DIAMOND VS. CHAKRABARTY, 447 U.S.

303 (1980) SPECCOM DIGESTED CASE PATENTS By: Madelone Loncion FACTS: Respondent Ananda Mohan Chakrabarty, a microbiologist and genetic engineer working for General Electric Co., had developed a bacterium (derived from the Pseudomonas genus) capabale of breaking down multiple cpmponents of crude oil. Because of this property, whichis possessed by no naturally occurring bacteria, Chakrabarty's invention is believed to have a significant value for treatment of oil spills. Respondent requested a patent for the bacterium in the US but was turned down by a patent examiner, because the law dictated that living things were not patentable. Chakrabarty appealed, but the Patent Office Board of Appeals affirmed the examiner on the same ground. However, the Court of Customs and Patent Appeals overturned the case in the respondent's favor, holding that the fact that micro-organisms are alive is without legal significance for the purposes of the patent law. Hence, Petitioner Sidney Diamond, Commissioner of Patents and Trademarks, appealed to the Supreme Court. ISSUE: Whether a live, human-made micro-organism is a patentable subject matter. RULING: A live, human-made micro-organism is patentable subject matter. Respondent's organism constitutes a manufacture or composition of matter within the statute. Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. Manufacture means the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery. Similarly, composition of matter has been constured consistent with its common usage to include all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids. In choosing such expansive terms as manufacture and composition of matter, modified by the comprehensive any, Congress contemplated that the patent laws should be given wide scope, and the relevant legislative history also supports a broad construction. While laws of nature, physical phenomena, and abstract ideas are not patentable, respondent's claim is not to a hitherto unknown natural phenomenon, but to a non-naturally occurring manufacture or composition of matter a product of human inguenity having a distinctive name, character and use. The patentee has produced a new bacterium with markedly different characteristics from any found in nature and one having the potential for significant utility. His discovery is not nature's handiwork, but his own; accordingly it is patentable subject matter under the title. Accordingly, the judgment of the Court of Customs and Patent Appeals is Affirmed.

Coffee Partners, Inc. vs. San Francisco Coffee and Roastery, Inc. G.R. No. 169504, March 3, 2010 Facts: The petitioner holds a business in maintaining coffee shops in the Philippines. It is registered with the Securities and Exchange Commission in January 2001. In its franchise agreement with Coffee Partners Ltd, it carries the trademark San Francisco Coffee. Respondent is engaged in the wholesale and retail sale of coffee that was registered in SEC in May 1995 under a registered business name of San Francisco Coffee &Roastery, Inc. It entered into a joint venture with Boyd Coffee USA to study coffee carts in malls. When respondent learned that petitioner will open a coffee shop in Libis, Q.C. they sent a letter to the petitioner demanding them to stop using the name San Francisco Coffee as it causes confusion to the minds of the public. A complaint was also filed by respondents before the Bureau of Legal Affairs of the Intellectual Property Office for infringement and unfair competition with claims for damages. Petitioners contend that there are distinct differences in the appearance of their trademark and that respondent abandoned the use of their trademark when it joined venture with Boyd Coffee USA. The Bureau of Legal Affairs of the IPO held that petitioners trademark infringed on the respondents trade name as it registered its business name first with the DTI in 1995 while petitioner only registered its trademark in 2001. Furthermore, it ruled that the respondent did not abandon the use of its trade name upon its joint venture with Boyd Coffee USA since in order for abandonment to exist it must be permanent, intentional and voluntary. It also held that petitioners use of the trademark "SAN FRANCISCO COFFEE" will likely cause confusion because of the exact similarity in sound, spelling, pronunciation, and commercial impression of the words "SAN FRANCISCO" which is the dominant portion of respondents trade name and petitioners trademark. Upon appeal before the office of the Director General of the IPO, the decision of its legal affairs was reversed declaring there was no infringement. The Court of Appeals however set aside its decision and reinstated the IPO legal affairs decision. Petitioner contends that the respondents trade name is not registered therefore a suit for infringement is not available. Issue: Whether or not the petitioners use of the trademark "SAN FRANCISCO COFFEE" constitutes infringement of respondents trade name "SAN FRANCISCO COFFEE & ROASTERY, INC.," even if the trade name is not registered with the Intellectual Property Office (IPO). Ruling: Petition denied. Ratio :Registration of a trademark before the IPO is no longer a requirement to file an action for infringement as provided in Section 165.2 of RA 8293. All that is required is that the trade name is previously used in trade or commerce in the Philippines. There is no showing that respondent abandoned the use of its trade name as it continues to embark to conduct research on retailing coffee, import and sell coffee machines as among the services for which the use of the business name has been registered. The court also laid down two tests to determine similarity and likelihood of confusion. The dominancy test focuses on similarity of the prevalent features of the trademarks that could cause deception and confusion that constitutes infringement. Exact duplication or imitation is

not required. The question is whether the use of the marks involved is likely to cause confusion or mistake in the mind of the public or to deceive consumers. the holistic test entails a consideration of the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity.15 The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing on both marks in order that the observer may draw his conclusion whether one is confusingly similar to the other. Applying either the dominancy test or the holistic test, petitioners "SAN FRANCISCO COFFEE" trademark is a clear infringement of respondents "SAN FRANCISCO COFFEE & ROASTERY, INC." trade name. The descriptive words "SAN FRANCISCO COFFEE" are precisely the dominant features of respondents trade name. And because both are involved in coffee business there is always the high chance that the public will get confused of the source of the coffee sold by the petitioner. Respondent has acquired an exclusive right to the use of the trade name "SAN FRANCISCO COFFEE & ROASTERY, INC." since the registration of the business name with the DTI in 1995. G.R. No. 97343 September 13, 1993 PASCUAL GODINES, petitioner, vs. THE HONORABLE COURT OF APPEALS FACTS: The patent involved in this case is Letters Patent No. UM-2236 issued by the Philippine Patent Office to one Magdalena S. Villaruz on July 15, 1976. It covers a utility model for a hand tractor or power tiller, the main components of which are the following: "(1) a vacuumatic house float; (2) a harrow with adjustable operating handle; (3) a pair of paddy wheels; (4) a protective water covering for the engine main drive; (5) a transmission case; (6) an operating handle; (7) an engine foundation on the top midportion of the vacuumatic housing float to which the main engine drive is detachedly installed; (8) a frontal frame extension above the quarter circularly shaped water covering hold in place the transmission case; (9) a V-belt connection to the engine main drive with transmission gear through the pulley, and (10) an idler pulley installed on the engine foundation." 2 The patented hand tractor works in the following manner: "the engine drives the transmission gear thru the V-belt, a driven pulley and a transmission shaft. The engine drives the transmission gear by tensioning of the V-belt which is controlled by the idler pulley. The Vbelt drives the pulley attached to the transmission gear which in turn drives the shaft where the paddy wheels are attached. The operator handles the hand tractor through a handle which is inclined upwardly and supported by a pair of substanding pipes and reinforced by a U-shaped G.I. pipe at the V-shaped end." The above mentioned patent was acquired by SV-Agro Industries Enterprises, Inc., herein private respondent, from Magdalena Villaruz, its chairman and president, by virtue of a Deed of Assignment executed by the latter in its favor. On October 31, 1979, SV-Agro Industries caused the publication of the patent in Bulletin Today, a newspaper of general circulation. In accordance with the patent, private respondent manufactured and sold the patented power tillers with the patent imprinted on them. In 1979, SV-Agro Industries suffered a decline of more than 50% in sales in its Molave, Zamboanga del Sur branch. Upon investigation, it discovered that power tillers similar to those patented by private respondent were being manufactured and sold by petitioner herein. Consequently, private respondent notified Pascual Godines about the existing patent and demanded that the latter stop selling and manufacturing similar power tillers. Upon petitioner's failure to comply with the demand, SV-Agro Industries filed before the Regional Trial Court a complaint for infringement of patent and unfair competition. ISSUE: 1) whether or not petitioner was manufacturing and selling power tillers

2) Whether or not petitioner's product infringe upon the patent of private respondent RULING: RTC held Godines liable for patent infringement and unfair competition. CA affirmed. Petitioner maintains the defenses which he raised before the trial and appellate courts, to wit: that he was not engaged in the manufacture and sale of the power tillers as he made them only upon the special order of his customers who gave their own specifications; hence, he could not be liable for infringement of patent and unfair competition; and that those made by him were different from those being manufactured and sold by private respondent. SC find no merit in his arguments. The fact that petitioner herein manufactured and sold power tillers without patentee's authority has been established by the courts despite petitioner's claims to the contrary. 2) Tests have been established to determine infringement. These are (a) literal infringement; and (b) the doctrine of equivalents. 7 In using literal infringement as a test, ". . . resort must be had, in the first instance, to the words of the claim. If accused matter clearly falls within the claim, infringement is made out and that is the end of it." Moreover, it is also observed that petitioner also called his power tiller as a floating power tiller. The patent issued by the Patent Office referred to a "farm implement but more particularly to a turtle hand tractor having a vacuumatic housing float on which the engine drive is held in place, the operating handle, the harrow housing with its operating handle and the paddy wheel protective covering." 11 It appears from the foregoing observation of the trial court that these claims of the patent and the features of the patented utility model were copied by petitioner. We are compelled to arrive at no other conclusion but that there was infringement. In particular, and without in any way limiting the scope of unfair competition, the following shall be deemed guilty of unfair competition: (a) Any person, who in selling his goods shall give them the general appearance of goods of another manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any other feature of their appearance, which would be likely to influence purchasers that the goods offered are those of a manufacturer or dealer other than the actual manufacturer or dealer, or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade. . . . PATENTS CASE NO.5 - Gerardo Samson Jr. v. Felipe Tarroza and Director of Patents FACTS: Petitioner Gerardo Samson was awarded Utility Model Patent No.27 for a Side TiltingDumping Wheelbarrow granted by the Director of Patents on May 22, 1958. Respondent designed and filed a patent for a Side Tilting-Dumping Wheelbarrow that was subsequently approved by the Director of Patents (Utility Model Letters Patent No.62). Petitioner filed for cancellation of respondents patent alleging that the respondents device did not pass the requisites for Design patents and patents for utility model and that the Director of Patents erred in failing to hold respondent Tarroza was not the true and actual author of the mechanical contrivance for which the former was granted a utility model patents.

ISSUE: Whether respondents invention possesses the requisites for it to be granted a patent. HELD: Decision of Director of Patents denying the petition for cancellation of Utility Model Letters Patent No.62 in favor of respondent Tarroza is hereby affirmed. RATIO: Sec.55 of Republic Act No. 165, as amended by Republic Act nO. 864, reads Design patents and patents for utility models (a) Any new, original, and ornamental design for an article of manufacture and (b) any new model of implements or tools or of any industrial product, or of part of the same, which does not possess the quality of invention, but which is of practical utility by reason of its form, configuration, construction, or composition may be protected by the author thereof, the former by a patent for a design and the latter by a patent for a utility model, in the same manner and subject to the same provisions and requirements as related to patents for inventions in so far as they are applicable, except as otherwise herein provided. There is an express recognition under the Patent Law that any new model of complements or tools or of any industrial product even if not possessed of the quality of invention but which is of practical utility is entitled to a patent for a utility mode. From the description of the side of titling-dumping wheelbarrow, the product of ingenuity and industry, it is quite apparent that is has a place in the market and possesses what the statute refers as practical utility.