CRESAR PRECISION SYSTEMS VS.

CA AND FLORO
INTERNATIONAL CORP
Facts:

Floro International Corp (respondent) domestic corp

engaged in the manufacture, production, distribution and sale
of military arms, munitions and etx.
Jan 23 1990 Respondent was granted by Bureau of Patents,
trademark and tech transfer (BPTTT), a Letters Patent
covering an aerial fuze published in Sep-Oct 1990 issue of the
BOPs OG.
Nov 1993 President Floro discovered that petitioner Cresar
submitted samples of its patented aerial fuze to the AFP for
testing. He learned that Cresar was claiming it as its own and
planning to bid and manufacture commercially WITHOUT
authority from Floro.
Dec 1993 - Floro sent a letter to Cresar warnin the latter to
desist from going to the scheduled testing or it will go to
court for injunction.
In response to demand, Cresar filed complaint for injunction
and TRO arising from the alleged infringement before the RTC
claiming that:
o They were the first, true and actual inventor of an
aerial fuze;
o Respondents aerial fuze is identical in every respect to
theirs, the difference being merely cosmetic in nature
RTC directed parties to submit memoranda
Floro submitted memoranda alleging that Cresar has no
cause of action since it has no patent and Floro, being the
patent holder, cannot be stripped of its property right over
the patented aerial fuze.
RTC issued TRO. Floro MRd asserting their patent rights over
the aerial fuze. Denied. Appealed to CA.
CA:

Floro alleged that Cresar has no cause of action since

they do not have patent over the aerial fuze
o And if they should bring an action for cancellation or
invalidation of Floros patent Go to Office of the
director of Patents (Improper Venue)
CA reversed decision of RTC and dismissed Cresars
complaint. Cresar MRd. Denied. Hence, present petition
o

Issue:
WON Cresar can file under Section 42 of the Patent Law (RA
165), an action for infringement not as patentee but as an entity
in possession of a right, title or interest in and to the patented
invention.
Held:
Cresar advances the theory that while the absence of a patent
may prevent one from lawfully suing another for infringement of
said patent, such absence does not bar the first true and actual
inventor of the patented invention from suing another who was
granted a patent in a suit for declaratory or injunctive relief
recognized under American patent laws. This remedy, petitioner
points out, may be likened to a civil action for infringement
under Section 42 of the Philippine Patent Law.
Sec 42 provides:
SECTION. 42. Civil action for infringement. Any patentee, or
anyone possessing any right, title or interest in and to the
patented invention, whose rights have been infringed, may bring
a civil action before the proper Court of First Instance (now
Regional Trial court), to recover from the infringer damages
sustained by reason of the infringement and to secure an
injunction for the protection of his right. x x x

Only the patentee or his successors-in-interest may file an action

for infringement.

because the right to maintain an

depends on the existence of a patent.

The phrase anyone possessing any right, title or interest in

and to the patented invention upon which petitioner maintains
its present suit, refers only to the patentees successors-ininterest, assignees or grantees since actions for infringement
of patent may be brought in the name of the person or
persons interested, whether as patentee, assignees or
grantees, of the exclusive right

Petitioner admits that it has not patent over aerial fuze.

Therefore, no legal basis to institute petition for injunction.

There can be no infringement of a patent until a patent has been

issued, since whatever right one has been issued, since whatever
right one has to the invention covered arises from the grant of
patent.
In short, a person or entity who has not been granted
letters of patent over an invention and has not acquired
title thereto has no cause of action for infringement

infringement

suit

Further, the remedy of declaratory judgment on patent invalidity

cannot be likened to civil action for infringement under Section
42 of the Patent law. Because remedy is only available to patent
holders or successors-in-interest. Thus, anyone who has no
patent over an invention but claims to have a right thereto
cannot file an action for declaratory judgement.
Remedy: He can under Section 28 of the law file petition for
cancellation of the patent within 3 years fro the publication of
said patent with Director of patents and raise ground therefor
that the person to whom patent was issued was not the true and
actual inventor.
There is presumption of regularity of the Patent office. In the
absence of GAD, Court affirms CA.