MAGNAYE, TOM BRYAN H.

INTELLECTUAL PROPERTY
ATTY. ZAMBRANO
PEARL & DEAN, INC. VS. SHOEMART, INC.
Facts:
Plaintif is engaged in manufacturing advertising display
units called as light boxes. These are specialty printed
posters with plastic sheets and illuminated back lights that
are mainly used as stationeries. They secured copyright
registration over these advertising light boxes and marketed
using the trademark poster ads. They applied for the
registration of trademark before the Bureau of Patents,
Trademark and Technology Transfer which was approved
on September 12, 1988. Pearl and Dean negotiated with
the defendant Shoemart for the lease and installation of
the light boxes. In 1986, the counsel of Shoemart informed
Pearl and Dean that it is rescinding its contract. When
Pearl and Dean knew about the copies of its light boxes
installed at SM City branches in 1989, it ordered SM to
cease from using the subject light boxes and remove them
from SM establishments. It also demanded to discontinue
the use of its trademark poster ads Pearl Dean fled a
case for infringement of trademark, copyright, unfair
competition and damages.
Issue:
Whether or not there is patent infringement.
Ruling:
It held that the petitioner never secured patent for the
light boxes. Without any acquired rights to protect its
invention it cannot legally prevent anyone from
manufacturing the same. 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. Petitioner mainly secured
copyright in which its design is classifed as class O
limited to box wraps, pictorial illustration, labels and tags.
Thus its copyright is covered only the works falling within
this category. Moreover, the term poster ads is generic
and incapable to be used as trademark thus the
respondents are not held guilty of the charges against
them.
ROSARIO MAGUAN VS. COURT OF APPEALS (CA) AND
SUSANA LUCHAN
Facts:
Petitioner is doing business under the frm name and style
of SWAN MANUFACTURING" while private respondent is
likewise doing business under the frm name and style of
"SUSANA LUCHAN POWDER PUFF MANUFACTURING. In
a letter, petitioner informed private respondent that the
powder pufs the latter is manufacturing and selling to
various enterprises particularly those in the cosmetics
industry, resemble Identical or substantially Identical
powder pufs of which the former is a patent holder.
Petitioner explained such production and sale constitute
infringement of said patents and therefore its immediate
discontinuance is demanded, otherwise it will be compelled
to take judicial action. Petitioner fled a complaint for
damages with injunction and preliminary injunction
against private respondent with the then Court of First
Instance of Rizal.
Issue:
Whether or not the Court had jurisdiction to determine the
invalidity of the patents.
Ruling:
The Court ruled that "When a patent is sought to be
enforced, the questions of invention, novelty or prior use,
and each of them, are open to judicial examination." Under
the present Patent Law, there is even less reason to doubt
that the trial court has jurisdiction to declare the patents
in question invalid. A patentee shall have the exclusive
right to make, use and sell the patented article or product
and the making, using, or selling by any person without
the authorization of the patentee constitutes infringement
of the patent (Sec. 37, R.A. 165). Any patentee whose rights
have been infringed upon may bring an action before the
proper CFI now (RTC) and to secure an injunction for the
protection of his rights.
ANGELITA MANZANO VS. MELECIA MADOLARIA
Facts:
Angelita Manzano fled with the Philippine Patent Ofce
an action for the cancellation of Letters Patent for a gas
burner registered in the name of respondent Melecia
Madolaria who subsequently assigned the letters patent to
New United Foundry and Manufacturing Corporation.
Petitioner alleged that (a) the utility model covered by the
letters patent, in this case, an LPG gas burner, was not
inventive, new or useful; (b) the specifcation of the letters
patent did not comply with the requirements of Sec. 14, RA
No. 165, as amended; (c)respondent Melecia Madolaria was
not the original, true and actual inventor nor did she derive
her rights from the original, true and actual inventor of the
utility model covered by the letters patent; and, (d) the
letters patent was secured by means of fraud or
misrepresentation.
Issue:
Whether or not the Letters Patent should be cancelled.
Ruling:
No. The element of novelty is an essential requisite of the
patentability of an invention or discovery. If a device or
process has been known or used by others prior to its
invention or discovery by the applicant, an application for a
patent therefor should be denied; and if the application has
been granted, the court, in a judicial proceeding in which
the validity of the patent is drawn in question, will hold it
void and inefective. It has been repeatedly held that an
invention must possess the essential elements of novelty,
originality and precedence, and for the patentee to be
entitled to the protection the invention must be new to the
world. However, The validity of the patent issued by the
Philippine Patent Ofce in favor of private respondent and
the question over the inventiveness, novelty and usefulness
of the improved model of the LPG burner are matters which
are better determined by the Patent Ofce. The technical
staf of the Philippine Patent Ofce composed of experts in
their feld has by the issuance of the patent in question
accepted private respondents model of gas burner as a
discovery. There is a presumption that the Ofce has
correctly determined the patentability of the model and
such action must not be interfered with in the absence of
competent evidence to the contrary. The rule is settled that
the fndings of fact of the Director of Patents, especially
when afrmed by the Court of Appeals, are conclusive on
this Court when supported by substantial evidence.
Petitioner has failed to show compelling grounds for a
reversal of the fndings andc onclusions of the Patent Ofce
and the Court of Appeals.
CRESER PRECISION SYSTEMS, INC. VS. CA AND
FLORO INTERNATIONAL CO.
Facts:
Private respondent is a domestic corporation engaged in
the manufacture, production, distribution and sale of
military armaments, munitions, airmunitions and other
similar materials. On January 23, 1990, private
respondent was granted by the Bureau of Patents,
Trademarks and Technology Transfer (BPTTT), a Letters
Patent No. UM-6938 covering an aerial fuze which was
published in the September-October-1990, Vol. III, No. 5
issue of the Bureau of Patent's Ofcial Gazette. Sometime
in November 1993, private respondent, through its
president, Mr. Gregory Floro, Jr., discovered that petitioner
submitted samples of its patented aerial fuze to the Armed
Forces of the Philippines (AFP) for testing. He learned that
petitioner was claiming the aforesaid aerial fuze as its own
and planning to bid and manufacture the same
commercially without license or authority from private
respondent. To protect its right, private respondent on
December 3, 1993, sent a letter to petitioner advising it of
its existing patent and its rights thereunder, warning
petitioner of a possible court action and/or application for
injunction, should it proceed with the scheduled testing by
the military on December 7, 1993. In response to private
respondent's demand, petitioner fled on December 8, 1993
a complaint for injunction and damages arising from the
alleged infringement before the Regional Trial Court of
Quezon City, Branch 88. The complaint alleged, among
others: that petitioner is the frst, true and actual inventor
of an aerial fuze denominated as "Fuze, PDR 77 CB4"
which it developed as early as December 1981 under the
Self-Reliance Defense Posture Program (SRDP) of the AFP;
that sometime in 1986, petitioner began supplying the AFP
with the said aerial fuze; that private respondent's aerial
fuze is identical in every respect to the petitioner's fuze;
and that the only diference between the two fuzes are
miniscule and merely cosmetic in nature. Petitioner prayed
that a temporary restraining order and/or writ of
preliminary injunction be issued enjoining private
respondent including any and all persons acting on its
behalf from manufacturing, marketing and/or profting
therefrom, and/or from performing any other act in
connection therewith or tending to prejudice and deprive it
of any rights, privileges and benefts to which it is duly
entitled as the frst, true and actual inventor of the aerial
fuze.
Issue:
Whether or not the petitioners contentions are tenable.
Ruling:
No. We fnd the above arguments untenable.
Section 42 of R.A. 165, otherwise known as the Patent Law,
explicitly provides:
Sec. 42. Civil action for infringement. Any patentee, or
anyone possessing any right, title or interest in and to the
patented invention, whose rights have been infringed, may
bring a civil action before the proper Court of First Instance
(now Regional Trial court), to recover from the infringer
damages sustained by reason of the infringement and to
secure an injunction for the protection of his right. . . .
Under the aforequoted law, only the patentee or his
successors-in-interest may fle an action for infringement.
The phrase "anyone possessing any right, title or interest in
and to the patented invention" upon which petitioner
maintains its present suit, refers only to the patentee's
successors-in-interest, assignees or grantees since actions
for infringement of patent may be brought in the name of
the person or persons interested, whether as patentee,
assignees, or as grantees, of the exclusive right. Moreover,
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.
In short, a person or entity who has not been granted
letters patent over an invention and has not acquired any
light or title thereto either as assignee or as licensee, has
no cause of action for infringement because the right to
maintain an infringement suit depends on the existence of
the patent.
Petitioner admits it has no patent over its aerial fuze.
Therefore, it has no legal basis or cause of action to
institute the petition for injunction and damages arising
from the alleged infringement by private respondent. While
petitioner claims to be the frst inventor of the aerial fuze,
still it has no right of property over the same upon which it
can maintain a suit unless it obtains a patent therefor.
Under American jurisprudence, an inventor has no
common-law right to a monopoly of his invention. He has
the right to make, use and vend his own invention, but if
he voluntarily discloses it, such as by ofering it for sale,
the world is free to copy and use it with impunity. A patent,
however, gives the inventor the right to exclude all others.
As a patentee, he has the exclusive right of making, using
or selling the invention.
SMITH KLINE BECKMAN CORPORATION v. COURT OF
APPEALS
AND TRYCO PHARMA CORPORATION
Facts:
Smith Kline Beckman Corporation (petitioner), a
corporation existing by virtue of the laws of the state of
Pennsylvania, United States of America (U.S.) and licensed
to do business in the Philippines, fled on October 8, 1976,
as assignee, before the Philippine Patent Ofce (now
Bureau of Patents, Trademarks and Technology Transfer)
an application for patent over an invention entitled
"Methods and Compositions for Producing Biphasic
Parasiticide Activity Using Methyl 5 Propylthio-2-
Benzimidazole Carbamate." The application bore Serial No.
18989.
On September 24, 1981, Letters Patent No. 145611 for the
aforesaid invention was issued to petitioner for a term of
seventeen (17) years.
The letters patent provides in its claims2 that the patented
invention consisted of a new compound named methyl 5
propylthio-2-benzimidazole carbamate and the methods or
compositions utilizing the compound as an active
ingredient in fghting infections caused by gastrointestinal
parasites and lungworms in animals such as swine, sheep,
cattle, goats, horses, and even pet animals.
Tryco Pharma Corporation (private respondent) is a
domestic corporation that manufactures, distributes and
sells veterinary products including Impregon, a drug that
has Albendazole for its active ingredient and is claimed to
be efective against gastro-intestinal roundworms,
lungworms, tapeworms and fuke infestation in carabaos,
cattle and goats.
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. 14561 as 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 petitioners
patented Albendazole.
Issue:
Whether or not there is infringement of patent.
Ruling:
From an examination of the evidence on record, this Court
fnds nothing infrm in the appellate courts conclusions
with respect to the principal issue of whether private
respondent committed patent infringement to the prejudice
of petitioner.
The burden of proof to substantiate a charge for patent
infringement rests on the plaintif. In the case at bar,
petitioners evidence consists primarily of its Letters Patent
No. 14561, and the testimony of Dr. Orinion, its general
manager in the Philippines for its Animal Health Products
Division, by which it sought to show that its patent for the
compound methyl 5 propylthio-2-benzimidazole carbamate
also covers the substance Albendazole.
From a reading of the claims of Letters Patent No. 14561 in
relation to the other portions thereof, no mention is made
of the compound Albendazole. All that the claims disclose
are: the covered invention, that is, the compound methyl 5
propylthio-2-benzimidazole carbamate; the compounds
being anthelmintic but nontoxic for animals or its ability to
destroy parasites without harming the host animals; and
the patented methods, compositions or preparations
involving the compound to maximize its efcacy against
certain kinds of parasites infecting specifed animals.
While petitioner concedes that the mere literal wordings of
its patent cannot establish private respondents
infringement, it urges this Court to apply the 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 modifcation and change, performs
substantially the same function in substantially the same
way to achieve substantially the same result. Yet again, a
scrutiny of petitioners evidence fails to convince this Court
of the substantial sameness of petitioners patented
compound and Albendazole. While both compounds have
the efect 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.
As stated early on, petitioners evidence fails to explain how
Albendazole is in every essential detail identical to methyl 5
propylthio-2-benzimidazole carbamate. Apart from the fact
that Albendazole is an anthelmintic agent like methyl 5
propylthio-2-benzimidazole carbamate, nothing more is
asserted and accordingly substantiated regarding the
method or means by which Albendazole weeds out
parasites in animals, thus giving no information on
whether that method is substantially the same as the
manner by which petitioners compound works. The
testimony of Dr. Orinion lends no support to petitioners
cause, he not having been presented or qualifed as an
expert witness who has the knowledge or expertise on the
matter of chemical compounds.
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