ANGELITA MANZANO vs.

COURT OF APPEALS, and MELECIA

MADOLARIA, as Assignor to NEW UNITED FOUNDRY
MANUFACTURING CORPORATION
Patents; An invention must possess the essential elements of novelty, originality and precedence, and for
the patentee to be entitled to the protection the invention must be new to the world.The element of novelty
is an essential requisite of the patentability of an invention or discovery. If a device or process has been
known or used by others prior to its invention or discovery by the applicant, an application for a patent
therefor should be denied; and if the application has been granted, the court, in a judicial proceeding in
which the validity of the patent is drawn in question, will hold it void and ineffective. It has been repeatedly
held that an invention must possess the essential elements of novelty, originality and precedence, and for
the patentee to be entitled to the protection the invention must be new to the world.

Same; Evidence; Burden of Proof; The burden of proving want of novelty is on him who avers it and the
burden is a heavy one which is met only by clear and satisfactory proof which overcomes every reasonable
doubt.In issuing Letters Patent No. UM-4609 to Melecia Madolaria for an LPG Burner on 22 July 1981,
the Philippine Patent Office found her invention novel and patentable. The issuance of such patent creates
a presumption which yields only to clear and cogent evidence that the patentee was the original and first
inventor. The burden of proving want of novelty is on him who avers it and the burden is a heavy one which
is met only by clear and satisfactory proof which overcomes every reasonable doubt. Hence, a utility model
shall not be considered new if before the application for a patent it has been publicly known or publicly
used in this country or has been described in a printed publication or publications circulated within the
country, or if it is substantially similar to any other utility model so known, used or described within the
country.

Same; Same; Philippine Patent Office; There is a presumption that the Philippine Patent Office has correctly
determined the patentability of the model and such action must not be interfered with in the absence of
competent evidence to the contrary.The validity of the patent issued by the Philippine Patent Office in
favor of private respondent and the question over the inventiveness, novelty and usefulness of the improved
model of the LPG burner are matters which are better determined by the Patent Office. The technical staff
of the Philippine Patent Office composed of experts in their field has by the issuance of the patent in
question accepted private respondents model of gas burner as a discovery. There is a presumption that
the Office has correctly determined the patentability of the model and such action must not be interfered
with in the absence of competent evidence to the contrary.

Same; Same; Same; Administrative Law; The findings of fact of the Director of Patents, especially when
affirmed by the Court of Appeals, are conclusive on the Supreme Court when supported by substantial
evidence.The rule is settled that the findings of fact of the Director of Patents, especially when affirmed
by the Court of Appeals, are conclusive on this Court when supported by substantial evidence. Petitioner
has failed to show compelling grounds for a reversal of the findings and conclusions of the Patent Office
and the Court of Appeals.

Same; Same; Pursuant to the requirement of clear and convincing evidence to overthrow the presumption
of validity of a patent, it has been held that oral testimony to show anticipation is open to suspicion and if
uncorroborated by cogent evidence, it may be held insufficient.The alleged failure of the Director of
Patents and the Court of Appeals to accord evidentiary weight to the testimonies of the witnesses of
petitioner showing anticipation is not a justification to grant the petition. Pursuant to the requirement of clear
and convincing evidence to overthrow the presumption of validity of a patent, it has been held that oral
testimony to show anticipation is open to suspicion and if uncorroborated by cogent evidence, as what
occurred in this case, it may be held insufficient.

Evidence; Questions of Fact; Words and Phrases; There is a question of fact when the doubt or difference
arises as to the truth or falsehood of alleged facts or when the query necessarily invites calibration of the
whole evidence considering mainly the credibility of witnesses, existence and relevance of specific
surrounding circumstances, their relation to each other and to the whole and the probabilities of the
situation.It has been held that the question on priority of invention is one of fact. Novelty and utility are
likewise questions of fact. The validity of patent is decided on the basis of factual inquiries. Whether
evidence presented comes within the scope of prior art is a factual issue to be resolved by the Patent Office.
There is question of fact when the doubt or difference arises as to the truth or falsehood of alleged facts or
when the query necessarily invites calibration of the whole evidence considering mainly the credibility of
witnesses, existence and relevance of specific surrounding circumstances, their relation to each other and
to the whole and the probabilities of the situation.

Same; Supreme Court; It is not the function of the Supreme Court to analyze or weigh all over again the
evidence and credibility of witnesses presented before the lower tribunal or office.Time and again we
have held that it is not the function of the Supreme Court to analyze or weigh all over again the evidence
and credibility of witnesses presented before the lower tribunal or office. The Supreme Court is not a trier
of facts. Its jurisdiction is limited to reviewing and revising errors of law imputed to the lower court, its
findings of fact being conclusive and not reviewable by this Court.

ROSARIO C. MAGUAN (formerly ROSARIO C. TAN), petitioner, vs.

THE HONORABLE COURT OF APPEALS and SUS ANA LUCHAN

Patents; Jurisdiction; Injunction; A regular court (RTC) has jurisdiction to determine the issue of novelty or
prior use when a patent is sought to be enforced, for the purpose of deciding whether or not to issue a writ
of preliminary injunction.Under the present Patent Law, there is even less reason to doubt that the trial
court has jurisdiction to declare the patents in question invalid. A patentee shall have the exclusive right to
make, use and sell the patented article or product and the making, using, or selling by any person without
the authorization of the patentee constitutes infringement of the patent (Sec. 37, R.A. 165). Any patentee
whose rights have been infringed upon may bring an action before the proper CFI now (RTC) and to secure
an injunction for the protection of his rights (Sec. 42, R.A. 165). Defenses in an action for infringement are
provided for in Section 45 of the same law which in fact were availed of by private respondent in this case.
Then, as correctly stated by respondent Court of Appeals, this conclusion is reinforced by Sec. 46 of the
same law which provides that if the Court "shall find the patent or any claim thereof invalid, the Director
shall on certification of the final judgment x x x issue an order cancelling the patent or the claims found
invalid and shall publish a notice thereof in the Official Gazette." Upon such certification, it is ministerial on
the part of the patent office to execute the judgment. (Rollo, pp. 221-222).

Same; Evidence; The burden of proof to substantiate a charge of patent infringement lies with the plaintiff.
Once the patent is in evidence, the burden of evidence is upon the defendant to overcome this
presumption.The burden of proof to substantiate a charge of infringement is with the plaintiff. But where
the plaintiff introduces the patent in evidence, and the same is in due form, there is created a prima facie
presumption of its correctness and validity. The decision of the Commissioner (now Director) of Patent in
granting the patent is presumed to be correct. The burden of going forward with the evidence (burden of
evidence) then shifts to the defendant to overcome by competent evidence this legal presumption.

Same; Words and Phrases; When an invention is novel or original, explained.lt has been repeatedly held
that an invention must possess the essential elements of novelty, originality and precedence and for the
patentee to be entitled to protection, the invention must be new to the world. Accordingly, a single instance
of public use of the invention by a patentee for more than two years (now for more than one year only under
Sec. 9 of the Patent Law) before the date of his application for his patent, will be fatal to the validity of the
patent when issued.

Same; Injunction; In actions for patent infringement a writ of injunction will not issue unless the validity of
the patent in relation to the issue of novelty and originality of the alleged invention, is clear and beyond
question. If a fair case of invalidity, after preliminary hearing is presented, injunction must not issue.It will
be noted that the validity of petitioner's patents is in question for want of novelty. Private respondent
contends that powder puffs identical in appearance with that covered by petitioner's patents existed and
were publicly known and used as early as 1963 long before petitioner was issued the patents in question.
(List of Exhibits, Rollo, pp. 194-199).

As correctly observed by respondent Court of Appeals, "since sufficient proof s have been introduced in
evidence showing a fair question of the invalidity of the patents issued for such models, it is but right that
the evidence be looked into, evaluated and determined on the merits so that the matter of whether the
patents issued were in fact valid or not may be resolved." All these notwithstanding the trial court
nonetheless issued the writ of preliminary injunction which under the circumstances should be denied. For
failure to determine first the validity of the patents before aforesaid issuance of the Writ, the trial court failed
to satisfy the two requisites necessary if an injunction is to issue, namely: the existence of the right to be
protected and the violation of said right. (Buayan Cattle Co., Inc. v. Quintillan, 128 SCRA 276).

Appeal; Certiorari; Certiorari may be availed of where appeal though available, is inadequate, as in wrongful
issuance of preliminary injunction.As found by respondent Court of Appeals, the injunctive order of the
trial court is of so general a tenor that petitioner may be totally barred from the sale of any kind of power
puff. Under the circumstances, respondent appellate court is of the view that ordinary appeal is obviously
inadequate. (Rollo, p. 288). A parallel was drawn from a decision of the Supreme Court in the case of
Sanchez v. Hon. Court of Appeals, 69 SCRA 328 [1978] where the First Division of the Supreme Court
ruled that "The prerogative writ of certiorari may be applied for by proper petition notwithstanding the
existence of the regular remedy of an appeal in due cause when among other reasons, the broader interests
of justice so require or an ordinary appeal is not an adequate remedy.

Same; Same; Actions; Judges; Judges are mere nominal parties.There is no dispute that petitioner has
seasonably petitioned. On the other hand, it is elementary that the trial judge is a mere nominal party as
clearly provided in Section 5, Rule 65 of the Revised Rules of Court where it shall be the duty of such
person or persons interested in sustaining the proceedings in court, "to appear and defend, both in his or
their own behalf and in behalf of the court or judge affected by the proceedings." Relative thereto "the judge
whose order is under attack is merely a nominal party; wherefore, a judge in his official capacity should not
be made to appear as a party seeking reversal of a decision that is unfavorable to the action taken by him."
(Hon. Alcasid v. Samson, 102 Phil. 735-736; Tarona v. Sayo, 67 SCRA 508, 524; Lim Se v. Argel, 70 SCRA
378).

Patents; Actions; Prescription; Claim of prescription may be availed of by patent holder in petitions for
cancellation at the Patent Office, but not in ordinary civil actions for infringement of patent.As to
petitioner's claim of prescription, private respondent's contention that such refers to the filing of petitions for
cancellation in the Patent Office under Sec. 28 of the Patent Law and not to a defense against an action
for infringement under Sec. 45 thereof which may be raised anytime, is evident under aforesaid law.

CRESER PRECISION SYSTEMS, INC., petitioner, vs. COURT OF

APPEALS AND FLORO INTERNATIONAL CORP.
Patents; Infringement; Actions; Words and Phrases; Only the patentee or his successors-in-interest may
file an action for infringementthe phrase anyone possessing any right, title or interest in and to the
patented invention in Sec. 42 of R.A. 165 refers only to the patentees successors-in-interest, assignees
or grantees.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 rights. 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 as grantees, of the exclusive right.

Same; Same; Same; 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.
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. 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.

Same; Same; Same; A person claiming to be an inventor of an article has no right of property over the
same upon which it can maintain a suit unless it obtains a patent therefor.Petitioner admits it has no
patent over its aerial fuze. Therefore, it has no legal basis or cause of action to institute the petition for
injunction and damages arising from the alleged infringement by private respondent. While petitioner claims
to be the first inventor of the aerial fuze, still it has no right of property over the same upon which it can
maintain a suit unless it obtains a patent therefor. Under American jurisprudence, an inventor has no
common-law right to a monopoly of his invention. He has the right to make, use and vend his own invention,
but if he voluntarily discloses it, such as by offering it for sale, the world is free to copy and use it with
impunity. A patent, however, gives the inventor the right to exclude all others. As a patentee, he has the
exclusive right of making, using or selling the invention.

Same; Same; Same; 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 but he can, under Section 28 of the Patent Law, file a petition for cancellation of the patent within
three (3) years from the publication of the patent with the Director of Patents.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 respondents 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.