injunction and
a temporary restraining order before respondent Court of Appeals.

Respondent appellate court granted the writ and set aside the questioned order of the trial court. It expressed the view that there was no infringement
of the patents of petitioner by the fact alone that private respondent had manufactured the miyata karaoke or audio system, and that the karaoke
system was a universal product manufactured, advertised and marketed in most countries of the world long before the patents were issued to
petitioner.

Issue: WON Court of Appeals erred in finding the trial court to have committed grave abuse of discretion

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Held: Yes

The Utility model was new.

Sec. 55 of R.A. 165 as amended, known as The Patent 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) new model
or 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 provide xxx
Under Sec. 55 of The Patent Law 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. Respondent corporation failed to present before the trial court
competent evidence that the utility models covered by the Letters Patents issued to petitioner were not new. It failed to show that other karaoke
brands, Sanyo, Sony and Sharp, etc. were publicly known before the application for patents by the petiotioner.

The Respondents karaoke brand performs substantially the same as the petitioners

Furthermore, t is elementary that a patent may be infringed where the essential or substantial features of the patented invention are taken or
appropriated, or the device, machine or other subject matter alleged to infringe is substantially identical with the patented invention. In order to
infringe a patent, a machine or device must perform the same function, or accomplish the same result by identical or substantially identical means
and the principle or mode of operation must be substantially the same
Although respondent corporation failed to present before the trial court a clear, competent and reliable comparison between its own model and
that of petitioner, and disregarded completely petitioners Utility Model No. 6237 which improved on his first patented model. Notwithstanding the
differences cited by respondent corporation, it did not refute and disprove the allegations of petitioner before the trial court that: (a) both are used by
a singer to sing and amplify his voice; (b) both are used to sing with a minus-one or multiplex tapes, or that both are used to play minus-one or
standard cassette tapes for singing or for listening to; (c) both are used to sing with a minus-one tape and multiplex tape and to record the singing and
the accompaniment; (d) both are used to sing with live accompaniment and to record the same; (e) both are used to enhance the voice of the singer
using echo effect, treble, bass and other controls; (g) both are equipped with cassette tape decks which are installed with one being used for playback
and the other, for recording the singer and the accompaniment, and both may also be used to record a speakers voice or instrumental playing, like the
guitar and other instruments; (h) both are encased in a box-like cabinets; and, (i) both can be used with one or more microphones. .
Clearly, therefore, both petitioners and respondents models involve substantially the same modes of operation and produce substantially the
same if not identical results when used.

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