#1 G.R. No. L-32160 January 30, 1982 DOMICIANO A. AGUAS, petitioner, vs. CONRADO G.

. DE LEON and COURT OF APPEALS, respondents. FACTS: on April 14, 1962, Conrado G. de Leon filed in the Court of First Instance of Rizal at Quezon City a complaint for infringement of patent against Domiciano A. Aguas and F. H. Aquino and Sons alleging that being the original first and sole inventor of a new process of making mosaic pre-cast tiles through patent 658. Defendant Domiciano A. Aguas infringed Letters of Patent No. 658 by making, using and selling tiles embodying said patent invention and that defendant F. H. Aquino & Sons is guilty of infringement. On April 14, 1962, an order granting the plaintiff's petition for a Writ of Preliminary Injunction was issued. On May 23, 1962, the defendant Domiciano A. Aguas filed his answer denying the allegations of the plaintiff and alleging that: the plaintiff is neither the original first nor sole inventor of the improvements in the process of making mosaic pre-cast tiles, the same having been used by several tile-making factories in the Philippines and abroad years before the alleged invention by de Leon. the truth being that; a) the invention of plaintiff is neither inventive nor new, hence, it is not patentable, b) defendant has been granted valid patents (Patents No. 108, 109, 110 issued on December 21, 1961) on designs for concrete decorative wall tiles; and c) that he can not be guilty of infringement because his products are different from those of the plaintiff. The trial court rendered a decision in favor of the plaintiff, Declaring plaintiff's patent valid and infringed. The defendant Domiciano Aguas appealed to the Court of Appeals to which the decision by the lower court was affirmed. ISSUE Whether or not the patent of De Leon on the ground that the process, subject of said patent, is not an invention or discovery, or an improvement of the old system of making tiles is valid?

HELD: VALID

The validily of the patent issued by the Philippines Patent Office in favor of the private respondent and the question over the inventiveness, novelty and usefulness of the improved process therein specified and described are matters which are better determined by the Philippines Patent Office. The technical staff of the Philippines Patent Office, composed of experts in their field, have, by the issuance of the patent in question, accepted the thinness of the private respondent's new tiles as a discovery. There is a presumption that the Philippines Patent Office has correctly determined the patentability of the improvement by the private respondent of the process in question.

The records disclose that de Leon's process is an improvement of the old process of tile making. The tiles produced from de Leon's process are suitable for construction and ornamentation, which previously had not been achieved by tiles made out of the old process of tile making. De Leon's invention has therefore brought about a new and useful kind of tile. The old type of tiles were usually intended for floors although there is nothing to prevent one from using them for walling purposes. These tiles are neither artistic nor ornamental. They are heavy and massive. The respondent's improvement is indeed inventive and goes beyond the exercise of mechanical skill. He has introduced a new kind of tile for a new purpose. He has improved the old method of making tiles and pre-cast articles which were not satisfactory because of an intolerable number of breakages, especially if deep engravings are made on the tile. He has overcome the problem of producing decorative tiles with deep engraving, but with sufficient durability. Durability inspite of the thinness and lightness of the tile, is assured, provided that a certain critical depth is maintained in relation to the dimensions of the tile.

#2 G.R. L-24919 January 28, 1980 JAMES HOWARD BOOTHE and JOHN MORTON, II, petitioners, vs. THE DIRECTOR OF PATENTS, respondent. FACTS Petitioners James Howard Boothe and John Morton II, chemists, citizens and residents of the United States, claim to be the inventors of a new antibiotic designated as "tetracycline". On February 19, 1954, petitioners applied for Letters Patent covering said invention to respondent Director of Patents claiming the right of priority granted to foreign applicants under section 15 of the Patent Law (RA 165). On April 14, 1954, petitioners filed with respondent Director a legalized copy of their Application for Letters Patent in the United States for the same invention (U.S. Serial No. 342556). Said legalized copy indicated that the application in the United States was filed on March 16, 1963. Under this, petitioners are entitled to the priority date of March 16, 1953 if their application is considered filed in the Philippines as of March 5, 1954, since the latter date would fall within the one-year period prior to March 5, 1954. On February 7, 1958, petitioners informed respondent Director that in interference proceedings in the United States, Letters Patent for a similar invention as theirs was awarded to Pfizer and Co. which had filed its application ahead and that they failed to obtain any U.S. patent for their own invention. On August 5, 1959, in Paper No. 6, Patent Examiner, Lydia Nueva Espaa, rejected all of petitioners' claims, referring to a local Patent obtained by Pfizer and Co., presumably covering the same invention. Additionally, petitioners were advised that the "Specification" they had submitted was "incomplete". petitioners submitted two complete copies(9 new pages) of the Specification which was then rejected by Chief Patent Examiner Nicanor Mapili. Petitioners moved for reconsideration on the ground that their application falls under the exception provided for in Rule 47 of the Revised Rules of Practice in Patent Cases in that the missing nine pages(new specifications) submitted by them are not really new matter but a mere "minor informality."

Adversely affected, petitioners appealed to dent Director of Patents. Admitting the additional pages but the application shall not be extended priority rights under section 15 of the Patent Law. Also, changing the filing date ISSUE WON RESPONDENT DIRECTOR OF PATENTS ERRED IN HOLDING THAT PETITIONERS' APPLICATION, SERIAL NO. 952, MAY NOT BE TREATED AS FILED UNDER SECTION 15 AS AMENDED, OF REPUBLIC ACT NO. 165 KNOWN AS THE PATENT LAW. HELD: NO Explicit in Rule 262 of the Revised Rules of Practice in Patent Cases is the power and authority of respondent Director to decide petitioners' appeal in the manner that he did, and we quote: 262. Decision by the Director. (a) The Director, in his decision, may affirm or reverse the decision of the Principal Examiner in whole or in part on the ground and on the claims specified by the Examiner. The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the Principal Examiner on that claim, except as to any ground specifically reversed. (b) Should the Director have knowledge of any grounds not involved in the appeal for rejecting any claim he may include in his decision a statement to that effect with his reasons for so holding which statement shall constitute a rejection of the claims. ... In other words, respondent Director is empowered to consider grounds which may have come to his knowledge other than those specifically raised in an appeal He need not confine himself only to issues invoked. Besides, the question of new matter is inextricably linked with the right of priority on which petitioners have anchored their application. As early as Paper No. 18, supra, the Supervising Patent Examiner had concluded that inasmuch as the submitted pages did not correspond with the certified copy of the U.S. application, "the present application cannot therefore be granted priority date under section 16 as requested by applicant." Again, in Paper No. 22, supra, the Chief Patent Examiner made mention of petitioner' imperfect application and the fact that the deadline for filinf required by section 15 of the Patent Law cannot be extended directly or indirectly otherwise "the restrictive provisions of section 15 will be nullified." All told, we sustain respondent Director's findings in the absence of error or abuse of power or lack of jurisdiction or grave abuse of discretion. We have held that in the absence of arbitrariness, and provided they are supported by

substantial evidence, as in this case, the conclusions reached by the Director of Patents are to be accorded respect and m ust be upheld.

#3 G.R. No. 115758. March 19, 2002 ELIDAD C. KHO, doing business under the name and style of KEC COSMETICS LABORATORY, petitioner, vs. HON. COURT OF APPEALS, SUMMERVILLE GENERAL MERCHANDISING and COMPANY, and ANG TIAM CHAY, respondents. FACTS On December 20, 1991, petitioner Elidad C. Kho filed a complaint for injunction and damages with a prayer for the issuance of a writ of preliminary injunction, against the respondents Summerville General Merchandising and Company and Ang Tiam Chay. The petitioners complaint alleges that petitioner, doing business under the name and style of KEC Cosmetics Laboratory, is the registered owner of the copyrights Chin Chun Su and Oval Facial Cream Container/Case, that she also has patent rights on Chin Chun Su & Device and Chin Chun Su for medicated cream after purchasing the same from Quintin Cheng, the registered owner thereof in the Supplemental Register of the Philippine Patent Office on February 7, 1980. respondent Summerville advertised and sold petitioners cream products under the brand name Chin Chun Su, in similar containers that petitioner uses, thereby misleading the public, and resulting in the decline in the petitioners business sales and income; and, that the respondents should be enjoined from allegedly infringing on the copyrights and patents of the petitioner. The respondents, on the other hand, alleged as their defense that Summerville is the exclusive and authorized importer, re-packer and distributor of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan; that the said Taiwanese manufacturing company authorized Summerville to register its trade name Chin Chun Su Medicated Cream with the Philippine Patent Office and other appropriate governmental agencies; that KEC Cosmetics Laboratory of the petitioner obtained the copyrights through misrepresentation and falsification; and, that the authority of Quintin Cheng, assignee of the patent registration certificate, to distribute and market Chin Chun Su products in the Philippines had already been terminated by the said Taiwanese Manufacturing Company. After due hearing on the application for preliminary injunction, the trial court granted the same. The respondents moved for reconsideration but their motion for reconsideration was denied. The appellate court rendered a Decision, ruling in favor of the respondents. ISSUE WON the copyright and patent over the name and container of the beauty

cream product entitled the registrant to its EXCLUSIVE use and ownership HELD: NO 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. Petitioner has no right to support her claim for the exclusive use of the subject trade name and its container. The name and container of a beauty cream product are proper subjects of a trademark inasmuch as the same falls squarely within its definition. In order to be entitled to exclusively use the same in the sale of the beauty cream product, the user must sufficiently prove that she registered or used it before anybody else did. The petitioners copyright and patent registration of the name and container would not guarantee her the right to the exclusive use of the same for the reason that they are not appropriate subjects of the said intellectual rights. Consequently, a preliminary injunction order cannot be issued for the reason that the petitioner has not proven that she has a clear right over the said name and container to the exclusion of others, not having proven that she has registered a trademark thereto or used the same before anyone did.

#4 MAYO COLLABORATIVE SERVICES, DBA MAYO MEDICAL LABORATORIES, ET AL. v. PROMETHEUS LABORATORIES, INC. FACTS