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ROSARIO C. MAGUAN (formerly ROSARIO C. TAN), 3.

UM - 1184, for a period of 5 years from


petitioner, vs. THE HONORABLE COURT OF APPEALS April 5, 1974. (Petition, Rollo,
and SUSANA LUCHAN, respondents. pp. 6-7).
Ambrosio Padilla Law Offices for petitioner.
DECISION
PARAS, J p:
Submitted on December 9, 1977 for Our decision is this
petition for review on certiorari of the two Resolutions of the In a letter dated July 10, 1974 (Annex "D", Rollo, p. 86),
Court of Appeals, the first dated July 6, 1976, setting aside its petitioner informed private respondent that the powder puffs
Decision of February 16, 1976 in CA-G.R. No. SP-04706, the latter is manufacturing and selling to various enterprises
titled "SUSANA LUCHAN v. Hon. HONRADO, et al., wherein particularly those in the cosmetics industry, resemble
it ruled for the dismissal of the petition for lack of merit and at identical or substantially identical powder puffs of which the
the same time nullifying the writ of preliminary injunction it had former is a patent holder under Registration Certification Nos.
previously issued; and the second, dated November 4, 1976, Extension UM-109, Extension UM-110 and Utility Model No.
denying the motion for reconsideration of the first resolution 1184; petitioner explained such production and sale
above-mentioned. constitute infringement of said patents and therefore its
Petitioner is doing business under the firm name and style of immediate discontinuance is demanded, otherwise it will be
"SWAN MANUFACTURING" while private respondent is compelled to take judicial action. (Rollo, pp. 7-8).
likewise doing business under the firm name and style of Private respondent replied stating that her products are
"SUSANA LUCHAN POWDER PUFF MANUFACTURING." different and countered that petitioner's patents are void
It is undisputed that petitioner is a patent holder of powder because the utility models applied for were not new and
puff namely: patentable and the person to whom the patents were issued
1. UM — 423 (extended and/or renewed was not the true and actual author nor were her rights derived
under Extension No. UM-109 for from such author. (Taken from allegations in the Answer, par.
a period of 5 years from October 4, Rollo, p. 93). And on July 25, 1974, private respondent
6, 1971) assailed the validity of the patents involved and filed with the
Philippine Patent Office petitions for cancellation of (1) Utility
Model Letter Patent Extension No. UM-109 (Inter Partes
Case No. 838, Susana Luchan v. Rosario C. Tan), (2) Utility
Model Letters Patent No. UM-1184 (Inter Partes Case No.
2. UM — 450 (extended and/or renewed 839, Susana Luchan v. Rosario C. Tan), (3) Utility Model
under Extension No. UM-110 for Letters Patent Extension No. UM-110 (Inter Partes Case No.
a period of 5 years from January 840, Susana Luchan v. Rosario C. Tan). (Taken from
26, 1972) allegations in the Answer, par. 10, Rollo, pp. 94-95).
In view thereof, petitioner, on August 24, 1974, filed a (a) since years prior to the filing of
complaint for damages with injunction and preliminary applications for the patents
injunction against private respondent with the then Court of involved, powder puffs of the
First Instance of Rizal, Pasig Branch, docketed as Civil Case kind applied for were then
No. 19908, for infringing the aforesaid letters patent, and already existing and publicly
prayed, among others, that a writ of preliminary injunction be being sold in the market; both in
immediately issued (Complaint, Rollo, p. 90). the Philippines and abroad; and
In her answer, private respondent alleged that the products
she is manufacturing and offering for sale are not identical, or
even only substantially identical to the products covered by
petitioner's patents and, by way of affirmative defenses,
further alleged that petitioner's patents in question are void (b) applicant's claims in her applications, of
on the following grounds: "construction" or process of
(1) at the time of filing of application for the manufacturing the utility models
patents involved, the utility applied for, with respect to UM-
models applied for were not new 423 and UM-450, were but a
and patentable under Sec. 55 of complicated and impractical
R.A. 165, as amended by R.A. version of an old, simple one
864; and which has been well known to
the cosmetics industry since
years previous to her filing of
applications, and which
belonged to no one except to the
(2) the person to whom the patents were general public: and with respect
issued was not the true and to UM-1184; her claim, in her
actual author of the utility application of a unitary powder
models applied for, and neither puff, was but an imitation of a
did she derive her rights from product well known to the
any true and actual author of cosmetics industry since years
these utility models. previous to her filing of
application, and which belonged
to no one except to the general
public; (Answer, Rollo, pp. 93-
94).
for the following reasons:
On September 18, 1974, the trial court issued an Order (2) Writ of preliminary injunction dated
(Annex "K", Rollo, p. 125) granting the preliminary injunction September 18, 1974; and
prayed for by petitioner. Consequently, the corresponding
writ was subsequently issued (Annex "K-1", Rollo, p. 131)
enjoining the herein private respondent (then defendant) and
all other persons employed by her, her agents, servants and
employees from directly or indirectly manufacturing, making (3) Order dated September 11, 1974
or causing to be made, selling or causing to be sold, or using denying petitioner's motion for
or causing to be used in accordance with, or embodying the reconsideration.
utility models of the Philippine Patent Office Utility Model
Letters Patent Nos. 423 (Extension No. UM-109), No. 450
(Extension No. UM-110), and Utility Model No. 1184 or from
infringement upon or violating said letters patent in any way On October 15, 1975, the Writ of Preliminary Injunction was
whatsoever (Annex "K-1", Rollo, p. 131). issued by the respondent Court of Appeals as follows:
Private respondent questioned the propriety of the trial court's "NOW, THEREFORE, you, respondents,
issuance of the Writ of Preliminary Injunction arguing that and/or any person/persons
since there is still a pending cancellation proceedings before acting on your stead, are hereby
the Philippine Patent Office concerning petitioner's patents, ENJOINED to RESTRAIN from
such cannot be the basis for preliminary injunction (Motion for enforcing or continuing to
Reconsideration, Rollo, p. 132). enforce, the proceedings
In an Order dated September 11, 1975, the trial court denied complained of in the petition to
private respondent's motion for reconsideration (Annex "N", wit: 1) Order dated September
Rollo, p. 142). 18, 1974, granting the
In challenging these Orders private respondent filed a petition preliminary injunction; 2) Writ of
for certiorari with the respondent court on September 29, Preliminary Injunction dated
1975 (Annex "D", Rollo, pp. 148-171) reiterating among other September 18, 1974; and Order
things the invalidity of petitioner's patents and prayed that the dated September 11, 1976,
trial court be restrained from enforcing or continuing to denying petitioner's motion for
enforce the following: reconsideration, all issued in
(1) Order dated September 18, 1974, connection with Civil Case No.
granting the preliminary 19908, UNTIL FURTHER
injunction; ORDERS FROM THIS
COURT." (Annex "P", Rollo, p.
173)
On February 16, 1976, respondent court promulgated a THAT THIS HONORABLE COURT ERRED
decision the dispositive portion of which reads: IN NOT APPRECIATING THE
"WHEREFORE, finding no merit in the EXISTENCE OF A FAIR
herein petition, the same is QUESTION OF INVALIDITY OF
hereby dismissed and the PRIVATE RESPONDENT'S
preliminary injunction previously PATENTS.
issued by this Court is hereby
set aside, with costs.

II

"SO ORDERED." (CA Decision, Rollo, p.


189).

In said decision respondent court stated that in disposing of THAT THIS HONORABLE COURT ERRED
the petition it tackled only the issue of whether the court a quo IN NOT REJECTING THE
acted with grave abuse of discretion in issuing the challenged THEORY OF RESPONDENT
orders. It made clear the question of whether the patents JUDGE THAT HE HAS NO
have been infringed or not was not determined considering JURISDICTION TO
the court a quo has yet to decide the case on the merits (Ibid., INVALIDATE THE PATENTS
p. 186). UPON GROUND OF LACK OF
Feeling aggrieved, private respondent moved to reconsider NOVELTY OF THE
the afore-mentioned Decision based on the following PRODUCTS PATENTED.
grounds: (Motion for Reconsideration,
I Rollo, p. 190).

Reviewing on reconsideration, respondent court gave weight


to private respondent's allegation that the latter's products are
not identical or even only substantially identical to the
products covered by petitioner's patents. Said court noticed
that contrary to the lower court's position that the court a quo
had no jurisdiction to determine the question of invalidity of
the patents, Section 45 and 46 of the Patent Law allow the
court to make a finding on the validity or invalidity of patents
and in the event there exists a fair question of its invalidity, "SO ORDERED." (CA Resolution, Rollo, p.
the situation calls for a denial of the writ of preliminary 226).
injunction pending the evaluation of the evidence presented
(Rollo, pp. 218-226). Thus, finding the lower court's position
to have been opposed to Patent Law, respondent court
considered it a grave abuse of discretion when the court a In a Resolution dated November 4, 1976, respondent court,
quo issued the writ being questioned without looking into the not persuaded by the grounds embodied in the motion for
defenses alleged by herein private respondent. Further, it reconsideration filed by herein petitioner (Annex "V", Rollo, p.
considered the remedy of appeal, under the circumstances, 227), denied the same for lack of merit, thereby maintaining
to be inadequate. the same stand it took in its July 6, 1976 Resolution (Rollo, p.
Thus, on July 6, 1976, respondent court made a complete 281).
turnabout from its original decision and promulgated a Hence, this petition.
Resolution, the dispositive portion of which reads: On December 3, 1976, without giving due course to the
"WHEREFORE, our decision is hereby set petition, this Court required respondent to file her Comment
aside. The writ of certiorari is (Rollo, p. 290) which was filed on December 16, 1976 (Rollo,
ordered issued. Accordingly, the pp. 291-316). Thereafter, petitioner filed her Reply (Rollo, p.
challenged orders, Exhibit H and 323) and on May 30, 1977, the petition was given due course
H-1 and the order denying the (Rollo, p. 345). Petitioner filed her brief on July 14, 1977
motion for reconsideration (Rollo, p. 351) while private respondent filed her brief on
(Annex "K", Petition), are hereby August 25, 1977 (Rollo, p. 359). Thereafter, petitioner having
set aside. The writ of preliminary failed to file reply brief, the Court resolved to declare the case
injunction previously ordered by submitted for decision on December 9, 1977 (Rollo, p. 359).
this Court and ordered lifted by The assignment of errors raised by the petitioner in this case
the Decision now being set (Rollo, pp. 15-16) may be reduced to three main issues:
aside is hereby reinstated and (1) Whether or not in an action for
made permanent. Without infringement the Court a quo
pronouncement as to costs. had jurisdiction to determine the
invalidity of the patents at issue
which invalidity was still pending
consideration in the patent of his rights (Sec. 42, R.A. 165). Defenses in an action for
office. 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
(2) Whether or not the Court a quo any claim thereof invalid, the Director shall on certification of
committed grave abuse of the final judgment . . . issue an order cancelling the patent or
discretion in the issuance of a the claims found invalid and shall publish a notice thereof in
writ of preliminary injunction. the Official Gazette." Upon such certification, it is ministerial
on the part of the patent office to execute the judgment.
(Rollo, pp. 221-222).
II.
(3) Whether or not certiorari is the proper
remedy. 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
The first issue has been laid to rest in a number of cases Patent in granting the patent is presumed to be correct. The
where the Court ruled that "When a patent is sought to be burden of going forward with the evidence (burden of
enforced, the questions of invention, novelty or prior use, and evidence) then shifts to the defendant to overcome by
each of them, are open to judicial examination." (Vargas v. competent evidence this legal presumption.
F.M. Yaptico & Co. 40 Phil. 199 [1919]; Vargas v. Chua, 57 The question then in the instant case is whether or not the
Phil. 790-791 [1933]; Frank and Gohn v. Kosuyana, 59 Phil. evidence introduced by private respondent herein is sufficient
207 [1933]. to overcome said presumption. LLpr
Under the present Patent Law, there is even less reason to After a careful review of the evidence consisting of 64 exhibits
doubt that the trial court has jurisdiction to declare the patents and oral testimonies of five witnesses presented by private
in question invalid. A patentee shall have the exclusive right respondents before the Court of First Instance before the
to make, use and sell the patented article or product and the Order of preliminary injunction was issued as well as those
making, using, or selling by any person without the prosecuted by the petitioner, respondent Court of Appeals
authorization of the patentee constitutes infringement of the was satisfied that there is a prima facie showing of a fair
patent (Sec. 37, R.A. 165). Any patentee whose rights have question of invalidity of petitioner's patents on the ground of
been infringed upon may bring an action before the proper lack of novelty. As pointed out by said appellate court said
CFI now (RTC) and to secure an injunction for the protection evidence appeared not to have been considered at all by the
court a quo for alleged lack of jurisdiction, on the mistaken granted on an application filed
notion that such question in within the exclusive jurisdiction before the filing of the
of the patent office. application for patent therefor."
It has been repeatedly held that an invention must possess
the essential elements of novelty, originality and precedence
and for the patentee to be entitled to protection, the invention
must be new to the world. Accordingly, a single instance of
public use of the invention by a patentee for more than two Thus, more specifically, under American Law from which our
years (now for more than one year only under Sec. 9 of the Patent Law was derived (Vargas v. F.M. Yaptico & Co. supra)
Patent Law) before the date of his application for his patent, it is generally held that in patent cases a preliminary injunction
will be fatal to the validity of the patent when issued. (Frank, will not issue for patent infringement unless the validity of the
et al. v. Kosuyama; Vargas v. F.M. Yaptico & Co. and Vargas patent is clear and beyond question. The issuance of letters
v. Chua, et al., supra). patent, standing alone, is not sufficient to support such drastic
The law provides: relief (8 Deller's Walker on Patents p. 406). In cases of
"SEC. 9. Invention not considered new or infringement of patent no preliminary injunction will be
patentable. — An invention shall granted unless the patent is valid and infringed beyond
not be considered new or question and the record conclusively proves the defense is
capable of being patented if it sham. (Ibid., p. 402)
was known or used by others in In the same manner, under our jurisprudence, as a general
the Philippines before the rule because of the injurious consequences a writ of
invention thereof by the inventor injunction may bring, the right to the relief demanded must be
named in an application for clear and unmistakable. (Sangki v. Comelec, 21 SCRA 1392;
patent for the invention; or if it December 26, 1967) and the dissolution of the writ is proper
was patented or described in where applicant has doubtful title to the disputed property.
any printed publication in the (Ramos v. C.A., 95 SCRA 359).
Philippines or any foreign III.
country more than one year
It will be noted that the validity of petitioner's patents is in
before the application for a
question for want of novelty. Private respondent contends
patent therefor; or if it had been
that powder puffs identical in appearance with that covered
in public use or on sale in the
by petitioner's patents existed and were publicly known and
Philippines for more than one
used as early as 1963 long before petitioner was issued the
year before the application for a
patents in question. (List of Exhibits, Rollo, pp. 194-199). As
patent therefor; or if it is the
correctly observed by respondent Court of Appeals, "since
subject matter of a validity
sufficient proofs have been introduced in evidence showing a
issued patent in the Philippines
fair question of the invalidity of the patents issued for such Such contention is untenable.
models, it is but right that the evidence be looked into, There is no dispute that petitioner has seasonably petitioned.
evaluated and determined on the merits so that the matter of On the other hand, it is elementary that the trial judge is a
whether the patents issued were in fact valid or not may be mere nominal party as clearly provided in Section 5, Rule 65
resolved." (Rollo, pp. 286-287). of the Revised Rules of Court where it shall be the duty of
All these notwithstanding, the trial court nonetheless issued such person or persons interested in sustaining the
the writ of preliminary injunction which under the proceedings in court, "to appear and defend, both in his or
circumstances should be denied. their own behalf and in behalf of the court or judge affected
For failure to determine first the validity of the patents before by the proceedings."
aforesaid issuance of the writ, the trial court failed to satisfy Relative thereto "the judge whose order is under attack is
the two requisites necessary if an injunction is to issue, merely a nominal party; wherefore, a judge in his official
namely: the existence of the right to be protected and the capacity should not be made to appear as a party seeking
violation of said right. (Buayan Cattle Co., Inc. v. Quintillan, reversal of a decision that is unfavorable to the action taken
128 SCRA 276). by him." (Hon. Alcasid v. Samson, 102 Phil. 735-736; Tarona
Under the above established principles, it appears obvious v. Sayo, 67 SCRA 508, 524; Lim Se v. Argel, 70 SCRA 378).
that the trial court committed a grave abuse of discretion
which makes certiorari the appropriate remedy. As to petitioner's claim of prescription, private respondent's
As found by respondent Court of Appeals, the injunctive order contention that such refers to the filing of petitions for
of the trial court is of so general a tenor that petitioner may be cancellation in the Patent Office under Sec. 28 of the Patent
totally barred from the sale of any kind of powder puff. Under Law and not to a defense against an action for infringement
the circumstances, respondent appellate court is of the view under Sec. 45 thereof which may be raised anytime, is
that ordinary appeal is obviously inadequate. (Rollo, p. 288). evident under aforesaid law. cdll
A parallel was drawn from a decision of the Supreme Court PREMISES CONSIDERED, the assailed resolutions of the
in the case of Sanchez v. Hon. Court of Appeals, 69 SCRA Court of Appeals are hereby AFFIRMED.
328 [1976] where the First Division of the Supreme Court SO ORDERED.
ruled that "The prerogative writ of certiorari may be applied Feria, Fernan, Gutierrez, Jr. and Feliciano, ** JJ ., concur.
for by proper petition notwithstanding the existence of the Alampay, J ., no part.
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." ||| (Maguan v. Court of Appeals, G.R. No. L-45101,
Private respondent maintains the position that the resolutions [November 28, 1986], 230 PHIL 204-215)
sought to be appealed from had long become final and
executory for failure of Hon. Reynaldo P. Honrado, the trial
court judge, to appeal by certiorari from the resolutions of
respondent Court of Appeals. (Rollo, pp. 291-292).
ANGEL VARGAS, plaintiff-appellant, vs. F. M. YAPTICO &
Co. (LTD.), defendant-appellee.
Charles C. Cohn for appellants.
John Bordman for appellee.
SYLLABUS
1. PROPERTY; PATENTS; LAW. —
Act No. 2235 of the Philippine Legislature,
enacted on February 10, 1913, in effect makes
the United States Patent Laws applicable in the
Philippine Islands.

2. ID.; ID.; VALIDITY; JUDICIARY. —


When a patent is sought to be enforced, "the
questions of invention, novelty, or prior use, and
each of them, are open to judicial examination."

3. ID.; ID.; ID.; ID.; BURDEN OF


PROOF. — The burden of proof to substantiate a
charge of infringement is with the plaintiff. Where,
however, the plaintiff introduces the patent in 8. ID.; ID.; ID.; ID.; ID. — A single
evidence, if it is in due form, it affords a prima instance of public use of the invention by a
facie presumption of its correctness and validity. patentee for more than two years before the date
The decision of the Commissioner of Patents in of his application for his patent will be fatal to the
granting the patent is always presumed to be validity of the patent when issued.
correct. The burden then shifts to the defendant
to overcome by competent evidence this legal 9. ID.; ID.; ID.; ID.; ID. — Held: That
presumption. since a preponderance of the evidence ,is to the
effect that for more than two years before the
4 ID.; ID.; ID.; "VARGAS PLOW;" application for the original letters patent there
NOVELTY INVENTION, OR DISCOVERY — In was, by the consent and allowance of the plaintiff,
order to give existence to the right to a patent the a public use of the invention covered by them,
element of novelty, invention, or discovery must namely, of the so-called "Vargas Plow," the
be shown. patent is void.

5. ID.; ID.; ID.; ID.; REPAIRS. — A DECISION


difference has long been recognized between MALCOLM, J p:
repairing and reconstructing a machine. If, for Rude wooden implements for tilling the
instance, partial injuries, whether they occur from soil have been in use in the Philippines, possibly
accident or from wear and tear, to a machine for not since the Israelites "went down to sharpen
agricultural purposes are made, this is only every man his share and his coulter," but certainly
refitting the machine for use, and thus for many years. Iron plows called "Urquijo" and
permissible. "Pony" have latterly been the vogue.

6. ID.; ID.; ID.; ID.; PUBLIC USE OR Angel Vargas, a farmer acquainted with
SALE. — To entitle patent, the invention must be local conditions and alive to the commercial
new to the world. possibilities, took it upon himself to produce, with
the native plow as the model, an improved,
7. ID.; ID.; ID.; ID.; ID. — Under the adjustable plow. On July 22, 1910, he made
provisions of the statute, an inventor's creation application for a United States patent to cover his
must not have been in public use or on sale in the so-called invention. On March 12, 1912, letters
United States and the Philippine Islands for more patent were issued by the United States Patent
than two years prior to his application. Office in favor of Vargas. On April 24, 1912, a
certified copy of the patent was filed in the
Division of Patents, Copyrights, and Trademarks
of the Executive Bureau, Government of the plow, and that the plow, whose manufacture it
Philippine Islands. The patent and its registry was was sought to have enjoined by the plaintiff, had
also published in the newspaper, El Tiempo. already been in public use for more than two
years before the application of the plaintiff for his
Since 1910, Vargas has engaged in the patent. The parties subsequently entered into a
manufacture of these plows in the city of Iloilo, stipulation that the court should first resolve the
Philippine Islands. On the plows there was first question of whether or not there had been an
stamped the words "Patent Applied For," later infraction of the patent, reserving the resultant
after the patent had been granted, changed to question of damages for later decision. After the
"Patented Mar. 12, 1912." Ninety per cent of the taking of evidence, including the presentation of
plows in use in the Visayas (Iloilo and vicinity) are exhibits, the trial judge, the Honorable Antonio
said to be Vargas plows. Villareal, in a very exhaustive and learned
decision, rendered judgment in favor of the
During this same period, the firm of F. defendant and against the plaintiff, declaring null
M. Yaptico & Co. (Ltd.), was engaged in the and without effect the patent in question and
foundry business in the City of Iloilo. It openly dismissing the suit with costs against the plaintiff.
held itself out as a manufacturer of plow parts. It The preliminary injunction theretofore issued was
has in fact produced points, shares, shoes, and dissolved.
heel pieces in a considerable amount adapted to
replace worn-out parts of the Vargas plow. From this judgment the plaintiff has
appealed, specifying five errors. The principal
Such was the existing situation when, in assignment No. 1 is, that the trial court erred in
the early part of 1918, the owner of the patent, finding that the patented invention of the plaintiff
and thus the proper party to institute judicial is lacking in novelty and invention. Defendant, in
proceedings, began action in the Court of First reply, relies on three propositions, namely: (1)
Instance of Iloilo to enjoin the alleged The judgment of the trial court in finding the
infringement of U. S. Patent No. 1020232 by the patent granted plaintiff void for lack of novelty and
defendant F. M Yaptico & Co. (Ltd.), and to invention should be affirmed; (2) The patent
recover the damages suffered by reason of this granted plaintiff is void from the public use of his
infringement. The court issued the preliminary plow for over two years prior to his application for
injunction as prayed for. The defendant, in a patent, and (3) If the patent is valid, there has
addition to a general denial, alleged, as special been no contributory infringement by defendant.
defenses, that the patent lacked novelty or
invention, that there was no priority of ideas or Before resolving these rival
device in the principle and construction of the contentions, we should have before us the
relevant law. Act No. 2235 of the Philippine abandoned, may, upon payment
Legislature, enacted on February 10, 1913, in of the fees required by law, and
effect makes the United States Patent Laws other due proceeding had,
applicable in the Philippine Islands. It provides obtain a patent therefor." (29
that "owners of patents, including design patents, Stat. L., 692, 7 Fed. Stat. Ann.
which have been issued or may hereafter be [2d Ed.], p. 23.)
issued, duly registered in the United States
Patent Office under the laws of the United States
relating to the grant of patents, shall receive in the
Philippine Islands the protection accorded them
in the United States under said laws." (Sec. 1.) When a patent is sought to be enforced,
Turning to the United States Patent Laws, we find "the questions of invention, novelty, or prior use,
the Act of Congress of March 3, 1897, and each of them, are open to judicial
amendatory of section 4886 of the United States examination." The burden of proof to substantiate
Revised Statutes, reading as follows: a charge of infringement is with the plaintiff.
Where, however, the plaintiff introduces the
"Any person who has patent in evidence, if it is in due form, it affords a
invented or discovered any new prima facie presumption of its correctness and
and useful art, machine, validity. The decision of the Commissioner of
manufacture, or composition of Patents in granting the patent is always
matter, or any new and useful presumed to be correct. The burden then shifts to
improvements thereof, not the defendant to overcome by competent
known or used by others in this evidence this legal presumption. With all due
country. before his invention or respect, therefore, for the critical and expert
discovery thereof, and not examination of the invention by the United States
patented or described in any Patent Office, the question of the validity of the
printed publication in this or any patent is one for judicial determination, and since
foreign country, before his a patent has been submitted, the exact question
invention or discovery thereof, or is whether the defendant has assumed the
more than two years prior to his burden of proof as to anyone of his defenses.
application, and not in public use (See Agawan Co. vs. Jordan [1869], 7 Wall., 583;
are on sale in this country for Blanchard vs. Putnam [186g], 8 Wall., 420;
more than two years prior to his Seymour vs. Osborne [1871], 11 Wall., 516;
application, unless the same is Reckendorfer vs. Faber [1876], 92 U. S., 347; 20
proved to have been R. C. L., 1112, 1168, 1169.)
As hereinbefore stated, the defendant A second line of defense relates to the
relies on three special defenses. One such fact that defendant has never made a complete
defense, on which the judgment of the lower court Vargas plow, but only points, shares, shoes, and
is principally grounded, and to which appellant heel pieces to serve as repairs. Defendant's
devotes the major portion of his vigorous contention is that in common with other
argument, concerns the element of novelty, foundaries, he has for four years cast large
invention, or discovery, that gives existence to numbers of plow points and shares suitable for
the right to a patent. On this point the trial court the use of either on the native wooden plow or on
reached the conclusion that "the patented plow of the Vargas plow. A differences has long been
the plaintiff, Exhibit D, is not different from the recognized between repairing and constructing a
native plow, Exhibit 2, except in the material, in machine. If, for instance, partial injuries, whether
the form, in the weight and the grade of the result, they occur from accident or from wear and tear,
the said differences giving it neither a new to a machine for agricultural purposes are made
function nor a new result distinct from the function this is only re-fitting the machine for use, and thus
and the result obtained from the native plow; permissible. (Wilson vs. Simpson [1850], 9 How.,
consequently, its production does not 109.) Even under the more rigorous doctrine of
presuppose the exercise of the inventive faculty Leeds & Catlin Co. vs. Victor Talking Machine
but merely of mechanical skill, which does not Co. ([1909], 213 U. S. 325), it may be possible
give a right to a patent of an invention under the that all the defendants has done is to
provisions of the Patent Law." In thus finding, the manufacture and sell isolated parts to be used to
court may have been right, since the Vargas plow replace worn-out parts.
does not appear to be such a ":combination" as
contains a novel assemblage of parts exhibiting The third defense is, that under the
invention. (See Stimpson vs. Woodman [1870], provisions of the statute, an inventor's creation
10 Wall., 117 — rollers; Hicks vs. Kesley [1874], must not have been in public use or on sale in the
18 Wall., 674 — wagons; Hails vs. Wormer United States (and the Philippine Islands) for
[1874], 20 Wall., 353 — stoves; Washburn & more than two years prior to his application.
Moen Mfg. Co. vs. Beat "Em All Barbed Wire Co. Without, therefore, committing ourselves as to
[1892], 143 U. S., 275 — barbed wire; Lynch vs. the first two defenses, we propose to base our
Dryden [1873], C. D., 73 — walking cultivators; decision on the one just suggested as more
Torrey vs. Hancock [1910] 184 Fed., 61 — rotary easily disposing of the case. (See 20 R. C. L.,
plows.) 1140-1142.) We do so with full consciousness of
the doubt which arose in the mind of the trial
court, but with the belief that since it has been
shown that the invention was used in public at
Iloilo by others than Vargas, the inventor, more Vargas plows, of which Exhibit 5 was one, in
than two years before the application for the December, 1907; and Exhibit 5, the court found,
patent, the patent is invalid. was a plow completely identical with that for
which the plaintiff had received a patent. The
Although we have spent some time in minor exception, and this in itself corroborative of
arriving at this point, yet, having reached it, the Roces' testimony, is, that the handle of plow
question in the case is single and can be brought Exhibit 5 is marked with the letters "A V" and not
to a narrow compass. Under the English Statute with the words "Patent Applied For" or "Patented
of Monopolies (21 Jac. Ch., 3), and under the Mar. 12, 1912." Salvador Lizarraga, a clerk in a
United States Patent Act of February 21, 1793, business house, testified that he had received
later amended to be as herein quoted, it was plows similar to Exhibits D, 5, and 4, for sale on
always the rule, as stated by Lord Coke, Justice commission in May, 1908, from Bonifacio
Story and other authorities, that to entitle a man Araneta, partner of Vargas in the plow business.
to a patent, the invention must be new to the Ko Pao Ko, a blacksmith, testified that he had
world. (Pennock and Sellers vs. Dialogue [1829], made fifty plow frames in 1905 for Vargas and
2 Pet., 1.) As said by the United States Supreme Araneta, of which Exhibit 4 is one; Exhibit 4, the
Court, "it has been repeatedly held by this court court found, is a plow identical with that patented
that a single instance of public use of the by Vargas, but without share and mould-board.
invention by a patentee for more than two years Alfred Berwin, an employee in the office of
before the date of his application for his patent Attorney John Bordman, testified that on
will be fatal to the validity of the patent when September 21, 1908, he had knowledge of a
issued." (Worley vs. Lower Tobacco Co. [1882], transaction wherein Vargas and Araneta desired
104 U. S., 340; McClurg vs. Kingsland [1843], 1 to obtain money to invest in a plow factory.
How., 202; Consolidated Fruit Jar Co. vs. Wright George Ramon Saul, a mechanic of the "Taller
[1877], 94 U. S., 92; Egbert vs. Lippmann [1881], Visayas" of Strachan and MacMurray, testified
104 U. S., 333; Coffin vs. Ogden [1874], 18 Wall., that he had made Vargas plow points and shares
120; Manning vs. Cape Ann Isinglass and Glue of the present form upon order of Araneta and
Co. [1883], 108 U. S., 462; Andrews vs. Hovey Vargas in 1906 and 1907. William MacMurray,
[1887], 123 U. S., 267; Campbell vs. City of New proprietor of the "Taller Visayas," corroborated
York [1888], 1 L. R. A., 48.) the evidence of the witness Saul by the exhibition
of the account against Vargas and Araneta
On the facts, we think the testimony wherein, under date of December 31, 1906,
shows such a public use of the Vargas plow as to appears the item "12 new soft steel plow shares
render the patent invalid. Nicolas Roces, a forged and bored for rivets as per sample."
farmer, testified that he had bought twenty Against all this, was the testimony of the plaintiff
Angel Vargas who denied that Saul could have the costs of this instance against the appellant.
seen the Vargas plow in 1906 and 1907, who So ordered.
denied that Roces purchased the Vargas plow in
1907, who denied that Lizarraga could have Arellano, C. J., Torres, Johnson, Araullo, Street, Avanceña
acted as an agent to sell two plows in November, and Moir, JJ., concur.
1908, who denied any remembrance of the loan ||| (Vargas v. F. M. Yaptico & Co. (Ltd.), G.R. No. 14101,
mentioned by Berwin as having been negotiated [September 24, 1919], 40 PHIL 195-203)
in September, 1908, who denied that Ko Pao Ko
made fifty plows one of which is Exhibit 4, for
Araneta and Vargas in 1905. Plaintiff introduced
his books to substantiate his oral testimony. It is
hardly believable that five or six witnesses for the
defense would deliberately perjure themselves
under oath. One might, but that all together, of
different nationalities, would enter into such a
conspiracy, is to suppose the improbable.

Tested by the principles which go to


make the law, we think a preponderance of the
evidence is to the effect that for more than two
years before the application for the original letters
patent, or before July 22, 1908, there was, by the
consent and allowance of Vargas, a public use of
the invention covered by them.

To conclude, we are not certain but that


appellee has proved every one of his defenses.
We are certain that he has at least demonstrated
the public use of the Vargas plow over two years
prior to the application for a patent. Such being
the case, although on a different ground, we must
sustain the judgment of the lower court, without
prejudice to the determination of the damages
resulting from the granting of the injunction, with
1. PATENT FOR INVENTION;
PLOWS. — In view of the facts stated in the
decision, Held: That the appellee is not entitled to
the protection of his invention for the simple
reason that his plow, Exhibit F, does not
constitute an invention in the legal sense, and
because, according to the evidence, the same
type of plows had been manufactured in this
country and had been in use in many parts of the
Philippine Archipelago, especially in the Province
of Iloilo, long before he obtained his last patent.

DECISION
IMPERIAL, J p:
The defendants Petronila Chua, Coo
Pao and Coo Teng Hee, appeal from the
judgment of the Court of First Instance of Manila,
the dispositive part of which reads as follows:

"Wherefore, judgment
is rendered in favor of the
plaintiff and against the
defendants, ordering each and
every one of them, their agents,
mandatories and attorneys, to
henceforth abstain from making,
manufacturing, selling or
offering for sale plows of the
type of those manufactured by
ANGEL VARGAS, plaintiff-appellee, vs. PETRONILA CHUA the plaintiff, and particularly
ET AL., defendants-appellants. plows of the model of Exhibits B,
Jose F. Orozco for appellants. B-1 and B-2, and to render to the
Jose Yulo for appellee. plaintiff a detailed accounting of
SYLLABUS the profits obtained by them
from the manufacture and sale
of said type of plows within thirty "1. That the plaintiff,
(30) days from the date of the Angel Vargas, is of age and a
receipt by them of notice of this resident of the municipality of
decision, with costs against all of Iloilo, Iloilo, Philippine Islands.
the defendants."

"2. That the defendant,


Angel Vargas, the plaintiff herein, Petronila Chua, is also of age,
brought this action to restrain the appellants and and is married to Coo Pao alias
the other defendant entity, Cham Samco & Sons, Coo Paoco, and resides in Iloilo.
their agents and mandatories, from continuing
the manufacture and sale of plows similar to his
plow described in his patent No. 1,507,530
issued by the United States Patent Office on
September 2, 1924; and to compel all of said "3. That the defendant,
defendants, after rendering an accounting of the Coo Teng Hee, is also of age
profits obtained by them from the same of said and a resident of Iloilo, and is the
plows from September 2, 1924, to pay him sole owner of the business
damages equivalent to double the amount of known as Coo Kun & Sons
such profits. Hardware Co. established in
Iloilo.
It appears from the bill of exceptions
that Chan Samco & Sons did not appeal.

In addition to the evidence presented,


"4. That the defendant,
the parties submitted the following stipulation of
Cham Samco & Sons, is a
facts:
commercial partnership duly
organized under the laws of the
"The parties agree on
Philippine Islands, with their
the following facts:
principal office in the City of
Manila, and that the defendants
Cham Samco, Cham Siong E,
Cham Ai Chia and Lee Cham
Say, of all of age and residents Islands on October 17, 1924. A
of the City of Manila, are the certified copy of said patent is
partners of the firm Cham attached to this stipulation of
Samco & Sons. facts as Exhibit A.

"5. The parties take for "7. That the plaintiff is


granted that the complaint in this now and has been engaged,
case is amended in the sense since the issuance of his patent,
that it includes Coo Paoco as in the manufacture and sale of
party defendant in his capacity plows of the kind, type and
as husband of the defendant, design covered by the
Petronila Chua, with Attorney aforementioned patent, said
Jose F. Orozco also plows being of different sizes
representing him, and that the and numbered in accordance
renounces his rights to receive therewith from 1 to 5.
summons in this case by
reproducing the answer of his
codefendant, Petronila Chua.
"8. That, since the
filing of the complaint to date,
the defendant, Petronila Chua,
"6. That the plaintiff is has been manufacturing and
the registered owner and selling plows of the kind, type
possessor of United States and design represented by
Patent No. 1,507,530 on certain Exhibits B, B-1 and B-2, of
plow improvements, issued by different sizes, designated by
the United States Patent Office Nos. 2, 4 and 5.
on September 2, 1924, a
certified copy of which was
registered in the Bureau of
Commerce and Industry of the
Government of the Philippine
"9. That, since the "11. That, according to
filing of the complaint to date, the invoices marked Exhibits C
the defendant, Coo Teng Hee, and C-2 dated March 13, 1928,
doing business in Iloilo under the and June 19, 1928, respectively,
name of Coo Kun & Sons the defendant Cham Samco &
Hardware Co., has been Sons, on the dates mentioned,
obtaining his plows, of the form had, in the ordinary course of
and size of Exhibits B, B-1 and business, bought of its
B-2, from the defendant codefendant Coo Kun & Sons
Petronila Chua. Hardware Co., 90 plows of the
form, type and design of Exhibits
B, B-1 and B-2 which it has been
selling in its store on Sto. Cristo
Street, Manila.
"10. Without prejudice
to the plaintiff's right to ask the
defendants to render an
accounting in case the court
deem it proper, the parties agree "12. That the same
that the defendant Coo Teng defendant Cham Samco &
Hee, doing business under the Sons, in the ordinary course of
name of Coo Kun & Sons business, bought on March 17,
Hardware Co., has been selling 1928, of the store 'El Progreso'
to his customers in his store on owned by Yao Ki & Co., of Iloilo,
J. Ma. Basa Street in Iloilo, a lot of 50 plows, of the form,
plows of the kind, type and type and design of Exhibit B-1,
design represented by Exhibits as shown by Invoice C-1, and
B, B-1, and B-2, having bought that it has been selling them in
said plows from his its store on Sto. Cristo St.,
codefendant, Petronila Chua, Manila.
who manufactures them in her
factory on Iznart Street, Iloilo.

"13. That, on
September 19, 1928, the
defendant Cham Samco & "16. That the
Sons, sold in its store on Sto. document, Exhibit 1-Chua, is a
Cristo St., Manila, and plow certified copy of the amended
Exhibit B-1, for the sale of which complaint, the decision of the
invoice Exhibit D was issued. Court of First Instance of Iloilo
and that of the Supreme Court
(R.G. No. 14101) in civil case
No. 3044 of Iloilo, entitled 'Angel
Vargas, plaintiff, vs. F.M.
"14. That, on Yaptico & Co., Ltd., defendant',
December 20, 1927, the plaintiff and that Exhibit 2-Chua et al. is
herein, through his attorneys a certified copy of Patent No.
Paredes, Buencamino & Yulo, 1,020,232, to which the
sent by registered mail to the aforementioned complaint and
herein defendant, Coo Kun & decision refer, issued in favor of
Sons Hardware Co., at Iloilo, the Angel Vargas by the United
original of the letter Exhibit E, States Patent Office on March
which was received by it on 12, 1912, and that Exhibit 3-
September 28, 1927, according Chua et al. represents the plow
to the receipt marked Exhibit E- manufactured by Angel Vargas
1 attached hereto. in accordance with his Patent
marked Exhibit 2-Chua et al."

"15. That the plows


manufactured by the plaintiff in The appellants assign the following
accordance with his patent, errors:
Exhibit A, are commonly known
to the trade in Iloilo, as well as in "FIRST ERROR
other parts of the Philippines, as
'Arados Vargas', and that the
plaintiff is the sole manufacturer
of said plows. A sample of these
plows is presented as Exhibit F. "The trial court erred in
declaring that the Vargas plow,
Exhibit F (covered by Patent No. "The trial court erred in
1,507,530), is distinct from the not dismissing the complaint
old model Vargas plow, Exhibit with costs against the plaintiff."
2-Chua, covered by the former
Patent No. 1,020,232, which had
been declared null and void by
this court.
The evidence shows that Exhibit F is
the kind of plows the plaintiff, Angel Vargas,
manufactures, for which Patent No. 1,507,530,
Exhibit A, was issued in his favor. Exhibits B, B-1
"SECOND ERROR and B-2 are samples of the plows which the
herein appellants, Coo Pao and Petronila Chua,
have been manufacturing since 1918, and Exhibit
3-Chua represents the plow for which, on March
12, 1912, the appellee obtained a patent from the
"The trial court erred in United States Patent Office, which has declared
mistaking the improvement on null and void by the Supreme Court in the case of
the plow for the plow itself. Vargas vs. F.M. Yap Tico & Co. (40 Phil., 195).

With these facts in view, the principal


and perhaps the only question we are called upon
"THIRD ERROR to decide is whether the plow, Exhibit F,
constitutes a real invention or an improvement for
which a patent may be obtained, or if, on the
contrary, it is substantially the same plow
represented by Exhibit 3-Chua the patent for
"The trial court erred in which was declared null and void in the
rendering judgment in favor of aforementioned case of Vargas vs. F.M. Yaptico
the plaintiff and against the & Co., supra.
defendants.
We have carefully examined all the
plows presented as exhibits as well as the
designs of those covered by the patents, and we
are convinced that no substantial difference
"FOURTH ERROR
exists between the plow, Exhibit F, and the plow, especially in the Province of Iloilo, long before he
Exhibit 3-Chua which was originally patented by obtained his last patent.
the appellee, Vargas. The only difference noted
by us is the suppression of the bolt and the three In the above-mentioned case of Vargas
holes on the metal strap attached to the handle vs. F.M. Yaptico & Co., we said:
bar. These holes and bolt with its nut were
suppressed in Exhibit F in which the beam is "When a patent is
movable as in the original plow. The members of sought to be enforced, "the
this court, with the plows in view, arrived at the questions of invention, novelty,
conclusion that not only is there no fundamental or prior use, and each of them,
difference between the two plows but no are open to judicial
improvement whatever has been made on the examination.' The burden of
latest model, for the same working and proof to substantiate a charge of
movement of the beam existed in the original infringement is with the plaintiff.
model with the advantage, perhaps, that its Where, however, the plaintiff
graduation could be carried through with more introduces the patent in
certainty by the use of the bolt which as has evidence, if it is in due form, it
already been stated, was adjustable and affords a prima facie
movable. presumption of its correctness
and validity. The decision of the
Commissioner of Patents in
granting the patent is always
As to the fact, upon which much presumed to be correct. The
emphasis was laid, that deeper furrows can be burden then shifts to the
made with the new model, we have seen that the defendant to overcome by
same result can be had with the old implement. competent evidence this legal
presumption. With all due
In view of the foregoing, we are firmly respect, therefore, for the critical
convinced that the appellee is not entitled to the and expert examination of the
protection he seeks for the simple reason that his invention by the United States
plow, Exhibit F, does not constitute an invention Patent Office, the question of the
in the legal sense, and because, according to the validity of the patent is one for
evidence, the same type of plows had been judicial determination, and since
manufactured in this country and had been in use a patent has been submitted, the
in many parts of the Philippine Archipelago, exact question is whether the
defendant has assumed the public use of the invention by a
burden of proof as to anyone of patentee for more than two
his defenses. (See Agawan Co. years before the date of his
vs. Jordan [1869], 7 Wall., 583; application for his patent will be
Blanchard vs. Putnam [1869], 8 fatal to the validity of the patent
Wall., 420; Seymour vs. when issued.' (Worley vs. Lower
Osborne [1871], 11 Wall., 516; Tobacco Co. [1882], 104 U.S.,
Reckendorfer vs. Faber [1876], 340; McClurg vs. Kingsland
92 U.S., 347; 20 R.C.L., 1112, [1843], 1 How., 202;
1168, 1169.) Consolidated Fruit Jar Co. vs.
Wright [1877], 94 U.S., 92;
Egbert vs. Lippman [1881], 104
U.S., 333; Coffin vs. Ogden
[1874], 18 Wall., 120; Manning
"Although we have vs. Cape Ann Isinglass and Glue
spent some time in arriving at Co. [1883], 108 U.S., 462;
this point, yet, having reached it, Andrews vs. Hovey [1887], 123
the question in the case is single U.S., 267; Campbell vs. City of
and can be brought to a narrow New York [1888], 1 L.R.A., 48.)"
compass. Under the English
Statute of Monopolies (21 Jac.
Ch., 3), and under the United
States Patent Act of February
21, 1793, later amended to be We repeat that in view of the evidence
as herein quoted, it was always presented, and particularly of the examination we
the rule, as stated by Lord Coke, have made of the plows, we cannot escape the
Justice Story and other conclusion that the plow upon which the
authorities, that to entitle a man appellee's contention is based, does not
to a patent, the invention must constitute an invention and, consequently, the
be new to the world. (Pennock privilege invoked by him is untenable and the
and Sellers vs. Dialogue [1829], patent acquired by him should be declared
2 Pet., 1.) As said by the United ineffective.
States Supreme Court, it has
been repeatedly held by this The judgment appealed from is hereby
court that a single instance of reversed and the appellants are absolved from
the complaint, with costs of this instance against plaintiffs, annulment does not lie in the absence
the appellee. So ordered. of a cross-complaint to that effect.

Avanceña, C.J., Street, Villamor, Ostrand, Villa-Real, Abad 4. ID.; INFRINGEMENT. — The
Santos, Hull, Vickers and Butte, JJ., concur. defendant cannot be made civilly liable for
PATRICK HENRY FRANK and WILLIAM HENRY GOHN, alleged infringement of the patent on which the
plaintiffs-appellants, vs. G. KOSUYAMA, defendant- action is based on the ground that the machines
appellee. manufactured and sold by him did not have any
J. W. Ferrier for appellants. essential part unknown to the public in the
Pablo Lorenzo for appellee. Province of Davao at the time the plaintiffs
SYLLABUS applied for and obtained their patent for improved
1. PATIENT; ESSENTIAL ELEMENTS. abaca stripping machines.
— Strictly speaking, the hemp stripping machine
of the plaintiffs does not constitute an invention 5. APPLICABILITY OF THE
on the ground that it lacks the element of novelty, DOCTRINE OF "STARE DECISIS". — The
originality and precedence (48 C. J., sec. 101, p. doctrine laid down in the case of Frank and Gohn
97, and sec. 102, p. 98). vs. Benito (51 Phil., 712), to the effect that the
defendant therein had actually infringed upon the
2. ID.; KNOWLEDGE AND USE BY patent of the therein plaintiffs cannot be invoked
THE PUBLIC. — Before the plaintiffs herein in this case. It is true that the then plaintiffs in the
obtained their patent, they themselves had former and those in the latter case are the same
already publicly used the same kind of machine but the defendant therein did not set up the
for many months, at least, and, various other special defenses as alleged by the herein
machines, having in general, the same defendant. Furthermore, the plaintiffs therein had
characteristics and important parts as that of the only confined themselves to presenting the
said plaintiffs, were known in the Province of patent, or rather, a copy thereof, wherein mention
Davao. of the "spindle" was made, and this court took for
granted their claim that it was one of the essential
3. ID.; ANNULMENT. — characteristics thereof which had been imitated
Notwithstanding all the facts herein stated, the or copied by the therein defendant.
trial court did not annul the plaintiffs' patent and
the defendant herein insists that the patent in DECISION
question should be declared null and void. In view IMPERIAL, J p:
of the nature of the action brought by the Patent No. 1519579 (Exhibit 117) on
improvement in hemp stripping machines, issued
by the United States Patent Office on December In their amended complaint, the
16, 1924, and registered in the Bureau of plaintiffs alleged that their hemp stripping
Commerce and Industry of the Philippine Islands machines, for which they obtained a patent, have
on March 17, 1925, was the origin of this action the following characteristics: "A stripping head, a
brought by the plaintiffs herein who prayed that horizontal table, a stripping knife supported upon
judgment be rendered against the defendant, such table, a tapering spindle, a rest holder
ordering him thereby to refrain immediately from adjustably secured on the table portion, a lever
the manufacture and sale off machines similar to and means of compelling the knife to close upon
the one covered by the patent; to render an the table, a pallet or rest in the bottom of the table,
accounting of the profits realized from the a resilient cushion under such pallet or rest." In
manufacture and sale of the machines in spite of the fact that they filed an amended
question; that in case of refusal or failure to complaint from which the "spindle' or conical
render such accounting, the defendant be drum, which was the only characteristic feature of
ordered to pay the plaintiffs the sum of P60 as the machine mentioned in the original complaint,
profit on each machine manufactured or sold by was eliminated, the plaintiffs insisted that the said
him; that upon approval of the required bond, said part constitutes the essential differences
defendant be restrained from continuing the between the machine in question and other
manufacture and sale of the same kind of machines and it was the principal consideration
machines; that after the trial the preliminary upon which their patent was issued. The said
injunction issued therein be declared permanent; plaintiffs sustained their contention on this point
and, lastly, that the said defendant be sentenced even in their printed brief and memorandum filed
to pay the costs and whatever damages the in this appeal.
plaintiffs might be able to prove therein. The
action therefore was based upon alleged During the trial, both parties presented
infringement by the defendant of the rights patent voluminous evidence from which the trial court
through the manufacture and sale by the former arrived at the following conclusions:
of machines similar to that covered by the
aforesaid patent. "In considering their
machine the plaintiffs did
The plaintiffs appealed from the nothing but improve, to a certain
judgment rendered by the trial court dismissing degree, those that were already
their complaint, with costs, as well as the in vogue and in actual use in
defendant's counterclaim of P10,000. The hemp producing provinces. It
defendant did not appeal. cannot be said that they have
invented the 'spindle' inasmuch
as this was already known since of the most primitive of hemp
the year 1909 or 1910. Neither stripping machines.
can it be said that they have
invented the stripping knife and
the contrivance which controls
the movement and pressure
thereof on the ground that "On the other hand,
stripping knives together with although the plaintiffs alleged in
their control sets were already in their original complaint that 'the
actual use in the different principal and important feature
stripping machines long before of said machine is a spindle
their machines appeared. upon which the hemp to be
Neither can it be said that they stripped is wound in the process
invented the flywheel because of stripping,' nevertheless, in
that part or piece thereof, so their amended complaint of
essential in every machine from March 3, 1928, which was filed
time immemorial, was already after a portion of the evidence
known and actually employed in therein had already been
hemp stripping machines such submitted and it was known that
as those of Riesgo (Exhibit 4-A), the use of the spindle was
Crumb (Exhibit 1-A), Icsiar nothing new, they still made the
(Exhibit A-Suzara), Browne allegations appearing in
(Exhibit 28-A), McFie, etc., all of paragraph 3 of their said
which were in use for the benefit amended complaint and
of hemp long before the reproduced on pages 2, 3, 4 and
appearance of the plaintiffs' 5 hereof, copying the same from
machines in the market. Much the application which they filed
less can it be said that they with the United States Patent
invented the pedal to raise the Office, under which they
knife in order to allow the hemp obtained their patent in question.
to be stripped to pass under it, The aforesaid application clearly
on the ground that the use of shows that what they applied for
such contrivance has, likewise, was not a patent for a 'pioneer or
been known since the invention primary invention' but only for
some 'new and useful
improvement in hemp stripping Notwithstanding the foregoing facts, the
machines.'" trial court did not decree the annulment of the
plaintiffs' patent and the herein defendant-
appellee insists that the patent in question should
be declared null and void. We are of the opinion
that it would be improper and untimely to render
We have carefully reviewed the a similar judgment, in view of the nature of the
evidence presented and have had the opportunity action brought by the plaintiffs and in the absence
of ascertaining the truth of the conclusions above of a cross-complaint to that effect. For the
stated. We agree with the trial court that, strictly purposes of this appeal, suffice it to hold that the
speaking, the hemp stripping machine of the defendant is not civilly liable for alleged
plaintiffs does not constitute an invention on the infringement of the patent in question.
ground that it lacks the elements of novelty,
originality and precedence (48 C. J., sec. 101, p. In the light of sound logic, the plaintiffs
97, and sec. 102, p. 98). In fact, before the cannot insists that the "spindle" was a patented
plaintiffs herein obtained their patent, they invention on the ground that said part of the
themselves had already publicly used the same machine was voluntarily omitted by them from
kind of machine for some months, at least, and, their application, as evidenced by the
various other machines, having in general, the photographic copy thereof (Exhibit 41) wherein it
same characteristics and important parts as that likewise appears that the patent on Improved
of the said plaintiffs, were known in the Province Hemp Stripping Machines was issued minus the
of Davao. Machines known as Molo, Riesgo, "spindle" in question. Were we to stress to this
Crumb, Icsiar, Browne and McFie were already part of the machine, we would be giving the
known in that locality and used by the owners of patent obtained by the plaintiffs a wider range
hemp plantations before the machine of the than it actually has, which is contrary to the
plaintiffs came into existence. It may also be principles of interpretation in matters to patents.
noted that Adrian de Icsiar applied for a patent on
an invention which resulted in the rejection by the In support of their claim the plaintiffs
United States Patent Office of the plaintiffs' invoke the doctrine laid down by this court in the
original application for a patent on the so-called case of Frank and Gohn vs. Benito (51 Phil.,
"spindle" or conical drum which was then in 712), wherein it was held that the therein
actual use in the Dringman and Icsiar hemp defendant really infringed upon the patent of the
stripping machines. therein plaintiffs. It may be noted that the plaintiffs
in the former and those in the latter case are the
same and that the patent then involved is the very
same one upon which the present action of the the Province of Davao at the time the plaintiffs
plaintiffs is based. The above-cited case, applied for an obtained their patent for improved
however, cannot be invoked as a precedent to hemp stripping machines, the judgment appealed
justify a judgment in favor of the plaintiffs- from is hereby affirmed, with costs against the
appellants on the ground that the facts in one plaintiffs-appellants. So ordered.
case are entirely different from those in the other.
In the former case the defendant did not set up
the same special defenses as those alleged by DOMICIANO A. AGUAS, petitioner, vs. CONRADO G. DE
the herein defendant in his answer and the LEON and COURT OF APPEALS, respondents.
plaintiffs therein confined themselves to Estanislao Fernandez for petitioner.
presenting the patent, or rather a copy thereof, Cecilia P. de Leon for respondents.
wherein the "spindle' was mentioned, and this SYNOPSIS
court took for granted their claim that it was one Private respondent, who had been granted and issued
of the essential characteristics thereof which was Letters Patent No. 658 by the Philippines Patent Office for his
imitated or copied by the then defendant. Thus it invention of certain new and useful improvements in the
came to pass that the "spindle" in question was process of making mosaic pre-cast tiles, filed a complaint for
insistently mentioned in the decision rendered on infringement of patent against petitioner Domiciano Aguas
appeal as the essential part of the plaintiffs' and F. H. Aquino & Sons. Petitioner Aguas, in his answer,
machine allegedly imitated by the then alleged that respondent's patent was unlawfully secured
defendant. In the case under consideration, it is through misrepresentations as the latter's invention is neither
obvious that the "spindle" is not an integral part of inventive nor new and hence not patentable; and that he
the machine patented by the plaintiffs on the cannot be held guilty of infringement because his products,
ground that it was eliminated from their patent which had been duly patented, were different from those of
inasmuch as it was expressly excluded in their the private respondent. The trial court, finding respondent's
application, as evidenced by the aforesaid Exhibit patent valid and infringed, ordered petitioner Aguas and F. H.
41. Aquino & Sons to pay respondent jointly and severally actual,
moral and exemplary damages and attorney's fees. Petitioner
appealed to the Court of Appeals questioning the validity of
the patent issued by the Philippines Patent Office and the
Wherefore, reiterating that the patentability of respondent's tile-making process. The
defendant cannot be held civilly liable for alleged Appellate Court, however, sustained the trial court's decision
infringement of the patent upon which the present but greatly reduced the award of moral damages. Meanwhile,
action is based on the ground that there is no private respondent's patent right expired, hence, in this
essential part of the machine manufactured and petition, only the right of said private respondent to damages
sold by him, which was unknown to the public in will be determined.
The Supreme Court, affirming the decision of the trial court accepted the thinness of the private respondent's new tiles
as modified by the Court of Appeals, held that petitioner's as a discovery. There is a presumption that the Philippines
evidence has not overcome the legal presumption on the Patent Office has correctly determined the patentability of the
validity of respondent's patent; and that based on the records, improvement by the private respondent of the process in
respondent's process is an improvement of the old process question.
of tile-making, hence, patentable. 3. ID.; ID.; ID.; WHAT CONSTITUTES A PATENTABLE
Petition dismissed. PROCESS AND/OR IMPROVEMENT; CASE AT BAR. —
SYLLABUS Petitioner's contention that the improvement of respondent is
1. COMMERCIAL LAW; PATENT LAW (REPUBLIC ACT not patentable because it is not new and useful and inventive
NO. 165); MATTERS PATENTABLE THEREUNDER; A is without merit, where the records disclose that private
CASE OF; IMPROVEMENT OF THE OLD PROCESS OF respondent's process is an improvement of the old process
TILE-MAKING IN CASE AT BAR. — Under Section 7, of tile-making and that such improvement is indeed inventive
Republic Act No. 165, as amended, "Any invention of a new and goes beyond the exercise of mechanical skill by which
and useful machine, manufactured product or substance, private respondent has introduced a new kind of tile for a new
process or an improvement of the foregoing, shall be purpose.
patentable." In the case at bar, the contention of the petitioner 4. REMEDIAL LAW; APPEAL; FINALITY OF THE FINDINGS
that the letters-patent of private respondent was actually a OF FACT OF THE TRIAL COURT AND OF THE COURT OF
patent for the old and non-patentable process of making APPEALS; CASE AT BAR, NOT AN EXCEPTION. — Both
mosaic precast tiles is devoid of merit. It should be noted that the trial court and the Court of Appeals found as a fact that
private respondent does not claim to be the discoverer or the petitioner did infringe private respondent's patent. There
inventor of the old process of tile-making. He only claims to is no showing that this case falls under one of the exceptions
have introduced an improvement of said process. In fact, when this Court may overrule the findings of fact of the Court
Letters Patent No. 658 was issued by the Philippines Patent of Appeals.
Office to the private respondent, to protect his rights as the 5. COMMERCIAL LAW; PATENT LAW (REPUBLIC ACT
inventor of "an alleged new and useful improvement in the NO. 165); PATENTS; DAMAGES AWARDED UNDER
process of making mosaic precast tiles." SECTION 42 OF THE PATENT LAW; SUSTAINED IN CASE
2. ID.; ID.; PATENTS; VALIDITY BETTER DETERMINED BY AT BAR. — The Supreme Court finds no reason to reduce
THE PHILIPPINES PATENT OFFICE. — The validity of the the amount of damages and attorneys fee awarded by the
patent issued by the Philippines Patent Office in favor of the trial court under Sec. 42 of the Patent Law which are as
private respondent and the question over the inventiveness, follows; (a) P10,020.99 by way of actual damages; (b)
novelty and usefulness of the improved process therein P50,000 by way of moral damages which was reduced by the
specified and described are matters which are better Court of Appeals to P3,000 by way of compensating appellee
determined by the Philippines Patent Office. The technical for his moral suffering; (c) P5,000 by way of exemplary
staff of the Philippines Patent Office, composed of experts in damages; (d) P5,000 by way of attorney's fees and (e) costs
their field, have, by the issuance of the patent in question, of suit.
DECISION exclusive license to make, use and sell throughout the
FERNANDEZ, J p: Philippines the improvements set forth in said Letters Patent
This is a petition for certiorari to review the decision of the No. 658; that the invention patented by said Patent No. 658
Court of Appeals in CA G.R. No. 37824-R entitled "Conrado is of great utility and of great value to plaintiff and of great
G. de Leon, plaintiff-appellee vs. Domiciano Aguas and F. H. benefit to the public who has demanded and purchased tiles
Aquino and Sons, defendants-appellants," the dispositive embodying the said invention in very large quantities and in
portion of which reads: very rapidly increasing quantities; that he has complied with
"WHEREFORE, with the modification that the Philippine statutes relating to marking patented tiles sold
plaintiff-appellee's award of by him; that the public has in general acknowledged the
moral damages is hereby validity of said Patent No. 658, and has respected plaintiff's
reduced to P3,000.00, the right therein and thereunder; that the defendant Domiciano A.
appealed judgment is hereby Aguas infringed Letters of Patent No. 658 by making, using
affirmed, in all other respects, and selling tiles embodying said patented invention and that
with costs against appellants." 1 defendant F. H. Aquino & Sons is guilty of infringement by
making and furnishing to the defendant Domiciano A. Aguas
the engravings, castings and devices designed and intended
for use and actually used in apparatus for the making of tiles
embodying plaintiff's patented invention; that he has given
On April 14, 1962, Conrado G. de Leon filed in the Court of direct and personal notice to the defendants of their said acts
First Instance of Rizal at Quezon City a complaint for of infringement and requested them to desist, but
infringement of patent against Domiciano A. Aguas and F. H. nevertheless, defendants have refused and neglected to
Aquino and Sons alleging that being the original first and sole desist and have disregarded such request, and continue to
inventor of certain new and useful improvements in the so infringe causing great and irreparable damage to plaintiff;
process of making mosaic pre-cast tiles, he lawfully filed and that if the aforesaid infringement is permitted to continue,
prosecuted an application for Philippine patent, and having further losses and damages and irreparable injury will be
complied in all respects with the statute and the rules of the sustained by the plaintiff; that there is an urgent need for the
Philippines Patent Office, Patent No. 658 was lawfully immediate issuance of a preliminary injunction; that as a
granted and issued to him; that said invention was new, result of the defendants' wrongful conduct, plaintiff has
useful, not known or used by others in this country before his suffered and the defendants are liable to pay him, in addition
invention thereof, not patented or described in any printed to actual damages and loss of profits which would be
publication anywhere before his invention thereof, or more determined upon proper accounting, moral and exemplary or
than one year prior to his application for patent therefor, not corrective damages in the sum of P90,000.00; that plaintiff
patented in any foreign country by him or his legal has been compelled to go to court for the protection and
representatives on application filed more than one year prior enforcement of his patent rights as against the defendants'
to his application in this country; that plaintiff has the act of infringement and to engage the services of counsel,
thereby incurring attorney's fees and expenses of litigation in "WHEREFORE, judgment is hereby
the sum of P5,000.00. 2 rendered in favor of plaintiff and
On April 14, 1962, an order granting the plaintiff's petition for against the defendants:
a Writ of Preliminary Injunction was issued. 3
On May 23, 1962, the defendant Domiciano A. Aguas filed
his answer denying the allegations of the plaintiff and alleging
that: the plaintiff is neither the original first nor sole inventor
of the improvements in the process of making mosaic pre- "1. De
cast tiles, the same having been used by several tile-making claring plaintiff's
factories in the Philippines and abroad years before the patent valid and
alleged invention by de Leon; that Letters Patent No. 658 was infringed;
unlawfully acquired by making it appear in the application in
relation thereto that the process is new and that the plaintiff
is the owner of the process when in truth and in fact the
process incorporated in the patent application has been
known and used in the Philippines by almost all tile makers
long before the alleged use and registration of patent by
plaintiff Conrado G. de Leon; that the registration of the "2. Gra
alleged invention did not confer any right on the plaintiff nting a perpetual
because the registration was unlawfully secured and was a injunction
result of the gross misrepresentation on the part of the plaintiff restraining
that his alleged invention is a new and inventive process; that defendants, their
the allegation of the plaintiff that Patent No. 658 is of great officers, agents,
value to plaintiff and of great benefit to the public is a mere employees,
conclusion of the plaintiff, the truth being that a) the invention associates,
of plaintiff is neither inventive nor new, hence, it is not confederates,
patentable; b) defendant has been granted valid patents and any and all
(Patents No. 108, 109, 110 issued on December 21, 1961) persons acting
on designs for concrete decorative wall tiles; and c) that he under their
can not be guilty of infringement because his products are authority from
different from those of the plaintiff. 4 making and/or
using and/or
The trial court rendered a decision dated December 29, 1965, vending tiles
the dispositive portion of which reads: LLpr embodying said
patented
invention or "3. Ord
adapted to be ering that each
used in and all of the
combination infringing tiles,
embodying the engravings,
same, and from castings and
making, devices, which
manufacturing, are in the
using or selling, possession or
engravings, under the control
castings and of defendants be
devices delivered to
designed and plaintiff;
intended for use
in apparatus for
the making of
tiles embodying
plaintiff's
patented
invention, and
"4. Ord
from offering or
ering the
advertising so to
defendants to
do, and from
jointly and
aiding and
severally pay to
abetting or in
the plaintiff the
any way
following sums
contributing to
of money, to wit:
the infringement
of said patent;
(a) P10,020. "THE TRIAL
99 by way of actual COURT ERRED IN NOT
damages; HOLDING THAT
PLAINTIFF'S PATENT
FOR THE 'PROCESS
OF MAKING MOSAIC
PRE-CAST TILE' IS
(b) P50,000. INVALID BECAUSE
00 by way of moral SAID ALLEGED
damages; PROCESS IS NOT AN
INVENTION OR
DISCOVERY AS THE
SAME HAS ALREADY
(c) P5,000.0 LONG BEEN USED BY
0 by way of exemplary TILE
damages MANUFACTURERS
BOTH ABROAD AND IN
THIS COUNTRY.

(d) P5,000.0
0 by way of attorney's
fees and (e) costs of
suit." 5
"II

The defendant Domiciano Aguas appealed to the Court of


Appeals, assigning the following errors. 6
"I "THE TRIAL
COURT ERRED IN NOT
HOLDING THAT THE
PATENT OF PLAINTIFF
IS VALID BECAUSE IT
IS AN IMPROVEMENT
OF THE AGE-OLD TILE "THE TRIAL
MAKING SYSTEM. COURT ERRED IN
HOLDING THAT
DEFENDANT
DOMICIANO A. AGUAS
IS GUILTY OF
INFRINGEMENT
DESPITE THE FACT
THAT PLAINTIFF'S
"III
PATENT IS NOT A
VALID ONE.

"THE TRIAL
COURT ERRED IN NOT
ORDERING THE
CANCELLATION OF
PLAINTIFF- "V
APPELLEE'S LETTERS
PATENT NO. 658,
EXHIBIT L, IN
ACCORDANCE WITH
THE PERTINENT "THE TRIAL
PROVISIONS OF THE COURT ERRED IN NOT
PATENT LAW, HOLDING THAT THE
REPUBLIC ACT 165. DEFENDANT COULD
NEVER BE GUILTY OF
INFRINGEMENT OF
PLAINTIFF'S PATENT
BECAUSE EVEN IN
MATTERS NOT
PATENTED BY THE
PLAINTIFF-LIKE THE
"IV
COMPOSITION AND
PROPORTION OF
INGREDIENTS USED On August 5, 1969, the Court of Appeals affirmed the
AND THE decision of the trial court, with the modification that plaintiff-
STRUCTURAL appellee's award of moral damages was reduced to
DESIGNS OF THE P3,000.00. 7
MOULD AND THE TILE The petitioner assigns the following errors supposedly
PRODUCED — THAT committed by the Court of Appeals:
OF THE DEFENDANT "It is now respectfully submitted that the
ARE DIFFERENT. Court of Appeals committed the
following errors involving
questions of law, to wit:

"First error. — When it did not conclude that


"VI the letters patent of the
respondent although entitled on
the cover page as a patent for
improvements, was in truth and
in fact, on the basis of the body
"THE TRIAL
of the same, a patent for the old
COURT ERRED IN NOT
and non-patentable process of
DISMISSING THE
making mosaic pre-cast tiles;
COMPLAINT AND IN
HOLDING THE
DEFENDANT, INSTEAD
OF THE PLAINTIFF,
LIABLE FOR "Second error. — When it did not conclude
DAMAGES, AND from the admitted facts of the
ATTORNEY'S FEES." case, particularly the contents of
the letters patent, Exh. L, and
the pieces of physical evidence
introduced consisting of
samples of the tiles and
catalogues, that the alleged
improvements introduced by the
respondent in the manufacture patented improvement for the
of mosaic pre-cast tiles are not manufacture of pre-cast tiles,
patentable, the same being not plaintiff furnishing said
new, useful and inventive. defendant the actual model of
the said tiles in escayola and
explained to said engraver the
plans, specifications and the
details of the engravings as he
"Third error. — As a corollary, when it wanted them to be made,
sentenced the herein petitioner including an explanation of the
to pay the damages enumerated lip width, artistic slope of
in the decision of the lower court easement and critical depth of
(Record on Appeal, pp. 74-75), the engraving that plaintiff
as confirmed by it (the Court of wanted for his moulds; that
Appeals), but with the engraver Enrique Aquino knew
modification that the amount of that the moulds he was
P50,000.00 moral damages was engraving for plaintiff were the
reduced to P3,000." 8 latter's very own, which
possessed the new features and
characteristics covered by
plaintiff's patent; that defendant
The facts, as found by the Court of Appeals, are: Aguas personally, as a building
"The basic facts borne out by the record are contractor, purchased from
to the effect that on December 1, plaintiff, tiles shaped out of these
1959, plaintiff-appellee filed a moulds at the back of which was
patent application with the imprinted plaintiff's patent
Philippine Patent Office, and on number (Exhs. "A" to "E"); that
May 5, 1960, said office issued subsequently, through a
in his favor Letters Patent No. representative, Mr. Leonardo,
658 for a 'new and useful defendant Aguas requested
improvement in the process of Aquino to make engravings of
making mosaic pre-cast tiles' the same type and bearing the
(Exh. "L"); that defendant F. H. characteristics of plaintiff's
Aquino & Sons engraved the moulds; that Mr. Aquino knew
moulds embodying plaintiff's that the moulds he was asked to
engrave for defendant Aguas The patent right of the private respondent expired on May 5,
would be used to produce 1977. 10 The errors will be discussed only to determine the
cement tiles similar to plaintiff's; right of said private respondent to damages. prLL
that the moulds which F.H. The petitioner questioned the validity of the patent of the
Aquino & Sons eventually private respondent, Conrado G. de Leon, on the ground that
engraved for Aguas and for the process, subject of said patent, is not an invention or
which it charged Aguas double discovery, or an improvement of the old system of making
the rate it charged plaintiff De tiles. It should be noted that the private respondent does not
Leon, contain the very same claim to be the discoverer or inventor of the old process of
characteristic features of tile-making. He only claims to have introduced an
plaintiff's mould and that Aguas improvement of said process. In fact, Letters Patent No. 658
used these moulds in the was issued by the Philippine Patent Office to the private
manufacture of his tiles which he respondent, Conrado G. de Leon, to protect his rights as the
actually put out for sale to the inventor of "an alleged new and useful improvement in the
public (Exhs. "1" to "3" and Exh process of making mosaic pre-cast tiles." 11 Indeed, Section
"A" to "E"); that both plaintiff's 7, Republic Act No. 165, as amended, provides: "Any
and defendant Aguas' tiles are invention of a new and useful machine, manufactured product
sculptured pre-cast wall tiles or substance, process, or an improvement of the foregoing,
intended as a new feature of shall be patentable."
construction and wall The Court of Appeals found that the private respondent has
ornamentation substantially introduced an improvement in the process of tile-making
identical to each other in size, because:
easement, lip width and critica ". . . we find that plaintiff-appellee has
depth of the deepest introduced an improvement in
depression; and that the only the process of tile-making, which
significant difference between proceeds not merely from
plaintiff's mould and that mechanical skill, said
engraved by Aquino for Aguas is improvement consisting among
that, whereas plaintiff's mould other things, in the new critical
turns out tiles 4 x 4 inches in depth, lip width, easement and
size, defendant Aguas' mould is field of designs of the new tiles.
made to 4-1/4 x 4-1/4 inch tile." The improved lip width of
9 appellee's tiles ensures the
durability of the finished product
preventing the flaking off of the
edges. The easement caused by depressions are known to some
the inclination of the protrusions sculptors, still, to be able to
of the patented moulds is for the produce a new and useful wall
purpose of facilitating the tile, by using them all together,
removal of the newly processed amounts to an invention. More
tile from the female die. so, if the totality of all these
Evidently, appellee's features are viewed in
improvement consists in the combination with the ideal
solution to the old critical composition of cement, sodium
problem by making the silicate and screened fine sand.
protrusions on his moulds attain
an optimum height, so that the
engraving thereon would be
deep enough to produce tiles for
sculptured and decorative "By using his improved process, plaintiff has
purposes, strong enough, succeeded in producing a new
notwithstanding the deep product — a concrete sculptured
engravings, to be utilized for tile which could be utilized for
walling purposes. The optimum walling and decorative
thickness of appellee's new tiles purposes. No proof was
of only 1/8 of an inch at the adduced to show that any tile of
deepest easement (Exhs. "D" the same kind had been
and "D-1") is a most critical produced by others before
feature, suggestive of discovery appellee. Moreover, it appears
and inventiveness, especially that appellee has been deriving
considering that, despite said considerable profit from his
thinness, the freshly formed tile manufacture and sale of such
remains strong enough for its tiles. This commercial success is
intended purpose. evidence of patentability (Walker
on Patents, Deller's Edition, Vol.
I, p. 237)." 12

"While it is true that the matter of easement,


lip width, depth, protrusions and
The validity of the patent issued by the Philippines Patent appellee to present a tile of the
Office in favor of the private respondent and the question over same kind as those produced by
the inventiveness, novelty and usefulness of the improved the latter, from any earlier
process therein specified and described are matters which source but, despite the fact that
are better determined by the Philippines Patent Office. The appellant had every chance to
technical staff of the Philippines Patent Office, composed of do so, he could not present any.
experts in their field, have, by the issuance of the patent in There is, therefore, no concrete
question, accepted the thinness of the private respondent's proof that the improved process
new tiles as a discovery. There is a presumption that the of tile-making described in
Philippines Patent Office has correctly determined the appellee's patent was used by,
patentability of the improvement by the private respondent of or known to, others previous to
the process in question. his discovery thereof." 13
Anent this matter, the Court of Appeals said:
"Appellant has not adduced evidence
sufficient to overcome the above
established legal presumption of
validity or to warrant reversal of The contention of the petitioner Aguas that the letters-patent
the findings of the lower court of de Leon was actually a patent for the old and non-
relative to the validity of the patentable process of making mosaic pre-cast tiles is devoid
patent in question. In fact, as we of merit. De Leon never claimed to have invented the process
have already pointed out, the of tile-making. The Claims and Specifications of Patent No.
clear preponderance of 658 show that although some of the steps or parts of the old
evidence bolsters said process of tile-making were described therein, there were
presumption of validity of novel and inventive features mentioned in the process. Some
appellee's patent. There is no of the novel features of the private respondent's
indication in the records of this improvements are the following: critical depth, with
case — and this Court is corresponding easement and lip width to such degree as
unaware of any fact, which leaves the tile as thin as 1/8 of an inch at its thinnest portion,
would tend to show that ideal composition of cement and fine river sand, among other
concrete wall tiles similar to ingredients that makes possible the production of tough and
those produced by appellee had durable wall tiles, though thin and light; the engraving of deep
ever been made by others designs in such a way as to make the tiles decorative, artistic
before he started manufacturing and suitable for wall ornamentation, and the fact that the tiles
the same. In fact, during the trial, can be mass produced in commercial quantities and can be
appellant was challenged by
conveniently stockpiled, handled and packed without any The Machuca tiles are different from that of the private
intolerable incidence of breakages. 14 respondent. The designs are embossed and not engraved as
The petitioner also contends that the improvement of claimed by the petitioner. There may be depressions but
respondent is not patentable because it is not new, useful and these depressions are too shallow to be considered
inventive. This contention is without merit. engraved. Besides, the Machuca tiles are heavy and
The records disclose that de Leon's process is an massive.
improvement of the old process of tile-making. The tiles There is no similarity between the Pomona Tiles and de
produced from de Leon's process are suitable for Leon's tiles. The Pomona tiles are made of ceramics. 20 The
construction and ornamentation, which previously had not process involved in making cement tiles is different from
been achieved by tiles made out of the old process of tile- ceramic tiles. Cement tiles are made with the use of water,
making. De Leon's invention has therefore brought about a while in ceramics fire is used. As regards the allegation of the
new and useful kind of tile. The old type of tiles were usually petitioner that the private respondent copied some designs of
intended for floors although there is nothing to prevent one Pomona, suffice it to say that what is in issue here is the
from using them for walling purposes. These tiles are neither process involved in tile-making and not the design.
artistic nor ornamental. They are heavy and massive. In view of the foregoing, this Court finds that Patent No. 658
The respondent's improvement is indeed inventive and goes was legally issued, the process and/or improvement being
beyond the exercise of mechanical skill. He has introduced a patentable. Cdpr
new kind of tile for a new purpose. He has improved the old Both the trial court and the Court of Appeals found as a fact
method of making tiles and precast articles which were not that the petitioner Domiciano A. Aguas did infringe de Leon's
satisfactory because of an intolerable number of breakages, patent. There is no showing that this case falls under one of
especially if deep engravings are made on the tile. He has the exceptions when this Court may overrule the findings of
overcome the problem of producing decorative tiles with deep fact of the Court of Appeals. The only issue then to be
engraving, but with sufficient durability. 15 Durability inspite resolved is the amount of damages that should be paid by
of the thinness and lightness of the tile, is assured, provided Aguas.
that a certain critical depth is maintained in relation to the In its decision the Court of Appeals affirmed the amount of
dimensions of the tile. 16 damages awarded by the lower court with the modification
The petitioner also claims that changing the design from that the respondent is only entitled to P3,000.00 moral
embossed to engraved tiles is neither new nor inventive damages: 21
because the Machuca Tile Factory and the Pomona Tile The lower court awarded the following damages: 22
Manufacturing Company have been manufacturing a) P10,020.99 by way of actual damages;
decorative wall tiles that are embossed as well as engraved;
17 that these tiles have also depth, lip width, easement and
field of designs; 18 and that the private respondent had
copied some designs of Pomona. 19
b) P50,000.00 by way of moral damages;
c) P5,000.00 by way of exemplary damages; the award does not exceed three
times the amount of such actual
damages. Considering the
wantonness of the infringement
committed by the defendants
d) P5,000.00 by way of attorney's fees and who knew all the time about the
existence of plaintiff's patent, the
Court feels there is reason to
grant plaintiff maximum
e) Costs of suit damages in the sum of
P10,020.99. And in order to
discourage patent infringements
and to give more teeth to the
provisions of the patent law thus
because: promoting a stronger public
policy committed to afford
"An examination of the books of defendant greater incentives and
Aguas made before a protection to inventors, the Court
Commissioner reveals that hereby awards plaintiff
during the period that Aguas exemplary damages in the sum
was manufacturing and selling of P5,000.00 to be paid jointly
tiles similar to plaintiff's, he and severally by defendants.
made a gross income of Considering the status of plaintiff
P3,340.33, which can safely be as a reputable businessman,
considered the amount by which and owner of the likewise
he enriched himself when he reputed House of Pre-Cast, he is
infringed plaintiff's patent. Under entitled to an award of moral
Sec. 42 of the Patent Law any damages in the sum of
patentee whose rights have P50,000.00" 23
been infringed is entitled to
damages which, according to
the circumstances of the case
may be in a sum above the
amount found as actual In reducing the amount of moral damages the Court of
damages sustained provided Appeals said:
"As regards the question of moral damages lower court is warranted by the
it has been shown that as a circumstances. We feel that said
result of the unlawful acts of amount should be reduced to
infringement committed by P3,000.00 by way of
defendants, plaintiff was compensating appellee for his
understandably very sad; he moral suffering. 'Willful injury to
worried and became nervous property may be a legal ground
and lost concentration on his for awarding moral damages if
work in connection with his tile the court should find that, under
business (pp. 28, 30, t.s.n., Feb. the circumstances such
28, 1964). In addition, plaintiff's damages are justly due' (Art.
character and reputation have 2219 NCC)."
been unnecessarily put in
question because defendants,
by their acts of infringement
have created a doubt or
suspicion in the public mind There is no reason to reduce the amount of damages and
concerning the truth and attorney's fees awarded by the trial court as modified by the
honesty of plaintiff's Court of Appeals.
advertisements and public WHEREFORE, the decision of the Court of Appeals in CA
announcements of his valid G.R. No. 37824-R appealed from is hereby affirmed, without
patent. Necessarily, said acts of pronouncement as to costs.
defendants have caused plaintiff SO ORDERED.
considerable mental suffering, Makasiar, Guerrero, Melencio-Herrera and Plana, JJ.,
considering especially, the fact concur.
that he staked everything on his Teehankee (Chairman), J., took no part.
pre-cast tile business (p. 36, ANGELITA MANZANO, petitioner, vs. COURT OF
t.s.n., Id.). The wantonness and APPEALS, and MELECIA MADOLARIA, as Assignor to
evident bad faith characterizing NEW UNITED FOUNDRY MANUFACTURING
defendants' prejudicial acts CORPORATION, respondents.
against plaintiff justify the O.F. Santos & P.C. Nolasco for petitioner.
assessment of moral damages Sioson, San Diego & Associates for private respondents.
in plaintiff's favor, though we do SYNOPSIS
not believe the amount of Petitioner Manzano filed with the Philippine Patent Office an
P50,000.00 awarded by the action for the cancellation of Letters Patent No. UM-4609 for
a gas burner registered in the name of respondent Madolaria reversal of the findings and conclusions of the Patent Office
who subsequently assigned the letters patent to United and the Court of Appeals. aATHES
Foundry. Petitioner alleged that the gas burner was not SYLLABUS
inventive, new or useful; that the specification of the letters 1. COMMERCIAL LAW; LAW ON PATENTS;
patent did not comply with the requirements of the law; that PATENTABILITY OF A DISCOVERY; ELEMENT OF
respondent Madolaria was not the original inventor nor did NOVELTY IS ESSENTIAL. — The element of novelty is an
she derive her rights from the original inventor of the utility essential requisite of the patentability of an invention or
model; and that the letters patent was secured by means of discovery. If a device or process has been known or used by
fraud or misrepresentation. Petitioner further alleged that the others prior to its invention or discovery by the applicant, an
utility model had been known by others in the Philippines for application for a patent therefor should be denied; and if the
more than one (1) year before her application. The Director application has been granted, the court, in a judicial
of Patents denied the petition for cancellation holding that the proceeding in which the validity of the patent is drawn in
evidence of petitioner was not able to establish convincingly question, will hold it void and ineffective. It has been
that the patented utility model of private respondent was repeatedly held that an invention must possess the essential
anticipated. Not one of the various pictorial representations elements of novelty, originality and precedence, and for the
of business convincingly showed that the devices presented patentee to be entitled to the protection the invention must be
by petitioner was identical with the utility model of the new to the world. In issuing Letters Patent No. UM-4609 to
respondent. Even assuming that the brochures depicted each Melecia Madolaria for an "LPG Burner" on 22 July 1981, the
element of the patented gas burner device so that the prior Philippine Patent Office found her invention novel and
art and patented device became identical although in truth patentable. The issuance of such patent creates a
they were not, they could not serve as anticipatory bars for presumption which yields only to clear and cogent evidence
the reason that they were undated. The dates when they that the patentee was the original and first inventor. The
were distributed to the public were not indicated and, burden of proving want of novelty is on him who avers it and
therefore, were useless prior art references. The records do the burden is a heavy one which is met only by reasonable
not support the petitioner's contention that the Letters Patent doubt. Hence, a utility model shall not be considered "new" if
was obtained by means of fraud and/or misrepresentation. before the application for a patent it has been publicly known
No evidence whatsoever was presented to show that or publicly used in this country or has been described in a
Madolaria withheld with intent to deceive material facts which, printed publication or publications circulated within the
if disclosed, would have resulted in the refusal by the country, or if it is substantially similar to any other utility model
Philippine Patent Office to issue the Letters Patent under so known, used or described within the country.
inquiry. 2. REMEDIAL LAW; EVIDENCE; VALIDITY OF PATENTS;
The findings of fact of the Director of Patents are conclusive FINDINGS OF THE PHILIPPINE PATENT OFFICE,
on this Court when supported by substantial evidence. RESPECTED. — The validity of the patent issued by the
Petitioner has failed to show compelling grounds for a 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 again the evidence and credibility of witnesses presented
better determined by the Patent Office. The technical staff of before the lower tribunal or office. The Supreme Court is not
the Philippine Patent Office composed of experts in their field a trier of facts. Its jurisdiction is limited to reviewing and
has by the issuance of the patent in question accepted private revising errors of law imputed to the lower court, its findings
respondent's model of gas burner as a discovery. There is a of fact being conclusive and not reviewable by this Court.
presumption that the Office has correctly determined the SEcITC
patentability of the model and such action must not be DECISION
interfered with in the absence of competent evidence to the BELLOSILLO, J p:
contrary. The rule is settled that the findings of fact of the The primary purpose of the patent system is not the reward
Director of Patents, especially when affirmed by the Court of of the individual but the advancement of the arts and
Appeals, are conclusive on this Court when supported by sciences. The function of a patent is to add to the sum of
substantial evidence. Petitioner has failed to show compelling useful knowledge and one of the purposes of the patent
grounds for a reversal of the findings and conclusions of the system is to encourage dissemination of information
Patent Office and the Court of Appeals. The alleged failure of concerning discoveries and inventions. This is a matter which
the Director of Patents and the Court of Appeals to accord is properly within the competence of the Patent Office, the
evidentiary weight to the testimonies of the witnesses of official action of which has the presumption of correctness
petitioner showing anticipation is not a justification to grant and may not be interfered with in the absence of new
the petition. Pursuant to the requirement of clear and evidence carrying thorough conviction that the Office has
convincing evidence to overthrow the presumption of validity erred. Since the Patent Office is an expert body preeminently
of a patent, it has been held that oral testimony to show qualified to determine questions of patentability, its findings
anticipation is open to suspicion and if uncorroborated by must be accepted if they are consistent with the evidence,
cogent evidence, as what occurred in this case, it may be held with doubts as to patentability resolved in favor of the Patent
insufficient. The question on priority of invention is one of fact. Office. 1
Novelty and utility are likewise questions of fact. The validity Petitioner Angelita Manzano filed with the Philippine Patent
of patent is decided on the basis of factual inquiries. Whether Office on 19 February 1982 an action for the cancellation of
evidence presented comes within the scope of prior art is a Letters Patent No. UM-4609 for a gas burner registered in the
factual issue to be resolved by the Patent Office. There is name of respondent Melecia Madolaria who subsequently
question of fact when the doubt or difference arises as to the assigned the letters patent to New United Foundry and
truth or falsehood of alleged facts or when the query *Manufacturing Corporation (UNITED FOUNDRY, for
necessarily invites calibration of the whole evidence brevity). Petitioner alleged that (a) the utility model covered
considering mainly the credibility of witnesses, existence and by the letters patent, in this case, an LPG gas burner, was not
relevance of specific surrounding circumstances, their inventive, new or useful; (b) the specification of the letters
relation to each other and to the whole and the probabilities patent did not comply with the requirements of Sec. 14, RA
of the situation. Time and again we have held that it is not the No. 165, as amended; (c) respondent Melecia Madolaria was
function of the Supreme Court to analyze or weigh all over not the original, true and actual inventor nor did she derive
her rights from the original, true and actual inventor of the testified that it was given to her in January 1982 by one of her
utility model covered by the letters patent; and, (d) the letters customers who allegedly acquired it from UNITED
patent was secured by means of fraud or misrepresentation. FOUNDRY. Petitioner also presented in evidence her own
In support of her petition for cancellation petitioner further model of an LPG burner called "Ransome" burner marked
alleged that (a) the utility model covered by the letters patent Exh. "L," which was allegedly manufactured in 1974 or 1975
of respondent had been known or used by others in the and sold by her in the course of her business operation in the
Philippines for more than one (1) year before she filed her name of BESCO METAL. Petitioner claimed that this
application for letters patent on 9 December 1979; (b) the "Ransome" burner (Exh. "L") had the same configuration and
products which were produced in accordance with the utility mechanism as that of the model which was patented in favor
model covered by the letters patent had been in public use or of private respondent Melecia Madolaria. Also presented by
on sale in the Philippines for more than one (1) year before petitioner was a burner cup of an imported "Ransome" burner
the application for patent therefor was filed. cdpr marked Exh "M" which was allegedly existing even before the
Petitioner presented the following documents which she patent application of private respondent.
correspondingly marked as exhibits: (a) affidavit of petitioner
alleging the existence of prior art, marked Exh. "A;" (b) a Petitioner presented two (2) other witnesses, namely, her
brochure distributed by Manila Gas Corporation disclosing a husband Ong Bun Tua and Fidel Francisco. Ong testified that
pictorial representation of Ransome Burner made by he worked as a helper in the UNITED FOUNDRY from 1965
Ransome Torch and Burner Company, USA, marked Exh. to 1970 where he helped in the casting of LPG burners with
"D;" and, (c) a brochure distributed by Esso Gasul or Esso the same form, configuration and mechanism as that of the
Standard Eastern, Inc., of the Philippines showing a picture model covered by the Letters Patent issued to private
of another similar burner with top elevation view and another respondent. Francisco testified that he had been employed
perspective view of the same burner, marked Exh. "E." with the Manila Gas Corporation from 1930 to 1941 and from
Testifying for herself petitioner narrated that her husband 1952 up to 1969 where he retired as supervisor and that
Ong Bun Tua worked as a helper in the UNITED FOUNDRY Manila Gas Corporation imported "Ransome" burners way
where respondent Melecia Madolaria used to be affiliated back in 1965 which were advertised through brochures to
with from 1965 to 1970; that Ong helped in the casting of an promote their sale.
LPG burner which was the same utility model of a burner for Private respondent, on the other hand, presented only one
which Letters Patent No. UM-4609 was issued, and that after witness, Rolando Madolaria, who testified, among others,
her husband's separation from the shop she organized Besco that he was the General Supervisor of the UNITED
Metal Manufacturing (BESCO METAL, for brevity) for the FOUNDRY in the foundry, machine and buffing section; that
casting of LPG burners one of which had the configuration, in his early years with the company, UNITED FOUNDRY was
form and component parts similar to those being engaged in the manufacture of different kinds of gas stoves
manufactured by UNITED FOUNDRY. Petitioner presented as well as burners based on sketches and specifications
in evidence an alleged model of an LPG burner marked Exh. furnished by customers; that the company manufactured
"K" and covered by the Letters Patent of respondent, and early models of single-piece types of burners where the
mouth and throat were not detachable; that in the latter part by petitioner to show that the then applicant Melecia
of 1978 respondent Melecia Madolaria confided in him that Madolaria withheld with intent to deceive material facts which,
complaints were being brought to her attention concerning if disclosed, would have resulted in the refusal by the
the early models being manufactured; that he was then Philippine Patent Office to issue the Letters Patent under
instructed by private respondent to cast several experimental inquiry.
models based on revised sketches and specifications; that Petitioner elevated the decision of the Director of Patents to
private respondent again made some innovations; that after the Court of Appeals which on 15 October 1993 affirmed the
a few months, private respondent discovered the solution to decision of the Director of Patents. Hence, this petition for
all the defects of the earlier models and, based on her latest review on certiorari alleging that the Court of Appeals erred
sketches and specifications, he was able to cast several (a) in relying on imaginary differences which in actuality did
models incorporating the additions to the innovations not exist between the model of private respondent covered
introduced in the models. Various tests were conducted on by Letters Patent No. UM-4609 and the previously known
the latest model in the presence and under the supervision of model of Esso Standard Eastern, Inc., and Manila Gas
Melecia Madolaria and they obtained perfect results. Rolando Corporation, making such imaginary differences grounded
Madolaria testified that private respondent decided to file her entirely on speculation, surmises and conjectures; (b) in
application for utility model patent in December 1979. rendering judgment based on misapprehension of facts; (c)
On 7 July 1986 the Director of Patents Cesar C. Sandiego in relying mainly on the testimony of private respondent's sole
issued Decision No. 86-56 denying the petition for witness Rolando Madolaria; and, (d) in not cancelling Letters
cancellation and holding that the evidence of petitioner was Patent No. UM-4609 in the name of private respondent.
not able to establish convincingly that the patented utility Petitioner submits that the differences cited by the Court of
model of private respondent was anticipated. Not one of the Appeals between the utility model of private respondent and
various pictorial representations of business clearly and the models of Manila Gas Corporation and Esso Standard
convincingly showed that the devices presented by petitioner Eastern, Inc., are more imaginary than real. She alleges that
was identical or substantially identical with the utility model of based on Exhs. "E," "E-1," "F" and "F-1" or the brochures of
the respondent. The decision also stated that even assuming Manila Gas Corporation and Esso Standard Eastern, Inc.,
that the brochures depicted clearly each and every element presented by petitioner, the cup-shaped burner mouth and
of the patented gas burner device so that the prior art and threaded hole on the side are shown to be similar to the utility
patented device became identical although in truth they were model of private respondent. The exhibits also show a
not, they could not serve as anticipatory bars for the reason detachable burner mouth having a plurality of upwardly
that they were undated. The dates when they were distributed existing undulations adopted to act as gas passage when the
to the public were not indicated and, therefore, were useless cover is attached to the top of said cup-shaped mouth all of
prior art references. The records and evidence also do not which are the same as those in the patented model. Petitioner
support the petitioner's contention that Letters Patent No. also denies as substantial difference the short cylindrical tube
UM-4609 was obtained by means of fraud and/or of the burner mouth appearing in the brochures of the burners
misrepresentation. No evidence whatsoever was presented
being sold by Manila Gas Corporation and the long cylindered Finally, it is argued that the testimony of private respondent's
tube of private respondent's model of the gas burner. lone witness Rolando Madolaria should not have been given
Petitioner argues that the actual demonstration made during weight by the Patent Office and the Court of Appeals because
the hearing disclosed the similarities in form, operation and it contained mere after-thoughts and pretensions.
mechanism and parts between the utility model of private We cannot sustain petitioner. Section 7 of RA No. 165, as
respondent and those depicted in the brochures. The findings amended, which is the law on patents, expressly provides —
of the Patent Office and the Court of Appeals that the Sec. 7. Inventions patentable. — Any
brochures of Manila Gas Corporation and Esso Standard invention of a new and useful
Eastern, Inc., are undated cannot overcome the fact of their machine, manufactured product
circulation before private respondent filed her application for or substance, process or an
utility model patent. Petitioner thus asks this Court to take improvement of any of the
judicial notice of the fact that Esso Standard Eastern, Inc., foregoing, shall be patentable.
disappeared before 1979 and reappeared only during the
Martial Law years as Petrophil Corporation. Petitioner also
emphasizes that the brochures indicated the telephone
number of Manila Gas Corporation as 5-79-81 which is a five
(5) numbered telephone number existing before 1975 Further, Sec. 55 of the same law provides —
because telephones in Metro Manila started to have six (6) Sec. 55. Design patents and patents for
numbers only after that year. utility models. — (a) Any new,
Petitioner further contends that the utility model of private original and ornamental design
respondent is absolutely similar to the LPG burner being sold for an article of manufacture and
by petitioner in 1975 and 1976, and also to the "Ransome" (b) any new model of
burner depicted in the old brochures of Manila Gas implements or tools or of any
Corporation and Esso Standard Eastern, Inc., fabricated by industrial product or of part of
Ransome Torch and Burner Company of Oakland, California, the same, which does not
USA, especially when considered through actual physical possess the quality of invention,
examination, assembly and disassembly of the models of but which is of practical utility by
petitioner and private respondent. Petitioner faults the Court reason of its form, configuration,
of Appeals for disregarding the testimonies of Ong Bun Tua construction or composition,
and Fidel Francisco for their failure to produce documents on may be protected by the author
the alleged importation by Manila Gas Corporation of thereof, the former by a patent
"Ransome" burners in 1965 which had the same for a design and the latter by a
configuration, form and mechanism as that of the private patent for a utility model, in the
respondent's patented model. same manner and subject to the
same provisions and
requirements as relate to As found by the Director of Patents, the standard of evidence
patents for inventions insofar as sufficient to overcome the presumption of legality of the
they are applicable except as issuance of UM-4609 to respondent Madolaria was not
otherwise herein provided. legally met by petitioner in her action for the cancellation of
the patent. Thus the Director of Patents explained his
reasons for the denial of the petition to cancel private
respondent's patent —
The element of novelty is an essential requisite of the Scrutiny of Exhs. "D" and "E" readily reveals
patentability of an invention or discovery. If a device or that the utility model (LPG
process has been known or used by others prior to its Burner) is not anticipated. Not
invention or discovery by the applicant, an application for a one of the various pictorial
patent therefor should be denied; and if the application has representations of burners
been granted, the court, in a judicial proceeding in which the clearly and convincingly show
validity of the patent is drawn in question, will hold it void and that the device presented
ineffective. 2 It has been repeatedly held that an invention therein is identical or
must possess the essential elements of novelty, originality substantially identical in
and precedence, and for the patentee to be entitled to the construction with the aforesaid
protection the invention must be new to the world. 3 utility model. It is relevant and
In issuing Letters Patent No. UM-4609 to Melecia Madolaria material to state that in
for an "LPG Burner" on 22 July 1981, the Philippine Patent determining whether novelty or
Office found her invention novel and patentable. The newness is negatived by any
issuance of such patent creates a presumption which yields prior art, only one item of the
only to clear and cogent evidence that the patentee was the prior art may be used at a time.
original and first inventor. The burden of proving want of For anticipation to occur, the
novelty is on him who avers it and the burden is a heavy one prior art must show that each
which is met only by clear and satisfactory proof which element is found either
overcomes every reasonable doubt. 4 Hence, a utility model expressly or described or under
shall not be considered "new" if before the application for a principles of inherency in a
patent it has been publicly known or publicly used in this single prior art reference or that
country or has been described in a printed publication or the claimed invention was
publications circulated within the country, or if it is probably known in a single prior
substantially similar to any other utility model so known, used art device or practice. (Kalman
or described within the country. 5 v. Kimberly Clark, 218 USPQ
781, 789)
Even assuming gratia arguendi that the With respect to Exh. "L," petitioner claimed it
aforesaid brochures do depict to be her own model of LPG
clearly on all fours each and burner allegedly manufactured
every element of the patented sometime in 1974 or 1975 and
gas burner device so that the sold by her in the course of her
prior art and the said patented business operation in the name
device become identical, of Besco Metal Manufacturing,
although in truth they are not, which burner was denominated
they cannot serve as as "Ransome" burner.
anticipatory bars for the reason
that they are undated. The dates
when they were distributed to
the public were not indicated
and, therefore, they are useless xxx xxx xxx
prior art references.

But a careful examination of Exh. "L" would


xxx xxx xxx show that it does not bear the
word "Ransome" which is the
burner referred to as the product
being sold by the Petitioner. This
is not the way to prove that Exh.
Furthermore, and more significantly, the "L" anticipates Letters Patent
model marked Exh. "K" does not No. UM-4609 through Exhs. "C"
show whether or not it was and "D." Another factor working
manufactured and/or cast against the Petitioner's claims is
before the application for the that an examination of Exh. "L"
issuance of patent for the LPG would disclose that there is no
burner was filed by Melecia indication of the time or date it
Madolaria. was manufactured. This Office,
thus has no way of determining
whether Exh. "L" was really
manufactured before the filing of
the aforesaid application which
matured into Letters Patent No. It must likewise be pointed out that Ong Bun
UM-4609, subject matter of the Tua testified on the brochures
cancellation proceeding. allegedly of Manila Gas and of
Esso Gasul marked Exhs. "E"
and "F" and on the alleged fact
that Manila Gas Corporation
was importing from the United
At this juncture, it is worthwhile to point out States "Ransome" burners. But
that petitioner also presented the same could not be given
Exh. "M" which is the alleged credence since he himself
burner cup of an imported admitted during cross-
"Ransome" burner. Again, this examination that he has never
Office finds the same as been connected with Manila Gas
unreliable evidence to show Corporation. He could not even
anticipation. It observed that present any importation papers
there is no date indicated therein relating to the alleged imported
as to when it was manufactured ransome burners. Neither did his
and/or imported before the filing wife. 6
of the application for issuance of
patent of the subject utility
model. What is more, some
component parts of Exh. "M" are
missing, as only the cup was The above findings and conclusions of the Director of Patent
presented so that the same were reiterated and affirmed by the Court of Appeals. 7
could not be compared to the The validity of the patent issued by the Philippine Patent
utility model (subject matter of Office in favor of private respondent and the question over
this case) which consists of the inventiveness, novelty and usefulness of the improved
several other detachable parts in model of the LPG burner are matters which are better
combination to form the determined by the Patent Office. The technical staff of the
complete LPG burner. Philippine Patent Office composed of experts in their field has
by the issuance of the patent in question accepted private
respondent's model of gas burner as a discovery. There is a
presumption that the Office has correctly determined the
patentability of the model 8 and such action must not be
xxx xxx xxx
interfered with in the absence of competent evidence to the circumstances, their relation to each other and to the whole
contrary. and the probabilities of the situation. 11 cdphil
The rule is settled that the findings of fact of the Director of Time and again we have held that it is not the function of the
Patents, especially when affirmed by the Court of Appeals, Supreme Court to analyze or weigh all over again the
are conclusive on this Court when supported by substantial evidence and credibility of witnesses presented before the
evidence. Petitioner has failed to show compelling grounds lower tribunal or office. The Supreme Court is not a trier of
for a reversal of the findings and conclusions of the Patent facts. Its jurisdiction is limited to reviewing and revising errors
Office and the Court of Appeals. of law imputed to the lower court, its findings of fact being
The alleged failure of the Director of Patents and the Court of conclusive and not reviewable by this Court.
Appeals to accord evidentiary weight to the testimonies of the WHEREFORE, the Petition is DENIED. The Decision of the
witnesses of petitioner showing anticipation is not a Court of Appeals affirming that of the Philippine Patent Office
justification to grant the petition. Pursuant to the requirement is AFFIRMED. Costs against petitioner.
of clear and convincing evidence to overthrow the SO ORDERED.
presumption of validity of a patent, it has been held that oral Vitug, Kapunan and Hermosisima Jr., JJ ., concur.
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. 9
Finally, petitioner would want this Court to review all over
again the evidence she presented before the Patent Office.
She argues that contrary to the decision of the Patent Office
and the Court of Appeals, the evidence she presented clearly
proves that the patented model of private respondent is no
longer new and, therefore, fraud attended the acquisition of
patent by private respondent.
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. 10 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