Escolar Documentos
Profissional Documentos
Cultura Documentos
HELD: NO. It is imperative that the application be complete in order that it may be
accepted. Itis essential to the validity of Letters Patent that the specifications be full,
definite, andspecific. The purpose of requiring a definite and accurate description of the
process is toapprise the public of what the patentee claims as his invention, to inform
the Courts as to whatthey are called upon to construe, and to convey to competing
manufacturers and dealersinformation of exactly what they are bound to avoid.
The specification which petitioners submitted on March 5, 1954 was far from complete.
Thatdefect was one of substance and not merely one of form. What petitioners claimed
as their invention was not completely determinable therefrom. Petitioners' application
could be deemedas complete only on July 2, 1963 when they submitted the additional
pages on theSpecifications and Claims. Respondent Director, therefore, did not err in
converting petitioners' application into an ordinary application filed on April 14, 1954, not
only for their having failed tocomplete their application within the four-month period
provided for by Rules 47 and 48,Revised Rules of Practice in Patent Cases, and as
required of them by Paper No. 6, but also for their having failed to file a complete
application within twelve months from March 16, 1953, thedate of the foreign application
for, to be entitled to the filing date of the patent application, aninvention disclosed in a
previously filed application must be described within the instantapplication in such a
manner as to enable one skilled in the art to use the same for a legallyadequate utility.
FACTS:
This is a petition for certiorari to review the decision of the Court of Appeals.
On April 14, 1962, respondent Conrado de Leon filed in the CFI of Rizal at
Quezon City a complaint for infringement of patent against petitioner DomicianoAguas
and F.H. Aquino and Sons alleging among others that being the original first and sole
inventor of certain new and useful improvements in the process of making mosaic precast tiles, and thereafter lawfully acquired from the Philippine Patent Office, Patent No.
658, the latter infringed the same by making, using and selling tiles embodying said
patent invention. A writ of Preliminary Injuction was subsequently issued.
Petitioner Aguas, in his answer, denied the allegations and instead averred inter
alia that respondent De Leon is neither the original first nor sole inventor of the
improvements in the process of making mosaic pre-cast tiles, the same having been
used by several tile-making factories both here and abroad years before the alleged
invention by De Leon; hence, it is not patentable.
The trial court and the Court of Appeals, upon appeal rendered judgment in
favor of respondent de Leon. Thus, this petition.
ISSUE:
Whether or not the alleged invention or discovery of respondent is patentable.
HELD:
Yea. x xx It should be noted that the private respondent does not claim to be the
discoverer or inventor of the old process of tile-making. He only claims to have
introduced an improvement of said process. In fact, Letters Patent No. 658 was issued
by the Philippine Patent Office to the private respondent Conrado G. De Leon, to protect
his rights as the inventor of an alleged new and useful improvement in the process of
making pre-cast tiles. Indeed, section 7, Republic Act No. 165, as amended provides:
Any invention of a new and useful machine, manufactured product or substance,
process, or an improvement of the foregoing, shall be patentable.
3. Maguan vs. CA
FACTS:
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. And
holder
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 under Registration Certification Nos. Extension UM-109, Extension UM110 and Utility Model No. 1184; petitioner explained such production and sale constitute
infringement of said patents and therefore its immediate discontinuance is demanded,
otherwise it will be compelled to take judicial action
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 filed a complaint for damages with injunction and preliminary
injunction against private respondent with the then Court of First Instance of Rizal
The trial court issued an Order granting the preliminary injunction prayed for by
petitioner. Consequently, the corresponding writ was subsequently issued.
In challenging these Orders private respondent filed a petition for certiorari with
the respondent court but was denied. Hence this petition.
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.
(2) Whether or not the Court a quo committed grave abuse of discretion in the issuance
of a writ of preliminary injunction.
(3) Whether or not certiorari is the proper remedy.
HELD:
1) The first issue has been laid to rest in a number of cases where the Court ruled that
"When a patent is sought to be enforced, the questions of invention, novelty or prior
use, and each of them, are open to judicial examination."
Under the present Patent Law, there is even less reason to doubt that the trial court has
jurisdiction to declare the patents in question invalid. A patentee shall have the
exclusive right to make, use and sell the patented article or product and the making,
using, or selling by any person without the authorization of the patentee constitutes
infringement of the patent (Sec. 37, R.A. 165). Any patentee whose rights have been
infringed upon may bring an action before the proper CFI now (RTC) and to secure an
injunction for the protection of his rights.
2) 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 hispatent, will be fatal to, the validity of the patent when
issued.
It will be noted that the validity of petitioner's patents is in question for want of novelty.
Private respondent contends that powder puffs Identical in appearance with that
covered by petitioner's patents existed and were publicly known and used as early as
1963 long before petitioner was issued the patents in question. (List of Exhibits, Rollo,
pp. 194-199). As correctly observed by respondent Court of Appeals, "since sufficient
proofs have been introduced in evidence showing a fair question of the invalidity of the
patents issued for such models, it is but right that the evidence be looked into,
evaluated and determined on the merits so that the matter of whether the patents
issued were in fact valid or not may be resolved." (Rollo, pp. 286-287).
All these notwithstanding, the trial court nonetheless issued the writ of preliminary
injunction which under the circumstances should be denied.
For failure to determine first the validity of the patents before aforesaid issuance of the
writ, the trial court failed to satisfy the two requisites necessary if an injunction is to
issue, namely: the existence of the right to be protected and the violation of said right.
(Buayan Cattle Co., Inc. v. Quintillan, 128 SCRA 276).
Under the above established principles, it appears obvious that the trial court committed
a grave abuse of discretion which makes certiorari the appropriate remedy.
As found by respondent Court of Appeals, the injunctive order of the trial court is of so
general a tenor that petitioner may be totally barred from the sale of any kind of powder
puff. Under the circumstances, respondent appellate court is of the view that ordinary
appeal is obviously inadequate.
4. Price vs. United Laboratories
-Full text is short lang
Issue: Whether or not the petitioner has the right to assail the validity of the patented
work of the respondent?
Ruling:The court finds the argument of the petitioner untenable. Section 42 of the Law
on Patent (RA 165) provides that only the patentee or his successors-in-interest may file
an action against infringement. What the law contemplates in the phrase anyone
possessing any right, title or interest in and to the patented invention refers only to the
patentees successors-in-interest, assignees or grantees since the action on patent
infringement may be brought only in the name of the person granted with the patent.
There can be no infringement of a patent until a patent has been issued since the right
one has over the invention covered by the patent arises from the grant of the patent
alone. Therefore, a person who has not been granted letter of patent over an invention
has not acquired right or title over the invention and thus has no cause of action for
infringement. Petitioner admitted to have no patent over his invention. Respondents
aerial fuze is covered by letter of patent issued by the Bureau of Patents thus it has in
his favor not only the presumption of validity of its patent but that of a legal and factual
first and true inventor of the invention.
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.
7.Smith Kline & French lab vs. CA 276 SCRA 224
-no digest
9. Godinez vs. CA
-No digest
assigned the letters patent to New United Foundry and Manufacturing Corporation
(UNITED FOUNDRY,for brevity). Petitioner alleged that (a) the utility model covered by
the letters patent, in this case, an LPG gasburner, was not inventive, new or useful; (b)
the specification of the letters patent did not comply with the requirements of Sec. 14,
RA No. 165, as amended; (c)respondent MeleciaMadolaria was not the original, true
and actual inventor nor did she derive her rights from the original, true and actual
inventor of the utility model covered by the letters patent; and, (d) the letters patent was
secured by means of fraud or misrepresentation.
Testifying for herself petitioner narrated that her husband Ong Bun Tua worked as a
helper in the UNITEDFOUNDRY where respondent MeleciaMadolaria used to be
affiliated with from 1965 to 1970; that Ong helped in the casting of an LPG burner which
was the same utility model of a burner and that after her husbands separation from the
shop she organized Besco Metal Manufacturing (BESCOMETAL, for brevity) for the
casting of LPG burners one of which had the configuration, form and component parts
similar to those being manufactured by UNITED FOUNDRY.
Petitioner presented two (2) other witnesses,namely, her husband Ong Bun Tua and
Fidel Francisco.
Private respondent, on the other hand, presentedonly one witness, Rolando Madolaria,
who testified, amongothers, that he was the General Supervisor of the
UNITEDFOUNDRY.
Director of Patents Cesar C. Sandiego denied thepetition for cancellation and holding
that the evidence of petitioner was not able to establish convincingly that thepatented
utility model of private respondent was anticipated.
Petitioner elevated the decision of the Director of Patents to the Court of Appeals which
affirmed the decisionof the Director of Patents. Hence, this petition for review on
certiorari.
ISSUE:Whether the dismissal is proper where the patentapplied for has no substantial
difference between the modelto be patented and those sold by petitioner.
HELD: The element of novelty is an essential requisite of thepatentability of an
invention or discovery. If a device orprocess has been known or used by others prior to
itsinvention or discovery by the applicant, an application for apatent therefor should be
denied; and if the application hasbeen granted, the court, in a judicial proceeding in
whichthe validity of the patent is drawn in question, will hold itvoid and ineffective. It has
been repeatedly held that aninvention must possess the essential elements of
novelty,originality and precedence, and for the patentee to beentitled to the protection
the invention must be new to theworld.
However, the validity of the patent issued by thePhilippine Patent Office in favor of
private respondent andthe question over the inventiveness, novelty and usefulnessof
the improved model of the LPG burner are matters whichare better determined by the
Patent Office. The technicalstaff of the Philippine Patent Office composed of experts
intheir field has by the issuance of the patent in questionaccepted private respondents
model of gas burner as adiscovery. There is a presumption that the Office hascorrectly
determined the patentability of the model and suchaction must not be interfered with in
the absence of competent evidence to the contrary.
The rule is settled that the findings of fact of theDirector of Patents, especially when
affirmed by the Court of Appeals, are conclusive on this Court when supported
bysubstantial evidence. Petitioner has failed to showcompelling grounds for a reversal
of the findings andconclusions of the Patent Office and the Court of Appeals.Petition
DISMISSED