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Patents Digests

Patents Digests

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Published by: maantutitot on Apr 12, 2010
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 The primary purpose of the patent system is notthe reward of the individual but the advancement of the artsand sciences. The function of a patent is to add to the sumof useful knowledge and one of the purposes of the patentsystem is to encourage dissemination of informationconcerning discoveries and inventions.FACTS:Angelita Manzano filed PPO an action for thecancellation of Letters Patent for a gas burner registered inthe name of respondent Melecia Madolaria whosubsequently assigned the letters patent to New UnitedFoundry and Manufacturing Corporation (UNITED FOUNDRY,for brevity). Petitioner alleged that (a) the utility modelcovered by the letters patent, in this case, an LPG gasburner, was not inventive, new or useful; (b) thespecification of the letters patent did not comply with therequirements of Sec. 14, RA No. 165, as amended; (c)respondent Melecia Madolaria was not the original, true andactual inventor nor did she derive her rights from theoriginal, true and actual inventor of the utility modelcovered by the letters patent; and, (d) the letters patentwas secured by means of fraud or misrepresentation. Testifying for herself petitioner narrated that herhusband Ong Bun Tua worked as a helper in the UNITEDFOUNDRY where respondent Melecia Madolaria used to beaffiliated with from 1965 to 1970; that Ong helped in thecasting of an LPG burner which was the same utility modelof a burner and that after her husband’s separation from theshop she organized Besco Metal Manufacturing (BESCOMETAL, for brevity) for the casting of LPG burners one of which had the configuration, form and component partssimilar to those being manufactured by UNITED FOUNDRY.Petitioner presented two (2) other witnesses,namely, her husband Ong Bun Tua and Fidel Francisco.Private respondent, on the other hand, presentedonly one witness, Rolando Madolaria, who testified, amongothers, that he was the General Supervisor of the UNITEDFOUNDRY.Director of Patents Cesar C. Sandiego denied thepetition for cancellation and holding that the evidence of petitioner was not able to establish convincingly that thepatented utility model of private respondent wasanticipated.Petitioner elevated the decision of the Director of Patents to the Court of Appeals which affirmed the decisionof the Director of Patents. Hence, this petition for review on
ISSUE:Whether the dismissal is proper where the patentapplied for has no substantial difference between the modelto be patented and those sold by petitioner.HELD: The element of novelty is an essential requisite of thepatentability of an invention or discovery. If a device orprocess has been known or used by others prior to itsinvention or discovery by the applicant, an application for apatent therefor should be denied; and if the application hasbeen granted, the court, in a judicial proceeding in whichthe validity of the patent is drawn in question, will hold itvoid and ineffective. It has been repeatedly held that aninvention must possess the essential elements of novelty,originality and precedence, and for the patentee to beentitled to the protection the invention must be new to theworld.However, The validity of the patent issued by thePhilippine Patent Office in favor of private respondent andthe question over the inventiveness, novelty and usefulnessof the improved model of the LPG burner are matters whichare better determined by the Patent Office. The technicalstaff of the Philippine Patent Office composed of experts intheir field has by the issuance of the patent in questionaccepted private respondent’s model of gas burner as adiscovery. There is a presumption that the Office hascorrectly determined the patentability of the model
and suchaction must not be interfered with in the absence of competent evidence to the contrary. The rule is settled that the findings of fact of theDirector of Patents, especially when affirmed by the Court of Appeals, are conclusive on this Court when supported bysubstantial evidence. Petitioner has failed to showcompelling grounds for a reversal of the findings andconclusions of the Patent Office and the Court of Appeals.Petition DISMISSED.
FACTS:Petitioner is doing business under the firm nameand style of SWAN MANUFACTURING" while privaterespondent is likewise doing business under the firm nameand style of "SUSANA LUCHAN POWDER PUFFMANUFACTURING.” And holderpetitioner informed private respondent that thepowder puffs the latter is manufacturing and selling tovarious enterprises particularly those in the cosmeticsindustry, resemble Identical or substantially Identicalpowder puffs of which the former is a patent holder underRegistration Certification Nos. Extension UM-109, ExtensionUM-110 and Utility Model No. 1184; petitioner explainedsuch production and sale constitute infringement of saidpatents and therefore its immediate discontinuance isdemanded, otherwise it will be compelled to take judicialactionPrivate respondent replied stating that herproducts are different and countered that petitioner'spatents are void because the utility models applied for werenot new and patentable and the person to whom thepatents were issued was not the true and actual author norwere her rights derived from such author.Petitioner filed a complaint for damages withinjunction and preliminary injunction against privaterespondent with the then Court of First Instance of Rizal The trial court issued an Order granting thepreliminary injunction prayed for by petitioner.Consequently, the corresponding writ was subsequentlyissued.In challenging these Orders private respondentfiled a petition for certiorari with the respondent court butwas denied. Hence this petition.ISSUE:(1) Whether or not in an action for infringement the Court
had jurisdiction to determine the invalidity of thepatents at issue which invalidity was still pendingconsideration in the patent office.(2) Whether or not the Court
a quo
committed grave abuseof discretion in the issuance of a writ of preliminaryinjunction.(3) Whether or not certiorari is the proper remedy.HELD:1) The first issue has been laid to rest in a number of caseswhere 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 lessreason to doubt that the trial court has jurisdiction todeclare the patents in question invalid. A patentee shallhave the exclusive right to make, use and sell the patentedarticle or product and the making, using, or selling by anyperson without the authorization of the patentee constitutesinfringement of the patent (Sec. 37, R.A. 165). Any patenteewhose rights have been infringed upon may bring an actionbefore the proper CFI now (RTC) and to secure an injunctionfor the protection of his rights.2) The burden of proof to substantiate a charge of infringement is with the plaintiff. But where the plaintifintroduces the patent in evidence, and the same is in dueform, there is created a
 prima facie
presumption of itscorrectness and validity. The decision of the Commissioner(now Director) of Patent in granting the patent is presumedto be correct. The burden of going forward with theevidence (burden of evidence) then shifts to the defendantto overcome by competent evidence this legal presumption. The question then in the instant case is whether ornot the evidence introduced by private respondent herein issufficient to overcome said presumption.After a careful review of the evidence consisting of 64 exhibits and oral testimonies of five witnesses presentedby private respondents before the Court of First Instancebefore the Order of preliminary injunction was issued as wellas those presented by the petitioner, respondent Court of Appeals was satisfied that there is a
 prima facie
showing of a fair question of invalidity of petitioner's patents on theground of lack of novelty. As pointed out by said appellatecourt said evidence appeared not to have been consideredat all by the court
a quo
for alleged lack of jurisdiction, onthe mistaken notion that such question in within theexclusive jurisdiction of the patent office.It has been repeatedly held that an invention mustpossess the essential elements of novelty , originality andprecedence and for the patentee to be entitled toprotection, the invention must be new to the world.Accordingly, a single instance of public use of the inventionby a patentee for more than two years (now for more thanone year only under Sec. 9 of the Patent Law) before thedate of his application for his patent, will be fatal to, thevalidity of the patent when issued.It will be noted that the validity of petitioner'spatents is in question for want of novelty. Privaterespondent contends that powder puffs Identical inappearance with that covered by petitioner's patentsexisted and were publicly known and used as early as 1963long before petitioner was issued the patents in question.(List of Exhibits, Rollo, pp. 194-199). As correctly observedby respondent Court of Appeals, "since sufficient proofshave been introduced in evidence showing a fair question of the invalidity of the patents issued for such models, it is butright that the evidence be looked into, evaluated anddetermined on the merits so that the matter of whether thepatents issued were in fact valid or not may be resolved."(Rollo, pp. 286-287).All these notwithstanding, the trial courtnonetheless issued the writ of preliminary injunction whichunder the circumstances should be denied.For failure to determine first the validity of thepatents before aforesaid issuance of the writ, the trial courtfailed to satisfy the two requisites necessary if an injunctionis to issue, namely: the existence of the right to beprotected and the violation of said right. (Buayan Cattle Co.,Inc. v. Quintillan, 128 SCRA 276).Under the above established principles, it appearsobvious that the trial court committed a grave abuse of discretion which makes certiorari the appropriate remedy.As found by respondent Court of Appeals, theinjunctive order of the trial court is of so general a tenor thatpetitioner may be totally barred from the sale of any kind of powder puff. Under the circumstances, respondent appellatecourt is of the view that ordinary appeal is obviouslyinadequate.
FACTS:Angel Vargas, a farmer acquainted with localconditions and alive to the commercial possibilities, took itupon himself to produce, with the native plow as the model,an improved, adjustable plow. He made application for aUnited States patent to cover his so-called invention. Theletters patent were issued by the United States Patent Officein favor of Vargas .Acertified copy of the patent was filed inthe Division of Patents, Copyrights, and Trademarks of theExecutive Bureau, Government of the Philippine Islands. Thepatent and its registry was also published in the newspaper,
El Tiempo
.Since 1910, Vargas has engaged in themanufacture of these plows in the city of Iloilo, PhilippineIslands. On the plows there was first stamped the words"Patent Applied For," later after the patent had beengranted, changed to "Patented Mar. 12, 1912." Ninety percent of the plows in use in the Visayas (Iloilo and vicinity)are said to be Vargas plows.During this same period, the firm of F. M. Yaptico &Co. (Ltd.), was engaged in the foundry business in the Cityof Iloilo. It openly held itself out as a manufacturer of plowparts. It has in fact produced points, shares, shoes, and heelpieces in a considerable amount adapted to replace worn-out parts of the Vargas plow.Such was the existing situation when, in the earlypart of 1918, the owner of the patent, and thus the properparty to institute judicial proceedings, began action in theCourt of First Instance of Iloilo to enjoin the allegedinfringement of U.S. Patent No. 1020232 by the defendant F.M Yaptico & Co. (Ltd.), and to recover the damages sufferedby reason of this infringement. The court issued thepreliminary injunction as prayed for. The defendant, inaddition to a general denial, alleged, as special defenses,that the patent lacked novelty or invention, that there wasno priority of ideas or device in the principle andconstruction of the plow, and that the plow, whosemanufacture it was sought to have enjoined by the plaintiff,had already been in public use for more than two yearsbefore the application of the plaintiff for his patent. Theparties subsequently entered into a stipulation that thecourt should first resolve the question of whether or notthere had been an infraction of the patent, reserving theresultant question of damages for later decision. After thetaking of evidence, including the presentation of exhibits,the trial judge, the Honorable Antonio Villareal, in a veryexhaustive and learned decision, rendered judgment infavor of the defendant and against the plaintiff, declaringnull and without effect the patent in question and dismissingthe suit with costs against the plaintiff. The preliminaryinjunction theretofore issued was dissolved.From this judgment the plaintiff has appealed.ISSUE:(1) The judgment of the trial court in finding the patentgranted plaintiff void for lack of novelty and inventionshould be affirmed;
(2) The patent granted plaintiff is void from the public use of his plow for over two years prior to his application for apatent, and(3) If the patent is valid, there has been no contributoryinfringement by defendant.HELD:(1) When a patent is sought to be enforced, "the question of invention, novelty, or prior use, and each of them, are opento judicial examination." The burden of proof to substantiatea charge of infringement is with the plaintiff. Where,however, the plaintiff introduces the patent in evidence, if itis in due form, it affords a
 prima facie
presumption of itscorrectness and validity. The decision of the Commissionerof Patents in granting the patent is always presumed to becorrect. The burden then shifts to the defendant toovercome by competent evidence this legal presumption.With all due respect, therefore, for the critical and expertexamination of the invention by the United States PatentOffice, the question of the validity of the patent is one for judicial determination, and since a patent has beensubmitted, the exact question is whether the defendant hasassumed the burden of proof as to anyone of his defensesAs herein before stated, the defendant relies onthree special defenses. One such defense, on which the judgment of the lower court is principally grounded, and towhich appellant devotes the major portion of his vigorousargument, concerns the element of novelty, invention, ordiscovery, that gives existence to the right to a patent. Onthis point the trial court reached the conclusion that "thepatented plow of the plaintiff, Exhibit D, is not different fromthe native plow, Exhibit 2, except in the material, in theform, in the weight and the grade of the result, the saiddifferences giving it neither a new function nor a new resultdistinct from the function and the result obtained from thenative plow; consequently, its production does notpresuppose the exercise of the inventive faculty but merelyof mechanical skill, which does not give a right to a patentof an invention under the provisions of the Patent Law." Inthus finding, the court may have been right, since theVargas plow does not appear to be such a "combination" ascontains a novel assemblage of parts exhibiting invention.A second line of defense relates to the fact thatdefendant has never made a complete Vargas plow, butonly points, shares, shoes, and heel pieces, to serve asrepairs. Defendant's contention is, that in common withother foundries, he has for years cast large numbers of plowpoints and shares suitable for use either on the nativewooden plow, or on the Vargas plow. A difference has longbeen recognized between repairing and reconstructing amachine. If, for instance, partial injuries, whether they occurfrom accident or from wear and tear, to a machine foragricultural purposes, are made this is only re-fitting themachine for use, and thus permissible. Even under the morerigorous doctrine of Leeds & Catlin Co.
. Victor TalkingMachine Co. ([1909], 213 U.S., 325), it may be possible thatall the defendant has done is to manufacture and sellisolated parts to be used to replace worn-out parts. The third defense is, that under the provisions of the statute, an inventor's creation must not have been inpublic use or on sale in the United States (and the PhilippineIslands) for more than two years prior to his application.Without, therefore, committing ourselves as to the first twodefenses, we propose to base our decision on the one justsuggested as more easily disposing of the case. (
20 R.C. L., 1140-1142.) We do so with full consciousness of thedoubt which arose in the mind of the trial court, but with thebelief that since it has been shown that the invention wasused in public at Iloilo by others than Vargas, the inventor,more than two years before the application for the patent,the patent is invalid.Although we have spent some time in arriving atthis point, yet having reached it, the question in the case issingle and can be brought to a narrow compass. Under theEnglish Statute of Monopolies (21 Jac. Ch., 3), and under theUnited States Patent Act of February 21, 1793, lateramended to be as herein quoted, it was always the rule, asstated by Lord Coke, Justice Story and other authorities, thatto entitle a man to a patent, the invention must be new tothe world. As said by the United States Supreme Court, "ithas been repeatedly held by this court that a
single instanceof public use of the invention
by a patentee for more thantwo years before the date of his application for his patent
will be fatal to the validity of the patent 
when issued."On the facts, we think the testimony shows such apublic use of the Vargas plow as to render the patent invalidNicolas Roces, a farmer, testified that he had bought twentyVargas plows, of which Exhibit 5 was one, in December,1907; and Exhibit 5, the court found, was a plow completelyidentical with that for which the plaintiff had received apatent. The minor exception, and this in itself corroborativeof Roces' testimony, is that the handle of plow Exhibit 5 ismarked with the letters "A V" and not with the words "PatentApplied For" or "Patented Mar.12, 1912." Salvador Lizarraga,a clerk in a business house, testified that he had receivedplows similar to Exhibits D, 5, and 4, for sale on commissionon May, 1908, from Bonifacio Araneta, partner of Vargas inthe plow business. Ko Pao Ko, a blacksmith, testified that hehad made fifty plow frames in 1905 for Vargas and Araneta,of which Exhibit 4 is one; Exhibit 4, the court found, is aplow identical with that patented by Vargas, but withoutshare and mould-board. Alfred Berwin, an employee in theoffice of Attorney John Bordman, testified that on September21, 1908, he had knowledge of a transaction wherein Vargasand Araneta desired to obtain money to invest in a plowfactory. George Ramon Saul, a mechanic of the "TallerVisayas" of Strachan and MacMurray, testified that he hadmade Vargas plow points and shares of the present formupon order of Araneta and Vargas in 1906 and 1907 .WilliamMacMurray, proprietor of the "Taller Visayas," corroboratedthe evidence of the witness Saul by the exhibition of theaccount against Vargas and Araneta wherein, under date of December 13, 1906, appears the item "12 new soft steelplow shares forged and bored for rivets as per sample."Against all this, was the testimony of the plaintiff AngelVargas who denied that Saul could have been seen theVargas plow in 1907 and 1907, who denied that Rocespurchased the Vargas plow in 1907, who denied thatLizarraga could have acted as an agent to sell two plows inNovember, 1908, who denied any remembrance of the loanmentioned by Berwin as having been negotiated inSeptember, 1908, who denied that Ko Pao Ko made fiftyplows one of which is Exhibit 4, for Araneta and Vargas in1905. Plaintiff introduced his books to substantiate his oraltestimony .It is hardly believable that five or six witnessesfor the defense would deliberately perjure themselves underoath. One might, but that all together, of differentnationalities, would enter into such a conspiracy, is tosuppose the improbable. Tested by the principles which go to make the law,we think a preponderance of the evidence is to the effectthat for more than two years before the application for theoriginal letters patent, or before July 22, 1908, there was, bythe consent and allowance of Vargas, a public use of theinvention covered by them. To conclude, we are not certain but that appelleehas proved every one of his defenses. We are certain thathe has at least demonstrated the public use of the Vargas

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