63.DIVINA PALAO VS. FLORENTINO INTERNATIONAL, INC.

G.R. NO.186967

January 18, 2017

FACTS

Florentino International, Inc. filed a Petition for Cancellation of Letters Patent No. UM-7789, which the
Intellectual Property Office had issued in favor of Palao. Letters Patent No. UM-7789 pertained to "A Ceramic Tile
Installation on Non-Concrete Substrate Base Surfaces Adapted to Form Part of Furniture, Architectural Components
and the Like. Florentino claimed that the utility model covered by Letters Patent No. UM-7789 was not original, new,
or patentable, as it had been publicly known or used in the Philippines and had even been the subject of several
publications. It added that it, as well as many others, had been using the utility model well before Palao' s application
for a patent.

The Bureau of Legal Affairs of the Intellectual Property Office denied Florentino's Petition for Cancellation. It
noted that the testimony and pictures, which Florentino offered in evidence, failed to establish that the utility model
subject of Letters Patent No. UM-7789 was publicly known or used before Palao' s application for a patent.

Florentino appealed to the Office of the Director General of the Intellectual Property Office. This appeal's
Verification and Certification of Non-Forum Shopping was signed but he failed to attach to its appeal a secretary's
certificate or board resolution authorizing the lawyers to sign the Verification and Certification of Non-Forum
Shopping. Thus, the Office of the Director General issued the Order requiring Florentino to submit proof that the
lawyers representing him was authorized to sign the Verification and Certification of Non-Forum Shopping.

Florentino filed a Compliance, but Intellectual Property Office Director General dismissed Florentino's appeal
on the ground that the Secretary's Certificate pertained to an August 14, 2008 Resolution issued by Florentino' s Board
of Directors, and reasoned that the same Certificate failed to establish the authority of Florentino's counsel to sign the
Verification and Certification of Non-Forum Shopping as of the date of the filing of Florentino's appeal. Florentino then
filed before the Court of Appeals a Petition for Review under Rule 43 of the 1997 Rules of Civil Procedure. The Court of
Appeals faulted Director General for an overly strict application of procedural rules. Thus, it reversed Director
General’s Order and reinstated Florentino' s appeal.

ISSUE

Whether or not Court of Appeals erred in reversing the Order of Intellectual Property Office Director General and in
reinstating respondent’s appeal.

RULING

The Supreme Court held there is a need for a certification of non-forum shopping to be attached to
respondent's appeal before the Office of the Director General of the Intellectual Property Office. Section 3 of the
Intellectual Property Office's Uniform Rules on Appeal specifies the form through which appeals may be taken to the
Director General: Section 3. Appeal Memorandum. - The appeal shall be perfected by filing an appeal memorandum in
three (3) legible copies with proof of service to the Bureau Director and the adverse party, if any, and upon payment of
the applicable fee, Reference Code 127 or 128, provided in the IPO Fee Structure.

These requirements notwithstanding, the Intellectual Property Office's own Regulations on Inter Partes
Proceedings specify that the Intellectual Property Office "shall not be bound by the strict technical rules of procedure
and evidence. It was an error for the Director General of the Intellectual Property Office to have been so rigid in
applying a procedural rule and dismissing respondent's appeal.
64. CHING VS. SALINAS
G.R. NO.161295

June 29, 2005

FACTS

Petitioner Ching is a maker and manufacturer of a utility model, Leaf Spring Eye Bushing for Automobile, for
which he holds certificates of copyright registration. Petitioner’s request to the NBI to apprehend and prosecute illegal
manufacturers of his work led to the issuance of search warrants against respondent Salinas, alleged to be reproducing
and distributing said models in violation of the IP Code. Respondent moved to quash the warrants on the ground that
petitioner’s work is not artistic in nature and is a proper subject of a patent, not copyright. Petitioner insists that the IP
Code protects a work from the moment of its creation regardless of its nature or purpose. The trial court quashed the
warrants. Petitioner argues that the copyright certificates over the model are prima facie evidence of its validity. CA
affirmed the trial court’s decision.

ISSUES

Whether or not petitioner’s model is an artistic work subject to copyright protection.

Whether or not petitioner is entitled to copyright protection on the basis of the certificates of registration issued to it.

RULING

Petitioner’s model is not an artistic work subject to copyright protection. As gleaned from the specifications
appended to the application for a copyright certificate filed by the petitioner, the said Leaf Spring Eye Bushing for
Automobile and Vehicle Bearing Cushion are merely utility models. As gleaned from the description of the models and
their objectives, these articles are useful articles which are defined as one having an intrinsic utilitarian function that is
not merely to portray the appearance of the article or to convey information. Plainly, these are not literary or artistic
works. They are not intellectual creations in the literary and artistic domain, or works of applied art. They are certainly
not ornamental designs or one having decorative quality or value. Indeed, while works of applied art, original
intellectual, literary and artistic works are copyrightable, useful articles and works of industrial design are not. A useful
article may be copyrightable only if and only to the extent that such design incorporates pictorial, graphic, or sculptural
features that can be identified separately from, and are capable of existing independently of the utilitarian aspects of
the article. In this case, the bushing and cushion are not works of art. They are, as the petitioner himself admitted,
utility models which may be the subject of a patent.

Petitioner is not entitled to copyright protection on the basis of the certificates issued to it. No copyright
granted by law can be said to arise in favor of the petitioner despite the issuance of the certificates of copyright
registration and the deposit of the Leaf Spring Eye Bushing and Vehicle Bearing Cushion. Indeed, in Joaquin, Jr. v.
Drilon and Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated, the Court ruled that:

Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right granted by
the statute, and not simply a pre-existing right regulated by it. Being a statutory grant, the rights are only such as the
statute confers, and may be obtained and enjoyed only with respect to the subjects and by the persons, and on terms
and conditions specified in the statute. Accordingly, it can cover only the works falling within the statutory
enumeration or description.

Ownership of copyrighted material is shown by proof of originality and copyrightability. To discharge his
burden, the applicant may present the certificate of registration covering the work or, in its absence, other evidence. A
copyright certificate provides prima facie evidence of originality which is one element of copyright validity. It
constitutes prima facie evidence of both validity and ownership and the validity of the facts stated in the certificate.