Smith Kline Beckam vs CA.

Intellectual Property Law Law on Patents - Doctrine of Equivalents

Smith Kline is a US corporation licensed to do business in the Philippines. In 1981, a patent was
issued to it for its invention entitled Methods and Compositions for Producing Biphasic Parasiticide
Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate. The invention is a means to fight
off gastrointestinal parasites from various cattles and pet animals.
Tryco Pharma is a local corporation engaged in the same business as Smith Kline.
Smith Kline sued Tryco Pharma because the latter was selling a veterinary product called Impregon
which contains a drug called Albendazole which fights off gastro-intestinal roundworms, lungworms,
tapeworms and fluke infestation in carabaos, cattle and goats.
Smith Kline is claiming that Albendazole is covered in their patent because substantially the same as
methyl 5 propylthio-2-benzimidazole carbamate covered by its patent since both of them are meant
to combat worm or parasite infestation in animals. And that Albendazole is actually patented under
Smith Kline by the US.
Tryco Pharma averred that nowhere in Impregons packaging does it mention that Albendazole is
present but even if it were, the same is unpatentable.
Smith Kline thus invoked the doctrine of equivalents, which implies that the two substances
substantially do the same function in substantially the same way to achieve the same results, thereby
making them truly identical for in spite of the fact that the word Albendazole does not appear in
petitioners letters patent, it has ably shown by evidence its sameness with methyl 5 propylthio-2benzimidazole carbamate.
On appeal, the Court of Appeals, by Decision of April 21, 1995, upheld the trial courts finding that
private respondent was not liable for any infringement of the patent of petitioner in light of the
latters failure to show that Albendazole is the same as the compound subject of Letters Patent No.
14561.
ISSUE: Whether or not there is patent infringement in this case
HELD: No. Smith Kline failed to prove that Albendazole is a compound inherent in the patented
invention. Nowhere in the patent does the word Albendazole found. When the language of its claims
is clear and distinct, the patentee is bound thereby and may not claim anything beyond them.
Further, there was a separate patent for Albendazole given by the US which implies that Albendazole
is indeed separate and distinct from the patented compound here.
A scrutiny of Smith Klines evidence fails to prove the substantial sameness of the patented
compound and Albendazole. While both compounds have the effect of neutralizing parasites in
animals, identity of result does not amount to infringement of patent unless Albendazole operates in
substantially the same way or by substantially the same means as the patented compound, even
though it performs the same function and achieves the same result. In other words, the principle or
mode of operation must be the same or substantially the same.
The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the
patentee having the burden to show that all three components of such equivalency test are met.

[G.R. No. 121267. October 23, 2001]

SMITH KLINE & FRENCH LABORATORIES, LTD. plaintiff-appellee, vs. COURT OF

APPEALS and DANLEX RESEARCH LABORATORIES, INC., defendant-appellant.
Law on Intellectual Property Law on Patents Compulsory License
In August 1989, Danlex Research Laboratories petitioned before Bureau of Patents, Trademarks and
Technology Transfer (BPTTT) that it may be granted a compulsory license for the use and
manufacture of the pharmaceutical product Cimetidine. Cimetidine is useful as an antihistamine and
in the treatment of ulcers. Cimetidine is originally patented to Smith Kline and French Laboratories
in 1978, and the said patent is still in force at the time of application by Danlex Research.
The BPTTT granted the application of Danlex Research together with a provision that Danlex
Research should be paying 2.5% of the net wholesale price as royalty payment to Smith Kline. This
was affirmed by the Court of Appeals.
Smith Kline assailed the grant as it argued, among others, that the same is an invalid exercise of
police power because there is no overwhelming public necessity for such grant considering that
Smith Kline is able to provide an adequate supply of it to satisfy the needs of the Philippine market;
that a provision in the Philippine Patent Laws is violative of the Paris Convention to which the
Philippines is a signatory.
To explain the second contention, Smith Kline states that the Paris Convention only allows
compulsory licensing if the original licensee (patent holder) has failed to work on the patent; that
therefore, the provision in the Philippine Patent Laws which adds other grounds for the granting of
compulsory license i.e. monopoly, is invalid and contrary to the Paris Convention.
ISSUE: Whether or not Smith Kline is correct.
HELD: No. The granting is a valid exercise of police power. Cimetidine is medicinal in nature, and
therefore necessary for the promotion of public health and safety.
On the second contention, Section A(2) of Article 5 [of the Paris Convention] unequivocally and
explicitly respects the right of member countries to adopt legislative measures to provide for the
grant of compulsory licenses to prevent abuses which might result from the exercise of the exclusive
rights conferred by the patent. An example provided of possible abuses is failure to work; however,
as such, is merely supplied by way of an example, it is plain that the treaty does not preclude the
inclusion of other forms of categories of abuses. The legislative intent in the grant of a compulsory
license was not only to afford others an opportunity to provide the public with the quantity of the
patented product, but also to prevent the growth of monopolies. Certainly, the growth of monopolies
was among the abuses which Section A, Article 5 of the Convention foresaw, and which our Congress
likewise wished to prevent in enacting.

G.R. No. L-4572

May 22, 1953

DOLORITO M. FELICIANO and MAXIMO

MELITON
D
vs.
THE DIRECTOR OF PATENT, respondent-appelle.

B.

TAPINIO, applicants-appellees.
ALBAA, petitioner-appellant,

Pending examination of the application, Meliton D. Albaa filed a motion to intervene claiming that
the applicant-inventors had "sold and/or bartered and assigned to him their right to contract or deal
the sale of their invention called Fel-Tap Meter Guard and Detector to or though the Corporation
that they were then organizing under his direction and to fix and decide on the purchase price of it to
at least P200,000 in installments cash and P300,000 in shares of stock of said Corporation . . ." and
praying that applicant-inventor Maximo D. Tapinio be compelled to sign a contract (Appendix I)
and, together with the other applicant-inventor Dolorito M. Feliciano who had already signed it, to
acknowledge it and another contract (Appendix II) before a notary public, to have both contracts
recorded in the Patent Office and in the Office of the Register of Deeds, and that the patent for the
invention be issued in his name and in the name of the inventors.
The motion was denied on the ground under the provisions of the Patent Law (Republic Act No. 165)
the Director of Patents has no jurisdiction or power to decide the question submitted to him.
The movant filed an amended motion to intervene claiming "that he is the assignee of inventors
Dolorito M. Feliciano and Maximo Tapinio of the undivided part interest in the invention for whose
letter-patent the named petitioners Dolorito M. Feliciano and Maximo Tapinio are herein applying."
The amended motion was denied on the ground that the assignment made to the movant is not one
of exclusive right to make, use the sell1 the electrical contrivance for which a patent is applied for;
that it is just an authority to act as the selling agent for the inventors of the patent, if granted, and the
invention covered thereby and to receive compensation therefor; and that not being entitled to have
his name included as one of the patentees, if patent for the invention be granted, the movant has no
right to intervene in the proceedings for the grant of the patent.
HELD:
What the appellant attempted to secure by his motion to intervene is clearly beyond the jurisdiction
and authority of the Director of Patents to grant. Despite the amendment to the first motion to the
intervene by which he claims assignment of the invention, still it remains that the alleged assignment
is not the invention but it is an agreement whereby he is to act as selling agent for the inventors of
the patent (if granted) and of the invention covered thereby and to receive compensation therefor.
The terms and stipulations of the executory contract clearly show that it was not an assignment of
the invention and the patent applied for.
Assignments of patents and inventions covered thereby may be recorded in books and records kept
for the purpose in the Patent Office is presented in due form; 3 but the appellant does not ask for the

registration of the alleged agreement between him and the inventors, because as it is not in due form
it cannot be recorded, but prays that the Director of Patents compel applicant-inventor Maximo B.
Tapinio to sign the contract executed and signed by the other applicant-inventor Dolorito M.
Feliciano on 14 March 1950 (Appendix I) and both applicant-inventors to acknowledge it and
another document which by all indication refers to the minutes of a meeting of the organizers of the
Manufacturing Corporation held on 30 March 1950, before a notary public, and then to have both
documents recorded in the Patent Office and in the office of the Registrar of Deeds. Under the
provisions of the Patent Law (Republic Act No. 165), the Director of Patent has no power and
authority to compel the applicant-inventors to do what the appellant is asking them to perform.
What the appellant asked the Director Patents to do for him is essentially a judicial function which
would require the determination or finding by a court of competent jurisdiction as to whether there
was a meeting of the minds of the contracting parties before it could compel the applicant-inventors
to perform what the appellant prays the court to order them to do. Aside from want of authority and
power, the Director of Patent lacks the means to make such determination and finding which would
be necessary before he could act on the appellant's motion.
The orders appealed from are affirmed, with costs against the appellant.

G.R. No. L-12426

February 16, 1959

PHILIPPINE LAWYER'S ASSOCIATION, petitioner,

vs.
CELEDONIO AGRAVA, in his capacity as Director of the Philippines Patent
Office, respondent.
This is the petition filed by the Philippine Lawyer's Association for prohibition and injunction against
Celedonio Agrava, in his capacity as Director of the Philippines Patent Office.
On may 27, 1957, respondent Director issued a circular announcing that he had scheduled for June
27, 1957 an examination for the purpose of determining who are qualified to practice as patent
attorneys before the Philippines Patent Office, the said examination to cover patent law and
jurisprudence and the rules of practice before said office. According to the circular, members of the
Philippine Bar, engineers and other persons with sufficient scientific and technical training are
qualified to take the said examination. It would appear that heretofore, respondent Director has been
holding similar examinations.
It is the contention of the petitioner Philippine Lawyer's Association that one who has passed the bar
examinations and is licensed by the Supreme Court to practice law in the Philippines and who is in
good standing, is duly qualified to practice before the Philippines Patent Office, and that
consequently, the act of the respondent Director requiring members of the Philippine Bar in good
standing to take and pass an examination given by the Patent Office as a condition precedent to their
being allowed to practice before said office, such as representing applicants in the preparation and
prosecution of applications for patent, is in excess of his jurisdiction and is in violation of the law.
In his answer, respondent Director, through the Solicitor General, maintains that the prosecution of
patent cases "does not involve entirely or purely the practice of law but includes the application of
scientific and technical knowledge and training, so much so that, as a matter of actual practice, the
prosecution of patent cases may be handled not only by lawyers, but also engineers and other
persons with sufficient scientific and technical training who pass the prescribed examinations as
given by the Patent Office.
That the action taken by the respondent is in accordance with Republic Act No. 165, otherwise
known as the Patent Law of the Philippines, which similar to the United States Patent Law, in
accordance with which the United States Patent Office has also prescribed a similar examination as
that prescribed by respondent.

HELD:
The Supreme Court has the exclusive and constitutional power with respect to admission to the
practice of law in the Philippines1 and to any member of the Philippine Bar in good standing may
practice law anywhere and before any entity, whether judicial or quasi-judicial or administrative, in
the Philippines. Naturally, the question arises as to whether or not appearance before the patent
Office and the preparation and the prosecution of patent applications, etc., constitutes or is included
in the practice of law.
The Supreme Court held that the practice of law includes such appearance before the Patent Office,
the representation of applicants, oppositors, and other persons, and the prosecution of their
applications for patent, their opposition thereto, or the enforcement of their rights in patent cases.
Moreover, the practice before the patent Office involves the interpretation and application of other
laws and legal principles, as well as the existence of facts to be established in accordance with the law
of evidence and procedure. The practice of law is not limited to the conduct of cases or litigation in
court but also embraces all other matters connected with the law and any work involving the
determination by the legal mind of the legal effects of facts and conditions.
The Director of Patents, exercising as he does judicial or quasi-judicial functions, it is reasonable to
hold that a member of the bar, because of his legal knowledge and training, should be allowed to
practice before the Patent Office, without further examination or other qualification.
For the foregoing reasons, the petition for prohibition is granted and the respondent Director is
hereby prohibited from requiring members of the Philippine Bar to submit to an examination or tests
and pass the same before being permitted to appear and practice before the Patent Office.
AGUAS v DE LEON111 SCRA 238 January 30, 1982
This is a petition for certiorari to review the decision of the Court of Appeals in CA G.R. NO. 37824-R
entitled "Conrado G. de Leon, plaintiff-appelle vs. Dominciano Aguas and F.H. Aquino and Sons,
defendants-appellants,"
FACTS:
Conrado G. de Leon filed in the Court of First Instance of Rizal at Quezon City a complaint for
infringement of patent against Domiciano A. Aguas and F. H. Aquino and Sons alleging that 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, and
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; that said invention was new, useful, not known or
used by others in this country before his invention thereof. That the defendant Domiciano A. Aguas
infringed Letters of Patent No. 658 by making, using and selling tiles embodying said patent
invention and that defendant F. H. Aquino & Sons is guilty of infringement by making and furnishing
to the defendant Domiciano A. Aguas the engravings, castings and devices designed and intended of
tiles embodying plaintiffs patented invention; that he has given direct and personal notice to the
defendants of their said acts of infringement and requested them to desist, but nevertheless,
defendants have refused and neglected to desist and have disregarded such request, and continue to
so infringe causing great and irreparable damage to plaintiff; that if the aforesaid infringement is
permitted to continue, further losses and damages and irreparable injury will be sustained by the
plaintiff; that there is an urgent need for the immediate issuance of a preliminary injunction. The
court granted the injunction. And likewise held in favor of the plaintiff and against the defendant.
The trial court rendered a decision dated December 29, 1965 declaring plaintiff's patent valid and
infringed.
The defendant Domiciano Aguas appealed to the Court of Appeals. However, the CA affirmed the
decision of the trial court.

ISSUE: Whether the process, subject of said patent, is not an invention or discovery, or an
improvement of the old system of making tiles.
HELD: The validity of the patent issued by the Philippines Patent Office in favor of the private
respondent 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 the private respondent of the process in question. The
contention of the petitioner Aguas that the letters patent of de Leon was actually a patent for the old
and non-patentable process of making mosaic pre-cast tiles is devoid of merit. De Leon never
claimed to have invented the process of tile-making. The Claims and Specifications of Patent No. 658
show that although some of the steps or parts of the old process of tile making were described
therein, there were novel and inventive features mentioned in the process. In view of the foregoing,
this Court finds that Patent No. 658 was legally issued, the process and/or improvement being
patentable.
The court may award actual damages, moral damages, exemplary damages and attorneys fees when
so warranted by the facts.
WHEREFORE, the decision of the Court of Appeals in CA G.R. No. 37824-R appealed from is hereby
affirmed, without pronouncement as to costs.

Boothe v. Director of Patents

GR No. L 24919 January 28, 1980
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.
Facts: 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 tetracycline, a new
derivative of chlortetrahycycline (popularly known as aureomycin). Petitioners applied for Letter
Patent covering their invention to respondent Director of Patents claiming the right of priority
granted to foreign applicants under Section 15 of the Patent Law (RA 165). Petitioners filed with
respondent Director of Patent a legalized copy of their Application for Letters of Patent in the US for
the same invention. Under the provision stated Section 15 of the Patent Law, petitioners would be
entitled to the priority date if their application is considered filed in the Philippines since the letter
date would fall within the one-year period.
Petitioners informed Director that in interference proceedings in the US, Letters Patent for a
similar invention as theirs was awarded to Pfizer and Co. which filed its application ahead and that
failed to obtain any US patent for their own invention. Petitioners observed and requested that their
application was good and valid on the basis of the claims originally filed. It was denied referring to

local patent obtained by Pfizer and Co over same invention and that the specification that was
submitted is incomplete for they failed to meet the deadline for filing their responsive claim.
Petitioners submitted 2 complete copies after and even filed for reconsideration hereinafter
but still Chief Patent rejected and denied such submission, and has decided that specification
admitted but application not to be extended priority rights under Section 15 of the Patent Law
inasmuch as said application was not within the meanings of Rule 47 and 48 as to the said
submission were not really a new matter but a mere minor informality. Respondent Director was
alleged that he has no jurisdiction to decide the question for said application and erred in deciding
upon said application.
Issue:WON the scope of the powers of the Director of Patent in the cases appealed to him and the
correctness of his application of Rules 47 and 48, 262 of the Revised Rules of Practice in Patent cases
are valid and tenable.
Ruling:Respondent Director is empowered to consider grounds which may have come to his
knowledge other than those specifically raised in an appeal. He need not confined himself only to
issues invoked. It was earlier concluded by the Supervising Patent Examiner that inasmuch as the
submitted pages did not correspond with the certified copy of the US application, the present
application cannot therefore be granted priority date under Section 15 as requested by applicant.
What Respondent Director exercised was within his authority to review the decisions of Patents
Examiners.
Similarly petitioners contention is untenable that the respondent Director misapplied and
misconstrued Rules 47 and 48 in Patent Cases. Under the aforecited provisions, it is imperative that
the application be complete in order that it may be accepted. It is essential to the validity of Letters
Patent that the specification be full, definite and specific. The purpose of said requirement is to
apprise the public of that patentee claims as his invention, to inform Courts as to what they are called
to construe, and to convey to competing manufacturers and dealers information what they are bound
to avoid. The defect was one of substance and not merely one of form. An invention disclosed in a
previously filed application must be described within the instant application such a manner as to
enable one skilled in the art to use the same for a legally adequate utility.
WHEREFORE, we hereby affirm the Decision of respondent Director of Patents dated December 9,
1964.

Solid Triangle Sales Corporation vs the Sheriff of RTC QC370 scra 491 Nov. 23, 2001
FACTS: Judge Bruselas,Jr., Presiding Judge of RTC, Quezon City, upon application of the Economic
Intelligence and Investigation Bureau(EIIB), issued a search warrant against herein private
respondent Sanly Corporation for violation of Sec. 168 of R.A No. 8293 for unfair competition. By
virtue of Search Warrant No. 3324 (99), EIIB agents seized 451 boxes of Mitsubishi photographic
color paper from respondent Sanly. The private respondent corporation contends that there is no
unfair competition being committed since the products that he sells, particularly Mitsubishi
photographic color paper, are genuine products of Mitsubishi that he buys from Hong Kong while
the complainant purchases the same kind of paper from Japan.
ISSUE: Whether or not there was probable cause that the crime of unfair competition under the IPC
Code has been committed by the respondents?
HELD: No. The SC disagreed with petitioners and find that the evidence presented before the trial
court does not prove unfair competition under Section 168 of the Intellectual Property Code.
Under Sections 168 and 170 of R.A. 8293 (the Intellectual Property Code), there is unfair
competition if the alleged offender has given to his goods the general appearance of the goods of
another manufacturer or dealer and sells or passes them off as goods of that manufacturer or dealer
in order to deceive or defraud the general public or the legitimate trader. Also, if he makes false

statements in the course of trade to discredit the goods, business, or services of another.
Undisputedly, the seized goods from Sanly are genuine and not mere imitations.
Both Sanly and Solid Triangle sell genuine Mitsubishi products. Solid Triangle acquires its goods
from Japan on the basis of its exclusive distributorship with Mitsubishi Corporation. While Sanly
buys its goods from Hongkong, claiming it is a parallel importer, not an unfair competitor. As
defined, a parallel importer is one which imports, distributes, and sells genuine products in the
market, independently of an exclusive distributorship or agency agreement with the manufacturer.
And, this is precisely what Sanly states as its commercial status.
SEC. 168. Unfair Competition, Rights, Regulation and Remedies. 168.1 A person who has identified
in the mind of the public goods he manufactures or deals in, his business or services from those of
others, whether or not a registered mark is employed, has a property right in the goodwill of the said
goods, business or services so identified, which will be protected in the same manner as other
property rights.
168.2 Any person who shall employ deception or any other means contrary to good faith by which he
shall pass off the goods manufactured by him or in which he deals, or his business, or services for
those of the one having established such goodwill, or who shall commit any acts calculated to
produce said result, shall be guilty of unfair competition, and shall be subject to an action therefor.
168.3 In particular, and without in any way limiting the scope of protection against unfair
competition, the following shall be deemed guilty of unfair competition:
(a) Any person, who is selling his goods and gives 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 to believe 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, or any subsequent vendor of such goods or any agent of any vendor engaged in selling such
goods with a lie purpose;
(b) Any person who by any artifice, or device, or who employs any other means calculated to induce
the false belief that such person is offering the service of another who has identified such services in
the mind of the public; or
(c) Any person who shall make any false statement in the course of trade or who shall commit any
other act contrary to good faith of a nature calculated to discredit the goods, business or services of
another.

CHING VS SALINAS JUNE 29, 2005

This petition for review on certiorari assails the Decision and Resolution of the Court of Appeals
(CA) in CA-G.R. SP No. 70411 affirming the January 3, 2002 and February 14, 2002 Orders of the
Regional Trial Court (RTC) of Manila, Branch 1, which quashed and set aside Search Warrant Nos.
01-2401 and 01-2402 granted in favor of petitioner Jessie G. Ching.
Jessie G. Ching is the owner and general manager of Jeshicris Manufacturing Co., the maker and
manufacturer of a Utility Model, described as "Leaf Spring Eye Bushing for Automobile" made up of
plastic.
On September 4, 2001, Ching and Joseph Yu were issued by the National Library Certificates of
Copyright Registration and Deposit of the said work described therein as "Leaf Spring Eye Bushing
for Automobile."

On September 20, 2001, Ching requested the National Bureau of Investigation (NBI) for
police/investigative assistance for the apprehension and prosecution of illegal manufacturers,
producers and/or distributors of the works.
After due investigation, the NBI filed applications for search warrants in the RTC of Manila against
William Salinas, Sr. and the officers and members of the Board of Directors of Wilaware Product
Corporation. It was alleged that the respondents therein reproduced and distributed the said models
penalized under Sections 177.1 and 177.3 of Republic Act (R.A.) No. 8293.
The RTC granted the application and issued Search Warrant Nos. 01-2401 and 01-2402 for the
seizure of the aforecited articles.
The respondents filed a motion to quash the search warrants on the following grounds:
The copyright registrations were issued in violation of the Intellectual Property Code on the ground
that:
a) the subject matter of the registrations are not artistic or literary;
b) the subject matter of the registrations are spare parts of automobiles meaning there (sic)
are original parts that they are designed to replace. Hence, they are not original.
The respondents averred that the works covered by the certificates issued by the National Library are
not artistic in nature; they are considered automotive spare parts and pertain to technology. They
aver that the models are not original, and as such are the proper subject of a patent, not copyright.
On January 3, 2002, the trial court issued an Order granting the motion, and quashed the search
warrant on its finding that there was no probable cause for its issuance. The court ruled that the
work covered by the certificates issued to the petitioner pertained to solutions to technical problems,
not literary and artistic as provided in Article 172 of the Intellectual Property Code.
His motion for reconsideration of the order having been denied by the trial courts Order of February
14, 2002, the petitioner filed a petition for certiorari in the CA, contending that the RTC had no
jurisdiction to delve into and resolve the validity of the copyright certificates issued to him by the
National Library.
On September 26, 2003, the CA rendered judgment dismissing the petition on its finding that the
RTC did not commit any grave abuse of its discretion in issuing the assailed order.
HELD:
Works protected under the law on Copyright are literary or artistic works and derivative works. The
Leaf Spring Eye Bushing for Automobile does not fall under the classification. Hence, it is not
covered by the law on Copyright.
Being plain automotive spare parts that must conform to the original structural design of the
components they seek to replace, the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not
ornamental. They lack the decorative quality or value that must characterize authentic works of
applied art. They are not even artistic creations with incidental utilitarian functions or works
incorporated in a useful article. In actuality, the personal properties described in the search warrants
are mechanical works, the principal function of which is utility sans any aesthetic embellishment.
That the works of the petitioner may be the proper subject of a patent does not entitle him to the
issuance of a search warrant for violation of copyright laws. In Kho v. Court of Appeals49 and Pearl &
Dean (Phil.), Incorporated v. Shoemart, Incorporated,50 the Court ruled that "these copyright and
patent rights are completely distinct and separate from one another, and the protection afforded by

one cannot be used interchangeably to cover items or works that exclusively pertain to the others."
The Court expounded further, thus:
Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. A trademark is any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and shall include a stamped or marked
container of goods. In relation thereto, a trade name means the name or designation identifying or
distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to literary and artistic
works which are original intellectual creations in the literary and artistic domain protected from the
moment of their creation. Patentable inventions, on the other hand, refer to any technical solution of
a problem in any field of human activity which is new, involves an inventive step and is industrially
applicable.