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in the name of responded Melecia Madolaria who subsequently assigned theletter of patent to United Foundry. Petitioner alleged that the private respondent was not theoriginal, true and actual inventor nor did she derive her rights from the original, true and actualinventor of the utility model covered by the letter of patent; further alleged that the utilitymodel covered by the subject letter of patent had been known or used by others in thePhilippines for than one (1) year before she filed her application for letter of patent on Dec1979. For failure to present substantive proof of her allegations, the lower court and Court of Appeals denied the action for cancellation. Hence, the present petition. ISSUE:Whether or not the respondent court wrongfully denied the cancellation of letter of patent registered under the private respondent. HELD:No. The issuance of such patent creates a presumption which yields only to clear andcogent evidence that the patentee was the original and first inventor. The burden of provingwant of novelty is on him who avers it and the burden is a heavy one which is met only by clearand satisfactory proof which overcomes every reasonable doubt. Clearly enough, the petitionerfailed to present clear and satisfactory proof to overcome every reasonable doubt to afford thecancellation of the patent to the private respondent.
MAGUAN V CA Principle in the case:A patentee shall have the exclusive right to make, use and sell the patentedarticle or product and the making, using, or selling by any person without the authorization of thepatentee constitutes infringement of the patent (Sec. 37, R.A. 165). Any patentee whose rightshave been infringed upon may bring an action before the proper CFI now (RTC) and to secure aninjunction for the protection of his rights. FACTS:Maguan is doing business under the firm name and style of SWAN MANUFACTURING" while Luchan islikewise doing business under the firm name and style of "SUSANA LUCHAN POWDER PUFFMANUFACTURING.”Maguan informed Luchan that the powder puffs Luchan is manufacturing and selling to various enterprisesparticularly those in the cosmetics industry, resemble Identical or substantially Identical powder puffs of which she (Maguan) is a patent holder under Registration Certification Nos. Extension UM-109, ExtensionUM-110 and Utility Model No. 1184; Maguan explained such production and sale constitute infringement of said patents and therefore its immediate discontinuance is demanded, otherwise it will be compelled totake judicial action.Luchan replied stating that her products are different and countered that Maguan’s patents are voidbecause the utility models applied for were not new and patentable and the person to whom the patentswere issued was not the true and actual author nor were her rights derived from such author.Maguan filed a complaint for damages with injunction and preliminary injunction against Luchan with thethen Court of First Instance of Rizal. The trial court issued an Order granting the preliminary injunctionprayed for. Consequently, the corresponding writ was subsequently issued. Issue: WON in Maguan has a right to file an action before the CFI for injunction due to infringement of herpatent. Ruling: Yes.Rationale:When a patent is sought to be enforced, the questions of invention, novelty or prior use, and each of them,are open to judicial examination.Under the present Patent Law, there is even less reason to doubt that the trial court has jurisdiction todeclare the patents in question invalid. A patentee shall have the exclusive right to make, use andsell the patented article or product and the making, using, or selling by any person withoutthe 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 properCFI now (RTC) and to secure an injunction for the protection of his rights. The burden of proof to substantiate a charge of infringement is with the plaintiff. But where the plaintiff introduces the patent in evidence, and the same is in due form, there is created a prima facie presumptionof its correctness and validity. The decision of the Commissioner (now Director) of Patent in granting thepatent is presumed to be correct. The burden of going forward with the evidence (burden of evidence)then shifts to the defendant to overcome by competent evidence this legal presumption.
(2) Parke Davis & Company is unwilling to grant petitioner a voluntary license under said patent by reasonof which the production and manufacture of needed medicine containing chloramphenicol has been undulyrestrained to a certain extent that it is becoming a monopoly. althoughcapable of being so worked. Inc.Issue: WON Doctor’s Pharma should be given the said compulsory license under sec. 1965 Principle in the case:In order that any person may be granted a license under a particular patentedinvention relating to any of those enumerated under Section 34. The patent contains ten claims. L-22221 August 31. no error in the decision of the Director of Patents on this aspect of the controversy. INC. use. — Any person may apply to the Director for the grant of a licenseunder a particular patent at any time after the expiration of three years from the date of the grant of thepatent. is a domestic corporation which applied for a petitionwith the Director of Patents..showing that any of the circumstances thus enumerated would be sufficient to support the grant.. the reason for it being that the provision permitting the grant of compulsory license isintended not only to give a chance to others to supply the public with the quantity of thepatented article but especially to prevent the building up of patent monopolies. nine of whichare process claims. is a foreign corporation is the owner of a patent entitled "Process for theManufacturing of Antibiotics" (Letters Patent No. Inc. 165 Ruling: Yes. and (5) the patented invention is not necessary for publichealth and safety.PARKE. prayed that it be authorized to manufacture. 165. it is sufficient that theapplication be made after the expiration of three years from the date of the grant of thepatent and that the Director should find that a case for granting such license has been madeout. 34 (d)of Republic ActNo.therefore.Grounds for compulsory license. verily the period that had elapsed then is more thanthree years. The Director of Patents rendered a decision granting to Doctor’s Pharma the license prayed for. which are in the disjunctive. (c) or (d). and the other is a product claim to the chemical substance chloramphenicol. praying that it be granted a compulsory licenseunder Letters Patent No.The grant of such .or(d) If the patented invention relates to food or medicine or is necessary for public health or public safety. 34. 50 covering said substance weregranted to Parke Davis & Company on February 9. DOCTORS' PHARMACEUTICALS. (c) If by reason of the refusal of the patentee to grant a license or licenses on reasonable terms.. Facts:Parke Davis & Company.G. or the trade or industry therein is unduly restrained.Doctors' Pharmaceuticals. without satisfactory reason. ET AL. No. (3) doctor’s pharma is not competent to workthe patented invention. and sell its own productscontaining chloramphenicol as well as choose its own brand or trademark. or byreason of the conditions attached by the patentee to licenses or to the purchase. (b).Rationale: The pertinent statutory provisions that govern the issues raised herein are found in Chapter VIII of RepublicAct No. on the other hand. As may be noted.And from them we can see that in order that any person may be granted a license under aparticular patented invention relating to medicine under Section 34(d).A cursory reading of the provisions above-quoted will reveal that any person may apply for the grant of alicense under any of the circumstances stated in Section 34 (a). it is sufficient that (1) theapplication be made after the expiration of three years from the date of the grant of the patent and(2) that the Director should find that a case for granting such license has been made out. — Compulsory LicensingSEC. Republic Act 165) as claimed in the third assignment of error.R.Doctors' Pharmaceuticals.Finally. 50) The patent relates to a chemical compoundrepresented by a formula commonly called chloramphenicol.Since in the instant case it is admitted by Parke Davis that the chemical substance chloramphenicolis a medicine. each of these circumstances stands alone and is independent of the others. and(4) the patented invention is not being worked in the Philippines on a commercial scale. (2) doctor’s pharma has not requestedany license to work the patented invention in the Philippines. without satisfactory reason. as amended.Parke Davis & Company filed a written opposition setting up the following affirmative defenses: (1) acompulsory license may only be issued to one who will work the patent and doctor’s pharma does notintend to work it itself but merely to import the patented product.(b) If the demand for the patented article in the Philippines is not being met to an adequate extent and onreasonable terms. (4) to grant doctor’s pharma the requested license would be against public interestand would only serve its monetary interest. We find. lease or use of thepatented article or working of the patented process or machine of production the establishment of anynew trade or industry in the Philippines is prevented. which was later amended. and the instant application for licenseunder said patent was only filed in 1960. 50 granted to Parke Davis & Company based on the following grounds:(1) the patented invention relates to medicine and is necessary for public health and safety.(3) the demand for medicine containing chloramphenicol is not being met to an adequate extent and onreasonable prices. while Letters Patent No. which for ready reference are hereunder quoted:CHAPTER VIII. and so the conditions for the grant of the license had been fulfilled. DAVIS and COMPANY vs. 1950. asevidenced by the use of the particle "or" between paragraphs (c) and (d). we may add that it is not a valid ground to refuse the license applied for the fact thatthe patentee is working the invention and as such has the exclusive right to the invention for aterm of 17 years (Sections 20 & 21. under any of the following circumstances:(a) If the patented invention is not being worked within the Philippines on a commercial scale. In its petition.
In 1981 the PPO issued Letters Patent No.The claims of Letters Patent No. The phrase "anyone possessing any right. but reversed the RTC’s finding thatLetters Patent No.A.Under the aforequoted law. On the other hand.Petitioner admits it has no patent over its aerial fuze. Tyco Pharma did not 1. Smith Kline appealed to the Court of Appeals. use and sell the same and that it stands tosuffer irreparable damage and injury if it is enjoined from the exercise of its property rights over its patent. . a drug which fought gastrointestinal parasites in farm animals. explicitly provides: Sec. it has no legal basis or cause of action to institute the petition for injunction and damages arising from the allegedinfringement by private respondent. there is the advantage that the importation of chloramphenicol might redound to the benefit of the public in general as it will increase thesupply of medicines in our country containing chloramphenicol thereby reducing substantiallythe price of this drug.license may work disadvantage on petitioner but the law must be observeduntil modified or repealed. and ordered the cancellation of Letters Patent No.Private respondent Tryco Pharma is a domestic corporation that dealt in veterinary products. Smith Kline filed before the CaloocanCity Regional Trial Court a complaint against Tyco Pharma for patent infringement. only the patentee or his successors-in-interest may file anaction for infringement. All that the claimsdisclose are: the covered invention. thecompound’s ability to destroy parasites without harming the host animals. 14561 do not mention the compound Albendazole. refers only to the patentee'ssuccessors-in-interest. It manufactured andsold Impregon. may bring a civil action before the proper Court of First Instance (nowRegional Trial court). This remedy. or asgrantees. . under Section 42 of the Patent Law (R. and the patented methods.. Issue: Whether Tyco Pharma committed patent infringement to the prejudice of Smith Kline. to recover from the infringer damages sustained by reasonof the infringement and to secure an injunction for the protection of his right. title or interest in and to the patented invention " upon which petitioner maintains its present suit. 14561 was void. assignees or grantees since actions for infringement of patent may bebrought in the name of the person or persons interested.Claiming that Letters Patent No. 42Civil action for infringement Any patentee. . assignees. whether as patentee. the compound methyl 5 propylthio-2-benzimidazole carbamate. COURT OF APPEALS AND FLORO INTERNATIONAL CORP Petitioner¶s claim: It is Creser¶s contention that it can file. Smith Kline Beckman Corporation vs. 165. et al. 14561 for the said invention for a term of 17 years.. Issue: Whether Creser can file an action for infringement being not as patentee Ruling: NO. that petitioner's available remedyis to file a petition for cancellation of patent before the Bureau of Patents.The CA affirmed that Tyco Pharma was not liable for patent infringement.compositions . and for unfair competitionunder Article 189 of the Revised Penal Code and Section 29 of the Trademark Law.14561 for being null and void. CRESER PRECISION SYSTEMS. Held: No. 14561 covered the substance Albendazole. suchabsence does not bar the first true and actual inventor of the patented invention from suinganother who was granted a patent in a suit for declaratory or injunctive relief recognized under American patent laws. i. title or interest in and to the patented invention. Facts:Petitioner Smith Kline Beckman is an American corporation licensed to do business in the Philippines. Section 42 of R. In1976 it filed with the Philippine Patent Office a patent application over methyl 5 propylthio-2-benzimidazolecarbamate. petitioner points out. Smith Kline filed a petition for review with the Supreme Court. It advances the theory that while the absence of apatent may prevent one from lawfully suing another for infringement of said patent.an action for infringement not as a patentee but as an entity in possession of a right. Court of Appeals. The Hon. vs. and which contained the compoundAlbendazole as active ingredient. INC. may be likened to a civil action for infringement under Section 42 of the Philippine Patent Law. Therefore. title or interest in and to the patented invention. otherwise known as the Patent Law.e. Respondent¶s claim: Private respondent Floro International submitted its memorandum alleging thatpetitioner has no cause of action to file a complaint for infringement against it since Creser hasno patent for theaerial fuzewhich it claims to have invented. 165).A. that privaterespondent as the patent holder cannot be stripped of its property right over the patented aerial fuzeconsisting of the exclusive right to manufacture. whose rights have beeninfringed. a chemical compound that fought infections caused by gastrointestinal parasites in farm and petanimals. of the exclusive right. or anyone possessing anyright.In its Decision the RTC dismissed Smith Kline’s complaint.
Noextrinsic evidence had been adduced to prove that Albendazole inheres in Smith Klein’s patent in spite of itsomission therefrom.The mere absence of the word Albendazole in the patent is not determinative of Albendazole’s noninclusionin its claims.While both compounds have the effect of neutralizing parasites in animals.Smith Klein has not met the requirements for the application of the doctrine of equivalents. the judgment appealed from is hereby AFFIRMED. the language of the patent fails to yield anything at all regarding Albendazole. It is elementary that a patent may be infringed where the essential or substantial features of the patented invention are taken or appropriated. nothing more is asserted and accordingly substantiated regarding the method or means by whichAlbendazole weeds out parasites in animals. the patentee having the burden toshow that all three components of such equivalency test are met. The patent was issued in June 1988 for five years and was renewed in November 1991 for another five years as there were improvement introduced to his “minus one” karaoke. The lower court ruled in favor of Del Rosario but the Court of Appeals ruled that there was no infringement because the karaoke system was a universal product manufactured. Janito failed to present competent evidence that will show that Del Rosario’s innovation is not new. performssubstantially the same function in substantially the same way to achieve substantially the same result. GODINEZ V CA Through this petition for review in certiorari of a decision of the Court of Appeals affirming the decision of the trial court. even if the patentee may have been entitled to something morethan the words it had chosen would include. while the patent was still effective. with the elimination of the award for attorney's fees. or the device. or that the meaning of the claims of the patent embraces Albendazole. a machine or device must perform the same function. for allegedly infringing upon the patent of Del Rosario. Here. a Japanese company owned by Janito Cua. Thedoctrine thus requires satisfaction of the function-means-and-result test. In 1993.When the language of its claims is clear and distinct. or accomplish the same result by identical or substantially identical means and the principle or mode of operation must be substantially the same. DEL ROSARIO V CA Intellectual Property Law – Law on Patents – Infringement – Karaoke Machine FACTS: Del Rosario was granted a patent for his innovation called the “Minus One” karaoke.Apart from the fact that Albendazole is an anthelmintic agent like methyl 5 propylthio-2-benzimidazolecarbamate. Further. miyata karaoke was proven to have substantial if not identical functionality as that of the minus one karaoke which was covered by the second patent issued to Del Rosario. thus giving no information on whether that method issubstantially the same as the manner by which Smith Klein’s compound works. the principle or mode of operation must be the same or substantially the same. although with some modification and change. with costs against appellant. In other words. In the case at bar. 1 . In order to infringe a patent.or preparations involving the compound to maximize its efficacy against certain kinds of parasites infecting specified animals. petitioner Pascual Godines seeks to reverse the adverse decision of the Court a quo that he was liable for infringement of patent and unfair competition. Del Rosario alleged that Janito was manufacturing a sing-along system under the brand “miyata karaoke” which is substantially if not identical to his “minus one” karaoke. nor may they enlarge the patent beyond the scope of that which theinventor claimed and the patent office allowed. machine or other subject matter alleged to infringe is substantially identical with the patented invention. Del Rosario sued Janito Corporation.The doctrine of equivalents provides that an infringement also takes place when a device appropriates a prior invention by incorporating its innovative concept and. The courts are similarly bound: they may not add to or detract from the claims mattersnot expressed or necessarily implied. the patentee is bound thereby and may not claimanything beyond them. The dispositive portion of the assailed decision is hereby quoted to wit: WHEREFORE. While Albendazole is admittedly a chemical compound that exists by a name different from thatcovered in the patent. even though it performs the same function and achieves the sameresult. ISSUE: Whether or not the Court of Appeals erred in its ruling. there is no dispute that the letters patent issued to Del Rosario are for utility models of audio equipment. advertised and marketed all over the world long before Del Rosario was issued his patents. HELD: Yes.2. 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. identity of result does not amountto infringement of patent unless Albendazole operates in substantially the same way or by substantially thesame means as the patented compound.
(8) a frontal frame extension above the quarter — circularly shaped water covering hold (sic) in place the transmission case. this petition was filed.00) for unrealized profits during the period defendant was manufacturing and selling copied or imitation floating power tiller. it discovered that power tillers similar to those patented by private respondent were being manufactured and sold by petitioner herein. SV-Agro Industries filed before the Regional Trial Court a complaint for infringement of patent and unfair competition. private respondent notified Pascual Godines about the existing patent and demanded that the latter stop selling and manufacturing similar power tillers. In 1979. 2. the Court of Appeals quoted the findings of the court. In dismissing the first argument of petitioner herein. (9) a V-belt connection to the engine main drive with transmission gear through the pulley.00) as damages to its business reputation and goodwill. a driven pulley and a transmission shaft. The question of whether petitioner was manufacturing and selling power tillers is a question of fact better addressed to the lower courts. We find no merit in his arguments. The engine drives the transmission gear by tensioning of the V-belt which is controlled by the idler pulley. plus the further sum of Eighty Thousand Pesos (P80. this contention appears untenable in the light of the following circumstances: 1) he admits in his Answer that he has been manufacturing power tillers or hand tractors.. and (10) an idler pulley installed on the engine foundation. 3. JUDGMENT is hereby rendered in favor of the plaintiff SV-Agro Industries Enterprises. Ordering defendant Pascual Godines to pay plaintiff the sum of Fifty Thousand Pesos (P50. and against defendant Pascual Godines: 1. On October 31. (4) a protective water covering for the engine main drive. After trial. (5) a transmission case. The V-belt drives the pulley attached to the transmission gear which in turn drives the shaft where the paddy wheels are attached. and to pay the costs of the suit. Ordering the defendant to pay the plaintiff. It covers a utility model for a hand tractor or power tiller. from Magdalena Villaruz.. Inc. to wit: It is the contention of defendant that he did not manufacture or make imitations or copies of plaintiff's turtle power tiller as what he merely did was to fabricate his floating power tiller upon specifications and designs of those who ordered them. premises considered. 4 The decision was affirmed by the appellate court." 2 The patented hand tractor works in the following manner: "the engine drives the transmission gear thru the V-belt. The dispositive portion of the decision reads as follows: WHEREFORE. selling and distributing them long before . SO ORDERED. private respondent manufactured and sold the patented power tillers with the patent imprinted on them. the further sum of Eight Thousand Pesos (P8. 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. Villaruz on July 15.000. However. In accordance with the patent. (2) a harrow with adjustable operating handle. (6) an operating handle. its chairman and president.00) as reimbursement of attorney's fees and other expenses of litigation. hence. herein private respondent. the court held Pascual Godines liable for infringement of patent and unfair competition." 3 The above mentioned patent was acquired by SV-Agro Industries Enterprises. 1976. (3) a pair of paddy wheels.I. the main components of which are the following: "(1) a vacuumatic house float. Declaring the writ of preliminary injunction issued by this Court against defendant as permanent.The patent involved in this case is Letters Patent No. pipe at the V-shaped end. Consequently. and that those made by him were different from those being manufactured and sold by private respondent. SV-Agro Industries suffered a decline of more than 50% in sales in its Molave. Upon petitioner's failure to comply with the demand. Upon investigation. he could not be liable for infringement of patent and unfair competition. UM-2236 issued by the Philippine Patent Office to one Magdalena S. Petitioner maintains the defenses which he raised before the trial and appellate courts. Thereafter. (7) an engine foundation on the top midportion of the vacuumatic housing float to which the main engine drive is detachedly installed. SV-Agro Industries caused the publication of the patent in Bulletin Today.000. by virtue of a Deed of Assignment executed by the latter in its favor.000. Zamboanga del Sur branch. The operator handles the hand tractor through a handle which is inclined upwardly and supported by a pair of substanding pipes and reinforced by a U-shaped G. a newspaper of general circulation. 1979. Inc.
courts have adopted the doctrine of equivalents which recognizes that minor modifications in a patented invention are sufficient to put the item beyond the scope of literal infringement. The parts or components thereof are virtually the same. 1987. top and back views for purposes of comparison (see Exhibits H-4 to H-28). infringement is made out and that is the end of it. the harrow housing with its operating handle and the paddy wheel protective covering.I. and (b) the doctrine of equivalents." 11 It appears from the foregoing observation of the trial court that these claims of the patent and the features of the patented utility model were copied by petitioner. but costly because it involves a trial and error method. and it is rather unusual for defendant to manufacture something without the specification and designs. attached to the side of the vacuumatic housing float and supported by the upstanding G. according to this . The three power tillers were placed alongside with each other. not upon specification and design of buyers. The question now arises: Did petitioner's product infringe upon the patent of private respondent? Tests have been established to determine infringement. the court must juxtapose the claims of the patent and the accused product within the overall context of the claims and specifications. 1984. the jurisdiction of the Supreme Court in cases brought to it from the Court of Appeals in a petition for certiorari under Rule 45 of the Rules of Court is limited to the review of errors of law. In appearance and form. meaning that defendant is principally a manufacturer of power tillers. it is also observed that petitioner also called his power tiller as a floating power tiller. it is also highly unusual for buyers to order the fabrication of a power tiller or hand tractor and allow defendant to manufacture them merely based on their verbal instructions. 7 In using literal infringement as a test. . This is not only time consuming. 5 Of general acceptance is the rule imbedded in our jurisprudence that ". but upon his own specification and design. March 12. Defendant admitted to the Court that two (2) of the power inspected on March 12. In operation. No document was (sic) ever been presented showing such job orders. . and that said appellate court's findings of fact are conclusive upon this Court. August 19. This is contrary to the usual business and manufacturing practice. the power tiller of the defendant is identical and similar to that of the turtle power tiller of plaintiff in form. p. Both have the circularly-shaped vacuumatic housing float. 7)." 6 The fact that petitioner herein manufactured and sold power tillers without patentee's authority has been established by the courts despite petitioner's claims to the contrary. Recognizing that the logical fallback position of one in the place of defendant is to aver that his product is different from the patented one. . ". were manufactured and sold by him (see TSN. We are compelled to arrive at no other conclusion but that there was infringement. a handle which is V-shaped and inclined upwardly. Witness Rodrigo took photographs of the same power tillers (front. Defendant judicially admitted two (2) units of the turtle power tiller sold by him to Policarpio Berondo. p. to determine whether there is exact identity of all material elements. 13) 10 Moreover. At the center was the turtle power tiller of plaintiff. configuration. a transmission box housing the transmission gears. the operating handle. and on both sides thereof were the floating power tillers of defendant (Exhibits H to H-2). repeat jobs and material wastage. On the other hand. 1984. in the first instance. to the words of the claim." 8 To determine whether the particular item falls within the literal meaning of the patent claims. pipes and an engine base at the top midportion of the vacuumatic housing float to which the engine drive may be attached. the floating power tiller of the defendant operates also in similar manner as the turtle power tiller of plaintiff. resort must be had. design and appearance. 2) it would be unbelievable that defendant would fabricate power tillers similar to the turtle power tillers of plaintiff upon specifications of buyers without requiring a job order where the specification and designs of those ordered are specified. Viewed from any perspective or angle. 12 Thus. This was admitted by the defendant himself in court that they are operating on the same principles. side. Petitioner's argument that his power tillers were different from private respondent's is that of a drowning man clutching at straws.plaintiff started selling its turtle power tiller in Zamboanga del Sur and Misamis Occidental. considering that he is an engineer by profession and proprietor of the Ozamis Engineering shop. These are (a) literal infringement. both the floating power tillers of the defendant and the turtle power tiller of the plaintiff are virtually the same. If accused matter clearly falls within the claim. a protective water covering. . a paddy in front. (TSN. The patent issued by the Patent Office referred to a "farm implement but more particularly to a turtle hand tractor having a vacuumatic housing float on which the engine drive is held in place. 9 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).
The law will protect a patentee against imitation of his patent by other forms and proportions. would be enough to take the copied matter outside the claim. and without in any way limiting the scope of unfair competition. or by the same or substantially the same. xxx xxx xxx In particular. using. If two devices do the same work in substantially the same way. performs substantially the same function in substantially the same way to achieve substantially the same result. and to use the patented process for the purpose of industry or commerce. (Emphasis ours) As far as the issue regarding unfair competition is concerned. . . or shape. it is not essential to show that the defendant adopted the device or process in every particular. 166. according to establish jurisprudence. or the devices or words thereon. similarities or differences are to be determined. Right of Patentees. as amended. use and sell the patented machine. Such imitation would leave room for — indeed encourage — the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which. we find no reversible error in the decision of the Court of Appeals affirming with modification the decision of the trial court. article or product. but in the light of what elements do. as amended. which would limit these words to exact mechanism described in the patent. More specifically. employed for 11 years as welder of the Ozamis Engineering. it is necessary and sufficient to constitute equivalency that the same function can be performed in substantially the same way or manner. throughout the territory of the Philippines for the terms of the patent. either as to the goods themselves or in the wrapping of the packages in which they are contained." 13 The reason for the doctrine of equivalents is that to permit the imitation of a patented invention which does not copy any literal detail would be to convert the protection of the patent grant into a hollow and useless thing. 14 In this case. — A patentee shall have the exclusive right to make. "(a)n infringement also occurs when a device appropriates a prior invention by incorporating its innovative concept and. or in any other feature of their appearance. and such making. the trial court observed: Defendant's witness Eduardo Cañete. 165. . . . which would be likely to influence purchasers that the goods offered are those of a manufacturer or dealer other than the actual manufacturer or dealer. inter alia: Sec. providing. or selling by any person without the authorization of the Patentee constitutes infringement of the patent. not by the names of things. "In one sense. . . or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade. in infringement of patent. But another construction. form. but where these tests are satisfied. . Proof of an adoption of the substance of the thing will be sufficient. albeit with some modification and change. But a careful examination between the two power tillers will show that they will operate on the same fundamental principles. though adding nothing. and accomplish substantially the same result. 15 It also stated: To establish an infringement. xxx xxx xxx Considering the foregoing. — . "it may be said that no device can be adjudged an infringement that does not substantially correspond with the patent. suffice it to say that Republic Act No. Unfair competition. . 29. provides. and substantial. mere differences of form or name are immaterial. . . identity in the test. and therefore actually involved in the making of the floating power tillers of defendant tried to explain the difference between the floating power tillers made by the defendant. . rather than technical. the following shall be deemed guilty of unfair competition: (a) Any person." said Justice Brown. And. principle or mode of operation. inter alia: Sec. 37. and hence outside the reach of the law.doctrine. who in selling his goods shall give them the general appearance of goods of another manufacturer or dealer. 16 We pronounce petitioner liable for infringement in accordance with Section 37 of Republic Act No. even though they differ in name. would be so obviously unjust that no court could be expected to adopt it. rights and remedies. they are the same.
the invention must be new to the world. The reason for thedoctrine of equivalents is that to permit the imitation of a patented invention which does not copy any literal detailwould be to convert the protection of the patent grant into hollow and useless thing.Manzano v.9 of Patent Law) before the date of application forhis patent will be fatal to the validity of the patent when issued.WHEREFORE.Godinez v. Cresser Precision Systems v. in the absence of competent evidence to the contrary. CAOnly the patentee may file for infringement. and precedence and for the patentee to beentitled to protection. Maguan v. premises considered. originality. There can be no infringement of a patent until a patent has been issuedsince whatever right one has to the invention conferred by the patent arises alone from a grant of patent. CAAn invention must possess the essential elements of novelty. and the existence of two patents require presentation of evidence toshow whether the substances are the same or not. A single instance of public use of the invention by apatentee for more than two years(now more than 1 year under Sec.Parke Davis v. Doctors PharmaceuticalsFact of existence of 2 different substances of medicine of which the court could not take judicial notice of norcompetent to so find in the absence of evidence.Smith Kline Beckman v. CAThere is a presumption that the Philippine Patent Office has correctly determined the patentability of the model andsuch action must not be interfered with. CATests to determine infringement are. . CAThe doctrine of equivalents thus requires satisfaction of the functions-means-and-result test. the patentee having theburden to show that all three components of such equivalency test are met. 1) Doctrine of Literal Infringement 2) Doctrine of Equivalents.Smith Kline v. CAArticle 5 of the Paris Convention unequivocally and explicitly respects the right of the member countries to adoptlegislative measures to provide for grant of compulsory licenses to prevent abuses which might result from the exerciseof the exclusive rights conferred by the patent. the decision of the Court of Appeals is hereby AFFIRMED and this petition DENIED for lack of merit.