Industrial Applicability: Juicy whip Facts:

Juicy Whip, Inc., holder of U.S. Patent No. 5,575,405 (the '405 patent) to a "post-mix" beverage dispenser, brought suit against Orange Bang, Inc. (Bang) and Unique Beverage Dispensers, Inc. (Unique) alleging infringement of the claims of the '405 patent. Bang and Unique moved for summary judgment on the grounds of invalidity. The district court held Juicy Whip's patent invalid for lack of utility because the patent sought to increase sales through deceptive imitation of another product. A "pre-mix" dispenser mixes the syrup concentrate and water and stores the prepared beverage in a reservoir bowl until the beverage is dispensed for a consumer. In contrast, a "post-mix" dispenser stores the components in separate locations until the beverage is ready to be dispensed. The invention of the '405 patent contains a transparent display bowl that is filled with a fluid that simulates the dispensed beverage, yet is resistant to bacterial growth and does not need daily maintenance. In this way, the dispenser creates the visual impression that beverages are dispensed from the bowl, yet the beverage is not mixed until immediately before dispensing. The district court concluded that the invention lacked utility and was thus unpatentable under 35 U.S.C. 101. Juicy Whip argued that the invention successfully entices consumers to purchase a beverage and eliminates the need for retailers to clean display bowls; thus, the invention is useful. The court acknowledged this argument, yet held the invention did not improve upon the prior art because its only use was to increase the salability of beverages through deception. Thus, the court concluded the invention was merely an imitation lacking utility, and therefore unpatentable. Juicy Whip appealed this decision.

whether a product that improves the prior art by making a product more salable through deception or imitation has sufficient utility to be patentable Yes. A product that increases salability by imitating another satisfies the statutory requirement for utility. The fact that customers are deceived by the operation of an invention does not preclude its utility.

Conditions of patentability: Patentable subject matter : Disclosure Requirement:

Sec. 35. Disclosure and Description of the Invention. 35.1. Disclosure. - The application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Where the application concerns a microbiological process or the product thereof and involves the use of a micro-organism which cannot be sufficiently disclosed in the application in such a way as to enable the invention to be carried out by a person skilled in the art, and such material is not available to the public, the application shall be supplemented by a deposit of such material with an international depository institution. 35.2. Description. - The Regulations shall prescribe the contents of the description and the order of presentation. Boothe v Director Sought to be reviewed herein is the Decision of the Director of Patents, dated December 9, 1964, denying priority rights under section 15 of our Patent Law (Republic Act No. 165) to petitioners, as foreign applicants for Letters Patent, for their invention of "Chemotherapeutic Materials and Methods of Preparing the same. Petitioners James Howard Boothe and John Morton II, chemists, citizens and residents of the United States, claim to be the inventors of a new antibiotic designated as "tetracycline", a new derivative of chlortetracycline (popularly known as "aureomycin") On February 7, 1958, petitioners informed respondent Director that in interference proceedings in the United States, Letters Patent for a similar invention as theirs was awarded to Pfizer and Co., which had filed its application ahead and that they failed to obtain any U.S. patent for their own invention. Petitioners, however, observed and requested: In the Philippines, however, the situation is at least the reverse. Pfizer and Co. did not file or else filed an application after the above application has already been filed. The said above application therefore is good and valid. We request, therefore, that the present application be granted on the basis of the claims originally filed. 2 On August 5, 1959, in Paper No. 6, 3 Patent Examiner, Lydia Nueva Espaa, rejected all of petitioners' claims in view of "Philippine Patent No. 254 November 29, 1956", apparently referring to a local Patent obtained by Pfizer and Co., presumably covering the same invention. Additionally, petitioners were advised that the "Specification" they had submitted was "incomplete" and that responsive action should be filed them four months from date of mailing, which was also August 5, 1959. Paper No. 6 precipitated a series of communications between the aforementioned Patent Examiner and petitioners, who apparently failed to meet the deadline of four months for filing their responsive action. BURDEN OF PROOF

Rosario v CA Petitioner is doing business under the firm name and style of SWAN MANUFACTURING" while private respondent is likewise doing business under the firm name and style of "SUSANA LUCHAN POWDER PUFF MANUFACTURING." It is undisputed that petitioner is a patent holder of powder puff namely: 1. UM-423 (extended and/or renewed under Extension No. UM-109 for a period of 5 years from October 6, 1971) 2. UM-450 (extended and/or renewed under Extension No. UM110 for a period of 5 years from January 26, 1972) 3. UM 1184, for a period of 5years fromApril 5, 1974.(Petition, Rollo, pp. 6-7). In a letter dated July 10, 1974 (Annex "D", Rollo, p. 86), petitioner informed private respondent that the powder puffs the latter is manufacturing and selling to various enterprises particularly those in the cosmetics industry, resemble Identical or substantially Identical powder puffs of which the former is a patent holder

Private respondent replied stating that her products are different and countered that petitioner's patents are void because the utility models applied for were not new and patentable and the person to whom the patents were issued was not the true and actual author nor were her rights derived from such author. petitioner, on August 24, 1974, filed a complaint for damages with injunction and preliminary injunction against private respondent with the then Court of First Instance of Rizal, Pasig Branch, docketed as Civil Case No. 19908, for infringing the aforesaid letters patent, and prayed, among others, that a writ of preliminary injunction be immediately issued Issue: (1) Whether or not in an action for infringement the Court a quo had jurisdiction to determine the invalidity of the patents at issue which invalidity was still pending consideration in the patent office. Held: 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 Patent in granting the patent is presumed to be correct. The burden of going forward with the evidence (burden of evidence) then shifts to the defendant to overcome by competent evidence this legal presumption. The question then in the instant case is whether or not the evidence introduced by private respondent herein is sufficient to overcome said presumption.

After a careful review of the evidence consisting of 64 exhibits and oral testimonies of five witnesses presented by private respondents before the Court of First Instance before the Order of preliminary injunction was issued as well as those presented by the petitioner, respondent Court of Appeals was satisfied that there is a prima facie showing of a fair question of invalidity of petitioner's patents on the ground of lack of novelty. As pointed out by said appellate court said evidence appeared not to have been considered at all by the court a quo for alleged lack of jurisdiction, on the mistaken notion that such question in within the exclusive jurisdiction of the patent office. 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 years (now for more than one year only under Sec. 9 of the Patent Law) before the date of his application for his patent, will be fatal to, the validity of the patent when issued. (Frank, et al. v. Kosuyama Vargas v. F.M. Yaptico & Co. and Vargas v. Chua, et al., supra). Test of Infringement Literal Infringement Doctrine of Equivalents Gsell v VAleriano The principal case to which these proceedings are ancillary, was an action to enjoin infringement of a patented process for the manufacture of curved handles for canes, parasols, and umbrellas. In that case plaintiff established his title to a valid patent covering the process in question, and obtained against this defendant a judgment, granting a perpetual injunction restraining its infringement, which judgment was affirmed by this court on appeal. The trial court found the defendant "not guilty" of contempt as charged; and this court, on appeal, held that a character that it could be made patent by the mere annunciation of the acts performed by the defendant, which are alleged to constitute the said violation. These acts were not clearly and manifestly contrary to the precise terms of the prohibition.

According to the express language of the judgment, the prohibition is against the manufacture of canes and umbrellas with curved handles by means of the use of a cool or mineral oil-burning lamp or blowpipe and the parties have stipulated that the defendant did not use a coal or mineral oilburning lamp but an alcohol-burning lamp. Issue: whether that prohibition included the substitution of alcohol for coal or mineral oil. Held: It was clearly proven at the trial, that kerosene and alcohol blast lamps are agencies for producing and applying heat, well known throughout the world long prior to 1906, the date of the

issue of the patent; that it is and for many years has been known that one may for all ordinary purposes be used in the place of the other, and especially for the purpose of applying heat in the manner described in the patent; that the only consideration which determines the employment of one in place of the other is the convenience of the user and the question of relative cost; and that the principle upon which both lamps work is substantially identical, the only difference in construction being occasioned by the application of this principle to oils of different physical and chemical composition. Judgement affirmed. Pascual Godines vs CA Through this petition for review in certiorari of a decision of the Court of Appeals affirming the decision of the trial court, petitioner Pascual Godines seeks to reverse the adverse decision of the Court a quo that he was liable for infringement of patent and unfair competition. he 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 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. 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. the court held Pascual Godines liable for infringement of patent and unfair competition Defense: 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. Issue: Did petitioner's product infringe upon the patent of private respondent? Held: 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." 8 To determine whether the particular item falls within the literal meaning of the patent claims, the court must juxtapose the claims of the patent and the accused product within the overall context of the claims and specifications, to determine whether there is exact identity of all material elements WHEREFORE, premises considered, the decision of the Court of Appeals is hereby

Protecting Trade Secrets Duncan v Glaxo

The prohibition against personal or marital relationships with employees of competitor companies upon Glaxos employees is reasonable under the circumstances because relationships of that nature might compromise the interests of the company. In laying down the assailed company policy, Glaxo only aims to protect its interests against the possibility that a competitor company will gain access to its secrets and procedures.