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Diamond vs. Chakrabarty, 447 US 303 Syllabus Title 35 U.S.C. § 101 provides for the issuance of a patent to a person who invents or discovers "any" new and useful "manufacture" or "composition of matter." Respondent filed a patent application relating to his invention of a human-made, genetically engineered bacterium capable of breaking down crude oil, a property which is possessed by no naturally occurring bacteria. A patent examiner's rejection of the patent application's claims for the new bacteria was affirmed by the Patent Office Board of Appeals on the ground that living things are not patentable subject matter under § 101. The Court of Customs and Patent Appeals reversed, concluding that the fact that micro-organisms are alive is without legal significance for purposes of the patent law. Held: A live, human-made micro-organism is patentable subject matter under § 101. Respondent's micro-organism constitutes a "manufacture" or "composition of matter" within that statute. Pp. 447 U. S. 308-318. (a) In choosing such expansive terms as "manufacture" and "composition of matter," modified by the comprehensive "any," Congress contemplated that the patent laws should be given wide scope, and the relevant legislative history also supports a broad construction. While laws of nature, physical phenomena, and abstract ideas are not patentable, respondent's claim is not to a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter -- a product of human ingenuity "having a distinctive name, character [and] use." Hartranft v. Wiegmann, 121 U. S. 609, 121 U. S. 615. Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U. S. 127, distinguished. Pp. 447 U. S. 308-310. (b) The passage of the 1930 Plant Patent Act, which afforded patent protection to certain asexually reproduced plants, and the 1970 Plant Variety Protection Act, which authorized protection for certain sexually reproduced plants but excluded bacteria from its protection, does not evidence congressional understanding that the terms "manufacture" or "composition of matter" in § 101 do not include living things. Pp. 447 U. S. 310-314. Page 447 U. S. 304 (c) Nor does the fact that genetic technology was unforeseen when Congress enacted § 101 require the conclusion that microorganisms cannot qualify as patentable subject matter until Congress expressly authorizes such protection. The unambiguous language of § 101 fairly embraces respondent's invention. Arguments against patentability under § 101, based on potential hazards that may be generated by genetic research, should be addressed to the Congress and the Executive, not to the Judiciary. Pp. 447 U. S. 314-318. 596 F.2d 952, affirmed. BURGER, C J., delivered the opinion of the Court, in which STEWART, BLACKMUN, REHNQUIST, and STEVENS, JJ., joined. BRENNAN, J., filed a dissenting opinion, in which WHITE, MARSHALL, and POWELL, JJ., joined, post, p. 447 U. S. 318. Page 447 U. S. 305 MR. CHIEF JUSTICE BURGER delivered the opinion of the Court. We granted certiorari to determine whether a live, human-made micro-organism is patentable subject matter under 35 U.S.C. § 101. I In 1972, respondent Chakrabarty, a microbiologist, filed a patent application, assigned to the General Electric Co. The application asserted 36 claims related to Chakrabarty's invention of "a bacterium from the genus Pseudomons containing therein at least two stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway. [Footnote 1]" This human-made, genetically engineered bacterium is capable of breaking down multiple components of crude oil. Because of this property, which is possessed by no naturally occurring bacteria, Chakrabarty's invention is believed to have significant value for the treatment of oil spills. [Footnote 2] Chakrabarty's patent claims were of three types: first, process claims for the method of producing the bacteria; Page 447 U. S. 306
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second, claims for an inoculum comprised of a carrier material floating on water, such as straw, and the new bacteria; and third, claims to the bacteria themselves. The patent examiner allowed the claims falling into the first two categories, but rejected claims for the bacteria. His decision rested on two grounds: (1) that micro-organisms are "products of nature," and (2) that, as living things, they are not patentable subject matter under 35 U.S.C. § 101. Chakrabarty appealed the rejection of these claims to the Patent Office Board of Appeals, and the Board affirmed the examiner on the second ground. [Footnote 3] Relying on the legislative history of the 1930 Plant Patent Act, in which Congress extended patent protection to certain asexually reproduced plants, the Board concluded that § 101 was not intended to cover living things such as these laboratory created micro-organisms. The Court of Customs and Patent Appeals, by a divided vote, reversed on the authority of its prior decision in In re Bergy, 563 F.2d 1031, 1038 (1977), which held that "the fact that micro-organisms . . . are alive . . . [is] without legal significance" for purposes of the patent law. [Footnote 4] Subsequently, we granted the Acting Commissioner of Patents and Trademarks' petition for certiorari in Bergy, vacated the judgment, and remanded the case "for further consideration in light of Parker v. Flook, 437 U. S. 584(1978)." 438 U.S. 902 (1978). The Court of Customs and Patent Appeals then vacated its judgment in Chakrabarty and consolidated the case with Bergy for reconsideration. After reexamining both cases in the light of our holding in Flook, that court, with one dissent, reaffirmed its earlier judgments. 596 F.2d 952 (1979). Page 447 U. S. 307 The Commissioner of Patents and Trademarks again sought certiorari, and we granted the writ as to both Bergy and Chakrabarty. 444 U.S. 924 (1979). Since then, Bergy has been dismissed as moot, 444 U.S. 1028 (1980), leaving only Chakrabarty for decision. II The Constitution grants Congress broad power to legislate to "promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." Art. I, § 8, cl. 8. The patent laws promote this progress by offering inventors exclusive rights for a limited period as an incentive for their inventiveness and research efforts.Kewanee Oil Co. v. Bicron Corp., 416 U. S. 470, 416 U. S. 480-481 (1974); Universal Oil Co. v. Globe Co., 322 U. S. 471, 322 U. S. 484 (1944). The authority of Congress is exercised in the hope that "[t]he productive effort thereby fostered will have a positive effect on society through the introduction of new products and processes of manufacture into the economy, and the emanations by way of increased employment and better lives for our citizens." Kewanee, supra, at 416 U. S. 480. The question before us in this case is a narrow one of statutory interpretation requiring us to construe 35 U.S.C. § 101, which provides: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." Specifically, we must determine whether respondent's micro-organism constitutes a "manufacture" or "composition of matter" within the meaning of the statute. [Footnote 5] Page 447 U. S. 308 III In cases of statutory construction we begin, of course, with the language of the statute. Southeastern Community College v. Davis, 442 U. S. 397, 442 U. S. 405(1979). And "unless otherwise defined, words will be interpreted as taking their ordinary, contemporary, common meaning." Perrin v. United States, 444 U. S. 37, 444 U. S. 42 (1979). We have also cautioned that courts "should not read into the patent laws limitations and conditions which the legislature has not expressed." United States v. Dubilier Condenser Corp., 289 U. S. 178, 289 U. S. 199 (1933) . Guided by these canons of construction, this Court has read the term "manufacture" in § 101 in accordance with its dictionary definition to mean
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"the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand labor or by machinery." American Fruit Growers, Inc. v. Brogdex Co., 283 U. S. 1, 283 U. S. 11 (1931). Similarly, "composition of matter" has been construed consistent with its common usage to include "all compositions of two or more substances and . . . all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids." Shell Development Co. v. Watson, 149 F.Supp. 279, 280 (DC 1957) (citing 1 A. Deller, Walker on Patents § 14, p. 55 (1st ed.1937)). In choosing such expansive terms as "manufacture" and "composition of matter," modified by the comprehensive "any," Congress plainly contemplated that the patent laws would be given wide scope. The relevant legislative history also supports a broad construction. The Patent Act of 1793, authored by Thomas Jefferson, defined statutory subject matter as "any new and useful art, machine, manufacture, or composition of matter, or any new or useful improvement [thereof]." Act of Feb. 21, 1793, § 1, 1 Stat. 319. The Act embodied Jefferson's philosophy that "ingenuity should receive a liberal encouragement." Page 447 U. S. 309 5 Writings of Thomas Jefferson 75-76 (Washington ed. 1871). See Graham v. John Deere Co., 383 U. S. 1, 383 U. S. 7-10 (1966). Subsequent patent statutes in 1836, 1870, and 1874 employed this same broad language. In 1052, when the patent laws were recodified, Congress replaced the word "art" with "process," but otherwise left Jefferson's language intact. The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to "include anything under the sun that is made by man." S Rep. No 1979, 82d Cong., 2d Sess., 5 (1952); H.R.Rep. No. 1979, 82d Cong., 2d Sess., 6 (1952). [Footnote 6] This is not to suggest that § 101 has no limits, or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable. See Parker v. Flook, 437 U. S. 584 (1978); Gottschalk v. Benson, 409 U. S. 63, 409 U. S. 67 (1972); Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U. S. 127,333 U. S. 130 (1948); O'Reilly v. Morse, 15 How. 62, 56 U. S. 112-121 (1854); Le Roy v. Tatham, 14 How. 156, 55 U. S. 175 (1853). Thus, a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his celebrated law that E=mc2; nor could Newton have patented the law of gravity. Such discoveries are "manifestations of . . . nature, free to all men and reserved exclusively to none." Funk, supra at 333 U. S. 130. Judged in this light, respondent's micro-organism plainly qualifies as patentable subject matter. His claim is not to a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter -- a product of human ingenuity "having a distinctive name, character [and] Page 447 U. S. 310 use." Hartranft v. Wiegmann, 121 U. S. 609, 121 U. S. 615 (1887). The point is underscored dramatically by comparison of the invention here with that in Funk. There, the patentee had discovered that there existed in nature certain species of root nodule bacteria which did not exert a mutually inhibitive effect on each other. He used that discovery to produce a mixed culture capable of inoculating the seeds of leguminous plants. Concluding that the patentee had discovered "only some of the handiwork of nature," the Court ruled the product nonpatentable: "Each of the species of root-nodule bacteria contained in the package infects the same group of leguminous plants which it always infected. No species acquires a different use. The combination of species produces no new bacteria, no change in the six species of bacteria, and no enlargement of the range of their utility. Each species has the same effect it always had. The bacteria perform in their natural way. Their use in combination does not improve in any way their natural functioning. They serve the ends nature originally provided, and act quite independently of any effort of the patentee." 333 U.S. at 333 U. S. 131. Here, by contrast, the patentee has produced a new bacterium with markedly different characteristics from any found in nature, and one having the potential for significant utility. His discovery is not nature's handiwork, but his own; accordingly it is patentable subject matter under § 101. IV Two contrary arguments are advanced, neither of which we find persuasive. (A)
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The petitioner's first argument rests on the enactment of the 1930 Plant Patent Act, which afforded patent protection to certain asexually reproduced plants, and the 1970 Plant Page 447 U. S. 311 Variety Protection Act, which authorized protection for certain sexually reproduced plants but excluded bacteria from its protection. [Footnote 7] In the petitioner's view, the passage of these Acts evidences congressional understanding that the terms "manufacture" or "composition of matter" do not include living things; if they did, the petitioner argues, neither Act would have been necessary. We reject this argument. Prior to 1930, two factors were thought to remove plants from patent protection. The first was the belief that plants, even those artificially bred, were products of nature for purposes of the patent law. This position appears to have derived from the decision of the Patent Office in Ex parte Latimer, 1889 Dec.Com.Pat 123, in which a patent claim for fiber found in the needle of the Pinus australis was rejected. The Commissioner reasoned that a contrary result would permit "patents [to] be obtained upon the trees of the forest and the plants of the earth, which of course would be unreasonable and impossible." Id. at 126. The Latimer case, it seems, came to "se[t] forth the general stand taken in these matters" that plants were natural products not subject to patent protection. Thorne, Relation of Patent Law to Natural Products, 6 J.Pat.Off.Soc. 23, 24 Page 447 U. S. 312 (1923). [Footnote 8] The second obstacle to patent protection for plants was the fact that plants were thought not amenable to the "written description" requirement of the patent law. See 35 U.S.C. § 112. Because new plants may differ from old only in color or perfume, differentiation by written description was often impossible. See Hearings on H.R. 11372 before the House Committee on Patents, 71st Cong., 2d Sess., 7 (1930) (memorandum of Patent Commissioner Robertson). In enacting the Plant Patent Act, Congress addressed both of these concerns. It explained at length its belief that the work of the plant breeder "in aid of nature" was patentable invention. S.Rep. No. 315, 71st Cong., 2d Sess., 8 (1930); H.R.Rep. No. 1129, 71st Cong., 2d Sess., 7-9 (1930). And it relaxed the written description requirement in favor of "a description . . . as complete as is reasonably possible." 35 U.S.C. § 162. No Committee or Member of Congress, however, expressed the broader view, now urged by the petitioner, that the terms "manufacture" or "composition of matter" exclude living things. The sole support for that position in the legislative history of the 1930 Act is found in the conclusory statement of Secretary of Agriculture Hyde, in a letter to the Chairmen of the House and Senate Committees considering the 1930 Act, that "the patent laws . . . at the present time are understood to cover only inventions or discoveries in the field of inanimate nature." See S.Rep. No. 315, supra at Appendix A; H.R.Rep. No. 1129, supra at Appendix A. Secretary Hyde's opinion, however, is not entitled to controlling weight. His views were solicited on the administration of the new law. and not on the scope of patentable Page 447 U. S. 313 subject matter -- an area beyond his competence. Moreover, there is language in the House and Senate Committee Reports suggesting that, to the extent Congress considered the matter, it found the Secretary's dichotomy unpersuasive. The Reports observe: "There is a clear and logical distinction between the discovery of a new variety of plant and of certain inanimate things, such, for example, as a new and useful natural mineral. The mineral is created wholly by nature unassisted by man. . . . On the other hand, a plant discovery resulting from cultivation is unique, isolated, and is not repeated by nature, nor can it be reproduced by nature unaided by man. . . ." S.Rep. No. 315, supra at 6; H.R.Rep. No. 1129, supra at 7 (emphasis added). Congress thus recognized that the relevant distinction was not between living and inanimate things, but between products of nature, whether living or not, and humanmade inventions. Here, respondent's micro-organism is the result of human ingenuity and research. Hence, the passage of the Plant Patent Act affords the Government no support. Nor does the passage of the 1970 Plant Variety Protection Act support the Government's position. As the Government acknowledges, sexually reproduced plants were not included under the 1930 Act because new varieties could not be reproduced true-to-type through seedlings. Brief for Petitioner 27, n. 31. By 1970, however, it was generally recognized that true-to-type reproduction was possible, and that plant patent protection was therefore appropriate. The 1970 Act extended that protection. There is nothing in its language or history to suggest that it was enacted because § 101 did not include living things. In particular, we find nothing in the exclusion of bacteria from plant variety protection to support the petitioner's position. See n 7, supra. The legislative history gives no reason for this exclusion. As the Court of Customs and
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Page 447 U. S. 314 Patent Appeals suggested, it may simply reflect congressional agreement with the result reached by that court in deciding In re Arzberger, 27 C.C.P.A.(Pat.) 1315, 112 F.2d 834 (1940), which held that bacteria were not plants for the purposes of the 1930 Act. Or it may reflect the fact that, prior to 1970, the Patent Office had issued patents for bacteria under § 101. [Footnote 9] In any event, absent some clear indication that Congress "focused on [the] issues . . . directly related to the one presently before the Court," SEC v. Sloan, 436 U. S. 103, 436 U. S. 120-121 (1978), there is no basis for reading into its actions an intent to modify the plain meaning of the words found in § 101. See TVA v. Hill, 437 U. S. 153, 437 U. S. 189-193 (1978); United States v. Price,361 U. S. 304, 361 U. S. 313 (1960). (B) The petitioner's second argument is that micro-organisms cannot qualify as patentable subject matter until Congress expressly authorizes such protection. His position rests on the fact that genetic technology was unforeseen when Congress enacted § 101. From this it is argued that resolution of the patentability of inventions such as respondent's should be left to Congress. The legislative process, the petitioner argues, is best equipped to weigh the competing economic, social, and scientific considerations involved, and to determine whether living organisms produced by genetic engineering should receive patent protection. In support of this position, the petitioner relies on our recent holding in Parker v. Flook, 437 U. S. 584 (1978), and the statement that the judiciary "must proceed cautiously when . . . asked to extend Page 447 U. S. 315 patent rights into areas wholly unforeseen by Congress." Id. at 437 U. S. 596. It is, of course, correct that Congress, not the courts, must define the limits of patentability; but it is equally true that, once Congress has spoken, it is "the province and duty of the judicial department to say what the law is." Marbury v. Madison, 1 Cranch 137, 5 U. S. 177 (1803). Congress has performed its constitutional role in defining patentable subject matter in § 101; we perform ours in construing the language Congress has employed. In so doing, our obligation is to take statutes as we find them, guided, if ambiguity appears, by the legislative history and statutory purpose. Here, we perceive no ambiguity. The subject matter provisions of the patent law have been cast in broad terms to fulfill the constitutional and statutory goal of promoting "the Progress of Science and the useful Arts" with all that means for the social and economic benefits envisioned by Jefferson. Broad general language is not necessarily ambiguous when congressional objectives require broad terms. Nothing in Flook is to the contrary. That case applied our prior precedents to determine that a "claim for an improved method of calculation, even when tied to a specific end use, is unpatentable subject matter under § 101." 437 U.S. at 437 U. S. 595, n. 18. The Court carefully scrutinized the claim at issue to determine whether it was precluded from patent protection under "the principles underlying the prohibition against patents for ideas' or phenomena of nature." Id. at 437 U. S. 593. We have done that here.Flook did not announce a new principle that inventions in areas not contemplated by Congress when the patent laws were enacted are unpatentable per se. To read that concept into Flook would frustrate the purposes of the patent law. This Court frequently has observed that a statute is not to be confined to the "particular application[s] . . . contemplated by the legislators." Barr v. United States, 324 U. S. 83,324 U. S. 90 (1945). Accord, Browder v. United States, 312 U. S. 335, 312 U. S. 339(1941); Puerto Rico v. Shell Co., Page 447 U. S. 316 302 U. S. 253, 302 U. S. 257 (1937). This is especially true in the field of patent law. A rule that unanticipated inventions are without protection would conflict with the core concept of the patent law that anticipation undermines patentability. See Graham v. John Deere Co., 383 U.S. at 383 U. S. 12-17. Mr. Justice Douglas reminded that the inventions most benefiting mankind are those that "push back the frontiers of chemistry. physics, and the like." Great A. & P. Tea Co. v. Supermarket Corp., 340 U. S. 147, 340 U. S. 154 (1950) (concurring opinion). Congress employed broad general language in drafting § 101 precisely because such inventions are often unforeseeable. [Footnote 10] To buttress his argument, the petitioner, with the support of amicus, points to grave risks that may be generated by research endeavors such as respondent's. The briefs present a gruesome parade of horribles. Scientists, among them Nobel laureates, are quoted suggesting that genetic research may pose a serious threat to the human race, or, at the very least, that the dangers are far too substantial to permit such research to proceed apace at this time. We are told that genetic research and related technological developments may spread pollution and disease, that it may result in a loss of genetic diversity, and that its practice may tend to depreciate the value of human life. These arguments are forcefully, even passionately, presented; they remind us that, at times, human ingenuity seems unable to control fully the forces it creates -- that, with Hamlet, it is sometimes better "to bear those ills we have than fly to others that we know not of."
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holding that the two patents involved in the litigation were invalid and void and that furthermore there had been no infringement by defendant. treating each sample. . our powers are exhausted. the contentions now pressed on us should be addressed to the political branches of the Government. Cf. Congress is free to amend § 101 so as to exclude from patent protection organisms produced by genetic engineering.324. based on findings of fact and conclusions of law.Supp. The inventions are based upon the assumption that gases have emanated from deposits of hydrocarbons which have been trapped in the earth and that these emanations have modified the surrounding rock.S. Horvitz assigned his interest to Rosaire. We disagree. In view of the fact that the trial court's judgment that the patents were invalid. some of which was not before the patent office. Accordingly. In due course the two patents in suit. we turn our attention to this issue. that he learned of this in 1949 and asked Baroid to take a license. 218 F. The first is that the prior art. 42 U.S. National Lead Co." TVA v. examination.2d 72 In this suit for patent infringement there is presented to us for determination the correctness of the judgment of the trial court.525 and 2. 194. but no license agreement was worked out. quantitatively measuring the amount of hydrocarbon gas so evolved from each sample.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW It is argued that this Court should weigh these potential hazards in considering whether respondent's invention is Page 447 U. Appellee's contention is that the judgment of the trial court in this respect should be supported on two principal grounds. § 2181(a).C. Our task. S. seeking an injunction and an accounting. . But. were issued thereon.192. in our democratic system.either to brush them aside as fantasies generated by fear of the unknown or to act on them. rather." Or it may choose to craft a statute specifically designed for such living things. this Court must construe the language of § 101 as it is. as by grinding and heating in a closed vessel. 437 U. The methods claimed involve the steps of taking a number of samples of soil from formations which are not themselves productive of hydrocarbons. Appellant alleged that appellee Baroid began infringing in 1947. would of course dispose of the matter if correct. Rosaire vs. is to be put aside in the process of interpreting a statute. and correlating the measurements with the locations from which the samples were taken. exempting from patent protection inventions "useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon. until Congress takes such action. the second is that work carried on by one Teplitz for the Gulf Oil Corporation invalidated both patents by reason of the relevant provisions of the patent laws which state that an invention is not patentable if it "was known or used by others in 6 . and this suit followed. is the business of elected representatives. Whether respondent's claims are patentable may determine whether research efforts are accelerated by the hope of reward or slowed by want of incentives. the Congress and the Executive. but that is all. [Footnote 11] Page 447 U. 2. The choice we are urged to make is a matter of high policy for resolution within the legislative process after the kind of investigation. either over a horizontal area or vertically down a well bore. That process involves the balancing of competing values and interests. which.. S. 317 patentable subject matter under § 101. 120 F. The grant or denial of patents on micro-organisms is not likely to put an end to genetic research or to its attendant risks. once that is done. at 437 U. is the narrow one of determining what Congress meant by the words it used in the statute. 318 We have emphasized in the recent past that "[o]ur individual appraisal of the wisdom or unwisdom of a particular [legislative] course . 20. Plaintiff claims that in 1936 he and Horvitz invented this new method of prospecting for oil. S. The large amount of research that has already occurred when no researcher had sure knowledge that patent protection would be available suggests that legislative or judicial fiat as to patentability will not deter the scientific mind from probing into the unknown any more than Canute could command the tides.085. to cause entrained or absorbed hydrocarbons therein to evolve as a gas. Hill. Whatever their validity. the judgment of the Court of Customs and Patent Appeals is Affirmed. and study that legislative bodies can provide and courts cannot. anticipated the two patents. What is more important is that we are without competence to entertain these arguments -. The language of that section fairly embraces respondent's invention. and not to the courts. The Rosaire and Horvitz patents relate to methods of prospecting for oil or other hydrocarbons. Nos.

spent more than a year in the oil fields and adjacent territory around Palestine. abandoned after its completion and sufficient use to demonstrate its practicability.Ed. 5 Cir. v. 8 Cir. both appellant and appellee stress the language in our opinion in the case of Pennington v. 489.S. Merrell & Co. "This Teplitz work was a successful and adequate field trial of the prospecting method involved and a reduction to practice of that method. without regard to the circumstances which caused their earlier applications to be unsatisfactory or their use to be abandoned. 72 L.Ed. McCullough. 11 S.A. 294. Cf. before any date claimed by Rosaire. 151 F..Ed. Buser v..." And further appellant makes the following admission: "We admit that the Teplitz-Gulf work was done before Rosaire and Horvitz conceived of the inventions. Merrimac Mattress Mfg. 749. 478. 2 Cir. 380. that Abraham J. v. however. We do not deny that Teplitz conceived of the methods of the patents in suit. 380. C.S. § 102(a). Co. The work was performed in the field under ordinary conditions without any deliberate attempt at concealment or effort to exclude the public and without any instructions of secrecy to the employees performing the work. 846.S.Proc. that Gulf did not apply for patent until 1939. Novelty is ascribed to new things. we said: "Appellant insists that the court erred in considering the prior use of the Texas machine. rather than relying upon the free gas in the samples.S. 26 L. Correlatively. 6 Cir. we must affirm the finding of the trial court that appellee's patents were invalid. if the court's findings of fact are correct then under the statute as construed by the courts. did not publish Teplitz's ideas. speaking through Judge Holmes. Texas. Van Epps v..Ct.2d 291. T. "An unsuccessful experiment which is later abandoned does not negative novelty in a new and successful device.. v. Willimantic Linen Co.. Sykes Metal Lath & Roofing Co.S. v. 358. 610.A." Appellant poses what it claims to be the main issue as follows: "The main question before the court on this appeal is: Does the earlier experiment by Gulf invalidate the patents in suit? The District Court has held that it does.Ct." The question as to whether the work of Teplitz was "an unsuccessful experiment. 869.. taking and analyzing samples both over an area and down drill holes. 521. 276 U. Rules Civ. 95 F. it does not appear that the Texas machine was a failure. 104 U. 35 U.Ct. 91.C. Nevertheless. In support of their respective positions. 72 L. 133 F. Feldman. 140 U.. or was a successful trial of the method in question and a reduction of that method to actual practice. 250 U. Corona Cord Tire Co. v. 481. S. Appellee contends that Teplitz and his coworkers knew and extensively used in the field the same alleged inventions before any date asserted by Rosaire and Horvitz. We will show. We contend that it does not. 48 S. 254 F.. 35 L. v. 276 U. it is denied to old things. As to this.Ct. Symington Co. 542. 493..S." as claimed by appellant. Inc. Teplitz and his coworkers with Gulf Oil Corporation and its Research Department during 1935 and early 1936. without regard to the successful and continued use of old things.2d 873. the existence and operation of a machine." As we view it. On this point the trial court made the following finding of fact: "4. As to the finding of fact we are to affirm unless we conclude that it is "clearly erroneous. Fed. 39 S.. 7 . of course. On this point appellant himself in his brief admits that "Teplitz conceived of the idea of extracting and quantitatively measuring entrained or absorbed gas from the samples of rock. is. Dovan Chemical Corporation." We shall discuss these points in the order of importance that the parties themselves seem to place on them.C. 48 S.. 310. National Malleable Castings Co. If the prior machine does not anticipate. since it drilled three wells for the Texas Company. it would not have done so if it had been neither unsuccessful nor abandoned. 383. Jones v. 1045. 610. 386.Ed. 63 L. by clear and substantial proof beyond a reasonable doubt." Rule 52. Corona Cord Tire Co. 28 U. 64. Dovan Chemical Corporation. 143 F.C.. Inc. "I find as a fact. Clark Thread Co. as contended by appellee. exactly as called for in the claims of the patents which Rosaire and Horvitz subsequently applied for and which are here in suit. 6 Cir. because that machine was abandoned by the Texas Company and was not successful until modified and rebuilt...INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW this country" before the patentee's invention thereof. and did not otherwise give the public the benefit of the experimental work. National Supply Co. Electrol. which was more than was usually accomplished by the rotary drilling machines then in use..Ed. 358. 39 F. United Box Board & Paper Co. Pickering v. H. a question of fact. Novelty Tufting Machine Co. is evidence that the same ideas incorporated in a later development along the same line do not amount to invention. where.

48 S. P. 610. This article was not considered by the Patent Office and the patents were therefore greatly weakened and they lack the presumption of validity that would otherwise exist. Chicago Hardware Foundry Co. what he did at Norwalk. that taken by the court below. in order that the accumulated information might be thoroughly reviewed.Ed. * * * This work was known to. who fully confirms Kratz's records and statement. even if we ignore this evidence of Kratz's actual use of D. but that appears to be a result of two things: (1) that the geographical area did not lend itself properly to the test. we find no case which constrains us to hold that where such work was done openly and in the ordinary course of the activities of the employer. his immediate superior and the chief chemist of the company... 378. is authority for the opposing view. 8 . Russell. G. the fact of public knowledge must be shown before it can be urged to invalidate a subsequent patent. Hoe & Co. and that he then demonstrated it by a reduction of it to practice in production of cured or vulcanized rubber. and by the indubitable records that are not challenged. 386. Every time that he produced such a slab he recorded his test in cards which he left with the Norwalk Company and kept a duplicate of his own. Kohler Co. Russell. 1935. The above quotation came from one of the recommendations at the end of Teplitz's report.. The other basis of appellee's attack on appellant's patents was the disclosures in the Graf article. 70 F.S. a large producing company in the oil industry. supra. 72 L. 358.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW A close analysis of the evidence on which the parties rely to resolve this question clearly demonstrates that there was sufficient evidence to sustain the finding of the trial court that there was more here than an unsuccessful or incomplete experiment. "This constitutes priority in this case. The judgment of the trial court is affirmed. as an accelerator as compared with the then known accelerators. at page 387 of 48 S. and demonstrated its utility as a rubber accelerator by making test slabs of vulcanized or cured rubber with its use. Goss Printing Press Co. under the circumstances that attended the work of Teplitz. 2 Cir.. 2 Cir." This same principle underlies the decision of the Court of Appeals for the Second Circuit in the case of United Chromium v. G. and was participated in. Kratz prepared D. and was introduced on behalf of the appellant himself. v. P. The court further states in the Corona case at page 382 of 276 U. by his associate in the Norwalk Company. In connection with the presumption of validity in such a case see R. and that a patent is given to encourage disclosure of inventions.Ct.: "But.." Corona Cord Tire Co. 30 F. General Motors Corporation. With respect to the argument advanced by appellant that the lack of publication of Teplitz's work deprived an alleged infringer of the defense of prior use.2d 257. as we do. and in the Seventh Circuit in United Chromium v. Concluding. In that case the Supreme Court said: "In 1916. National Electric Products Corp. there was ample support both from the oral evidence and from a reading of the Graf article itself to warrant the court's finding of fact No.2d 799. while with the Norwalk Company. G. P. the statute is to be so modified by construction as to require some affirmative act to bring the work to the attention of the public at large. it is not necessary to consider the question of infringement. 77 F. While there was disputed expert testimony on the point. It is clear that the work was not carried forward.S. The case of Corona Cord Tire Co. 380. v. 7 Cir. 2d 271. supported by the evidence of Dr. v. and (2) that the "entire gas prospecting program was therefore suspended in September of 1936. 3 that the patents in suit had been anticipated by this publication.2d 979. in these rubber inner tubes which were sold." It will be noted that the program was not suspended to test the worth of the method but to examine the data that was produced by use of the method involved. 276 U. Dovan Chemical Corporation. his chief. Boynton v. which was published in Germany in September. that the trial court correctly held the patents invalid. no case we have found requires a holding that. v.. 379. Dovan Chemical Corporation.Ct. Dr. Grossman. leaves no doubt in our minds that he did discover in 1916 the strength of D..2d 577. 159 F. Eckhardt and Weaver supported appellee's contention. While there is authority for the proposition that one of the basic principles underlying the patent laws is the enrichment of the art. 85 F. Expert testimony presented by witnesses Rogers.

plaintiff has suffered and the defendants are liable to pay him.000. 658. January 30. he lawfully filed and prosecuted an application for Philippine patent. further losses and damages and irreparable injury will be sustained by the plaintiff. with the modification that plintiff-applee's award of moral damages is hereby redured to P3. the defendant Domiciano A.4 The trial court rendered a decision dated December 29. 1962. 1965. 110 issued on December 21. that the allegation of the plaintiff that Patent No.00.H. 37824-R entitled "Conrado G. castings and devices designed and intended of tiles embodying plaintiff. an order granting the plaintiff's petition for a Writ of Preliminary Injunction was issued. it is not patentable. that Letters Patent No. that the defendant Domiciano A.000. 658 is of great value to plaintiff and of great benefit to the public is a mere conclusion of the plaintiff. Aguas infringed Letters of Patent No.s patented invention.R.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW Aguas vs. L-32160. 1962. 2 On April 14. NO. 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. Aquino and Sons alleging that being the original first and sole inventor of certain new and useful improvements in the process of making mosaic pre-cast tiles. de Leon.00. or more than one year prior to his application for patent thereof. not patented in any foreign country by him or his legal representatives on application filed more than one year prior to his application in this country. H.R. use and sell throughout the Philippines the improvements set forth in said Patent No. that plaintiff has the exclusive license to make. that the registration of the alleged invention did not confer any right on the plaintiff because the registration was unlawfully secured and was a result of the gross misrepresentation on the part of the plaintiff that his alleged invention is a new and inventive process. Aguas and F. 108. that he has complied with the Philippine statues relating to marking patented tiles sold by him. with costs against appellants.000. in addition to actual damages and loss of profits which would be determined upon proper accounting. but nevertheless. Conrado G. 1982 This is a petition for certiorari to review the decision of the Court of Appeals in CA G. Aquino and Sons. plaintiff-appelle vs. using and selling tiles embodying said patent invention and that defendant F. Aquino & Sons is guilty of infringement by making and furnishing to the defendant Domiciano A. De Leon. Aguas the engravings. that he has given direct and personal notice to the defendants of their said acts of infringement and requested them to desist. not patented or described in any printed publication anywhere before his invention thereof. the dispositive portion of which reads: WHEREFORE. 658. the truth being that a) the invention of plaintiff is neither inventive nor new. useful. 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. 1962. de Leon. that plaintiff has been compelled to go to court for the protection and enforcement of his and to engage the service of counsel. the same having been used by several tile-making factories in the Philippines and abroad years before the alleged invention by de Leon. that said invention was new. No. hence. defendants-appellants. 658 was lawfully granted and issued to him. and continue to so infringe causing great and irreparable damage to plaintiff. defendants have refused and neglected to desist and have disregarded such request. 1 On April 14. that there is an urgent need for the immediate issuance of a preliminary injunction. 1961) on designs for concrete decorative wall tiles. b) defendant has been granted valid patents (Patents No. the appealed judgment is hereby affirmed. that as a result of the defendants' wrongful conduct. Dominciano Aguas and F. and has respected plaintiff's right therein and thereunder. thereby incurring attorney's fees and expenses of litigation in the sum of P5. moral and exemplary or corrective damages in the sum of P90.00. that the public has in general acknowledged the validity of said Patent No. 3 On May 23. 658 is of great utility and of great value to plaintiff and of great benefit to the public who has demanded and purchased tiles embodying the said invention in very large quantities and in very rapidly increasing quant ies. Patent No. H. not known or used by others in this country before his invention thereof. judgment is hereby rendered in favor of plaintiff and against the defendants: 9 . G. and having complied in all respects with the statute and the rules of the Philippine Patent Office. 109." the dispositive portion of which reads: WHEREFORE. and c) that he can not be guilty of infringement because his products are different from those of the plaintiff. that the invention patented by said Patent No. de Leon filed in the Court of First Instance of Rizal at Quezon City a complaint for infringement of patent against Domiciano A. 658 by making. that if the aforesaid infringement is permitted to continue. in all othe respects.

associates. using or selling. castings and devices. agents.000. AGUAS IS GUILTY OF INFRINGEMENT DESPITE THE FACT THAT PLAINTIFF'S PATENT IS NOT A VALID ONE. 3. Ordering that each and all of the infringing tiles. III THE TRIAL COURT ERRED IN NOT ORDERING THE CANCELLATION OF PLAINTIFF-APPELLEE'S LETTERS PATENT NO. and from aiding and abetting or in any way contributing to the infringement of said patent. 4. Granting a perpetual injunction restraining defendants. assigning the following errors. manufacturing. Declaring plaintiff's patent valid and infringed: 2.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW 1. IN ACCORDANCE WITH THE PERTINENT PROVISIONS OF THE PATENT LAW. employees. 6 I THE TRIAL COURT ERRED IN NOT HOLDING THAT PLAINTIFF'S PATENT FOR THE 'PROCESS OF MAKING MOSAIC PRE-CAST TILE' IS INVALID BECAUSE SAID ALLEGED PROCESS IS NOT AN INVENTION OR DISCOVERY AS THE SAME HAS ALREADY LONG BEEN USED BY TILE MANUFACTURERS BOTH ABROAD AND IN THIS COUNTRY.00 by way of exemplary damages. (d) P5.020. engravings. castings and devises designed and intended for use in apparatus for the making of tiles embodying plaintiff's patented invention. and from offering or advertising so to do.LIKE THE COMPOSITION AND PROPORTION OF INGREDIENTS USED AND THE 10 .99 by way of actual damages. to wit: (a) P10. engravings. (c) P5.00 by way of moral damages. which are in the possession or under the control of defendants be delivered to plaintiff. confederates.000. and any and all persons acting under their authority from making and/or using and/or vending tiles embodying said patented invention or adapted to be used in combination embodying the same. V THE TRIAL COURT ERRED IN NOT HOLDING THAT THE DEFENDANT COULD NEVER BE GUILTY OF INFRINGEMENT OF PLAINTIFF'S PATENT BECAUSE EVEN IN MATTERS NOT PATENTED BY THE PLAINTIFF . IV THE TRIAL COURT ERRED IN HOLDING THAT DEFENDANT DOMICIANO A. REPUBLIC ACT 165. (b) P50. EXHIBIT L. 658. 5 The defendant Domiciano Aguas appealed to the Court of Appeals.00 by way of attorney's fees and (e) costs of suit. Ordering the defendants to jointly and severally pay to the plaintiff the following sums of money. their officers.000. II THE TRIAL COURT ERRED IN HOLDING THAT THE PATENT OF PLAINTIFF IS VALID BECAUSE IT IS AN IMPROVEMENT OR THE AGE-OLD TILE MAKING SYSTEM. and from making.

as confirmed by it (the Court of Appeals). VI THE TRIAL COURT ERRED IN NOT DISMISSING THE COMPLAINT AND IN HOLDING THE DEFENDANT. are: The basic facts borne out by the record are to the effect that on December 1. that Mr. that defendant Aguas personally. 8 The facts. artistic slope of easement and critical depth of the engraving that plaintiff wanted for his moulds. and that the only significant difference between plaintiff's mould and that engraved by Aquino for Aguas is that.000. specifications and the details of the engravings as he wanted them to be made. AND ATTORNEY'S FEES. 9 11 . lip width and critical depth of the deepest depression. Second error. — When it did not conclude from the admitted facts of the case. that subsequently. but with the modification that the amount of P50. tiles shaped out of these moulds at the back of which was imprinted plaintiff's patent number (Exhs. Mr.00 moral damages was reduced to P3. that the alleged improvements introduced by the respondent in the manufacture of mosaic precast tiles are not patentable. a patent for the old and non-patentable process of making mosaic pre-cast tiles.H. "L"). to wit: First error.00.. 74-75). 658 for a "new and useful improvement in the process of making mosaic pre-cast tiles" (Exh. through a representative. On August 5. the Court of Appeals affirmed the decision of the trial court. on the basis of the body of the same. LIABLE FOR DAMAGES. 7 The petitioner assigns the following errors supposedly committed by the Court of Appeals: It is now respectfully submitted that the Court of Appeals committed the following errors involving questions of law. Third error. easement. with the modification that plaintiff-appellee's award of moral damages was reduced to P3. Aquino & Sons engraved the moulds embodying plaintiff's patented improvement for the manufacture of pre-cast tiles. and on May 5. that defendant F.000. 1960. 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 (Exhs.000. said office issued in his favor Letters Patent No. L and the pieces of physical evidence introduced consisting of samples of the tiles and catalouges. Aquino & Sons eventually engraved for Aguas and for which it charged Aguas double the rate it charged plaintiff De Leon. as a building contractor. that both plaintiff's and defendant Aguas' tiles are sculptured pre-cast wall tiles intended as a new feature of construction and wag ornamentation substantially Identical to each other in size. that the moulds which F. including an explanation of the lip width. — As a corollary. was in truth and in fact. "A" to "E"). as found by the Court of Appeals. Leonardo. "1" to "3" and Exhs. pp. which possession the new features and characteristics covered by plaintiff's parent. the same being not new. that engraver Enrique Aquino knew that the moulds he was engraving for plaintiff were the latter's very own. — When it did not conclude that the letters patent of the respondent although entitled on the cover page as a patent for improvements. INSTEAD OF THE PLAINTIFF. whereas plaintiff's mould turns out tiles 4 x 4 inches in size. purchased from plaintiff.00.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW STRUCTURAL DESIGNS OF THE MOULD AND THE TILE PRODUCED . when it sentenced the herein petitioner to pay the damages enumerated in the decision of the lower court (Record on Appeal. plaintiff furnishing said defendant the actual model of the tiles in escayola and explained to said engraver the plans.THAT OF THE DEFENDANT ARE DIFFERENT. defendant Aguas requested Aquino to make engravings of the same type and bearing the characteristics of plaintiff's moulds. 1959 plaintiff-appellee filed a patent application with the Philippine Patent Office. particularly the contents of the letters patent.H. 1969. Exh. useful and inventive. defendant Aguas' mould is made to fit a 4-1/4 x 4-1/4 inch tile. "A" to "E"). Aquino knew that the moulds he was asked to engrave for defendant Aguas would be used to produce cement tiles similar to plaintiff's.

depth. lip width. While it is true that the matter of easement. he could not present any. 165. which would tend to show that concrete wall tiles similar to those produced by appellee had ever been made by others before he started manufacturing the same. on the ground that the process. the freshly formed tile remains strong enough for its intended purpose. Dellers Edition. appellant was challenged by appellee to present a tile of the same kind as those produced by the latter. which proceeds not merely from mechanical skill. we find that plaintiff-appellee has introduced an improvement in the process of tile-making. as amended provides: "Any invention of a new and useful machine. have. Republic Act No. Vol. The easement caused by the inclination of the protrusions of the patented moulds is for the purpose of facilitating the removal of the newly processed tile from the female die.a concrete sculptured tile which could be utilized for walling and decorative purposes. 237). process. de Leon. appellee's improvement consists in the solution to the old critical problem by making the protrusions on his moulds attain an optimum height. In fact. Section 7. so that the engraving thereon would be deep enough to produce tiles for sculptured and decorative purposes. especially considering that. it appears that appellee has been deriving considerable profit from his manufacture and sale of such tiles. despite said thinness. "D" and "D-1") is a most critical feature. by the issuance of the patent in question. 658 was issued by the Philippine Patent Office to the private respondent.. More so. therefore. is not an invention or discovery. to be able to produce a new and useful wall tile. by using them all together. Letters Patent No. There is no indication in the records of this case and this Court is unaware of any fact. It should be noted that the private respondent does not claim to be the discoverer or inventor of the old process of tile-making. By using his improved process. easement and field of designs of the new tiles. Anent this matter. The Court of Appeals found that the private respondent has introduced an improvement in the process of tile-making because: . manufactured product or substance. strong optimum thickness of appellee's new tiles of only 1/8 of an inch at the deepest easement (Exhs. Moreover. the Court of Appeals said: Appellant has not adduced evidence sufficient to overcome the above established legal presumption of validity or to warrant reversal of the findings of the lower court relative to the validity of the patent in question. lip width. There is. as we have already pointed out. amounts to an invention. suggestive of discovery and inventiveness. composed of experts in their field.. no concrete proof that 12 . shall be patentable. Conrado G. sodium silicate and screened fine sand. subject of said patent. plaintiff has succeeded in producing a new product . said improvement consisting among other things. He only claims to have introduced an improvement of said process. The improved lip width of appellee's tiles ensures the durability of the finished product preventing the flaking off of the edges. The technical staff of the Philippines Patent Office. in the new critical depth. still. during the trial. I. p. 12 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. de Leon. Conrado G. if the totality of all these features are viewed in combination with the Ideal composition of cement. accepted the thinness of the private respondent's new tiles as a discovery. or an improvement of the foregoing. protrusions and depressions are known to some sculptors. from any earlier source but. despite the fact that appellant had every chance to do so. to protect his rights as the inventor of "an alleged new and useful improvement in the process of making mosaic pre-cast tiles. or an improvement of the old system of making tiles. 1977. This commercial success is evidence of patentability (Walker on Patents. 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. Evidently. the clear preponderance of evidence bolsters said presumption of validity of appellee's patent. 10 The errors will be discuss only to determine the right of said private respondent to damages.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW The patent right of the private respondent expired on May 5. The petitioner questioned the validity of the patent of the private respondent. No proof was adduced to show that any tile of the same kind had been produced by others before appellee. In fact." 11 Indeed. In fact.

Besides. or known to. the engraving of deep designs in such a way as to make the tiles decorative. while in ceramics fire is used. He has overcome the problem of producing decorative tiles with deep engraving. the process and/or improvement being patentable. and the fact that the tiles can be mass produced in commercial quantities and can be conveniently stock-piled. lip width. but with sufficient durability. De Leon's invention has therefore brought about a new and useful kind of tile. There is no similarity between the Pomona Tiles and de Leon's tiles. The Claims and Specifications of Patent No. Some of the novel features of the private respondent's improvements are the following: critical depth. 658 show that although some of the steps or parts of the old process of tile making were described therein. is assured. 19 The Machuca tiles are different from that of the private respondent. Aguas did infringe de Leon's patent. suffice it to say that what is in issue here is the process involved in tile making and not the design. 15 Durability inspite of the thinness and lightness of the tile. 658 was legally issued. there were novel and inventive features mentioned in the process. In its decision the Court of Appeals affirmed the amount of damages awarded by the lower court with the modification that the respondent is only entitled to P3. Cement tiles are made with the use of water.00 moral damages. 21 The lower court awarded the following damages: 22 13 . He has improved the old method of making tiles and pre-cast articles which were not satisfactory because of an intolerable number of breakages. though thin and light. The designs are embossed and not engraved as claimed by the petitioner. artistic and suitable for wall ornamentation. Ideal composition of cement and fine river sand. 14 The petitioner also contends that the improvement of respondent is not patentable because it is not new. easement and field of designs. Both the trial court and the Court of Appeals found as a fact that the petitioner Domiciano A.000. among other ingredients that makes possible the production of tough and durable wall tiles. 20The process involved in making cement tiles is different from ceramic tiles. especially if deep engravings are made on the tile. In view of the foregoing. 18 and that the private respondent had copied some designs of Pomona. The Pomona tiles are made of ceramics. This contention is without merit. The tiles produced from de Leon's process are suitable for construction and ornamentation.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW the improved process of tile-making described in appellee's patent was used by. They are heavy and massive. The old type of tiles were usually intended for floors although there is nothing to prevent one from using them for walling purposes. provided that a certain critical depth is maintained in relation to the dimensions of the tile. which previously had not been achieved by tiles made out of the old process of tile making. handled and packed without any intolerable incidence of breakages. 13 The contention of the petitioner Aguas that the letters patent of de Leon was actually a patent for the old and non-patentable process of making mosaic pre-cast tiles is devoid of merit. These tiles are neither artistic nor ornamental. the Machuca tiles are heavy and massive. The respondent's improvement is indeed inventive and goes beyond the exercise of mechanical skill. There is no showing that this case falls under one of the exceptions when this Court may overrule the findings of fact of the Court of Appeals. There may be depressions but these depressions are too shallow to be considered engraved. 17 that these tiles have also depth. He has introduced a new kind of tile for a new purpose. The only issue then to be resolved is the amount of damages that should be paid by Aguas. De Leon never claimed to have invented the process of tile-making. with corresponding easement and lip width to such degree as leaves the tile as thin as 1/8 of an inch at its thinnest portion. useful and inventive. As regards the allegation of the petitioner that the private respondent copied some designs of Pomona. others previous to his discovery thereof. 16 The petitioner also claims that changing the design from embossed to engraved tiles is neither new nor inventive because the Machuca Tile Factory and the Pomona Tile Manufacturing Company have been manufacturing decorative wall tiles that are embossed as well as engraved. The records disclose that de Leon's process is an improvement of the old process of tile making. this Court finds that Patent No.

he is entitled to an award of moral damages in the sum of P50.s. 30. he made a gross income of P3. In January. plaintiff was unstandably very sad.99 by way of actual damages. 28. t. 36. the decision of the Court of Appeals in CA G. b) P50. Id. which can be safely be considered the amount by which he enriched himself when he infringed plaintiff's patent. said acts of defendants have caused plaintiff considerable mental suffering.00 by way of moral damages.020. he worried and became nervous and lost concentration on his work in connection with his tile business (pp. 28..000. t.00 to be paid jointly and severally by defendants.) The wantonness and evident bad faith characterizing defendants' prejudicial acts against plaintiff justify the assessment of moral damages in plaintiff's favor. Under Sec.. the Court hereby awards plaintiff exemplary damages in the sum of P5.000. 42 of the Patent Law any patentee whose rights have been infringed is entitled to damages which.99. No.n. Manson. 1960. and owner of the likewise reputed House of Pre-Cast. 383 US 519 Syllabus In December 1957 Ringold and Rosenkranz applied for a patent on an allegedly novel process for making certain steroids. A patent issued thereon in 1959. under the circumstances such damages are justly due" (Art. though we do not believe the amount of P50. 37824-R appealed from is hereby affirmed. considering especially. d) P5.020.000. the Court feels there is reason to grant plaintiff maximum damages in the sum of P10. Feb. We feel that said amount should be reduced to P3. There is no reason to reduce the amount of damages and attorneys fees awarded by the trial court as modified by the Court of Appeals. claiming priority as of December.R. plaintiff's character and reputation have been unnecessarily put in question because defendants.000.000.340.00 by way of attomey's fees and e) Costs of suit because: An examination of the books of defendant Aguas made before a Commissioner reveals that during the period that Aguas was manufacturing and selling tiles similar to plaintiff's. respondent filed an application to 14 .s.00 by way of exemplary damages.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW a) P10. 2219 NCC). Considering the wantonness of the infringement committed by the defendants who knew all the time about the existence of plaintiff's patent.33. c) P5.n.00.00 awarded by the lower court is warranted by the circumstances. In addition.000. according to the circumstances of the case may be in a sum above the amount found as actual damages sustained provided the award does not exceed three times the amount of such actual damages. Brenner vs. WHEREFORE. And in order to discourage patent infringements and to give more teeth to the provisions of the patent law thus promoting a stronger public policy committed to afford greater incentives and protection to inventors. 23 In reducing the amount of moral damages the Court of Appeals said: As regards the question of moral damages it has been shown that as a result of the unlawful acts of infringment committed by defendants.00 by way of compensating appellee for his moral suffering. the fact that he staked everything on his pre-cast tile business (p.000. Necessarily. 1964). 1956. Considering the status of plaintiff as a reputable businessman. by their acts of infringement have created a doubt or suspicion in the public mind concerning the truth and honesty of plaintiff's advertisements and public announcements of his valid patent. "Willful injury to property may be a legal ground for awarding moral damages if the court should find that. without pronouncement as to costs.

S. to review decisions of the Court of Customs and Patent Appeals. 383 U. holding that. 532-536. S. This case presents two questions of importance to the administration of the patent laws: first. Respondent's application was denied by a Patent Office examiner. He asserted that it was he who had discovered the process. Pp. Pp. 521 priority as of December 17. In January. The ground for rejection was the failure "to disclose any utility for" the chemical compound produced by the process.S. and the denial was affirmed by the Board of Appeals within the Patent Office. 383 U. S.e. the Board of Appeals affirming. 522 cured. whether this Court has certiorari jurisdiction. S.) 739. Said the Board of Appeals. 535. 52 C. The facts are as follows: In December. 3. Pp. 383 U. 1333-1335.A. a chemist engaged in steroid research. This omission was not Page 383 U. upon petition of the Commissioner of Patents. yields the intended product. filed an application to patent precisely the same process described by Ringold and Rosenkranz. it is not necessary to show utility for the product" as long as it is not detrimental to the public interest. 528-536. in the opinion of the Patent Office.908. [Footnote 1] They claimed Page 383 U. S. "where a claimed process produces a known product. 1956. S. S.C. Pp. 1956. 383 U. 333 F. asserting that he had discovered it prior to December. 1956. and second. (c) The requirement that a chemical process be useful is not satisfied by a showing that the compound yielded belongs to a class of compounds which scientists are screening for possible uses. 383 U.. reversed. 2. P. 531-532. (b) Respondent has not provided any basis for overturning the determination of the Patent Office that the utility requirement was not satisfied in this case by reference to the alleged utility of an adjacent homologue. 21 J. 1957. Howard Ringold and George Rosenkranz applied for a patent on an allegedly novel process for making certain known steroids. 1960. 528.C. the date on which they had filed for a Mexican patent. United States Patent No. 2. Pp.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW patent the same process. S. 383 U. dated May 24. which revealed that steroids of a class which included the compound in question were undergoing screening for possible tumor-inhibiting effects in mice. 15 . whether the practical utility of the compound produced by a chemical process is an essential element in establishing a prima facie case for the patentability of the process. n 12. 383 U. by Manson's reference to an article in the November. for failure "to disclose any utility for" the compound produced by the process. 532-536. Page 383 U. The Patent Office properly may refuse to declare an "interference" on the ground that the application therefor fails to disclose a prima facie case of patentability.P. (a) One may patent only that which is useful. [Footnote 2] A Patent Office examiner denied Manson's application. and requesting that an "interference" be declared to test the issue of priority. respondent Manson. issue of the Journal of Organic Chemistry. Held: 1. S. Pp. The practical utility of the compound produced by a chemical process is an essential element in establishing a prima facie case for the patentability of the process.Chem. 523-528. 2d 234. and that a homologue [Footnote 3] adjacent to Manson's steroid had proven effective in that role.(Pat. This Court has jurisdiction under 28 U. Accordingly. Letter of Examiner. S. The Court of Customs and Patent Appeals (CCPA) reversed. 528-529. and that he had done so before December 17. 383 U. § 1256 to review upon petition of the Commissioner of Patents patent decisions of the CCPA.Org. 1960.693 issued late in 1959. 520 (d) Nor is the utility requirement for chemical processes satisfied by a showing that the process works. he requested that an "interference" be declared in order to try out the issue of priority between his claim and that of Ringold and Rosenkranz. MR. S. JUSTICE FORTAS delivered the opinion of the Court. i. 1956.

[Footnote 7] In 1929. however. Postum. exercised the jurisdiction later transferred to the CCPA.(Pat. Postum involved a proceeding in the Patent Office to cancel a trademark. in Postum Cereal Co. California Fig Nut Co. the CCPA was confined to the record made in the Patent Office. S. 524 Court. that it could not be maintained to overcome Page 383 U. Pottsville Broadcasting Co. 311 U. is of assistance to us in the resolution of the present problem: did the statutory changes which followed 16 . An appeal was taken to the then Court of Appeals for the District of Columbia. but it could not empower this Court to participate therein. [Footnote 8] Whereas the Court of Appeals had been empowered to take additional evidence and to substitute its judgment for that of the Commissioner. provides that "Cases in the Court of Customs and Patent Appeals may be reviewed by the Supreme Court by writ of certiorari. (1964 ed. S. enacted in 1948. 309 U." This unqualified language would seem to foreclose any challenge to our jurisdiction in the present case.S. 525 an adjudication in the Court of Appeals.g. Despite these changes.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW "It is our view that the statutory requirement of usefulness of a product cannot be presumed merely because it happens to be closely related to another compound which is known to be useful. the judgment of the Court of Appeals was not definitive. McBride v. 745. [Footnote 9] Compare Federal Communications Comm'n v. S. [Footnote 4] as well as to answer the question concerning our certiorari jurisdiction. "where a claimed process produces a known product. The doubt that does exist stems from a decision of this Page 383 U. to resolve this running dispute over what constitutes "utility" in chemical process claims. at 272 U. because it was not an order to the Patent Office determinative of the controversy. and would deny the Commissioner of Patents the right to seek certiorari. it provided that an action in the District Court was to be alternative. the Court held that it could not review the decision of the Court of Appeals.2d 234.A. S. 134. although the latter would confine our jurisdiction to those petitions filed by dissatisfied applicants. [Footnote 10] This was the background against which Congress. the proceeding in the Court of Appeals -. S. 1927." Certiorari was granted. wrote Chief Justice Taft.P. this Court concluded. Congress soon amended the statutory scheme. e. 649. Page 383 U. 52 C. 272 U. 971. 693. Teeple. except its language.essentially administrative in nature -. and it was possible that a conflicting adjudication could thus be obtained." rather than a "judicial judgment": "merely an instruction to the Commissioner of Patents by a court which is made part of the machinery of the Patent Office for administrative purposes. which has been widely interpreted as precluding certiorari jurisdiction over patent and trademark decisions of the CCPA. The court held that Manson was entitled to a declaration of interference. in its 1948 codification of statutes pertaining to the judiciary. 523 I Section 1256 of Title 28 U. v. A subsequent bill in equity could be brought in the District Court.S." 272 U. See..S.C. Both the Government [Footnote 5] and the respondent urge that we have certiorari jurisdiction over patent decisions of the CCPA. It held that the conclusion of the Court of Appeals was an "administrative decision..). since.) 739. 144145.C. The Commissioner of Patents rejected the application. S. blandly providing in unqualified language for review on certiorari of "[c]ases in the Court of Customs and Patent Appeals. enacted § 1256. and not cumulative.. Postum had acquired a life of its own. S." Nothing in the legislative materials relating to the statute. 698-699. in 1927. Under the statutory arrangement in effect at the time.S. 237-238. Congress transferred appellate jurisdiction over the Commissioner's decisions from the Court of Appeals to what had been the Court of Customs Appeals and was now styled the Court of Customs and Patent Appeals. 309 U. denying certiorari for "want of jurisdiction" on the authority of Postum. Therefore. 380 U. It continued to stand in the way of attempts to secure review here of CCPA decisions respecting the Commissioner of Patents. it is not necessary to show utility for the product" so long as the product "is not alleged to be detrimental to the public interest." The Court of Customs and Patent Appeals (hereinafter CCPA) reversed. Chief Judge Worley dissenting. 333 F. however. which. because jurisdiction cannot be conferred by consent of the parties. was based upon a statutory scheme materially different from the present one. Congress might confer such "administrative" tasks upon the courts of the District of Columbia. to appellate review.was neither case nor controversy within the meaning of Article III of the Constitution. In March of 1927. On this basis. rendered in January. [Footnote 6] This concert of opinion does not settle the basic question.

182 F. if so. the orderly administration both of our certiorari jurisdiction and of the patent laws requires that ultimate review be available in this Court. 370 U. 529 "useful. rather than administrative. S.S. Were that so.C. however. machine. for three of the seven Justices participating. S. That this is so is demonstrated by the present conflict between the Patent Office and the CCPA over how the test is to be applied to a chemical process which yields an already known product whose utility -. S.. intended to enshrine Postum -. beginning with the first patent law in 1790 [Footnote 13] and culminating in the present law's provision that "Whoever invents or discovers any new and useful process. Suffice it to say that the concept of utility has maintained a central place in all of our patent legislation. John Deere Co.). 530.S. It would be entirely arbitrary for us to assume. regardless of the route chosen by the litigants. [Footnote 12] II Our starting point is the proposition. 527 has no vitality in the present setting. . neither disputed nor disputable. S. may obtain a patent therefor. S.C. ante. Thus. in 1948. S.S.). Hoover Co. This conclusion is reinforced by reference to the anomalous consequences which would result were we to adopt a contrary view of § 1256. or any new and useful improvement thereof.as a hidden exception to the sweep of § 1256. The concurring opinion of MR. In answering that question in the affirmative. manufacture. v. Congress there declared the CCPA "a court established under article III . Determinations of the Patent Office may be challenged either by appeal to the CCPA or by suit instituted in the United States District Court for the District of Columbia. in which THE CHIEF JUSTICE joined. [Footnote 11] In sum. 37 C. 370 U.C. everyday word can be pregnant with ambiguity when applied to the facts of life. 28 U. subject to the conditions and requirements of this title. It would be strange indeed if corresponding certiorari jurisdiction did not exist where the alternative route was elected. v. It is "judicial" in character. expressly left open the question whether § 1256 conferred certiorari jurisdiction over patent and trademark cases decided in the CCPA. 526 Postum mean that a patent decision by the CCPA was a "judicial" determination reviewable by this Court under Article III? And. InApplication of Bremner. 325 U. despite the statutory language. that Postum might be nothing more than a museum piece.S. S. Zdanok. § 211 (1964 ed. JUSTICE HARLAN's opinion. S. Coe. . S. 5-10. capable of exercising federal judicial power. and it need not be repeated here. the decision sought to be reviewed is that of an Article III court. It is not merely an instruction to the Commissioner or part of the "administrative machinery" of the Patent Office. It suggested. JUSTICE CLARK. 28 U. and ultimately in this Court upon writ of certiorari. 383 U.) 1032.S. 1 at 383 U.P. was § 1256 intended to create such jurisdiction? Assistance came with the 1958 revision of the Judicial Code. 79. Page 383 U. we have no difficulty in giving full force and effect to the generality of the language in § 1256. a simple. Postum Page 383 U.C.dependent as it was upon a statutory scheme fundamentally altered in 1927 and 1929 -. 217. by using broad and unqualified language. and there remains no constitutional bar to our jurisdiction. in the event of conflict between the CCPA and the courts of the District of Columbia. S. raised the question whether a judge of the CCPA was an Article III judge.other than as a possible object of scientific inquiry -has not yet been evidenced. 579." that is.(Pat.2d 216. we have reviewed the history of the requisites of patentability. 49. 370 U. at 370 U. [Footnote 14]" As is so often the case.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW Page 383 U." In Graham v. this Court addressed itself to the nature and status of the CCPA. The opinion noted that Postum "must be taken to be limited to the statutory scheme in existence before" 1929. § 1542 (1964 ed. 578 n. did not reflect any difference on this point. 35 U. Obviously. 1034. MR. the court affirmed rejection by the Patent Office of both process and 17 . resolution by this Court would be achievable only if the litigants chose to proceed through the latter. power. or composition of matter.A. that one may patent only that which is Page 383 U. 528 We therefore conclude that § 1256 authorizes the grant of certiorari in the present case. The contrary is more plausible: that. Glidden Co. We now turn to the merits. Having arrived at this conclusion. . Congress intended our certiorari jurisdiction over CCPA cases to be as broad as the Constitution permits. § 145. that Congress. the decision obtained may be reviewed in the Court of Appeals for the District of Columbia Circuit. p. In 1962. It is final and binding in the usual sense. at 370 U. Where the latter route is elected. however. a constitutional court exercising judicial. It was not long ago that agency and court seemed of one mind on the question.

333 F. Indeed. The Patent Office held that. Michael. Even if we knew precisely what Congress meant in 1790 when it devised the "new and useful" phraseology and in subsequent reenactments of the test.P.(Pat..if that word is given its broadest reach." [Footnote 19] In these circumstances and in this technical area." Nor does he commit the outcome of his claim to the slightly more conventional proposition that any process is "useful" within the meaning of § 101 if it produces a compound whose potential usefulness is under investigation by serious scientific researchers." The trend has accelerated. 530 The Patent Office has remained steadfast in this view. 166 F. 531 as it yields the intended product [Footnote 16] and so long as the product is not itself "detrimental. or good order of society.(Pat. we are remitted to an analysis of the problem in light of the general intent of Congress.2d 944. by reference to Ringold's 1956 article.2d 172. S. Is a chemical process "useful" within the meaning of § 101 either (1) because it works -. See Thomas v. we would not overturn the finding of the Primary Examiner. unless such product be useful. It noted that "no use for the products claimed to be developed by the processes had been shown in the specification. although he urges this position. There.2d at 238. In support of his plea that we attenuate the requirement of "utility." It held that "It was never intended that a patent be granted upon a product. Rather." respondent relies upon Justice Story's Page 383 U. 533 well known statement that a "useful" invention is one "which may be applied to a beneficial use in society.) at 745.P.P. 280 F.C. and the implications of a decision one way or the other.(Pat. reveal that an adjacent homologue of the steroid yielded by his process has been demonstrated to have tumor-inhibiting effects in mice. It is not remarkable that differences arise as to how the test of usefulness is to be applied to chemical processes. advanced by the court below. Since we find no specific assistance in the legislative materials underlying § 101.C. S.rest upon the extreme proposition. 532 not overrule the Patent Office finding that respondent has not made such a showing. 10381039. too. despite the reference to the adjacent homologue.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW product claims.i. produces the intended product? or (2) because the compound yielded belongs to a class of compounds now the subject of serious scientific investigation? These contentions present the basic problem for our adjudication. Even on the assumption that the process would be patentable were respondent to show that the steroid produced had a tumorinhibiting effect in mice. respondent himself recognized that the presumption that adjacent homologues have the same utility [Footnote 18] has been challenged in the steroid field because of "a greater known unpredictability of compounds in that field. We do not accept any of these theories as an adequate basis for overriding the determination of the Patent Office that the "utility" requirement has not been met. where the court held it sufficient that a process produces the result intended and is not "detrimental to the public interest. or a process producing a product. [Footnote 15] culminating in the present case. S.) 1036. 946-947.at least in the first instance -." 52 C. 47 C. [Footnote 17] we would Page 383 U.A. has moved sharply away from Bremner. affirmed by the Board of Appeals and not challenged by the CCPA. respondent's papers did not disclose a sufficient likelihood that the steroid yielded by his process would have similar tumor-inhibiting characteristics.) 1031. we should have difficulty in applying it in the context of contemporary chemistry. in contradistinction to an invention injurious to the morals. health. 35 C. The claim is that the supporting affidavits filed pursuant to Rule 204(b)." despite the absence of evidence that any of the steroids thus ultimately produced were themselves "useful. The trend began in Application of Nelson. the purposes of the patent system.A. Page 383 U. however.C. that a novel chemical process is patentable so long Page 383 U. or frivolous and insignificant [Footnote 20]" 18 . as an alternative basis for affirming the decision of the CCPA. he begins with the much more orthodox argument that his process has a specific utility which would entitle him to a declaration of interference even under the Patent Office's reading of § 101. the court reversed the Patent Office's rejection of a claim on a process yielding chemical intermediates "useful to chemists doing research on steroids. where research is as comprehensive as man's grasp and where little or nothing is wholly beyond the pale of "utility" -. The CCPA. Respondent does not -. and that this discloses the requisite utility." Nor was this new doctrine in the court.A. S.e. The second and third points of respondent's argument present issues of much importance.

INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW -. he has every incentive to make his invention known to those able to do so. Finally. The basic quid pro quocontemplated by the Constitution and the Congress for granting a patent monopoly is the benefit derived by the public from an invention with substantial utility.the argument based upon the virtue of disclosure must be warily evaluated.while broadening the scope of the claim as widely as possible -. Until the process claim has been reduced to production of a product shown to be useful. Unless and until a process is refined and developed to this point -.there is insufficient justification for permitting an applicant to engross what may prove to be a broad field. there is little incentive for others to undertake a search for uses. in light of the highly developed art of drafting patent claims so that they disclose as little useful information as possible -. [Footnote 21] And it may be that inability to patent a process to some extent discourages disclosure and leads to greater secrecy than would otherwise be the case. we believe a more compelling consideration is that a process patent in the chemical field. it places such a special meaning on the word "useful" that we cannot accept it in the absence of evidence that Congress so intended. it does no more than compel us to decide whether the invention in question is "frivolous and insignificant" -. and perhaps unknowable area. These arguments for and against the patentability of a process which either has no known use or is useful only in the sense that it may be an object of scientific research would apply equally to the patenting of the product produced by the process. 534 secret while uses for the product are searched out. 19 . Such a patent may confer power to block off whole areas of scientific development. of course. unknown. the pressure for secrecy is easily exaggerated. [Footnote 24] That proposition seems to us little more than an attempt to evade the impact of the rules which concededly govern patentability of the product itself. rather than to the realm of philosophy. a different set of rules was meant to apply to the process which yielded the unpatentable product.a query no easier of application than the one built into the statute. so as to allow the patenting of any invention not positively harmful to society. which has not been developed and pointed to the degree of specific utility. Whatever weight is attached to the value of encouraging disclosure and of inhibiting secrecy. the decisions of the CCPA are in accord with the view that a product may not be patented absent a showing of utility greater than any adduced in the present case. [Footnote 23] We find absolutely no warrant for the proposition that. Read more broadly. The inventor of the process. the metes and bounds of that monopoly are not capable of precise delineation. 536 short of the invention of something "useful." or that we are blind to the prospect that what now seems without "use" may tomorrow command the grateful attention of the public. thus widening the search for uses and increasing the fund of scientific knowledge. S. after all." [Footnote 25] The judgment of the CCPA is Reversed. Indeed. It is true. Moreover. There are.and upon the assertion that to do so would encourage inventors of new processes to publicize the event for the benefit of the entire scientific community. It is not a reward for the search. S. "[A] patent system must be related to the world of commerce. many things in this world which may not be considered "useful" but which. creates a monopoly of knowledge which should be granted only if clearly commanded by the statute. S. but compensation for its successful conclusion. Justice Story's language sheds little light on our subject. with respect to a product. . 535 exists in currently available form -. This is not to say that we mean to disparage the importance of contributions to the fund of scientific information Page 383 U. Respondent appears to concede that. But a patent is not a hunting license. nevertheless are totally without a capacity for harm. . . [Footnote 22] without compensating benefit to the public. or the corporate organization by which he is employed. Narrowly read. It may engross a vast. Congress has struck the balance on the side of nonpatentability unless "utility" is shown. for if the inventor of a process cannot himself ascertain a "use" for that which his process yields. that one of the purposes of the patent system is to encourage dissemination of information concerning discoveries and inventions. However. has some incentive to keep the invention Page 383 U. although Congress intended that no patent be granted on a chemical compound whose sole "utility" consists of its potential role as an object of use-testing. as opposed to a process.where specific benefit Page 383 U. how likely is disclosure of a patented process to spur research by others into the uses to which the product may be put? To the extent that the patentee has power to enforce his patent.

S. Howard Ringold and George Rosenkranz applied for a patent on an allegedly novel process for making certain known steroids. In January. 383 U. Pp. 383 U. 528. and the denial was affirmed by the Board of Appeals within the Patent Office. The ground for rejection was the failure "to disclose any utility for" the chemical compound produced by the process. Accordingly. whether this Court has certiorari jurisdiction. A patent issued thereon in 1959. 2. Respondent's application was denied by a Patent Office examiner. This Court has jurisdiction under 28 U. The Court of Customs and Patent Appeals (CCPA) reversed. S. 52 C. This omission was not Page 383 U. Pp. and second. Page 383 U. In January.C. yields the intended product. 2d 234. S. 520 (d) Nor is the utility requirement for chemical processes satisfied by a showing that the process works.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW Brenner vs. 383 U. Pp. the date on which they had filed for a Mexican patent. 1956. 383 U. 2. 383 US 519 Syllabus In December 1957 Ringold and Rosenkranz applied for a patent on an allegedly novel process for making certain steroids. 383 U. S. Pp.e. 528-529. to review decisions of the Court of Customs and Patent Appeals. respondent filed an application to patent the same process. 528-536. Pp.693 issued late in 1959. dated May 24. and that he had done so before December 17.P. 1957. The facts are as follows: In December. n 12. P. he requested that an "interference" be declared in order to try out the issue of priority between his claim and that of Ringold and Rosenkranz. The Patent Office properly may refuse to declare an "interference" on the ground that the application therefor fails to disclose a prima facie case of patentability. [Footnote 1] They claimed Page 383 U. 531-532. whether the practical utility of the compound produced by a chemical process is an essential element in establishing a prima facie case for the patentability of the process. 532-536. S.A. S. upon petition of the Commissioner of Patents. S. the Board of Appeals affirming. He asserted that it was he who had discovered the process. MR.(Pat. asserting that he had discovered it prior to December. This case presents two questions of importance to the administration of the patent laws: first. Held: 1. 333 F. and requesting that an "interference" be declared to test the issue of priority. 523-528. 1956. (b) Respondent has not provided any basis for overturning the determination of the Patent Office that the utility requirement was not satisfied in this case by reference to the alleged utility of an adjacent homologue. S.. 383 U. 535. 383 U. (c) The requirement that a chemical process be useful is not satisfied by a showing that the compound yielded belongs to a class of compounds which scientists are screening for possible uses. S. for failure "to disclose any utility for" the compound produced by the process. "where a claimed process produces a known product. [Footnote 2] A Patent Office examiner denied Manson's application. S. a chemist engaged in steroid research. reversed. respondent Manson. Pp. 1956. JUSTICE FORTAS delivered the opinion of the Court.908.C. 521 priority as of December 17. S. 3. United States Patent No. holding that. Letter of Examiner. Manson. it is not necessary to show utility for the product" as long as it is not detrimental to the public interest. 532-536. § 1256 to review upon petition of the Commissioner of Patents patent decisions of the CCPA. The practical utility of the compound produced by a chemical process is an essential element in establishing a prima facie case for the patentability of the process. (a) One may patent only that which is useful. 1956. 1960. 1960.) 739. i. filed an application to patent precisely the same process described by Ringold and Rosenkranz. 522 20 . S. 1960. 383 U. claiming priority as of December.

Postum had acquired a life of its own. S. Therefore. and would deny the Commissioner of Patents the right to seek certiorari." Certiorari was granted. [Footnote 6] This concert of opinion does not settle the basic question. 745. since. Despite these changes.S. Congress soon amended the statutory scheme. Congress transferred appellate jurisdiction over the Commissioner's decisions from the Court of Appeals to what had been the Court of Customs Appeals and was now styled the Court of Customs and Patent Appeals. Postum. issue of the Journal of Organic Chemistry.2d 234. the judgment of the Court of Appeals was not definitive.Org. Both the Government [Footnote 5] and the respondent urge that we have certiorari jurisdiction over patent decisions of the CCPA. It continued to stand in the way of attempts to secure review here of CCPA decisions respecting the Commissioner of Patents. 309 U. by Manson's reference to an article in the November. e. which. S. 971. 144145. wrote Chief Justice Taft. [Footnote 9] Compare Federal Communications Comm'n v.S. this Court concluded. because jurisdiction cannot be conferred by consent of the parties. S. The doubt that does exist stems from a decision of this Page 383 U. S." The Court of Customs and Patent Appeals (hereinafter CCPA) reversed. 380 U. [Footnote 10] 21 . S. S. 693. and not cumulative. 309 U. The Commissioner of Patents rejected the application. but it could not empower this Court to participate therein.). was based upon a statutory scheme materially different from the present one. "where a claimed process produces a known product. and that a homologue [Footnote 3] adjacent to Manson's steroid had proven effective in that role. it is not necessary to show utility for the product" so long as the product "is not alleged to be detrimental to the public interest. California Fig Nut Co. 524 Court. Page 383 U. 52 C. In March of 1927.essentially administrative in nature -. which revealed that steroids of a class which included the compound in question were undergoing screening for possible tumor-inhibiting effects in mice. enacted in 1948.C. denying certiorari for "want of jurisdiction" on the authority of Postum. It held that the conclusion of the Court of Appeals was an "administrative decision. 21 J.Chem. 649. McBride v. to appellate review." This unqualified language would seem to foreclose any challenge to our jurisdiction in the present case. it provided that an action in the District Court was to be alternative. 237-238. however.was neither case nor controversy within the meaning of Article III of the Constitution. [Footnote 7] In 1929. Chief Judge Worley dissenting. Said the Board of Appeals. 698-699. Postum involved a proceeding in the Patent Office to cancel a trademark. 1927. Pottsville Broadcasting Co. to resolve this running dispute over what constitutes "utility" in chemical process claims. and it was possible that a conflicting adjudication could thus be obtained. v. 272 U. at 272 U. [Footnote 4] as well as to answer the question concerning our certiorari jurisdiction. in Postum Cereal Co. "It is our view that the statutory requirement of usefulness of a product cannot be presumed merely because it happens to be closely related to another compound which is known to be useful. 311 U. rendered in January. Under the statutory arrangement in effect at the time. although the latter would confine our jurisdiction to those petitions filed by dissatisfied applicants. exercised the jurisdiction later transferred to the CCPA. (1964 ed.S. 134..A. [Footnote 8] Whereas the Court of Appeals had been empowered to take additional evidence and to substitute its judgment for that of the Commissioner. See..P. 1333-1335.) 739. however. the proceeding in the Court of Appeals -. S." 272 U. 523 I Section 1256 of Title 28 U. A subsequent bill in equity could be brought in the District Court. Teeple.S.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW cured. in the opinion of the Patent Office. The court held that Manson was entitled to a declaration of interference.g. the CCPA was confined to the record made in the Patent Office. 525 an adjudication in the Court of Appeals. in 1927. 333 F." rather than a "judicial judgment": "merely an instruction to the Commissioner of Patents by a court which is made part of the machinery of the Patent Office for administrative purposes. On this basis. An appeal was taken to the then Court of Appeals for the District of Columbia. which has been widely interpreted as precluding certiorari jurisdiction over patent and trademark decisions of the CCPA. provides that "Cases in the Court of Customs and Patent Appeals may be reviewed by the Supreme Court by writ of certiorari. the Court held that it could not review the decision of the Court of Appeals. Congress might confer such "administrative" tasks upon the courts of the District of Columbia.. that it could not be maintained to overcome Page 383 U.C.(Pat. 1956. because it was not an order to the Patent Office determinative of the controversy.

beginning with the first patent law in 1790 [Footnote 13] and culminating in the present law's provision that "Whoever invents or discovers any new and useful process. in the event of conflict between the CCPA and the courts of the District of Columbia. did not reflect any difference on this point. It suggested. the decision sought to be reviewed is that of an Article III court. 578 n. capable of exercising federal judicial power." that is. 383 U. in 1948. we have reviewed the history of the requisites of patentability. may obtain a patent therefor. that one may patent only that which is Page 383 U.S. or composition of matter. or any new and useful improvement thereof. 529 "useful. § 145.as a hidden exception to the sweep of § 1256. In answering that question in the affirmative. rather than administrative. v. 28 U. if so. neither disputed nor disputable.. S. S. 370 U. regardless of the route chosen by the litigants.S. S. John Deere Co. resolution by this Court would be achievable only if the litigants chose to proceed through the latter. except its language. It would be strange indeed if corresponding certiorari jurisdiction did not exist where the alternative route was elected. machine. S. . enacted § 1256. Thus. 1 at 383 U. This conclusion is reinforced by reference to the anomalous consequences which would result were we to adopt a contrary view of § 1256. at 370 U. this Court addressed itself to the nature and status of the CCPA. Congress intended our certiorari jurisdiction over CCPA cases to be as broad as the Constitution permits. 370 U.). despite the statutory language. Zdanok.C. we have no difficulty in giving full force and effect to the generality of the language in § 1256. that Postum might be nothing more than a museum piece. 370 U. by using broad and unqualified language. p. Were that so. for three of the seven Justices participating.C. 5-10. . 35 U. is of assistance to us in the resolution of the present problem: did the statutory changes which followed Page 383 U. S.C. Coe. at 370 U. § 211 (1964 ed. [Footnote 14]" 22 . v. blandly providing in unqualified language for review on certiorari of "[c]ases in the Court of Customs and Patent Appeals. raised the question whether a judge of the CCPA was an Article III judge. S. in its 1948 codification of statutes pertaining to the judiciary." Nothing in the legislative materials relating to the statute.S. Suffice it to say that the concept of utility has maintained a central place in all of our patent legislation. ante. Postum Page 383 U. It would be entirely arbitrary for us to assume. Congress there declared the CCPA "a court established under article III . JUSTICE HARLAN's opinion. Where the latter route is elected. S. [Footnote 11] In sum. S. S. It is not merely an instruction to the Commissioner or part of the "administrative machinery" of the Patent Office. Glidden Co. intended to enshrine Postum -. the orderly administration both of our certiorari jurisdiction and of the patent laws requires that ultimate review be available in this Court. 325 U. It is "judicial" in character. and it need not be repeated here. was § 1256 intended to create such jurisdiction? Assistance came with the 1958 revision of the Judicial Code. 79. 579. It is final and binding in the usual sense. Page 383 U. We now turn to the merits. in which THE CHIEF JUSTICE joined. power. JUSTICE CLARK. and ultimately in this Court upon writ of certiorari.S. [Footnote 12] II Our starting point is the proposition.S. that Congress. 528 We therefore conclude that § 1256 authorizes the grant of certiorari in the present case. a constitutional court exercising judicial. Having arrived at this conclusion. 526 Postum mean that a patent decision by the CCPA was a "judicial" determination reviewable by this Court under Article III? And." In Graham v.dependent as it was upon a statutory scheme fundamentally altered in 1927 and 1929 -. The opinion noted that Postum "must be taken to be limited to the statutory scheme in existence before" 1929. manufacture. 527 has no vitality in the present setting. however. and there remains no constitutional bar to our jurisdiction. § 1542 (1964 ed. 28 U. . Obviously. Determinations of the Patent Office may be challenged either by appeal to the CCPA or by suit instituted in the United States District Court for the District of Columbia.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW This was the background against which Congress. The contrary is more plausible: that. In 1962. The concurring opinion of MR. subject to the conditions and requirements of this title. S. expressly left open the question whether § 1256 conferred certiorari jurisdiction over patent and trademark cases decided in the CCPA. the decision obtained may be reviewed in the Court of Appeals for the District of Columbia Circuit. 49. Hoover Co. MR.). 530.

if that word is given its broadest reach." Nor does he commit the outcome of his claim to the slightly more conventional proposition that any process is "useful" within the meaning of § 101 if it produces a compound whose potential usefulness is under investigation by serious scientific researchers. or a process producing a product.2d 216. Page 383 U. that a novel chemical process is patentable so long Page 383 U. The second and third points of respondent's argument present issues of much importance. by reference to Ringold's 1956 article. 946-947.A. There.rest upon the extreme proposition. It noted that "no use for the products claimed to be developed by the processes had been shown in the specification. a simple. S.(Pat.P. 166 F. produces the intended product? or (2) because the compound yielded belongs to a class of compounds now the subject of serious scientific investigation? These contentions present the basic problem for our adjudication. 217.e. 47 C. however.P. In support of his plea that we attenuate the requirement of "utility. and that this discloses the requisite utility. 530 The Patent Office has remained steadfast in this view. despite the reference to the adjacent homologue. we should have difficulty in applying it in the context of contemporary chemistry. 1034.2d at 238. 37 C. and the implications of a decision one way or the other. has moved sharply away from Bremner. the court affirmed rejection by the Patent Office of both process and product claims.other than as a possible object of scientific inquiry -has not yet been evidenced. reveal that an adjacent homologue of the steroid yielded by his process has been demonstrated to have tumor-inhibiting effects in mice.(Pat. See Thomas v.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW As is so often the case. That this is so is demonstrated by the present conflict between the Patent Office and the CCPA over how the test is to be applied to a chemical process which yields an already known product whose utility -. however.2d 944. 533 23 .(Pat. The CCPA. 35 C.2d 172.) at 745. unless such product be useful. [Footnote 15] culminating in the present case.C. Even on the assumption that the process would be patentable were respondent to show that the steroid produced had a tumorinhibiting effect in mice. S. although he urges this position. respondent himself recognized that the presumption that adjacent homologues have the same utility [Footnote 18] has been challenged in the steroid field because of "a greater known unpredictability of compounds in that field.. InApplication of Bremner. too. the court reversed the Patent Office's rejection of a claim on a process yielding chemical intermediates "useful to chemists doing research on steroids.) 1031.P. Even if we knew precisely what Congress meant in 1790 when it devised the "new and useful" phraseology and in subsequent reenactments of the test. 182 F. The Patent Office held that.i.A. the purposes of the patent system. 280 F. everyday word can be pregnant with ambiguity when applied to the facts of life. we are remitted to an analysis of the problem in light of the general intent of Congress. 531 as it yields the intended product [Footnote 16] and so long as the product is not itself "detrimental. The claim is that the supporting affidavits filed pursuant to Rule 204(b). S. where research is as comprehensive as man's grasp and where little or nothing is wholly beyond the pale of "utility" -.A.C." The trend has accelerated. as an alternative basis for affirming the decision of the CCPA.) 1036. advanced by the court below. [Footnote 17] we would Page 383 U.A. respondent's papers did not disclose a sufficient likelihood that the steroid yielded by his process would have similar tumor-inhibiting characteristics. Michael. Indeed. It is not remarkable that differences arise as to how the test of usefulness is to be applied to chemical processes." respondent relies upon Justice Story's Page 383 U.at least in the first instance -. Since we find no specific assistance in the legislative materials underlying § 101. Is a chemical process "useful" within the meaning of § 101 either (1) because it works -." 52 C." [Footnote 19] In these circumstances and in this technical area. Respondent does not -. 333 F. affirmed by the Board of Appeals and not challenged by the CCPA. 10381039." Nor was this new doctrine in the court. 532 not overrule the Patent Office finding that respondent has not made such a showing." It held that "It was never intended that a patent be granted upon a product. he begins with the much more orthodox argument that his process has a specific utility which would entitle him to a declaration of interference even under the Patent Office's reading of § 101. we would not overturn the finding of the Primary Examiner. The trend began in Application of Nelson. It was not long ago that agency and court seemed of one mind on the question." despite the absence of evidence that any of the steroids thus ultimately produced were themselves "useful. where the court held it sufficient that a process produces the result intended and is not "detrimental to the public interest. S.C. We do not accept any of these theories as an adequate basis for overriding the determination of the Patent Office that the "utility" requirement has not been met.) 1032.(Pat.P. Rather.C.

Moreover.there is insufficient justification for permitting an applicant to engross what may prove to be a broad field.the argument based upon the virtue of disclosure must be warily evaluated. Finally. S. It is true. nevertheless are totally without a capacity for harm. the metes and bounds of that monopoly are not capable of precise delineation. "[A] patent system must be related to the world of commerce. 536 short of the invention of something "useful. health. the decisions of the CCPA are in accord with the view that a product may not be patented absent a showing of utility greater than any adduced in the present case. This is not to say that we mean to disparage the importance of contributions to the fund of scientific information Page 383 U. 534 secret while uses for the product are searched out. Justice Story's language sheds little light on our subject. It is not a reward for the search.while broadening the scope of the claim as widely as possible -. he has every incentive to make his invention known to those able to do so. after all. Such a patent may confer power to block off whole areas of scientific development. rather than to the realm of philosophy. But a patent is not a hunting license. or the corporate organization by which he is employed. [Footnote 22] without compensating benefit to the public. in light of the highly developed art of drafting patent claims so that they disclose as little useful information as possible -.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW well known statement that a "useful" invention is one "which may be applied to a beneficial use in society. although Congress intended that no patent be granted on a chemical compound whose sole "utility" consists of its potential role as an object of use-testing. there is little incentive for others to undertake a search for uses. which has not been developed and pointed to the degree of specific utility. how likely is disclosure of a patented process to spur research by others into the uses to which the product may be put? To the extent that the patentee has power to enforce his patent. as opposed to a process. in contradistinction to an invention injurious to the morals. Unless and until a process is refined and developed to this point -. Narrowly read. with respect to a product. The basic quid pro quocontemplated by the Constitution and the Congress for granting a patent monopoly is the benefit derived by the public from an invention with substantial utility. many things in this world which may not be considered "useful" but which." or that we are blind to the prospect that what now seems without "use" may tomorrow command the grateful attention of the public. [Footnote 23] We find absolutely no warrant for the proposition that. for if the inventor of a process cannot himself ascertain a "use" for that which his process yields. S. Indeed. we believe a more compelling consideration is that a process patent in the chemical field.where specific benefit Page 383 U. These arguments for and against the patentability of a process which either has no known use or is useful only in the sense that it may be an object of scientific research would apply equally to the patenting of the product produced by the process. However. . Until the process claim has been reduced to production of a product shown to be useful. . or good order of society.and upon the assertion that to do so would encourage inventors of new processes to publicize the event for the benefit of the entire scientific community. Whatever weight is attached to the value of encouraging disclosure and of inhibiting secrecy. unknown.a query no easier of application than the one built into the statute. creates a monopoly of knowledge which should be granted only if clearly commanded by the statute. 535 exists in currently available form -. Congress has struck the balance on the side of nonpatentability unless "utility" is shown. The inventor of the process. of course. There are. that one of the purposes of the patent system is to encourage dissemination of information concerning discoveries and inventions. it places such a special meaning on the word "useful" that we cannot accept it in the absence of evidence that Congress so intended." [Footnote 25] The judgment of the CCPA is Reversed. it does no more than compel us to decide whether the invention in question is "frivolous and insignificant" -. has some incentive to keep the invention Page 383 U. [Footnote 24] That proposition seems to us little more than an attempt to evade the impact of the rules which concededly govern patentability of the product itself. so as to allow the patenting of any invention not positively harmful to society. the pressure for secrecy is easily exaggerated. S. a different set of rules was meant to apply to the process which yielded the unpatentable product. [Footnote 21] And it may be that inability to patent a process to some extent discourages disclosure and leads to greater secrecy than would otherwise be the case. and perhaps unknowable area. . Respondent appears to concede that. 24 . or frivolous and insignificant [Footnote 20]" -. Read more broadly. but compensation for its successful conclusion. It may engross a vast. thus widening the search for uses and increasing the fund of scientific knowledge.

with doubts as to patentability resolved in favor of the Patent Office. among others. that after a few months. presented only one witness. (b) the products which were produced in accordance with the utility model covered by the letters patent had been in public use or on sale in the Philippines for more than one (1) year before the application for patent therefor was filed. configuration and mechanism as that of the model covered by the Letters Patent issued to private respondent. Francisco testified that he had been employed with the Manila Gas Corporation from 1930 to 1941 and from 1952 up to 1969 where he retired as supervisor and that Manila Gas Corporation imported ―Ransome‖ burners way back in 1965 which were advertised through brochures to promote their sale. that in his early years with the company. for brevity) for the casting of LPG burners one of which had the configuration.‖ and. September 5. UM-4609 was issued. that Ong helped in the casting of an LPG burner which was the same utility model of a burner for which Letters Patent No. an LPG gas burner. 113388. ―D. Also presented by petitioner was a burner cup of an imported ―Ransome‖ burner marked Exh ―M‖ which was allegedly existing even before the patent application of private respondent. 165. for brevity). (b) the specification of the letters patent did not comply with the requirements of Sec.[1] Petitioner Angelita Manzano filed with the Philippine Patent Office on 19 February 1982 an action for the cancellation of Letters Patent No. and. (c) respondent Melecia Madolaria was not the original. This is a matter which is properly within the competence of the Patent Office the official action of which 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. form and component parts similar to those being manufactured by UNITED FOUNDRY. marked Exh. who testified.R. UM-4609 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 (UNITED FOUNDRY. in this case. The function of a patent is to add to the sum of useful knowledge and one of the purposes of the patent system is to encourage dissemination of information concerning discoveries and inventions. (d) the letters patent was secured by means of fraud or misrepresentation.‖ Testifying for herself petitioner narrated that her husband Ong Bun Tua worked as a helper in the UNITED FOUNDRY where respondent Melecia Madolaria used to be affiliated with from 1965 to 1970.R. USA.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW Manzano vs. of the Philippines showing a picture of another similar burner with top elevation view and another perspective view of the same burner. that he was then instructed by private respondent to cast several experimental models based on revised sketches and specifications.. G. CA & Madolaria. In support of her petition for cancellation petitioner further alleged that (a) the utility model covered by the letters patent of respondent had been known or used by others in the Philippines for more than one (1) year before she filed her application for letters patent on 9 December 1979. her husband Ong Bun Tua and Fidel Francisco. ―L. and testified that it was given to her in January 1982 by one of her customers who allegedly acquired it from UNITED FOUNDRY. private respondent discovered the solution to all the defects of the earlier models and. that in the latter part of 1978 respondent Melecia Madolaria confided in him that complaints were being brought to her attention concerning the early models being manufactured. Since the Patent Office is an expert body preeminently qualified to determine questions of patentability. and that after her husband’s separation from the shop she organized Besco Metal Manufacturing (BESCO METAL. Petitioner presented two (2) other witnesses. RA No. Petitioner also presented in evidence her own model of an LPG burner called ―Ransome‖ burner marked Exh. namely. machine and buffing section.‖ (b) a brochure distributed by Manila Gas Corporation disclosing a pictorial representation of Ransome Burner made by Ransome Torch and Burner Company. Petitioner alleged that (a) the utility model covered by the letters patent. No. Rolando Madolaria. Petitioner claimed that this ―Ransome‖ burner (Exh. UNITED FOUNDRY was engaged in the manufacture of different kinds of gas stoves as well as burners based on sketches and specifications furnished by customers.‖ which was allegedly manufactured in 1974 or 1975 and sold by her in the course of her business operation in the name of BESCO METAL. that the company manufactured early models of single-piece types of burners where the mouth and throat were not detachable. No. Ong testified that he worked as a helper in the UNITED FOUNDRY from 1965 to 1970 where he helped in the casting of LPG burners with the same form. was not inventive. ―A. Inc. (c) a brochure distributed by Esso Gasul or Esso Standard Eastern. ―E. 14. ―L‖) had the same configuration and mechanism as that of the model which was patented in favor of private respondent Melecia Madolaria. as amended. marked Exh. Petitioner presented the following documents which she correspondingly marked as exhibits: (a) affidavit of petitioner alleging the existence of prior art. based on her latest sketches and specifications. marked Exh. new or useful. that he was the General Supervisor of the UNITED FOUNDRY in the foundry. on the other hand. true and actual inventor of the utility model covered by the letters patent. its findings must be accepted if they are consistent with the evidence. Petitioner presented in evidence an alleged model of an LPG burner marked Exh. he was able to cast several models incorporating the 25 . that private respondent again made some innovations. Private respondent. true and actual inventor nor did she derive her rights from the original. 1997 The primary purpose of the patent system is not the reward of the individual but the advancement of the arts and sciences. G. ―K‖ and covered by the Letters Patent of respondent.

26 .. would have resulted in the refusal by the Philippine Patent Office to issue the Letters Patent under inquiry. Inc. Hence. UM-4609 in the name of private respondent. form and mechanism as that of the private respondent’s patented model. Petitioner elevated the decision of the Director of Patents to the Court of Appeals which on 15 October 1993 affirmed the decision of the Director of Patents. California. 7. USA. and also to the ―Ransome‖ burner depicted in the old brochures of Manila Gas Corporation and Esso Standard Eastern. especially when considered through actual physical examination. Not one of the various pictorial representations of business clearly and convincingly showed that the devices presented by petitioner was identical or substantially identical with the utility model of the respondent. The dates when they were distributed to the public were not indicated and. and. Inc. (b) in rendering judgment based on misapprehension of facts. assembly and disassembly of the models of petitioner and private respondent. Section 7 of RA No. No evidence whatsoever was presented by petitioner to show that the then applicant Melecia Madolaria withheld with intent to deceive material facts which. (d) in not canceling Letters Patent No. making such imaginary differences grounded entirely on speculation. Sandiego issued Decision No. The findings of the Patent Office and the Court of Appeals that the brochures of Manila Gas Corporation and Esso Standard Eastern. Petitioner thus asks this Court to take judicial notice of the fact that Esso Standard Eastern. Various tests were conducted on the latest model in the presence and under the supervision of Melecia Madolaria and they obtained perfect results. The records and evidence also do not support the petitioner’s contention that Letters Patent No. and Manila Gas Corporation.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW additions to the innovations introduced in the models. process or an improvement of any of the foregoing. Inc.‖ ―F‖ and ―F-1‖ or the brochures of Manila Gas Corporation and Esso Standard Eastern. are more imaginary than real. the cup-shaped burner mouth and threaded hole on the side are shown to be similar to the utility model of private respondent.. Petitioner further contends that the utility model of private respondent is absolutely similar to the LPG burner being sold by petitioner in 1975 and 1976.. which is the law on patents. Inc. Inc. presented by petitioner. Inventions patentable. Petitioner submits that the differences cited by the Court of Appeals between the utility model of private respondent and the models of Manila Gas Corporation and Esso Standard Eastern. ―E. operation and mechanism and parts between the utility model of private respondent and those depicted in the brochures. were useless prior art references. The decision also stated that even assuming that the brochures depicted clearly each and every element of the patented gas burner device so that the prior art and patented device became identical although in truth they were not. 86-56 denying the petition for cancellation and holding that the evidence of petitioner was not able to establish convincingly that the patented utility model of private respondent was anticipated. they could not serve as anticipatory bars for the reason that they were undated. surmises and conjectures. Petitioner faults the Court of Appeals for disregarding the testimonies of Ong Bun Tua and Fidel Francisco for their failure to produce documents on the alleged importation by Manila Gas Corporation of ―Ransome‖ burners in 1965 which had the same configuration.. it is argued that the testimony of private respondent’s lone witness Rolando Madolaria should not have been given weight by the Patent Office and the Court of Appeals because it contained mere after-thoughts and pretensions. manufactured product or substance. (c) in relying mainly on the testimony of private respondent’s sole witness Rolando Madolaria. as amended. Any invention of a new and useful machine. Finally. The exhibits also show a detachable burner mouth having a plurality of upwardly existing undulations adopted to act as gas passage when the cover is attached to the top of said cup-shaped mouth all of which are the same as those in the patented model. She alleges that based on Exhs.‖ ―E-1. Petitioner also emphasizes that the brochures indicated the telephone number of Manila Gas Corporation as 5-79-81 which is a five (5) numbered telephone number existing before 1975 because telephones in Metro Manila started to have six (6) numbers only after that year. UM-4609 was obtained by means of fraud and/or misrepresentation. disappeared before 1979 and reappeared only during the Martial Law years as Petrophil Corporation. Petitioner also denies as substantial difference the short cylindrical tube of the burner mouth appearing in the brochures of the burners being sold by Manila Gas Corporation and the long cylindered tube of private respondent’s model of the gas burner. are undated cannot overcome the fact of their circulation before private respondent filed her application for utility model patent. expressly provides Sec.. We cannot sustain petitioner. Rolando Madolaria testified that private respondent decided to file her application for utility model patent in December 1979. if disclosed. Petitioner argues that the actual demonstration made during the hearing disclosed the similarities in form. this petition for review oncertiorari alleging that the Court of Appeals erred (a) in relying on imaginary differences which in actuality did not exist between the model of private respondent covered by Letters Patent No. 165.. On 7 July 1986 the Director of Patents Cesar C. therefore. fabricated by Ransome Torch and Burner Company of Oakland. shall be patentable. Inc. UM-4609 and the previously known model of Esso Standard Eastern.

―L‖ would disclose that there is no indication of the time or date it was manufactured. This is not the way to prove that Exh. original and ornamental design for an article of manufacture and (b) any new model of implements or tools or of any industrial product or of part of the same. configuration. although in truth they are not. the Philippine Patent Office found her invention novel and patentable.[4] Hence. thus has no way of determining whether 27 . xxxx Furthermore. may be protected by the author thereof. If a device or process has been known or used by others prior to its invention or discovery by the applicant. they cannot serve as anticipatory bars for the reason that they are undated. 218 USPQ 781. which burner was denominated as ―Ransome‖ burner xxxx But a careful examination of Exh. UM-4609 to Melecia Madolaria for an ―LPG Burner‖ on 22 July 1981.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW Further.[2] It has been repeatedly held that an invention must possess the essential elements of novelty. the former by a patent for a design and the latter by a patent for a utility model. an application for a patent therefor should be denied. With respect to Exh. therefore. 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. ―C‖ and ―D. ―K‖ does not show whether or not it was manufactured and/or cast before the application for the issuance of patent for the LPG burner was filed by Melecia Madolaria. the standard of evidence sufficient to overcome the presumption of legality of the issuance of UM-4609 to respondent Madolaria was not legally met by petitioner in her action for the cancellation of the patent. The dates when they were distributed to the public were not indicated and.[3] In issuing Letters Patent No. 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. The issuance of such patent creates a presumption which yields only to clear and cogent evidence that the patentee was the original and first inventor. construction or composition. ―L‖ anticipates Letters Patent No. in a judicial proceeding in which the validity of the patent is drawn in question. and more significantly. 55.[5] As found by the Director of Patents. It is relevant and material to state that in determining whether novelty or newness is negatived by any prior art. used or described within the country.(a) Any new. Thus the Director of Patents explained his reasons for the denial of the petition to cancel private respondent’s patent Scrutiny of Exhs. the model marked Exh. UM-4609 through Exhs. or if it is substantially similar to any other utility model so known. ―L‖ would show that it does not bear the word ―Ransome‖ which is the burner referred to as the product being sold by the Petitioner. For anticipation to occur. in the same manner and subject to the same provisions and requirements as relate to patents for inventions insofar as they are applicable except as otherwise herein provided. will hold it void and ineffective. The burden of proving want of novelty is on him who avers it and the burden is a heavy one which is met only by clear and satisfactory proof which overcomes every reasonable doubt. ―L. which does not possess the quality of invention. Design patents and patents for utility models. the court. 55 of the same law provides Sec. and if the application has been granted. Not one of the various pictorial representations of burners clearly and convincingly show that the device presented therein is identical or substantially identical in construction with the aforesaid utility model.‖ Another factor working against the Petitioner’s claims is that an examination of Exh. The element of novelty is an essential requisite of the patentability of an invention or discovery. 789) Even assuming gratia arguendi that the aforesaid brochures do depict clearly on all fours each and every element of the patented gas burner device so that the prior art and the said patented device become identical. Sec. Kimberly Clark.‖ petitioner claimed it to be her own model of LPG burner allegedly manufactured sometime in 1974 or 1975 and sold by her in the course of her business operation in the name of Besco Metal Manufacturing. (Kalman v. ―D‖ and ―E‖ readily reveals that the utility model (LPG Burner) is not anticipated. This Office. . they are useless prior art references. and for the patentee to be entitled to the protection the invention must be new to the world. originality and precedence. but which is of practical utility by reason of its form. only one item of the prior art may be used at a time.

It has been held that the question on priority of invention is one of fact. novelty and usefulness of the improved model of the LPG burner are matters which are better determined by the Patent Office. its findings of fact being conclusive and not reviewable by this Court. Novelty and utility are likewise questions of fact. She argues that contrary to the decision of the Patent Office and the Court of Appeals. The Decision of the Court of Appeals affirming that of the Philippine Patent Office is AFFIRMED.[6] The above findings and conclusions of the Director of Patent were reiterated and affirmed by the Court of Appeals. as only the cup was presented so that the same could not be compared to the utility model (subject matter of this case) which consists of several other detachable parts in combination to form the complete LPG burner. What is more. It observed that there is no date indicated therein as to when it was manufactured and/or imported before the filing of the application for issuance of patent of the subject utility model. therefore. UM-4609. The rule is settled that the findings of fact of the Director of Patents. their relation to each other and to the whole and the probabilities of the situation. WHEREFORE. existence and relevance of specific surrounding circumstances. Whether evidence presented comes within the scope of prior art is a factual issue to be resolved by the Patent Office. xxxx It must likewise be pointed out that Ong Bun Tua testified on the brochures allegedly of Manila Gas and of Esso Gasul marked Exhs. Petitioner has failed to show compelling grounds for a reversal of the findings and conclusions of the Patent Office and the Court of Appeals.examination that he has never been connected with Manila Gas Corporation. subject matter of the cancellation proceeding. ―M‖ which is the alleged burner cup of an imported ―Ransome‖ burner. are conclusive on this Court when supported by substantial evidence. He could not even present any importation papers relating to the alleged imported ransome burners. it is worthwhile to point out that petitioner also presented Exh. But the same could not be given credence since he himself admitted during cross. ―M‖ are missing.[11] Time and again we have held that it is not the function of the Supreme Court to analyze or weigh all over again the evidence and credibility of witnesses presented before the lower tribunal or office. it may be held insufficient.[9] Finally. as what occurred in this case. The alleged failure of the Director of Patents and the Court of Appeals to accord evidentiary weight to the testimonies of the witnesses of petitioner showing anticipation is not a justification to grant the petition. the evidence she presented clearly proves that the patented model of private respondent is no longer new and.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW Exh. Pursuant to the requirement of clear and convincing evidence to overthrow the presumption of validity of a patent. The technical staff of the Philippine Patent Office composed of experts in their field has by the issuance of the patent in question accepted private respondent’s model of gas burner as a discovery. Its jurisdiction is limited to reviewing and revising errors of law imputed to the lower court. especially when affirmed by the Court of Appeals. petitioner would want this Court to review all over again the evidence she presented before the Patent Office. Again. Neither did his wife. it has been held that oral testimony to show anticipation is open to suspicion and if uncorroborated by cogent evidence.[7] The validity of the patent issued by the Philippine Patent Office in favor of private respondent and the question over the inventiveness. ―E‖ and ―F‖ and on the alleged fact that Manila Gas Corporation was importing from the United States ―Ransome‖ burners. At this juncture. the Petition is DENIED. ―L‖ was really manufactured before the filing of the aforesaid application which matured into Letters Patent No. fraud attended the acquisition of patent by private respondent. There is a presumption that the Office has correctly determined the patentability of the model[8] and such action must not be interfered with in the absence of competent evidence to the contrary. The Supreme Court is not a trier of facts. Costs against petitioner. some component parts of Exh. The validity of patent is decided on the basis of factual inquiries. 28 . this Office finds the same as unreliable evidence to show anticipation.[10] There is question of fact when the doubt or difference arises as to the truth or falsehood of alleged facts or when the query necessarily invites calibration of the whole evidence considering mainly the credibility of witnesses.

INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW Roma Drug vs. Manarang approved the recommendation.‖ Glaxo Smithkline further claims that the SLCD does not in fact conflict with the aforementioned constitutional provisions and in fact are in accord with constitutional precepts in favor of the people’s right to health. the disregard of which can give rise to a cause of action in the courts. Article II. were imported directly from abroad and not purchased through the local SmithKline. There is no claim that they were adulterated in any way or mislabeled at least. including Augmentin (375mg. 2009 On 14 August 2000. The first is the equal protection clause of the Bill of Rights. [4] Glaxo Smithkline and the Office of the Solicitor General (OSG) have opposed the petition. The local SmithKline has since merged with Glaxo Wellcome Phil. with the Office of the Provincial Prosecutor in San Fernando. Orbenin (500mg. includes ―an unregistered imported drug product. Pampanga. The seized medicines. Branch 57. Glaxo Smithkline asserts the rule that the SLCD is presumed constitutional. Provincial Prosecutor and Bureau of Food and Drugs (BFAD). On the constitutional issue. who take pains in having imported drug products registered before the BFAD. and the assertion is made that there is no clear and unequivocal breach of the Constitution presented by the SLCD. the latter in behalf of public respondents RTC.[3] Hence. health and other social services available to all the people at affordable cost.) tablets. there is no doubt that the subject seized drugs are identical in content with their Philippine-registered counterparts. the authorized Philippine distributor of these products. which mandates that the State make ―essential goods.[2] It appears that Roma Drug is one of six drug stores which were raided on or around the same time upon the request of SmithKline Beecham Research Limited (SmithKline). arguing that both Section 15. 29 . G.‖ It adds that Section 11. However.[5] Again. No. In this case. Amoxil (250mg. beyond the interference of the judiciary. Article XIII ―are not self-executing provisions.) capsules and Ampiclox (500mg. Pampanga. 149907.‖ and Section 15. During preliminary investigation. 4 and 5 of the SLCD be declared unconstitutional. which were manufactured by SmithKline. The Office of the Solicitor General casts the question as one of policy wisdom of the law that is.‖ The term ―unregistered‖ signifies the lack of registration with the Bureau of Patent. the present Petition for Prohibition questing the RTC-Guagua Pampanga and the Provincial Prosecutor to desist from further prosecuting Rodriguez. Their classification as ―counterfeit‖ is based solely on the fact that they were imported from abroad and not purchased from the Philippine-registered owner of the patent or trademark of the drugs. and that Sections 3(b)(3). Rodriguez asserts that the challenged provisions contravene three provisions of the Constitution. a team composed of the National Bureau of Investigation (NBI) operatives and inspectors of the Bureau of Food and Drugs (BFAD) conducted a raid on petitioner Roma Drug. which under Section 3(b)(3). II. tradename or other identification mark of a drug in the name of a natural or juridical person. the process of which is governed under Part III of the Intellectual Property Code. also known as the Special Law on Counterfeit Drugs (SLCD). private respondent in this case.‖ Through its Resolution dated 15 October 2001. a duly registered corporation which is the local distributor of pharmaceutical products manufactured by its parent London-based corporation. Pampanga. and the BFAD. Article II and Section 11. the presumption of constitutionality of statutes is invoked.). Guagua. Article XIII. Rodriguez challenged the constitutionality of the SLCD. which states that it is the policy of the State ―to protect and promote the right to health of the people and instill health consciousness among them. the NBI and Glaxo Smithkline from prosecuting the petitioners. Pineda skirted the challenge and issued a Resolution dated 17 August 2001 recommending that Rodriguez be charged with violation of Section 4(a) of the SLCD. RTC of Guagua. The two other provisions are Section 11. Inc to form Glaxo SmithKline. Assistant Provincial Prosecutor Celerina C.R. The section prohibits the sale of counterfeit drugs. In gist. The raiding team seized several imported medicines.) capsules. The raid was conducted pursuant to a search warrant[1] issued by the Regional Trial Court (RTC). a duly registered sole proprietorship of petitioner Romeo Rodriguez (Rodriguez) operating a drug store located at San Matias. importers or distributors. Trademark and Technology Transfer of a trademark. The NBI subsequently filed a complaint against Rodriguez for violation of Section 4 (in relation to Sections 3 and 5) of Republic Act No. Article XIII in particular cannot be work ―to the oppression and unlawful of the property rights of the legitimate manufacturers. April 16. The recommendation was approved by Provincial Prosecutor Jesus Y. Angeles City. the Court issued a temporary restraining order enjoining the RTC from proceeding with the trial against Rodriguez. 8203.

in consultation with the appropriate government agencies.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement).1. In the case of drugs and medicines.2. Limitations of Patent Rights. the limitation on patent rights shall apply after a drug or medicine has been introduced in the Philippines or anywhere else in the world by the patent owner. ―72. That. 9502‖ promulgated on 4 November 2008. making or selling the invention including any data related thereto. 72. further. the acts referred to in Section 71 hereof in the following circumstances: ―72. using. Using a patented product which has been put on the market in the Philippines by the owner of the product. without his authorization. Where the act is done privately and on a non-commercial scale or for a non-commercial purpose: Provided. Section 72 of Republic Act No. That the right to import the drugs and medicines contemplated in this section shall be available to any government agency or any private third party.[6] Section 7 of Rep. That. That it does not significantly prejudice the economic interests of the owner of the patent. the Intellectual Property Office. ―72.3. shall issue the appropriate rules and regulations necessary therein not later than one hundred twenty (120) days after the enactment of this law. also known as the ―Universally Accessible Cheaper and Quality Medicines Act of 2008‖. or by any party authorized to use the invention: Provided. construction. Where the act consists of making or using exclusively for experimental use of the invention for scientific purposes or educational purposes and such other activities directly related to such scientific or educational experimental use. of a medicine in accordance with a medical shall apply after a drug or medicine has been introduced in the Philippines or anywhere else in the world by the patent owner. That the right to import the drugs and medicines contemplated in this section shall be available to any government agency or any private third party. such questions have in fact been mooted with the passage in 2008 of Republic Act No. Act No. or with his express consent. further. otherwise known as the Intellectual Property Code of the Philippines. is hereby amended to read as follows: ―Sec. 7. or by any party authorized to use the invention: Provided. The owner of a patent has no right to prevent third parties from performing. – The owner of a patent has no right to prevent third parties from performing. However. 30 .5. 9502. ―72. where the act includes testing. use or sale of any product: Provided. xxx[7] The unqualified right of private third parties such as petitioner to import or possess ―unregistered imported drugs‖ in the Philippines is further confirmed by the ―Implementing Rules to Republic Act No.4. with regard to drugs and medicines. 9502 amends Section 72 of the Intellectual Property Code in that the later law unequivocally grants third persons the right to import drugs or medicines whose patent were registered in the Philippines by the owner of the product: Sec. ―72.[8] The relevant provisions thereof read: Rule 9. Limitations on Patent Rights. in a pharmacy or by a medical professional.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW The constitutional aspect of this petition raises obviously interesting questions. insofar as such use is performed after that product has been so put on the said market: Provided. Where the act consists of the preparation for individual cases. 8293. the acts referred to in Section 71 of the IP Code as enumerated hereunder: (i) Introduction in the Philippines or Anywhere Else in the World. without his authorization. solely for purposes reasonably related to the development and submission of information and issuance of approvals by government regulatory agencies required under any law of the Philippines or of another country that regulates the manufacture. in order to protect the data submitted by the original patent holder from unfair commercial use provided in Article 39.

31 .1) The drugs and medicines are deemed introduced when they have been sold or offered for sale anywhere else in the world. It does not allow husbands. Act No. WHEREFORE. A writ of prohibition is hereby ISSUED commanding respondents from prosecuting petitioner Romeo Rodriguez for violation of Section 4 or Rep. The law would make criminals of doctors from abroad on medical missions of such humanitarian organizations such as the International Red Cross. It equates the importers of such drugs. soulless legislative piece. Act No. they are disabled from invoking the bare ―personal use‖ exemption afforded by the SLCD. many of whom motivated to do so out of altruism or basic human love. Where a statute of later date. The Temporary Restraining Order dated 15 October 2001 is hereby made PERMANENT. so that the latter loses all meaning and function. and other like-minded groups who necessarily bring their own pharmaceutical drugs when they embark on their missions of mercy. such as Rep. Medicin Sans Frontieres. and the traditional treatment of penal provisions of special laws is that of malum prohibitum–or punishable regardless of motive or criminal intent. insofar as such use is performed after that product has been so put on the said market: Provided. the petition is GRANTED in part. the law makes a criminal of any person who imports an unregistered drug regardless of the purpose.‖ and of corresponding criminal penalties therefore are irreconcilably in the imposition conflict with Rep. it is apparent that it would have at least placed in doubt the validity of the provisions. [9] When a subsequent enactment covering a field of operation coterminus 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. (n) It may be that Rep. clearly reveals an intention on the part of the legislature to abrogate a prior act on the subject that intention must be given effect.[11] Legis posteriors priores contrarias abrogant. 9502. beyond the reach of a patient who urgently depends on it.[10] Irreconcilable inconsistency between two laws embracing the same subject may exist when the later law nullifies the reason or purpose of the earlier act. However. That. further. the State has reversed course and allowed for a sensible and compassionate approach with respect to the importation of pharmaceutical drugs urgently necessary for the people’s constitutionally-recognized right to health. Act No. the International Red Crescent. the prosecution of petitioner is no longer warranted and the quested writ of prohibition should accordingly be issued. It does not accommodate the situation where the drug is out of stock in the Philippines. at the expense of health. the SLCD has revealed itself as a heartless. For a law that is intended to help save lives. the importation of unregistered drugs. with the malevolents who would alter or counterfeit pharmaceutical drugs for reasons of profit at the expense of public safety. Less urgently perhaps. parents to import the drug in behalf of their loved ones too physically ill to travel and avail of the meager personal use exemption allotted by the law. the latest legislative expression prevails and the prior law yields to the extent of the conflict. (72. even if the medicine can spell life or death for someone in the Philippines. with regard to drugs and medicines. Act No. at civil costs. children. 8203. That the right to import the drugs and medicines contemplated in this section shall be available to any government agency or any private third party. Note that the SLCD is a special law. wives. but still within the range of constitutionally protected behavior. or by any party authorized to use the invention: Provided. against poor Filipinos without means to travel abroad to purchase less expensive medicines in favor of their wealthier brethren able to do so. It is laudable that with the passage of Rep. the limitation on patent rights shall apply after a drug or medicine has been introduced in the Philippines or anywhere else in the world by the patent owner. it is clear that the SLCO’s classification of ―unregistered imported drugs‖ as ―counterfeit drugs. siblings. The absurd results from this far-reaching ban extends to implications that deny the basic decencies of humanity. Act No. As written.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW Using a patented product which has been put on the market in the Philippines by the owner of the product. III. Had the Court proceeded to directly confront the constitutionality of the assailed provisions of the SLCD. it deprives Filipinos to choose a less expensive regime for their health care by denying them a plausible and safe means of purchasing medicines at a cheaper cost. 9502 since the latter indubitably grants private third persons the unqualified right to import or otherwise use such drugs. It discriminates. or with his express consent. The challenged provisions of the SLCD apparently proscribe a range of constitutionally permissible behavior. No pronouncements as to costs. 9502. For the reasons above-stated. Even worse is the fact that the law is not content with simply banning. 9502 did not expressly repeal any provision of the SLCD. After all.

00. petitioner filed on December 8. After the hearings. and that the only difference between the two fuzes are miniscule and merely cosmetic in nature. should it proceed with the scheduled testing by the military on December 7. UM-6938[3] covering an aerial fuze which was published in the September-October 1990. 1998 This petition for review on certiorari assails the decision[1]. 1993 a complaint [6] for injunction and damages arising from the alleged infringement before the Regional Trial Court of Quezon City. private respondent on December 3.. February 2. Paras and concurred in by Justice Salome A. 1993. private respondent was granted by the Bureau of Patents. hearings were held on the application of petitioner for the issuance of a writ of preliminary injunction. to those of plaintiff. Branch 88. Tirso D. the trial court directed the parties to submit their respective memoranda in support of their positions. 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. Jr. 1994 ARE ORDERED SET ASIDE. 1993. Vol. 93-1856 BEFORE THE RESPONDENT JUDGE IS HEREBY ORDERED DISMISSED AND HIS ORDERS THEREIN OF DECEMBER 29. sent a letter[5] to petitioner advising it fro its existing patent and its rights thereunder. 1994 in C. Inc. use and sell the same and that it stands to suffer irreparable damage and injury if it is enjoined from the exercise of its property right over its patent.‖ 32 . SP.-G.R. private respondent. production. munitions. The complaint alleged. and/or from performing any other act in connection therewith until further orders from this Court. On December 10.C Cruz and Creser Precision System. 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. Hon. and from profiting therefrom. the dispositive portion of which reads: ―WHEREFORE. distribution and sale of military armaments.R. the trial court issued an Order[8] granting the issuance of a writ of preliminary injunction against private respondent the dispositive portion of which reads: ―WHEREFORE. On December 29. G. On December 27. Floro International.‖ Private respondent is a domestic corporation engaged in the manufacture. marketing and/or selling aerial fuzes identical. that petitioner’s available remedy is to file a petition for cancellation of patent before the Bureau of Patents. with both parties presenting their evidence. Trademarks and Technology Transfer (BPTTT). petitioner began supplying the AFP with the said aerial fuze. No. a Letters Patent No. plaintiff’s application for the issuance of a writ of preliminary injunction is granted and. Montoya and Justice Hector L. true and actual inventor of the aerial fuze. warning petitioner of a possible court action and/or application for injunction.000.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW Creser Precision vs. Mr. that sometime in 1986. To protect its right.A. 118708.‖. among others: that petitioner is the first. No. The decision of the Court of Appeals was penned by Justice Gloria C. III. Gregory Floro. 5 issue of the Bureau of Patent’s Official Gazette. 1993 AND MAY 11. CIVIL CASE NO. Hofileña. upon posting of the corresponding bond by plaintiff in the amount of PHP 200. that private respondent as the patent holder cannot be stripped of its property right over the patented aerial fuze consisting of the exclusive right to manufacture. let the writ of preliminary injunction be issued by the branch Clerk of this Court enjoining the defendant and any and all persons acting on its behalf or by and under its authority. THE COMPLAINT FOR INJUNCTION AND DAMAGES.[4] Sometime in November 1993. airmunitions and other similar materials. from manufacturing.[2] On January 23. No. 1993. PDR 77 CB4‖ which is developed as early as December 1981 under the Self-Reliance Defense Posture Program (SRDP) of the AFP. privileges and benefits to which it is duly entitled as the first. In response to private respondent’s demand. that private respondent’s aerial fuze is identical in every respect to the petitioner’s fuze. 1993. the trial court issued a temporary restraining order. 1990. marketing and/or profiting therefrom. vs. 1 of the Court of Appeals dated November 9. through its president. 1993. and/or from performing any other act in connection therewith or tending to prejudice and deprive it of any rights. discovered that petitioner submitted samples of its patented aerial fuze to the Armed Forces of the Philippines (AFP) for testing. THE PETITION IS HEREBY GRANTED. true and actual inventor of an aerial fuze denominated as ―Fuze. private respondent submitted its memorandum[7] alleging that petitioner has no cause of action to file a complaint of infringement against it since it has no patent for the aerial fuze which it claims to have invented. 34425 entitled ―Floro International Corp. Thereafter.

d. Lastly. It is petitioner’s contention that it can file. RA 165) qualified by Section 10. pertinent portions of which read: ―For resolution before this Court is the Motion for Reconsideration filed by the defendant and the plaintiff’s Opposition thereto.‖ (Section 42. the plaintiff has amply proven its entitlement to the relief prayed for. his heirs. private respondent on June 27. title or interest to the patented invention. UM-6983) the validity of which is being questioned in this case. 165). The motion for reconsideration was also denied on January 17. it being disruptive of the status quo. marketing and/or selling aerial fuzes identical to those of the plaintiff. this court believes that the defendant will not suffer irreparable injury by virtue of said order. legal representatives to assignees. 1995. 1993. the operations of the plaintiff continue. petitioner points out.A. It advances the theory that while the absence of a patent may prevent one from lawfully suing another for infringement of said patent. During the hearing for the issuance of the preliminary injunction. may be likened to a civil action for infringement under Section 42 of the Philippine Patent Law. 10 merely enumerates the persons who may have an invention patented which does not necessarily limit to these persons the right to institute an action for infringement. filed a petition for certiorari. and from profiting therefrom and/or performing any other act in connection therewith until further orders from this Court. the respondent court rendered the now assailed decision reversing the trial court’s Order of December 29. b. On the contrary. 1994. an action for infringement not as a patentee but as an entity in possession of a right. RA 165 to include only ―the first true and actual inventor.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW Private respondent moved for reconsideration but this was denied by the trial courts in its Order [9] of May 11. Petitioner has no cause of action for infringement against private respondent. e. under Section 42 of the Patent Law (R. This remedy.[11] Hence. Sec. such absence does not bar the first true and actual inventor of the patented invention from suing another who was granted a patent in a suit for declaratory or injunctive relief recognized under American patent laws.‖ Aggrieved. the Motion for Reconsideration is hereby denied for lack of merit. 1993 and dismissing the complaint filed by petitioner. 1994. With issuance of the order. the latter not having any patent for the aerial fuze which it claims to have invented and developed and allegedly infringed by private respondent.‖ this court finds the foregoing to be untenable.‖ With regards to the defendant’s assertion that an action for infringement may only be brought by ―anyone possessing right. It is undisputed that the plaintiff has developed its aerial fuze way back in 1981 while the defendant began manufacturing the same only in 1987. The trial court acted in grave abuse of discretion and/or in excess of jurisdiction in granting the preliminary injunction. The case being an action for cancellation or invalidation of private respondent’s Letters Patent over its own aerial fuze. 1994. the proper venue is the Office of the Director of Patents. mandamus and prohibition[10]before respondent Court of Appeals raising as grounds the following: a. The Court finds no sufficient cause to reconsider its order dated December 29. it is only logical to conclude that it was the plaintiff’s aerial fuze that was copied or imitated which gives the plaintiff the right to have the defendant enjoined ―from manufacturing. premises considered. The defendant’s claim is primarily hinged on its patent (Letters Patent No. 33 . WHEREFORE. Defendant further contends that the order in issue is disruptive of the status quo. c. this present petition. and The trial court acted in grave abuse of discretion and/or in excess of jurisdiction in granting the preliminary injunction thereby depriving private respondent of its property rights over the patented aerial fuze and cause it irreparable damages. SO ORDERED. the order issued by the Court in effect maintained the status quo. title or interest in and to the patented invention. peaceable uncontested status existing prior to this controversy was the plaintiff manufacturing and selling its own aerial fuzes PDR 77 CB4 which was ordered stopped through the defendant’s letter. On November 9. Thus. The trial court acted in grave abuse of discretion and or in excess of jurisdiction in finding that petitioner has fully established its clear title or right to preliminary injunction. The last actual .

– Any patentee. there can be no infringement of a patent until a patent has been issued. may bring a civil action before the proper Court of First Instance (now Regional Trial court). still it has no right of property over the same upon which it can maintain a suit unless it obtains a patent therefor. however. A patent. There is a presumption that the Philippine Patent Office has correctly determined the patentability of the improvement by the private respondent of the process in question. assignees or grantees.[12] Moreover. and inventor has no common-law right to a monopoly of his invention. x x x Under the aforequoted law. Said person. 42. 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. Therefore. using or selling the invention. 6938 issued to it on January 23. however.‖ In fine. petitioner’s remedy is not to file an action for injunction or infringement but to file a petition for cancellation of private respondent’ patent. title or interest in and to the patented invention‖ upon which petitioner maintains its present suit. such as by offering it for sale. only the patentee or his successors-in-interest may file an action for infringement.A. gives the inventor the right to exclude all others. the world is free to copy and use it with impunity. No pronouncement as to costs. explicitly provides: SECTION. The phrase ―anyone possessing any right. file a petition for cancellation of the patent within three (3) years from the publication of said patent with the Director of Patents and raise as ground therefor that the person to whom the patent was issued is not the true and actual inventor. He can. the decision of the Court of Appeals is hereby AFFIRMED. WHEREFORE. we sustain the assailed decision of the respondent Court of Appeal. in the absence of error or abuse of power or lack or jurisdiction or grave abuse of discretion. he has the exclusive right of making. title or interest in and to the patented invention. The reason for this is that the said remedy is available only to the patent holder or his successors-in-interest. under Section 28 of the aforementioned law. it has in its favor not only the presumption of validity of its patent. otherwise known as the Patent Law. refers only to the patentee’s successors-in-interest. Civil action for infringement. whether as patentee. but that of a legal and factual first and true inventor of the invention. While petitioner claims to be the first inventor of the aerial fuze. is not left without any remedy. As a patentee. to recover from the infringer damages sustained by reason of the infringement and to secure an injunction for the protection of his right. 34 . since whatever right one has to the invention covered by the patent arises alone from the grant of patent.‖ In the case of Aguas vs. 1990 by the Bureau of Patents. He has the right to make.[16] we stated that: ―The validity of the patent issued by the Philippine Patent Office in favor of the private respondent and the question over the investments. As such. the remedy of declaratory judgment or injunctive suit on patent invalidity relied upon by petitioner cannot be likened to the civil action for infringement under Section 42 of the Patent Law.[15] Further. by the issuance of the patent in question. Petitioner however failed to do so. a person or entity who has not been granted letters patent over an invention and has not acquired any right or title thereto either as assignee or as licensee. Thus. Under American jurisprudence. accepted the thinness of the private respondent’s new tiles as a discovery. De Leon. it can not now assail or impugn the validity of the private respondent’s letters patent by claiming that it is the true and actual inventor of the aerial fuze. whose rights have been infringed.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW We find the above arguments untenable. of the exclusive right. novelty and usefulness of the improved process therein specified and described are matters which are better determined by the Philippines patent Office. use and vend his own invention. has no cause of action for infringement because the right to maintain an infringement suit depends on the existence of the patent. 165. composed of experts in their field. anyone who has no patent over an invention but claims to have a right or interest thereto can not file an action for declaratory judgment or injunctive suit which is not recognized in this jurisdiction. but if he voluntarily discloses it. have. [14] Petitioner admits it has no patent over its aerial fuze. or anyone possessing any right. Hence.[13] In short. Section 42 of R. as correctly ruled by the respondent Court of Appeals in its assailed decision: ―since the petitioner (private respondent herein) is the patentee of the disputed invention embraced by letters of patent UM No. Thus. assignees or grantees since actions for infringement of patent may be brought in the name of the person or persons interested.

The letters patent provides in its claims[2] 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 fighting infections caused by gastrointestinal parasites and lungworms in animals such as swine.[6] A writ of preliminary injunction was subsequently issued. and P150. distributes and sells veterinary products including Impregon. paragraph 1 of the Revised Penal Code and Section 29 of Republic Act No. Trademarks and Technology Transfer) an application for patent over an invention entitled ―Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2Benzimidazole Carbamate. Finding for private respondent.00 in attorney’s fees. that even if the patent were to include Albendazole. 14561 does not cover the substance Albendazole for nowhere in it does that word appear. 2003 Smith Kline Beckman Corporation (petitioner). 165 (The Patent Law). that the Bureau of Food and Drugs allowed it to manufacture and market Impregon with Albendazole as its known ingredient.[7] Private respondent in its Answer[8] averred that Letters Patent No. infringed Claims 2. DISMISSED.‖ The application bore Serial No. cattle. the trial court rendered a Decision dated July 23.000.000. 8 and 9 of Letters Patent No. [9] the dispositive portion of which reads: WHEREFORE. that there is no proof that it passed off in any way its veterinary products as those of petitioner. using. as assignee.00 actual damages and P100. a drug that has Albendazole for its active ingredient and is claimed to be effective against gastro-intestinal roundworms. GR. 4. 14561 is null and void. horses. and causing to be sold and used the drug Impregon without its authorization. (Underscoring supplied) 35 . 14561[4] as well as committed unfair competition under Article 189. a corporation existing by virtue of the laws of the state of Pennsylvania. such substance is unpatentable. selling. 3. lungworms. 1981. before the Philippine Patent Office (now Bureau of Patents. P300. Pursuant to Sec.) and licensed to do business in the Philippines.00 in moral damages. CA & Tryco Pharma Corp. 14561 issued by the then Philippine Patents Office is hereby declared null and void for being in violation of Sections 7. the Director of Bureau of Patents is hereby directed to cancel Letters Patent No. Letters Patent No. SO ORDERED.S. 14561 issued to the plaintiff and to publish such cancellation in the Official Gazette. 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. August 14.[5] On motion of petitioner. Private respondent lodged a Counterclaim against petitioner for such amount of actual damages as may be proven. On September 24. 1991. cattle and goats. Tryco Pharma Corporation (private respondent) is a domestic corporation that manufactures. and even pet animals. P1.000.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW Smith Kline Beckman vs. 166 (The Trademark Law) for advertising and selling as its own the drug Impregon although the same contained petitioner’s patented Albendazole.000. 7. 126627.000. The Writ of injunction issued in connection with the case is hereby ordered DISSOLVED. in violation of Section 15 of Republic Act No. 14561[1] for the aforesaid invention was issued to petitioner for a term of seventeen (17) years. Defendant Tryco Pharmaceutical Corporation is hereby awarded P330. 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. Petitioner sued private respondent for infringement of patent and unfair competition before the Caloocan City Regional Trial Court (RTC).000. by manufacturing. The Letters Patent No. and that petitioner is not the registered patent holder. 9 and 15 of the Patents Law.00 in exemplary damages. 1976. sheep. United States of America (U. goats.00 attorney’s fees as prayed for in its counterclaim but said amount awarded to defendant is subject to the lien on correct payment of filing fees. 18989.[3] It claimed that its patent covers or includes the substance Albendazole such that private respondent. plaintiff’s complaint should be. as it is hereby. in view of the foregoing. 46 of the Patents Law. that Letters Patent No. tapeworms and fluke infestation in carabaos. filed on October 8.

THE COURT OF APPEALS GRAVELY ERRED IN AWARDING TO PRIVATE RESPONDENT TRYCO PHARMA CORPORATION P330. It likewise found that private respondent was not guilty of deceiving the public by misrepresenting that Impregon is its product. the former is an improvement or improved version of the latter thereby making both substances still substantially the same. 14561 was not void as it sustained petitioner’s explanation that Patent Application Serial No.S. covering the same compound subject of Patent Application Serial No. hence. Finally. petitioner assails the same as highly speculative and conjectural. well within one year from petitioner’s filing on June 19. however. Petitioner thus submits that the appellate court should have gone beyond the literal wordings used in Letters Patent No. citing the jurisprudentially established presumption that the Patent Office’s determination of patentability is correct. which granted a patent for Albendazole. by Decision of April 21. Noting petitioner’s admission of the issuance by the U. Albendazole. And it rejected the submission that the compound in Letters Patent No. 1975 with the Philippine Patent Office.S. II. thereby making them truly identical. Petitioner argues that under the doctrine of equivalents for determining patent infringement. Petitioner adds that the two substances substantially do the same function in substantially the same way to achieve the same results. Orinion (Dr. 14561. the judgment appealed from is AFFIRMED with the MODIFICATION that the orders for the nullification of Letters Patent No. 14561 and for its cancellation are deleted therefrom. it has ably shown by evidence its sameness with methyl 5 propylthio-2-benzimidazole carbamate.[10] 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. 17280. the appellate court considered the U. Applying Section 17 of the Patent Law. 18989 which was filed on October 8.000. With respect to the award of actual damages in favor of private respondent in the amount of P330. 14561. 480. Petitioner’s motion for reconsideration of the Court of Appeals’ decision having been denied [11] the present petition for review on certiorari[12] was filed. 14561 refers to the compound Albendazole. 1995. of a patent for Albendazole in the name of Smith Kline and French Laboratories which was petitioner’s former corporate name.000.000. 18989 was deemed filed on June 17. is substantially the same as methyl 5 propylthio-2-benzimidazole carbamate covered by its patent since both of them are meant to combat worm or parasite infestation in animals. 1976 was a divisional application of Patent Application Serial No. 14561.-patented Albendazole are dependent on each other and mutually contribute to produce a single result.S. declared that Letters Patent No. the Court of Appeals thus ruled that Patent Application Serial No. petitioner concludes that both methyl 5 propylthio-2-benzimidazole carbamate and the U. Thus the appellate court disposed: WHEREFORE. 1995 or still within one year from the filing of a patent application abroad in compliance with the oneyear rule under Section 15 of the Patent Law. It assails too the award 36 .646 in the U. 14561 was not patentable. it ruled that petitioner established itself to be the one and the same assignee of the patent notwithstanding changes in its corporate name. SO ORDERED. S. assigning as errors the following: I.00 representing lost profits. without basis. patent as implying that Albendazole is different from methyl 5 propylthio-2-benzimidazole carbamate.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW On appeal. 17280 filed on June 17. Petitioner likewise points out that its application with the Philippine Patent Office on account of which it was granted Letters Patent No. beyond merely applying the literal infringement test.00 ACTUAL DAMAGES AND P100. THE COURT OF APPEALS GRAVELY ERRED IN NOT FINDING THAT ALBENDAZOLE. 14561 was merely a divisional application of a prior application in the U. THE ACTIVE INGREDIENT IN TRYCO’S ―IMPREGON‖ DRUG. AND THAT CONSEQUENTLY TRYCO IS ANSWERABLE FOR PATENT INFRINGEMENT. 1974 of its Foreign Application Priority Data No. for in spite of the fact that the word Albendazole does not appear in petitioner’s letters patent. Hence. 14561 as the other substance is. Godofredo C. the active ingredient it alleges was appropriated by private respondent for its drug Impregon. The appellate court. thereby making Albendazole as much a part of Letters Patent No. the Court of Appeals. Petitioner concedes in its Sur-Rejoinder[13] that although methyl 5 propylthio-2-benzimidazole carbamate is not identical with Albendazole.00 ATTORNEY’S FEES. It cites the ―unrebutted‖ testimony of its witness Dr. Orinion) that the chemical formula in Letters Patent No. IS INCLUDED IN PETITIONER’S LETTERS PATENT NO.S.

From a reading of the 9 claims of Letters Patent No. and the testimony of Dr. While Albendazole is admittedly a chemical compound that exists by a name different from that covered in petitioner’s letters patent.[19] Yet again.[17] And so are the courts bound which may not add to or detract from the claims matters not expressed or necessarily implied. The testimony of Dr. then. even if the patentee may have been entitled to something more than the words it had chosen would include. absurd. Orinion lends no support to petitioner’s cause. tainted with grave abuse of discretion. While both compounds have the effect of neutralizing parasites in animals. nor may they enlarge the patent beyond the scope of that which the inventor claimed and the patent office allowed. When the language of its claims is clear and distinct. thus giving no information on whether that method is substantially the same as the manner by which petitioner’s compound works.[18] It bears stressing that the mere absence of the word Albendazole in Letters Patent No. Unless the factual findings of the appellate court are mistaken. As has repeatedly been held. he not 37 . the principle or mode of operation must be the same or substantially the same. by which it sought to show that its patent for the compound methyl 5 propylthio-2-benzimidazole carbamate also covers the substance Albendazole. While petitioner concedes that the mere literal wordings of its patent cannot establish private respondent’s infringement. nothing more is asserted and accordingly substantiated regarding the method or means by which Albendazole weeds out 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. performs substantially the same function in substantially the same way to achieve substantially the same result.[15] this Court does not review them. no mention is made of the compound Albendazole.[21] The doctrine of equivalents thus requires satisfaction of the function-means-and-result test. the compound’s being anthelmintic but nontoxic for animals or its ability to destroy parasites without harming the host animals.000. 14561. It stresses that the existence of a separate U. patent for Albendazole indicates that the same and the compound in Letters Patent No. And no extrinsic evidence had been adduced to prove that Albendazole inheres in petitioner’s patent in spite of its omission therefrom or that the meaning of the claims of the patent embraces the same. although with some modification and change. 14561 is not determinative of Albendazole’s non-inclusion in the claims of the patent. by definition of a divisional application. such a compound is just one of several independent inventions alongside Albendazole under petitioner’s original patent application. Orinion. its general manager in the Philippines for its Animal Health Products Division. the patentee is bound thereby and may not claim anything beyond them. 14561 in relation to the other portions thereof. and the patented methods. that is.S.00 in attorney’s fees as not falling under any of the instances enumerated by law where recovery of attorney’s fees is allowed. and that since it was on account of a divisional application that the patent for methyl 5 propylthio-2-benzimidazole carbamate was issued. speculative. petitioner’s evidence consists primarily of its Letters Patent No. 14561 are different from each other. The burden of proof to substantiate a charge for patent infringement rests on the plaintiff. conjectural. All that the claims disclose are: the covered invention. the compound methyl 5 propylthio2-benzimidazole carbamate. or contrary to the findings culled by the court of origin. even though it performs the same function and achieves the same result. it urges this Court to apply the doctrine of equivalents.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW of P100. 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. petitioner’s evidence fails to explain how Albendazole is in every essential detail identical to methyl 5 propylthio-2-benzimidazole carbamate. 14561 fails to yield anything at all regarding Albendazole. The doctrine of equivalents provides that an infringement also takes place when a device appropriates a prior invention by incorporating its innovative concept and. From an examination of the evidence on record. the patentee having the burden to show that all three components of such equivalency test are met. [16] In the case at bar. Albendazole and methyl 5 propylthio-2-benzimidazole carbamate being two different compounds with different chemical and physical properties. conflicting.[22] As stated early on.[20] In other words. the language of Letter Patent No. only questions of law may be raised in a petition for review on certiorari before this Court. Apart from the fact that Albendazole is an anthelmintic agent like methyl 5 propylthio2-benzimidazole carbamate.[14] private respondent contends that application of the doctrine of equivalents would not alter the outcome of the case. compositions or preparations involving the compound to maximize its efficacy against certain kinds of parasites infecting specified animals. In its Comment. a scrutiny of petitioner’s evidence fails to convince this Court of the substantial sameness of petitioner’s patented compound and Albendazole.

1982.[30] WHEREFORE. Inc. United Laboratories. September 29.00 and that sales plummeted to zero after the issuance of the injunction. This Court. however.000.00 as temperate or moderate damages. 3 of which provides as follows: 3. G. still attorney’s fees may not be awarded where no sufficient showing of bad faith could be reflected in a party’s persistence in a case other than an erroneous conviction of the righteousness of his cause. which has had long experience in the business of manufacturing and selling pharmaceutical products. this Court does not sustain the award of actual damages and attorney’s fees in favor of private respondent. were supported by the testimonies of private respondent’s President[25] and Executive Vice-President that the average monthly sale of Impregon wasP100. private respondent having been allegedly forced to litigate as a result of petitioner’s suit.') for the issuance of a compulsory license to use the patented compound in its own brands of medicines and pharmaceuticals and to sell.[28] In the same vein.00 monthly gross sales for eleven months. it having suffered some pecuniary loss the amount of which cannot.[27] The testimonies of private respondent’s officers are not the competent proof or best evidence obtainable to establish its right to actual or compensatory damages for such damages also require presentation of documentary evidence to substantiate a claim therefor. respondent United Laboratories. be established with certainty. is DELETED. (or UNILAB) filed in the Philippine Patent Office a petition Inter Partes Case No.1980 for a pharmaceutical compound known as "aminoalkyl furan derivatives." On October 1.000. possesses the capability to use the subject compound in the manufacture of a useful product or of making dosage formulations containing the said compound. assignors to Allen & Hanburys Ltd.‖ [24] 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. No. 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. granting UNILAB a compulsory license subject to ten (1 0) terms and conditions No. The petition further alleged that the patent relates to medicine and that petitioner. whereas those inventions not elected may be made the subject of separate applications which are called ―divisional applications. [23] The applicant thus is required ―to divide.000. By virtue of this license. 82542. to limit the claims to whichever invention he may elect. computed at the rate of 30% of its alleged P100.[26] While indemnification for actual or compensatory damages covers not only the loss suffered (damnum emergens) but also profits which the obligee failed to obtain (lucrum cessans or ganacias frustradas). John Watson CLITHERON and John Bradshaw. After the hearing. The claimed actual damages ofP330. the Philippine Patent Office rendered a decision on June 2.000. 1986. Even if a claimant is compelled to litigate with third persons or to incur expenses to protect its rights. instead. "United Laboratories. 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. The foregoing discussions notwithstanding. it is hereby awarded the amount of P20. the assailed decision of the Court of Appeals is hereby AFFIRMED with MODIFICATION. Inc. versus Barry John Price. distribute. it is necessary to prove the actual amount of damages with a reasonable degree of certainty based on competent proof and on the best evidence obtainable by the injured party. Otherwise.00 representing lost profits or revenues incurred by private respondent as a result of the issuance of the injunction against it. Barry John Price vs.5) 38 .00 which it finds reasonable under the circumstances.R. Tryco Pharma Corporation. this Court does not sustain the grant by the appellate court of attorney’s fees to private respondent anchored on Article 2208 (2) of the Civil Code. The award of actual or compensatory damages and attorney’s fees to private respondent. 13540 which was granted to them on June 26. or otherwise dispose of such medicines or pharmaceutical preparations in the country. petitioner shall pay the respondent a royalty on all license products containing the patented substance made and sold by the Petitioner in the amount equivalent to TWO AND ONE HALF (2. 1998 The petitioners are the owners-assignees of Philippine Patent No.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW having been presented or qualified as an expert witness who has the knowledge or expertise on the matter of chemical compounds. grants private respondent temperate or moderate damages in the amount of P20. 1683. from the nature of the case.000.‖ that is.[29] There exists no evidence on record indicating that petitioner was moved by malice in suing private respondent. As for the concept of divisional applications proffered by petitioner. Albendazole being one of those other inventions.

13540 lessa) Transportation charges or allowances. use or delivery of the products. he may order the grant of an appropriate license and in default of agreement among the parties as to the terms and conditions of the license he shall fix the terms and conditions of the license in the order. in finding that the respondent possess the legally required capability to make use of the petitioner's patented compound in the manufacture of a useful product. made and sold during the preceding quarter and to be paid by the Petitioner at its place of business on or before the thirtieth day of the month following the end of each calendar quarter. filing its petition for compulsory licensing.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW PER CENT OF THE NET SALES in Philippine currency. GRANT OF LICENSE. The first assignment of error has no merit. 35-36.R. without affording the parties an opportunity to negotiate the terms and conditions freely and by themselves. quantity or cash discounts and broker's or agent's or distributor's commissions. excise or government charge included in such amount. 165 which provides: Sec. if any. c) Credits or allowances. when only one claim of the patent was controverted and 4. and d) Any tax. 36. The terms and conditions of the compulsory license were fixed by the Director of Patents after a hearing and careful consideration of the evidence of the parties and in default of an agreement between them as to the terms of the license. 3. No. 1 987. or measured by the production. in considering evidence that UNILABs capability to use the compound was acquired after. This he is authorized to do under Section 36 of Republic Act No. in affirming the Director's award of the entire patent to the respondent. given or made on account with reflection or return of the product previously delivered.025 x ___________________ (Value of tended Substance) Active Ingredients Pa Value of 4.) The patentees appealed the decision to the Court of Appeals (CA-G. included in such amount. in upholding the Director's unilateral determination of the terms and conditions of the compulsory license. Rollo. hereof made out. The terms 'net sales' means the gross billed for the product pertaining to Letters Patent No. the royalty to be paid shall be determined in accordance with the following formula: Net Sales Admixed Product Patented Substance on Value of Royalty = _______________ x 0. Payments should be made to Respondent's authorized representative in the Philippines. In case Petitioner's product containing the patented substance shall contain one or more active ingredients as admixed product. transportation. allowed or paid. 2. if any. SP-09308) which dismissed the appeal on December 4. The royalties shall be computed after the end of each calendar quarter for all goods containing the patented substance herein involved.—If the Director finds that a case for the grant of license under Section 34. They have come to his Court praying for a review of the Appellate Court's decision on the grounds that it erred: 1. b) Trade. sale. if any. not before. 39 . (pp.

IPC 1555. Paragraph 3. vs.—(1)If the Director finds that a case for the grant of a license under Sec. Doctors Pharmaceuticals. Gruppo Lepetit S.. United Laboratories.5% royalty rate is unfair to respondent-appellant as to amount to an undue deprivation of its property right. Inc.V. 20. June 8. Dec. IPC 949.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW The order of the Director granting a license under this Chapter. Herningen et al. 1981. et al. distributed.. Boehringer Ingelhelm. Inc. or process subject of the compulsory license is involved in an industrial project approved by the Board of Investments. June 29. IPC 1179. Inc.5% is just and reasonable. IPC 1679. IPC 1184. Graham John Durant et al. 1981. IPC 929. 35.R. 21. 1263.. vs. said provision grants to the Director of Patents the use of his sound discretion in fixing the percentage for the royalty rate and We find that the Director of Patents committed no abuse of this discretion. 1981. Bristol-Myers Company. 1987). which royalty shall be distributed to the patentees in rates proportional to the extent of commercial use by the licensee giving preferential values to the holder of the oldest subsisting product patent. Maggi. IPC 1731. vs. Inc. If the product.5% royalty fixed by the Director of Patents 'is just and reasonable. United Laboratories. the royalty payable to the patentee or patentees shall not exceed three per cent (3%) of the net wholesale price (as defined in Section 34-A) of the patented commodity and/or commodity manufactured under the patented process. vs. United Laboratories. vs. vs. Section 35-B. there is always a presumption of regularity in the performance of one's official duties. hence. IPC 1906.1984. Maggi. January 10.. 1263. Oceanic Pharmacal Inc. he shall within one hundred eighty (180) days from the date the petition was filed. United Laboratories. July 27. Drugmaker's Laboratories v. vs. 1983. the special product to be manufactured by UNILAB will only be used. Van Gelder et al. et al. August 27. June 10. The Court of Appeals found that the 2. However. the royalty rate of 2. the Court of Appeals did not 40 . Republic Act No. Inc. Besides. July 11. and under Section 35 of P.1982. 13. vs. 1983. 165. 1984. Inc. Inc. 34 hereof has been made out. Helmut Weber. Boehringer Ingelheim. United Laboratories.A. The Director's finding that UNILAB has the capability to use the patented compound in the manufacture of an anti-ulcer pharmaceutical preparation is a factual finding which is supported by substantial evidence.D. royalty payments shall not exceed five per cent (5%) of the net wholesale price (as defined in Section 33-A) of the products manufactured under the license.. GMBH. (pp. without any technical assistance from herein respondentappellant. as pointed out in the respondent's comment on the petition. substance. et al. what UNILAB has with the compulsory license is the bare right to use the patented chemical compound in the manufacture of a special product. order the grant of an appropriate license. IPC 1627. Inc. Superior Pharmacraft Inc. The royalty rate of 2. as amended by Presidential Decree No. vs. Inc. August 31. Drugmaker's Laboratories..1983. when final. Albert Anthony Carr. 1983. Therefore. pp. United Laboratories Inc. vs. United Laboratories. 44-45. September 22. Dec.' We quote its observations hereunder: Respondent-appellant contends further that the 2.. 1984. We do not hold this view. and disposed locally. Thus. vs. vs. vs. 30. provides: (3) A compulsory license shall only be granted subject to the payment of adequate royalties commensurate with the extent to which the invention is worked. 1982. Sept. Pfizer Corp. Moreover. the same rule of royalty shall be paid whenever two or more patents are involved. Rollo) Furthermore. Janssen Pharmaceutical N. GRANT OF LICENSE. IPC 1759. August 14. CA Decision.165 which reads: Sec. IPC 1349. amending portions of Republic Act No. IPC 1185. IPC 1549. United Laboratories. E. Aug. The order shall state the terms and conditions of the license which he himself must fix in default of an agreement on the matter manifested or submitted by the parties during the hearing. Inc.5% provided for by the Director of Patents is reasonable. Identical terms and conditions had been prescribed for the grant of compulsory license in a good number of patent cases (United Laboratories. shall operate as a deed granting alicense executed by the patentee and the other patties in interest. Also.. Squibb & Sons. Inc. 10-11. 1987..

since the petitioner will be paid royalties on the sales of any products the licensee may manufacture using any or all of the patented compounds. The compound ranitidine hydrochloride named in Claim 45 is also covered by General Claim I and several other sub-generic claims. by virtue of the powers vested in this Office by Republic Act No. It owns Philippine Letters Patent No. Court of Appeals. there is hereby issued a license in favor of the herein [private respondent]. Petitioner is a foreign corporation with principal office at Welwyn Garden City. 8 SCRA 595. the petition for review is denied for lack of merit. Trademarks and Technology Transfer (BPTTT) granting a compulsory non-exclusive and non-transferable license to private respondent to manufacture. the petition failed to specifically divulge how private respondent would use or improve the patented product. July 24. with the dispositive portion thereof providing: NOW. Smith Kline vs. No. to a particular claim. the BPTTT handed down its decision on 14 February 1994. After appropriate proceedings. the important thing is that such capability was proven to exist during the hearing of the petition. Noxides and dehydrates thereof. Gaw Liu 44 SCRA 143. subject to the following terms and conditions: 41 . The patented invention in this case relates to medicine and is necessary for public health as it can be used as component in the manufacture of anti-ulcer medicine. 12207 was issued on 29 November 1978.. that it has the necessary equipment and technological expertise for the development of solid dosage forms or for tablet. 12207 issued on November 29. The Director of Patents did not err in granting a compulsory license over the entire patented invention for there is no law requiring that the license be limited to a specific embodiment of the invention. Private respondent alleged that the grant of Philippine Letters Patent No. a license for Claim 45 alone would not be fully comprehensive. Private respondent is a domestic corporation engaged in the business of manufacturing and distributing pharmaceutical products.. THEREFORE. Goduco vs. petitioner challenged the constitutionality of Sections 34 and 35 of R. United Laboratories. 165 (An Act Creating a Patent Office Prescribing Its Powers and Duties. medicine or that which is necessary for public health or public safety. 1263. 1978. and that it had the capability to work the patented product or make use of it in its manufacture of medicine. De Gala Sison vs. 33520. Even if it were true. that its capability to use the patented compound was only acquired after the petition for compulsory licensing had been filed. 14 SCRA 282.. No. England. Regulating the Issuance of Patents. Petitioner also maintained that it was capable of satisfying the demand of the local market in the manufacture and marketing of the medicines covered by the patented product. which provides for the compulsory licensing of a particular patent after the expiration of two years from the grant of the latter if the patented invention relates to.I. Pepsi-Cola Bottling Company of the P. use and sell in the Philippines its own brands of pharmaceutical products containing petitioner’s patented pharmaceutical product known as Cimetidine. 19 SCRA 289. In any event. and that private respondent was motivated by the pecuniary gain attendant to the grant of a compulsory license. capsule. 165.A.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW commit a reversible error in affirming it (Philippine Nut Industry. vs. Manalo. 165 for violating the due process and equal protection clauses of the Constitution. that the petition was filed beyond the two-year protective period provided in Section 34 of R. 65 SCRA 575. having the general formula (I) and physiologically acceptable salts. WHEREFORE. as alleged by the patentee (although it is denied by UNILAB). it filed a petition for compulsory licensing[3] with the BPTTT for authorization to manufacture its own brand of medicine from the drug Cimetidine and to market the resulting product in the Philippines. 121867. Petitioner opposed. that it is the leading drug manufacturer in the country. [sic] under Letters Patent No. On 30 March 1987. or. and liquid preparations. SP No. as amended by Presidential Decree No. G. Inc. which affirmed the 14 February 1994 decision[2] of the Director of the Bureau of Patents. the petitioner cannot complain of a deprivation of property rights without just compensation. Ramos vs. The invention in this case relates to new aminoalkyl derivatives which have histamine H 2 blocking activity. Finally. Therefore. No. and Appropriating Funds Therefor). 12207 issued by the BPTTT for the patent of the drugCimetidine. Sy Ching vs. The petition was filed pursuant to the provisions of Section 34 of Republic Act No.R. Inc. 1997 This is an appeal under Rule 45 of the Rules of Court from the decision [1] of 4 November 1994 of the Court of Appeals in CA-G. Standard Brands. 165.R. inter alia. Inc.A. Of indubitable relevance to this point is the evidence that UNILAB has been engaged in the business of manufacturing drugs and pharmaceutical products for the past thirty (30) years. arguing that private respondent had no cause of action and lacked the capability to work the patented product. Doctors Pharmaceuticals. and that it maintains standards and procedures to ensure the quality of its products.

[Private respondent] shall comply with the laws on drugs and medicine requiring previous clinical tests and approval of proper government authorities before selling to the public its own products manufactured under the license. In case [private respondent's] product containing the patented substance shall contain one or more active ingredients admixed therewith. made and sold during the precedent quarter and to be paid by [private respondent] at its place of business on or before the thirtieth day of the month following the end of each calendar quarter. That [private respondent] be hereby granted a non-exclusive and non-transferable license to manufacture. transportation. use and sell in the Philippines its own brands of pharmaceutical products containing [petitioner's] patented invention which is disclosed and claimed in Letters Patent No. [Petitioner] shall have the right to terminate the license granted to [private respondent] by giving the latter thirty (30) days notice in writing to that effect. 12207 unless this license is terminated in the manner hereinafter provided and that no right or license is hereby granted to [private respondent] under any patent to [petitioner] or [sic] other than recited herein. quantity or cash discounts and broker's or agent's or distributor's commissions. said product hereinafter identified as admixed product. 2. [sic] giving [petitioner] thirty (30) days-notice in writing to that effect. if any. 6. [private respondent] shall pay [petitioner] a royalty on all license products containing the patented substance made and sold by [private respondent] in the amount equivalent to TWO AND ONE HALF PERCENT (2. 12207. or measured by the production sale. if any. [Private respondent] shall keep records in sufficient detail to enable [petitioner] to determine the royalties payable and shall further permit its books and records to be examined from time to time at [private respondent's] premises during office hours. The term "net scale" [sic] means the gross amount billed for the product pertaining to Letters Patent No. excise or government charge included in such amount. included in such amount. the royalty to be paid shall be determined in accordance with the following formula: Net Sales on Value of Patented ROYALTY = Admixed Product x 0. By virtue of this license. The royalties shall be computed after the end of each calendar quarter to all goods containing the patented substance herein involved. less -(a) Transportation charges or allowances. given or made on account of rejection or return of the patented product previously delivered. (b) Trade. That the license granted herein shall be for the remaining life of said Letters Patent No. and (d) Any tax. 42 . Payments should be made to [petitioner's] authorized representative in the Philippines.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW 1. to the extent necessary to be made at the expense of [petitioner] by a certified public accountant appointed by [petitioner] and acceptable to [private respondent]. use of delivery of the products. (c) Credits or allowances.025 x Substance Value of Patented Value of Other Substance Active Ingredients 4. to terminate the license granted to its. 7. [Private respondent] shall adopt and use its own trademark or labels on all its products containing the patented substance herein involved. 3. 8. if any. 5. 12207. in the event that [private respondent] default [sic] in the payment of royalty provided herein or if [private respondent] shall default in the performance of other covenants or conditions of this agreement which are to be performed by [private respondent]: (a) [Private respondent] shall have the right provided it is not in default to payment or royalties or other obligations under this agreement. allowed or paid.5%) of the net sales in Philippine currency.

either at laws [sic] or equity. 9. [IT] IS AN INVALID EXERCISE OF POLICE POWER. This License shall inure to the benefit of each of the parties herein. the Director of Patents ruled that . machines and equipment as well as permit to manufacture different drugs containing patented active ingredients such as ethambutol of American Cyanamid and Ampicillin and Amoxicillin of Beecham Groups. 1987. 33520. Trademarks and Technology Transfer duly delegated by him. Doctors Pharmaceuticals. [IT] SHOULD NOT HAVE PROCEEDED TO DECIDE THE CASE BELOW FOR FAILURE OF PRIVATE RESPONDENT TO AFFIRMATIVELY PROVE THE JURISDICTIONAL FACT OF PUBLICATION..‖ As to the claim by the petitioner that it has the capacity to work the patented product although it was not shown that any pretended abuse has been committed. and (c) Notice of termination of this license shall be filed with the Bureau of Patents.5% OF THE NET WHOLESALE PRICE IN PHILIPPINE CURRENCY WAS RENDERED WITHOUT ANY FACTUAL BASIS AND AMOUNTS TO EXPROPRIATION OF PRIVATE PROPERTY WITHOUT JUST COMPENSATION WHICH IS VIOLATIVE OF THE CONSTITUTION.R. which was docketed as CA-G. to the subsidiaries and assigns of [petitioner] and to the successors and assigns of [private respondent].[5] In its decision of 4 November 1994... II . Trademarks and Technology Transfer. The patented invention relates to compound and compositions used in inhibiting certain actions of the histamine..[6] the Court of Appeals affirmed in toto the challenged decision. having competent personnel. Trademarks and Technology Transfer or any ranking official of the Bureau of Patents.[4] Petitioner then appealed to the Court of Appeals by way of a petition for review. SP No. IV . III CONCEDING ARGUENDO THE QUESTIONED DECISION’S VALIDITY. Inc. 12207 issued on November 29. the matter shall be submitted for arbitration before the Director of Bureau of Patents. 14 SCRA 1053]. 43 . It appears that at the time of the filing of the petition for compulsory license on March 24. 1978 has been in effect for more than two (2) years. [IT] VIOLATES INTERNATIONAL LAW AS EMBODIED IN THE PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY AND MUST ACCORDINGLY BE SET ASIDE AND MODIFIED. after hearing and careful consideration of the evidence presented.‖ [Parke Davis v. This license take [sic] effect immediately.―there is ample evidence to show that [private respondent] possesses such capability.. In case of dispute as to the enforcement of the provisions of this license. THE BPTTT’S PRONOUNCEMENT FIXING THE ROYALTY AT 2. Petitioner claimed that the appealed decision was erroneous because: I . 10. Ltd. thus the reason for granting compulsory license ―is intended not only to give a chance to others to supply the public with the quantity of the patented article but especially to prevent the building up of patent monopolities [sic].. it relates to medicine.: An assiduous scrutiny of the impugned decision of the public respondent reveals that the same is supported by substantial evidence.. hence.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW (b) Any termination of this license as provided for above shall not in any way operate to deny [petitioner] its rights or remedies. the subject letters Patent No. We quote its findings and conclusion upon which the affirmance is anchored. Moreover. or relieve [private respondent] of the payment of royalties or satisfaction of other obligations incurred prior to the effective date of such termination. viz. and 11.

relevant to said field. R. what UNILAB has with the compulsory license is the bare right to use the patented chemical compound in the manufacture of a special product. Further.―liberal treatment in trade relations should be afforded to local industry for as reasoned out by respondent company. the award of compulsory license is a valid exercise of police power. A compulsory license shall only be granted subject to the payment of adequate royalties commensurate with the extent to which the invention is worked.5% of the net wholesale price is fair enough for the parties. We take note of the well-crafted petition submitted by petitioner albeit the legal milieu and a good number of decided cases militate against the grounds posited by petitioner. the proper regulation and/or promotion of which requires a technical or special training. (subject matter of latters Patent No. RA 165 allows it in cases where the invention relates to food and medicine. However. and disposed locally. No. obtaining in the nations. September 19. 124 SCRA 115] it was held that . In the instant case. If the product. or process subject of the compulsory license is involved in an industrial project approved by the Board of Investments. royalty payments shall not exceed five percent (5%) of the net wholesale price (as defined in Section 33-A) of the products manufactured under the license. Terms and Conditions of Compulsory License. the award of royalty rate of 2. the petitioner cannot complain of a deprivation of property rights without just compensation [Price v. to the effect that ―The legal presumption is that official duty has been performed. [L-27004. which royalty shall be distributed to the patentees in rates proportional to the extent of commercial use by the licensee giving preferential values to the holder of the oldest subsisting product patent. foreign produce licensor can later on ask for an increase in percentage rate of royalty fixed by the Director of Patents if local sales of license should increase. 1983. the same rate of royalty shall be paid whenever two or more patents are involved. In this case. in connection with the enforcement of laws affecting particular fields of activity. considering the well-entrenched jurisprudence sustaining the position of respondents. vs. 165. x x x (2). aside from a good knowledge and grasp of the overall conditions. 12207) is necessary for the manufacture of an anti-ulcer drug/medicine. it is so difficult to compete with the industrial grants [sic] of the drug industry. Hence. without any technical assistance from herein respondent-appellant. SEC. x x x (3). the royalty payable to the patentee or patentees shall not exceed three percent (3%) of the net wholesale price (as defined in Section 34-A) of the patented commodity and/or commodity manufactured under the patented process. as amended by P.‖ It appearing that herein petitioner will be paid royalties on the sales of any products [sic] the licensee may manufacture using any or all of the patented compounds. states: ―SEC. the royalty rate of 2. August 6.D. 34 (1) e. 1267. substance. We reiterate the rule in Basay Mining Corporation vs. No. UNILAB. In sum. the special product to be manufactured by UNILAB will only be used. the applicant was able to show that Cimetidine. distributed. L-82542. DPI and Tiburcio. in Price vs. among them being the petitioner herein. Section 35-B. UNILAB. that it always is necessary that the local drug companies should sell at much lower (than) the prices of said foreign drug entities. In Parke Davis & Co.A. Paragraph 3. 35-B. (1). Therefore.5% of the net wholesale price amounted to expropriation of private property without just compensation. the Director of Patents exercised his discretion and ruled that a rate of 2. to wit [166 SCRA 133]: ―Moreover. Besides.‖ Besides.5% is just and reasonable. We do not agree to [sic] petitioner’s contention that the fixing of the royalty at 2. The policy and practice underlying our 44 .5% was deemed to be just and reasonable.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW We find that the granting of compulsory license is not simply because Sec. The Director of Patents also considered in determining that the applicant has the capability to work or make use of the patented product in the manufacture of a useful product. which is necessary for the promotion of public health. 1988]. And it is particularly strong as regards administrative agencies vested with powers said to be quasi-judicial in nature.‖ The foregoing provision grants the Director of Patents the use of his sound discretion in fixing the percentage for the royalty rate.

of which the Philippines became a party thereto only in 1965. In its first assigned error. Minute Resolution. Section A. ABSENT ANY SHOWING BY EVIDENCE OF AN OVERWHELMING PUBLIC NEED FOR A COMPULSORY LICENSE OVER CIMETIDINE IN FAVOR OF PRIVATE RESPONDENT. II THE HON. G. v. No.R. October 3. petitioner invokes Article 5 of the Paris Convention for the Protection of Industrial Property. AND MUST ACCORDINGLY BE SET ASIDE AND MODIFIED. Beautifont. No.. et al. 50141. It is thus clear that Section A(2) of Article 5 above unequivocally and explicitly respects the right of member countries to adopt legislative measures to provide for the grant of compulsory licenses to prevent abuses which might result from the exercise 45 . 1988] Its motion for reconsideration having been denied in the resolution[7] of 31 August 1995. xxx (2) Each country of the union shall have the right to take legislative measures providing for the grant of compulsory licenses to prevent the abuses which might result from the exercise of the exclusive rights conferred by the patent. failure to work. manifestly and patently insubstantial. whichever period expires last. COURT OF APPEALS ERRED IN NOT HOLDING THE BPTTT'S ACTION WAS RENDERED NULL AND VOID FOR FAILURE OF PRIVATE RESPONDENT TO AFFIRMATIVELY PROVE THE JURISDICTIONAL FACT OF PUBLICATION AS REQUIRED BY LAW. xxx (4) A compulsory license may not be applied for on the ground of failure to work or insufficient working before the expiration of a period of four years from the date of filing of the patent application or three years from the date of the grant of the patent. provide: A. After a careful perusal of the pleadings and evaluation of the arguments adduced by the parties.R. et al. COURT OF APPEALS ERRED IN NOT HOLDING THAT THE BPTTT'S DECISION IS AN INVALID EXERCISE OF POLICE POWER. URUGUAY ROUND. it shall be refused if the patentee justifies his inaction by legitimate reasons. which they did. 76695. we find this petition to be without merit. January 29. unless there is absolutely no evidence in support thereof or such evidence is clearly. [G. COURT OF APPEALS ERRED IN NOT HOLDING THAT THE BPTTT'S DECISION VIOLATES INTERNATIONAL LAW AS EMBODIED IN (A) THE PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY AND (B) THE GATT TREATY. with that of public respondent filed only on 7 February 1997. COURT OF APPEALS ERRED IN NOT HOLDING THAT THE BPTTT'S PRONOUNCEMENT FIXING THE ROYALTY FOR AN INVOLUNTARY LICENSE AT 2. [9] Pertinent portions of said Article 5. except with that part of the enterprise or goodwill which exploits such license. Such a compulsory license shall be non-exclusive and shall not be transferable. for example. We resolved to give due course to the petition and required the parties to submit their respective memoranda. even in the form of the grant of a sub-license. petitioner filed the instant petition for review on certiorari with the following assignment of errors: I THE HON. 1988. III THE HON.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW Administrative Law is that courts of justice should respect the findings of fact of said administrative agencies.5% OF THE NET WHOLESALE PRICE IN PHILIPPINE CURRENCY WAS RENDERED WITHOUT ANY FACTUAL BASIS AND AMOUNTS TO EXPROPRIATION OF PRIVATE PROPERTY WITHOUT JUST COMPENSATION AND IS IN VIOLATION OF THE CONSTITUTIONAL RIGHT TO DUE PROCESS. Court of Appeals. IV THE HON..‖ for short. [8] or ―Paris Convention. Inc.

(3) The term "worked" or "working" as used in this section means the manufacture and sale of the patented article. it must be noted that paragraph (4) of Section A." xxx SEC. of Chapter VIII read as follows: SEC. even if the Act was enacted prior to the Philippines’ adhesion to the Convention. (c) If. Sections 34 and 35. the recognized right of treaty signatories under Article 5. Grounds for Compulsory Licensing. provides for a system of compulsory licensing under a particular patent. by reason of refusal of the patentee to grant a license or licenses on reasonable terms. the establishment of any new trade or industry in the Philippines is prevented. (d) If the working of the invention within the country is being prevented or hindered by the importation of the patented article. are not in derogation of. or to employ the patented process. fits well within the aforequoted provisions of Article 5 of the Paris Convention.(1) If the Director finds that a case for the grant is a license under Section 34 hereof has been made out. No.(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.A." however. In the explanatory note of Bill No. or (e) If the patented invention or article relates to food or medicine or manufactured products or substances which can be used as food or medicine. An example provided of possible abuses is "failure to work. Section 34 of R. but are consistent with. it is plain that the treaty does not preclude the inclusion of other forms or categories of abuses. but also to prevent the growth of monopolies. or the trade or industry therein is unduly restrained. 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.the patented invention or article relates to food or medicine or manufactured products or substances which can be used as food or medicine. under any of the following circumstances: (a) If the patented invention is not being worked within the Philippines on a commercial scale. (2) A compulsory license sought under Section 34-B shall be issued within one hundred twenty days from the filing of the proponent's application or receipt of the Board of Investment's endorsement. the legislative intent in the grant of a compulsory license was not only to afford others an opportunity to provide the public with the quantity of the patented product." and not to any ground or circumstance as the treaty signatories may reasonably determine. Article Two. Grant of License. [10] Certainly. 165. Section A(2) of the Paris Convention. 1263. and which our Congress likewise wished to prevent in enacting R. 35. in or by means of a definite and substantial establishment or organization in the Philippines and on a scale which is reasonable and adequate under the circumstances. No. 165. order the grant of an appropriate license. 165. (b) If the demand for the patented article in the Philippines is not being met to an adequate extent and on reasonable terms. 46 . within one hundred eighty days from the date the petition was filed. 1156 which eventually became R. as such is merely supplied by way of an example. Article 5 of the Paris Convention setting time limitations in the application for a compulsory license refers only to an instance where the ground therefor is "failure to work or insufficient working. The order shall state the terms and conditions of the license which he himself must fix in default of an agreement on the matter manifested or submitted by the parties during the hearing. No. or is necessary for public health or public safety. Importation shall not constitute "working. or by reason of the conditions attached by the patentee to licensee or to the purchase. promulgated on 14 December 1977.A. of the patented machine. (2) In any of the above cases. he shall.A. although capable of being so worked. Article 5 of the Convention foresaw. without satisfactory reason. Parenthetically. And it may not be doubted that the aforequoted provisions of R.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW of the exclusive rights conferred by the patent. No. as amended.A. -. lease or use of the patented article or working of the patented process or machine for production. No. as amended by Presidential Decree No. -. or the application of the patented process for production. the growth of monopolies was among the abuses which Section A. or is necessary for public health or public safety.A. The case at bar refers more particularly to subparagraph (e) of paragraph 1 of Section 34 -. 34. 165. 165. R.

petitioner cannot avail of the provisions of the GATT treaty. Smith Kline vs. we find the findings of fact and conclusions of respondent Court of Appeals and that of the BPTTT to be fully supported by the evidence and the applicable law and jurisprudence on the matter. Accordingly. and (6) the Court of Appeals. this treaty has no retroactive effect.R. SP No.[12] The Agreement establishing the World Trade Organization includes various agreements and associated legal instruments. It was only on 14 December 1994 that the Philippine Senate.[17] we ruled that where the issue of jurisdiction is raised for the first time on appeal. the law recognizes just compensation in the form of royalties. since the challenged BPTTT decision was rendered on 14 February 1994. but subsequently. or vend the same after a period of three [now two] years from the date of the grant of the letters patent. went beyond the issues of the case and the same is contrary to the admissions of both the appellant and appellee. As to the fourth assigned error. adopted Senate Resolution No. Compulsory licensing of a patent on food or medicine without regard to the other conditions imposed in Section 34 [now Section 35] is not an undue deprivation of proprietary interests over a patent right because the law sees to it that even after three years of complete monopoly something is awarded to the inventor in the form of bilateral and workable licensing agreement and a reasonable royalty to be agreed upon by the parties and in default of such an agreement. Petitioner’s claim of violations of the due process and eminent domain clauses of the Bill of Rights are mere conclusions which it failed to convincingly support. 33520 is AFFIRMED in toto. use. the petition is hereby DENIED and the challenged decision of the Court of Appeals in CA-G. 97 concurring in the ratification by the President of the Agreement.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW Neither may petitioner validly invoke what it designates as the GATT Treaty. (3) there is grave abuse of discretion in the appreciation of facts.A. Doctors' Pharmaceuticals. G. 2001 This petition for review on certiorari assails the Decision dated January 27. On the contrary. or vending an invention relating to. (4) the judgment is premised on a misapprehension of facts.R. As to due the process argument. In Pantranco North Express. Trademarks and Technology Transfer (BPTTT) granting a compulsory license to private respondent Danlex Research Laboratories for the use of the pharmaceutical product Cimetidine. unless: (1) the conclusion is a finding grounded entirely on speculation or conjecture. 121267. WHEREFORE. 1995 Resolution of the Court of Appeals denying the motion for reconsideration filed by petitioner Smith Kline and French Laboratories. [13] But plainly. (5) the findings of fact are conflicting.R. 33770[1] which affirmed the decision of the Bureau of Patents. [11] Forming integral parts thereof are the Agreement Establishing the World Trade Organization. food or medicine should be conditioned to allowing any person to manufacture. in the exercise of its power under Section 21 of Article VII of the Constitution.[15] In Parke.. This act is better known as the Uruguay Final Act signed for the Philippines on 15 April 1994 by Trade and Industry Secretary Rizalino Navarro. No. Inc.[14] Petitioner has not convinced us that the instant case falls under any of the exceptions. petitioner have not furnished any cogent reason to depart from this rule.[16] we held: The right to exclude others from the manufacturing. 47 . in making its findings. and the Understanding on Commitments in Financial Services. we hold that petitioner can no longer assail the jurisdiction of the BPTTT. It is now settled that this rule applies with equal force to quasi-judicial bodies[18] such as the BPTTT. No. In fact. SP No. Davies & Co. Danlex Research. suffice it to say that full-blown adversarial proceedings were conducted before the BPTTT pursuant to the Patent Law. Well-established is the principle that the findings of facts of the latter are conclusive. 1995 of the Court of Appeals in CA-G. October 23. Ltd. raising this issue only for the first time on appeal. Inc. Court of Appeals. After all. It cannot likewise be claimed that petitioner was unduly deprived of its property rights. the party invoking it is so barred on the ground of laches or estoppel under the circumstances therein stated. Uruguay Round. (2) the inference made is manifestly absurd. the Director of Patents may fix the terms and conditions of the license. The President signed the instrument of ratification on 16 December 1994. v. Likewise assailed is the July 25. We agree with the Court of Appeals that the BPTTT exhaustively studied the facts and its findings were fully supported by substantial evidence. v. the patentee is not entirely deprived of any proprietary right. he has been given the period of three years [now two years] of complete monopoly over the patent. using. Here. the Ministerial Declarations and Decisions. as R. 165 not only grants the patent holder a protective period of two years to enjoy his exclusive rights thereto. The second and third assigned errors relate more to the factual findings of the Court of Appeals.

[2] On August 21. use and sell the same. (3) the rate of royalties payable to petitioner as fixed by the BPTTT was rendered without factual basis and amounts to an expropriation of private property without just compensation. considering that what was granted under the compulsory license is only the right to manufacture Cimetidine.[3] (the Patent Law) the law then governing patents. petitioner filed a motion for reconsideration thereof as well as a motion for the issuance of a temporary restraining order against private respondent’s sister company. without any technical assistance from petitioner.[4] The petition for compulsory license stated that Cimetidine is useful as an antihistamine and in the treatment of ulcers. and royalty rates identical to that fixed by the BPTTT have been prescribed for the grant of compulsory license in a good number of patent cases. if the patented invention or article relates to food or medicine. 1995. arguing that the private respondent had no cause of action and failed to allege how it intended to work the patented product. and that private respondent is capable of using the patented product in the manufacture of a useful product. 48 . 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. Petitioner further stated that its manufacture.[10] It explained further that the provisions of the Patent Law permitting the grant of a compulsory license are intended not only to give a chance to others to supply the public with the quantity of the patented article but especially to prevent the building up of patent monopolies. Private respondent invoked Section 34 (1) (e) of Republic Act No. or is necessary for public health or public safety.[6] After both parties were heard. Trademarks and Technology Transfer is hereby AFFIRMED. John Collin Emmett and Robin Genellin on November 29.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW Petitioner is the assignee of Letters Patent No. Montreal Pharmaceutical. 12207 covering the pharmaceutical product Cimetidine. the Court of Appeals promulgated its Decision. Inc. II. the appellate court held that the grant of a compulsory license to private respondent for the manufacture and use of Cimetidine is in accord with the Patent Law since the patented product is medicinal in nature. private respondent filed with the BPTTT a petition for compulsory license to manufacture and produce its own brand of medicines using Cimetidine.5% of net sales in Philippine currency. and therefore necessary for the promotion of public health and safety. use and sales of Cimetidine satisfied the needs of the Philippine market. private respondent complied with the requirement of publication under the Patent Law and had submitted proof of such compliance.[7] Petitioner thereafter filed with the Court of Appeals a petition for review of the decision of the BPTTT. raising the following arguments: (1) the BPTTT’s decision is violative of the Paris Convention for the Protection of Industrial Property. Finally. 1978. to refrain from marketing a product similar to Cimetidine. Said patent was issued by the BPTTT to Graham John Durant. ureas or guanadines. 1989. SO ORDERED.[8] On January 27. the BPTTT rendered a decision directing the issuance of a compulsory license to private respondent to use. 1995.[5] Petitioner opposed the petition for compulsory license. with costs against the Petitioner. or manufactured substances which can be used as food or medicine. the dispositive portion of which states: WHEREFORE. and the decision of the Bureau of Patents.[12] The Court of Appeals also ruled that contrary to petitioner’s claim. hence. The respondent Court erred in holding that compulsory licensing will not create a confusion that the patented product is the brainchild of private respondent Danlex and not of petitioner. with the following assignment of errors: I.[9] In affirming the decision of the BPTTT. (4) the petition for compulsory license should have been dismissed by the BPTTT for failure to prove the jurisdictional requirement of publication. [11] Neither did the appellate court find the royalty rate of 2. 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. The respondent Court erred in upholding the validity of the decision of public respondent BPTTT which is an arbitrary exercise of police power and is violative of international law. but both motions were denied by the Court of Appeals in its Resolution of July 25.[14] Petitioner thus filed the present petition on September 15. there was no need to grant a compulsory license to private respondent to manufacture.5% of net sales fixed by the BPTTT unreasonable. 1995. which relates to derivatives of heterocyclicthio or lower alkoxy or amino lower alkyl thiourea. (2) said decision is an invalid exercise of police power.[13] Not satisfied with the appellate court’s decision. the petition is DENIED. 165. 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.

without satisfactory reason. time and other resources in the research and development.The respondent Court erred in finding that the jurisdictional requirement of publication in a newspaper of general circulation for three (3) consecutive weeks has been complied with by private respondent Danlex. considering that petitioner is able to provide an adequate supply of Cimetidine to satisfy the needs of the Philippine market.5% of net sales is grossly inadequate. which allegedly permits the granting of a compulsory license over a patented product only to prevent abuses which might result from the exercise of the exclusive rights conferred by the patent. or the trade or industry therein is unduly restrained. petitioner claims that the appellate court erred in ruling that private respondent had complied with the requirement of publication of the notice of the filing of the petition for compulsory license because private respondent failed to formally offer in evidence copies of the notice of filing of the petition and notice of the date of hearing thereof as published and the affidavits of publication thereof.[21] It is also contended by petitioner that the grant of a compulsory license to private respondent will allow the latter to liberally manufacture and sell medicinal products containing Cimetidine without even extending to petitioner due recognition for pioneering the development and worldwide acceptance of said invention.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW III. manufacture and sale of Cimetidine. taking into consideration its huge investments of money. as well as marketing of Cimetidine. or by reason of the conditions attached by the patentee to licensee or to the purchase. private respondent adopted the reasoning of the Court of Appeals in the assailed decision and prayed that the petition be denied for lack of merit.[16] According to petitioner.[24] In its Comment to the Petition.[22] Petitioner likewise asseverates that the rate of royalty fixed by the BPTTT at 2.5% of the net wholesale price in peso does not amount to expropriation of private property without just compensation. the respondent Court still erred in holding that the BPTTT decision fixing the royalty at 2. the BPTTT did not properly acquire jurisdiction over the petition for compulsory license.[19] or on the ground of failure to work or insufficient working of the patented product. it says. It is further alleged that such rate has no factual basis since the appellate court and the BPTTT relied solely on analogous cases and did not explain how such rate was arrived at. the grant of a compulsory license to private respondent is an invalid exercise of police power since it was not shown that there is an overwhelming public necessity for such grant.—(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. Petitioner also claims that the grant of a compulsory license to private respondent unjustly deprives it of a reasonable return on its investment. The said grant is in accord with Section 34 of the Patent Law which provides: Grounds for Compulsory Licensing. (b) If the demand of the patented article in the Philippines is not being met to an adequate extent and on reasonable terms. lease or use of the patented article or working of the patented process or machine for production. under any of the following circumstances: (a) If the patented invention is not being worked within the Philippines on a commercial scale.[25] The petition has no merit. although capable of being so worked. by reason of refusal of the patentee to grant a license or licenses on reasonable terms. The Court of Appeals did not err in affirming the validity of the grant by the BPTTT of a compulsory license to private respondent for the use.[17] It argues further that the provisions of the Patent Law on compulsory licensing contravene the Convention of Paris for the Protection of Industrial Property [18] (Paris Convention). 49 . whichever expires last.Assuming that the grant of compulsory license is in order. and will unreasonably dilute petitioner’s right over the patent.[20] Petitioner opines that the inclusion of grounds for the grant of a compulsory license in Section 34 of the Patent Law other than those provided under the Paris Convention constitutes a violation of the Philippines’ obligation to adhere to the provisions of said treaty.[23] Lastly. the establishment of any new trade or industry in the Philippines is prevented.[15] While petitioner concedes that the State in the exercise of police power may regulate the manufacture and use of medicines through the enactment and implementation of pertinent laws. it states that such exercise is valid only if the means employed are reasonably necessary for the accomplishment of the purpose and if not unduly oppressive. IV. within four years from the date of filing of the patent application or three years from the date of grant of the patent. Thus. (c) If.

as the appellate court pointed out in the assailed decision. also for the manufacture.A. More than ten years have passed since the patent for Cimetidine was issued to petitioner and its predecessors-in-interest.) The grant of the compulsory license satisfies the requirements of the foregoing provision. No. In the explanatory note of Bill No. No. is likewise incorrect. Court of Appeals. or to employ the patented process. Inc.[26] This issue has already been resolved by this Court in the case of Smith Kline & French Laboratories. fits well within the aforequoted provisions of Article 5 of the Paris Convention. Petitioner’s contention that Section 34 of the Patent Law contravenes the Paris Convention because the former provides for grounds for the grant of a compulsory license in addition to those found in the latter.[30] 50 . An example provided of possible abuses is “failure to work. Certainly. (2) In any of the above cases. 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. (3) The term ―worked‖ or ―working‖ as used in this section means the manufacture and sale of the patented article. 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 is necessary for public health or public safety. We found no inconsistency between Section 34 and the Paris Convention and held that: It is thus clear that Section A(2) of Article 5 [of the Paris Convention] unequivocally and explicitly respects the right of member countries to adopt legislative measures to provide for the grant of compulsory licenses to prevent abuses which might result from the exercise of the exclusive rights conferred by the patent. the legislative intent in the grant of a compulsory license was not only to afford others an opportunity to provide the public with the quantity of the patented product. the disadvantage is far outweighed by the benefits resulting from the grant of the compulsory license. 165.A. Section A(2) of the Paris Convention states: Each country of the union shall have the right to take legislative measures providing for the grant of compulsory licenses to prevent the abuses which might result from the exercise of the exclusive rights conferred by the patent. in or by means of a definite and substantial establishment or organization in the Philippines and on a scale which is reasonable and adequate under the circumstances. Section 34 of R. or the application of the patented process for production. Furthermore. as such.” however. and the consequent reduction in the prices thereof. and which our Congress likewise wished to prevent in enacting R. private respondent as licensee explicitly acknowledges that petitioner is the source of the patented product Cimetidine. 165.[27] where petitioner herein questioned the BPTTT’s grant of a compulsory license to Doctors Pharmaceuticals. 1156 which eventually became R.) 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. House of Representatives. Such fears are unfounded since. failure to work. (e) If the patented invention or article relates to food or medicine or manufactured substances which can be used as food or medicine. the growth of monopolies was among the abuses which Section A. Ltd. use and sale of Cimetidine. of patented machine. 998]. is merely supplied by way of an example.A. and the compulsory license applied for by private respondent is for the use. 165. Importation shall not constitute ―working‖. Article 5. even if the Act was enacted prior to the Philippines’ adhesion to the Convention. it is plain that the treaty does not preclude the inclusion of other forms of categories of abuses. for example. vs. 12 May 957. manufacture and sale of a medicinal product.[29] Even assuming arguendo that such confusion may indeed occur. but also to prevent the growth of monopolies [Congressional Record. (Emphasis supplied. such as an increased supply of pharmaceutical products containing Cimetidine. Article 5 of the Convention foresaw.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW (d) If the working of the invention within the country is being prevented or hindered by the importation of the patented article. No.[28] (Emphasis supplied. by the grant of the compulsory license.

which royalty shall be distributed to the patentees in rates proportional to the extent of commercial use by the licensee giving preferential values to the holder of the oldest subsisting product patent. Said law provides: Sec. petitioner as owner of the patent would still receive remuneration for the use of such product in the form of royalties. since it was not shown that the latter erred or abused his discretion in prescribing said rate. are accorded not only respect but even finality if the same are supported by substantial evidence.A. However. including the rate of the royalty payable to the licensor. the Director of the BPTTT may fix the terms thereof. It must be pointed out that as owner of Letters Patent No. but this shall be without prejudice to the licensee’s right to oppose an application for such a new license. Grant of License. royalty payments shall not exceed five percent (5%) of the net wholesale price (as defined in Section 33-A) of the products manufactured under the license. use and sell Cimetidine for at least two years from its grant in November. 12207. petitioner had already enjoyed exclusive rights to manufacture. as to the alleged lack of jurisdiction of the BPTTT over the petition filed by private respondent for failure to comply with the publication requirement under Section 35-F of R.5% of net wholesale price fixed by the Director of the BPTTT is in accord with the Patent Law.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW There is likewise no basis for the allegation that the grant of a compulsory license to private respondent results in the deprivation of petitioner’s property without just compensation. Even if other entities like private respondent are subsequently allowed to manufacture. (3) A compulsory license shall only be granted subject to the payment of adequate royalties commensurate with the extent to which the invention is worked. WHEREFORE. order the grant of an appropriate license. during the hearings before the BPTTT.e. United Laboratories. Terms and Conditions of Compulsory License. 35. the petition is hereby DENIED for lack of merit and the Decision of the Court of Appeals is hereby AFFIRMED. The order shall state the terms and conditions of the license which he himself must fix in default of an agreement on the matter manifested or submitted by the parties during the hearing. the Court of Appeals correctly held that the rate of 2. – (1) A compulsory license shall be non-exclusive.[34] Finally. in the absence of any agreement between the parties with respect to a compulsory license. which are considered as experts in their respective fields. the royalty payable to the patentee or patentees shall not exceed three percent (3%) of the net wholesale price (as defined in Section 33-A) of the patented commodity/and or commodity manufactured under the patented process. this Court had earlier noted in the Price case that identical royalty rates have been prescribed by the Director of the BPTTT in numerous patent cases. may contain obligations and restrictions both for the licensee and for the registered owner of the patent. the same rate of royalty shall be paid whenever two or more patents are involved. The appellate court. 165. Anent the perceived inadequacy of the royalty awarded to petitioner. xxx Section 35-B. No. (2) The terms and conditions of a compulsory license.[32]Furthermore. within one hundred eighty days from the date the petition was filed. 51 .[31] ruled as such. use and sell the patented invention by virtue of a compulsory license. he shall. fixed in accordance with Section 35. substance.—(1) If the Director finds that a case for the grant of a license under Section 34 hereof has been made out. or process subject of the compulsory license is involved in an industrial project approved by the Board of Investments. i. citing Price vs. without any technical assistance from the licensor. The Court agrees with the appellate court’s ruling that the rate of royalty payments fixed by the Director of the BPTTT is reasonable.. If the product.[33] There was thus no error on the part of the Court of Appeals in affirming the royalty rate fixed by the Director of the BPTTT. The law explicitly provides that the rate of royalty shall not exceed five percent (5%) of the net wholesale price. xxx Under the aforequoted provisions.[35] The Court notes that petitioner raised this contention for the first time when it appealed the case to the appellate court. the Court holds that petitioner is estopped from questioning the same since it did not raise the issue of lack of jurisdiction at the earliest possible opportunity. considering that the compulsory license awarded to private respondent consists only of the bare right to use the patented invention in the manufacture of another product. 1978. The rule is that factual findings of administrative bodies.

Thus. Thus he sought from the trial court the issuance of a writ of preliminary injunction to enjoin private respondent. advertised and marketed in most countries of the world long before the patents were issued to petitioner. The effectivity of both Letters Patents was for five (5) years and was extended for another five (5) years starting 2 June 1988 and 14 November 1991. he has satisfied the legal requisites to justify the order of the trial court directing the issuance of the writ of injunction. that the movant has a clear legal right to be protected and that there is a violation of such right by private respondent. The crux of the controversy before us hinges on whether respondent Court of Appeals erred in finding the trial court to have committed grave abuse of discretion in enjoining private respondent from manufacturing. (c) the Court of Appeals erred in disregarding the findings of fact of the trial court. attorney’s fees and costs of suit. UM-6237 dated 14 November 1986 issued by the Director of Patents. (b) the Court of Appeals erred in taking judicial notice of private respondent’s self-serving presentation of facts. and praying for damages. with the whole system enclosed in one cabinet casing. March 15. (d) there was no basis for the Court of Appeals to grant a writ of preliminary injunction in favor of private respondent. On 5 February 1993 the trial court temporarily restrained private respondent from manufacturing. optional tuner or radio and microphone mixer with features to enhance one’s voice.[2] Roberto L. On 24 February 1993 the trial court issued a writ of preliminary injunction upon a bond on the basis of its finding that petitioner was a holder of a utility model patent for a sing-along system and that without his approval and consent private respondent was admittedly manufacturing and selling its own sing-along system under the brand name miyata which was substantially similar to the patented utility model[3] of petitioner. 115106. that respondent court should not have disturbed but respected instead the factual findings of the trial court. the injunction to be made permanent after trial. one or two tape mechanisms. the instant petition for review. The controlling reason for the existence of the judicial power to issue the writ is that the court may thereby prevent a threatened or continuous irremediable injury to some of the parties before their claims can be thoroughly investigated and advisedly adjudicated.[5] Petitioner argues that in a certiorari proceeding. selling and advertising the miyata or miyata karaoke brand. This petition alleges that: (a) it was improper for the Court of Appeals to consider questions of fact in a certiorari proceeding. using and/or selling and advertising the miyata sing-along system or any sing-along system substantially identical to the sing-along system patented by petitioner until further orders. 1996 Roberto del Rosario petitions this Court to review the decision of the Court of Appeals[1] which set aside the order of the Regional Trial Court of Makati granting a writ of preliminary injunction in his favor. On the other hand. It is not a cause of action in itself but merely a provisional remedy. In the early part of 1990 petitioner learned that private respondent was manufacturing a sing-along system bearing the trademark miyata or miyata karaoke substantially similar if not identical to the sing-along system covered by the patents issued in his favor. UM-5269 dated 2 June 1983 as well as Letters Patent No. it is not entitled to the injunctive relief granted by respondent appellate court. del Rosario alleged that he was a patentee of an audio equipment and improved audio equipment commonly known as the sing-along system or karaoke under Letters Patent No. Injunction is a preservative remedy for the protection of substantive rights or interests. such as the echo or reverb to stimulate an opera hall or a studio sound. G. selling and advertising the miyata karaoke brand sing-along system for being substantially similar if not identical to the audio equipment covered by letters patent issued to petitioner. from using. On 15 November 1993 respondent appellate court granted the writ and set aside the questioned order of the trial court. It is to be resorted to only when there is a pressing necessity to 52 . and that the karaoke system was a universal product manufactured. Private respondent assailed the order of 24 February 1993 directing the issuance of the writ by way of a petition for certiorari with prayer for the issuance of a writ of preliminary injunction and a temporary restraining order before respondent Court of Appeals.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW Del Rosario vs. respectively.[4] hence. questions of fact are not generally permitted the inquiry being limited essentially to whether the tribunal has acted without or in excess of jurisdiction or with grave abuse of discretion. He described his sing-along system as a handy multi-purpose compact machine which incorporates an amplifier speaker. The motion to reconsider the grant of the writ was denied. petitioner herein claims. It expressed the view that there was no infringement of the patents of petitioner by the fact alone that private respondent had manufactured the miyata karaoke or audio system. its officers and everybody elsewhere acting on its behalf. and. an adjunct to a main suit.R. The antecedents: On 18 January 1993 petitioner filed a complaint for patent infringement against private respondent Janito Corporation. CA & Janito Corporation. in the absence of a patent to justify the manufacture and sale by private respondent of sing-along systems.

there are only two requisites to be satisfied if an injunction is to issue. said cubical (casing) having a vertical partition wall therein defining a rear compartment and a front compartment. a control panel formed by vertical and horizontal sections. construction or composition. some act probably in violation of the plaintiff’s rights. In this regard Sec.[6] A preliminary injunction may be granted at any time after the commencement of the action and before judgment when it is established that the defendant is doing. may be protected by the author thereof. or is procuring or suffering to be done. or is about to do.A. 55. Design patents and patents for utility models. configuration. and ornamental design for an article of manufacture and (b) new model or implements or tools or of any Industrial product or of part of the same. UM-6237 for a term of five (5) years from the grant of a Utility Model described as – In an audio equipment consisting of a first cubical casing having an opening at its rear and upper rear portion and a partition therein forming a rear compartment and a front compartment serving as a loud speaker baffle.[9] The terms of both Letters Patents were extended for another five (5) years each. 14 November 1991. the former by a patent for a design and the latter by a patent for a utility model. a transistorized amplifier circuit wired in at least two printed circuit boards attached at the back of said control panel. said second cubical casing having (being ?) provided with a vertical partition therein defining a rear compartment and a front compartment. provides – Sec.[7] For the writ to issue the interest of petitioner in the controversy or the right he seeks to be protected must be a present right. and the essential conditions for granting such temporary injunctive relief are that the complaint alleges facts which appear to be sufficient to constitute a cause of action for injunction and that on the entire showing from both sides. through various controls mounted on said control panel of such casing. Thus. a legal right which must be shown to be clear and positive. and that the facts against which the injunction is to be directed are violative of said right. except as otherwise herein provide x x x Admittedly. a loud speaker fitted inside said front compartment of said casing and connected to the output of the main audio amplifier section of said transistorized amplifier circuit and a tape player mounted on the top wall of said casing and said tape player being connected in conventional manner to said transistorized amplifier circuit. petitioner is a holder of Letters Patent No. UM-5629 dated 2 June 1985 issued for a term of five (5) years from the grant of a Utility Model herein described – The construction of an audio equipment comprising a substantially cubical casing having a window at its rear and upper corner fitted with a slightly inclined control panel. and said front compartment serving as a speaker baffle. it appears. . the improvement wherein said control panel being removably fitted to said first cubical casing and further comprises a set of tape recorder and tape player mounted on the vertical section of said control panel and said recorder and player are likewise connected to said transistorized amplifier circuit. in view of all the circumstances.[8] Again. a transistorized amplifier circuit having an echo section and writhed in at least the printed circuit boards placed inside said rear compartment of said casing and attached to said vertical partition wall.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW avoid injurious consequences which cannot be remedied under any standard of compensation. namely. said transistorized amplifier circuit capable of being operated from outside. said rear compartment being provided with a door and enclosing therein a set of tape racks and said front compartment serving as loud speaker baffle.(a) Any new. the existence of the right to be protected. on 14 November 1986 petitioner was granted Letters Patent No. that the injunction is reasonably necessary to protect the legal rights of plaintiff pending the litigation. a second cubical casing having an opening at its rear. threatens. 165 as amended. 53 . original. known as The Patent Law. 55 of R. which does not possess the quality of invention but which is of practical utility by reason of its form. and a second loud speaker fitted inside said front compartment of said casing and connected to the output of said amplifier circuit. said second cubical casing being adapted to said first cubical casing so that said first and second casings are secured together in compact and portable form. The application of the writ rests upon an alleged existence of an emergency or of a special reason for such an order before the case can be regularly heard. a first loud speaker fitted inside said first compartment of such first casing and connected to the output of said transistorized amplifier circuit. in the same manner and subject to the same provisions and requirements as relate to patents for inventions insofar as they are applicable. the first beginning 2 June 1988 and the second.

In issuing. You mean your lawyer was wrong in alleging to this Court that Sharp manufactured and sold (in) 1985 as found in the Urgent Motion? A. or if it is substantially similar to any other utility model so known. there is no dispute that the letters patent issued to petitioner are for utility models of audio equipment. It is not 1985? A. Panasonic 1986 is also wrong? A. is that right? A. during the hearing on the issuance of the injunction.[12] Under Sec. del Rosario and as a matter of fact you mentioned Sanyo. Panasonic I think.e. I am sure you were the one who provided him with the information about the many other companies selling the sing-along system. Q. Sanyo is wrong. A. Q. more or less? A. Sanyo is 1979 I think. So this is also wrong. The date? Q. Q. you testified that there are (sic) so many other companies which already have (sic) the sing-along system even before the patent application of Mr. Now do you recall that your lawyer filed with this Honorable Court an Urgent Motion to Lift Temporary Restraining Order of this Honorable Court.[11] Where petitioner introduces the patent in evidence. Q.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW 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. The decision of the Director of Patents in granting the patent is always presumed to be correct. is that right? These 18 which you enumerated here. No. reissuing or withholding patents and extensions thereof. Sony and Sharp. Musicmate and Asahi. Wrong. So you don’t think this is also correct. A. whether there has been a prior public use or sale of the article sought to be patented. Now you will agree with me that in your statement Sharp you put the date as 1985 agreed? A. So you don’t think also that this allegation here that they manufactured in 1986 is correct? A. Since it is urgent it is more or less. and the burden then shifts to respondent to overcome this presumption by competent evidence. used or described within the country. The same also with Sanyo 1985 which you put. the Director of Patents determines whether the patent is new and whether the machine or device is the proper subject of patent. [10] Here. President of respondent Janito Corporation. 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. i. Earlier. 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. the Director decides not only questions of law but also questions of fact. it affords a prima facie presumption of its correctness and validity. This is evident from the testimony of Janito Cua. You mean your lawyer was wrong when he put the word Sharp 1985? A. to wit Q. Maybe I informed him already. Mr. Cua. In passing on an application. if it is in due form. More than that because x x x Q. 54 . xxx xxx xxx Q. Q. Q.

Nakabutshi by Asahi Electronics that is also wrong? A. More or less. Mr. do you have it? A.A. Electone by DICO 1989 is this correct or wrong? A. National by Precision Electronic 1986 this is also wrong? A. and cited the differences between its miyata equipment and petitioner’s audio equipment. and that both had loud speakers fitted inside the front compartment of the casing and connected to the output of the main audio amplifier section both having a tape recorder and a tape player mounted on the control panel with the tape recorder and tape player being both connected to the transistorized amplifier circuit. the rights of petitioner as a patentee have been sufficiently established. But. any advertisement? A. Now you are sure 1981. this is also correct or wrong? A.[13] As may be gleaned herein. No. Q. He also alleged that both his own patented audio equipment and respondent’s sing-along system were constructed in a casing with a control panel. Correct. It is more or less because it is urgent. Now Mr. Q. Consequently. But you have not brought the product in (sic) this Honorable Court. We don’t have time to exact the date. I have the product. Q.[14] Respondent Janito Corporation denied that there was any violation of petitioner’s patent rights. Q. Petitioner established before the trial court that respondent Janito Corporation was manufacturing a similar sing-along system bearing the trademark miyata which infringed his patented models.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW Q. More or less. Q. that is 1979. Witness. 95% sure. Witness so you are now trying to tell this Honorable Court that all your allegations here of the dates in this Urgent Motion except for Musicmate which you are only 95% sure they are all wrong or they are also more or less or not sure. with the front compartment consisting of a loud speaker baffle. throughout the territory of the Philippines for the term of the patent. is that right? A. respondent only confined its 55 . the casing having a vertical partition wall defining the rear compartment from the front compartment. This one because x x x Q. So that means all your allegations here from 2 to 5 are wrong? OK. you don’t also have a proof that Akai instrument that you said was also in the market before 1982? You don’t have any written proof. petitioner as a patentee shall have the exclusive right to make. Now do you have any proof. More or less. Q. Musicmate of G. We said more or less. right? A. any advertisement. both containing a transistorized amplifier circuit capable of being operated from outside through various controls mounted on the control panel. anything in writing that would show that all these instruments are in the market. I am satisfied with your answer. Q. it must be emphasized. Yupangco 1981 this is more or less? You are not also sure? A. No. No. A. No. By Philipps Philippines 1986. using or selling by any person without authorization of the patentee constitutes infringement of his patent. contrary to the findings and conclusions of respondent Court of Appeals. under Sec. article or product for the purpose of industry or commerce. and such making. use and sell the patented machine. Q. 37 of The Patent law. I don’t have it because x x x Q. Skylers 1985 is that correct or wrong? A. I think earlier.

it did not refute and disprove the allegations of petitioner before the trial court that: (a) both are used by a singer to sing and amplify his voice. 1 echo IC. Under Utility Model 5269. and disregarded completely petitioner’s Utility Model No. treble. The trial court is directed to continue with the proceedings on the main action pending before it in order to resolve with dispatch the issues therein presented. As described by respondent corporation. Second. like the guitar and other instruments. 5269. the unit is a substantially cubical casing with a window at its rear and upper corner fitted with slightly inclined control panel. WHEREFORE. Third. 1 IC controlled volume control. (g) both are equipped with cassette tape decks which are installed with one being used for playback and the other. while the miyata equipment is a substantially rectangular casing with panel vertically positioned. bass and other controls. 56 . while in miyata. [16] It may be noted that respondent corporation failed to present before the trial court a clear. or that both are used to play minus-one or standard cassette tapes for singing or for listening to. we find that petitioner had 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 in his favor during the pendency of the main suit for damages resulting from the alleged infringement. Under Utility Model 5269. a transistorized amplifier circuit with an echo section wired in at least 2 printed circuit boards is placed inside the rear compartment of the casing and attached to the vertical partition wall. Notwithstanding the differences cited by respondent corporation. a loud speaker fitted inside the front compartment of the casing is connected to the output of the main audio amplifier section of the transistorized amplifier circuit. it has only a front compartment horizontally divided into 3 compartments like a 3-storey building. there is no other way but to use 2 loud speakers connected to the amplifier.[17] Clearly. while in the miyata. 1 main tuner. the printed circuit board having 1 amplifier and 1 echo. 6237 which improved on his first patented model. (e) both are used to enhance the voice of the singer using echo effect.INTELLECTUAL PROPERTY PATENTS PUP COLLEGE OF LAW comparison to the first model. and completely disregarded Utility Model No. Under Utility Model 5269. In order to infringe a patent. or the device. while in miyata. It is elementary that a patent may be infringed where the essential or substantial features of the patented invention are taken or appropriated. and both may also be used to record a speaker’s voice or instrumental playing. 1 tape pream. 4 printed circuits are placed inside the compartment of its casing attached to the vertical partition wall. (d) both are used to sing with live accompaniment and to record the same. 1 instrument and 1 wireless microphone. while in miyata. 5269. Seventh. while the miyataequipment has no rear compartment and front compartment in its rectangular casing. Under Utility Model No. competent and reliable comparison between its own model and that of petitioner. a tape player is mounted on the top wall of the casing. the various controls are all separated from the printed circuit boards and the various controls are all attached thereto. Under Utility Model 5269. Under Utility Model 5269. there are various controls mounted on the control panel of the casing. 6237 which improved on the first. and. 1 equalizer (3-band).powered with 8 printed circuit boards almost all of which are IC controlled.[15] these differences are – First. In view thereof. Fourth. or accomplish the same result by identical or substantially identical means and the principle or mode of operation must be substantially the same. Under Utility Model 5269. therefore. (h) both are encased in a box-like cabinets. Sixth. machine or other subject matter alleged to infringe is substantially identical with the patented invention. (b) both are used to sing with a minus-one or multiplex tapes. the Decision of the Court of Appeals dated 15 November 1993 is REVERSED and SET ASIDE and the Order of the trial court dated 24 February 1993 granting petitioner the writ of injunction is REINSTATED. Utility Model No. with 1 amplifier with power supply. Fifth. (c) both are used to sing with a minus-one tape and multiplex tape and to record the singing and the accompaniment. while in the miyata equipment the amplifier is mainly IC (Integrated Circuit) . both petitioner’s and respondent’s models involve substantially the same modes of operation and produce substantially the same if not identical results when used. a machine or device must perform the same function. the cubical casing has a vertical partition wall defining a rear compartment and a front compartment serving as a speaker baffle. and the 3rd are kits. the 1st compartment being a kit. (i) both can be used with one or more microphones. for recording the singer and the accompaniment. 2 tape players are used mounted side by side at the front. the 2nd also the speaker. the 7 printed circuit boards (PCB) are attached to the front panel and 1 attached to the horizontal divider.