24.1.

Everything which has been made available to the public

anywhere in the world, before the filing date or the priority date of the
application claiming the invention; and

CHAPTER II
PATENTABILITY
Section 21. Patentable Inventions. - Any technical solution of a
problem in any field of human activity which is new, involves an
inventive step and is industrially applicable shall be Patentable. It
may be, or may relate to, a product, or process, or an improvement of
any of the foregoing.

24.2. The whole contents of an application for a patent, utility model,

or industrial design registration, published in accordance with this
Act, filed or effective in the Philippines, with a filing or priority date
that is earlier than the filing or priority date of the application:
Provided, That the application which has validly claimed the filing
date of an earlier application under Section 31 of this Act, shall be
prior art with effect as of the filing date of such earlier application:
Provided further, That the applicant or the inventor identified in both
applications are not one and the same.

Section 22. Non-Patentable Inventions. - The following shall be

excluded from patent protection:
22.1. Discoveries, scientific theories and mathematical methods;

Section 25. Non-Prejudicial Disclosure. .

22.2. Schemes, rules and methods of performing mental acts, playing

games or doing business, and programs for computers;

25.1. The disclosure of information contained in the application

during the twelve (12) months preceding the filing date or the priority
date of the application shall not prejudice the applicant on the ground
of lack of novelty if such disclosure was made by:

22.3. Methods for treatment of the human or animal body by surgery

or therapy and diagnostic methods practiced on the human or animal
body. This provision shall not apply to products and composition for
use in any of these methods;

(a) The inventor;

22.4. Plant varieties or animal breeds or essentially biological

process for the production of plants or animals. This provision shall
not apply to micro-organisms and non-biological and microbiological
processes.

(b) A patent office and the information was contained (a) in another
application filed by the inventor and should not have been disclosed
by the office, or (b) in an application filed without the knowledge or
consent of the inventor by a third party which obtained the
information directly or indirectly from the inventor; or

Provisions under this subsection shall not preclude Congress to consider

the enactment of a law providing sui generis protection of plant varieties
and animal breeds and a system of community intellectual rights
protection:

(c) A third party which obtained the information directly or indirectly

from the inventor.
25.2. For the purposes of Subsection 25.1, "inventor" also means any
person who, at the filing date of application, had the right to the
patent. (n)

22.5. Aesthetic creations; and

22.6. Anything which is contrary to public order or morality.

Section 26. Inventive Step. - An invention involves an inventive step

if, having regard to prior art, it is not obvious to a person skilled in
the art at the time of the filing date or priority date of the application
claiming the invention.

Section 23. Novelty. . - An invention shall not be considered new if it

forms part of a prior art.
Section 24. Prior Art. - Prior art shall consist of:
IPL PATENTS

Section 6, Republic Act No. 9502 (Cheaper Medicines Act)

SEC. 6. Section 26 of Republic Act No. 8293, otherwise known as the
Intellectual Property Code of the Philippines, is hereby amended to read as
follows:
"SEC. 26. Inventive Step. - 26.1. An invention involves an inventive
step if, having regard to prior art, it is not obvious to a person skilled
in the art at the time of the filing date or priority date of the
application claiming the invention. (n)
"26.2. In the case of drugs and medicines, there is no inventive step if
the invention results from the mere discovery of a new form or new
property of a known substance which does not result in the
enhancement of the known efficacy of that substance, or the mere
discovery of any new property or new use for a known substance, or
the mere use of a known process unless such known process results
in a new product that employs at least one new reactant."
Section 27. Industrial Applicability. - An invention that can be
produced and used in any industry shall be industrially applicable. (n)

Republic of the Philippines

SUPREME COURT
Manila

IPL PATENTS

SECOND DIVISION

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. (Taken from
allegations in the Answer, par. 4, Rollo, p. 93). And on July 25, 1974, private
respondent assailed the validity of the patents involved and filed with the Philippine
Patent Office petitions for cancellation of (1) Utility Model Letter Patent Extension
No. UM-109 (Inter Partes Case No. 838, Susana Luchan v. Rosario C. Tan), (2)
Utility Model Letters Patent No. UM-1184 (Inter Partes Case No. 839, Susana
Luchan v. Rosario C. Tan), (3) Utility Model Letters Patent Extension No. UM-110
(Inter Partes Case No. 840, Susana Luchan v. Rosario C. Tan. (Taken from
allegations in the Answer, par. 10, Rollo, pp. 94-95).

G.R. L-45101 November 28, 1986

ROSARIO C. MAGUAN (formerly ROSARIO C. TAN), petitioner,
vs.
THE HONORABLE COURT OF APPEALS and SUSANA
LUCHAN, respondents.
Ambrosio Padilla Law Offices for petitioner.
PARAS, J.:

In view thereof, 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 (Complaint, Rollo, p. 90).

Submitted on December 9, 1977 for Our decision is this petition for review on
certiorari of the two Resolutions of the Court of Appeals, the first dated July 6,
1976, setting aside its Decision of February 16, 1976 in CA-G.R. No. SP-04706,
titled "SUSANA LUCHAN v. Hon. HONRADO, et al." wherein it ruled for the
dismissal of the petition for lack of merit and at the same time nullifying the writ of
preliminary injunction it had previously issued; and the second, dated November 4,
1976, denying the motion for reconsideration of the first resolution abovementioned.

In her answer, private respondent alleged that the products she is manufacturing
and offering for sale are not Identical, or even only substantially Identical to the
products covered by petitioner's patents and, by way of affirmative defenses,
further alleged that petitioner's patents in question are void on the following
grounds:

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."

(1) at the time of filing of application for the patents involved, the utility models
applied for were not new and patentable under Sec. 55 of R.A. 165, as amended
by R.A. 864; and

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) the person to whom the patents were issued was not the true and actual author
of the utility models applied for, and neither did she derive her rights from any true
and actual author of these utility models.

2. UM-450 (extended and/or renewed under Extension No. UM110 for a period of 5
years from January 26, 1972)

for the following reasons:

3. UM 1184, for a period of 5years fromApril 5, 1974.(Petition, Rollo, pp. 6-7).

(a) since years prior to the filing of applications for the patents involved, powder
puffs of the kind applied for were then already existing and publicly being sold in
the market; both in the Philippines and abroad; and

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 under
Registration Certification Nos. Extension UM-109, Extension UM-110 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. (Rollo, pp. 7-8).

IPL PATENTS

(b) applicant's claims in her applications, of "construction" or process of

manufacturing the utility models applied for, with respect to UM-423 and UM-450,
were but a complicated and impractical version of an old, simple one which has
been well known to the cosmetics industry since years previous to her filing of
applications, and which belonged to no one except to the general public; and with
respect to UM1184; her claim in her application of a unitary powder puff, was but an
limitation of a product well known to the cosmetics industry since years previous to

her firing of application, and which belonged to no one except to the general public;
(Answer, Rollo, pp. 93-94).

On February 16, 1976, respondent court promulgated a decision the dispositive

portion of which reads:

On September 18, 1974, the trial court issued an Order (Annex "K", Rollo, p. 125)
granting the preliminary injunction prayed for by petitioner. Consequently, the
corresponding writ was subsequently issued (Annex "K-1", Rollo, p. 131) enjoining
the herein private respondent (then defendant) and all other persons employed by
her, her agents, servants and employees from directly or indirectly manufacturing,
making or causing to be made, selling or causing to be sold, or using or causing to
be used in accordance with, or embodying the utility models of the Philippine
Patent Office Utility Model Letters Patent Nos. 423 (Extension No. UM-109), No.
450 (Extension No. UM-110), and Utility Model No. 1184 or from infringement upon
or violating said letters patent in any way whatsoever (Annex " K-1 ", Rollo, p. 131).

WHEREFORE, finding no merit in the herein petition, the same is hereby dismissed
and the preliminary injunction previously issued by this Court is hereby set aside,
with costs.
SO ORDERED. (CA Decision, Rollo, p. 189).
ln said decision respondent court stated that in disposing of the petition it tackled
only the issue of whether the court a quo acted with grave abuse of discretion in
issuing the challenged orders. It made clear the question of whether the patents
have been infringed or not was not determined considering the court a quo has yet
to decide the case on the merits (Ibid., p. 186).

Private respondent questioned the propriety of the trial court's issuance of the Writ
of Preliminary Injunction arguing that since there is still a pending cancellation
proceedings before the Philippine Patent Office concerning petitioner's patents,
such cannot be the basis for preliminary injunction (Motion for Reconsideration,
Rollo, p. 132).

Feeling aggrieved, private respondent moved to reconsider the afore-mentioned

Decision based on the following grounds:
I

In an Order dated September 11, 1975, the trial court denied private respondent's
motion for reconsideration (Annex "N", Rollo, p. 142).

THAT THIS HONORABLE COURT ERRED IN NOT APPRECIATING THE

EXISTENCE OF A FAIR QUESTION OF INVALIDITY OF PRIVATE
RESPONDENT'S PATENTS.

In challenging these Orders private respondent filed a petition for certiorari with the
respondent court on September 29, 1975 (Annex "D", Rollo, pp. 148-171)
reiterating among other things the invalidity of petitioner's patents and prayed that
the trial court be restrained from enforcing or continuing to enforce the following:

II
THAT THIS HONORABLE COURT ERRED IN NOT REJECTING THE THEORY
OF RESPONDENT JUDGE THAT HE HAS NO JURISDICTION TO INVALIDATE
THE PATENTS UPON GROUND OF LACK OF NOVELTY OF THE PRODUCTS
PATENTED. (Motion for Reconsideration, Rollo, p. 190).

(1) Order dated September 18, 1974, granting the preliminary injunction;
(2) Writ of preliminary injunction dated September 18, 1974; and

Reviewing on reconsideration, respondent court gave weight to private

respondent's allegation that the latter's products are not identical or even only
substantially identical to the products covered by petitioner's patents. Said court
noticed that contrary to the lower courts position that the court a quohad no
jurisdiction to determine the question of invalidity of the patents, Section 45 and 46
of the Patent Law allow the court to make a finding on the validity or invalidity of
patents and in the event there exists a fair question of its invalidity, the situation
calls for a denial of the writ of preliminary injunction pending the evaluation of the
evidence presented (Rollo, pp. 218-226). Thus, finding the lower court's position to
have been opposed to Patent Law, respondent court considered it a grave abuse of
discretion when the court a quo issued the writ being questioned without looking
into the defenses alleged by herein private respondent. Further, it considered the
remedy of appeal, under the circumstances, to be inadequate.

(3) Order dated September 11, 1974 denying petitioner's motion petition for
reconsideration.
On October 15, 1975, the Writ of Preliminary Injunction was issued by the
respondent Court of Appeals as follows:
NOW, THEREFORE, you, respondents, and/or any person/persons acting on your
stead, are hereby ENJOINED to RESTRAIN from enforcing or continuing to
enforce, the proceedings complained of in the petition to wit: 1) Order dated
September 18, 1974, granting the preliminary injunction; 2) Writ of Preliminary
Injunction dated September 18, 1974; and Order dated September 11, 1975,
denying petitioner's motion for reconsideration, all issued in connection with Civil
Case No. 19908, UNTIL FURTHER ORDERS FROM THIS COURT. (Annex "P",
Rollo, p. 1.73)
IPL PATENTS

Thus, on July 6, 1976, respondent court made a complete turnabout from its
original decision and promulgated a Resolution, the dispositive portion of which
reads:

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 (Sec. 42, R.A.
165). Defenses in an action for infringement are provided for in Section 45 of the
same law which in fact were availed of by private respondent in this case. Then, as
correctly stated by respondent Court of Appeals, this conclusion is reinforced by
Sec. 46 of the same law which provides that if the Court shall find the patent or any
claim thereof invalid, the Director shall on certification of the final judgment ... issue
an order cancelling the patent or the claims found invalid and shall publish a notice
thereof in the Official Gazette." Upon such certification, it is ministerial on the part
of the patent office to execute the judgment. (Rollo, pp. 221-222).

WHEREFORE, our decision is hereby set aside. The writ of certiorari is ordered
issued. Accordingly, the challenged orders, Exhibit H and H-1 and the order
denying the motion for reconsideration (Annex "K", Petition), are hereby set aside.
The writ of preliminary injunction previously ordered by this Court and ordered lifted
by the Decision now being set aside is hereby reinstated and made permanent.
Without pronouncement as to costs.
SO ORDERED. (CA Resolution, Rollo, p. 226).
In a Resolution dated November 4, 1976, respondent court, not persuaded by the
grounds embodied in the motion for reconsideration filed by herein petitioner
(Annex "V ", Rollo, p. 227), denied the same for lack of merit, thereby maintaining
the same stand it took in its July 6, 1976 Resolution (Rollo, p. 281). Hence, this
petition.

II.
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 faciepresumption 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.

On December 3, 1976, without giving due course to the petition, this Court required
respondent to file her Comment (Rollo, p. 290) which was filed on December 16,
1976 (Rollo, pp. 291-316). Thereafter, petitioner filed her Reply (Rollo, p. 323) and
on May 30, 1977, the petition was given due course (Rollo, p. 345). Petitioner filed
her brief on July 14, 1977 (Rollo, p. 351) while private respondent filed her brief on
August 25, 1977 (Rollo, p. 359). Thereafter, petitioner having failed to file reply
brief, the Court resolved to declare the case submitted for decision on December 9,
1977 (Rollo, p. 359).

The question then in the instant case is whether or not the evidence introduced by
private respondent herein is sufficient to overcome said presumption.

The assignment of errors raised by the petitioner in this case (Rollo, pp. 15-16)
may be reduced to three main issues:

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.

(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.

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).

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." (Vargas v. F.M. Yaptico &
Co. 40 Phil. 199 [1919]; Vargas v. Chua, 57 Phil. 790-791 [1933]; Frank and Gohn
v. Kosuyana 59 Phil. 207 [1933]).

IPL PATENTS

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).

The law provides:

SEC. 9. Invention not considered new or patentable. An invention
shall not be considered new or capable of being patented if it was
known or used by others in the Philippines before the invention
thereof by the inventor named in an application for patent for the
invention; or if it was patented or described in any printed
publication in the Philippines or any foreign country more than one
year before the application for a patent therefor; or if it had been in
public use or on sale in the Philippines for more than one year
before the application for a patent therefor; or if it is the subject
matter of a validity issued patent in the Philippines granted on an
application filed before the filing of the application for patent
therefor.

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. (Rollo, p. 288). A parallel was drawn
from a decision of the Supreme Court in the case of Sanchez v. Hon. Court of
Appeals, 69 SCRA 328 [1976] where the First Division of the Supreme Court ruled
that "The prerogative writ of certiorari may be applied for by proper petition
notwithstanding the existence of the regular remedy of an appeal in due cause
when among other reasons, the broader interests of justice so require or an
ordinary appeal is not an adequate remedy."

Thus, more specifically, under American Law from which our Patent Law was
derived (Vargas v. F.M. Yaptico & Co. supra) it is generally held that in patent cases
a preliminary injunction will not issue for patent infringement unless the validity of
the patent is clear and beyond question. The issuance of letters patent, standing
alone, is not sufficient to support such drastic relief (8 Deller's Walker on Patents p.
406). In cases of infringement of patent no preliminary injunction will be granted
unless the patent is valid and infringed beyond question and the record
conclusively proves the defense is sham. (Ibid., p. 402)

Private respondent maintains the position that the resolutions sought to be

appealed from had long become final and executory for failure of Hon. Reynaldo P.
Honrado, the trial court judge, to appeal by certiorari from the resolutions of
respondent Court of Appeals. (Rollo, pp. 291-292).

In the same manner, under our jurisprudence, as a general rule because of the
injurious consequences a writ of injunction may bring, the right to the relief
demanded must be clear and unmistakable. (Sangki v. Comelec, 21 SCRA 1392;
December 26, 1967) and the dissolution of the writ is proper where applicant has
doubtful title to the disputed property. (Ramos v. C.A., 95 SCRA 359).

Such contention is untenable.

There is no dispute that petitioner has seasonably petitioned. On the other hand, it
is elementary that the trial judge is a mere nominal party as clearly provided in
Section 5, Rule 65 of the Revised Rules of Court where it shall be the duty of such
person or persons interested in sustaining the proceedings in court, "to appear and
defend, both in his or their own behalf and in behalf of the court or judge affected
by the proceedings."

III.
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).

Relative thereto "the judge whose order is under attack is merely a nominal party;
wherefore, a judge in his official capacity should not be made to appear as a party
seeking reversal of a decision that is unfavorable to the action taken by him." (Hon.
Alcasid v. Samson, 102 Phil. 735-736; Tarona v. Sayo, 67 SCRA 508, 524; Lim Se
v. Argel, 70 SCRA 378).
As to petitioner's claim of prescription, private respondent's contention that such
refers to the filing of petitions for cancellation in the Patent Office under Sec. 28 of
the Patent Law and not to a defense against an action for infringement under Sec.
45 thereof which may be raised anytime, is evident under aforesaid law.

All these notwithstanding, the trial court nonetheless issued the writ of preliminary
injunction which under the circumstances should be denied.

CA AFFIRMED
IPL PATENTS

MAGUAN V CA

Maguan filed a complaint for damages with

injunction and preliminary injunction against
Luchan with the then Court of First Instance of
Rizal.

Principle in the case: 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. 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.

The trial court issued an Order granting the

preliminary injunction prayed for. Consequently, the
corresponding writ was subsequently issued.
Issue: WON in Maguan has a right to file an action before
the CFI for injunction due to infringement of her patent.

FACTS:

Ruling: Yes.

Maguan is doing business under the firm name and

style of SWAN MANUFACTURING" while Luchan is
likewise doing business under the firm name and
style
of
"SUSANA
LUCHAN
POWDER
PUFFMANUFACTURING.

Rationale: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.

Maguan informed Luchan that the powder puffs

Luchan is manufacturing and selling to various
enterprises particularly those in the cosmetics
industry, resemble
Identical
or
substantially
Identical powder puffs of which she (Maguan) is a
patent holder under Registration Certification Nos.
Extension UM-109, ExtensionUM-110 and Utility
Model No. 1184; Maguan 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.

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.

Luchan replied stating that her products are

different and countered that Maguans 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.

IPL PATENTS

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
7

evidence (burden of evidence) then shifts to the

defendant to overcome by competent evidence this
legal presumption.

IPL PATENTS

be new to the world.

7. ID.; ID.; ID.; ID.; ID. Under the provisions of the statute, an inventors
creation must not have been in public use or on sale in the United States and the
Philippine Islands for more than two years prior to his application.

FIRST DIVISION
[G.R. No. 14101. September 24, 1919. ]

8. ID.; ID.; ID.; ID.; ID. A single instance of public use of the invention by a
patentee for more than two years before the date of his application for his patent
will be fatal to the validity of the patent when issued.

ANGEL VARGAS, Plaintiff-Appellant, v. F. M. YAPTICO & Co. (LTD.) , DefendantAppellee.

9. ID.; ID.; ID.; ID.; ID. Held: That since a preponderance of the evidence ,is to
the effect that for more than two years before the application for the original letters
patent there was, by the consent and allowance of the plaintiff, a public use of the
invention covered by them, namely, of the so-called "Vargas Plow," the patent is
void.

Charles C. Cohn for Appellants.

John Bordman for Appellee.
SYLLABUS
1. PROPERTY; PATENTS; LAW. Act No. 2235 of the Philippine Legislature,
enacted on February 10, 1913, in effect makes the United States Patent Laws
applicable in the Philippine Islands.

DECISION
MALCOLM, J. :

2. ID.; ID.; VALIDITY; JUDICIARY. 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."

Rude wooden implements for tilling the soil have been in use in the Philippines,
possibly not since the Israelites "went down to sharpen every man his share and
his coulter," but certainly for many years. Iron plows called "Urquijo" and "Pony"
have latterly been the vogue.

3. ID.; ID.; ID.; ID.; BURDEN OF PROOF. The burden of proof to substantiate a
charge of infringement is with the plaintiff. Where, however, the plaintiff introduces
the patent in evidence, if it is in due form, it affords a prima facie presumption of its
correctness and validity. The decision of the Commissioner of Patents in granting
the patent is always presumed to be correct. The burden then shifts to the
defendant to overcome by competent evidence this legal presumption.

Angel Vargas, a farmer acquainted with local conditions and alive to the
commercial possibilities, took it upon himself to produce, with the native plow as
the model, an improved, adjustable plow. On July 22, 1910, he made application for
a United States patent to cover his so-called invention. On March 12, 1912, letters
patent were issued by the United States Patent Office in favor of Vargas. On April
24, 1912, a certified copy of the patent was filed in the Division of Patents,
Copyrights, and Trademarks of the Executive Bureau, Government of the Philippine
Islands. The patent and its registry was also published in the newspaper, El
Tiempo.

4 ID.; ID.; ID.; "VARGAS PLOW;" NOVELTY INVENTION, OR DISCOVERY In

order to give existence to the right to a patent the element of novelty, invention, or
discovery must be shown.
5. ID.; ID.; ID.; ID.; REPAIRS. A difference has long been recognized between
repairing and reconstructing a machine. If, for instance, partial injuries, whether
they occur from accident or from wear and tear, to a machine for agricultural
purposes are made, this is only refitting the machine for use, and thus permissible.

Since 1910, Vargas has engaged in the manufacture of these plows in the city of
Iloilo, Philippine Islands. On the plows there was first stamped the words "Patent
Applied For," later after the patent had been granted, changed to "Patented Mar.
12, 1912." Ninety per cent of the plows in use in the Visayas (Iloilo and vicinity) are
said to be Vargas plows.

6. ID.; ID.; ID.; ID.; PUBLIC USE OR SALE. To entitle patent, the invention must
IPL PATENTS

Congress of March 3, 1897, amendatory of section 4886 of the United States

Revised Statutes, reading as follows:

During this same period, the firm of F. M. Yaptico & Co. (Ltd.) , was engaged in the
foundry business in the City of Iloilo. It openly held itself out as a manufacturer of
plow parts. It has in fact produced points, shares, shoes, and heel pieces in a
considerable amount adapted to replace worn-out parts of the Vargas plow.

"Any person who has invented or discovered any new and useful art, machine,
manufacture, or composition of matter, or any new and useful improvements
thereof, not known or used by others in this country. before his invention or
discovery thereof, and not patented or described in any printed publication in this or
any foreign country, before his invention or discovery thereof, or more than two
years prior to his application, and not in public use are on sale in this country for
more than two years prior to his application, unless the same is proved to have
been abandoned, may, upon payment of the fees required by law, and other due
proceeding had, obtain a patent therefor." (29 Stat. L., 692, 7 Fed. Stat. Ann. [2d
Ed. ], p. 23.)

Such was the existing situation when, in the early part of 1918, the owner of the
patent, and thus the proper party to institute judicial proceedings, began action in
the Court of First Instance of Iloilo to enjoin the alleged infringement of U. S. Patent
No. 1020232 by the defendant F. M Yaptico & Co. (Ltd.) , and to recover the
damages suffered by reason of this infringement. The court issued the preliminary
injunction as prayed for. The defendant, in addition to a general denial, alleged, as
special defenses, that the patent lacked novelty or invention, that there was no
priority of ideas or device in the principle and construction of the plow, and that the
plow, whose manufacture it was sought to have enjoined by the plaintiff, had
already been in public use for more than two years before the application of the
plaintiff for his patent. The parties subsequently entered into a stipulation that the
court should first resolve the question of whether or not there had been an
infraction of the patent, reserving the resultant question of damages for later
decision. After the taking of evidence, including the presentation of exhibits, the trial
judge, the Honorable Antonio Villareal, in a very exhaustive and learned decision,
rendered judgment in favor of the defendant and against the plaintiff, declaring null
and without effect the patent in question and dismissing the suit with costs against
the plaintiff. The preliminary injunction theretofore issued was dissolved.

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." The burden of proof
to substantiate a charge of infringement is with the plaintiff. Where, however, the
plaintiff introduces the patent in evidence, if it is in due form, it affords a prima facie
presumption of its correctness and validity. The decision of the Commissioner of
Patents in granting the patent is always presumed to be correct. The burden then
shifts to the defendant to overcome by competent evidence this legal presumption.
With all due respect, therefore, for the critical and expert examination of the
invention by the United States Patent Office, the question of the validity of the
patent is one for judicial determination, and since a patent has been submitted, the
exact question is whether the defendant has assumed the burden of proof as to
anyone of his defenses. (See Agawan Co. v. Jordan [1869], 7 Wall., 583; Blanchard
v. Putnam [186g], 8 Wall., 420; Seymour v. Osborne [1871], 11 Wall., 516;
Reckendorfer v. Faber [1876], 92 U. S., 347; 20 R. C. L., 1112, 1168, 1169.)

From this judgment the plaintiff has appealed, specifying five errors. The principal
assignment No. 1 is, that the trial court erred in finding that the patented invention
of the plaintiff is lacking in novelty and invention. Defendant, in reply, relies on three
propositions, namely: (1) The judgment of the trial court in finding the patent
granted plaintiff void for lack of novelty and invention should be affirmed; (2) The
patent granted plaintiff is void from the public use of his plow for over two years
prior to his application for a patent, and (3) If the patent is valid, there has been no
contributory infringement by defendant.

As herein before stated, the defendant relies on three special defenses. One such
defense, on which the judgment of the lower court is principally grounded, and to
which appellant devotes the major portion of his vigorous argument, concerns the
element of novelty, invention, or discovery, that gives existence to the right to a
patent. On this point the trial court reached the conclusion that "the patented plow
of the plaintiff, Exhibit D, is not different from the native plow, Exhibit 2, except in
the material, in the form, in the weight and the grade of the result, the said
differences giving it neither a new function nor a new result distinct from the
function and the result obtained from the native plow; consequently, its production
does not presuppose the exercise of the inventive faculty but merely of mechanical
skill, which does not give a right to a patent of an invention under the provisions of
the Patent Law." In thus finding, the court may have been right, since the Vargas
plow does not appear to be such a" :combination" as contains a novel assemblage

Before resolving these rival contentions, we should have before us the relevant law.
Act No. 2235 of the Philippine Legislature, enacted on February 10, 1913, in effect
makes the United States Patent Laws applicable in the Philippine Islands. It
provides that "owners of patents, including design patents, which have been issued
or may hereafter be issued, duly registered in the United States Patent Office under
the laws of the United States relating to the grant of patents, shall receive in the
Philippine Islands the protection accorded them in the United States under said
laws." (Sec. 1.) Turning to the United States Patent Laws, we find the Act of
IPL PATENTS

10

of parts exhibiting invention. (See Stimpson v. Woodman [1870], 10 Wall., 117

rollers; Hicks v. Kesley [1874], 18 Wall., 674 wagons; Hails v. Wormer [1874], 20
Wall., 353 stoves; Washburn & Moen Mfg. Co. v. Beat "Em All Barbed Wire Co.
[1892], 143 U. S., 275 barbed wire; Lynch v. Dryden [1873], C. D., 73 walking
cultivators; Torrey v. Hancock [1910] 184 Fed., 61 rotary plows.)

Isinglass and Glue Co. [1883], 108 U. S., 462; Andrews v. Hovey [1887], 123 U. S.,
267; Campbell v. City of New York [1888], 1 L. R. A., 48.)
On the facts, we think the testimony shows such a public use of the Vargas plow as
to render the patent invalid. Nicolas Roces, a farmer, testified that he had bought
twenty Vargas plows, of which Exhibit 5 was one, in December, 1907; and Exhibit
5, the court found, was a plow completely identical with that for which the plaintiff
had received a patent. The minor exception, and this in itself corroborative of
Roces testimony, is, that the handle of plow Exhibit 5 is marked with the letters "A
V" and not with the words "Patent Applied For" or "Patented Mar. 12, 1912."
Salvador Lizarraga, a clerk in a business house, testified that he had received
plows similar to Exhibits D, 5, and 4, for sale on commission in May, 1908, from
Bonifacio Araneta, partner of Vargas in the plow business. Ko Pao Ko, a
blacksmith, testified that he had made fifty plow frames in 1905 for Vargas and
Araneta, of which Exhibit 4 is one; Exhibit 4, the court found, is a plow identical with
that patented by Vargas, but without share and mould-board. Alfred Berwin, an
employee in the office of Attorney John Bordman, testified that on September 21,
1908, he had knowledge of a transaction wherein Vargas and Araneta desired to
obtain money to invest in a plow factory. George Ramon Saul, a mechanic of the
"Taller Visayas" of Strachan and MacMurray, testified that he had made Vargas
plow points and shares of the present form upon order of Araneta and Vargas in
1906 and 1907. William MacMurray, proprietor of the "Taller Visayas," corroborated
the evidence of the witness Saul by the exhibition of the account against Vargas
and Araneta wherein, under date of December 31, 1906, appears the item "12 new
soft steel plow shares forged and bored for rivets as per sample." Against all this,
was the testimony of the plaintiff Angel Vargas who denied that Saul could have
seen the Vargas plow in 1906 and 1907, who denied that Roces purchased the
Vargas plow in 1907, who denied that Lizarraga could have acted as an agent to
sell two plows in November, 1908, who denied any remembrance of the loan
mentioned by Berwin as having been negotiated in September, 1908, who denied
that Ko Pao Ko made fifty plows one of which is Exhibit 4, for Araneta and Vargas
in 1905. Plaintiff introduced his books to substantiate his oral testimony. It is hardly
believable that five or six witnesses for the defense would deliberately perjure
themselves under oath. One might, but that all together, of different nationalities,
would enter into such a conspiracy, is to suppose the improbable.

A second line of defense relates to the fact that defendant has never made a
complete Vargas plow, but only points, shares, shoes, and heel pieces to serve as
repairs. Defendants contention is that in common with other foundaries, he has
for four years cast large numbers of plow points and shares suitable for the use of
either on the native wooden plow or on the Vargas plow. A differences has long
been recognized between repairing and constructing a machine. If, for instance,
partial injuries, whether they occur from accident or from wear and tear, to a
machine for agricultural purposes are made this is only re-fitting the machine for
use, and thus permissible. (Wilson v. Simpson [1850], 9 How., 109.) Even under
the more rigorous doctrine of Leeds & Catlin Co. v. Victor Talking Machine Co.
([1909], 213 U. S. 325), it may be possible that all the defendants has done is to
manufacture and sell isolated parts to be used to replace worn-out parts.
The third defense is, that under the provisions of the statute, an inventors
creation must not have been in public use or on sale in the United States (and the
Philippine Islands) for more than two years prior to his application. Without,
therefore, committing ourselves as to the first two defenses, we propose to base
our decision on the one just suggested as more easily disposing of the case. (See
20 R. C. L., 1140-1142.) We do so with full consciousness of the doubt which arose
in the mind of the trial court, but with the belief that since it has been shown that the
invention was used in public at Iloilo by others than Vargas, the inventor, more than
two years before the application for the patent, the patent is invalid.
Although we have spent some time in arriving at this point, yet, having reached it,
the question in the case is single and can be brought to a narrow compass. Under
the English Statute of Monopolies (21 Jac. Ch., 3), and under the United States
Patent Act of February 21, 1793, later amended to be as herein quoted, it was
always the rule, as stated by Lord Coke, Justice Story and other authorities, that to
entitle a man to a patent, the invention must be new to the world. (Pennock and
Sellers v. Dialogue [1829], 2 Pet., 1.) As said by the United States Supreme Court,
"it has been repeatedly held by this court that a single instance of public use of the
invention by a patentee for more than two years before the date of his application
for his patent will be fatal to the validity of the patent when issued." (Worley v.
Lower Tobacco Co. [1882], 104 U. S., 340; McClurg v. Kingsland [1843], 1 How.,
202; Consolidated Fruit Jar Co. v. Wright [1877], 94 U. S., 92; Egbert v. Lippmann
[1881], 104 U. S., 333; Coffin v. Ogden [1874], 18 Wall., 120; Manning v. Cape Ann
IPL PATENTS

Tested by the principles which go to make the law, we think a preponderance of the
evidence is to the effect that for more than two years before the application for the
original letters patent, or before July 22, 1908, there was, by the consent and
allowance of Vargas, a public use of the invention covered by them.
To conclude, we are not certain but that appellee has proved every one of his
defenses. We are certain that he has at least demonstrated the public use of the
11

Vargas plow over two years prior to the application for a patent. Such being the
case, although on a different ground, we must sustain the judgment of the lower
court, without prejudice to the determination of the damages resulting from the
granting of the injunction, with the costs of this instance against the appellant. So
ordered.
Arellano, C.J., Torres, Johnson, Araullo, Street, Avancea and Moir, JJ., concur.

ANGEL VARGAS vs F. M. YAPTICO & CO. (Ltd.) G.R. No. 14101, September 24,
1919

IPL PATENTS

12

Facts:

Ruling:
1. Yes, the patent if void.

Plaintiff Angel Vargas, a farmer, was issued patents by the United

States Patent Office for his so-called invention of an improved
adjustable plow with the use his own native plow.

The Supreme Court affirmed the trial courts conclusion that the plow of the
plaintiff is not different from the native plow, except in the material, in the
form, in the weight and the grade of the result, the said differences giving it
neither a new function nor a new result distinct from the function and the
result obtained from the native plow. Also, its production does not
presuppose the exercise of the inventive faculty but merely of mechanical
skill, which does not give a right to a patent of an invention under the
provisions of the Patent Law.

A certified copy of the patent was filed in the Division of Patents,

Copyrights, and Trademarks of the Executive Bureau, Government of
the Philippine Islands.
Defendant F. M. Yaptico & Co. (Ltd.), a firm engaged in the foundry
business in Iloilo City, was a manufacturer of plow parts. It produced
points, shares, shoes, and heel pieces in a considerable amount
adapted to replace worn-out parts of the Vargas plow.

2. Yes, the patent is void.

Under the provisions of the statute, an inventor's creation must not have
been in public use or on sale in the United States (and the Philippine Islands)
for more than two years prior to his application.

Vargas filed a case in the Court of First Instance of Iloilo to enjoin the
alleged infringement of his U.S. Patent by the defendant F. M Yaptico
Co. (Ltd.), and to recover the damages suffered by reason of this
infringement, to which the court issued the preliminary injunction
prayed for.

Further, it was proved that the invention was used in public at Iloilo by others
than Vargas, the inventor, more than two years before the application for the
patent thus, the patent is invalid.

The defendant denied the allegations and defended that the patent
lacked novelty or invention, that there was no priority of ideas or
device in the principle and construction of the plow, and that the
plow, whose manufacture it was sought to have enjoined by the
plaintiff, had already been in public use for more than two years
before the application of the plaintiff for his patent.
The trial judge rendered judgment in favor of the defendant,
declaring null and without effect the patent in question and
dismissing the suit with costs against the plaintiff.
Hence, the plaintiff appealed said judgment.

Issues:
1. Whether the patented invention is void for lack of novelty and invention?
2. Whether the patent is invalid considering that the plow had already been in
public use for over two years prior to the application for a patent.
Republic of the Philippines
SUPREME COURT
Manila
IPL PATENTS

13

EN BANC
G.R. No. L-36650

3. That the defendant, Coo Teng Hee, is also of age and a resident of Iloilo, and is
the sole owner of the business known as Coo Kun & Sons Hardware Co.
established in Iloilo.

January 27, 1933

4. That the defendant, Cham Samco & Sons, is a commercial partnership duly
organized under the laws of the Philippine Islands, with their principal office in the
City of Manila, and that the defendants Cham Samco, Cham Siong E, Cham Ai
Chia and Lee Cham Say, all of age and residents of the City of Manila, are the
partners of the firm Cham Samco & Sons.

ANGEL VARGAS, plaintiff-appellee,

vs.
PETRONILA CHUA, ET AL., defendants-appellants.
Jose F. Orozco for appellants.
Jose Yulo for appellee.

5. The parties take for granted that the complaint in this case is amended in the
sense that it includes Coo Paoco as party defendant in his capacity as husband of
the defendant, Petronila Chua, with Attorney Jose F. Orozco also representing him,
and that he renounces his rights to receive summons in this case by reproducing
the answer of his codefendant, Petronila Chua.

IMPERIAL, J.:
The defendants Petronila Chua, Coo Pao and Coo Teng Hee, appeal from the
judgment of the Court of First Instance of Manila, the dispositive part of which
reads as follows:

6. That the plaintiff is the registered owner and possessor of United States Patent
No. 1,507,530 on certain plow improvements, issued by the United States Patent
Office on September 2, 1924, a certified copy of which was registered in the
Bureau of Commerce and industry of the Government of the Philippine Islands on
October 17, 1924. A certified copy of said patent is attached to this stipulation of
facts as Exhibit A.

Wherefore judgment is rendered in favor of the plaintiff and against the defendants,
ordering each and every one of them, their agents, mandatories and attorneys, to
henceforth abstain from making, manufacturing, selling or offering for a sale plows
of the type of those manufactured by the plaintiff, and particularly plows of the
model of Exhibits B, B-1 and B-2, and to render to the plaintiff a detailed accounting
of the profits obtained by them from the manufacture and sale of said type of plows
within thirty (30) days from the date of the receipt by them of notice of this decision,
with costs against all of the defendants.

7. That the plaintiff is now and has been engaged, since the issuance of his patent,
in the manufacture and sale of plows of the kind, type and design covered by the
aforementioned patent, said plows being of different sizes and numbered in
accordance therewith from 1 to 5.

Angel Vargas, the plaintiff herein, brought this action to restrain the appellants and
the other defendant entity, Cham Samco & Sons, their agents and mandatories,
from continuing the manufacture and sale of plows similar to his plow described in
his patent No. 1,507,530 issued by the United States Patent Office on September
2, 1924; and to compel all of said defendants, after rendering an accounting of the
profits obtained by them from the sale of said plows from September 2, 1924, to
pay him damages equivalent to double the amount of such profits.

8. That, since the filing of the complaint to date, the defendant, Petronila Chua, has
been manufacturing and selling plows of the kind, type and design represented by
Exhibits B, B-1 and B-2, of different sizes, designated by Nos. 2, 4 and 5.
9. That, since the filing of the complaint to date, the defendant, Coo Teng Hee,
doing business in Iloilo under the name of Coo Kun & Sons Hardware Co., has
been obtaining his plows, of the form and size of Exhibits B, B-1 and B-2, from the
defendant Petronila Chua.

It appears from the bill of exceptions that Cham Samco & Sons did not appeal.
In addition to the evidence presented, the parties submitted the following stipulation
of facts:

1. That the plaintiff, Angel Vargas, is of age and a resident of the municipality of
Iloilo, Iloilo, Philippine Islands.

10. Without prejudice to the plaintiff's right to ask the defendants to render an
accounting in case the court deem it proper, the parties agree that the defendant
Coo Teng Hee, doing business under the name of Coo Kun & Sons Hardware Co.,
has been selling to his customers in his store on J. Ma. Basa Street in Iloilo, plows
of the kind, type and design represented by Exhibits B, B-1 and B-2, having bought
said plows from his codefendant, Petronila Chua, who manufactures them in her
factory on Iznart Street, Iloilo.

2. That the defendant, Petronila Chua, is also of age, and is married to Coo Pao
alias Coo Paoco, and resides in Iloilo.

11. That, according to the invoices marked Exhibits C and C-2 dated March 13,
1928, and June 19, 1928, respectively, the defendant Cham Samco & Sons, on the

The parties agree on the following facts:

IPL PATENTS

14

dates mentioned, had, in the ordinary course of business, bought of its codefendant
Coo Kun & Sons Hardware Co., 90 plows of the form, type and design of Exhibits
B, B-1 and B-2 which it has been selling in its store on Sto. Cristo Street, Manila.

THIRD ERROR
The trial court erred in rendering judgment in favor of the plaintiff and against the
defendants.

12. That the same defendant Cham Samco & Sons, in the ordinary course of
business, bought on March 17, 1928, of the store "El Progreso" owned by Yao Ki &
Co., of Iloilo, a lot of 50 plows, of the form, type and design of Exhibit B-1, as
shown by Invoice C-1, and that it has been selling them in its store on Sto. Cristo
St., Manila.

FOURTH ERROR
The trial court erred in not dismissing the complaint with costs against the plaintiff.
The evidence shows that Exhibit F is the kind of plows the plaintiff, Angel Vargas,
manufactures, for which Patent No. 1,507,530, Exhibit A, was issued in his favor.
Exhibits B, B-1 and B-2 are samples of the plows which the herein appellants, Coo
Pao and Petronila Chua, have been manufacturing since 1918, and Exhibit 3-Chua
represents the plow for which, on March 12, 1912, the appellee obtained a patent
from the United States Patent Office, which was declared null and void by the
Supreme Court in the case of Vargas vs. F. M. Yap Tico & Co. (40 Phil., 195).

13. That, on September 19, 1928, the defendant Cham Samco & Sons, sold in its
store on Sto. Cristo St., Manila, the plow Exhibit B-1, for the sale of which invoice
Exhibit D was issued.
14. That, on December 20, 1927, the plaintiff herein, through his attorneys
Paredes, Buencamino & Yulo, sent by registered mail to the herein defendant, Coo
Kun & Sons Hardware Co., at Iloilo, the original of the letter Exhibit E, which was
received by it on September 28, 1927, according to the receipt marked Exhibit E-1
attached hereto.

With these facts in view, the principal and perhaps the only question we are called
upon to decide is whether the plow, Exhibit F, constitutes a real invention or an
improvement for which a patent may be obtained, or if, on the contrary, it is
substantially the same plow represented by Exhibit 3-Chua the patent for which
was declared null and void in the aforementioned case of Vargas vs. F. M. Yaptico
& Co., supra.

15. That the plows manufactured by the plaintiff in accordance with his patent,
Exhibit A, are commonly known to the trade in Iloilo, as well as in other parts of the
Philippines, as "Arados Vargas", and that the plaintiff is the sole manufacturer of
said plows. A sample of these plows is presented as Exhibit F.

We have carefully examined all the plows presented as exhibits as well as the
designs of those covered by the patent, and we are convinced that no substantial
difference exists between the plow, Exhibit F, and the plow, Exhibit 3-Chua which
was originally patented by the appellee, Vargas. The only difference noted by us is
the suppression of the bolt and the three holes on the metal strap attached to the
handle bar. These holes and bolt with its nut were suppressed in Exhibit F in which
the beam is movable as in the original plow. The members of this court, with the
plows in view, arrived at the conclusion that not only is there no fundamental
difference between the two plows but no improvement whatever has been made on
the latest model, for the same working and movement of the beam existed in the
original model with the advantage, perhaps, that its graduation could be carried
through with more certainty by the use of the bolt which as has already been
stated, was adjustable and movable.

16. That the document, Exhibit 1-Chua, is a certified copy of the amended
complaint, the decision of the Court of First Instance of Iloilo and that of the
Supreme Court (R. G. No. 14101) in civil case No. 3044 of Iloilo, entitled "Angel
Vargas", plaintiff, vs. F. M. Yaptico & Co., Ltd., defendant", and that Exhibit 2-Chua
et al. is a certified copy of Patent No. 1,020,232, to which the aforementioned
complaint and decision refer, issued in favor of Angel Vargas by the United States
Patent Office on March 12, 1912, and that Exhibit 3-Chua et al., represents the
plow manufactured by Angel Vargas in accordance with his Patent marked Exhibit
2-Chua et al.
The appellants assign the following errors:
FIRST ERROR

As to the fact, upon which much emphasis was laid, that deeper furrows can be
made with the new model, we have seen that the same results can be had with the
old implement.

The trial court erred in declaring that the Vargas plow, Exhibit F (covered by Patent
No. 1,507,530) is distinct from the old model Vargas plow, Exhibit 2-Chua, covered
by the former Patent No. 1,020,232, which had been declared null and void by this
court.

In view of the foregoing, we are firmly convinced that the appellee is not entitled to
the protection he seeks for the simple reason that his plow, Exhibit F, does not
constitute an invention in the legal sense, and because, according to the evidence,
the same type of plows had been manufactured in this country and had been in use

SECOND ERROR
The trial court erred in mistaking the improvement on the plow for the plow itself.
IPL PATENTS

15

in many parts of the Philippine Archipelago, especially in the Province of Iloilo, long
before he obtained his last patent.

Avancea, C.J., Street, Villamor, Ostrand, Villa-Real, Abad Santos, Hull, Vickers
and Butte, JJ., concur.

In the above mentioned case of Vargas vs. F. M. Yaptico & Co., we said:
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." The burden of proof
to substantiate a charge of infringement is with the plaintiff. Where, however, the
plaintiff introduces the patent in evidence, if it is the due form, it affords a prima
facie presumption of its correctness and validity. The decision of the Commissioner
of Patents in granting the patent is always presumed to be correct. The burden
then shifts to the defendant to overcome by competent evidence this legal
presumption. With all due respects, therefore, for the critical and expert
examination of the invention by the United States Patent Office, the question of the
validity of the patent is one for judicial determination, and since a patent has been
submitted, the exact question is whether the defendant has assumed the burden of
proof as to anyone of his defenses. (See Agawan Co. vs. Jordan [1869], 7 Wall.,
583; Blanchard vs. Putnam [1869], 8 Wall., 420; Seymour vs. Osborne [1871], 11
Wall., 516; Reckendorfer vs. Faber [1876], 92 U. S., 347; 20 R. C. L., 1112, 1168,
1169.)
Although we spent some time in arriving at this point, yet, having reached it, the
question in the case is single and can be brought to a narrow compass. Under the
English Statute of Monopolies (21 Jac. Ch., 3), and under the United States Patent
Act of February 21, 1793, later amended to be as herein quoted, it was always the
rule, as stated by Lord Coke, Justice Story and other authorities, that to entitle a
man to a patent, the invention must be new to the world. (Pennock and
Sellers vs. Dialogue [1829], 2 Pet., 1.) As said by the United States Supreme Court,
"it has been repeatedly held by this court that a single instance of public use of the
invention by a patentee of more than two years before the date of his application
for his patent will be fatal to the validity of the patent when issued."
(Worley vs. Lower Tobacco Co. [1882], 104 U. S., 340; McClurg vs. Kingsland
[1843], 1 How., 202; Consolidated Fruit Jar Co. vs. Wright [1877], 94 U. S., 92;
Egbert vs. Lippmann [1881], 104 U. S., 333; Coffin vs. Ogden [1874], 18 Wall., 120;
Manning vs. Cape Ann Isinglass and Glue Co. [1883], 108 U. S., 462;
Andrews vs. Hovey [1887], 123 U. S., 267; Campbell vs.City of New York [1888], 1
L. R. A., 48.)
We repeat that in view of the evidence presented, and particularly of the
examination we have made of the plows, we cannot escape the conclusion that the
plow upon which the appellee's contention is based, does not constitute an
invention and, consequently, the privilege invoked by him is untenable and the
patent acquired by him should be declared ineffective.

VARGAS v CHUA 57 PHIL 784 (defendants Petronila Chua, Coo Pao

and Coo Teng Hee)
FACTS:

The judgment appealed from is hereby reversed and the appellants are absolved
from the complaint, with costs of this instance against the appellee. So ordered.

IPL PATENTS

Angel Vargas, the plaintiff herein, brought this action to

restrain the appellants and the other defendant entity, Cham
16

Samco & Sons, their agents and mandatories, from

continuing the manufacture and sale of plows similar to his
plow described in his patent No. 1,507,530 issued by the
United States Patent Office on September 2, 1924; and to
compel all of said defendants, after rendering an accounting
of the profits obtained by them from the sale of said plows
from September 2, 1924, to pay him damages equivalent to
double the amount of such profits.

validity. The decision of the Commissioner of Patents in granting the

patent is always presumed to be correct. The burden then shifts to the
defendant to overcome by competent evidence this legal presumption.
With all due respects, therefore, for the critical and expert examination of
the invention by the United States Patent Office, the question of the
validity of the patent is one for judicial determination, and since a
patent has been submitted, the exact question is whether the
defendant has assumed the burden of proof as to anyone of his
defenses.

The trial court rendered a judgment in favor of plaintiffs and

against the defendant.

We repeat that in view of the evidence presented, and particularly of the

examination we have made of the plows, we cannot escape the conclusion
that the plow upon which the appellee's contention is based, does not
constitute an invention and, consequently, the privilege invoked by him is
untenable and the patent acquired by him should be declared ineffective.

It appears from the bill of exceptions that Cham Samco &

Sons did not appeal.
The defendants Petronila Chua, Coo Pao and Coo Teng Hee,
appeal from the judgment of the Court of First Instance of
Manila

The judgment appealed from is hereby reversed and the appellants are
absolved from the complaint, with costs of this instance against the
appellee. So ordered.

ISSUE:
Whether the plow, Exhibit F, constitutes a real invention or an improvement
for which a patent may be obtained, or if, on the contrary, it is substantially
the same plow represented by Exhibit 3-Chua the patent for which was
declared null and void in the aforementioned case of Vargas vs. F. M.
Yaptico & Co., supra.
HELD:
The appellee is not entitled to the protection he seeks for the simple
reason that his plow, Exhibit F, does not constitute an invention in the
legal sense, and because, according to the evidence, the same type
of plows had been manufactured in this country and had been in use
in many parts of the Philippine Archipelago, especially in the
Province of Iloilo, long before he obtained his last patent.
In the above mentioned case of Vargas vs. F. M. Yaptico & Co., we said:
FIRST DIVISION

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."
The burden of proof to substantiate a charge of infringement is with the
plaintiff. Where, however, the plaintiff introduces the patent in evidence, if it
is the due form, it affords a prima facie presumption of its correctness and
IPL PATENTS

[G.R. No. 38010. December 21, 1933.]

PATRICK HENRY FRANK and WILLIAM HENRY GOHN, Plaintiffs-Appellants, v.
G. KOSUYAMA,Defendant-Appellee.
17

IMPERIAL, J.:
J. W. Ferrier for Appellants.

Patent No. 1519579 (Exhibit 117) on improvement in hemp stripping machines,

issued by the United States Patent Office on December 16, 1924, and registered in
the Bureau of Commerce and Industry of the Philippine Islands on March 17, 1925,
was the origin of this action brought by the plaintiffs herein who prayed that
judgment be rendered against the defendant, ordering him thereby to refrain
immediately from the manufacture and sale off machines similar to the one covered
by the patent; to render an accounting of the profits realized from the manufacture
and sale of the machines in question; that in case of refusal or failure to render
such accounting, the defendant be ordered to pay the plaintiffs the sum of P60 as
profit on each machine manufactured or sold by him; that upon approval of the
required bond, said defendant be restrained from continuing the manufacture and
sale of the same kind of machines; that after the trial the preliminary injunction
issued therein be declared permanent; and, lastly, that the said defendant be
sentenced to pay the costs and whatever damages the plaintiffs might be able to
prove therein. The action therefore was based upon alleged infringement by the
defendant of the rights patent through the manufacture and sale by the former of
machines similar to that covered by the aforesaid patent.

Pablo Lorenzo for Appellee.

SYLLABUS
1. PATIENT; ESSENTIAL ELEMENTS. Strictly speaking, the hemp stripping
machine of the plaintiffs does not constitute an invention on the ground that it lacks
the element of novelty, originality and precedence (48 C. J., sec. 101, p. 97, and
sec. 102, p. 98).
2. ID.; KNOWLEDGE AND USE BY THE PUBLIC. Before the plaintiffs herein
obtained their patent, they themselves had already publicly used the same kind of
machine for many months, at least, and, various other machines, having in general,
the same characteristics and important parts as that of the said plaintiffs, were
known in the Province of Davao.
3. ID.; ANNULMENT. Notwithstanding all the facts herein stated, the trial court
did not annul the plaintiffs patent and the defendant herein insists that the patent
in question should be declared null and void. In view of the nature of the action
brought by the plaintiffs, annulment does not lie in the absence of a crosscomplaint to that effect.

The plaintiffs appealed from the judgment rendered by the trial court dismissing
their complaint, with costs, as well as the defendants counterclaim of P10,000.
The defendant did not appeal.

4. ID.; INFRINGEMENT. The defendant cannot be made civilly liable for alleged
infringement of the patent on which the action is based on the ground that the
machines manufactured and sold by him did not have any essential part unknown
to the public in the Province of Davao at the time the plaintiffs applied for and
obtained their patent for improved abaca stripping machines.

In their amended complaint, the plaintiffs alleged that their hemp stripping
machines, for which they obtained a patent, have the following characteristics: "A
stripping head, a horizontal table, a stripping knife supported upon such table, a
tapering spindle, a rest holder adjustably secured on the table portion, a lever and
means of compelling the knife to close upon the table, a pallet or rest in the bottom
of the table, a resilient cushion under such pallet or rest." In spite of the fact that
they filed an amended complaint from which the "spindle or conical drum, which
was the only characteristic feature of the machine mentioned in the original
complaint, was eliminated, the plaintiffs insisted that the said part constitutes the
essential differences between the machine in question and other machines and it
was the principal consideration upon which their patent was issued. The said
plaintiffs sustained their contention on this point even in their printed brief and
memorandum filed in this appeal.

5. APPLICABILITY OF THE DOCTRINE OF "STARE DECISIS." The doctrine

laid down in the case of Frank and Gohn v. Benito (51 Phil., 712), to the effect that
the defendant therein had actually infringed upon the patent of the therein plaintiffs
cannot be invoked in this case. It is true that the then plaintiffs in the former and
those in the latter case are the same but the defendant therein did not set up the
special defenses as alleged by the herein defendant. Furthermore, the plaintiffs
therein had only confined themselves to presenting the patent, or rather, a copy
thereof, wherein mention of the "spindle" was made, and this court took for granted
their claim that it was one of the essential characteristics thereof which had been
imitated or copied by the therein defendant.

During the trial, both parties presented voluminous evidence from which the trial
court arrived at the following conclusions:

DECISION
IPL PATENTS

"In considering their machine the plaintiffs did nothing but improve, to a certain
18

degree, those that were already in vogue and in actual use in hemp producing
provinces. It cannot be said that they have invented the spindle inasmuch as
this was already known since the year 1909 or 1910. Neither can it be said that
they have invented the stripping knife and the contrivance which controls the
movement and pressure thereof on the ground that stripping knives together with
their control sets were already in actual use in the different stripping machines long
before their machines appeared. Neither can it be said that they invented the
flywheel because that part or piece thereof, so essential in every machine from
time immemorial, was already known and actually employed in hemp stripping
machines such as those of Riesgo (Exhibit 4-A), Crumb (Exhibit 1-A), Icsiar (Exhibit
A-Suzara), Browne (Exhibit 28-A), McFie, etc., all of which were in use for the
benefit of hemp long before the appearance of the plaintiffs machines in the
market. Much less can it be said that they invented the pedal to raise the knife in
order to allow the hemp to be stripped to pass under it, on the ground that the use
of such contrivance has, likewise, been known since the invention of the most
primitive of hemp stripping machines.

on an invention which resulted in the rejection by the United States Patent Office of
the plaintiffs original application for a patent on the so-called "spindle" or conical
drum which was then in actual use in the Dringman and Icsiar hemp stripping
machines.
Notwithstanding the foregoing facts, the trial court did not decree the annulment of
the plaintiffs patent and the herein defendant-appellee insists that the patent in
question should be declared null and void. We are of the opinion that it would be
improper and untimely to render a similar judgment, in view of the nature of the
action brought by the plaintiffs and in the absence of a cross-complaint to that
effect. For the purposes of this appeal, suffice it to hold that the defendant is not
civilly liable for alleged infringement of the patent in question.
In the light of sound logic, the plaintiffs cannot insists that the "spindle" was a
patented invention on the ground that said part of the machine was voluntarily
omitted by them from their application, as evidenced by the photographic copy
thereof (Exhibit 41) wherein it likewise appears that the patent on Improved Hemp
Stripping Machines was issued minus the "spindle" in question. Were we to stress
to this part of the machine, we would be giving the patent obtained by the plaintiffs
a wider range than it actually has, which is contrary to the principles of
interpretation in matters to patents.

"On the other hand, although the plaintiffs alleged in their original complaint that
the principal and important feature of said machine is a spindle upon which the
hemp to be stripped is wound in the process of stripping, nevertheless, in their
amended complaint of March 3, 1928, which was filed after a portion of the
evidence therein had already been submitted and it was known that the use of the
spindle was nothing new, they still made the allegations appearing in paragraph 3
of their said amended complaint and reproduced on pages 2, 3, 4 and 5 hereof,
copying the same from the application which they filed with the United States
Patent Office, under which they obtained their patent in question. The aforesaid
application clearly shows that what they applied for was not a patent for a
pioneer or primary invention but only for some new and useful improvement
in hemp stripping machines."

In support of their claim the plaintiffs invoke the doctrine laid down by this court in
the case of Frank and Gohn v. Benito (51 Phil., 712), wherein it was held that the
therein defendant really infringed upon the patent of the therein plaintiffs. It may be
noted that the plaintiffs in the former and those in the latter case are the same and
that the patent then involved is the very same one upon which the present action of
the plaintiffs is based. The above-cited case, however, cannot be invoked as a
precedent to justify a judgment in favor of the plaintiffs-appellants on the ground
that the facts in one case are entirely different from those in the other. In the former
case the defendant did not set up the same special defenses as those alleged by
the herein defendant in his answer and the plaintiffs therein confined themselves to
presenting the patent, or rather a copy thereof, wherein the "spindle was
mentioned, and this court took for granted their claim that it was one of the
essential characteristics thereof which was imitated or copied by the then
defendant. Thus it came to pass that the "spindle" in question was insistently
mentioned in the decision rendered on appeal as the essential part of the
plaintiffs machine allegedly imitated by the then defendant. In the case under
consideration, it is obvious that the "spindle" is not an integral part of the machine
patented by the plaintiffs on the ground that it was eliminated from their patent
inasmuch as it was expressly excluded in their application, as evidenced by the
aforesaid Exhibit 41.

We have carefully reviewed the evidence presented and have had the opportunity
of ascertaining the truth of the conclusions above stated. We agree with the trial
court that, strictly speaking, the hemp stripping machine of the plaintiffs does not
constitute an invention on the ground that it lacks the elements of novelty,
originality and precedence (48 C. J., sec. 101, p. 97, and sec. 102, p. 98). In fact,
before the plaintiffs herein obtained their patent, they themselves had already
publicly used the same kind of machine for some months, at least, and, various
other machines, having in general, the same characteristics and important parts as
that of the said plaintiffs, were known in the Province of Davao. Machines known as
Molo, Riesgo, Crumb, Icsiar, Browne and McFie were already known in that locality
and used by the owners of hemp plantations before the machine of the plaintiffs
came into existence. It may also be noted that Adrian de Icsiar applied for a patent
IPL PATENTS

19

difference between the machine in question and other machines and that it was the
principal consideration upon which their patent was issued. The said plaintiffs
sustained their contention on this point even in their printed brief and memorandum
filed in this appeal.

Wherefore, reiterating that the defendant cannot be held civilly liable for alleged
infringement of the patent upon which the present action is based on the ground
that there is no essential part of the machine manufactured and sold by him, which
was unknown to the public in the Province of Davao at the time the plaintiffs
applied for an obtained their patent for improved hemp stripping machines, the
judgment appealed from is hereby affirmed, with costs against the plaintiffsappellants. So ordered.

During the trial, both parties presented voluminous evidence from which the trial
court concluded that in constructing their machine the plaintiffs did nothing but
improve, to a certain degree, those that were already in vogue and in actual us in
hemp producing provinces. It cannot be said that they have invented the "spindle"
inasmuch as this was already known since the year 1909 or 1910. Neither it can be
said that they have invented the stripping knife and the contrivance which controls
the movement and pressure thereof on the ground that stripping knives together
with their control sets were already in actual use in the different stripping machines
long before their machine appeared.

Avancea, C.J., Malcolm, Villa-Real, and Hull, JJ., concur.

FRANK v KOSUYAMA 59 PHIL 206
FACTS:

ISSUE:

Patent on improvement in hemp stripping machines, issued by the United States

Patent Office and registered in the Bureau of Commerce and Industry of the
Philippine, was the origin of this action brought by the plaintiffs herein who prayed
that the judgment be rendered against the defendant, ordering him thereby to
refrain immediately from the manufacture and sale of machines similar to the one
covered by the patent: to render an accounting of the profits realized from the
manufacture and sale of the machines in question; that in case of refusal or failure
to render such accounting, the defendants be ordered to pay the plaintiffs the sum
of P60 as profit on each machine manufactured or sold by him; that upon approval
of the required bond, said defendant be restrained from continuing the manufacture
and sale of the same kind of machines; that after the trial the preliminary injunction
issued therein be declared permanent and, lastly, that the said defendant be
sentenced to pay the costs and whatever damages the plaintiffs might be able to
prove therein. The action therefore was based upon alleged infringement by the
defendant of the rights and privileges acquired by the plaintiffs over the aforesaid
patent through the manufacture and sale by the former of machines similar to that
covered by the aforesaid patent.

Whether there is an infringement on the patents

HELD:
The trial court did not decree the annulment of the plaintiffs' patent and the herein
defendant-appellee insists that the patent in question should be declared null and
void. We are of the opinion that it would be improper and untimely to render a
similar judgment, in view of the nature of the action brought by the plaintiffs and in
the absence of a cross-complaint to that effect. For the purposes of this appeal,
suffice it to hold that the defendant is not civilly liable for alleged infringement of the
patent in question.

The plaintiffs appealed from the judgment rendered by the trial court dismissing
their complaint, with cost, as well as the defendant's counterclaim of P10,000. The
defendant did not appeal.

In the light of sound logic, the plaintiffs cannot insist that the "spindle" was a
patented invention on the ground that said part of the machine was voluntarily
omitted by them from their application, as evidenced by the photographic copy
thereof (Exhibit 41) wherein it likewise appears that the patent on Improved Hemp
Stripping Machines was issued minus the "spindle" in question. Were we to stress
to this part of the machine, we would be giving the patent obtained by the plaintiffs
a wider range than it actually has, which is contrary to the principles of
interpretation in matters relating to patents.

In their amended complaint, the plaintiff alleged that their hemp stripping machines,
for which they obtained a patent, have the following characteristics: "A stripping
head, a horizontal table, a stripping knife supported upon such table, a tappering
spindle, a rest holder adjustably secured on the table portion, a lever and means of
compelling the knife to close upon the table, a pallet or rest in the bottom of the
table, a resilient cushion under such palletor rest." In spite of the fact that they filed
an amended complaint from which the "spindle" or conical drum, which was the
only characteristic feature of the machine mentioned in the original complaint, was
eliminated, the plaintiffs insisted that the said part constitutes the essential

In support of their claim the plaintiffs invoke the doctrine laid down by this court in
the case of Frank and Gohn vs. Benito (51 Phil., 712), wherein it was held that the
therein defendant really infringed upon the patent of the therein plaintiffs. It may be
noted that the plaintiffs in the former and those of the latter case are the same and
that the patent then involved is the very same one upon which the present action of
the plaintiffs is based. The above-cited case, however, cannot be invoked as a
precedent to justify a judgment in favor of the plaintiffs-appellants on the ground
that the facts in one case entirely different from those in the other. In the former
case the defendant did not set up the same special defenses as those alleged by

IPL PATENTS

20

the herein defendant in his answer and the plaintiffs therein confined themselves to
presenting the patent, or rather a copy thereof, wherein the "spindle" was
mentioned, and this court took for granted their claim that it was one of the
essential characteristics thereof which was imitated or copied by the then
defendant. Thus it came to pass that the "spindle" in question was insistently
mentioned in the decision rendered on appeal as the essential part of the plaintiffs'
machine allegedly imitated by the then defendant. In the case under consideration,
it is obvious that the "spindle" is not an integral part of the machine patented by the
plaintiffs on the ground that it was eliminated from their patent inasmuch as it was
expressly excluded in their application, as evidenced by the aforesaid Exhibit 41.
Wherefore, reiterating that the defendant cannot be held civilly liable for alleged
infringement of the patent upon which the present action is based on the ground
that there is no essential part of the machine manufactured and sold by him, which
was unknown to the public in the Province of Davao at the time the plaintiffs
applied for and obtained their patent for improved hemp stripping machines, the
judgment appealed from is hereby affirmed, with the costs against the plaintiffsappellants. So ordered.

Republic of the Philippines

SUPREME COURT
Manila
FIRST DIVISION
G.R. No. L-32160 January 30, 1982
DOMICIANO A. AGUAS, petitioner,
vs.
CONRADO G. DE LEON and COURT OF APPEALS, respondents.

IPL PATENTS

21

FERNANDEZ, J.:

engage the service of counsel, thereby incurring attorney's fees and expenses of
litigation in the sum of P5,000.00. 2

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," the dispositive portion of
which reads:

On April 14, 1962, an order granting the plaintiff's petition for a Writ of Preliminary
Injunction was issued. 3
On May 23, 1962, the defendant Domiciano A. Aguas filed his answer denying the
allegations of the plaintiff and alleging that: the plaintiff 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 in the Philippines
and abroad years before the alleged invention by de Leon; that Letters Patent No.
658 was unlawfully acquired by making it appear in the application in relation
thereto that the process is new and that the plaintiff is the owner of the process
when in truth and in fact the process incorporated in the patent application has
been known and used in the Philippines by almost all tile makers long before the
alleged use and registration of patent by plaintiff Conrado G. de Leon; that the
registration of the alleged invention did not confer any right on the plaintiff because
the registration was unlawfully secured and was a result of the gross
misrepresentation on the part of the plaintiff that his alleged invention is a new and
inventive process; that the allegation of the plaintiff that Patent No. 658 is of great
value to plaintiff and of great benefit to the public is a mere conclusion of the
plaintiff, the truth being that a) the invention of plaintiff is neither inventive nor new,
hence, it is not patentable, b) defendant has been granted valid patents (Patents
No. 108, 109, 110 issued on December 21, 1961) on designs for concrete
decorative wall tiles; and c) that he can not be guilty of infringement because his
products are different from those of the plaintiff.4

WHEREFORE, with the modification that plintiff-applee's award of moral damages

is hereby redured to P3,000.00, the appealed judgment is hereby affirmed, in all
othe respects, with costs against appellants. 1
On April 14, 1962, 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, not patented or described in any printed publication anywhere
before his invention thereof, or more than one year prior to his application for
patent thereof, not patented in any foreign country by him or his legal
representatives on application filed more than one year prior to his application in
this country; that plaintiff has the exclusive license to make, use and sell throughout
the Philippines the improvements set forth in said Patent No. 658; that the invention
patented by said Patent No. 658 is of great utility and of great value to plaintiff and
of great benefit to the public who has demanded and purchased tiles embodying
the said invention in very large quantities and in very rapidly increasing quant ies;
that he has complied with the Philippine statues relating to marking patented tiles
sold by him; that the public has in general acknowledged the validity of said Patent
No. 658, and has respected plaintiff's right therein and thereunder; 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 plaintiff;s 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; that as a result of the defendants' wrongful conduct, plaintiff
has suffered and the defendants are liable to pay him, in addition to actual
damages and loss of profits which would be determined upon proper accounting,
moral and exemplary or corrective damages in the sum of P90,000.00; that plaintiff
has been compelled to go to court for the protection and enforcement of his and to
IPL PATENTS

The trial court rendered a decision dated December 29, 1965, the dispositive
portion of which reads:
WHEREFORE, judgment is hereby rendered in favor of plaintiff and against the
defendants:
1. Declaring plaintiff's patent valid and infringed:
2. Granting a perpetual injunction restraining defendants, their officers, agents,
employees, associates, confederates, and any and all persons acting under their
authority from making and/or using and/or vending tiles embodying said patented
invention or adapted to be used in combination embodying the same, and from
making, manufacturing, using or selling, engravings, castings and devises
designed and intended for use in apparatus for the making of tiles embodying
plaintiff's patented invention, and from offering or advertising so to do, and from
aiding and abetting or in any way contributing to the infringement of said patent;
3. Ordering that each and all of the infringing tiles, engravings, castings and
devices, which are in the possession or under the control of defendants be
delivered to plaintiff;
22

4. Ordering the defendants to jointly and severally pay to the plaintiff the following
sums of money, to wit:

THE TRIAL COURT ERRED IN NOT HOLDING THAT THE DEFENDANT COULD
NEVER BE GUILTY OF INFRINGEMENT OF PLAINTIFF'S PATENT BECAUSE
EVEN IN MATTERS NOT PATENTED BY THE PLAINTIFF - LIKE THE
COMPOSITION AND PROPORTION OF INGREDIENTS USED AND THE
STRUCTURAL DESIGNS OF THE MOULD AND THE TILE PRODUCED - THAT
OF THE DEFENDANT ARE DIFFERENT.

(a) P10,020.99 by way of actual damages;

(b) P50,000.00 by way of moral damages;

VI

(c) P5,000.00 by way of exemplary damages;

THE TRIAL COURT ERRED IN NOT DISMISSING THE COMPLAINT AND IN

HOLDING THE DEFENDANT, INSTEAD OF THE PLAINTIFF, LIABLE FOR
DAMAGES, AND ATTORNEY'S FEES.

(d) P5,000.00 by way of attorney's fees and

(e) costs of suit. 5

On August 5, 1969, the Court of Appeals affirmed the decision of the trial court, with
the modification that plaintiff-appellee's award of moral damages was reduced to
P3,000.00. 7

The defendant Domiciano Aguas appealed to the Court of Appeals, assigning the
following errors. 6
I

The petitioner assigns the following errors supposedly committed by the Court of
Appeals:

THE TRIAL COURT ERRED IN NOT HOLDING THAT PLAINTIFF'S PATENT FOR
THE 'PROCESS OF MAKING MOSAIC PRE-CAST TILE' IS INVALID BECAUSE
SAID ALLEGED PROCESS IS NOT AN INVENTION OR DISCOVERY AS THE
SAME HAS ALREADY LONG BEEN USED BY TILE MANUFACTURERS BOTH
ABROAD AND IN THIS COUNTRY.

It is now respectfully submitted that the Court of Appeals committed the following
errors involving questions of law, to wit:
First error. When it did not conclude that the letters patent of the respondent
although entitled on the cover page as a patent for improvements, was in truth and
in fact, on the basis of the body of the same, a patent for the old and nonpatentable process of making mosaic pre-cast tiles;

II
THE TRIAL COURT ERRED IN HOLDING THAT THE PATENT OF PLAINTIFF IS
VALID BECAUSE IT IS AN IMPROVEMENT OR THE AGE-OLD TILE MAKING
SYSTEM.

Second error. When it did not conclude from the admitted facts of the case,
particularly the contents of the letters patent, Exh. L and the pieces of physical
evidence introduced consisting of samples of the tiles and catalouges, that the
alleged improvements introduced by the respondent in the manufacture of mosaic
pre-cast tiles are not patentable, the same being not new, useful and inventive.

III
THE TRIAL COURT ERRED IN NOT ORDERING THE CANCELLATION OF
PLAINTIFF-APPELLEE'S LETTERS PATENT NO. 658, EXHIBIT L, IN
ACCORDANCE WITH THE PERTINENT PROVISIONS OF THE PATENT LAW,
REPUBLIC ACT 165.

Third error. As a corollary, when it sentenced the herein petitioner to pay the
damages enumerated in the decision of the lower court (Record on Appeal, pp. 7475), as confirmed by it (the Court of Appeals), but with the modification that the
amount of P50,000.00 moral damages was reduced to P3,000.00. 8

IV

The facts, as found by the Court of Appeals, are:

THE TRIAL COURT ERRED IN HOLDING THAT DEFENDANT DOMICIANO A.

AGUAS IS GUILTY OF INFRINGEMENT DESPITE THE FACT THAT PLAINTIFF'S
PATENT IS NOT A VALID ONE.

The basic facts borne out by the record are to the effect that on December 1, 1959
plaintiff-appellee filed a patent application with the Philippine Patent Office, and on
May 5, 1960, said office issued in his favor Letters Patent No. 658 for a "new and
useful improvement in the process of making mosaic pre-cast tiles" (Exh, "L"); that
defendant F.H. Aquino & Sons engraved the moulds embodying plaintiff's patented
improvement for the manufacture of pre-cast tiles, plaintiff furnishing said

IPL PATENTS

23

defendant the actual model of the tiles in escayola and explained to said engraver
the plans, specifications and the details of the engravings as he wanted them to be
made, including an explanation of the lip width, artistic slope of easement and
critical depth of the engraving that plaintiff wanted for his moulds; that engraver
Enrique Aquino knew that the moulds he was engraving for plaintiff were the latter's
very own, which possession the new features and characteristics covered by
plaintiff's parent; that defendant Aguas personally, as a building contractor,
purchased from plaintiff, tiles shaped out of these moulds at the back of which was
imprinted plaintiff's patent number (Exhs., "A" to "E"); that subsequently, through a
representative, Mr. Leonardo, defendant Aguas requested Aquino to make
engravings of the same type and bearing the characteristics of plaintiff's moulds;
that Mr. Aquino knew that the moulds he was asked to engrave for defendant
Aguas would be used to produce cement tiles similar to plaintiff's; that the moulds
which F.H. Aquino & Sons eventually engraved for Aguas and for which it charged
Aguas double the rate it charged plaintiff De Leon, contain the very same
characteristic features of plaintiff's mould and that Aguas used these moulds in the
manufacture of his tiles which he actually put out for sale to the public (Exhs. "1" to
"3" and Exhs. "A" to "E"); that both plaintiff's and defendant Aguas' tiles are
sculptured pre-cast wall tiles intended as a new feature of construction and wag
ornamentation substantially Identical to each other in size, easement, lip width and
critical depth of the deepest depression; and that the only significant difference
between plaintiff's mould and that engraved by Aquino for Aguas is that, whereas
plaintiff's mould turns out tiles 4 x 4 inches in size, defendant Aguas' mould is made
to fit a 4-1/4 x 4-1/4 inch tile. 9

the durability of the finished product preventing the flaking off of the edges. The
easement caused by the inclination of the protrusions of the patented moulds is for
the purpose of facilitating the removal of the newly processed tile from the female
die. Evidently, appellee's improvement consists in the solution to the old critical
problem by making the protrusions on his moulds attain an optimum height, so that
the engraving thereon would be deep enough to produce tiles for sculptured and
decorative purposes, strong optimum thickness of appellee's new tiles of only 1/8 of
an inch at the deepest easement (Exhs. "D" and "D-1") is a most critical feature,
suggestive of discovery and inventiveness, especially considering that, despite said
thinness, the freshly formed tile remains strong enough for its intended purpose.

The patent right of the private respondent expired on May 5, 1977. 10 The errors will
be discuss only to determine the right of said private respondent to damages.

The validily 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.

While it is true that the matter of easement, lip width, depth, protrusions and
depressions are known to some sculptors, still, to be able to produce a new and
useful wall tile, by using them all together, amounts to an invention. More so, if the
totality of all these features are viewed in combination with the Ideal composition of
cement, sodium silicate and screened fine sand.
By using his improved process, plaintiff has succeeded in producing a new product
- a concrete sculptured tile which could be utilized for walling and decorative
purposes. No proof was adduced to show that any tile of the same kind had been
produced by others before appellee. Moreover, it appears that appellee has been
deriving considerable profit from his manufacture and sale of such tiles. This
commercial success is evidence of patentability (Walker on Patents, Dellers
Edition, Vol. I, p. 237). 12

The petitioner questioned the validity of the patent of the private respondent,
Conrado G. de Leon, on the ground that the process, subject of said patent, is not
an invention or discovery, or an improvement of the old system of making tiles. 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 mosaic pre-cast tiles." 11 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.

Anent this matter, the Court of Appeals said:

Appellant has not adduced evidence sufficient to overcome the above established
legal presumption of validity or to warrant reversal of the findings of the lower court
relative to the validity of the patent in question. In fact, as we have already pointed
out, the clear preponderance of evidence bolsters said presumption of validity of
appellee's patent. There is no indication in the records of this case and this Court is
unaware of any fact, which would tend to show that concrete wall tiles similar to
those produced by appellee had ever been made by others before he started
manufacturing the same. In fact, during the trial, appellant was challenged by
appellee to present a tile of the same kind as those produced by the latter, from any
earlier source but, despite the fact that appellant had every chance to do so, he

The Court of Appeals found that the private respondent has introduced an
improvement in the process of tile-making because:
... we find that plaintiff-appellee has introduced an improvement in the process of
tile-making, which proceeds not merely from mechanical skill, said improvement
consisting among other things, in the new critical depth, lip width, easement and
field of designs of the new tiles. The improved lip width of appellee's tiles ensures
IPL PATENTS

24

could not present any. There is, therefore, no concrete proof that the improved
process of tile-making described in appellee's patent was used by, or known to,
others previous to his discovery thereof. 13

The Machuca tiles are different from that of the private respondent. The designs
are embossed and not engraved as claimed by the petitioner. There may be
depressions but these depressions are too shallow to be considered engraved.
Besides, the Machuca tiles are heavy and massive.

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 tilemaking. 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. Some of the novel
features of the private respondent's improvements are the following: critical depth,
with corresponding easement and lip width to such degree as leaves the tile as thin
as 1/8 of an inch at its thinnest portion, Ideal composition of cement and fine river
sand, among other ingredients that makes possible the production of tough and
durable wall tiles, though thin and light; the engraving of deep designs in such a
way as to make the tiles decorative, artistic and suitable for wall ornamentation,
and the fact that the tiles can be mass produced in commercial quantities and can
be conveniently stock-piled, handled and packed without any intolerable incidence
of breakages. 14

There is no similarity between the Pomona Tiles and de Leon's tiles. The Pomona
tiles are made of ceramics. 20The process involved in making cement tiles is
different from ceramic tiles. Cement tiles are made with the use of water, while in
ceramics fire is used. As regards the allegation of the petitioner that the private
respondent copied some designs of Pomona, suffice it to say that what is in issue
here is the process involved in tile making and not the design.
In view of the foregoing, this Court finds that Patent No. 658 was legally issued, the
process and/or improvement being patentable.
Both the trial court and the Court of Appeals found as a fact that the petitioner
Domiciano A. Aguas did infringe de Leon's patent. There is no showing that this
case falls under one of the exceptions when this Court may overrule the findings of
fact of the Court of Appeals. The only issue then to be resolved is the amount of
damages that should be paid by Aguas.

The petitioner also contends that the improvement of respondent is not patentable
because it is not new, useful and inventive. This contention is without merit.

In its decision the Court of Appeals affirmed the amount of damages awarded by
the lower court with the modification that the respondent is only entitled to
P3,000.00 moral damages. 21

The records disclose that de Leon's process is an improvement of the old process
of tile making. The tiles produced from de Leon's process are suitable for
construction and ornamentation, which previously had not been achieved by tiles
made out of the old process of tile making. De Leon's invention has therefore
brought about a new and useful kind of tile. The old type of tiles were usually
intended for floors although there is nothing to prevent one from using them for
walling purposes. These tiles are neither artistic nor ornamental. They are heavy
and massive.

The lower court awarded the following damages: 22

a) P10,020.99 by way of actual damages;
b) P50,000.00 by way of moral damages;
c) P5,000.00 by way of exemplary damages;

The respondent's improvement is indeed inventive and goes beyond the exercise
of mechanical skill. He has introduced a new kind of tile for a new purpose. He has
improved the old method of making tiles and pre-cast articles which were not
satisfactory because of an intolerable number of breakages, especially if deep
engravings are made on the tile. He has overcome the problem of producing
decorative tiles with deep engraving, but with sufficient durability. 15 Durability
inspite of the thinness and lightness of the tile, is assured, provided that a certain
critical depth is maintained in relation to the dimensions of the tile. 16

d) P5,000.00 by way of attomey's fees and

e) Costs of suit
because:
An examination of the books of defendant Aguas made before a Commissioner
reveals that during the period that Aguas was manufacturing and selling tiles similar
to plaintiff's, he made a gross income of P3,340.33, which can be safely be
considered the amount by which he enriched himself when he infringed plaintiff's
patent. Under Sec. 42 of the Patent Law any patentee whose rights have been
infringed is entitled to damages which, according to the circumstances of the case
may be in a sum above the amount found as actual damages sustained provided

The petitioner also claims that changing the design from embossed to engraved
tiles is neither new nor inventive because the Machuca Tile Factory and the
Pomona Tile Manufacturing Company have been manufacturing decorative wall
tiles that are embossed as well as engraved; 17 that these tiles have also depth, lip
width, easement and field of designs; 18 and that the private respondent had copied
some designs of Pomona. 19
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25

the award does not exceed three times the amount of such actual damages.
Considering the wantonness of the infringement committed by the defendants who
knew all the time about the existence of plaintiff's patent, the Court feels there is
reason to grant plaintiff maximum damages in the sum of P10,020.99. And in order
to discourage patent infringements and to give more teeth to the provisions of the
patent law thus promoting a stronger public policy committed to afford greater
incentives and protection to inventors, the Court hereby awards plaintiff exemplary
damages in the sum of P5,000.00 to be paid jointly and severally by defendants.
Considering the status of plaintiff as a reputable businessman, and owner of the
likewise reputed House of Pre-Cast, he is entitled to an award of moral damages in
the sum of P50,000.00. 23

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 Domiciano Aguas 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
pre-cast 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.

In reducing the amount of moral damages the Court of Appeals said:

As regards the question of moral damages it has been shown that as a result of the
unlawful acts of infringment committed by defendants, plaintiff was unstandably
very sad; he worried and became nervous and lost concentration on his work in
connection with his tile business (pp. 28, 30, t.s.n., Feb. 28, 1964). In addition,
plaintiff's character and reputation have been unnecessarily put in question
because defendants, by their acts of infringement have created a doubt or
suspicion in the public mind concerning the truth and honesty of plaintiff's
advertisements and public announcements of his valid patent. Necessarily, said
acts of defendants have caused plaintiff considerable mental suffering, considering
especially, the fact that he staked everything on his pre-cast tile business (p. 36,
t.s.n., Id.) The wantonness and evident bad faith characterizing defendants'
prejudicial acts against plaintiff justify the assessment of moral damages in
plaintiff's favor, though we do not believe the amount of P50,000.00 awarded by the
lower court is warranted by the circumstances. We feel that said amount should be
reduced to P3,000.00 by way of compensating appellee for his moral suffering.
"Willful injury to property may be a legal ground for awarding moral damages if the
court should find that, under the circumstances such damages are justly due" (Art.
2219 NCC).

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:
Yes. x x x 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.

There is no reason to reduce the amount of damages and attorneys fees awarded
by the trial court as modified by the Court of Appeals.

AGUAS v DE LEON 111 SCRA 238

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.

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.

SO ORDERED.
Aguas vs. De Leon 111 SCRA 238 (1982)
FACTS:
This is a petition for certiorari to review the decision of the Court of Appeals.
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26

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 plaintiff;s 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.

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:

Republic of the Philippines

SUPREME COURT
Manila

The validily 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.

FIRST DIVISION
G.R. No. 113388 September 5, 1997
ANGELITA MANZANO, petitioner,
vs.
COURT OF APPEALS, and MELECIA MADOLARIA, as Assignor to NEW
UNITED FOUNDRY MANUFACTURING CORPORATION, respondents.

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 tilemaking. 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.

BELLOSILLO, J.:
The primary purpose of the patent system is not the reward of the individual but the
advancement of the arts and sciences. The function of a patent is to add to the sum
of useful knowledge and one of the purposes of the patent system is to encourage
dissemination of information concerning discoveries and inventions. This is a
matter which is properly within the competence of the Patent Office the official
action of which has the presumption of correctness and may not be interfered with
in the absence of new evidence carrying thorough conviction that the Office has
erred. Since the Patent Office is an expert body preeminently qualified to determine

In view of the foregoing, this Court finds that Patent No. 658 was legally issued, the
process and/or improvement being patentable.

IPL PATENTS

27

questions of patentability, its findings must be accepted if they are consistent with
the evidence, with doubts as to patentability resolved in favor of the Patent Office. 1

cup of an imported "Ransome" burner marked Exh "M" which was allegedly existing
even before the patent application of private respondent.

Petitioner Angelita Manzano filed with the Philippine Patent Office on 19 February
1982 an action for the cancellation of Letters Patent No. UM-4609 for a gas burner
registered in the name of respondent Melecia Madolaria who subsequently
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 gas burner, 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 Melecia
Madolaria 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. In support of her petition for cancellation petitioner further
alleged that (a) the utility model covered by the letters patent of respondent had
been known or used by others in the Philippines for more than one (1) year before
she filed her application for letters patent on 9 December 1979; (b) the products
which were produced in accordance with the utility model covered by the letters
patent had been in public use or on sale in the Philippines for more than one (1)
year before the application for patent therefor was filed.

Petitioner presented two (2) other witnesses, namely, her husband Ong Bun Tua
and Fidel Francisco. Ong testified that he worked as a helper in the UNITED
FOUNDRY from 1965 to 1970 where he helped in the casting of LPG burners with
the same form, configuration and mechanism as that of the model covered by the
Letters Patent issued to private respondent. Francisco testified that he had been
employed with the Manila Gas Corporation from 1930 to 1941 and from 1952 up to
1969 where he retired as supervisor and that Manila Gas Corporation imported
"Ransome" burners way back in 1965 which were advertised through brochures to
promote their sale.
Private respondent, on the other hand, presented only one witness, Rolando
Madolaria, who testified, among others, that he was the General Supervisor of the
UNITED FOUNDRY in the foundry, machine and buffing section; that in his early
years with the company, UNITED FOUNDRY was engaged in the manufacture of
different kinds of gas stoves as well as burners based on sketches and
specifications furnished by customers; that the company manufactured early
models of single-piece types of burners where the mouth and throat were not
detachable; that in the latter part of 1978 respondent Melecia Madolaria confided in
him that complaints were being brought to her attention concerning the early
models being manufactured; that he was then instructed by private respondent to
cast several experimental models based on revised sketches and specifications;
that private respondent again made some innovations; that after a few months,
private respondent discovered the solution to all the defects of the earlier models
and, based on her latest sketches and specifications, he was able to cast several
models incorporating the additions to the innovations introduced in the models.
Various tests were conducted on the latest model in the presence and under the
supervision of Melecia Madolaria and they obtained perfect results. Rolando
Madolaria testified that private respondent decided to file her application for utility
model patent in December 1979.

Petitioner presented the following documents which she correspondingly marked

as exhibits: (a) affidavit of petitioner alleging the existence of prior art, marked Exh.
"A;" (b) a brochure distributed by Manila Gas Corporation disclosing a pictorial
representation of Ransome Burner made by Ransome Torch and Burner Company,
USA, marked Exh. "D;" and, (c) a brochure distributed by Esso Gasul or Esso
Standard Eastern, Inc., of the Philippines showing a picture of another similar
burner with top elevation view and another perspective view of the same burner,
marked Exh. "E."
Testifying for herself petitioner narrated that her husband Ong Bun Tua worked as a
helper in the UNITED FOUNDRY where respondent Melecia Madolaria 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 for which Letters Patent No. UM-4609
was issued, and that after her husband's separation from the shop she organized
Besco Metal Manufacturing (BESCO METAL, 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 in evidence
an alleged model of an LPG burner marked Exh. "K" and covered by the Letters
Patent of respondent, and testified that it was given to her in January 1982 by one
of her customers who allegedly acquired it from UNITED FOUNDRY. Petitioner also
presented in evidence her own model of an LPG burner called "Ransome" burner
marked Exh. "L," which was allegedly manufactured in 1974 or 1975 and sold by
her in the course of her business operation in the name of BESCO METAL.
Petitioner claimed that this "Ransome" burner (Exh. "L") had the same
configuration and mechanism as that of the model which was patented in favor of
private respondent Melecia Madolaria. Also presented by petitioner was a burner
IPL PATENTS

On 7 July 1986 the Director of Patents Cesar C. Sandiego issued Decision No. 8656 denying the petition for cancellation and holding that the evidence of petitioner
was not able to establish convincingly that the patented utility model of private
respondent was anticipated. Not one of the various pictorial representations of
business clearly and convincingly showed that the devices presented by petitioner
was identical or substantially identical with the utility model of the respondent. The
decision also stated that even assuming that the brochures depicted clearly each
and every element of the patented gas burner device so that the prior art and
patented device became identical although in truth they were not, they could not
serve as anticipatory bars for the reason that they were undated. The dates when
they were distributed to the public were not indicated and, therefore, were useless
prior art references. The records and evidence also do not support the petitioner's
contention that Letters Patent No. UM-4609 was obtained by means of fraud and/or
misrepresentation. No evidence whatsoever was presented by petitioner to show
that the then applicant Melecia Madolaria withheld with intent to deceive material
28

facts which, if disclosed, would have resulted in the refusal by the Philippine Patent
Office to issue the Letters Patent under inquiry.

respondent. Petitioner faults the Court of Appeals for disregarding the testimonies
of Ong Bun Tua and Fidel Francisco for their failure to produce documents on the
alleged importation by Manila Gas Corporation of "Ransome" burners in 1965
which had the same configuration, form and mechanism as that of the private
respondent's patented model.

Petitioner elevated the decision of the Director of Patents to the Court of Appeals
which on 15 October 1993 affirmed the decision of the Director of Patents. Hence,
this petition for review on certiorari alleging that the Court of Appeals erred (a) in
relying on imaginary differences which in actuality did not exist between the model
of private respondent covered by Letters Patent No. UM-4609 and the previously
known model of Esso Standard Eastern, Inc., and Manila Gas Corporation, making
such imaginary differences grounded entirely on speculation, surmises and
conjectures; (b) in rendering judgment based on misapprehension of facts; (c) in
relying mainly on the testimony of private respondent's sole witness Rolando
Madolaria; and, (d) in not cancelling Letters Patent No. UM-4609 in the name of
private respondent.

Finally, it is argued that the testimony of private respondent's lone witness Rolando
Madolaria should not have been given weight by the Patent Office and the Court of
Appeals because it contained mere after-thoughts and pretensions.
We cannot sustain petitioner. Section 7 of RA No. 165, as amended, which is the
law on patents, expressly provides
Sec. 7. Inventians patentable. Any invention of a new and useful machine,
manufactured product or substance, process or an improvement of any of the
foregoing, shall be patentable.

Petitioner submits that the differences cited by the Court of Appeals between the
utility model of private respondent and the models of Manila Gas Corporation and
Esso Standard Eastern, Inc., are more imaginary than real. She alleges that based
on Exhs. "E," "E-1," "F" and "F-1" or the brochures of Manila Gas Corporation and
Esso Standard Eastern, Inc., presented by petitioner, the cup-shaped burner mouth
and threaded hole on the side are shown to be similar to the utility model of private
respondent. The exhibits also show a detachable burner mouth having a plurality of
upwardly existing undulations adopted to act as gas passage when the cover is
attached to the top of said cup-shaped mouth all of which are the same as those in
the patented model. Petitioner also denies as substantial difference the short
cylindrical tube of the burner mouth appearing in the brochures of the burners
being sold by Manila Gas Corporation and the long cylindered tube of private
respondent's model of the gas burner.

Further, Sec. 55 of the same law provides

Sec. 55. 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 relate to patents for inventions insofar as they are applicable except as
otherwise herein provided.

Petitioner argues that the actual demonstration made during the hearing disclosed
the similarities in form, operation and mechanism and parts between the utility
model of private respondent and those depicted in the brochures. The findings of
the Patent Office and the Court of Appeals that the brochures of Manila Gas
Corporation and Esso Standard Eastern, Inc., are undated cannot overcome the
fact of their circulation before private respondent filed her application for utility
model patent. Petitioner thus asks this Court to take judicial notice of the fact that
Esso Standard Eastern, Inc., disappeared before 1979 and reappeared only during
the Martial Law years as Petrophil Corporation. Petitioner also emphasizes that the
brochures indicated the telephone number of Manila Gas Corporation as 5-79-81
which is a five (5) numbered telephone number existing before 1975 because
telephones in Metro Manila started to have six (6) numbers only after that year.

The element of novelty is an essential requisite of the patentability of an invention

or discovery. If a device or process has been known or used by others prior to its
invention or discovery by the applicant, an application for a patent therefor should
be denied; and if the application has been granted, the court, in a judicial
proceeding in which the validity of the patent is drawn in question, will hold it void
and ineffective. 2 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 the protection the invention must be new to the world. 3
In issuing Letters Patent No. UM-4609 to Melecia Madolaria for an "LPG Burner"
on 22 July 1981, the Philippine Patent Office found her invention novel and
patentable. The issuance of such patent creates a presumption which yields only to
clear and cogent evidence that the patentee was the original and first inventor. The
burden of proving want of novelty is on him who avers it and the burden is a heavy
one which is met only by clear and satisfactory proof which overcomes every
reasonable doubt. 4 Hence, a utility model shall not be considered "new" if before
the application for a patent it has been publicly known or publicly used in this
country or has been described in a printed publication or publications circulated

Petitioner further contends that the utility model of private respondent is absolutely
similar to the LPG burner being sold by petitioner in 1975 and 1976, and also to the
"Ransome" burner depicted in the old brochures of Manila Gas Corporation and
Esso Standard Eastern, Inc., fabricated by Ransome Torch and Burner Company of
Oakland, California, USA, especially when considered through actual physical
examination, assembly and disassembly of the models of petitioner and private
IPL PATENTS

29

within the country, or if it is substantially similar to any other utility model so known,
used or described within the country. 5

determining whether Exh. "L" was really manufactured before the filing of the
aforesaid application which matured into Letters Patent No. UM-4609, subject
matter of the cancellation proceeding.

As found by the Director of Patents, the standard of evidence sufficient to

overcome the presumption of legality of the issuance of UM-4609 to respondent
Madolaria was not legally met by petitioner in her action for the cancellation of the
patent. Thus the Director of Patents explained his reasons for the denial of the
petition to cancel private respondent's patent

At this juncture, it is worthwhile to point out that petitioner also presented Exh. "M"
which is the alleged burner cup of an imported "Ransome" burner. Again, this Office
finds the same as unreliable evidence to show anticipation. It observed that there is
no date indicated therein as to when it was manufactured and/or imported before
the filing of the application for issuance of patent of the subject utility model. What
is more, some component parts of Exh. "M" are missing, as only the cup was
presented so that the same could not be compared to the utility model (subject
matter of this case) which consists of several other detachable parts in combination
to form the complete LPG burner.

Scrutiny of Exhs. "D" and "E" readily reveals that the utility model (LPG Burner) is
not anticipated. Not one of the various pictorial representations of burners clearly
and convincingly show that the device presented therein is identical or substantially
identical in construction with the aforesaid utility model. It is relevant and material to
state that in determining whether novelty or newness is negatived by any prior art,
only one item of the prior art may be used at a time. For anticipation to occur, the
prior art must show that each element is found either expressly or described or
under principles of inherency in a single prior art reference or that the claimed
invention was probably known in a single prior art device or practice. (Kalman v.
Kimberly Clark, 218 USPQ 781, 789)

xxx xxx xxx

It must likewise be pointed out that Ong Bun Tua testified on the brochures
allegedly of Manila Gas and of Esso Gasul marked Exhs. "E" and "F" and on the
alleged fact that Manila Gas Corporation was importing from the United States
"Ransome" burners. But the same could not be given credence since he himself
admitted during cross-examination that he has never been connected with Manila
Gas Corporation. He could not even present any importation papers relating to the
alleged imported ransome burners. Neither did his wife. 6

Even assuming gratia arguendi that the aforesaid brochures do depict clearly on all
fours each and every element of the patented gas burner device so that the prior
art and the said patented device become identical, although in truth they are not,
they cannot serve as anticipatory bars for the reason that they are undated. The
dates when they were distributed to the public were not indicated and, therefore,
they are useless prior art references.

The above findings and conclusions of the Director of Patent were reiterated and
affirmed by the Court of Appeals. 7
The validity of the patent issued by the Philippine Patent Office in favor of private
respondent and the question over the inventiveness, novelty and usefulness of the
improved model of the LPG burner are matters which are better determined by the
Patent Office. The technical staff of the Philippine Patent Office composed of
experts in their field has by the issuance of the patent in question accepted private
respondent's model of gas burner as a discovery. There is a presumption that the
Office has correctly determined the patentability of the model 8 and such action
must not be interfered with in the absence of competent evidence to the contrary.

xxx xxx xxx

Furthermore, and more significantly, the model marked Exh. "K" does not show
whether or not it was manufactured and/or cast before the application for the
issuance of patent for the LPG burner was filed by Melecia Madolaria.
With respect to Exh. "L," petitioner claimed it to be her own model of LPG burner
allegedly manufactured sometime in 1974 or 1975 and sold by her in the course of
her business operation in the name of Besco Metal Manufacturing, which burner
was denominated as "Ransome" burner

The rule is settled that the findings of fact of the Director of Patents, especially
when affirmed by the Court of Appeals, are conclusive on this Court when
supported by substantial evidence. Petitioner has failed to show compelling
grounds for a reversal of the findings and conclusions of the Patent Office and the
Court of Appeals.

xxx xxx xxx

But a careful examination of Exh. "L" would show that it does not bear the word
"Ransome" which is the burner referred to as the product being sold by the
Petitioner. This is not the way to prove that Exh. "L" anticipates Letters Patent No.
UM-4609 through Exhs. "C" and "D." Another factor working against the Petitioner's
claims is that an examination of Exh. "L" would disclose that there is no indication
of the time or date it was manufactured. This Office, thus has no way of
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The alleged failure of the Director of Patents and the Court of Appeals to accord
evidentiary weight to the testimonies of the witnesses of petitioner showing
anticipation is not a justification to grant the petition. Pursuant to the requirement of
clear and convincing evidence to overthrow the presumption of validity of a patent,
it has been held that oral testimony to show anticipation is open to suspicion and if
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uncorroborated by cogent evidence, as what occurred in this case, it may be held

insufficient. 9

HELD:No. The issuance of such patent creates a presumption which yields only to
clear and cogent evidence that the patentee was the original and first inventor. The
burden of proving want of novelty is on him who avers it and the burden is a heavy
one which is met only by clear and satisfactory proof which overcomes every
reasonable doubt. Clearly enough, the petitioner failed to present clear and
satisfactory proof to overcome every reasonable doubt to afford the cancellation of
the patent to the private respondent.

Finally, petitioner would want this Court to review all over again the evidence she
presented before the Patent Office. She argues that contrary to the decision of the
Patent Office and the Court of Appeals, the evidence she presented clearly proves
that the patented model of private respondent is no longer new and, therefore,
fraud attended the acquisition of patent by private respondent.
It has been held that the question on priority of invention is one of fact. Novelty and
utility are likewise questions of fact. The validity of patent is decided on the basis of
factual inquiries. Whether evidence presented comes within the scope of prior art is
a factual issue to be resolved by the Patent Office. 10 There is question of fact when
the doubt or difference arises as to the truth or falsehood of alleged facts or when
the query necessarily invites calibration of the whole evidence considering mainly
the credibility of witnesses, existence and relevance of specific surrounding
circumstances, their relation to each other and to the whole and the probabilities of
the situation. 11

MANZANO v CA 278 SCRA 688

The primary purpose of the patent system is not the reward of the individual but the
advancement of the arts and sciences. The function of a patent is to add to the
sum of useful knowledge and one of the purposes of the patent system is to
encourage dissemination of information concerning discoveries and inventions.

Time and again we have held that it is not the function of the Supreme Court to
analyze or weigh all over again the evidence and credibility of witnesses presented
before the lower tribunal or office. The Supreme Court is not a trier of facts. Its
jurisdiction is limited to reviewing and revising errors of law imputed to the lower
court, its findings of fact being conclusive and not reviewable by this Court.

FACTS:
Angelita Manzano filed PPO an action for the cancellation of Letters Patent for a
gas burner registered in the name of respondent Melecia Madolaria who
subsequently 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 gas
burner, 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 Melecia Madolaria 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.

WHEREFORE, the Petition is DENIED. The Decision of the Court of Appeals

affirming that of the Philippine Patent Office is AFFIRMED. Costs against petitioner.
SO ORDERED.
Vitug, Kapunan and Hermosisima, Jr., JJ., concur.
ANGELITA MANZANO vs CA
FACTS:The petitioner filed an action for the cancellation of Letters of Patent
covering a gasburner registered in the name of responded Melecia Madolaria who
subsequently assigned theletter of patent to United Foundry. Petitioner alleged that
the private respondent was not theoriginal, true and actual inventor nor did she
derive her rights from the original, true and actualinventor of the utility model
covered by the letter of patent; further alleged that the utilitymodel covered by the
subject letter of patent had been known or used by others in the Philippines for
than one (1) year before she filed her application for letter of patent on Dec1979.
For failure to present substantive proof of her allegations, the lower court and Court
of Appeals denied the action for cancellation. Hence, the present petition.

Testifying for herself petitioner narrated that her husband Ong Bun Tua worked as a
helper in the UNITED FOUNDRY where respondent Melecia Madolaria 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 (BESCO
METAL, 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.

ISSUE:Whether or not the respondent court wrongfully denied the cancellation of

letter of patent registered under the private respondent.
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Private respondent, on the other hand, presented only one witness, Rolando
Madolaria, who testified, among others, that he was the General Supervisor of the
UNITED FOUNDRY.
Director of Patents Cesar C. Sandiego denied the petition for cancellation and
holding that the evidence of petitioner was not able to establish convincingly that
the patented utility model of private respondent was anticipated.
Petitioner elevated the decision of the Director of Patents to the Court of Appeals
which affirmed the decision of the Director of Patents. Hence, this petition for
review on certiorari.

ISSUE:
Whether the dismissal is proper where the patent applied for has no substantial
difference between the model to be patented and those sold by petitioner.
HELD:
The element of novelty is an essential requisite of the patentability of an invention
or discovery. If a device or process has been known or used by others prior to its
invention or discovery by the applicant, an application for a patent therefor should
be denied; and if the application has been granted, the court, in a judicial
proceeding in which the validity of the patent is drawn in question, will hold it void
and ineffective. 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 the protection the invention must be new to the world.
However, The validity of the patent issued by the Philippine Patent Office in favor of
private respondent and the question over the inventiveness, novelty and usefulness
of the improved model of the LPG burner are matters which are better determined
by the Patent Office. The technical staff of the Philippine Patent Office composed
of experts in their field has by the issuance of the patent in question accepted
private respondents model of gas burner as a discovery. There is a presumption
that the Office has correctly determined the patentability of the model and such
action must not be interfered with in the absence of competent evidence to the
contrary.
The rule is settled that the findings of fact of the Director of Patents, especially
when affirmed by the Court of Appeals, are conclusive on this Court when
supported by substantial evidence. Petitioner has failed to show compelling
grounds for a reversal of the findings and conclusions of the Patent Office and the
Court of Appeals. Petition DISMISSED.

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