CASE DIGEST

PATENTS

GROUP MEMBERS:
Acosta, Larrie Leigh Ann R.
Agres, Phoebe Mae A.
Amurao, Marc Clarence M.
Andal, Norilyn
Bautista, Junmar
Bautista, Mary Rose D.
Bergancia, Marizbeth
Cabuyadao, Dona Bless B.
Fermin, Irene
Gondran, Ishtar
Magpusao, Jose Oscar C.
Martin, Noliza R.
Mestica, Christine
Pascual, Crisfel A.
Torrente, Rosette

Submitted to:
ATTY. JIMMY I. PERU, MBM, CPA

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 Table of Contents

PATENTS --------------------------------------------------------------------------------------------------------------------- 3

Pearl Dean (Phil.) Inc. Vs Shoemart, Inc., G.R. No. 148222, 15 August 2003 ------------------------------------------ 3

PATENTATABLE INVENTIONS --------------------------------------------------------------------------------------- 7

Vargas Vs. Chua., G.R. No. L-36650, January 27, 1933 --------------------------------------------------------------------- 7

Manzano vs. CA, G.R. No. 113388, 5 September 1997 ---------------------------------------------------------------------- 9

Aguas vs. De leon, G.R. No. L-32160, 30 January 1982-------------------------------------------------------------------- 13

LIMITATIONS OF PATENT RIGHTS ------------------------------------------------------------------------------ 17

Roma Drug & Romeo Rodriguez vs. RTC, et al, G.R. No. 149907, 16 April 2009 ----------------------------------- 17

PATENT INFRINGEMENT -------------------------------------------------------------------------------------------- 19

Creser Precision Systems, Inc. vs. CA, G.R. No 118708, 2 February 1998 --------------------------------------------- 19

TESTS IN PATENT INFRINGEMENT ------------------------------------------------------------------------------ 22

A.LITERAL INFRINGEMENT ---------------------------------------------------------------------------------------- 22

Godines vs. CA, G.R. No. 97343, 13 September 1993 ---------------------------------------------------------------------- 22

B.DOCTRINE OF EQUIVALENTS ----------------------------------------------------------------------------------- 25

Smith Kline Beckman Corp. vs. CA, G.R. No. 126627, 14 August 2003 ----------------------------------------------- 25

COMPULSORY LICENSING ------------------------------------------------------------------------------------------ 28

Smith Kline & French, Ltd. vs. CA, G.R. No 121267, 23 October 2001 ------------------------------------------------ 28

Parke Davies & Co. vs. Doctors Pharmaceuticals, Inc., G.R. No. L-22221, 31 August 1965------------------------ 30

UTILITY MODELS ------------------------------------------------------------------------------------------------------ 32

Ching vs. Salinas, Sr., G.R. No. 161295, 9 June 2005 ---------------------------------------------------------------------- 32

Del Rosario vs. CA, G.R. No. 115106, 15 March 1996 --------------------------------------------------------------------- 34

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PATENTS
Pearl Dean (Phil.) Inc. Vs Shoemart, Inc., G.R. No. 148222, 15 August 2003

CASE TITLE: Pearl Dean (Phil.) Inc. vs Shoemart, Inc., G.R. No. 148222, 15 August 2003

PONENTE:CORONA, J.

TOPIC: Patent

DOCTRINES:

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

FACTS:

Pearl & Dean is the owner of a copyright over light boxes, which are marketed under the trademark “Poster Ads.”
Pearl was employing Metro Industrial Services to manufacture its advertising displays.

In 1985, Pearl negotiated with SMI for the lease and installation of the light boxes in SM Cubao and SM Makati.
But, SMI later wanted the rescission of contract which Pearl opposed. Two years later, SMI engaged Metro
Industrial, and EYD thereafter.

Pearl later received reports that exact copies of its light boxes bearing the mark “Poster Ads” were installed in the
malls. Hence, Pearl demanded for removal and discontinuation of the use thereof, which the defendants heeded.
Unsatisfied, Pearl filed the case for infringement of trademark and copyright, unfair competition and damages.

SMI maintained that it independently developed its poster panels using commonly known techniques and available
technology, without notice of or reference to Pearl & Dean’s copyright.

SMI noted that the registration of the mark Poster Ads was only for stationeries such as letterheads, envelopes, and
the like. Besides, according to SMI, the word Poster Ads is a generic term which cannot be appropriated as a
trademark, and, as such, registration of such mark is invalid. It also stressed that Pearl & Dean is not entitled to the
reliefs prayed for in its complaint since its advertising display units contained no copyright notice, in violation of
Section 27 of P.D. 49.

PETITIONER’S CONTENTION:

Pearl & Dean, contended that it was the original creator and rightful owner of a unique advertising system called
the Lighted Indoor Display Panel (LIDP), which involved the use of illuminated lightboxes installed in shopping
malls for advertising purposes. The company claimed that after entering into a lease agreement with Shoemart (SM)
for the installation of these lightboxes in SM malls—a deal that later fell through—SM and its affiliate, North Edsa
Marketing, Inc. (NEMI), unlawfully replicated the concept. Pearl & Dean alleged that SM and NEMI copied the
lightbox design and began installing and commercially exploiting similar advertising panels in their malls without
authorization. As a result, Pearl & Dean filed suit for copyright infringement, arguing that their technical drawings
and design were protected under copyright law. They also claimed trademark infringement, asserting that the term

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“LIDP” and the lightbox design had become associated with their brand. Additionally, they accused SM and NEMI
of unfair competition, alleging that the respondents had passed off their advertising system as that of Pearl & Dean’s,
thereby misleading the public and benefiting unjustly from Pearl & Dean’s innovation and reputation. The petitioner
sought to stop the use of the lightboxes and demanded damages for the unauthorized use and alleged
misappropriation of their advertising concept.

RESPONDENT’S CONTENTION:

Respondents, Shoemart, Inc. (SM) and North Edsa Marketing, Inc. (NEMI), denied all allegations of intellectual
property infringement and unfair competition raised by the petitioner. Their primary contention was that they did
not copy Pearl & Dean’s advertising system or design. They argued that the lighted display panels they installed in
their malls were developed independently, using common industry knowledge and widely available materials
and methods. According to the respondents, the concept of using illuminated panels for advertising was neither
new nor unique, and therefore, not exclusive to Pearl & Dean.

Shoemart further emphasized that Pearl & Dean did not hold any patent over the lightbox system, and thus, the
functional and utilitarian aspects of the panels were open to public use and not entitled to exclusive protection. They
also pointed out that the term “Lighted Indoor Display Panel (LIDP)” was a generic and descriptive label, not a
distinctive or registered trademark, and therefore not capable of trademark protection. Regarding the claim of
copyright infringement, the respondents asserted that they did not use or reproduce Pearl & Dean’s technical
drawings, and thus, there was no copying of any protected expression.

In addressing the allegation of unfair competition, SM and NEMI argued that there was no intent to deceive or
defraud the public or to pass off their products as those of the petitioner. They maintained that their advertising
panels were clearly marked as SM property and were not marketed or presented in any way as being affiliated with
Pearl & Dean. In essence, the respondents claimed that the petitioner’s assertions lacked both legal and factual
basis, as the functional nature of the lightboxes excluded them from copyright protection, and no valid trademark
or patent rights were ever secured by Pearl & Dean.

RULING OF THE REGIONAL TRIAL COURT

Regional Trial Court (RTC) initially ruled in favor of the petitioner, Pearl & Dean.

The RTC held that Shoemart and its affiliate, North Edsa Marketing, Inc. (NEMI), had infringed on Pearl &
Dean’s copyright by copying the design of the lighted indoor display panels (LIDPs) that Pearl & Dean had
developed. The court concluded that the technical drawings submitted by Pearl & Dean were protected under
copyright law, and that the actual lightboxes installed by SM and NEMI substantially resembled those drawings.
Therefore, the RTC found that there had been unauthorized reproduction of a copyrighted work.

Moreover, the RTC also found the respondents liable for unfair competition, reasoning that SM and NEMI’s use
of similar advertising panels in their malls could mislead the public into believing that the panels were connected
with Pearl & Dean. The court held that this created confusion in the marketplace and allowed the respondents to
unjustly benefit from the reputation and investment of Pearl & Dean.

As a result, the RTC ordered SM and NEMI to pay damages to Pearl & Dean and to cease the use of the disputed
advertising panels. However, this ruling was later reversed by the Court of Appeals, and the Supreme Court
ultimately upheld the appellate court’s decision, clearing Shoemart and NEMI of any liability.

RULING OF THE CA:

Court of Appeals (CA) reversed the ruling of the Regional Trial Court (RTC), which had earlier found in favor
of Pearl & Dean. The CA ruled in favor of Shoemart, Inc. and North Edsa Marketing, Inc., dismissing the claims
of copyright infringement, trademark infringement, and unfair competition.

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The CA held that Pearl & Dean's lighted display panels were not protected under copyright law, except for the
technical drawings, which are considered pictorial illustrations. However, the actual lightboxes themselves were
deemed functional objects, and as such, not eligible for copyright protection. The Court emphasized the principle
that copyright law does not extend to ideas, systems, methods, or functional articles—only to the artistic
expression of such ideas (e.g., drawings or designs), and there was no proof that Shoemart copied those specific
drawings.

On the issue of trademark, the CA found that the term “Lighted Indoor Display Panel” (LIDP) was generic and
descriptive, and not registered as a trademark. Therefore, it was not entitled to protection, as it lacked the
distinctiveness required under trademark law.

As for unfair competition, the CA ruled that there was no fraudulent intent or deliberate attempt on the part of
Shoemart or NEMI to deceive the public or to pass off their advertising panels as those of Pearl & Dean. Since there
was no proof of bad faith or confusion caused to the public, the claim for unfair competition was dismissed.

In summary, the CA concluded that Pearl & Dean had no valid intellectual property rights—whether under
copyright, trademark, or patent law—to enforce against the respondents. The Supreme Court later affirmed this
CA ruling.

ISSUES:

(1) Was there copyright infringement?

(2) Can the defendants be held liable for
patent infringement?
(3) Was there trademark infringement?
(4) Can defendants be held liable for unfair
competition?

SUPREME COURT RULING:

(1) There was no copyright infringement. Pearl’s copyright over the engineering drawings does NOT extend ipso
facto to the light boxes depicted or illustrated in said drawings. The copyright was limited to the drawings alone
and not to the light box itself. Copyright, in the strict sense of the term, is purely a statutory right. Being a mere
statutory grant, the rights are limited to what the statute confers. It may be obtained and enjoyed only with respect
to the subjects and by the persons, and on terms and conditions specified in the statute. Accordingly, it can cover
only the works falling within the statutory enumeration or description.

Pearl secured its copyright under the classification class O work. This being so, petitioners copyright protection
extended only to the technical drawings and not to the light box itself because the latter was not at all in the category
of prints, pictorial illustrations, advertising copies, labels, tags and box wraps. What the law does not include, it
excludes, and for the good reason: the light box was not a literary or artistic piece which could be copyrighted under
the copyright law. During the trial, the president of Pearl admitted that the light box was neither a literary not an
artistic work but an engineering or marketing invention.

(2) For some reason or another, petitioner never secured a patent for the light boxes. It therefore acquired no patent
rights which could have protected its invention, if in fact it really was. And because it had no patent, petitioner
could not legally prevent anyone from manufacturing or commercially using the contraption. There can be no
infringement of a patent until a patent has been issued, since whatever right one has to the invention covered by the
patent arises alone from the grant of patent.

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To be able to effectively and legally preclude others from copying and profiting from the invention, a patent is a
primordial requirement. No patent, no protection. The ultimate goal of a patent system is to bring new designs and
technologies into the public domain through disclosure. Ideas, once disclosed to the public without the protection
of a valid patent, are subject to appropriation without significant restraint.

(3) P & D was able to secure a trademark certificate for it, but one where the goods specified were stationeries such
as letterheads, envelopes, calling cards and newsletters. Petitioner admitted it did not commercially engage in or
market these goods. On the contrary, it dealt in electrically operated backlit advertising units and the sale of
advertising spaces thereon, which, however, were not at all specified in the trademark certificate.

The certificate of registration issued by the Director of Patents can confer (upon petitioner) the exclusive right to
use its own symbol only to those goods specified in the certificate, subject to any conditions and limitations specified
in the certificate. One who has adopted and used a trademark on his goods does NOT prevent the adoption and use
of the same trademark by others for products which are of a different description.

(4)By the nature of things, there can be no unfair competition under the law on copyrights although it is applicable
to disputes over the use of trademarks. Even a name or phrase incapable of appropriation as a trademark or
tradename may, by long and exclusive use by a business (such that the name or phrase becomes associated with the
business or product in the mind of the purchasing public), be entitled to protection against unfair competition.

In this case, there was no evidence that P & Ds use of Poster Ads was distinctive or well-known. As noted by the
Court of Appeals, petitioners expert witnesses himself had testified that Poster Ads was too generic a name. So it
was difficult to identify it with any company, honestly speaking. This crucial admission by its own expert witness
that Poster Ads could not be associated with P & D showed that, in the mind of the public, the goods and services
carrying the trademark Poster Ads could not be distinguished from the goods and services of other entities. This
fact also prevented the application of the doctrine of secondary meaning. Poster Ads was generic and incapable of
being used as a trademark because it was used in the field of poster advertising, the very business engaged in by
petitioner.

Secondary meaning means that a word or phrase originally incapable of exclusive appropriation with reference to
an article in the market (because it is geographically or otherwise descriptive) might nevertheless have been used
for so long and so exclusively by one producer with reference to his article that, in the trade and to that branch of
the purchasing public, the word or phrase has come to mean that the article was his property. The admission by
petitioner’s own expert witness that he himself could not associate Poster Ads with petitioner because it was too
generic definitely precluded the application of this exception.

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PATENTATABLE INVENTIONS
Vargas Vs. Chua., G.R. No. L-36650, January 27, 1933

CASE TITLE: Vargas Vs. Chua, G.R. No L-36650, January 27, 1933

PONENTE: Imperial, J.

TOPIC: Patentable Inventions

DOCTRINE:

Novelty is a Fundamental Requirement: To be entitled to a patent, the invention must be new to the world3 .
Evidence indicating that similar types of plows had already been manufactured and used in the Philippines before
the patent was obtained negates the novelty requirement and renders the patent invalid.

Substantial Difference and Genuine Improvement are Required: A mere alteration or modification that does not
result in a fundamental difference or a real improvement over prior art does not constitute a patentable invention

SUMMARY:

This case revolves around the question of patentable inventions in relation to a plow design. Angel Vargas, the
plaintiff, sued Petronila Chua and others for manufacturing and selling plows that allegedly infringed his United
States Patent No. 1,507,530 for certain plow improvements, which was also registered in the Philippines. The Court
of First Instance of Manila ruled in favour of Vargas, ordering the defendants to cease manufacturing and selling
the infringing plows and to provide an accounting of profits. The defendants appealed to the Supreme Court, arguing
that Vargas's current patent (Exhibit F) did not represent a new or patentable invention but was substantially the
same as an older plow (Exhibit 3-Chua) for which a prior patent (No. 1,020,232) had already been declared null
and void by the Supreme Court in a previous case. Upon examining the plows and patent designs, the Supreme
Court concluded that the plow (Exhibit F) did not constitute a patentable invention

FACTS:

Angel Vargas, the plaintiff, initiated legal action to prevent Petronila Chua and others from manufacturing and
selling plows similar to his plow, which was described in United States Patent No. 1,507,530, issued on September
2, 1924, and registered in the Philippine Islands on October 17, 1924. Vargas had been manufacturing and selling
these plows, known as 'Arados Vargas', since obtaining the patent. The defendants, including Petronila Chua, were
also engaged in the manufacture and sale of plows represented by Exhibits B, B-1, and B-2. The trial court initially
ruled in favour of Vargas, ordering the defendants to cease their activities and provide an accounting of profits.
However, the defendants appealed, contending that the plow covered by the 1924 patent (Exhibit F) was not a
distinct invention but was substantially the same as an older model (Exhibit 3-Chua) for which a prior patent (No.
1,020,232) had already been declared null and void by the Supreme Court.

PETITIONER AND RESPONDENTS' CONTENTION:

Petitioner (Vargas): Contended that his plow model Exhibit F, covered by the later Patent No. 1,507,530,
constituted a patentable invention or improvement distinct from his old model Exhibit 3-Chua (covered by the
invalidated Patent No. 1,020,232). He sought protection under this later patent .

Respondents (Chua et al.): Argued that the trial court erred in finding the Vargas plow Exhibit F (under Patent
No. 1,507,530) distinct from the old model Vargas plow Exhibit 3-Chua (under the invalidated Patent No.
1,020,232). Their defense centered on the argument that the later patent did not cover a patentable invention because
it was substantially the same as the previously non-patentable design, suggesting it lacked novelty or did not
represent a true invention or improvement. They believed their plows did not infringe a valid patent

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COURT OF FIRST INSTANCE OF MANILA RULING:

Ruled in favour of the plaintiff, Angel Vargas. The court ordered the defendants, Petronila Chua, Coo Pao, and Coo
Teng Hee, as well as their agents and attorneys, to cease manufacturing, selling, or offering for sale plows of the
type manufactured by the plaintiff, specifically those similar to Exhibits B, B-1, and B-2

ISSUES:

Whether or not the plow (Exhibit F) covered by United States Patent No. 1,507,530 constituted a patentable
invention

SUPREME COURT RULING:

No. The Supreme Court held that the plow (Exhibit F) did not constitute a patentable invention. Upon examining
the plows presented as exhibits and the patent designs, the court found no substantial difference between the plow
under the 1924 patent (Exhibit F) and the plow from the earlier, invalidated patent (Exhibit 3-Chua). The only
difference observed was the removal of a bolt and three holes from the metal strap on the handle bar, which the
court deemed insignificant and not a genuine improvement. The court reasoned that the same working mechanism
and beam movement existed in the original model, potentially with a more reliable graduation due to the adjustable
bolt. Furthermore, the court noted that the claim of deeper furrows with the newer model could also be achieved
with the old implement. Consequently, the Supreme Court concluded that Vargas was not entitled to the protection
sought because his plow (Exhibit F) did not represent a legal invention, especially considering that similar plows
had been manufactured and used in the Philippines, particularly in Iloilo, before the issuance of his latest patent.
The appellate court thus reversed the trial court's decision and absolved the defendants from the complaint.

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 Manzano vs. CA, G.R. No. 113388, 5 September 1997

CASE TITLE: Manzano vs. CA, G.R. No. 113388, 5 September 1997

PONENTE: Justice Josue N. Bellosillo

TOPIC: Patentable Inventions (Sections 21, 23-27, 54, IPC; Section 6, RA 9502)

DOCTRINE:

Requisites of Patentability: For an invention (such as a new and useful machine, manufactured product or
substance, process or an improvement), it must be new and useful. Furthermore, an invention must possess the
essential elements of novelty, originality, and precedence.

For a utility model (a new model of implements or tools or of any industrial product or part of the same), it must be
new and of practical utility by reason of its form, configuration, construction, or composition. While a utility model
does not possess the quality of invention required for a regular patent, novelty remains a key requirement.

The element of novelty is an essential requisite for the patentability of an invention or discovery. If an invention or
process has been known or used by others prior to its invention or discovery by the applicant, the patent application
should be denied. If the patent has already been granted, it can be held void.

Presumption of Correctness of Patent Office Actions: The official action of the Patent Office 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.

Burden of Proving Want of Novelty: The burden of proving the want of novelty of a patented invention rests on
the party alleging it, and this burden is a heavy one that must be met by clear and satisfactory proof which overcomes
every reasonable doubt.

Definition of "New" Utility Model: A utility model shall not be considered "new" if, before the application for a
patent, it has been publicly known or publicly used in the country, described in a printed publication circulated
within the country, or if it is substantially similar to any other utility model so known, used, or described within the
country.

Standard for Anticipation: For anticipation of a patent 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.

Sufficiency of Evidence to Overcome Patent Presumption: The standard of evidence sufficient to overcome the
presumption of legality of the issuance of a patent is clear and convincing evidence. Oral testimony to show
anticipation is open to suspicion and, if uncorroborated by cogent evidence, may be held insufficient.

SUMMARY:

This case involves a petition for review on certiorari filed by Angelita Manzano seeking the cancellation of Letters
Patent No. UM-4609 for a gas burner issued to Melecia Madolaria, who later assigned it to New United Foundry
and Manufacturing Corporation (UNITED FOUNDRY). Manzano alleged that the utility model was not new,
inventive, or useful, that the specification did not comply with legal requirements, that Madolaria was not the
original inventor, and that the patent was secured by fraud. The Director of Patents denied the petition for
cancellation, and the Court of Appeals affirmed this decision. The Supreme Court ultimately denied Manzano's
petition, upholding the decisions of the lower bodies and reiterating the presumption of correctness of the Patent
Office's actions.

ANTECEDENT FACTS:

•On February 19, 1982, Angelita Manzano filed an action with the Philippine Patent Office for the cancellation of

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Letters Patent No. UM-4609 for a gas burner registered in the name of Melecia Madolaria, who later assigned it to
New United Foundry and Manufacturing Corporation (UNITED FOUNDRY).

Manzano alleged several grounds for cancellation, including lack of novelty, inventiveness, and usefulness, non-
compliance with specification requirements, Madolaria not being the original inventor, and fraudulent procurement
of the patent.

Manzano presented an affidavit alleging prior art, brochures from Manila Gas Corporation and Esso Gasul depicting
similar burners, a model of Madolaria's patented burner (Exh. "K"), her own model of a "Ransome" burner (Exh.
"L") allegedly manufactured in 1974 or 1975, and a burner cup of an imported "Ransome" burner (Exh. "M").

Manzano and her witnesses testified that her husband had helped in casting similar burners at UNITED FOUNDRY
before Madolaria's patent application, and that Manila Gas Corporation had imported and advertised "Ransome"
burners similar to the patented model as early as 1965.

Madolaria's witness, Rolando Madolaria, testified about the development and innovation process leading to the
patented utility model.

PETITIONER’S CONTENTION:

The utility model covered by the letters patent was not inventive, new, or useful.

The specification of the letters patent did not comply with the requirements of Sec. 14, RA No. 165, as amended.

Melecia Madolaria was not the original, true, and actual inventor nor did she derive her rights from the original,
true, and actual inventor.

The letters patent was secured by means of fraud or misrepresentation.

The utility model had been known or used by others in the Philippines for more than one year before Madolaria
filed her application.

Products produced according to the utility model had been in public use or on sale in the Philippines for more than
one year before the application.

The brochures of Manila Gas Corporation and Esso Standard Eastern, Inc., showed burners similar to Madolaria's
patented model. The similarities included the cup-shaped burner mouth, threaded hole on the side, and detachable
burner mouth with upward undulations for gas passage.

The differences cited by the lower bodies were imaginary rather than real.

The circulation of the brochures predated Madolaria's patent application.

The utility model was absolutely similar to the LPG burner she sold in 1975 and 1976 and to the "Ransome" burner
in the old brochures.

The testimonies of her witnesses, Ong Bun Tua and Fidel Francisco, should have been given more weight.

RESPONDENT’S CONTENTION:

Presented one witness, Rolando Madolaria, who detailed the development of the improved LPG burner by Melecia
Madolaria, including the identification and resolution of defects in earlier models.

Rolando Madolaria testified that after several experimental models and innovations, they achieved perfect results
with the final design, leading to the filing of the utility model patent application in December 1979.

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RULING OF DIRECTOR OF PATENTS:

Denied the petition for cancellation. Held that Manzano's evidence did not convincingly establish that Madolaria's
patented utility model was anticipated.

Found that the pictorial representations in the brochures did not clearly and convincingly show devices identical or
substantially identical to Madolaria's utility model.

Stated that even if the brochures depicted each element of the patented device, they could not serve as anticipatory
bars because they were undated, lacking information on when they were distributed to the public.

Concluded that the records and evidence did not support the contention that the letters patent was obtained by fraud
or misrepresentation. No evidence showed that Madolaria withheld material facts with intent to deceive the Patent
Office.

Found that the model presented by Manzano (Exh. "K") did not show when it was manufactured. Observed that
Manzano's own model (Exh. "L") did not bear the word "Ransome" and lacked any indication of its manufacturing
date, making it unreliable to prove anticipation.

Deemed the burner cup (Exh. "M") unreliable evidence of anticipation as it lacked a manufacturing or importation
date and was an incomplete part, preventing proper comparison.

Did not give credence to Ong Bun Tua's testimony about the brochures and importation of "Ransome" burners as
he admitted he was never connected with Manila Gas Corporation and could not present any supporting documents.

RULING OF THE CA:

Affirmed the decision of the Director of Patents. The CA reiterated that the validity and the inventiveness, novelty,
and usefulness of the LPG burner model were matters better determined by the Patent Office.

Upheld the presumption that the Patent Office correctly determined the patentability of the model and that this
action should not be interfered with without competent contrary evidence.

Stated that the findings of fact of the Director of Patents, especially when affirmed by the Court of Appeals, are
conclusive when supported by substantial evidence.

ISSUES:

Whether the utility model for an LPG gas burner is covered by Letters Patent No. UM-4609 was novel at the time
of the patent application

SUPREME COURT RULING:

The petition was DENIED, and the decision of the Court of Appeals affirming that of the Philippine Patent Office
was AFFIRMED.

The Supreme Court held that Manzano failed to show compelling grounds for reversing the findings and conclusions
of the Patent Office and the Court of Appeals.

It reiterated the presumption of correctness of the Patent Office's action in issuing the patent and that the burden of
proving want of novelty rests heavily on the petitioner, requiring clear and convincing evidence.

The Court found that the evidence presented by Manzano, including the brochures and testimonies, was insufficient
to overcome this presumption. The brochures were undated, the models presented by Manzano lacked proof of their
manufacturing date prior to the patent application, and the oral testimonies were uncorroborated by cogent evidence.

11
The Supreme Court emphasized that the findings of fact of the Director of Patents, especially when affirmed by the
Court of Appeals and supported by substantial evidence, are conclusive and not reviewable by the Supreme Court,
which is not a trier of facts.

The Court concluded that the questions of novelty, utility, and the validity of the patent are factual issues
appropriately resolved by the Patent Office.

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 Aguas vs. De leon, G.R. No. L-32160, 30 January 1982

CASE TITLE: DOMICIANO A. AGUAS vs. CONRADO G. DE LEON and COURT OF APPEALS
G.R. No. L-32160 January 30, 1982

PONENTE:FERNANDEZ, J

TOPIC: Patentable Inventions (Sections 21, 23-27, 54, IPC; Section 6, RA 9502)

DOCTRINES:

1. Presumption of Patent Validity

Once a patent is granted by the Philippine Patent Office, it carries a legal presumption of validity. This presumption
is based on the assumption that the Patent Office, as an expert agency, has properly examined and determined the
patent's compliance with the requirements of novelty, utility, and inventiveness.

In this case, the Court emphasized that the defendant, Aguas, failed to provide sufficient evidence to overcome this
presumption and demonstrate that the patent was invalid.

2. Patentability of Improvements

Under Republic Act No. 165 (the Patent Law), an invention that is a new and useful improvement of an existing
process is patentable. The Court affirmed that De Leon's patent was for an improvement in the process of making
mosaic pre-cast tiles, not for the old and non-patentable process itself. The improvements included novel features
such as critical depth, lip width, and easement, which contributed to the durability and aesthetic quality of the tiles

In this case, the Supreme Court laid down important clarifications on what makes an invention patentable under
Philippine law (specifically under Republic Act No. 165, the old Patent Law, which has since been replaced by
the IP Code but was still applicable to this case):

A. Improvement of an Existing Process is Patentable

The Court clarified that not all inventions need to be entirely new from the ground up.An improvement to an
already existing process, machine, or product can be patentable if it introduces a new and useful function or
enhances performance, durability, efficiency, or aesthetics.

De Leon’s invention was an improvement on the traditional method of making mosaic pre-cast tiles. His
innovation involved precise measurements of grooves and lips that made the tiles interlock better, improving
durability and installation quality.

B. Criteria for Patentability

Under the law, three essential elements must be present for something to be patentable:

Novelty – It must be new and not known or used by others before the inventor.

Utility – It must be useful or offer some functional benefit.

Inventiveness (Non-obviousness) – It must not be obvious to someone skilled in the relevant field.

The Court found De Leon's invention novel and non-obvious, especially considering his method wasn’t
previously documented or known in the market. It wasn't just a "routine" change.

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c. Specificity and Technical Detail

The Court emphasized the importance of specific technical descriptions in the patent.De Leon's patent included
precise dimensions (e.g., 1/8-inch groove depth and 1/2-inch lip width), which showed that his claims weren’t
vague or general. This helped solidify the legitimacy of his invention and its distinctiveness.

D. Patent Not Invalidated by Commercial Availability

Aguas argued that similar tiles were already on the market, but he failed to prove that these existing tiles had the
same technical features as De Leon’s.The Court said that mere similarity in appearance doesn’t invalidate a
patent if the underlying technique or mechanism is distinct and patentable.

FACTS:

Petitioner, 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.

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’; that defendant F. H. Aquino
& Sons engraved the moulds embodying plaintiff’s patented improvement for the manufacture of pre-cast tiles,
plaintiff furnishing said defendant the actual model of the said 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 possessed the new features and characteristics covered by plaintiff’s patent; 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; 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; that both plaintiff’s and defendant Aguas’ tiles are sculptured pre-cast wall tiles intended as a new
feature of construction and wall ornamentation substantially identical to each other in size, easement, lip width and
critica 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 4-1/4 x 4-1/4 inch tile." The patent right of the private respondent expired on May 5, 1977.

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.

PETITIONER’S CONTENTION:

1. Invalidity of the Patent

14
Aguas argued that De Leon’s patent was invalid because the process or product it covered was not new or
novel.He claimed that similar pre-cast mosaic tiles were already being produced and sold before De Leon filed
his patent application.Therefore, he believed De Leon's invention lacked novelty and should not have been
granted a patent.

2. No Infringement Occurred

Aguas contended that even if De Leon's patent was valid, he did not infringe it.He claimed that the tiles he was
producing were different from those described in De Leon’s patent.Aguas pointed to differences such as tile size
and other minor aspects, arguing that these made his product distinct.

3. Improvement Not Patentable

Aguas further argued that De Leon's invention was merely a minor improvement and should not be considered
patentable.He implied that De Leon did not invent a new product or process, just refined an old idea, which didn’t
warrant exclusive rights.

RESPONDENT’S CONTENTION:

1. He was the lawful patentee

De Leon asserted that he was the duly registered and lawful owner of a Philippine patent for a specific improvement
in the design and manufacturing of mosaic pre-cast tiles.He emphasized that the invention was not a general method
for making tiles, but a specific innovation involving: a.The grooves (1/8-inch depth),b.The lip width (1/2
inch),c.And a unique interlocking design that enhanced functionality.

2.Aguas infringed his patent

De Leon alleged that Aguas was producing tiles that were substantially identical to his patented design. He provided
evidence that Aguas used molds from F.H. Aquino & Sons, the same firm that had engraved the molds used for his
patented tiles. Despite minor differences in tile size, the distinctive design features — especially the groove and lip
proportions — were copied.

3.His invention was patentable

De Leon defended the patentability of his invention, asserting that:It was novel – no identical tile process
existed before.It was useful – it improved the ease of tile installation and durability.It was non-obvious – it
involved a creative improvement not apparent to skilled tile makers.

RULING OF THE REGIONAL TRIAL COURT

The Regional Trial Court ruled in favor of Conrado G. De Leon, affirming the validity of his patent for a novel
and useful improvement in the manufacture of mosaic pre-cast tiles. The court found that the invention met all the
requirements of patentability under Republic Act No. 165—namely novelty, utility, and inventiveness—as it
involved a unique design for interlocking tiles through specific groove and lip dimensions that enhanced both
durability and ease of installation.

The court further concluded that Domiciano A. Aguas had infringed upon this valid patent by manufacturing
and selling tiles that substantially copied De Leon’s patented features. This conclusion was supported by evidence
that Aguas used molds from the same engraver that produced De Leon's original molds, and that the design elements
protected by the patent were clearly reproduced in Aguas’ tiles, despite minor differences in tile size.

As a result, the RTC ordered Aguas to pay De Leon a total of ₱70,020.99 in damages, which included ₱10,020.99
in actual damages based on the profits derived from the infringing activity, ₱50,000 in moral damages for the
emotional and reputational harm caused, ₱5,000 in exemplary damages to serve as a deterrent to future infringers,

15
and ₱5,000 in attorney’s fees. The court’s decision underscored the importance of protecting intellectual property
rights and penalizing deliberate infringement.

RULING OF THE CA:

The Court of Appeals affirmed the decision of the Regional Trial Court in favor of Conrado G. De Leon,
upholding the validity of his patent and confirming that Domiciano A. Aguas committed patent infringement.

The appellate court found that De Leon’s patented design for mosaic pre-cast tiles was a genuine improvement on
existing processes, characterized by specific groove and lip measurements that made the tiles more functional and
durable. It held that De Leon’s invention satisfied the legal requirements of novelty, utility, and inventiveness,
and that Aguas’ use of molds incorporating the same distinctive features constituted an unlawful reproduction of
the patented design.

The Court of Appeals noted that even though Aguas claimed differences in tile dimensions, these were deemed
insignificant, as the core features protected by the patent were clearly copied. However, while sustaining the award
of actual, exemplary damages, and attorney’s fees, the Court of Appeals found the ₱50,000 moral damages
awarded by the trial court to be excessive, and reduced it to ₱3,000, considering the circumstances. In all other
respects, the trial court’s ruling was upheld, thereby reinforcing the legal protections granted to patent holders and
the consequences of violating those rights.

ISSUE:

Whether or not the patent secured by the Respondent was valid?

SUPREME COURT RULING:

The SC affirmed in full the decision of the Court of Appeals, thereby upholding the rulings made by both the
appellate and trial courts in favor of Conrado G. De Leon. The Court held that De Leon’s patent for an improved
design in the manufacture of mosaic pre-cast tiles was valid, novel, and inventive, and entitled to the full protection
of the law.

It found no merit in the arguments of petitioner Domiciano A. Aguas, who had challenged the validity of the patent
and denied infringement. The Court emphasized that the presumption of validity attached to a duly issued patent
had not been rebutted, as Aguas failed to show any convincing evidence that the invention was already known or
obvious prior to De Leon’s application.

Moreover, the Supreme Court concluded that the essential features of the patented design had indeed been
appropriated and commercially exploited by Aguas, constituting clear patent infringement. As a result, the
Court upheld the award of ₱10,020.99 in actual damages, ₱3,000 in moral damages (as modified by the Court of
Appeals), ₱5,000 in exemplary damages, and ₱5,000 in attorney’s fees. The Supreme Court thus reaffirmed the
lower courts’ findings and reinforced the principle that patent rights must be respected and protected against
unauthorized use or reproduction.

16
LIMITATIONS OF PATENT RIGHTS
Roma Drug & Romeo Rodriguez vs. RTC, et al, G.R. No. 149907, 16 April 2009

CASE TITLE: Roma Drug & Romeo Rodriguez vs. RTC, et al, G.R. No. 149907, 16 April 2009
PONENTE: Associate Justice Dante O. Tinga
TOPIC: Limitation of Patent Rights (Section 72, IPC; Section 7, RA 9502)
DOCTRINE:
• Legis posteriors priores contrarias abrogant (Subsequent laws repeal earlier ones that are
contrary to them): Irreconcilable inconsistency between two laws embracing the same subject may
exist when the later law nullifies the reason or purpose of the earlier act, so that the latter loses all
meaning and function.
• Writ of Prohibition: A writ of prohibition is an available remedy to prevent the enforcement of a law
that has effectively been repealed or rendered unconstitutional in light of new legislation.
• Republic Act No. 9502: Clearly reveals an intention on the part of the legislature to abrogate a prior
act on the subject that intention must be given effect. When a subsequent enactment covering a field
of operation coterminous with a prior statute cannot by any reasonable construction be given effect
while the prior law remains in operative existence because of irreconcilable conflict between the two
acts, the latest legislative expression prevails and the prior law yields to the extent of the conflict
SUMMARY:
This case centers on petitioners Roma Drug and its proprietor, Romeo Rodriguez, opposing the Regional Trial
Court of Guagua, Pampanga, the Provincial Prosecutor, the Bureau of Food and Drugs (BFAD), and Glaxo
SmithKline. It originated from a raid on Roma Drug, during which imported medicines were confiscated.
Rodriguez was later charged under the Special Law on Counterfeit Drugs (SLCD) for distributing “unregistered
imported drugs.” He contested the constitutionality of certain SLCD provisions. The Supreme Court partially
granted his petition, issuing a writ of prohibition to stop the prosecution, citing Republic Act No. 9502, which
permits third parties to import medicines.
ANTECEDENT FACTS:
• In 2000, the NBI conducted a raid on Roma Drug, owned by Romeo Rodriguez, following a request
from SmithKline (now GlaxoSmithKline).
• Roma Drug was identified as one of six pharmacies that were importing five medicine brands made
by SmithKline directly from abroad.
• These medicines were not bought through SmithKline's authorized distributor in the Philippines.
• SmithKline Philippines claimed that since the medicines were not sourced locally, they should be
classified as counterfeit or “unregistered imported drugs” under Republic Act No. 8203 (Special Law
on Counterfeit Drugs).
• Rodriguez challenged the constitutionality of R.A. 8203, arguing that it violated his right to equal
protection by preventing him from accessing these medicines.
PETITIONER’S CONTENTION
• Rodriguez challenged the constitutionality of certain provisions of Republic Act No. 8203 (Special
Law on Counterfeit Drugs).
• He argued that the law violated his right to equal protection of the laws by:
o Treating imported genuine medicines as "counterfeit" or "unregistered," simply because they
were not sourced from the local distributor.
o Favoring multinational pharmaceutical companies and their exclusive local distributors,
limiting consumer access to affordable medicines.
• He claimed that the law restricted his ability to legally obtain and sell authentic medicines, which were
otherwise legally manufactured and sold in other countries.
• Rodriguez also contended that the law conflicted with the constitutional policy of making essential
and affordable drugs available to the public, especially the poor.
RESPONDENT’S CONTENTION

17
 • The respondents (RTC of Guagua, the Provincial Prosecutor of Pampanga, BFAD, and
GlaxoSmithKline) argued that Romeo Rodriguez violated R.A. No. 8203, the Special Law on
Counterfeit Drugs, by selling unregistered imported drugs.
• They maintained that the imported medicines found at Roma Drug, although genuine products, were
not registered with the Bureau of Food and Drugs (BFAD) and
• Because the drugs were not locally registered, they were considered "counterfeit" or "unregistered
imported drugs" under the law, regardless of their authenticity.
• The respondents insisted that R.A. 8203 is constitutional and valid, serving the purpose of:
o Protecting public health
o Ensuring the safety, efficacy, and quality of medicines
o Preventing the circulation of potentially unsafe or unregulated drugs
• They also argued that Rodriguez must face prosecution, as the law clearly prohibits the sale or
distribution of imported drugs not authorized by the appropriate regulatory channels in the Philippines.
RULING DIRECTOR OF PATENT
• The Director of Patents, through the BFAD, had enforced the SLCD's provisions regarding
unregistered imported drugs.
RULING OF THE RTC
• The RTC proceeded with the prosecution of Romeo Rodriguez for allegedly violating Section 4 of
R.A. 8203 (Special Law on Counterfeit Drugs).
• Rodriguez was charged for importing unregistered pharmaceutical products, which the SLCD
classified as counterfeit drugs.
• The RTC did not dismiss the case despite arguments that the imported drugs were legitimate and
intended to provide affordable medicine.
ISSUE
• Whether or not Roma Drug has the right to sell the unregistered imported drugs that were not
purchased through GlaxoSmithKline’s authorized local distributor.
SUPREME COURT RULING
• Yes. The petition is granted in part. A writ of prohibition is hereby issued commanding respondents
from prosecuting petitioner Romeo Rodriguez for violation of Section 4 or Rep. Act No. 8203.
• The Supreme Court ruled that R.A. No. 8203 violated the equal protection clause. It unfairly
prohibited private third parties from importing life-saving medicines from abroad, even in
emergencies or when local supplies were insufficient. This discriminated against Filipinos who could
not afford to travel overseas to access necessary treatments.
• However, the passage of R.A. No. 9502, the “Universally Accessible Cheaper and Quality Medicines
Act of 2008,” and its Implementing Rules and Regulations effectively overturned this restriction.
While it did not expressly repeal R.A. No. 8203, R.A. No. 9502 emphasized that medicines introduced
in the Philippines by patent holders must be accessible to all, allowing both government agencies and
private third parties to import such drugs.
• The Supreme Court highlighted that Section 7 of R.A. No. 9502 explicitly grants private third parties
the right to import patented drugs. This right is reinforced by the law's implementing rules issued on
November 4, 2008. Though R.A. No. 9502 did not formally repeal the Special Law on Counterfeit
Drugs (SLCD), its provisions directly conflict with the SLCD’s.

18
PATENT INFRINGEMENT
Creser Precision Systems, Inc. vs. CA, G.R. No 118708, 2 February 1998

CASE TITLE: Creser Precision Systems, Inc. vs. CA, G.R. No 118708, 2 February 1998

PONENTE: Justice MARTINEZ.

TOPIC: Patent Infringement (Sections 76.1, 76.2 IPC; Section 9, RA 9502)

DOCTRINE:
Right to Sue for Infringement: Only the patentee, their assignees, or grantees possessing right, title, or interest in
a validly issued patent can bring a civil action for infringement under Section 42 of R.A. 165. A non-patentee, even
if claiming to be the first inventor, has no cause of action for patent infringement.

Necessity of a Patent for Infringement: There can be no infringement of an invention until a patent has been
granted for it. The right to sue for infringement arises solely from the grant of the patent.

Remedy for Challenging Patent Validity by an Alleged Prior Inventor: The proper remedy for a party claiming
to be the first and true inventor, but who did not obtain a patent, to challenge a patent issued to another is to file a
petition for cancellation of the patent with the Bureau of Patents within three years from its publication, alleging
that the patentee is not the true and actual inventor.

Presumption of Patent Validity: A patent issued by the Philippine Patent Office (now IPOPHL) carries a
presumption of validity, including the presumption that the patentee is the first and true inventor. The technical
expertise of the Patent Office in granting the patent is given due weight.

ANTECEDENT FACTS:
Creser Precision System, Inc. (private respondent) is a domestic corporation that manufactures and sells military
armaments that, on January 23, 1990, was granted Letters Patent No. UM-69383 by the Bureau of Patents,
Trademarks and Technology Transfer (BPTTT) for an aerial fuze. This patent was published in September-October
1990.

Sometime in November 1993, Creser discovered that Floro International Corp. (petitioner) had submitted samples
of Creser's patented aerial fuze to the Armed Forces of the Philippines (AFP) for testing and was claiming it as their
own, planning to bid and manufacture it without a license.

On December 3, 1993, Creser sent a letter to Floro International Corp. advising them of their patent and warning of
potential legal action if they proceeded with the testing.

On December 8, 1993, Floro International Corp. filed a complaint for injunction and damages against Creser before
the Regional Trial Court of Quezon City.

PETITIONER’S CONTENTION:
Floro International Corp. claimed to be the first, true, and actual inventor of an aerial fuze denominated as "Fuze,
PDR 77 CB4," developed as early as December 1981 under the AFP's Self-Reliance Defense Posture Program
(SRDP).

They asserted that they began supplying the AFP with this aerial fuze in 1986. Floro International Corp. alleged
that Creser's aerial fuze is identical in every respect to their fuze, with only minor cosmetic differences.

They sought a temporary restraining order and/or a writ of preliminary injunction to prevent Creser from

19
manufacturing, marketing, or profiting from the aerial fuze, arguing that they were being deprived of their rights as
the first and true inventor.

Floro International Corp. contended that under Section 42 of the Patent Law (R.A. 165), they could file an action
for infringement as an entity possessing a right, title, or interest in the patented invention, even without holding the
patent themselves.

They likened their remedy to a civil action for infringement under Philippine law, drawing parallels to American
patent laws regarding declaratory or injunctive relief for the first true inventor when another party obtains a patent.

RESPONDENT’S CONTENTION:
Creser argued that Floro International Corp. had no cause of action for infringement against them because Floro
International Corp. did not possess a patent for the aerial fuze. Creser asserted that Floro International Corp.'s proper
remedy was to file a petition for cancellation of Creser's patent before the Bureau of Patents.

As the patent holder, Creser claimed they had the exclusive right to manufacture, use, and sell the patented aerial
fuze and would suffer irreparable damage if enjoined from exercising these rights, contending that an action for
infringement can only be brought by someone possessing the right, title, or interest in the patented invention.

RULING OF THE RTC:

On December 29, 1993, the trial court granted Floro International Corp.'s application for a writ of preliminary
injunction against Creser.

The trial court reasoned that Floro International Corp. had "amply proven its entitlement to the relief prayed for"
by developing its aerial fuze in 1981, while Creser began manufacturing in 1987, leading to the conclusion that
Creser copied Floro International Corp.'s fuze.

The trial court found Creser's assertion regarding who can bring an infringement action to be "untenable," stating
that Section 10 of R.A. 165 merely enumerates who may have an invention patented and does not limit the right to
institute an infringement action.

The trial court believed its order maintained the status quo, which it defined as Floro International Corp.
manufacturing and selling its fuzes before Creser's letter ordered them to stop.

The trial court also believed that Creser would not suffer irreparable injury because the validity of their patent was
being questioned. Creser's motion for reconsideration was denied on May 11, 1994.

RULING OF THE CA:

On November 9, 1994, the Court of Appeals reversed the trial court's order and dismissed Floro International Corp.'s
complaint for injunction and damages.

The CA reasoned that since Creser was the patentee of the disputed invention, they held the presumption of the
patent's validity and were presumed to be the first and true inventor.

The CA concluded that Floro International Corp., having no patent, had no cause of action for infringement. Floro
International Corp.'s motion for reconsideration was denied on January 17, 1995.

ISSUES:
Whether Floro International Corp., as the alleged first and true inventor without a patent, file an action for
infringement against Creser, who holds the patent for the same invention?

Whether an action for injunction filed by the alleged first inventor (but non-patentee) is equivalent to a civil action

20
for infringement under Section 42 of the Patent Law?

Whether the proper venue for questioning the validity of Creser's patent the Regional Trial Court in an action for
injunction or the Bureau of Patents in a petition for cancellation?

SUPREME COURT RULING:

The Supreme Court affirmed the decision of the Court of Appeals, holding that only the patentee or their successors-
in-interest can file an action for infringement under Section 42 of R.A. 165. The phrase "anyone possessing any
right, title or interest" refers to the patentee's assignees or grantees.

The Court emphasized that there can be no infringement of a patent until a patent has been issued. The right to
maintain an infringement suit depends on the existence of the patent. Since Floro International Corp. admitted it
had no patent, it had no legal basis to institute an action for injunction and damages arising from alleged
infringement. While an inventor has the right to make, use, and sell their invention, they do not have a monopoly
unless they obtain a patent.

The Court stated that the remedy of declaratory judgment or injunctive suit on patent invalidity is available only to
the patent holder or their successors-in-interest and cannot be likened to a civil action for infringement by a non-
patentee.

The proper remedy for Floro International Corp., as the alleged first inventor, was to file a petition for cancellation
of Creser's patent with the Director of Patents within three (3) years from its publication, arguing that Creser was
not the true and actual inventor. Floro International Corp. failed to do so.

The Court recognized the presumption of validity of the patent issued to Creser by the Bureau of Patents, which is
composed of experts who have accepted the invention as a discovery.

21
TESTS IN PATENT INFRINGEMENT

A. Literal Infringement
Godines vs. CA, G.R. No. 97343, 13 September 1993

CASE TITLE: Pascual Godines vs. The Honorable Court of Appeals and SV-AGRO Enterprises, Inc.
G.R. No. 97343. September 13, 1993

PONENTE: Justice Romero

TOPIC: Section 37 of Republic Act No. 165

Republic Act No. 166

DOCTRINE:
Tests in Patent Infringement
2 Primary Tests

1. Literal infringement test- if one makes use, or sells an item that contains all the element of a patent claim. It
satisfies either of the following:
a. Exactness rule- the item that is being sold, made or used conforms exactly to the
patent claim of another.
b. Additional rule- one make, uses or sells an item that has all the element of the patent
claim of another plus other elements
2. Doctrine of Equivalents- provides that an infringement also take place when a device appropriates a prior
invention by incorporating its innovative concept and, although with some modification and change, performs
substantially the same function in substantially the same way to achieve substantially the same result.

Infringement of Patent:
• Defined under Section 37 of Republic Act No. 165, which states that unauthorized making, using,
or selling of a patented product constitutes infringement.
Unfair Competition:
• Under Republic Act No. 166, unfair competition includes imitating the appearance of another
manufacturer’s goods, which misleads consumers.

ANTECEDENT FACTS:
• Pascual Godines is the petitioner in a Supreme Court case that stemmed from a legal battle concerning
patent infringement and unfair competition. The root of the conflict involves a utility model for a hand
tractor or power tiller patented by Magdalena S. Villaruz, who later assigned it to SV-AGRO Enterprises,
Inc., herein the private respondent. The patent, characterized by distinct features like a vacuumatic house
float and a harrow with an adjustable operating handle, was duly registered and published. SV-AGRO
noticed a steep decline in sales traced back to similar power tillers manufactured and sold by Godines,
prompting legal notice and subsequent failure of Godines to cease his operations.

PETITIONER’S CONTENTION:
• Petitioner maintains the defenses which he raised before the trial and appellate courts, to wit: that he was
not engaged in the manufacture and sale of the power tillers as he made them only upon the special order
of his customers who gave their own specifications; hence, he could not be liable for infringement of patent
and unfair competition; and that those made by him were different from those being manufactured and
sold by private respondent.

22
RESPONDENT’S CONTENTION:
• Private respondent notified Pascual Godines about the existing patent and demanded that the latter stop
selling and manufacturing similar power tillers.

RULING OF THE RTC:

• The trial court made the following observation:
Samples of the defendant's floating power tiller have been produced and inspected by the court and
compared with that of the turtle power tiller of the plaintiff (see Exhibits H to H-28). In appearance and
form, both the floating power tillers of the defendant and the turtle power tiller of the plaintiff are virtually
the same. Defendant admitted to the Court that two (2) of the power inspected on March 12, 1984, were
manufactured and sold by him (see TSN, March 12, 1984, p. 7). The three power tillers were placed
alongside with each other. At the center was the turtle power tiller of plaintiff, and on both sides thereof
were the floating power tillers of defendant (Exhibits H to H-2). Witness Rodrigo took photographs of the
same power tillers (front, side, top and back views for purposes of comparison (see Exhibits H-4 to H-28).
Viewed from any perspective or angle, the power tiller of the defendant is identical and similar to that of
the turtle power tiller of plaintiff in form, configuration, design and appearance. The parts or components
thereof are virtually the same. Both have the circularly-shaped vacuumatic housing float, a paddy in front,
a protective water covering, a transmission box housing the transmission gears, a handle which is V-shaped
and inclined upwardly, attached to the side of the vacuumatic housing float and supported by the
upstanding G.I. pipes and an engine base at the top midportion of the vacuumatic housing float to which
the engine drive may be attached. In operation, the floating power tiller of the defendant operates also in
similar manner as the turtle power tiller of plaintiff. This was admitted by the defendant himself in court
that they are operating on the same principles. (TSN, August 19, 1987, p. 13)
• The trial court found Pascual Godines liable for infringement of patent and unfair competition, ordering
him to pay damages and attorney's fees.
• Damages Awarded: P50,000 for damages to business reputation and goodwill, P80,000 for unrealized
profits and P8,000 for attorney's fees.

RULING OF THE CA:

• The Court of Appeals affirmed the trial court's decision, eliminating the award for attorney's fees.

ISSUES:
1. The factual basis for determining whether Godines manufactured and sold power tillers infringing upon SV-
AGRO’s patent.
2. Whether the doctrine of literal infringement or the doctrine of equivalents applies to Godines’ power tillers vis-
a-vis the patented utility model.
3. The application of laws on patent infringement (Republic Act No. 165, as amended) and unfair competition
(Republic Act No. 166, as amended) in the context of the case

SUPREME COURT RULING:

The Supreme Court dismissed Godines’ petition and affirmed the CA’s decision with a comprehensive analysis:
➢ The factual dispute over manufacturing and sales was deemed better addressed by lower courts, with
considerable evidence indicating Godines’ infringement activities.
➢ The Court applied both the tests of literal infringement and the doctrine of equivalents, finding substantial
similarities between Godines’ and SV-AGRO’s power tillers, indicating infringement.
Tests have been established to determine infringement. These are literal infringement and the doctrine of
equivalents. To determine if there is a literal infringement, the Court must juxtapose the claims of the
patent and the accused product within the overall context of the claims and specifications in order to know
whether there is exact identity of all material elements. Doctrine of equivalents provides that an
infringement takes places when a device appropriates a prior invention by incorporating its innovative
concept although with some modification and change performs substantially the same function and achieve
substantially the same result. In this case, petitioner also called his power tiller as a floating power tiller.
Both power tillers of the petitioner and defendant are identical and similar in form, configuration, design
and appearance including its components and the two power tillers operate on the same fundamental

23
 principles. Thus, there was infringement. Applying the doctrine of equivalents, it is not essential to show
that the defendant adopted the device, the proof of an adoption of the substance of the thing will be
sufficient to establish an infringement.
➢ On unfair competition, the Court found that Godines gave his goods the appearance of SVAGRO’s, which
likely influenced buyers and constituted unfair competition.

24
 B. Doctrine of Equivalents
Smith Kline Beckman Corp. vs. CA, G.R. No. 126627, 14 August 2003

CASE TITLE:SMITH KLINE BECKMAN CORP v. CA ,G. R. No. 126627 August 14, 2003

PONENTE: Justice CARPIO-MORALES.

TOPIC: Patent Infringement (Sections 9 and 15 IPC; Section 9, RA 9502)

DOCTRINE:

DOCTRINE OF EQUIVALENTS:

The doctrine of equivalents provides that an infringement also takes place when a device appropriates a prior
invention by incorporating its innovative concept and, although with some modification and change, performs
substantially the same function in substantially the same way to achieve substantially the same result. While both
compounds have the effect of neutralizing parasites in animals, identity of result does not amount to infringement
of patent unless Albendazole operates in substantially the same way or by substantially the same means as the
patented compound, even though it performs the same function and achieves the same result. In other words, the
principle or mode of operation must be the same or substantially the same.

DIVISIONAL APPLICATION: As for the concept of divisional applications proffered by petitioner, it comes
into play when two or more inventions are claimed in a single application but are of such a nature that a single
patent may not be issued for them. The applicant thus is required "to divide," that is, to limit the claims to whichever
invention he may elect, whereas those inventions not elected may be made the subject of separate applications
which are called "divisional applications." What this only means is that petitioner’s methyl 5 propylthio-2-
benzimidazole carbamate is an invention distinct from the other inventions claimed in the original application
divided out, Albendazole being one of those other inventions. Otherwise, methyl 5 propylthio-2-benzimidazole
carbamate would not have been the subject of a divisional application if a single patent could have been issued for
it as well as Albendazole

ANTECEDENT FACTS:

Smith Kline is a US corporation licensed to do business in the Philippines. In 1981, a patent was issued to it for its
invention entitled “Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5
Propylthio-2-Benzimidazole Carbamate.” The invention is a means to fight off gastrointestinal parasites from
various cattles and pet animals.

Tryco Pharma is a local corporation engaged in the same business as Smith Kline.

Smith Kline sued Tryco Pharma because the latter was selling a veterinary product called Impregon which contains
a drug called Albendazole which fights off gastro-intestinal roundworms, lungworms, tapeworms and fluke
infestation in carabaos, cattle and goats.

Smith Kline is claiming that Albendazole is covered by their patent because it is substantially the same as methyl 5
propylthio-2-benzimidazole carbamate since both of them are meant to combat worm or parasite infestation in
animals. And that Albendazole is actually patented under Smith Kline in the US.

25
Tryco Pharma averred that nowhere in Smith Kline’s patent does it mention that Albendazole is present but even if
it were, the same is “unpatentable”.

PETITIONER’S CONTENTION:
Petitioner sued private respondent for infringement of patent and unfair competition before the Caloocan City
Regional Trial Court (RTC). It claimed that its patent covers or includes the substance Albendazole such that private
respondent, by manufacturing, selling, using, and causing to be sold and used the drug Impregon without its
authorization, infringed Claims 2, 3, 4, 7, 8 and 9 of Letters Patent No. 14561as well as committed unfair
competition under Article 189, paragraph 1 of the Revised Penal Code and Section 29 of Republic Act No. 166
(The Trademark Law) for advertising and selling as its own the drug Impregon although the same contained
petitioner’s patented Albendazole.

RESPONDENT’S CONTENTION:

Private respondent in its Answer averred that Letters Patent No. 14561 does not cover the substance Albendazole
for nowhere in it does that word appear; that even if the patent were to include Albendazole, such substance is
unpatentable; that the Bureau of Food and Drugs allowed it to manufacture and market Impregon with Albendazole
as its known ingredient; that there is no proof that it passed off in any way its veterinary products as those of
petitioner; that Letters Patent No. 14561 is null and void, the application for the issuance thereof having been filed
beyond the one year period from the filing of an application abroad for the same invention covered thereby, in
violation of Section 15 of Republic Act No. 165 (The Patent Law); and that petitioner is not the registered patent
holder.

RULING OF THE RTC:

Branch 125 of the Caloocan RTC issued a temporary restraining order against private respondent enjoining it from
committing acts of patent infringement and unfair competition. A writ of preliminary injunction was subsequently
issued.

the trial court rendered a Decision dated July 23, 1991, dismissing the complaint and dissolved the writ of injunction
being issue.

The Letters Patent No. 14561 issued by the then Philippine Patents Office is hereby declared null and void for being
in violation of Sections 7, 9 and 15 of the Patents Law.

Pursuant to Sec. 46 of the Patents Law, the Director of Bureau of Patents is hereby directed to cancel Letters Patent
No. 14561 issued to the plaintiff and to publish such cancellation in the Official Gazette.

RULING OF THE CA:

On appeal, the Court of Appeals, by Decision of April 21, 1995, upheld the trial court’s finding that private
respondent was not liable for any infringement of the patent of petitioner in light of the latter’s failure to show that
Albendazole is the same as the compound subject of Letters Patent No. 14561. Noting petitioner’s admission of the
issuance by the U.S. of a patent for Albendazole in the name of Smith Kline and French Laboratories which was
petitioner’s former corporate name, the appellate court considered the U.S. patent as implying that Albendazole is
different from methyl 5 propylthio-2-benzimidazole carbamate. It likewise found that private respondent was not
guilty of deceiving the public by misrepresenting that Impregon is its product.

The appellate court, however, declared that Letters Patent No. 14561 was not void as it sustained petitioner’s
explanation that Patent Application Serial No. 18989 which was filed on October 8, 1976 was a divisional
application of Patent Application Serial No. 17280 filed on June 17, 1975 with the Philippine Patent Office, well
within one year from petitioner’s filing on June 19, 1974 of its Foreign Application Priority Data No. 480,646 in
the U.S. covering the same compound subject of Patent Application Serial No. 17280.

ISSUES:
Whether or not there is patent infringement in this case?

26
SUPREME COURT RULING:
From an examination of the evidence on record, this Court finds nothing infirm in the appellate court’s conclusions
with respect to the principal issue of whether private respondent committed patent infringement to the prejudice of
petitioner.

Smith Kline failed to prove that Albendazole is a compound inherent in the patented invention. Nowhere in the
patent is the word Albendazole found. When the language of its claims is clear and distinct, the patentee is bound
thereby and may not claim anything beyond them. Further, there was a separate patent for Albendazole given by
the US which implies that Albendazole is indeed separate and distinct from the patented compound here.

A scrutiny of Smith Kline’s evidence fails to prove the substantial sameness of the patented compound and
Albendazole. While both compounds have the effect of neutralizing parasites in animals, identity of result does not
amount to infringement of patent unless Albendazole operates in substantially the same way or by substantially the
same means as the patented compound, even though it performs the same function and achieves the same result. In
other words, the principle or mode of operation must be the same or substantially the same.

The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the patentee having the
burden to show that all three components of such equivalency test are met.

27
Compulsory Licensing
Smith Kline & French, Ltd. vs. CA, G.R. No 121267, 23 October 2001

CASE TITLE: SMITH KLINE & FRENCH, LTD VS CA, G.R. No. 121267, 2 OCTOBER 23, 2001

PONENTE: Justice KAPUNAN.

TOPIC: LICENSING (COMPULRORY LICENSE)

ANTECEDENT FACTS:

Petitioner is the assignee of Letters Patent No. 12207 covering the pharmaceutical product Cimetidine which
was issued by the BPTTT to Graham John Durant, John Collin Emmett and Robin Genellin.

Private respondent filed with the BPTTT a petition for compulsory license to manufacture and produce its own
brand of medicines using Cimetidine invoking Section 34 (1) (e) of Republic Act No. 165 of the Patent Law,
which was opposed by the Petitioner arguing that the private respondent had no cause of action and failed to
allege how it intended to work the patented product Petitioner further stated that its manufacture, use and sales
of Cimetidine satisfied the needs of the Philippine market, hence, there was no need to grant a compulsory
license to private respondent to manufacture, use and sell the same. Finally, petitioner also claimed that the
grant of a compulsory license to private respondent would not promote public safety and that the latter was
only motivated by pecuniary gain.

BPTTT rendered a decision directing the issuance of a compulsory license to private respondent to use,
manufacture and sell in the Philippines its own brand of pharmaceutical products containing Cimetidine and
ordered the payment by private respondent to petitioner of royalties at the rate of 2.5% of net sales in Philippine
currency

PETITIONER’S CONTENTION:

Petitioner opposed the petition for compulsory license, arguing that the private respondent had no cause of
action and failed to allege how it intended to work the patented product. Petitioner further stated that its
manufacture, use and sales of Cimetidine satisfied the needs of the Philippine market, hence, there was no need
to grant a compulsory license to private respondent to manufacture, use and sell the same. Finally, petitioner
also claimed that the grant of a compulsory license to private respondent would not promote public safety and
that the latter was only motivated by pecuniary gain

RESPONDENT’S CONTENTION:

Private respondent invoked Section 34 (1) (e) of Republic Act No. 165,3 (the Patent Law) the law then
governing patents, which states that an application for the grant of a compulsory license under a particular
patent may be filed with the BPTTT at any time after the lapse of two (2) years from the date of grant of such
patent, if the patented invention or article relates to food or medicine, or manufactured substances which can
be used as food or medicine, or is necessary for public health or public safety

RULING OF THE BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY TRANSFER

(BPTTT):

After both parties were heard, the BPTTT rendered a decision directing the issuance of a compulsory license
to private respondent to use, manufacture and sell in the Philippines its own brand of pharmaceutical products

28
containing Cimetidine and ordered the payment by private respondent to petitioner of royalties at the rate of
2.5% of net sales in Philippine currency.

ISSUES:

W/N CA err in affirming the validity of the grant of the BPTTT of a compulsory license to private
respondent for the use, manufacture and sale of Cimetidine?

SUPREME COURT RULING:

NO! The said grant is in accord with Section 34 of the Patent Law which provides:

Grounds for Compulsory Licensing.— (1) Any person may apply to the Director for the grant of a license
under a particular patent at any time after the expiration of two years from the date of the grant of the
patent, under any of the following circumstances:

(e) If the patented invention or article relates to food or medicine or manufactured substances which can
be used as food or medicine, or is necessary for public health or public safety.

(2) In any of the above cases, a compulsory license shall be granted to the petitioner provided that he has
proved his capability to work the patented product or to make use of the patented product in the
manufacture of a useful product, or to employ the patented process.

The grant of the compulsory license satisfies the requirements of the foregoing provision. More than ten years
have passed since the patent for Cimetidine was issued to petitioner and its predecessors-in-interest, and the
compulsory license applied for by private respondent is for the use, manufacture and sale of a medicinal
product. Furthermore, both the appellate court and the BPTTT found that private respondent had the capability
to work Cimetidine or to make use thereof in the manufacture of a useful product.

Neither does the Court agree with petitioner that the grant of the compulsory license to private respondent was
erroneous because the same would lead the public to think that the Cimetidine is the invention of private
respondent and not of petitioner. Such fears are unfounded since, as the appellate court pointed out in the
assailed decision, by the grant of the compulsory license, private respondent as licensee explicitly
acknowledges that petitioner is the source of the patented product Cimetidine.29 Even assuming arguendo that
such confusion may indeed occur, the disadvantage is far outweighed by the benefits resulting from the grant
of the compulsory license, such as an increased supply of pharmaceutical products containing Cimetidine, and
the consequent reduction in the prices thereof

29
 Parke Davies & Co. vs. Doctors Pharmaceuticals, Inc., G.R. No. L-22221, 31 August
1965

CASE TITLE: PARKE DAVIES & CO. VS. DOCTORS PHARMACEUTICALS, G.R. NO. L-22221, 31
AUGUST 1965

PONENTE: BAUTISTA ANGELO, J.:

TOPIC: COMPULRORY LICENSE

FACTS ISSUE RULING/S

Parke, Davis & Company Did the Director of Patents Ruling-Director of Patents
(petitioner), a foreign abuse his discretion in
The Director of Patents ruled in favor of
corporation organized under granting a compulsory license
Doctors' Pharmaceuticals, granting them a
Michigan, USA law, and to Doctors' Pharmaceuticals
compulsory license to manufacture, use, and
Doctors' Pharmaceutical, Inc. under Section 34(d) of
sell products containing chloramphenicol,
(respondent), a domestic Republic Act No. 165,
which is a patented invention of Parke, Davis
corporation based in Caloocan considering the objections
& Company. The decision was based on the
City, Philippines. The raised by Parke, Davis?
finding that the patented invention relates to
petitioner holds a patent, titled
medicine and is necessary for public health.
"Process for the
The Director ordered the parties to negotiate
Manufacturing of Antibiotics"
the terms of the licensing agreement,
(Letters Patent No. 50),
emphasizing that the application met the
granted by the Philippine
statutory requirements, as more than three
Patent Office on February 9,
years had passed since the patent was
1950, which pertains to a
granted. If no agreement was reached, the
chemical compound known as
Director would set the terms and conditions
chloramphenicol. The patent
of the license.
comprises ten claims: nine
involving processes and one Doctrine
concerning the product itself,
chloramphenicol. The decision established that Court of Appeals
under Philippine patent law,
On October 9, 1959, CA upheld the decision of the Director of
particularly Section 34(d) of
Respondent requested a Patents, affirming the grant of a compulsory
Republic Act No. 165,
voluntary license from license to Doctors' Pharmaceuticals, Inc. The
compulsory licenses may be
petitioner to manufacture and CA found that the application met the
granted if the patented
market their own statutory requirements under Section 34 of
invention is related to
chloramphenicol-based Republic Act No. 165, as more than three
medicines and is necessary
medicine. However, petitioner years had passed since the patent was issued.
for public health, without the
sought additional information The court emphasized that the patented
requirement of demonstrating
about respondent plans but invention, chloramphenicol, relates to
the necessity in the strictest
was uncooperative in granting medicine and is necessary for public health,
sense. The ruling clarified
the license. Consequently, on thus justifying the compulsory license. The
that the intention of the
March 11, 1960, respondent CA also noted that the Director's
applicant to utilize the patent
filed a petition with the interpretation of the requirements for
for public health purposes
Director of Patents, seeking a granting the license was correct and that the
sufficed for the Director of
compulsory license under concerns raised by Parke, Davis & Company
Patents to issue a compulsory
petitioner patent. Their regarding public interest and competition
license, promoting access to
petition was based on multiple were insufficient to deny the license.
important medicinal products
grounds, including the

30
necessity of the patent for even in the face of existing
public health, claims of patents.
Supreme Court
monopoly by petitioner and
the insufficient supply and The Supreme Court affirmed the decision of
pricing of chloramphenicol in the Director of Patents, upholding the grant
the Philippines. of a compulsory license to Doctors'
Pharmaceuticals under Letters Patent No. 50
Petitioner opposed the
covering said substance were granted to
petition, arguing several
Parke Davis & Company on February 9,
defenses, such as the
1950, and the instant application for license
respondent's lack of intention
under said patent was only filed in 1960,
to work the patent and a claim
verily the period that had elapsed then is
that granting the license
more than three years, and so the conditions
would not serve public
for the grant of the license had been fulfilled.
interest.
We find, therefore, no error in the decision of
the Director of Patents on this aspect of the
controversy.

The Court established that the grounds for

compulsory licensing under Section 34(d) of
Republic Act No. 165 were sufficiently met,
as the invention pertained to a
pharmaceutical product critical for public
health. The Court emphasized that the
application was made more than three years
post the patent grant, satisfying the statutory
requirement. The interpretation that
chloramphenicol’s classification as a
medicine sufficed to invoke the provision
was affirmed, dispelling the notion that it
must also be labeled 'indispensable' for
public safety.

Court noted that if the licensing were denied,

it could result in a monopoly harming public
access to necessary medicines, effectively
undermining public interest.

In addressing fears about the adverse impacts

on Parke, Davis, the Court pointed out that
while patent holders enjoy exclusive rights
for a limited duration, the law allows for
compulsory licensing under specific
conditions aimed at preventing monopolistic
control. Thus, the potential harm to Parke,
Davis was insufficient to overturn the legal
provisions aimed at enhancing public health.

31
Utility Models
Ching vs. Salinas, Sr., G.R. No. 161295, 9 June 2005

CASE TITLE: CHING VS. SALINAS, SR., G.R. NO, 161295, 29 JUNE 2005

PONENTE: CALLEJO, SR., J.

TOPIC: UTILITY MODELS

ANTECEDENT FACTS:

The petitioner in this case is Jessie G. Ching against respondents William M. Salinas, Sr., William M. Salinas,
Jr., Josephine L. Salinas, Jennifer Y. Salinas, Alonto Solaiman Salle, John Eric I. Salinas, and Noel M. Yabut.

Ching is the owner and general manager of Jeshicris Manufacturing Co., which had received Certificates of
Copyright Registration from the National Library for a utility model "Leaf Spring Eye Bushing for Automobile”
made of plastic. These models are designed to replace traditional rubber components with plastic alternatives,
providing enhanced durability and longevity. The respondents had reproduced and distributed this model
illegally. They argued that the copyright registrations were invalid as the works were not artistic or literary, but
rather automotive spare parts more suitable for patent protection.

PETITIONER’S CONTENTION:

The petitioner's contention revolves around the validity of the copyright certificates issued for his utility
models, specifically the Leaf Spring Eye Bushing and Vehicle Bearing Cushion. He argues that the Regional
Trial Court (RTC) lacked jurisdiction to question the validity of his copyrights in a search warrant proceeding.
The petitioner maintains that his works are covered by the Intellectual Property Code, asserting that copyright
protection attaches automatically upon creation, regardless of the work's utilitarian function.

He insists that the RTC committed grave abuse of discretion by declaring his works non-copyrightable, arguing
that the law protects original intellectual creations, including those with utilitarian aspects. The petitioner also
emphasizes that the determination of probable cause for issuing a search warrant should not involve invalidating
his copyright, as he believes he holds a presumption of validity for his copyright registration.

RESPONDENT’S CONTENTION:

The respondents contend that the works covered by the petitioner's copyright registrations are not artistic or
literary in nature but rather automotive spare parts, which are considered technical solutions to problems. They
argue that these models do not meet the criteria for copyright protection under the Intellectual Property Code
and assert that the proper subject for such inventions would be a patent, not a copyright. They maintain that the
copyright registrations issued by the National Library do not confer automatic protection and that the petitioner
failed to provide sufficient evidence to support his claims of copyright ownership.

RULING OF THE REGIONAL TRIAL COURT:

The Regional Trial Court ruled that the subjects of the copyright registrations, specifically the Leaf Spring Eye
Bushing and Vehicle Bearing Cushion, are not copyrightable but rather patentable under the Intellectual
Property Code. The RTC found that these works pertained to technical solutions to problems in the automotive
field and did not meet the criteria for copyright protection, which is limited to literary and artistic works.

32
Consequently, the RTC quashed the search warrants issued for the seizure of these items, determining that there
was no probable cause for their issuance based on the nature of the works

RULING OF THE COURT OF APPEALS:

The Court of Appeals ruled that the subjects of the copyright registrations, specifically the Leaf Spring Eye
Bushing and Vehicle Bearing Cushion, are not copyrightable but rather patentable under the Intellectual
Property Code. The court found that these works are automotive spare parts and do not meet the criteria for
copyright protection, as they are not considered artistic or literary works. The court emphasized that the items
in question are technical solutions to problems and thus fall under the domain of patent law rather than copyright
law.

ISSUES:

Whether or not the subjects of the copyright registrations patentable rather than copyrightable under the
Intellectual Property Code?

SUPREME COURT RULING:

Yes. The Court held that the works in question were not copyrightable, as they were deemed utility models.
Ching’s Leaf Spring Eye Bushing for Automobile made of plastic is not copyrightable as it did not fall under
the definitions of literary or artistic works as provided by the Intellectual Property Code. They are utility
models, useful articles, albeit with no artistic design or value. Being plain automotive spare parts that must
conform to the original structural design of the components they seek to replace. Also, it is not ornamental.

The court explained that a utility model is a technical solution to a problem in any field of human activity which
is new and industrially applicable. It may be, or may relate to, a product, or process, or an improvement.
Essentially, a utility model refers to an invention in the mechanical field.

Therefore, the Supreme Court affirmed the decision of the Court of Appeals and of the RTC, denying Ching's
petition for review.

33
 Del Rosario vs. CA, G.R. No. 115106, 15 March 1996

CASE TITLE: Roberto L. Del Rosario vs. Court of Appeals and Janito Corporation G.R. No. 115106
March 15, 1996

PONENTE: Bellosillo, J.

TOPIC: Utility Models

FACTS ISSUE RULING/S

Petitioner Roberto L. Del Whether or not respondent Regional Trial Court

Rosario filed a complaint for Court of Appeals erred in
The Regional Trial Court of Makati issued a
patent infringement against finding the trial court to
writ of preliminary injunction finding that
private respondent Janito have committed grave abuse
petitioner was a holder of a utility model
Corporation. He alleged that of discretion in enjoining
patent for a sing-along system and that
he was a patentee of a sing- private respondent from
without his approval and consent, private
along system or karaoke manufacturing, selling and
respondent was admittedly manufacturing
under Letters Patent No. UM- advertising the miyata
and selling its own sing-along system which
5269 as well as Letters Patent karaoke brand sing-along
was substantially similar to the patented
No. UM-6237 issued by the system for being
utility model of petitioner.
Director of Patents. Petitioner substantially similar if not
learned that private identical to the audio
respondent was equipment covered by
manufacturing a sing-along letters patent issued to Court of Appeals
system bearing the trademark petitioner.
Respondent appellate court set aside the
or miyata karaoke
questioned order of the trial court. It ruled
substantially similar if not
that there was no infringement because the
identical to the sing-along
karaoke system was a universal product
system covered by the patents
manufactured, advertised, and marketed all
issued in his favor. Thus, he
over the world long before Del Rosario was
sought from the trial court the
issued his patents.
issuance of a writ of
preliminary injunction to
enjoin the private respondent
from using, selling and Supreme Court
advertising the miyata or Yes, the Court found that petitioner had
miyata karaoke brand. established before the trial court prima facie
proof of violation of his rights as patentee to
justify the issuance of a writ of preliminary
injunction.

The Patent Law expressly acknowledges that

any new model of implements or tools of any
industrial product even if not possessed of
the quality of invention but which is of
practical utility is entitled to a patent for
utility model. Here, there is no dispute that
the letters patent issued to petitioner are for
utility models of audio equipment.

34
Under Sec. 55 of The Patent Law 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 within
the country, or if it is substantially similar to
any other utility model so known, used or
described within the country. Respondent
corporation failed to present before the trial
court competent evidence that the utility
models covered by the Letters Patents issued
to petitioner were not new.

Consequently, under Sec. 37 of The Patent

law, petitioner as a patentee shall have the
exclusive right to make, use and sell the
patented machine, article or product for the
purpose of industry or commerce, throughout
the territory of the Philippines for the term of
the patent, and such making, using or selling
by any person without authorization of the
patentee constitutes infringement of his
patent.

It is elementary that a patent may be

infringed where the essential or substantial
features of the patented invention are taken
or appropriated, or the device, machine or
other subject matter alleged to infringe is
substantially identical with the patent
invention. In order to infringe a patent, a
machine or device must perform the same
function, or accomplish the same result by
identical or substantially identical means and
the principle or mode of operation must be
substantially the same.

The Supreme Court found that both the

petitioner’s and respondent’s models involve
substantially the same modes of operation
and produce substantially the same, if not
identical, results when used.

The Supreme Court reversed and set aside

the Order of the Court of Appeals and the
Order of the trial court granting petitioner the
writ of injunction is reinstated.

35