Boothe v.

Director of Patents
GR No. L 24919 January 28, 198
!acts"
Petitioners James Howard Boothe and John Morton II (citizens and residents of the US) were
chemists claiming to be the inventors of a new antibiotic designated as tetraccline!" a new
derivative of chlortetrahccline (#o#$larl %nown as a$reomcin!)& Petitioners a##lied for 'etter
Patent covering their invention to res#ondent (irector of Patents claiming the right of #riorit granted
to foreign a##licants $nder Section )* of the Patent 'aw (+, )-*)& Petitioners filed with res#ondent
(irector of Patent a legalized co# of their ,##lication for 'etters of Patent in the US for the same
invention& Under the #rovision stated Section )* of the Patent 'aw" #etitioners wo$ld be entitled to
the #riorit date if their a##lication is considered filed in the Phili##ines since the letter date wo$ld
fall within the one.ear #eriod&
Petitioners informed (irector that in interference #roceedings in the US" 'etters Patent for a
similar invention as theirs was awarded to Pfizer and /o& which filed its a##lication ahead and that
failed to obtain an US #atent for their own invention& Petitioners observed and re0$ested that their
a##lication was good and valid on the basis of the claims originall filed& It was denied referring to
local #atent obtained b Pfizer and /o over same invention and that the s#ecification! that was
s$bmitted is incom#lete for the failed to meet the deadline for filing their res#onsive claim&
Petitioners s$bmitted 1 com#lete co#ies after and even filed for reconsideration hereinafter b$t
still /hief Patent re2ected and denied s$ch s$bmission" and has decided that s#ecification admitted
b$t a##lication not to be e3tended #riorit rights $nder Section )* of the Patent 'aw inasm$ch as
said a##lication was not within the meanings of +$le 45 and 46 as to the said s$bmission were not
reall a new matter b$t a mere minor informalit!& +es#ondent (irector was alleged that he has no
2$risdiction to decide the 0$estion for said a##lication and erred in deciding $#on said a##lication&
#ssue"
789 the sco#e of the #owers of the (irector of Patent in the cases a##ealed to him and the
correctness of his a##lication of +$les 45 and 46" 1-1 of the +evised +$les of Practice in
Patent cases are valid and tenable&
Ru$in%"
+es#ondent (irector is em#owered to consider gro$nds which ma have come to his
%nowledge other than those s#ecificall raised in an a##eal& He need not confined himself onl to
iss$es invo%ed& It was earlier concl$ded b the S$#ervising Patent :3aminer that inasm$ch as the
s$bmitted #ages did not corres#ond with the certified co# of the US a##lication" the #resent
a##lication cannot therefore be granted #riorit date $nder Section )* as re0$ested b a##licant!&
7hat +es#ondent (irector e3ercised was within his a$thorit to review the decisions of Patents
:3aminers&
Similarl #etitioner;s contention is $ntenable that the res#ondent (irector misa##lied and
misconstr$ed +$les 45 and 46 in Patent /ases& Under the aforecited #rovisions" it is im#erative that
the a##lication be com#lete in order that it ma be acce#ted& It is essential to the validit of 'etters
Patent that the s#ecification be f$ll" definite and s#ecific& <he #$r#ose of said re0$irement is to
a##rise the #$blic of that #atentee claims as his invention" to inform /o$rts as to what the are
called to constr$e" and to conve to com#eting man$fact$rers and dealers information what the are
bo$nd to avoid& <he defect was one of s$bstance and not merel one of form& ,n invention disclosed
in a #revio$sl filed a##lication m$st be described within the instant a##lication s$ch a manner as to
enable one s%illed in the art to $se the same for a legall ade0$ate $tilit&