Aguas v.

De Leon

G.R. No. L-32160 | January 30, 1982

FERNANDEZ, J.

FACTS:

 In 1962, Conrado de Leon (De Leon) filed a complaint for infringement of patent against Domiciano
Aguas (Aguas) and F. H. Aquino & Sons alleging, among others, that:
o Being the original first and sole inventor of certain new and useful improvements in the process
of making mosaic pre-cast tiles, he lawfully filed and prosecuted an application for Philippine
patent;
o Having complied in all respects with the statute and the rules of the Philippine Patent Office,
Patent No. 658 was lawfully granted and issued to him;
o Said invention was new, useful, not known or used by others in this country before his
invention thereof;
o Aguas infringed the patent by making, using and selling tiles embodying said patent invention;
and
o F. H. Aquino & Sons is guilty of infringement by making and furnishing to the defendant Aguas
the engravings, castings and devices designed and intended of tiles embodying De Leon’s
patented invention.
 Aguas filed his answer denying De Leon’s allegations and alleging, among others, that:
o De Leon is neither the original first nor sole inventor of the improvements in the process of
making mosaic pre-cast tiles, the same having been used by several tile-making factories in the
Philippines and abroad years before the alleged invention by de Leon; and
o De Leon’s allegation that Patent No. 658 is of great value to plaintiff and of great benefit to the
public is a mere conclusion of the plaintiff, the truth being that
a. the invention of De Leon is neither inventive nor new, hence, it is not patentable,
b. Aguas has been granted valid patents on designs for concrete decorative wall tiles; and
c. Aguas can not be guilty of infringement because his products are different from those of
the De Leon.

ISSUE:

 Was the alleged invention or discovery of De Leon patentable? YES

RATIO:

De Leon introduced an improvement in the process of tile-making

 The SC agreed with the findings of the CA that De Leon has introduced an improvement in the process
of tile-making, which proceeds not merely from mechanical skill, said improvement consisting among
other things, in the new critical depth, lip width, easement and field of designs of the new tiles.
o The improved lip width of De Leon’s tiles ensures the durability of the finished product
preventing the flaking off of the edges. The easement caused by the inclination of the
protrusions of the patented moulds is for the purpose of facilitating the removal of the newly
processed tile from the female die.
 o Evidently, De Leon’s improvement consists in the solution to the old critical problem by making
the protrusions on his moulds attain an optimum height, so that the engraving thereon would
be deep enough to produce tiles for sculptured and decorative purposes, strong optimum
thickness of appellee's new tiles of only 1/8 of an inch at the deepest easement is a most critical
feature, suggestive of discovery and inventiveness, especially considering that, despite said
thinness, the freshly formed tile remains strong enough for its intended purpose.
o While it is true that the matter of easement, lip width, depth, protrusions and depressions are
known to some sculptors, still, to be able to produce a new and useful wall tile, by using them
all together, amounts to an invention.
o By using his improved process, De Leon has succeeded in producing a new product – a concrete
sculptured tile which could be utilized for walling and decorative purposes.

Aguas failed to present evidence to overcome the presumption of validity of the patent

 The validily of the patent issued by the Philippines Patent Office in favor of the De Leon and the
question over the inventiveness, novelty and usefulness of the improved process therein specified and
described are matters which are better determined by the Philippines Patent Office.
 The technical staff of the Philippines Patent Office, composed of experts in their field, have, by the
issuance of the patent in question, accepted the thinness of the private respondent's new tiles as a
discovery.
 There is a presumption that the Philippines Patent Office has correctly determined the patentability of
the improvement by De Leon of the process in question.
 Aguas has not adduced evidence sufficient to overcome the above established legal presumption of
validity or to warrant reversal of the findings of the lower court relative to the validity of the patent in
question.

The improvement introduced by De Leon is new, useful and inventive

 The tiles produced from De Leon’s process are suitable for construction and ornamentation, which
previously had not been achieved by tiles made out of the old process of tile making.
 De Leon's invention has therefore brought about a new and useful kind of tile. The old type of tiles
were usually intended for floors although there is nothing to prevent one from using them for walling
purposes. These tiles are neither artistic nor ornamental. They are heavy and massive.
 De Leon’s improvement is indeed inventive and goes beyond the exercise of mechanical skill. He has
introduced a new kind of tile for a new purpose. He has improved the old method of making tiles and
pre-cast articles which were not satisfactory because of an intolerable number of breakages, especially if
deep engravings are made on the tile. He has overcome the problem of producing decorative tiles with
deep engraving, but with sufficient durability. Durability inspite of the thinness and lightness of the
tile, is assured, provided that a certain critical depth is maintained in relation to the dimensions of the
tile.